WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autovillage.com Inc. v. Enthusiast World, Inc.
Case No. D2003-0738
1.
The Parties
Complainant is Autovillage.com Inc. (“Complainant” or “Autovillage”), a corporation
located in Kansas, United States of America.
Respondent is Enthusiast World, Inc. (“Respondent” or “Enthusiast World”) located in
San Diego, California, United States of America.
2.
The Domain Names and Registrar
The domain names at issue are <fordtruckworld.com>, <dodgetruckworld.com>,
<classictruckworld.com> and <sporttruckworld.com> (the “Domain Names”). The
registrar is Dotster, Inc. (the “Registrar”)
3.
Procedural History
On September 17, 2003, the WIPO Arbitration and Mediation Center (the “Center”)
received a copy of the Complaint of Complainant via email. On September 22, 2003,
the Center received hardcopy of the Complaint. On September 22, 2003, the Center
sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant
paid the required fee.
On September 22, 2003, 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 Names and that the Domain Names are registered in the
Respondent's name.
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”).
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On October 2, 2003, 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 the Complainant. This notification was sent by the
methods required under paragraph 2(a) of the Rules.
On October 22, 2003, the Center received the Response of Respondent via email. On
October 27, 2003, the Center received the Response of Respondent in hardcopy.
On November 13, 2003, after the Center received a completed and signed Statement of
Acceptance and Declaration of Impartiality and Independence from Richard W. Page
(the “Sole Panelist”), the Center notified the parties of the appointment of a singlearbitrator panel consisting of the Sole Panelist.
4.
Factual Background
Autovillage is the owner of the trademarks TRUCKWORLD and TRUCKWORLD
ONLINE! (the “Marks”) following a merger with the original owner of the trademarks,
Autoweb Worldwide Publishing Corp. This proceeding involves the Domain Names
which have been registered by Enthusiast World, a competitor of Autovillage.
Autovillage's website, located at "www.truckworld.com", is an online electronic
magazine that focuses on the truck marketplace. The site derives revenue from
advertisement sales and the sale of truck accessories and parts, as well as the general
promotion of materials and events of interest to truck enthusiasts. Autovillage has
licensed the TRUCKWORLD mark in the United States in connection with retail
consumer catalogs featuring automotive accessories and specialty parts and the
preparation and dissemination of advertisements relating to trucks in print media, all
since at least as early as February 1996. Over 6,600,000 copies of TRUCKWORLD
consumer catalogs have been distributed since 1998, with revenues in the millions of
dollars. Autovillage has also used the TRUCKWORLD mark in commerce in
connection with t-shirts, tank tops, hats, sweatshirts, jackets, bandanas, gloves,
coveralls, underwear and bathing suits since at least as early as December 1996. These
goods have been sold to customers in the United States and abroad.
Autovillage's website, located at "www.truckworld.com", has been operational since
February 1996, and prominently displays Autovillage's TRUCKWORLD and
TRUCKWORLD ONLINE! marks. The website features a variety of information on
off-road and street light-duty trucks and sport utility vehicles, including reviews,
technical articles, vehicle industry news, travel information, reviews of books and
videos, as well as humor pieces, cartoons and event calendars. The website also
provides information on purchasing truck accessories and related products. Since going
live in 1996, Autovillage's website has received over 860,000,000 hits, including over
12,000,000 unique visitors.
Autovillage's catalog and website features vehicles and products manufactured by
famous auto makers such as Ford, Dodge, Chevy and Land Rover. Autovillage has also
used the mark TRUCKWORLD and TRUCKWORLD ONLINE! at various
international and national conferences such as the Specialty Equipment Market
Association ("SEMA") trade show (Las Vegas, Nevada), the Bloomsburg Truck
Jamboree (Bloomsburg, Pennsylvania), the Monster Truck Racing Association Annual
Awards Banquet (St. Louis, Missouri) and the Germany International Off-Road
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Exhibition Show (Munich, Germany).
Autovillage owns a federal trademark registration for the TRUCKWORLD mark which
issued on September 9, 1997. Autovillage's registration (No. 2,095,983) covers the
following goods:
Clothing, Namely, T-Shirts, Tank Tops, Hats, Sweatshirts, Jackets,
Bandanas, Gloves, Coveralls, Underwear And Bathing Suits in
International Class 25.
A Declaration of Use and Incontestability under Sections 8 & 15 of the U.S. Trademark
Law was filed in September 2003, for this registration. Upon the filing of this
declaration, Autovillage's registration will become incontestable.
Autovillage also owns a federal trademark registration for the TRUCKWORLD mark
which issued on June 18, 2002. Autovillage's registration (No. 2,582,666) covers the
following services:
Preparing And Disseminating Advertisements For Others In Print Media And Via
An On-Line Electronic Communications Network In International Class 35.
Autovillage owns a federal trademark registration for the TRUCKWORLD ONLINE!
mark which issued on February 26, 2002. Autovillage's registration (No. 2,542,023)
covers the following services:
Providing A Web Site In The Field Of Light-Duty Trucks, Namely, Reviews,
Technical Pieces, Humor Pieces And Cartoons, Event Calendars, Club Listings
And Information, General Information, And New Vehicle Performance Tests And
Reviews Concerning Light-Duty Trucks, Including Custom Trucks, Sport Utility
Vehicles, 4x4s, Street Trucks, Monster Trucks, And Passenger Vehicles,
Including Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles,
But Not Including Over-The-Road Trucks, Reviews Of Videos And Books
Pertaining To Light-Duty Trucks, Including Custom Trucks, Sport Utility
Vehicles, 4x4s, Street Trucks, Monster Trucks, And Passenger Vehicles,
Including Exhibition Vehicles, All-Terrain Vehicles, And Recreational Vehicles,
But Not Including Over-The-Road Trucks, Vehicle Industry News And Travel
Information In International Class 39; And Computer Services, Namely,
Providing On-Line Facilities For Real-Time Interaction With Other Computer
Users Concerning Topics Of General Interest Or Chat Rooms In The Field Of
Light-Duty Trucks, Namely, Reviews, Technical Pieces; Humor Pieces And
Cartoons, Event Calendars, Club Listings And Information, General Information,
And New Vehicle Performance Tests And Reviews Concerning Light-Duty
Trucks, Including Custom Trucks, Sport Utility Vehicles, 4x4s, Street Trucks,
Monster Trucks, And Passenger Vehicles, Including, Exhibition Vehicles, AllTerrain Vehicles, And Recreational Vehicles, But Not Including Over-The-Road
Trucks, Reviews Of Videos And Books Pertaining To Light-Duty Trucks,
Passenger Vehicles, Exhibition Vehicles, All-Terrain Vehicles, And Recreational
Vehicles, But Not Including Over-The-Road Trucks, Vehicle Industry News And
Travel Information In International Class 42.
Moreover, Autovillage owns a federal trademark application for the TRUCKWORLD
mark filed on July 17, 2002. Autovillage's application (Serial No. 76/431,577) covers
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the following services:
Entertainment And Information Services, Namely, Providing A Web Site
Featuring Information Regarding Light-Duty Trucks, Including Reviews,
Technical Pieces, Humor Pieces And Cartoons, Event Calendars, Club Listings
And Information, General Information, And New Vehicle Performance Tests And
Reviews Concerning Light-Duty Trucks, Including Custom Trucks, Sport Utility
Vehicles, 4x4s, Street Trucks, Monster Trucks, Passenger Vehicles, Exhibition
Vehicles, All-Terrain Vehicles, And Recreation Vehicles; Reviews Of Videos
And Books Pertaining To Light-Duty Trucks, Custom Trucks, Sport Utility
Vehicles, 4x4s, Street Trucks, Monster Trucks, Passenger Vehicles, Exhibition
Vehicles, All-Terrain Vehicles, And Recreation Vehicles; Vehicle Industry News;
And Travel Information In International Class 41.
5.
Parties’ Contentions
A.
Complainant’s contentions
i.
Complainant contends that it has registrations of the 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 Marks. 15 U.S.C. § 1115. Complainant
further alleges that its registrations will soon become incontestable and conclusive
evidence of its exclusive right to use the Marks in connection with the stated
goods. 15 U.S.C. §§ 1065 and 115(b).
Complainant further contends that as a result of Complainant's widespread and
continued use of its Marks, those marks have become highly distinctive in the
United States and throughout the world and are associated by the public with a
single source of origin, namely Autovillage.
ii.
Complainant argues that the Domain Names are confusingly similar to the Marks,
pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the
trademark TRUCKWORLD with the addition of generic or descriptive terms.
Complainant argues that the Domain Names were registered by Respondent on
January 24, 2000, May 7, 2002, March 7, 2002, and April 23, 2002, respectively,
long after Complainant (and its predecessor-in-interest) had established trademark
and service mark rights in and to its Marks. Registrant, a competitor of
Autovillage, is using the Domain Names in connection with its websites which
feature information on light-duty trucks, including, for example, reviews,
technical articles, vehicle industry news, games, chat rooms and event calendars.
Respondent is not a licensee of Complainant, and Complainant has not otherwise
authorized Respondent to use its Marks.
iii.
Complainant contends that Respondent has no rights or legitimate interests in the
Domain Names, 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 Names.
Complainant contends that Autovillage has not licensed or otherwise permitted
Respondent to use the Marks, nor has Autovillage authorized Respondent to register or
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use any domain name incorporating the Marks. None of the Domain Names is
Respondent's business name. The fact that Respondent registered four separate names
that incorporate Complainant's trademarks constitutes compelling proof that
Respondent had actual knowledge of Complainant's superior rights. In any event,
Respondent had at minimum constructive knowledge of Complainant's trademarks by
virtue of Complainant's United States registrations and application. See 15 U.S.C. §
1072. Accordingly, Respondent cannot be deemed to be making a bona fide use of the
Domain Names.
Thus Complainant concludes that Respondent cannot demonstrate rights or legitimate
interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or
demonstrable preparations to use, the Domain Names in connection with the bona fide
offering of goods or services. Respondent cannot demonstrate rights or legitimate
interests in the Domain Names under Paragraph 4(c)(ii) because it is not commonly
known under any of the Domain Names. 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 Names without the intent
to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the
trademark at issue. Respondent has deliberately registered the Domain Names
containing the Marks in an effort to attract Internet users searching for Complainant.
iv.
Complainant contends that Respondent registered and is using the Domain Names
in bad faith in violation of Paragraph 4(a)(iii).
Complainant contends that Respondent's use of domain names containing
Complainant's identical marks is inherently deceptive and is likely to confuse Internet
users as to the source, sponsorship, affiliation or endorsement of Respondent's websites.
In so doing, Respondent has intentionally attempted to attract, for commercial gain,
Internet users to Respondent's websites by creating a likelihood of confusion with
Complainant's marks as to the source, sponsorship, affiliation or endorsement of
Respondent's websites. Respondent has deliberately and misleadingly sought to divert
potential users of Complainant's website to Respondent's websites, which offer similar
services as Complainant. It is inconceivable that Enthusiast World, a competitor of
Autovillage, was not aware of Autovillage's prior rights in the Marks. Indeed, the only
conceivable explanation for why Respondent registered the Domain Names is that it
wished to benefit from the public recognition and goodwill associated with
Complainant for Respondent's own commercial benefit.
Finally, Complainant asserts that Respondent should also be charged with bad faith
since registration of the Domain Names postdates Autovillage's registration and use of
the Marks. Under U.S. trademark law, a person is charged with constructive notice of a
registered mark. See 17 U.S.C. § 1072. Moreover, although Respondent was put on
notice of Complainant's claim of prior rights in the Marks, and of Complainant's
concern as to the harm that would be caused to it by Respondent's use of the Domain
Names, Respondent has refused to cease and desist from using the Domain Names.
B.
Respondent’s contentions
i.
Respondent does not dispute that the Complainant has registrations covering the
Marks.
ii.
Respondent argues that the Domain Names are not confusingly similar to the
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Marks, pursuant to Paragraph 4(a)(i) of the Policy. Respondent asserts that it has
registered the Domain Names as internet sites directed to topics pertaining to Ford
trucks, Dodge trucks, classic trucks and sport trucks and thus the domain names
are descriptive of the sites and do not serve as trademarks or brand identifiers for
any specific company. The domain names were selected and used because of
their descriptive character and not to usurp any goodwill of Complainant or direct
traffic from Complainant. To the contrary, Respondent has used the Domain
Names before any use of Complainant for internet services relating to information
about Ford trucks, Dodge trucks, classic trucks and sport trucks.
Respondent further argues that Complainant’s registered trademark TRUCKWORLD is
for clothing and advertising services for others and does not place Respondent on notice
of any use as a domain name, magazine or internet site for information about the world
of trucks. Complainant’s trademark TRUCKWORLD ONLINE! covers internet
services, but is readily distinguishable from the Domain Names.
Respondent contends that it has not used the Domain Names in any way to cause
confusion with the Marks and that the Marks have not been used in conjunction with
internet sites directed to topics pertaining to Ford trucks, Dodge trucks, classic trucks or
sport trucks. The asserted registrations of Complainant are for the single fanciful word
“Truckworld.” The fanciful word “Truckworld” may have acquired trademark
significance (for other unrelated goods and services) separate from the ordinary
meaning of the words “truck” and “world,” but it is well settled that a company may use
descriptive terms for its products even though similar terms may be used as trademarks
by competitors. The wide use of words “truck” and “world” in connection with several
internet web sites containing information about trucks indicates that the words cannot
be appropriated for the use by any one. Respondent denies that it simply copied
TRUCKWORLD mark.
iii.
Respondent asserts that it has rights to or legitimate interests in the Domain
Names because it has made good faith commercial use of the Domain Names.
Respondent contends that the Domain Names were selected and used because of their
descriptive character and not to usurp any goodwill of Complainant or direct traffic
from Complainant. Contrary to the unsupported allegations of Complainant,
Respondent has used the Domain Names before any use of Complainant for internet
services relating to information about Ford trucks, Dodge trucks, classic trucks and
sport trucks.
Respondent again contends that Complainant’s trademarks TRUCKWORLD is for
clothing and advertising services for others do not place Respondent on notice of any
use similar to the Domain Names of Respondent. Respondent’s domain names that
describe its internet sites are noticeably distinguishable from the trademark
TRUCKWORLD ONLINE!
iv.
6.
Respondent denies that it registered or used the Domain Names in bad faith.
Paragraph 4(b) suggests four types of evidence of bad faith registration, none of
which applies. Respondent makes the same arguments that it presented to show
bona fide commercial use of the Domain Names above.
Discussion and Findings
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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.”
Because both the Complainant and Respondent are domiciled in the United States and
United States courts have recent experience with similar disputes, to the extent that it
would assist the Panel in determining whether the Complainant has met its burden as
established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles
of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc.
v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the
following:
i)
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; and,
ii)
that the Respondent has no legitimate interests in respect of the domain name;
and,
iii)
that the domain name has been registered and is being used in bad faith.
Enforceable Trademark Rights
Complainant contends that it has numerous registrations of the Marks and that its
trademark registrations are valid and subsisting and serve as prima facie evidence of its
ownership and the validity of the Marks. 15 U.S.C. § 1115. Complainant further
alleges that its registrations will soon become incontestable and conclusive evidence of
its ownership of the mark and exclusive right to use the mark in connection with the
stated goods. 15 U.S.C. §§ 1065 and 1115(b).
Panel decisions have held that registration of a mark is prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently distinctive.
Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v.
Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Respondent does not rebut the presumption created by the registrations of the Marks.
Therefore, the Sole Panelist finds that, for purposes of this proceeding, the Complainant
has enforceable rights in the Marks.
Identity or Confusing Similarity
Complainant further contends that the Domain Names are identical with and
confusingly similar to the Marks pursuant to the Policy paragraph 4(a)(i).
As numerous courts and prior UDRP panels have recognized, the incorporation of a
trademark in its entirety is sufficient to establish that a domain name is identical or
confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan
Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that
<peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not
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appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar
Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000)
(finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The
addition of other descriptive or nondistinctive terms in the domain name does not affect
a finding that the domain name is identical or confusingly similar to the complainant’s
registered trademark.
Respondent argues that the TRUCKWORLD trademark is not used for Internet or
online services. Only the TRUCKWORLD ONLINE! trademark covers Internet or
online services. Furthermore, the Domain Names do not use the entirety of the
TRUCKWORLD ONLINE! trademark and are easily distinguishable from
TRUCKWORLD ONLINE! Respondent notes that “truck” and “world” are common
and descriptive terms which are found on many related websites.
The Sole Panelist does not believe that the trademark rights of Complainant can be read
so narrowly as to isolate goods and services offered or sold on the Internet.
Complainant’s business involves trucking information, advertising and accessories and
is not limited to the Internet. The allegation that Respondent is a competitor is
uncontroverted. The relevant scope of inquiry for confusing similarity includes goods
and services related to trucking information, advertising and accessories. Therefore, the
Sole Panelist finds that the analysis of confusing similarity is sufficiently broad to
encompass all of the lines of commerce indicated by the classes of Claimant’s
trademark registrations.
The Domain Names each include the totality of the TRUCKWORLD mark, together
with descriptive and/or nondistinctive additions. Therefore, the Sole Panelist finds that
the Domain Names are confusingly similar to the Marks, pursuant to the Policy
paragraph 4(a)(i).
Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the
Domain Names pursuant to the Policy paragraph 4(a)(ii). Once a Complainant
establishes a prima facie showing that none of the three circumstances establishing
legitimate interests or rights applies, the burden of production on this factor shifts to the
Respondent to rebut the showing. The burden of proof, however, remains with
Complainant to prove each of the three elements of Paragraph 4(a). See Document
Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No.
D2000-0270 (June 6, 2000).
Complainant contends that Autovillage has not licensed or otherwise permitted
Respondent to use the Marks, nor has Autovillage authorized Respondent to register or
use any domain name incorporating the Marks. This allegation is not refuted by
Respondent.
Complainant further contends that Respondent is not making a bona fide use of the
Domain Names, because Respondent has actual knowledge of the Marks as a
competitor and constructive knowledge of Complainant's trademarks by virtue of
Complainant's United States registrations and application. Respondent declares that it
is making bona fide use of the Domain Names, because the Domain Names were
selected and used for their descriptive character and not to usurp any goodwill of
Complainant or direct traffic from Complainant and because Respondent has used the
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Domain Names before any use of Complainant for Internet services relating to
information about Ford trucks, Dodge trucks, classic trucks and sport trucks.
Complainant further contends that none of the Domain Names is Respondent's business
name. This allegation is not refuted by Respondent. The record does not reflect any
noncommercial or fair use of the Domain Names.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to
conclude that Respondent has rights or a legitimate interest in the Domain Names:
(i)
before any notice to you [Respondent] of the dispute, your use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
The only real dispute is over paragraph 4(c)(i) regarding bona fide offering of goods
and services. The Sole Panelist has not limited his analysis of this dispute the offering
of goods or services on the Internet. Therefore, the Sole Panelist can infer that
Respondent as a competitor had actual knowledge of the TRUCKWORLD trademark
before registration of the Domain Names and certainly had constructive knowledge. As
such Respondent did not engage in the bona fide offering of the goods and services.
Therefore, the Sole Panelist finds that Respondent has not adequately rebutted
Complainant’s allegation and does not have rights or legitimate interest in the Domain
Names pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in
bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show
bad faith registration and use of domain names:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner of
the trademark or service mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
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creating a likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product
There is no dispute in this record that the Respondent has intentionally attempted to
attract Internet users to its websites. The likelihood of confusion has already been
established. Therefore, the Sole Panelists finds that the evidence is sufficient to
establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).
7.
Decision
The Sole Panelist concludes (a) that the Domain Names are confusingly similar to
Complainant’s registered Marks, (b) that Respondent has no rights or legitimate interest
in the Domain Names and (c) that Respondent registered and used the Domain Names
in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules,
the Sole Panelist orders that the Domain Names be transferred to Complainant.
________________________________
Richard W. Page
Sole Panelist
Dated: November 29, 2003
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