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Laches in UDRP case (2)

Laches in UDRP case (2)

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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 DECISIONCar Advisory Network, Inc. v. Journal Community Publishing Group, Inc.Case No. D2008-07171.The Parties
Complainant is Car Advisory Network, Inc., Palo Alto, California, United States of America, 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 <carconnection.com> is registered with GoDaddy.com, Inc.
3.Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on May 7, 2008. On May 8, 2008, the Center transmitted by email toGoDaddy.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 Center its 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 (the“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the“Rules”), 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. Inaccordance 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 theworld’s mostly highly published automotive journalists.” He founded a companycalled “The Car Connection,” and in April 1996 began an online source of informationabout 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 called NetLook, Inc. In April 1998 Respondent’s predecessor-in-interest, Add, Inc., purchased the disputed domain name and a trademark registered with the USPTO for CAR CONNECTION from their then-owner Target Publications.Complainant’s counsel contacted NetLook to purchase the disputed domain name atsome point prior to December 2000. Following NetLook’s offer to sell it for $480,000,Complainant’s counsel replied in writing declining that offer and proposing a $2,000 purchase price. NetLook’s and Complainant’s counsel exchanged letters inMarch 2001; in the last of these NetLook’s 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 never changed following Respondent’s acquisition of it, and that Complainant’s 2001 inquiryto 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 Connection”since 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 <carconnectionweekly.com>. As noted, in 1998 Respondent acquired a USPTO-registered trademark for CAR CONNECTION. The USPTO data base indicates thatthis 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 page 2
 
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.
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5.Parties’ ContentionsA.Complainant
Complainant contends as follows:
Identical or Confusingly Similar.
Complainant has rights in the phrase“Thecarconnection” by reason of its USPTO-registered mark. The disputed domainname is identical to this mark except for addition of the gTLD “.com” and deletion of the 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
. Respondent’s 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 Respondent’s 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 Complainant’s rights in the Mark, andon information and belief, had actual notice of Complainant, its services, the goodwillthat 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. Respondent’s 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 Complainant’s 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 in
 E.I. DuPont de Nemours & Co.
, 476 F. 2d 1357 (C.C.P.A. 1973), the disputed domain nameis not confusingly similar to Complainant’s marks. Respondent’s services are notsimilar to and not competitive with Complainant’s, and therefore there can be noconfusion. 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,
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As is true of many of Complainant’s allegations there is no evidentiary support for this contention.
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