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Дела по национальным доменам

Complainant is Dealertrack.Com, Inc., a corporation organized under the law of the State of Delaware with a principal place of business at Melville, NY 11747, U.S.A.

Respondent is Dealer Tracks LLP, an entity with an address at Los Angeles, California 90010, U.S.A.

The four disputed domain names are:

<dealertrack.net>
<dealertracks.net>
<dealertracks.com>
<dealertraks.com>

The registrar with which each of the domain names are registered is Intercosmos Media Group, Inc., dba directNIC.com, with a business address in New Orleans, Louisiana, U.S.A.

The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on August 2, 2002, via email, on August 5, 2002, via hard copy. The Registrar Verification Response was submitted August 5, 2002.

On August 6, 2002, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center ("Center") by mail informing the Respondent that an Administrative Proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, l999 (the "Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy dated October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center set August 26, 2002, as the date for the submission of a Response by Respondent. The Center has verified that the Complaint satisfies the formal requirements of the Policy, Rules, and Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.

On August 23 (email), August 29 (hard copy), Respondent’s Response was received. This is in compliance with the deadline of August 26.

Subsequently, the panel requested answer to some questions from each party, and those answers were received October 16, 2002, by email, in due time on the deadline set in the order requesting answers.

The domain names were first registered July 6, 2002, in the name of "DOT DOT Enterprises, Inc.", with an address at 481 Eighth Avenue, # 710, New York, NY NY 10001. The administrative and technical contact provided when the domain names were first registered was "TJPakk". Complainant alleges however that Investigators hired by Complainant determined that the registrant designation at this time was incorrect, that no business under the name "DOT Enterprises Inc." was located at the address provided, and the phone number was that for the "National Manicuring School" located elsewhere in New York.

The four domain name registrations were transferred to Respondent by "Dot Dot Enterprises Inc." on July 25, 2002.

Complainant alleges it is the owner of the trade name and service mark, a term "coined" by Complainant, namely DEALERTRACK, as used in connection with vehicle financing and leasing services. That tradename is used in the United States. That service mark is registered in United States, registration number 2,441,682. First use of the mark on the financial and leasing services detailed in the registration is recited as October 20, 1999.

Complainant is also the owner of an application presently pending, Serial No. 76-208,064, for the mark DEALER TRACK, for "providing aggregated financial credit, contact, status and dealer reserve information from multiple lenders to automobile dealers via global computer network" as recited in the application. First use of the mark in connection with the services recited in that application is again claimed as October 20, 1999.

Respondent has not asserted priority over the first use date (nor in one case, registration date) in Complainant’s U. S. trademark registration and application. Respondent also has not asserted any failure of Complainant’s title to trademark rights, nor failure of Complainant to enjoy credit for its predecessor’s first use; in this context Complainant has carried its burden of proof on those points.

After Complainant’s trademark registration 2,441,682, and after the application and first used dates of the pending service mark application Serial No. 76-208,064, Respondent registered the four domain names in issue, <dealertrack.net>, <dealertracks.net>, <dealertracks.com>, and <dealertraks.com>. Subject to correction by discovery not authorized in the present ICANN process, that pattern of tracking the prior Complainant registration and use appears to show both Respondent’s prior knowledge of the Complainant’s mark and an intent to gain in some manner from the bracketing of Complainant’s domain name with the several new domain name registrations. Disregarding the suffixes as the ICANN precedents urge us to do, I find the four accused domain names to be confusingly similar or identical to the marks which Complainant has asserted title to, within the meaning of Policy 4(a)(i).

There are other acts by Respondent which can be well argued as evidence of bad faith, intent to divert business from Complainant, or trademark infringement, and which may well relate to the two requirements of Policy 4(a) (iii), but I need not delve into them because I decide this case on a different and independent legal theme that binds me, Policy 4(a)(ii)’s requirement:

"Complainant has the burden of proof [that] . . . (ii) the Respondent

has no rights or legitimate interests in respect of the domain name."

"Legitimate interests" as there used has been construed to include what I will call "sweat-equity" in the planning and development of a legitimate business--a factor which distinguishes the pure-blood cybersquatter intent on profiting big from extorting big bucks from the owner of a prior trademark by selling the domain name registration to the prior trademark owner.

Respondent urges, inter alia, that its business plan is for a business markedly different from that of Complainant. I need not decide whether such differences as exist are or are not sufficient for this or that purpose, because that is not the basis of my decision.

Complainant’s submission asserts that

--"the contested domain names . . . do not resolve to active sites
but rather
--cause a visitor to "arrive at spurious "log-in pages which do not
permit visitors to proceed any further".

These allegations are not denied by Respondent, speaking as of the time of the writings of those statements. I take them to be true circumstances fully consistent with a pro-Complainant result and indicative on the surface of bad faith in the Respondent’s operation and use of the domain names as thus far actually conducted by Respondent.

But the further Complainant conclusion,

"no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondent."

is in rather direct conflict with Respondent’s allegations and showing of a substantial business plan dated April 2002, for a financial services business on the web.

On this issue Complainant’s recitation is more in the nature of hope and expectation as to what might be proved and found if Complainant had enjoyed court-process discovery. But to agree with that speculative conclusion of Complainant is inherently to conclude that Respondent is guilty of a premeditated, willful and heinous fraud upon this panel and process, a fraud in proposing a fictitious business plan as something realistic that the panel should rely upon as showing a legitimate "sweat equity" and an intent upon their registration to use the domain names in a legitimate financial business. Such a finding of total fraud upon the dispute resolution process requires clear and convincing evidence, not merely a preponderance of the evidence.

That somebody would be inclined to bet $5.00, even money or near-even money, on Complainant’s side of what might be found via discovery, is not enough to be satisfactory evidence of fraud on the panel and administrative process, particularly in context of Complainant having access to another remedy inclusive of discovery Complainant does not have access to here.

This no-discovery concept was of course adopted because of the ICANN proper effort to keep this administrative process low-cost and fast-track, and leave court litigation with its high costs and time consumption as the process for solving cases justifying those burdens.

I find that Complainant’s conclusion that

"no actual or contemplated bona fide or legitimate use of the contested

domain names could be claimed by Respondent"

has been shown by Respondent to be not accurate. And if it "could" be not accurate in any realistic sense, then there is no "clear and convincing" evidence to counter that which could be. Rather, Complainant’s theme dissolves by evidence it has had no chance to cross examine, into a perhaps sincere hope and speculation, but not adequate proof, for the point it is making. The mere fact that such a fraud would be easy to perpetrate in this process, can not be taken as evidence that the fraud was perpetrated in this case. For all my suspicions I am unable to find Complainant’s realistic preponderance of the evidence without presuming intent of Respondent to commit a rather heinous willful fraud about its legitimate business intent at the time it was registering, a finding that requires clear and convincing evidence.

Yes, the whole of Respondent’s business plan could be a fictional cover story for a continuity of the Respondent’s activities as performed thus far and described in the pair of set-off quotes above, but the ICANN process focus upon fast-track, low-cost, dispute resolution does not permit discovery and other cross examination of Respondent’s position and business plan out of which to enable Complainant to carry its burden of proof. A person is not guilty until proven so.

The ICANN process addresses a limited class of cases of clear "cybersquatting" with no bona fides in the Respondent’s use nor in his pre-planning, sweat-equity work toward use of the domain name in a legitimate business. Complainant may in a U.S. court proceeding get the requisite discovery to correct any error here which is forced by the ICANN process for low-cost, fast track determination. That is Complainant’s savior, if it is entitled to one, from the potential for bad result dictated by the ICANN Policy and Rules for fast-track-low-cost.

Finding that Complainant has not carried its burden of proof of ICANN Policy 4(a)(ii), I conclude for Respondent.

Complainant’s complaint is dismissed.

Respectfully.