Wipo arbitration and Mediation Center
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WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONTrader Corporation v. Carlos Lorio Case No. D2007 1041 1. The PartiesThe Complainant is Trader Corporation, of Verdun, Quebec, Canada, represented by Lang Michener LLP, Canada. The Respondent is Carlos Lorio, of Colorado Springs, Colorado, United States of America. 2. The Domain Names and RegistrarThe two disputed domain names are 3. Procedural History3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2007. 3.2 On July 19, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On July, 23, 2007 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for each of the Domain Names and providing the Respondent’s contact details. 3.3 The Center verified that the Complaint 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”). 3.4 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 July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007. 3.5 On August 20, 2007, the Center received an email from the Complainant in relation to the Domain Names (the “Email”). In the Email the Complainant informed the Center that a person claiming to be Mr. Carlos Lorio, the Respondent, had contacted the Complainant on July 18, 2007. That person alleged that he had not registered the Domain Names and knew nothing about who had. He also said that he would like to make a written submission to the Center explaining that his details had been used without his permission and provided an email address to which, in due course, the Complainant sent the case manager’s details. However, the Complainant has not heard anything further from the alleged Mr. Lorio and, so far as the Panel is aware, neither has the Center. 3.6 The Center appointed Matthew. S. Harris as the sole panelist in this matter on August 22, 2007. 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 Background4.1 The Complainant is a corporation, incorporated under the federal laws of Canada with registered number 4311621. The Complainant was originally incorporated on May 19, 2006 as Canada Inc. However, since June 6, 2006 the Complainant has been registered under the name “Trader Corporation” (a name that it has retained notwithstanding various subsequent amalgamations with different companies). 4.2 The Complainant is based in Canada and has a presence throughout Canada as well as in three states in the United States of America (Tennessee, Indiana and Kentucky). The Complainant publishes approximately 200 publications and 20 websites covering four product areas: automotive; real estate; general merchandise; and employment. The business goal of the Complainant is to establish a national trading platform providing a “one stop shop” for buyers and sellers in these categories. Its publications have a weekly readership of approximately one million. Its websites attract approximately 3.5 million unique visitors per month. 4.3 Several of the Complainant’s publications are published under a title incorporating the word “Trader” (such as “Auto Trader” and “Trader Direct”). The Complainant also owns the domain names 4.4 Canada is officially bilingual in French and English and accordingly the Complainant’s business is also operated in the French language. The French language version of the Complainant’s website operates from the French language version of its trade name and domain names (i.e. 4.5 The Complainant owns a large portfolio of Canadian registered trademarks incorporating the word “trader”, principal amongst which is registered trademark No. TMA396197, for TRADER. This mark was filed on January 30, 1990 and is registered for use in association with periodical publications and the provision of on line databases offering the goods of others for sale or purchase and featuring advertising. 4.6 The Domain Names at issue were registered on June 22, 2007 and came to the attention of the Complainant on July 13, 2007. At that date the Domain Names each directed Internet users to a homepage that is an unauthorized reproduction of the Complainant’s “www.tradercorporation.com” homepage. The reproduction was identical in all respects (including the hyper links which were unauthorized deep links to the Complainant’s own website) save that it contained the following additional paragraph: “Trade Corporation has started in 2006 a program to help protect buyers against fraud and misrepresentation, Business Protection Program that is provided for free on all eligible capital equipment transactions completed on the Trader Corporation sites on or after April 15, 2006. The program offers coverage up to $25,000. Click here for Programs and terms”. 4.7 The Complainant does not offer any such “Business Protection Program” and has not authorized anyone to offer such a program on its behalf. 4.8 The link “Programs and terms” displayed on the Respondent’s websites lead to 4 further pages of the Respondent’s websites describing the “Business Protection Program”. These pages reproduce the Complainant’s name “Trader Corporation” in the same manner and format that the name is used by the Complainant on its own “www.tradercorporation.com” website. Further the Respondent’s webpages contain the copyright notice “Copyright © 2007 Trader Corporation”. 4.9 The web pages describe in some considerable detail the “Business Protection Program” and are headed “overview”, “coverage”, eligibility” and “how to file a claim” respectively. It is neither necessary nor practical to discuss this content in detail in this decision. However, the salient points are as follows: (i) The “overview” states that “Trader Corporation Business helps protect buyers against fraud and material representation” and goes onto describe the scheme as “free on all eligible capital equipment transactions completed on the Trader Corporation sites on or after April 15, 2006”. (ii) The “how to file a claim” section provides a check list of steps, including “send an email to Trader Corporation Customer Support by clicking here…. [including] the transaction number and a brief description of why you are filing the complaint….if you are unable to resolve your complaint after communicating with Trader Corporation Customer Support you will be sent an email that contains a claim form … [for submission] to the Business Purchase Protection third party provider”. (iii) After the checklist there is a sub section headed “Settlement processes requirements”, which describes how any failure to follow the third party provider’s instructions will void coverage and that “you will need to have documentation of all payments”. It also states that “the third party provider has the right to have an inspection of the item conducted at any time during the claim process”. 4.10 As has already been described above, although the Domain Names are registered in the name of one “Mr. Carlos Lorio”, there is correspondence to suggest that “Mr. Lorio” was not responsible for their registration. The Panel is not in a position to determine whether this is correct. However, where reference is made to the Respondent in this Decision, this is intended to be a reference to the person or entity behind the registration of the Domain Names, whether or not that person is Mr. Lorio. 5. Parties’ ContentionsA. ComplainantIdentical or Confusingly Similar5.1 The Complainant contends that the Domain Names are confusingly similar to the Complainant’s trade name, “Trader Corporation”, domain names and to the TRADER family of trademarks “in particular [the Complainant’s] trademarks TRADER CORPORATION… and TRADER” for the below reasons: (i) The Domain Names differ from the trade name “Trader Corporation” and trademark TRADER CORPORATION only by the addition of the “.net” gTLD (and in the case of (ii) The only additional difference between the Domain Names and the trademark TRADER is the generic corporate epitaph, “corporation” and the Complainant contends that the mere addition of a generic word “to a well known trademark is not sufficient to avoid confusion” (and cites Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000 0413 and Allianz AG v. Marian Dinu, WIPO Case No. D2006 0318 in this respect). (iii) The Domain Names are also confusingly similar to the Complainant’s domain names, 5.2 By extension the Complainant submits that the Domain Names are equally confusing to the Complainant’s French language trade name (Société Trader), its trademark (SOCIÉTÉ TRADER) and domain names ( Rights or Legitimate Interests5.3 The Respondent is not licensed or authorized to use any of the Complainant’s trademarks or to reproduce the Complainants’ website. The Respondent has no legitimate connection with the Domain Names which do not describe or identify anything about the Respondent. 5.4 There is no evidence that the Respondent is using the Domain Names in connection with a bona fide offering of good or services and the Respondent’s actions are “evidence of extreme male fides”. The Respondent’s use of the Domain Names is intended to divert customers from the Complainant’s own websites in order, it is said, to perpetrate a fraud. 5.5 The Complainant also contends that the fact that the Respondent has copied the Complainant’s own websites demonstrates that the Respondent knew of the Complainant at the time he acquired / registered the Domain Names. Registered and Used in Bad Faith5.6 The Complainant claims that the Respondent registered the Domain Names in order to disrupt the Complainant’s business and to attract Internet users to the Respondent’s websites by passing off the websites as the Complainant’s. 5.7 The evidence of bad faith is said to be overwhelming. The Respondent has copied the content of the Complainant’s own websites and is passing off a fraudulent commercial offering (the “Business Protection Program”) as the Complainant’s. 5.8 The Complainant does not know the exact motives of the Respondent. However, the Respondent may be using the Domain Names to phish for private information from Internet users who believe they are dealing with the Complainant and/or to disrupt the Complainant’s business with the intention of extracting money from the Complainant in return for transfer of the Domain Names. 5.9 Further, the Complainant states that it has recently experienced an identical scheme. That scheme was operated from the domain name B. Respondent5.10 The Respondent did not file a Response in reply to the Complainant’s contentions and is therefore in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules. The Panel considers the implications of this below. 6. Discussion and Findings6.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. 6.2 This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in Paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) each Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and(ii) the Respondent has no rights or legitimate interests in respect of each Domain Name; and(iii) each Domain Name has been registered and is being used in bad faith.6.4 However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar6.5 There are two separate elements which the Complainant must prove under Paragraph 4(a)(i) of the Policy. The Complainant must (i) provide evidence showing that it has rights in a trademark or service mark and (ii) show that the Domain Names are each identical or confusingly similar to the trade or service mark in which it has rights. 6.6 In respect of this first element, the Complainant relies upon its trade name, “Trader Corporation”, domain names and the TRADER family of trademarks, in particular the trademarks TRADER CORPORATION and TRADER. 6.7 The Panel considers each of these marks and names in turn below. The Trader mark 6.8 The Complainant has provided evidence that it owns a Canadian registered trademark for the word “TRADER” in the form of a printout of the online database of the relevant Trademark Registry. On the basis of the Complainant’s evidence, the Panel accepts that the Complainant has made out the first element of Paragraph 4(a)(i). 6.9 In considering the second element of Paragraph 4(a)(i), the “.net” part of each Domain Name can in this case be ignored. Therefore, the only difference between the TRADER mark and the Domain Names is the descriptive word “corporation” which is either juxtaposed (in the case of 6.10 It is not possible to include spaces between words in domain names. Accordingly, the absence of a space or its substitution with a hyphen in between the words Trader and Corporation in the Domain Names is not significant. 6.11 That leaves the word “corporation”. The Panel notes that, as submitted by the Complainant, the word “corporation” is a generic corporate epitaph. The Panel further notes that in addition to the cases cited by the Complainant there is a long line of cases in which previous panels have found that a domain name consisting of a complainant’s mark plus a descriptive word is confusingly similar to the mark. Examples include Harrods Limited v. Peter Pierre, WIPO Case No. D2001 0456 and this Panel’s decision in Sallie Mae, Inc. v. Chen Huang, WIPO Case No. D2004 0880. 6.12 Therefore, the Panel holds that the Complainant succeeds in this particular case under this heading. The Trader Corporation and Société Trader mark and the “Trader Corporation” name and domain names 6.13 As described above, on February 19, 2007 the Complainant filed applications for the Canadian marks TRADER CORPORATION and the French equivalent, SOCIÉTÉ TRADER. However, the Complainant does not submit that at the date of filing the Complaint these applications had proceeded to grant. The Panel has therefore decided (as it is entitled to under Paragraph 10(a) of the Rules) to conduct limited factual research into this issue by searching for these applications on the publicly available trademark database of the Canadian Intellectual Property Office. The searches (conducted on September 4, 2007 and stated to be accurate up to August 28, 2007) revealed that the first examiner reports had been issued but that neither mark was registered. 6.14 Whether an application for a trademark can constitute a trademark in which a complainant has rights for the purposes of the Policy has been a matter of some debate amongst panelists. The issue is explored in some detail in this Panel’s decision in Fashiontv.com Gmbh v. Mr. Chris Olic, WIPO Case No. D2005 0994, where the Panel noted that the predominant view appeared to be that a registered trademark application would not ordinarily be sufficient. 6.15 However, in order to succeed under Paragraph 4(a)(i) of the Policy a complainant need only show that the domain name at issue is identical or confusingly similar to “a” (i.e. just one) mark in which it has rights. Given this, and given the Panel’s finding that the Domain Names are confusingly similar to the Complainant’s TRADER mark, it is unnecessary to consider this issue further. 6.16 There are finally the Complainant’s assertions in relation to the “Trader Corporation” name and domain names. These are somewhat hard to follow. It may be that there is some sort of assertion of common law or unregistered trademark rights, but these terms are not used in the Complaint. However, once again, given the Panel’s finding in relation to the TRADER mark it is not necessary to consider this further. 6.17 In conclusion, the Complainant has made out Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests6.18 There is no evidence that the Respondent made any use or preparations for use of the Domain Names in connection with a bona fide offering of goods or services. Indeed the Respondent appears to be using the Domain Names to pass of the “Business Protection Scheme” as the Complainant’s. This is clearly neither use for the purposes of a bona fide offering, nor legitimate non commercial/ fair use of the Domain Names. 6.19 The Panel finds it very hard to believe that the Respondent could credibly argue that he is commonly known by the Domain Names or for some other reason that he has rights or legitimate interests in respect of the Domain Names. Certainly the Respondent does not submit any evidence of such rights or interests. 6.20 In the circumstances, the Panel has very little difficulty in concluding that the Respondent is using the Domain Names to divert Internet users who are misled by it into believing that his websites are the legitimate websites of the Complainant for commercial gain. The precise form of that commercial gain is not clear. Although it does not matter, the Panel accepts as reasonable the Complainant’s contention that the commercial gain may arise from valuable private data obtained from Internet users and/or from the possibility of selling the Domain Names to the Complainant. 6.21 The Panel finds that the Complainant has established Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith6.22 To succeed under Paragraph 4(a)(iii) of the Policy the Complainant must show that the Domain Names (i) have been registered and (ii) are being used in bad faith. 6.23 The evidence suggests that the Respondent is using the Domain Names to pass of the “Business Protection Scheme” as the Complainant’s, possibly to phish for private information or to elicit an offer to buy the Domain Names from the Complainant. 6.24 The Domain Names were registered on June 22, 2007. The Complainant first became aware of the Respondent’s registrations for and use of the Domain Names on July 13, 2007. Therefore, the Respondent’s use of the Domain Names in the manner described was if not immediate then within at most 20 days of their registration. Further this exact same scheme was also perpetrated with respect to the 6.25 It is difficult to think of more egregious examples of bad faith registration and use than those in the current case. Accordingly, the Panel finds that he Complainant has made out this aspect of the Policy. 6.26 It is unnecessary to go further, but there is perhaps one other small point that is worth making in this case. As has already been described earlier in this decision, on July 18, 2007 the Complainant was telephoned by someone claiming to be Mr. Carlos Lorio, and who denied anything to do with the registration of the Domain Names. This telephone call also supports the Panel’s finding of bad faith. If “Mr. Lorio’s” assertions are correct, this would suggest that a third party’s identity has been falsely adopted in connection with the registrations. The adoption of false contact details has in a number of UDRP cases been held to be evidence of bad faith registration and use. If the assertions on the telephone call are not correct and the “actual” Respondent was the caller, then these false assertions are of themselves supportive of a finding of bad faith. 6.27 As noted above, the Complainant has referred to an identical scheme operated from the website at 6.28 In conclusion, the Panel finds that the Complainant has shown the requirement of Paragraph 4(a)(iii) of the Policy. 7. DecisionFor all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, Matthew S. Harris Sole Panelist Dated: September 5, 2007 page |