ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: AUTOMOBILE ATLANTA
Respondent: WAYNE R. DEMPSEY
Case Number: AF-0173
Contested Domain Name: automobileatlanta.com
Panel Member: Alfred C. Frawley
 

 

1. Parties and Contested Domain Name

Complainant: Automobile Atlanta

Respondent: Wayne R. Dempsey

Contested Domain Name: automobileatlanta.com

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on March 31, 2000. The hard copy of the Complaint Form was received on March 31, 2000. Payment was received on April 10, 2000.

Upon receiving all the required information, eResolution's clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

- Verify if the contested domain name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

The inquiry led the Clerk of eResolution to the following conclusion: the Registrar is "CORE INTERNET COUNCIL OF REGISTRARS," the Whois database contains all the required contact information. The Contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

The Clerk then proceeded to send a copy of the Complaint Form and in accordance with paragraph 2(a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 14, 2000. That date is the commencement date of the administrative proceeding.

On April 13, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On April 28, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on May 7, 2000.

On May 14, 2000, the Clerk's Office contacted the undersigned, and requested for him to act as panelist in this case.

On May 15, 2000, the undersigned accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On May 16, 2000, the Clerk's Office forwarded a user name and a password to the undersigned, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

3. Factual Background

The Complainant, Automobile Atlanta, sells automobile parts and accessories. Complainant asserts that it is an "international mail order company" over the Internet at autoatlanta.com. Complainant also has a print catalog that it distributes. The Respondent, Wayne R. Dempsey, is a "partial owner" of an entity that operates an Internet site at the domain name pelicanparts.com. The parties appear to be in agreement that pelicanparts.com and Automobile Atlanta are competitors. On or about March 1, 2000, the Respondent, Wayne R. Dempsey, registered the domain name automobileatlanta.com through TotalNIC. Autoatlanta.com is a registered domain name of Automobile Atlanta. Complainant Automobile Atlanta now proceeds under the ICANN Domain Name Dispute Resolution Policy to have this domain name transferred to it.

4. Parties' Contentions

Complainant contends that it has rights in the trade name "Automobile Atlanta" and that the Respondent registered the domain name in bad faith, in essence, to divert customers from Complainant's site. Respondent contends that the Complainant's mark "Automobile Atlanta" is not a registered trademark and that Respondent's interest in the domain name is legitimate. Respondent offered no documentary evidence in support of its position.

5. Discussion and Findings

To qualify for a remedy, the Complainant bears the burden of proving each of the three elements set forth in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Policy"). The Complainant must show:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the domain name;

(3) The domain name has been registered and is being used in bad faith.

These factors are discussed in series.

Identity or confusing similarity. The domain name automobileatlanta.com is virtually identical to the trade name Automobile Atlanta under which the Complainant has been doing business. According to the Complainant, Complainant has used this trade name for 22 years. Although the mark is not registered, it is not disputed that for a significant period of time, the trade name Automobile Atlanta has been used and has become a source identifier for the Complainant. Respondent concedes that this is a "common law name used by Complainant." Respondent is mistaken in his contention that a U.S. federal trademark registration is a necessary precondition for Complainant's success in this matter. Complainant has used the trade name for a number of years and, as Respondent states, "The reputation of Complainant is well known in the industry." Complainant does business under that name and distributes a catalog promoting its business under that name. (Record, D00853). The Panel concludes, based on the record submitted, that the trade name Automobile Atlanta is a source identifier for Complainant's business and that Complainant has a common law right in that mark.

In the Panel's view, nothing in the Policy limits claims only to marks that are registered. To be sure, proof of the existence of common law rights may, in some instances, be more rigorous. Here, however, Respondent has not challenged Complainant's claim to common law rights. Indeed, Respondent's position serves to confirm that they exist.

Illegitimacy. The Complainant asserts that the Respondent registered the domain name for an improper purpose. Respondent has articulated no independent claim to the mark Automobile Atlanta or any variant. The Complainant suggests that that for a period of time after the registration of the domain name, a user of the Internet when typing in "automobileatlanta.com" was diverted to the Respondent's pelicanparts.com website. Specifically, Complainant states, "The domain name has obviously been registered…to deceive the public into visiting that side [sic] which automatically bounces the browser to pelicanparts.com." The Respondent claims that currently one is directed to a wholly separate website when one uses the domain name automobileatlanta.com. The record is not clear whether diversion to Respondent's site ever, in fact, occurred. However, the fact that it could be used improperly weighs in favor of the Complainant in this matter. Currently, the domain name points to a commercial site, which appears to compete with Complainant's business. This, too, weighs in favor of Complainant. If Respondent's intentions had truly been benign, the domain name could have pointed to a "placeholder" site ("under construction" or the like) during the pendancy of this dispute.

Bad Faith. The Panel finds that the mark was registered in bad faith. The evidence for this is several fold:

(1) Respondent contemplated a disruption of Complainant's business. Respondent is asserting lack of bad faith based upon an unimplemented intention or possibility that it will engage in a parody. Respondent asserts that it was its intention "at the moment of registration" that the domain located at automobileatlanta.com would be used as a parody site for comment on the business of the Complainant. In fact, it has not been used as a parody, by Respondent's own admission. To date based upon the record before the Panel, there is no indication that a parody has been executed. Moreover, it is not entirely clear that Respondent's reliance upon a so-called parody defense would be apt in any case since Respondent asserts fairly clearly that it intends to alert visitors to the automobileatlanta.com website of negative information concerning the business practices of Complainant. Contrast L.L. Bean, Inc. v. Drake Publishing, Inc., 811 F.2d 26, 33 (1st Cir. 1987) where use of trademark was "solely to identify…the object of its parody". Respondent is, of course, free to comment on the business practices of its competitor. However, the Panel believes that the use of a website address virtually identical to the competitor's trade name to attract people to the critical website would extend far beyond parody. Morrison & Foerster, LLP v. Wick, No. CIV. A. 00-B-465 (D.C.Colo. April 19, 2000). Therefore, even if Respondent's expressed intention had been executed in the way described by Respondent, it would still be evidence of bad faith.

(2) The domain name was registered to capitalize on Complainant's common law rights. Respondent concedes that he expected to attract people looking for Complainant's business on the Internet.

(3) The domain name is currently employed to divert traffic to another commercial Internet site. It could easily be used to divert traffic to Respondent's site.

6. Conclusions

As the most appropriate remedy for the circumstances of this dispute, I determine that the Respondent domain name holder must transfer the automobileatlanta.com domain name to the Complainant.

7. Signature

This decision of the Administrative Panel in Case No. AF-00173 was rendered on the 28th of May, 2000.

Portland, Maine, U.S.A.

(s) Alfred C. Frawley

Presiding Panelist