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.
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.
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,
As is true of many of Complainant’s allegations there is no evidentiary support for this contention.