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Oil Changer, Inc. v. Name Administration, Inc. [2005] GENDND 546 (28 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oil Changer, Inc. v. Name Administration, Inc.

Case No. D2005-0530

1. The Parties

Complainant is Oil Changer, Inc. (“Complainant” or “Oil Changer”), a corporation incorporated under the laws of the State of California, with a principal place of business located in Pleasanton, California, United States of America.

Respondent is Name Administration, Inc. (BVI) (“Respondent” or “Name Administration”), with a principal place of business located at Grand Cayman, Cayman Islands, British West Indies.

2. The Domain Name and Registrar

The domain name at issue is <oilchanger.com> (the “Domain Name”). The registrar is Domain Name Sales Corporation (the “Registrar”) located at Grand Cayman, Cayman Islands, British West Indies.

3. Procedural History

On May 18, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On May 18, 2005 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee. On May 18, 2005 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name. On May 25, 2005, the Center received hardcopy of the Complaint.

On June 1, 2005, the Center sent a Notice of Complaint Deficiency to the Complaint. On June 4, 2005, the Center received an Amendment to the Complaint from Complainant via email. On June 10, 2005, the Center received the Amendment in hardcopy.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On June 13, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 5, 2005, the Center advised Respondent that it was in default for failing to file its Response. On July 5, 2005, a late-filed Response was received by the Center via email, with hardcopy received on July 7, 2005.

On July 14, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the Parties of the appointment of a single-arbitrator panel consisting of the Panel.

The Panel hereby informs the Parties that it has accepted and reviewed the late-filed Response from Respondent.

4. Factual Background

Complainant has used the trademarks OIL CHANGER and OIL CHANGERS (the “Marks”) in connection with the automotive services industry, namely quick oil change service, fuel injection and carbureted gasoline engine service, oil system cleaning service, coolant service and fleet and recreation vehicle service. Complainant has used the Marks continuously since as early as September 1986. Complaint has registrations of its trademarks with the United States Patent and Trademark Office. The registrations issued in the name of Lube Management Corporation, the holding company for Complainant Oil Changer, Inc.

Complainant currently operates 37 facilities throughout California in each of the State’s major markets. Each facility offers no appointment automotive services provided on a drive-through basis in less than 10 minutes. Each of the Complainant’s facilities prominently displays the OIL CHANGER and OIL CHANGERS Marks on large signage in multiple locations visible from the majors streets and intersections on which the Complainant’s facilities are located.

Complainant has placed additional substantial advertising primarily in print and billboards and customer incentive literature all of which display the OIL CHANGER and OIL CHANGERS Marks. Since 1997, Complainant has offered a website promoting its services using the OIL CHANGER and OIL CHANGERS Marks. Complainant’s website is averaging 1,500 hits monthly. Complainant originally registered the <oilchanger.com> in 1996 through an individual affiliated with the company. Unbeknownst to Complainant, this individual allowed the <oilchanger.com> Domain Name to lapse. In November 2004, Complainant discovered the administrative error. Meanwhile, Respondent has registered the <oilchanger.com> Domain Name.

Respondent operates a website at “www.nameadmininc.com” offering domain name administration, website development and Internet traffic services including registration provider options, renewal management, DNS, hosting and name forwarding, email account administration, Internet traffic management and domain name consulting.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the OIL CHANGER and OIL CHANGERS Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the OIL CHANGER and OIL CHANGERS Marks. 15 U.S.C. § 1115.

ii. Complainant argues that the Domain Name is confusingly similar to the OIL CHANGER and OIL CHANGERS Marks, pursuant to paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the Marks, with the addition of generic or non-distinctive terms.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant alleges that Respondent’s business is to register generic domain names, such as <travellasvegas.com> or <antarctica.com>, then to direct traffic to other websites where Respondent displays for a fee, a variety of advertising content.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations, to use the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the OIL CHANGER or OIL CHANGERS Marks in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent has deliberately registered the Domain Name to attract the attention of Internet users searching for the services of OIL CHANGER or OIL CHANGERS with the intention of deriving commercial gain.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii). Complainant alleges that Respondent has engaged in activity which constitutes bad faith under paragraph 4(b)(iv) which finds bad faith when:

“(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”

Complainant argues that the Domain Name is confusingly similar to the OIL CHANGER and OIL CHANGERS Marks. Respondent is intentionally driving traffic from the <oilchanger.com> Domain Name to other websites of Respondent for commercial gain. Complainant further alleges that Respondent regularly watches and waits for various domain names to become available, including the <oilchanger.com> Domain Name, then registers the domain names for Respondent’s own commercial gain.

B. Respondent’s contentions

i. Respondent does not dispute that Complainant has registrations of the OIL CHANGER and OIL CHANGERS Marks. Respondent does argue that the registrations include a specific waiver of rights in the OIL CHANGERS Mark apart from the stylistic mark in the registration. Furthermore, Respondent argues that the registrations are in the Supplemental Register which constitutes an admission that the Marks are not inherently distinctive and that they have not yet acquired secondary meaning. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.43, at 19-83 (4^th ed. 1998). Respondent continues that application to the Supplemental Register “is evidence that there are no common law rights at the time of application.” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, WIPO Case No. D2002-1103. Respondent notes that Complainant’s statement that the OIL CHANGER and OIL CHANGERS Marks will soon be registered on the Principal Register should not be accepted by the Panel as an accomplished fact. Therefore, Respondent asserts that Complainant has no enforceable trademark rights for purposes of this proceeding.

ii. Respondent does not contest that the Domain Name is identical to the OIL CHANGER and OIL CHANGERS Marks for purposes of this proceeding.

iii. Respondent asserts that it has equitable rights to or legitimate interests in the Domain Name because it received no notice from Complainant or any other source regarding the alleged trademark rights of Complainant. Respondent also asserts that had it reviewed the registrations it would have found and been able to rely on the disclaimer of rights in OIL CHANGERS. Additionally, Respondent asserts that WIPO decisions show a clear recognition of rights and legitimate interests in respondents when they have used generic or descriptive domain names to promote the products or services described.

iv. Respondent denies that it registered or used the Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, Respondent argues that none of these types of evidence applies:

Respondent claims that there is no evidence of bad faith based on paragraph 4(b)(i) because it did not offer or intend to sell the Domain Name to Complainant or to others.

Respondent argues that paragraph 4(b)(ii) does not apply because the registration of the Domain Name does not prevent Complainant from reflecting the OIL CHANGER and OIL CHANGERS Marks in a corresponding domain name. Respondent notes that <oilchanger.net>, <oilchangers.net> and <oilchanger.info> are all available.

Respondent argues that it is not a business competitor of Complainant and thus, there is no evidence of bad faith based on paragraph 4(b)(iii).

Respondent argues that there is no evidence of bad faith based on paragraph 4(b)(iv) because Respondent is making a fair, commercial use of the Domain Name. Complainant had a “redemption grace period” within which to re-instate the lapsed registration for the <oilchanger.com> Domain Name. Complainant chose not to do so. Therefore, Respondent is entitled to rely on its belief that Complainant intended to abandon the Domain Name. Respondent asserts that the registration and use of an abandoned Domain Name cannot be bad faith. Respondent contests any assertion that the OIL CHANGER or OIL CHANGERS Marks have acquired distinctiveness or secondary meaning, since the registration is in the Supplemental Register. Respondent asserts that registration and use of a Domain Name reflective of Marks which are unenforceable cannot constitute bad faith. Respondent also notes common use of the term “oil changers” within the industry to emphasize the descriptive nature of the OIL CHANGER and OIL CHANGERS Marks and the legitimate nature of Respondent’s registration and use of the <oilchanger.com> Domain Name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Enforceable Trademark Rights

Complainant contends that it has registrations of the OIL CHANGER and OIL CHANGERS Marks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the OIL CHANGER and OIL CHANGERS Marks. 15 U.S.C. § 1115.

Respondent disputes that any registration on the Supplemental Register gives rise to a presumption of enforceable rights. The Panel agrees. Prior WIPO panels have noted that the presumptions which arise from registration in the Principal Register are not available to registrations on the Supplemental Register.

The Panel further agrees that such registrations are an admission that the OIL CHANGER and OIL CHANGERS Marks were not inherently distinctive at the time of application for registration of the Marks and that they had not yet acquired secondary meaning. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.43, at 19-83 (4^th ed. 1998). The Panel further agrees that application to the Supplemental Register “is evidence that there are no common law rights at the time of application.” Roberta Chiapetta dba Discount Hydroponics v. C.J. Morales, WIPO Case No. D2002-1103.

The Panel is not willing to infer from this record that the OIL CHANGER and OIL CHANGERS Marks will be accepted for registration in the Principal Register.

Furthermore, the evidence in this proceeding does not support the finding that the OIL CHANGER and OIL CHANGERS Marks have acquired secondary association after their registration.

Therefore, the Panel concludes that for purposes of this proceeding, Complainant has no enforceable trademark rights pursuant to the Policy, paragraph 4(a)(i). No further analysis is necessary.

7. Decision

The Panel concludes Complainant does not have enforceable rights in the OIL CHANGER and OIL CHANGERS Marks pursuant to the Policy, paragraph 4(a)(i). Therefore, Complainant’s request to transfer the Domain Name, <oilchanger.com>, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules is denied.

Richard W. Page
Sole Panelist

Date: July 28, 2005