Laches in UDRP case (2)

8/8/2019 Laches in UDRP case (2)

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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Car Advisory Network, Inc. v. Journal Community Publishing Group, Inc.

Case No. D2008-0717

1. The Parties

Complainant is Car Advisory Network, Inc., Palo Alto, California, United States ofAmerica, represented by Bodman LLP, United States of America.

Respondent is Journal Community Publishing Group, Inc., Waupaca, Wisconsin,United States of America, represented by Michael Best & Friedrich, LLP, United Statesof America.

2. The Domain Name and Registrar

The disputed domain name is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (theCenter) on May 7, 2008. On May 8, 2008, the Center transmitted by email to

GoDaddy.com, Inc. a request for registrar verification in connection with the domainname at issue. On May 8, 2008 GoDaddy.com, Inc. transmitted by email to the Centerits verification response confirming that Respondent is listed as the registrant and

providing the contact details. The Center verified that the Complaint satisfied theformal requirements of the Uniform Domain Name Dispute Resolution Policy (thePolicy), the Rules for Uniform Domain Name Dispute Resolution Policy (theRules), and the WIPO Supplemental Rules for Uniform Domain Name DisputeResolution Policy (the Supplemental Rules).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notifiedRespondent of the Complaint, and the proceedings commenced on May 16, 2008. In

accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2008.The Response was filed with the Center on June 6, 2008 (shortly after midnight,Geneva time).

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The Center appointed Richard G. Lyon as the sole panelist in this matter onJune 13, 2008. The Panel finds that it was properly constituted and has jurisdictionover this proceeding. The Panel has submitted his Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the Center to ensurecompliance with the Rules, paragraph 7.

4. Factual Background

The parties offer information services in the automotive field, including classifiedadvertisements and materials about automobile marketing.

Complainant was founded by, and is the principal commercial vehicle for, PaulEisenstein, a journalist, publisher, or commentator on the automotive industrysince 1979. Mr. Eisenstein is said, without supporting evidence, to be one of theworlds mostly highly published automotive journalists. He founded a companycalled The Car Connection, and in April 1996 began an online source of information

about the automotive industry at www.thecarconnection.com. Complainant has usedthe designations The Car Connection and Thecarconnection.Com since at least thattime. Complainant registered the mark THECARCONNECTION.COM with theUnited States Patent and Trademark Office (USPTO) in April 2003, claiming a first useof the mark in commerce of June 1996.

The disputed domain name was first registered in March 1996 by a company calledNetLook, Inc. In April 1998 Respondents predecessor-in-interest, Add, Inc.,purchased the disputed domain name and a trademark registered with the USPTO forCAR CONNECTION from their then-owner Target Publications.

Complainants counsel contacted NetLook to purchase the disputed domain name atsome point prior to December 2000. Following NetLooks offer to sell it for $480,000,Complainants counsel replied in writing declining that offer and proposing a $2,000

purchase price. NetLooks and Complainants counsel exchanged letters inMarch 2001; in the last of these NetLooks counsel stated that NetLook had transferredthe disputed domain name to a third party effective March 2001.

Respondent believes (in allegations made upon information and belief) that throughinadvertence the registration information for the disputed domain name was neverchanged following Respondents acquisition of it, and that Complainants 2001 inquiry

to NetLook prompted Respondent or NetLook or both to effect the transfer at that time.

Through a broker, Complainant again attempted to acquire the disputed domain namein 2005, but was unsuccessful.

Respondent or one of its predecessor companies has used the phrase Car Connectionsince 1994 for publications featuring various forms of advertising for automobiles.Since September 2002 Respondent has published a weekly listing of classifiedadvertisements for automobiles named Car Connection Weekly and owns a domainname . As noted, in 1998 Respondent acquired a USPTO-registered trademark for CAR CONNECTION. The USPTO data base indicates that

this mark was cancelled in 2004.

According to the archives at www.archive.org Respondent used the disputed domainname only briefly in 2001 but in 2006 began using it for its weekly publication and a

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searchable data base for automobile classified advertisements.

The parties apparently conferred in April 2008 regarding ownership of the disputeddomain name, but could not reach agreement.1

5. Parties Contentions

A. Complainant

Complainant contends as follows:

Identical or Confusingly Similar. Complainant has rights in the phraseThecarconnection by reason of its USPTO-registered mark. The disputed domainname is identical to this mark except for addition of the gTLD .com and deletion ofthe definite article the. Complainant contends there has been actual confusion, citing

publications by third parties that associate Complainant or Mr. Eisenstein with thedisputed domain name.

Rights or Legitimate Interests. Respondents lack of rights or legitimate interests inthe disputed domain name is demonstrated by its virtual non-use of it for five yearsafter acquiring it. The brief use of it in 2001 is said to have been pretextual.Complainant has never authorized Respondent to use its mark. Respondent does notappear to have ever been commonly known by the disputed domain name or the

phrase carconnection.com. Citing its correspondence with Netlook, Complainantcontends Respondents sole purpose in keeping the domain name was eventually to sellit to Complainant. Quoting from the Complaint, At the time that it acquired thedomain, Respondent had constructive notice of Complainants rights in the Mark, andon information and belief, had actual notice of Complainant, its services, the goodwill

that Complainant had built in the Mark, and possibly that Complainant had desired tosecure the domain from NetLook. These facts and the circumstances indicate thatRespondent acquired the disputed domain name primarily for the purpose of running a

business that competes with that of Complainant. Actual confusion exists.

Registered and Used in Bad Faith. The same contentions establish bad faith inregistration and use. Respondents recent use of the disputed domain name for acompeting service is further evidence of bad faith.

B. Respondent

Respondent contends as follows:

Identical or Confusingly Similar. Respondent advances several principles of UnitedStates of America trademark law to demonstrate that the disputed domain at issue is notconfusingly similar to Complainants mark. The mark is descriptive and thereforeweak; indeed there are several other registered trademarks that are analogous that theUSPTO did not find confusingly similar. Under the multifactor test set out inE.I.

DuPont de Nemours & Co., 476 F. 2d 1357 (C.C.P.A. 1973), the disputed domain nameis not confusingly similar to Complainants marks. Respondents services are notsimilar to and not competitive with Complainants, and therefore there can be no

confusion. Respondent supports this contention by referring generally to the twowebsites, and alleging that Respondent offers classified advertisements, whileComplainant offers chat rooms and information about the automotive industry, shows,

1As is true of many of Complainants allegations there is no evidentiary support for this contention.

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and racing events.

Rights or Legitimate Interests. Respondents or its predecessors use of the phraseCar Connection since 1994 and its continuous use of the phrase Car Connection inits weekly publication show that before any notice to [it] of the dispute, [it has]use[d] . . . a name corresponding to the domain name in connection with a bona fideoffering of goods or services, and is thus within the safe harbor of paragraph 4(c)(i) of

the Policy. Because the domain name at issue is descriptive of Respondents business,Respondent has a legitimate interest in its use, even if confusion is found.

Registered and Used in Bad Faith. Again because the disputed domain name isdescriptive of its business, Respondents use it is not evidence of bad faith.

Further, regardless of the date Respondent is considered to have acquired the domainname-in 1998 when it purchased it from Netlook or in 2001 when the domain name was

properly transferred-Respondent owned a federally registered trademark in the markCAR CONNECTION. This fact prevents any finding of bad faith.

Respondent replies to Complainants allegation that Respondent acquired the domainname with the intent to sell it to Complainant by citing Complainants Exhibit L, inwhich the broker Complainant hired to try to acquire the domain name informedComplainant that [Respondent] does not wish to sell the domain at this time.

Respondent also asserts that if the likelihood of confusion is in doubt, the panel is notthe appropriate forum for resolution of the question, citing Credit ManagementSolutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.

Laches. Complainants claim is barred by laches. Complainant threatened UDRPaction against NetLook, Inc. eight years ago, and has given no excuse for its delay in

bringing this proceeding. Transferring the domain name now would prejudiceRespondent, as Respondent has invested in the domain name at issue by incorporatingit into Respondents business.

6. Discussion and Findings

The Panel may quickly resolve the merits of this proceeding. The requirements ofparagraph 4(a) of the Policy are conjunctive, and failure to prove any of them requiresthe Panel to deny the Complaint. Two uncontested facts establish that Respondent has

a right to and a legitimate interest in the disputed domain name and could not haveregistered it in bad faith: When Respondent acquired the disputed domain name (a) itheld a trademark registered in the USPTO for CAR CONNECTION, and (b) itregularly published a periodical that incorporated the words Car Connection as itsdominant feature. The first of these facts comes from a public record, and Complainantacknowledges the second in the Complaint. Either fact demonstrates that Respondentwas thus commonly known by the disputed domain name years prior to this dispute,2

and the latter illustrates use of it in connection with a bona fide business (its weeklymagazine) well before this proceeding began. Complainant has not met its burdenunder paragraphs 4(a)(ii) and 4(a)(iii) of the Policy and the Complaint must be denied.

Denial of the Complaint based on facts alleged in the Complaint justifies a finding of

2Interactive Study Systems Inc. v. BFQ , WIPO Case No. D2008 0205.

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Reverse Domain Name Hijacking,3 and ordinarily this Panel would make that findingfor this reason. Such a finding is discretionary with the Panel, however, and as inRudy

Rojas v. Gary Davis, WIPO Case No. 2004-1081, Respondents conduct in thisproceeding leads the Panel to refrain from doing so.

Both parties have cluttered the record with argument that has little if any bearing onthis proceeding. Complainant several times refers to constructive notice and

presumptions about Respondents motives. Respondent goes to great length to arguea lack of similarity between two phrases that differ only by inclusion or not of thedefinite article the, and in advancing its laches defense. One need not be a Policyexpert to know that the Policy does not incorporate the first two of these trademark lawdoctrines; the WIPO Overview of WIPO Panel Views on Selected UDRP Questions onthe Centers website states Consensus Views (paragraphs 3.4 and 1.2, respectively) thatneither doctrine applies. Panels under the Policy have uniformly and categoricallyrejected applying the equitable doctrine of laches in these administrative proceedings, aview easily ascertained through the search tools on the Centers website.4 Both partiessimilarly argue about trademark priorities between them. As each party has aregistered trademark that the Panel has no power or authority to ignore, interpret, or set

aside (WIPO Overview, paragraph 1.1), these arguments are largely irrelevant as well.

The Policy is limited, compared to national trademark law, in the scope of claims anddefenses it can consider, the evidence it can hear, and the relief it can grant. [ThePolicy] applies only to disputes involving alleged bad faith registration and use ofdomain names-conduct commonly known as cybersquatting or cyberpiracy. ThePolicy does not apply to other kinds of disputes between trademark owners and domainname registrants. Bradford & Bingley Plc v. Registrant [email protected], WIPO Case No. D2002-0499. These limitations are not arbitrary: thePolicy was intended to be, and designed to be, a forum for asking a narrow set ofquestions relevant to a single cause of action. The nature of that cause of action

dictates the form of the proceeding.5 That is why, for example, whether a likelihood ofconfusion exists is a simpler inquiry under the Policy than under trademark law6-the fullscope of the inquiry under trademark law is impractical and unnecessary when thecause of action is limited to cybersquatting.

Similarly a panel in a Policy proceeding will not consider tangential arguments such aslaches and claims of wrongs other than cybersquatting.7 Nor will it consider argumentsthat would bear on infringement in a trademark action, but are simply beyond the scopeof the Policy, such as the likelihood of confusion from a non-competitive use. (WIPOOverview, paragraph 1.2). Fact-finding under the Policy is tailored to the narrow

3 See, e.g.,Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598;Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain

Administrator, WIPO Case No. D2007-0856 (dissenting opinion).4 E.g.,HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658 ([T]he doctrines of acquiescence

or laches do not apply in UDRP proceedings. The fundamental difficulty for a respondent claiminglaches or the like is that there is nothing either in the Policy or the Rules that suggests that such adoctrine should apply. (citations omitted).

5 Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0491 ([T]here areessential differences between trademarks and domain names that must be borne in mind. There can bemore than one registrant of the same trademark and its effect may be limited by the category of goods towhich it relates, and the geographic boundaries of its territorial protection. There are no such limitationswith domain names. Due to the latters technological limitations and boundless use, only one entity can

be registered as a domain throughout the world. Thus, there is ample justification for different legalprinciples to apply to the Uniform Dispute Resolution Policy, its Rules, and the interpretation given tothese by Administrative Panels operating thereunder.).

6 See, e.g., Sallie Mae Inc. v. Richard Jones, WIPO Case No. D2006-1558.7 See, e.g.,Jules I. Kendall v. Donald Mayer Re skipkendall.com, WIPO Case No. D2000-0868.

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questions it addresses: ownership of trademarks and facial similarity between a markand a domain name.8 More than occasionally the substantive standards differ as well.The Policy most definitely is not an abbreviated or inexpensive alternative to aninfringement action. Both parties to this proceeding appear to think otherwise,however.

The Rules (paragraphs 3(b)(xiv) and 5(b)(viii)) require each party to certify, among

other things, that its assertions are warranted under these Rules and under applicablelaw, as it now exists or as it may be extended by a good-faith and reasonableargument. Those certifications in this proceeding appear to be little more thancopying the applicable language without thought to the substance and purpose of theRules. In this Panels opinion more is required, at a minimum a basic understanding ofthe Policy and the precedent developed under the Policy over the past decade. Thatincludes how the Policy sometimes differs in significant respects from nationaltrademark law. That basic knowledge in this case, in which Consensus Views from theWIPO Overview directly refute an argument fundamental to each sides argument,might have led the parties directly to the national courts, where any dispute betweenthem articulated in the Complaint clearly belongs.

With both parties equally at fault, the Panel will not appear to condone either partysconduct, choosing instead, as in theRojas case, to declare a plague o both yourhouses.

7. Decision

For all the foregoing reasons, the Complaint is denied.

________________________Richard G. Lyon

Sole Panelist

Date: June 27, 2008

8 See, e.g., Sallie Mae Inc. v. Richard Jones, WIPO Case No. D2006-1558 ([B]ecause the Policy does notpermit discovery, a complainant may rarely manage to adduce evidence of actual confusion. Indeed, ithas been stated that [e]vidence of lack of actual confusion is irrelevant) (quoting Gateway, Inc. v.Pixelera.com, Inc., WIPO Case No. D2000-0109)).

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Laches in UDRP case (2)