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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TPI Holdings, Inc. v. LaPorte Holdings

Case No. D2006-0235

 

1. The Parties

The Complainant is TPI Holdings, Inc, Norfolk, Virginia, United States of America, represented by the law firm Kilpatrick Stockton, LLP, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <traderonlne.com> is registered with NameKing.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2006. On February 24, 2006, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue, and NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 1, 2006.¹ The Center verified that the Complaint as amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2006.

The Center appointed Richard G. Lyon as the sole panelist in this matter on March 31, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The following facts have been established by evidence submitted with the Complaint:

Complainant is the owner of nine service marks, duly registered with the United States Trademark Office, that incorporate the phrase trader online. One of these is TRADER ONLINE, standing alone, which mark issued in December 1999. Complainant operates a website at <traderonline.com>, at which it leases access time to a computer database for general merchandise sales and advertising. Complainant uses the trader online phrase in several other websites for similar services; examples are <boattraderonline.com>, <ClassicCarTraderOnline.com>, and <trucktraderonline.com>. These websites offer services comparable to those offered at <traderonline.com>.

Respondent registered the disputed domain name on December 15, 2002. At one time Respondent used the disputed domain name as a portal with links to a number of other cites that provide listing for cars, trucks, boats, motorcycles, and other vehicles, including apparent links to Complainant’s own “Trader Online” (properly spelled) and “Auto Trader” websites.²

Complainant further alleges, but provides no evidence to support, the following facts.

Complainant has used its TRADER ONLINE service mark since at least April 1996. This site and Complainant’s other sites are currently utilized for promotion of more than 2.5 million individual classified advertisements, and more than 770,000 visitors access Complainant’s < traderonline.com> site each month. This site is thus “the number one ranked classified advertising website on the Internet,” as demonstrated by something called a “Comscore rating.”

 

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Confusingly similar to a mark in which Complainant has rights. The disputed domain name differs from Complainant’s registered Trader Online service mark only because of Respondent’s deletion of the letter “i.” It is thus confusingly similar to Complainant’s family of Trader Online service marks.

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not and has never been known by the disputed domain name. Respondent registered the disputed domain name subsequently to Complainant’s federal registration of its service mark. As a result, Respondent, a United States company, had constructive knowledge of the mark when it registered the disputed domain name, and would have found the properly spelled service mark had it done a proper search prior to registering the disputed domain name. Because of the commercial success of Complainant’s various website, Respondent very probably registered the misspelled Trader Onlne in the disputed domain name intentionally to take advantage of Complainant’s market and the goodwill attached to its trademark. By reason of the links found on Respondent’s website, Respondent competes directly with Complainant.

Bad Faith. Respondent has registered numerous domain names that include trademarks of third parties or slight misspellings of such trademarks. Complainant cites ten proceedings under the Policy in which similar conduct was found to violate the Policy.³ Respondent uses the disputed domain name to earn click-through revenue from various links on its site, thus taking advantage of Complainant’s name, mark, and commercial success, therefore, intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s site, in violation of the Policy, paragraph 4(b)(iv).

B. Respondent

As noted above, Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Preliminary Matters

Jurisdiction. Paragraph 10(b) of the Rules requires that “each Party [be] given a fair opportunity to present its case.” A preliminary issue in a default case is thus whether the Respondent actually received due notice of this proceeding, and, if not, whether the Center employed “reasonably available means calculated to achieve actual notice to Respondent.” Rules, paragraph 2(a). This latter inquiry is unnecessary here, as the Center’s records indicate that the Respondent did actually receive, both by electronic mail and post-courier, copies of the Complaint and other communications from the Center at the address listed in its registration of the disputed domain name. As the Respondent agreed to the Policy in its registration agreement with Name King.com, the Panel has jurisdiction to resolve this matter.

Burden of Proof. Although this issue is not entirely settled, prevailing practice under the Policy in a default case is for the Panel not to assume Complainant’s factual allegations are true simply because there has been no response, but, as in any other case, to require the complainant to prove each of the required elements under the Policy with competent evidence. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), §4.6, see also Texans For Lawsuit Reform, Inc. v. Kelly Fero, WIPO Case No. D2004-0778; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; but see, contra, Royal Bank of Canada v D3M Domain Sales, eResolution Case No. AF-0147. Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939 (All facts “not unreasonable” are taken as true.); Microsoft Corp. v. Tumacov, WIPO Case No. D2002-1039 (Panel may assume pleaded facts are true.).

In this proceeding the Panel’s task is complicated by Complainant’s failure to submit evidence to support a number of the factual allegations made by its counsel in its Complaint, particularly those noted above relating to the dates during which Complainant operated its various websites or regarding the commercial success of Complainant’s businesses and consequent goodwill attaching to its service marks. As in Brooke Hogan, supra, this evidence is within Complainant’s possession or control or could have been easily obtained from third parties.

Statements of counsel are not evidence, and in the Panel’s view the Policy requires evidence, not just factual allegations. Policy, paragraph 4(a) (“The complainant must prove [the three elements of the Policy]); Rules, paragraph 3(b)(xv) (“Annex any documentary or other evidence, . . . upon which the complaint relies . . ..”)(Emphasis supplied in both instances.) The Panel will therefore proceed to decide this proceeding based upon the factual allegations adequately supported by documentary evidence attached to the Complaint.

B. Identical or Confusingly Similar

Complainant has provided evidence of a registered service mark and its use of that mark in commerce. The disputed domain name differs from Complainant’s mark by a single letter, and is therefore confusingly similar. Paragraph 4(a)(i) of the Policy has been satisfied.

C. Rights or Legitimate Interests

To meet the literal language of Paragraph 4(a)(ii) of the Policy a complainant would have to prove a negative. Recognizing this, panels have refined the standard of proof and burden of persuasion so that a complainant that makes a prima facie showing that the respondent lacks rights or legitimate interests succeeds in the absence of evidence affirmatively establishing the respondent’s rights or legitimate interests. See Overview, §2.1. As Complainant has shown that Respondent is its direct competitor, Respondent’s evidentiary burden increases significantly. Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073.

Complainant’s evidence suffices to carry its initial burden of a prima facie showing. Respondent does not use the trader online phrase, properly or improperly spelled, in its corporate name or on its website other than in a link to Complainant’s site. That use is plainly not legitimate or bona fide under paragraph 4(c)(i) of the Policy. The existence of any links to commercial websites makes Respondent’s use of the disputed domain name presumptively commercial, and thus outside the protection of paragraph 4(c)(iii) of the Policy.

In sum, on the present evidentiary record Respondent lacks rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Typosquatting – intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name – is presumptive evidence of bad faith in registration and use of a disputed domain name. In some cases that presumption is conclusive. Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. There is nothing in the present record to depart from this precedent. On the contrary, Complainant has shown that Respondent is a frequent cybersquatter and typosquatter, a factor often deemed by panels as evincing intentional copying and thus bad faith.

 

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <traderonlne.com>be transferred to the Complainant.

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Richard G. Lyon
Sole Panelist

Date: April 7, 2006

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¹ The deficiency and amendment relate to the jurisdiction to which Complainant agrees to submit for purposes of the Rules, paragraphs 1 and 3(b)(xii). For convenience the Panel refers to the Amended Complaint as the “Complaint.”

² At present an Internet user is unable to access any website using the disputed domain name.

³ Complainant’s list is not exhaustive. Just last month a panel held that Respondent had engaged in typosquatting. LakeLand Holdings, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2006-0131.