Autointel.com

The timeline behind autointel.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION GAAH INC., d/b/a Autointel v. Services LLC Claim Number: FA0702000925297 PARTIES Complainant is GAAH INC., d/b/a Autointel (“Complainant”), represented by Hovanes Margarian, of GAAH INC., d/b/a Autointel, 13636 Ventura Blvd., #225, Sherman Oaks, CA 91423. Respondent is Services LLC (“Respondent”), 9 Copthall, Roseau, Roseau 00152, DM. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <autointel.com>, registered with Moniker Online Services, Inc. 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. John J. Upchurch as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2007. On March 7, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <autointel.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 March 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2007 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@autointel.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <autointel.com> domain name is identical to Complainant’s AUTOINTEL mark. 2. Respondent does not have any rights or legitimate interests in the <autointel.com> domain name. 3. Respondent registered and used the <autointel.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, GAAH, Inc., d/b/a Autointel, holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AUTOINTEL mark (Reg. No. 3,070,278 issued March 11, 2006). Complainant has used this mark in connection with broker and wholesale services as a nationwide auto dealer. Complainant has used its mark for the sale of services, including leasing, sale, trading, wholesale, brokering, and advertising of new and used automobiles. Complainant has registered the domain name <autointel.info> in connection with its sale of nationwide auto dealer services. The <autointel.com> domain name was originally registered on February 4, 1997, but the original owner failed to renew in November of 2006, at which time Respondent gained possession. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying links to third-party websites in direct competition with Complainant’s services and goods under the AUTOINTEL mark. DISCUSSION Paragraph 15(a) of 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) 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 has established rights in the AUTOINTEL mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). While the original owner registered the <autointel.com> domain name in 1997, years before Complainant’s issued trademark registration, a panel and a court have both held that the registration date for a disputed domain name should be considered the most recent transfer date and not the date of the very first registrant. Therefore, since Respondent here obtained ownership of the <autointel.com> domain name in November of 2006, Complainant’s trademark predates Respondent’s registration of the domain name. The Panel, therefore, finds that Complainant has established sufficient rights in the AUTOINTEL mark pursuant to Policy ¶ 4(a)(i). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Dec. 28, 2006) (holding that one only needs to trace the registration date back to the most recent transfer date instead of the original registration); see also Christensen Firm v. Chameleon Data Corp., 2006 WL 3158246 (W.D. Wash. 2006) (holding that under the ACPA, each act of transfer was a new “registration” for the purposes of ACPA analysis, and thus, one need not trace the progeny of a domain back through to the first party that registered it, but only to the most recent, i.e., the one the complaint is all about). Respondent’s <autointel.com> domain name is identical to Complainant’s AUTOINTEL mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” to it. The Panel finds that the addition of a gTLD is not a distinguishing difference and that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”). The Panel finds Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent does not have rights or legitimate interests in the <autointel.com> domain name. Complainant must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel assumes that Respondent here has no rights or legitimate interests because Respondent has failed to respond to the Complaint. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). However, the Panel will evaluate any available evidence to determine whether Respondent has rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c). Complainant alleges that Respondent is using the <autointel.com> domain name to redirect Internet users to Respondent’s website displaying links to competing third-party websites. Respondent’s use of the domain name to display links to competing websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under the Policy ¶ 4(c)(ii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user). Additionally, Respondent has offered no evidence and none exists in the record to indicate that Respondent is commonly known by the <autointel.com> domain name. Respondent’s WHOIS information identifies Respondent as “Moniker Privacy Services.” Therefore, Respondent has failed to establish rights or legitimate interests in the <autointel.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and is using the <autointel.com> domain name, which is identical to Complainant’s AUTOINTEL mark, in order to redirect Internet users to Respondent’s website displaying links to competing third-party websites. The Panel finds that such use constitutes disruption and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). Respondent is using the <autointel.com> domain name to redirect Internet users to Respondent’s website that display links to competing websites for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is identical to Complainant’s AUTOINTEL mark, Internet users will likely become confused as to Complainant’s affiliation with Respondent’s website. Presumably, Respondent is profiting from this confusion in the form of click-through fees. As a result, Respondent’s use of the <autointel.com> domain name to display links to competing websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <autointel.com> domain name be TRANSFERRED from Respondent to Complainant. John J. Upchurch, Panelist Dated: April 18, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.