DECISION

Consumernet, Inc. d/b/a Car Buying Tips v. Car Buying Tips, Inc. a.k.a. William Dearn

Claim Number: FA0305000158428

PARTIES

Complainant is Consumernet, Inc. d/b/a Car Buying Tips, Margate, FL (“Complainant”) represented by Nicole M Meyer, of Dickinson Wright PLLC.  Respondent is Car Buying Tips Inc. a.k.a William Dearn, Plymouth, MA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <car-buyingtips.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 22, 2003; the Forum received a hard copy of the Complaint on May 23, 2003.

On May 22, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <car-buyingtips.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 May 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 2003 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@car-buyingtips.com by e-mail.

A timely Response was received on June 16, 2003. However, the exhibits referenced in the Response were not received by the Response Deadline. Therefore, the Response was not in compliance with ICANN Rule #5(a). The Panel, in its discretion, chooses to consider the Response in this decision.

Complainant’s timely Additional Submission was received on June 23, 2003.

Respondent’s timely Additional Submission was received on June 23, 2003.

On July 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.

On or about July 11, 2003, Respondent submitted additional material in HTML code without copy to Complainant.  The Panel, in its discretion, chooses not to consider this Response in this Decision.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it has established rights in CARBUYINGTIPS.COM for registration of the mark with the United States Patent and Trademark Office, as well as to use of the mark in commerce since 1997.  Complainant contends that <car-buyingtips.com> domain name is identical or confusingly similar to <carbuyingtips.com> mark.  Complainant contends that Respondent’s attempt to show that Respondent has been commonly known by the domain name prior to registration is without merit because Complainant has prior rights to the domain name, and Respondent is not commonly known by the domain name in question.  Complainant contends that Respondent is using its domain name, in direct competition with Complainant, to divert legitimate traffic from Complainant to Respondent’s site.  Finally, Complainant argues that Respondent’s primary purpose in the registration of the disputed domain name was to disrupt Complainant’s established business, thereby acting in bad faith. 

B. Respondent

Respondent contends that Complainant’s mark is too generic to warrant protection under the UDRP.  Respondent contends that it is making a bona fide offering of goods and services at the disputed name, and it has legitimate rights or interest in that domain name. Respondent contends that it did not know of Complainant’s website or mark when it registered the disputed domain name and that there was no bad faith registration in that domain name.

C. Complainant’s Additional Submissions

Complainant contends that Respondent’s statements regarding his incorporation, state of incorporation, benefits to visitors at Respondent’s website, initial interest confusion, and contents of past communications, are either misstated or false. 

D. Respondent’s Additional Submissions

Respondent contends that Complainant’s allegations about the operation of search engines, spamdexing and link usage are misstated or false.

FINDINGS

The Panel finds the following facts:

1.   It is undisputed that Complainant has a federally registered trademark in the name CARBUYINGTIPS.COM on the Supplemental Register of the United States Patent and Trademark Office.  This registration was applied for on June 19, 2002 with a Statement of First Use on June 22, 1998.  However, Complainant certifies date of first use in commerce in 1997 and that date is undisputed by Respondent.

2.      The Panel finds that the Complainant and the Respondent are in the identical channels of trade, as competitors, presently.  Respondent operated its business under the fictitious name “Car Buying Consultants” from April 1, 1992 to December 2, 2001, a somewhat different name from that of Complainant.  Further, this business was a land-based business through 2001.  In May 2002, Respondent opened an online business giving free auto repair and car buying tips for Internet users in competition with Complainant.  Respondent first registered the domain name in dispute thereafter.  Complainant first registered its domain name CARBUYINGTIPS.COM in June 1998.

3.      The Complainant’s domain name and the Respondent’s domain name are confusingly similar.

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 the <car-buyingtips.com> domain name is identical to its CARBUYINGTIPS.COM mark.  The insertion of a hyphen in Complainant’s mark does not differentiate Respondent’s mark from Complainant’s mark.  See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).  Therefore, the two domain names are held to be identical and/or confusingly similar.

Rights or Legitimate Interests

Complainant maintains that it has established rights in the CARBUYINGTIPS.COM mark through registration of the mark with the U.S. Patent and Trademark Office, as well as through use of the mark in commerce since 1997.  Complainant’s registration is on the Supplemental Register of the United States Patent and Trademark Office, rather than the Principal Register.  The Supplemental Register under The Lanham Act provides for nonexclusive use of the registered mark.  However, Complainant does not rely solely upon its Supplemental Registration, but also supplies evidence of use of the mark in commerce before Respondent’s usage.  Therefore, Complainant has legitimate interest in the mark because of its early use of the mark in commerce.

See Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding that although Complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning, Complainant nevertheless had standing to initiate a UDRP claim because the Policy at paragraph 4(a)(i) requires only that the Complainant have (mark) "rights" in the disputed domain name, strong or weak though they be).

Also, see Evans & Sutherland v Real Image, FA 96112 (Nat. Arb. Forum Jan. 29, 2001) (stating, where Complainant had used its REAL IMAGE marks since 1997 and had registered the marks on the Supplemental Register, that “Complainant demonstrated sufficient use of REAL IMAGE and REALimage as identifying marks associated with Complainant such as would warrant common law protection”).

The Panel finds that Respondent’s feigned attempt to appear to be “commonly known by” the name Car Buying Tips, Inc. does not mean that it is able to avail itself of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Furthermore, Respondent is using its CARBUYINGTIPS.COM domain name to siphon Internet users from Complainant’s website, which is neither a bona fide offering of services nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Am. 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 MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Registration and Use in Bad Faith

The Panel finds that Respondent’s primary purpose in registering the disputed domain name was to disrupt Complainant’s established business for its own gain by attempting to attract Internet users seeking Complainant’s website, evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <car-buyingtips.com> domain name be TRANSFERRED from Respondent to Complainant.

___________________________________________________

Estella S. Gold, Panelist
Dated:  July 15, 2003

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