Domain name - Domain name dispute resolution policy - Confusingly similar - Bad faith registration - Lack of legitimate interest, inference - Amendment to complaint - What constitutes response.

Complainant owns a United States trademark registration for the mark EAUTO and is in the business of offering a full range of automotive information to companies and individuals through its Internet site at www.eauto.com. Complainant also owns the domain name eauto.net. Respondent registered the domain name e-auto-parts.com, which is not active.  Complainant alleges that Respondent's registration and use of the domain name e-auto-parts.com violates its rights in its trademark EAUTO and its domain name eauto.com. The Complainant further sought two amendments to its Complaint to reflect a new development since the filing of the original Complaint.  The respondent did not defend this action.

Held, Name Transferred to Complainant.

The first amendment is accepted because it promptly reported a new development since the filing of the Complaint, and because Respondent had a fair opportunity to respond to the amendment. The second amendment is accepted because it merely placed before the Panel a copy of Respondent's March 14, 2000 e-mail, which Respondent itself copied to the Center. The Panel declines to treat the Respondent's March 14, 2000 e-mail as a Response because, among other things, the e-mail does not contain the requisite certification that the information contained therein is, "to the best of Respondent's knowledge, complete and accurate." 

E-auto-parts.com is confusingly similar to the trademark EAUTO and the associated domain name eauto.com because it incorporates a mark that is virtually identical to a mark registered by the U.S. Patent and Trademark Office, and which thus is entitled to a rebuttable presumption of distinctiveness.  Given Respondent's failure to submit a Response, and the contents of the two e-mail messages it sent after the filing of the Complaint, it is not unreasonable for the Panel to infer a lack of legitimate interest.  Bad faith is shown by Respondent's conduct when it made no attempt to justify its registration or reject Complainant's assertions, by offering to sell the domain name at a price in excess of its actual registration costs and by threatening to delete its domain name registration.

Policies referred to

Rules for Uniform Domain Name Dispute Resolution Policy; Rule 5(b)(viii); Rule 14(b); 

Registration Agreements referred to
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Cases referred to
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Panel Decision referred to

EAuto, Inc. v. E Auto Parts, Inc., Case No. D2000-0121 (WIPO Apr. 13, 2000) 
EAuto, Inc. v. Net Me Up, Case No. D2000-0104 (WIPO Apr. 13, 2000). 
EAuto, L.L.C. v. EAuto Parts, Case No. D2000-0096 (WIPO Apr. 9, 2000), 
EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000) 
Gen. Mach. Prods. Co. v. Prime Domains, Forum File FA 0001000092531 (NAF Mar. 16, 2000). 
Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000) 
 

Bernstein, Panelist: - 

1. Parties

The Complainant is eAuto, Inc., a Texas corporation, having its principal place of business at Dallas, Texas, United States. The respondent is Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., located in Atlanta, Georgia, United States. 

2. Domain Name and Registrar

The domain name at issue is e-auto-parts.com. This domain name is registered with Network Solutions, Inc. 

3. Procedural History

Complainant initiated this proceeding by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 2, 2000. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center notified Respondent of the commencement of this proceeding on March 7, 2000. Federal Express has confirmed that the Complaint was delivered to a person at the address provided in Respondent's domain name registration. 

On March 7, Complainant filed an Amendment to the Complaint. On March 14, 2000, Respondent sent an e-mail message to Complainant and the Center. In the e-mail, Respondent stated: 

I am assuming that I am not being singled out for harassment by your firm. I would also assume that you have filed similar complaints about all the following domains! [List of 100 domain names containing e-auto.] There are numerous more that I could bring to your attention (on a consulting basis) should you have chosen to contact me. Instead of the "bad faith" letters sent to ICANN. Looking forward to deleting the domain name e-auto-parts.com, then you may wish to try contacting the new owners! Best of luck to you…I DON'T AGREE WITH YOUR APPROACH TO SETTLING THIS DISPUTE!!!!!

At the outset, the Panel must consider whether to accept the two amendments filed by Complainant. Because the first amendment was filed at the same time as the commencement of the proceeding, because it promptly reported a new development since the filing of the Complaint, and because Respondent had a fair opportunity to respond to the amendment, the Panel elects to accept and consider this submission. EAuto, Inc. v. E Auto Parts, Inc., Case No. D2000-0121 (WIPO Apr. 13, 2000). As to the second amendment, filed and served on March 15, 2000, it merely placed before the Panel a copy of Respondent's March 14, 2000 e-mail, which Respondent itself copied to the Center. In these circumstances, Respondent hardly can object to the acceptance of this Amendment, although, procedurally, the Amendment was superfluous. 

The Panel also must determine how to treat Respondent's March 14, 2000 e-mail. The Panel declines to treat it as a Response because, among other things, the e-mail does not contain the requisite certification that the information contained therein is, "to the best of Respondent's knowledge, complete and accurate." Rule 5(b)(viii); Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000), § a.i. Given that the Respondent did not file any other submission, notwithstanding a March 20 notice from the Center (in response to Respondent's March 14 e-mail) stating "[i]f you plan to submit a Response in accordance with Paragraph 5 of the ICANN Rules … the last day for sending your Response to the Complainant and to us is March 26, 2000," the Panel finds that Respondent is in default. Accordingly, the Panel may draw such inferences from Respondent's failure to comply with the Rules as it considers appropriate. Rule 14(b); Talk City, Inc. at § d. 

4. Factual Background

Given the absence of a Response, the following facts are undisputed: 

Complainant is in the business of offering a full range of automotive information to companies and individuals through its Internet site at www.eauto.com. Since January 15, 1996, Complainant's Internet site has provided information and links to the Internet sites of manufacturers, distributors, and retailers of auto parts and auto accessories, auto makers, auto dealers, automotive services, automotive news and events, automotive news groups and automotive e-mail lists. This Internet site was registered to the founder of Complainant on July 15, 1995, and was assigned to Complainant on August 29, 1997. Complainant also owns the domain name eauto.net, which it registered on January 31, 2000. 

Complainant owns a United States trademark registration for the mark EAUTO (the "Mark"), Reg. No. 2,035,083, for "providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information." This mark was registered to the founder of Complainant on February 4, 1997, and was assigned to Complainant on August 29, 1997. 

Complainant alleges that its mark has acquired and enjoys substantial goodwill and a valuable reputation. Complainant also alleges that it has expended and continues to expend a significant amount of time and money to advertise, promote, and offer for sale its services under the Mark. 
The Complaint identifies Respondent as an Internet marketing company that registers and resells Internet domain names, or uses those domain names to redirect traffic to its clients' Internet sites. Complainant has submitted a copy of several pages from Respondent's Internet sites in which Respondent claims to have registered more than four thousand domain names. 

On December 14, 1999, Respondent registered the domain name e-auto-parts.com. The Internet site at www.e-auto-parts.com is not active at present, perhaps because of the pendency of this dispute. However, as recently as February 24, 2000, this site displayed an advertisement offering the domain name e-auto-parts.com for sale. 

The day after Complainant invoked the Policy and filed the Complaint, Respondent's Administrative Contact sent an e-mail message to Complainant offering to transfer the domain name e-auto-parts.com to Complainant. In exchange for the domain name, the Administrative Contact asked Complainant for approximately $4,750 (representing Respondent's purported domain name research and registration expenses, and related legal fees), plus payment of the Contact's roundtrip travel costs and expenses from Atlanta to Dallas. 

On March 14, 2000, Respondent's Administrative Contact sent a second e-mail message to Complainant, which was copied to the Center, listing approximately one hundred domain names featuring the prefix "e-auto" that appear to be registered to other entities. In its message, Respondent commented that it was aware of many other such "e-auto" domain names and threatened to delete its registration of the domain name e-auto-parts.com, which might force Complainant to deal with a new owner. 

5. Parties' Allegations 

Complainant alleges that Respondent's registration and use of the domain name e-auto-parts.com violates its rights in its trademark EAUTO and its domain name eauto.com. Specifically, Complainant alleges that the domain name e-auto-parts.com is confusingly similar to the Mark and the domain name eauto.com, and therefore Respondent's use of the domain name e-auto-parts.com is likely to cause consumer confusion. Complainant further alleges that Respondent has no legitimate interest in the domain name e-auto-parts.com because Respondent registered this domain name nearly four years after Complainant's first use of the Mark, nearly three years after Complainant's federal registration of the Mark, and nearly four and one-half years after Complainant's registration of the domain name eauto.com. Finally, Complainant alleges that Respondent acted in bad faith in registering and using the domain name e-auto-parts.com as proven by (i) Respondent's ownership of more than four thousand domain names, (ii) Respondent's intent to sell or lease the e-auto-parts.com domain name to an automotive business, (iii) Respondent's offering the domain name for sale to the public via the GreatDomains.com Internet site, and (iv) Respondent's decision to register e-auto-parts.com notwithstanding its likely knowledge of Complainant's own registration and use of the EAUTO trademark and the domain name eauto.com. 

6. Discussion and Findings

Paragraph 4 (a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following: 

(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and 

(3) that the Respondent has registered and has been using the domain name in bad faith. 
For the reasons set forth in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), and EAuto, L.L.C. v. EAuto Parts, Case No. D2000-0096 (WIPO Apr. 9, 2000), the Panel concludes that the domain name e-auto-parts.com is confusingly similar to the trademark EAUTO and the associated domain name eauto.com. That is because, similar to eautolamps.com and eautoparts.com, e-auto-parts.com incorporates a mark that is virtually identical to a mark registered by the U.S. Patent and Trademark Office, and which thus is entitled to a rebuttable presumption of distinctiveness. 

The Panel also finds, on this record, that Complainant has established that Respondent has no rights or legitimate interest with respect to this domain name. Although Complaint's allegations on this issue are weak, they are just enough to establish a prima facie showing that Respondent lacks a legitimate interest in e-auto-parts.com. Unlike as in the eautolamps.com case referred to above, Respondent does not actually offer auto parts on its site. EAuto L.L.C. v. Triple S. Auto Parts. Unlike as in the eautoinc.com case, Respondent does not use "EAuto" in its corporate or trade name. EAuto, Inc. v. E Auto Parts, Inc., Case No. D2000-0121 (WIPO Apr. 13, 2000). And, unlike as in the eautomotive.com case, there is no evidence that Respondent does, in fact, offer any automotive services or automotive-related Internet hosting services through this site. EAuto, Inc. v. Net Me Up, Case No. D2000-0104 (WIPO Apr. 13, 2000). Thus, Respondent does not fall easily into any of the categories of uses that have been deemed legitimate in prior cases. 

It is possible that Respondent does have some legitimate interest in respect of this name. For example, it is possible that this is one in a series of domain names registered by Respondent that contain descriptive terms that Respondent has registered for purposes of resale. See Gen. Mach. Prods. Co. v. Prime Domains, Forum File FA 0001000092531 (NAF Mar. 16, 2000). But it also is possible that Respondent registered this name knowing of Complainant's rights and hoping to force Complainant to purchase the name at a premium. Given Respondent's failure to submit a Response, and the contents of the two e-mail messages it sent after the filing of the Complaint, it is not unreasonable for the Panel to infer a lack of legitimate interest. Although the Panel would have preferred direct evidence addressing this issue in the form of a Response, the lack of a Response constrains the Panel to draw this inference, and any resulting prejudice to Respondent is a result of its own failure to comply with the Rules. 

The Panel also finds, on this record, that Respondent acted in bad faith. This finding is not made in reliance on Complainant's assertion that Respondent has registered 4,000 domain names -- that conduct may be lawful if the domain names do not infringe on or dilute others' trademarks, and the record is silent on the nature of Respondent's other registered domain names. Bad faith is shown, however, by Respondent's conduct when it was confronted with Complaint's complaint. In its first e-mail, Respondent made no attempt to justify its registration or reject Complainant's assertions; instead, it offered to sell the e-auto-parts.com domain name at a price in excess of its actual registration costs. Moreover, later in the proceeding, Respondent threatened to delete its domain name registration, which would have had the effect of putting the name back into the pool of available domains, and noted that it might be registered to a third party before EAuto, LLC could reclaim it. (As a practical matter, Respondent was unable to follow through with this threat because the Policy prohibits any cancellation of a domain name registration during the pendency of a proceeding, absent a settlement or other authorization. Policy ¶ 7.) These facts each support a finding of bad faith, see Policy ¶ 4(b), which also can be inferred from Respondent's failure to Respond. 

7. Decision

The Panel finds that Respondent has registered a domain name (e-auto-parts.com) identical or confusingly similar to Complainant's trademark (EAUTO) and domain name (eauto.com), that Respondent has no rights or legitimate interests in respect of that domain name, and that Respondent registered and used the name in bad faith. Accordingly, the Panel concludes that the domain name e-auto-parts.com should be transferred to Complainant eAuto, Inc.