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Laches in UDRP case (10)

Laches in UDRP case (10)

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Published by: LEX-57 the lex engine on Dec 21, 2010
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONShem, LLC v. Solytix, Inc.Case No. D2009-07391.The Parties
Complainant is Shem, LLC of Highland Park, Illinois, United States of America,represented by the law firm Neal, Gerber & Eisenberg, United States of America.Respondent is Solytix, Inc. of Hohenwald, Tennessee, United States of America,represented by the law firm WilmerHale, United States of America.
2.The Domain Names and Registrar
The disputed domain names <autocar.com> and <autocar.org> are registered withGoDaddy.com, Inc.
3.Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2009. On June 5, 2009, the Center transmitted by email toGoDaddy.com, Inc. a request for registrar verification in connection with the disputeddomain names. On June 5, 2009, GoDaddy.com, Inc. transmitted by email to theCenter its verification response confirming that the Respondent is listed as theregistrant and providing the contact details. The Center verified that the Complaintsatisfied the formal requirements of the Uniform Domain Name Dispute ResolutionPolicy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name DisputeResolution Policy (the “Rules”), and the WIPO Supplemental Rules for UniformDomain Name Dispute Resolution 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 June 17, 2009. Inaccordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2009.The Response was filed with the Center on July 7, 2009.The Center appointed Richard G. Lyon as the sole panelist in this matter on
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July 16, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declarationof Impartiality and Independence, as required by the Center to ensure compliance withthe Rules, paragraph 7.
4.Factual Background
Complainant is a holding company that obtained the rights to the AUTOCAR trademark in 2001. The AUTOCAR trademark was first registered in the United StatesPatent and Trademark Office in 1905, and nine other AUTOCAR trademarks have beenregistered there since: one in 1966, and the remaining eight between 2002 and 2005.The AUTOCAR trademark has been used continuously since 1905 in connection withthe manufacture, promotion, and sale of automotive products, especially heavy-dutytrucks. The AUTOCAR trademark had multiple owners prior to Complainant.Respondent registered <autocar.com> in July 1998 and <autocar.org> in August 1998.Today these domain names resolve to sites with several automotive-related links.These are not “standard” pay-per-click sites. Each is different, and each has photographs, advertisements in color, different advertisements and links, and severallinks to non-automotive sites. The site at “www.autocar.org” states “Copyright 1984 -2000, Solytix, Inc.”The Panel’s review of the archives at “www.archive.org” indicate that in 2000 the“www.autocar.com” site had a description of a business oriented at tips to consumersfor automotive maintenance and repairs. For example, “Car care tips and links to helpyou keep your car running great and looking good. This site aims to build a list of useful links for motorists interested in understanding more about car repair, car maintenance, and troublshooting. Car discussion forums are also a great way to learnmore. Come back often to see new and more useful urls and tips regularly.”
The parties’ contentions may be summarized as follows:
The disputed domain names are identical to Complainant’s registered AUTOCAR trademark, as the addition of a top-level domain such as “.com” or “.org” has no legalsignificance.Respondent has no rights or legitimate interests in respect to the disputed domainnames because the domain names are not and never have been used in connection witha
bona fide
offering of any goods or services. Respondent is not referred to or commonly known by “autocar”, and Respondent has no license from or legalrelationship with Complainant. Rather, <autocar.com> is no more than a place-holder webpage, with third party advertisements, and <autocar.org>, once a place-holder webpage, is now an empty webpage. Respondent owns 42 other domain names, 41 of which are either inactive or are merely place-holder web pages, used for third-partyadvertisements.Respondent registered and has used the disputed domain names in bad faith because it
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is “inconceivable” that Respondent “innocently registered” the disputed domain namesgiven the AUTOCAR mark’s “worldwide fame.” Rather, Respondent intentionallyregistered them to profit from the goodwill attaching to Complainant’s mark, and to preclude Complainant as mark owner from registering the AUTOCAR mark as a“.com” or “.org” domain name. Respondent’s passive holding of the disputed domainnames also indicates bad faith.Anticipating a possible claim of laches based upon the fact that the disputed domainnames have been registered for eleven years, Complainant notes that the defense of laches is not provided for under the Policy, that panels have refused to entertain thedefense, and that the length of time Respondent has owned the disputed domain namesdoes not excuse its improper registration and use of them.
Respondent does not dispute Complainant’s trademark rights or the fact that thedisputed domain names are identical to the AUTOCAR mark.Respondent does have rights and legitimate interests in the disputed domain names because Respondent made demonstrable preparations, before notice of this dispute, touse them in connection with the
bona fide
offering of a car diagnostic service. AndrewP. Borden, a founder, submits an affidavit that he and Stephen D. Longo, another founder, are both engineers who spent a considerable amount of time developing thesoftware that would support Respondent’s car diagnostic website. Shortly after registering the disputed domain names Respondent explored business relationships withseveral service providers and partners in connection with Respondent’s planned car diagnostic business including Big O Tires, LLC, AutomotiveCenter.com to send outinformation and advertisements about Respondent’s website, and Mitchell Internationaland Alldata to diagnose Respondent’s website software. Respondent pursued jointmarketing agreements with Johnson Auto and several other automotive part suppliers.Additionally, Respondent set up advertising links and revenue streams for “www.autocar.com” by creating associations with other notable car-related websites,such as “www.carfax.com”. Respondent operated an online car repair forum on“www.cardoc.com, which received hundreds of hits each day, before registering thedisputed domain names. Respondent chose the disputed domain names not because of Complainant’s mark, but rather to combine the two key words most used to search for Respondent’s online car repair forum: “car” and “auto.” Respondent previouslyoperated another online car repair forum on “www.autocar.com”; thus, it was notalways a place-holder webpage. In addition to Mr. Borden’s testimony Respondentsubmits documentation from 1998-2000 such as emails and a business plan for one of its prospective partners as evidence of its preparations to make use of the disputeddomain names.Respondent did not register and does not use the disputed domain names in bad faith because at the time of the registration Respondent did not have knowledge of Complainant or its trademark rights. The AUTOCAR mark is not so pervasive andfamous as Complainant asserts, as the mark has changed owners and the nature of the products sold under the mark many times. Eight of the AUTOCAR trademarks werenot registered until after Respondent registered the disputed domain names. Actualknowledge of Complainant’s mark cannot be imputed onto Respondent. Respondentdid not attempt to trade off of Complainant’s good will. Autocar is a very smallcompany, as admitted by Autocar’s Vice President of Sales and Marketing in 2005;thus there is little good will to exploit. Respondent’s use of the AUTOCAR mark is not
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