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Generic Top Level Domain Name (gTLD) Decisions |
Chrome Systems Corporation fka Chrome
Data Corporation v Premiere Media Group dba Dealer Select
Claim Number: FA0202000104591
PARTIES
Complainant is Chrome Systems Corporation fka Chrome Data Corporation, Portland,
OR (“Complainant”) represented by Stephanie
M. Burns. Respondent is Premiere Media Group dba Dealer Select,
League City, TX (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at issue are <chromedata.net>, <chromedata.org>, <webcarbook.net>, and <webcarbook.org>, registered with Network Solutions.
PANEL
The undersigned certifies that he has
acted independently and impartially and, to the best of his knowledge, has no
known conflict
in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on February 12, 2002; the
Forum received
a hard copy of the Complaint on February 15, 2002.
On February 14, 2002, Network Solutions
confirmed by e-mail to the Forum that the domain names <chromedata.net>, <chromedata.org>, <webcarbook.net>, and <webcarbook.org> are registered with Network Solutions and
that the Respondent is the current registrant of the name. Network Solutions has verified that
Respondent is bound by the Network Solutions registration agreement and has
thereby agreed to
resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On February 21, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of March 13, 2002 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via
e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts,
and to postmaster@chromedata.net,
postmaster@chromedata.org, postmaster@webcarbook.net, and
postmaster@webcarbook.org by e-mail.
A timely Response was not initially
received from Respondent; however, upon Respondent’s request for extension of
time, Respondent
was given additional time to file a Response. Respondent then timely filed a Response. The
record was determined to be complete on March 27, 2002.
On March 19, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant. Respondent requests that Complainant’s domain name
<webcarbook.com> be transferred to Respondent.
PARTIES’ CONTENTIONS
A. Complainant
Chrome requests that the Panel order that the domain name
registrations for <chromedata.org>, <chromedata.net>,
<webcarbook.org> and <webcarbook.net> be transferred
to Chrome on two independent grounds:
(1) Respondent’s continued use of the domain names is likely to cause
confusion, mistake or deception as to an affiliation, connection,
or
association of Respondent with Chrome in violation of Section 43(a) of the
Lanham Act (15 U.S.C. § 1125(a)); and, (2) Respondent
registered the
Domain Names in bad faith in violation of The Anticyberpiracy Act as codified
in Section 43(d) of the Lanham Act (15
U.S.C. § 1125(d)).
B. Respondent
Respondent raises numerous challenges to
the ICANN process that are beyond the scope of this proceeding and, therefore
will not be
considered. Respondent
makes numerous factual assertions, the resolution of such are unnecessary to a
determination of this matter. Relevant,
however, is Respondent’s challenge to the right of Complainant to exclusive use
of the marks “PC Carbook”, “Chrome Carbook”,
and “Chrome”.
C. Additional Submissions
The parties have submitted additional
submissions that contribute little to their respective positions.
FINDINGS
Complainant is Chrome Systems Corporation, fka Chrome Data
Corporation (“Chrome”). Complainant’s
Second Amended Complaint is based on Chrome’s federal registrations and prior
use of the marks “PC Carbook”, “Chrome
Carbook” and “Chrome” in commerce, and
Chrome’s prior use of the marks “Chrome Data” and “Web Carbook” in commerce.
Chrome was originally founded as an Oregon corporation in
1986. Since 1989, Chrome used “Chrome
Data” as its corporate name and in connection with various automobile
industry-related goods and services
until it re-incorporated in Delaware in
2001. Chrome develops, owns and
licenses proprietary PC and web-based computer software programs used for
configuring, pricing, tracking
the availability of, and determining loan and
lease payments for new and used automobiles.
Chrome licenses this technology, along with vehicle pricing and
configuration data, to automobile dealers, financial and lending institutions,
internet web portals, and other businesses and individuals, all of whom are
able to offer their services to consumers via the Internet
through the use of
Chrome’s technology and data.
Chrome owns federal registration number 2,459,440 for the
mark “Chrome” for use in connection with “providing temporary use of on-line
non-downloadable interactive software accessed via a global computer network
for use in configuring, receiving, and sending requests
for vehicle quotes and
quotes for automobiles, ordering, pricing, and purchasing of vehicles.” The
U.S. Patent and Trademark Office
(“PTO”) registered the mark on June 19,
2001. Chrome has used the mark “Chrome”
in commerce since 1989. Further, it has
used the mark in connection with its web-based services, as described in its
federal registration for the mark, since
at least November 9, 1998.
Chrome owns federal registration number 1,617,404 for the
mark “PC Carbook” for use in connection with “computer programs containing
information about automobiles.” The PTO
registered the mark on October 16, 1990 and issued a renewal on
March 17, 2001. Further, on
March 17, 2001, Chrome’s federal registration of the mark “PC Carbook”
became incontestable under Section 15 of the Lanham
Act (see 15
U.S.C. § 1065). Chrome has used
the mark “PC Carbook” in connection with its vehicle configuration software
program since at least October 15, 1986.
Chrome also owns application serial number 76/148,418 for the mark “PC
Carbook” in word form. The PTO approved
the mark for publication on December 4, 2001.
In 1998, Chrome launched a web-based version of its vehicle
configurator product under the mark “Web Carbook.” Chrome subsequently adopted the mark “Chrome Carbook” for use in
connection with this product. On
October 30, 2001, the PTO issued federal registration number 2,503,037 to
Chrome for the mark “Chrome Carbook” for use in connection
with “providing
temporary use of on-line non-downloadable interactive software accessed via a
global computer network for use in
configuring, ordering, pricing, and
purchasing of vehicles.” Chrome has used the mark Chrome Carbook in connection
with its web-based
vehicle configurator since at least July 25, 2000.
Chrome has pioneered technology behind electronic vehicle
configuration. For over 15 years,
Chrome has been engaged in the business of providing new and used vehicle
pricing data, desktop configuration software,
and on-line services used to
price, compare, locate, calculate loan and lease payments for, purchase, and
sell automotive vehicles
over the Internet.
Since its inception, Chrome has collected, analyzed, and enhanced “raw”
automotive data from all manufacturers.
With more than 12,000 clients, Chrome provides configuration data,
software and professional services to produce complete enterprise
solutions for
all segments of the retail automotive industry. Chrome provides solutions to automotive manufacturers, fleet
companies, dealers, financial institutions and lenders, and Internet
portal
sites. Such customers make their
products and services available to consumers over the Internet through the use
of Chrome’s technology and
automotive data.
Chrome serves 15 of the 17 largest fleet leasing companies. Chrome currently provides the on-line
vehicle configuration and ordering system for all GM dealers in North
America. Chrome has built considerable
goodwill and brand name recognition in its products and services.
Not only are Chrome’s products widely used and widely known
in the automotive industry, but they have a solid reputation for: (1) data accuracy (which results in
pricing accuracy); and (2) configuration and order logic accuracy (which
enables users to configure
vehicles that are actually orderable). For the past two years, Chrome was rated
“the automotive industry’s most accurate and orderable provider of vehicle
specification
and pricing data” by a study conducted by an independent
marketing research firm, CNW Marketing/Research (“CNW”). In 2000, CNW ranked Chrome “first in data
accuracy with an average pricing accuracy of 99.64%” and confirmed that Chrome
Carbook “delivers
the most accurate automotive data on the internet”. In 2001, CNW concluded that Chrome
“continues to be the leading provider of the most accurate vehicle pricing
information, with 100%
orderable configuration.”
Chrome uses its mark “PC Carbook” in connection with a
PC-based software program that allows configuration of all makes (foreign and
domestic) and models (new and used) sold in the U.S. down to the trim and
option level. In 1998, Chrome launched
its next generation product, a web-based configurator, under the mark “Web
Carbook.” Chrome’s web-based configurator
enables dealers, Internet portals,
financial institutions and lenders, and insurance and warranty companies to
provide visitors to
their websites with a tool to research, price, configure,
compare, calculate loan and lease payments for, and request a quote for
new and
used cars online. The web-based
configurator was designed to enable consumers to quickly and easily configure
and obtain an accurate price quote for
any automobile sold in the United States
that a manufacturer could actually build.
Chrome subsequently commenced use of the mark “Chrome Carbook” in
connection with its web-based configurator in commerce in June of
2000, and a
federal registration for the mark issued on October 30, 2001.
Chrome registered the domain names <pccarbook.com>,
<chromedata.com>, and <webcarbook.com> on March 12, 1997,
May
6, 1997, and March 13, 1998, respectively. Respondent registered <pccarbook.org>,
<pccarbook.net>, <chromedata.org>, <chromedata.net>,
<webcarbook.org> and <webcarbook.net> on
March 20, 2001.
The services available through
Respondent’s website, obtained via the disputed domain names, are similar to
Chrome’s automotive data
and vehicle configurator.
On
November 13, 2001, Chrome sent a cease and desist letter to Respondent
demanding that respondent transfer the following six domain
names to
Chrome: <pccarbook.net> and
<pccarbook.org>, <chromedata.net> and <chromedata.org>,
and <webcarbook.net> and <webcarbook.org>. Respondent had been using all of these
domain names to direct web traffic to the web site operations for a business
known as Dealer
Select and <123car.com>.
The Dealer Select website allowed consumers to research, price-compare,
and obtain a quote for a vehicle over the Internet. In response to Chrome’s demand letter, Respondent transferred the
domain names <pccarbook.net> and <pccarbook.org> to
Chrome on
November 27, 2001. Transfer was
completed with Verisign, Inc. on December 3, 2001. However, Respondent did not transfer the
<webcarbook.net> and <webcarbook.org> or the <chromedata.net>
and <chromedata.org> to Chrome.
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this Panel to “decide a complaint
on the basis of the statements and
documents submitted in accordance with the Policy, these Rules and any rules
and principles of
law that it deems applicable.”
Paragraph 4(a) of the Policy requires
that the Complainant must prove each of the following three elements to obtain
an order that
a domain name should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered
and is being used in bad faith.
Identical and/or Confusingly
Similar
Complainant contends that <chromedata.net> and <chromedata.org> are
confusingly similar to Complainant’s federally registered mark “Chrome.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the
Complainant combined with a generic word or term). Although the domain names <chromedata.net> and <chromedata.org> contain Complainant’s registered “Chrome”
mark, Complainant does not have exclusive rights to “chrome data.” See Donald J. Trump and Trump Hotel &
Casino Resorts, Inc. v. olegevtushenko a/k/a Oleg Evtushenko, FA 101509
(Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not
infringe on Complainant’s famous mark TRUMP,
since Complainant does not have the
exclusive right to use every form of the word “trump”). As Complainant has failed to meet the first
Policy element as to the domain names <chromedata.net> and <chromedata.org>, discussion of the second and third elements is unnecessary in
respect to these domain names.
The Panel finds that the disputed domain
names <webcarbook.net>, and <webcarbook.org> are
confusingly similar to Complainant’s registered trademark PC Carbook. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr.
27, 2000) (holding that the domain name ROBOHELP.COM is identical to
complainant’s registered ROBOHELP trademark,
and that the "addition of
.com is not a distinguishing difference"). The domain names <webcarbook.net> and <webcarbook.org>
incorporate the term “carbook” registered by Chrome as part of its PC Carbook
trademark registration. The fact that
the term “web” precedes the term “carbook” is irrelevant, as that term is
descriptive.
Rights or Legitimate Interests
Respondent uses
the confusingly similar domain names in connection with a website that offers
services that are similar to Complainant’s
services. Such use is not a demonstration of a bona fide offering of goods
or services in connection with the disputed domain names pursuant
to Policy ¶
(c)(i). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that “[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s
operation of web-site using a domain name which is
confusingly similar to the complainant’s mark and for the same business”); see
also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods).
Respondent’s
use of the domain names, <webcarbook.net>, or <webcarbook.org> which are
confusingly similar to Complainant’s mark, to divert users to a website that offers
competing goods and services is not
a legitimate noncommercial or fair use of
the disputed domain names and thus, Respondent fails to satisfy Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com>
and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with the Complainant's mark CATERPILLAR);
see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO
Oct. 3, 2000) (finding no rights in the domain name where Respondent has an
intention to divert consumers of Complainant’s
products to Respondent’s site by
using Complainant’s mark).
Respondent is
not commonly known as <webcarbook.net>, or <webcarbook.org> and therefore
cannot satisfy Policy ¶ 4(c)(ii). See Hartford Fire
Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000)
(finding that Respondent has no rights or legitimate interests in domain names
because
it is not commonly known by Complainant’s marks and Respondent has not
used the domain names in connection with a bona fide offering
of goods and
services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by
the disputed domain name).
Registration and Use in Bad Faith
Since Respondent uses confusingly similar
domain names to divert Internet users to a website that offers goods and
services similar
to Complainant’s business, Respondent has registered and used
the disputed domain names in bad
faith. See Southern Exposure
v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding Respondent acted in bad faith by attracting Internet users to a
website that
competes with Complainant’s business); See also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site).
Respondent requests that Complainant’s
domain name <webcarbook.com> be transferred to Respondent. Respondent’s request exceeds the scope of
this proceeding and is denied.
DECISION
Based upon the above findings and
conclusions, the relief requested by Complainant pursuant to Paragraph 4.(i) of
the Policy is Granted
as to the domain names <webcarbook.net> and <webcarbook.org> and
Respondent shall be required to transfer to Complainant these domain
names. The relief requested by
Complainant is Denied as to the domain names <chromedata.net> and <chromedata.org> and Respondent shall not be required
to transfer to Complainant these domain names.
The Honorable
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 10, 2002
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