AutoNation, Inc. v. Sticky Web, Inc. f/k/a e-Possibility.com, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

AutoNation, Inc. v. Sticky Web, Inc. f/k/a e-Possibility.com,

Inc. and Successor by Merger of The Perfect Web Corporation

Case No. D2001-0442

1. The Parties

The Complainant is AutoNation, Inc., a Delaware corporation with a principal

place of business at 110 Southeast Sixth Street, 20th Floor, Fort Lauderdale,

Florida 33301, USA.

The Respondent is e-Possibility.com, Inc. (now known as Sticky Web, Inc.),

a Florida corporation with a principal place of business at 411 East Atlantic

Avenue, #6, Delray Beach, Florida 33483, USA (Footnote

1).

2. The Domain Name and Registrar

The dispute concerns the domain names <auto-nation.com> and <auto-nation.net>,

hereinafter the Disputed Domain Names. The Registrar with which these Domain

Names are registered is Network Solutions, Inc. with a business address at 505

Huntmar Park Drive, Herndon, Virginia 20170, USA.

3. Procedural History

On March 27, 2001 and April 3, 2001, respectively, the World Intellectual Property

Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint

electronically and by hard copy for a decision in accordance with 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).

On April 4, 2001, a revised Annex A was received.

On March 30, 2001, the WIPO Center sent a Request for Registrar Verification

to the Registrar. On April 3, 2001, the Registrar confirmed to the WIPO Center

that it was the Registrar of the said Domain Names and that the current registrant

of the said Domain Names was the Respondent or a predecessor in interest of

Respondent..

On April 12, 2001, having found that the Complainant had satisfied the formal

requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO

Center sent the Notification of Complaint and Commencement of Administrative

Proceeding (the Notification) by post/courier, facsimile, and e-mail to the

Respondent and transmitted electronically copies of said documents to the Complainant,

ICANN, and the Registrar. The said Notification particularized the formal date

of the commencement of this administrative proceeding as April 12, 2001, and

required the Respondent to submit a Response to the Complaint within 20 calendar

days from the date of receipt of the Notification (by May 1, 2001), failing

which the Respondent would be considered to be in default.

The Respondent failed to file the Response with the WIPO Center by the response

due date. On May 2, 2001, the WIPO Center sent a Notification of Respondent

Default to the Respondent by e-mail and copied the Complainant via e-mail. The

Complainant elected to have the dispute decided by a single-member panel (the

Panel). On May 22, 2001, the WIPO Center appointed Mr. Terrell C. Birch

to be the panelist after receiving a Statement of Acceptance and Declaration

of Impartiality and Independence from him and sent a Notification of Appointment

of Administrative Panel and Projected Decision Date to the Complainant and the

Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center

sent a Transmission of Case File to the Panel.

The Panel finds that the WIPO Center has discharged its obligations and responsibility

under the Rules. The Panel will hereby issue its Decision based on the Complaint,

the Policy, the Rules, and the Supplemental Rules, without the benefit of any

Response from the Respondent.

4. Factual Background

Complainant, AutoNation, Inc., has established exclusive, worldwide rights

in the name and mark AUTONATION, and other marks incorporating AUTONATION, as

used in connection with automobile dealership services and related goods and

services. AutoNation, Inc.’s rights in the AUTONATION family of marks date back

to at least as early as 1996, when it began using the mark AUTONATION USA in

connection with its "AutoNation USA" automobile superstores. Since

that time, AutoNation, Inc. has expanded the AUTONATION family of marks to include

marks such as AUTONATION, AUTONATION DIRECT, <AUTONATION.COM>, <AUTONATIONDIRECT.COM>,

AUTONATION EXPRESS and AUTONATION USA CAFE.

In connection with these marks, AutoNation, Inc. or an affiliate of AutoNation,

Inc. on behalf of Auto Nation has obtained numerous United States and foreign

trade/service mark applications and registrations. For example, AutoNation,

Inc. has pending United States applications, for which Notices of Allowance

have been issued, for AUTONATION (Serial No. 75/644,785 for "automobile

dealership services"), AUTONATION (Serial No. 75/644,787 for "financial

services, namely, financing the purchase of new and used motor vehicles, and

underwriting insurance and warranty contracts for new and used vehicles"),

AUTONATION (Serial No. 75/644,788 for "automotive repair and maintenance

services") and AUTONATION DIRECT (Serial No. 75/655,398 for "automotive

repair and maintenance services"). AutoNation, Inc. also owns United States

Federal Registration No. 2,356,293 for AUTONATION DIRECT, which was issued on

June 6, 2000 with a filing/constructive use date of March 8, 1999 and a first

use date of at least as early as June 22, 1999 for "financial services,

namely, financing the purchase of new and used motor vehicles, and underwriting

insurance and warranty contracts for new and used motor vehicles."

AutoNation, Inc. also owns numerous foreign registrations, including registrations

for AUTONATION (in Argentina, Australia, Benelux, Brazil, Canada, the European

Community, Germany, Japan, Mexico, New Zealand, Switzerland and the United Kingdom)

and AUTONATION DIRECT (in Argentina, Australia, Benelux, Brazil, Canada, the

European Community, Germany, Japan, Mexico, New Zealand, Switzerland and the

United Kingdom). Each of these registrations are in connection with automobile

dealership services, financial services related to the purchase of new and used

motor vehicles, automobile repair and maintenance services and other automotive-related

goods and services.

Respondent is using the Domain Name and the name <auto-nation.com> in

connection with a Website that provides information and links regarding "new

car buying, new car prices, used cars, classifieds and instant auto insurance

rates."

Furthermore, Respondent’s other actions with respect to the Domain Names confirm

that Respondent has no rights or legitimate interests in the Domain Names. First,

Respondent, successor by merger of "The Perfect Web Corporation,"

has registered the domain name <auto-nation.net>, which also corresponds

to the name and mark AUTONATION. (Footnote

2) Although Respondent did not put the domain name to any legitimate use,

Respondent was, however, publicly offering to sell this domain name.

(Footnote 3) If Respondent had any rights or legitimate

interest in the Domain Name and/or the name AUTO-NATION, Respondent would not

be auctioning its corresponding domain name to the highest bidder.

On June 14, 2000, counsel for AutoNation, Inc. sent a letter to Respondent

via Federal Express to Respondent’s principal place of business, the same address

indicated for Respondent in the NSI WHOIS database. In this letter, counsel

for AutoNation, Inc. explained that AutoNation, Inc. owns the exclusive, worldwide

rights in the name and mark AUTONATION and informed Respondent that its use

of the name AUTO-NATION and the Domain Name <auto-nation.com> in connection

with automobile-related services is infringing of AutoNation, Inc.’s rights.

The letter further demanded that Respondent cease its infringement by virtue

of its use of the domain name <auto-nation.com> "and any and all

colorable imitations thereof" and assign the <auto-nation.com> domain

name to AutoNation, Inc. Notwithstanding AutoNation, Inc.’s allegations of infringement

and demands, Respondent has not issued any response whatsoever to this letter.

In the fall of 1996, AutoNation, Inc. began the nationwide roll-out of its

AutoNation USA automobile superstores. The first AutoNation USA superstore was

opened in Coconut Creek, Florida and the early development remained focused

in the South, near AutoNation, Inc.’s headquarters in Fort Lauderdale, Florida.

By 1997, AutoNation, Inc. had established "more than two hundred dealer

franchises in 17 states, becoming the largest car dealer in the country within

a year." Currently, AutoNation, Inc. remains the largest automotive retailer

in Florida and the United States, operating more than four hundred vehicle franchises

from dealership locations in twenty-six major metropolitan markets in nineteen

states. Since its inception, AutoNation, Inc. has invested substantial

sums of money to develop the AutoNation name, service marks, logos and related

advertising and marketing campaigns.

On November 14, 1995, AutoNation registered the domain name <autonation.com>.

In June of 1999, AutoNation, Inc. launched its <autonationdirect.com>

online dealership services – the Internet’s largest automobile dealership site.

In December 1999, the Wall Street Journal reported that AutoNation, Inc.

was selling about 5,000 vehicles per month via the web and had exceeded the

one billion dollar sales mark for online automobile sales through its <autonationdirect.com>

site. The name of Complainant’s website was subsequently shortened to <autonation.com>.

According to the NSI WHOIS database, Respondent is a Florida corporation with

a principal place of business located at 411 East Atlantic Avenue, #6, Delray

Beach, Florida 33483. Based on information discovered by an independent private

investigator, both of Respondent’s officers of record are residents of Florida.

Specifically, Respondent’s President, Thomas Distevano III, resides at 2898

NW 26th Court, Boca Raton, FL 33434 and Respondent’s Vice President, Christopher

L. Monteleone, resides at 9232 Arbor Woods Circle, Davie, Florida 33328. Boca

Raton and Davie are both located in the Fort Lauderdale area. Thus, Respondent

and its officers could hardly have been ignorant of AutoNation, Inc., their

largest competitor, which also happens to be headquartered in their own back

yards.

Respondent currently uses the Domain Name and the name <auto-nation.com>

in connection with a Website that provides information and links regarding "new

car buying, new car prices, used cars, classifieds and instant auto insurance

rates." Such usage leads consumers to a service nearly identical to that

offered by AutoNation, Inc.

Moreover, the NSI WHOIS records indicate that Respondent registered the Domain

Name <auto-nation.net> on January 21, 1999 only to place it for sale.

Respondent then registered the Domain Name <auto-nation.com> on November

30, 1999 – just as AutoNation, Inc.’s online business was approaching the one

billion dollar sales mark. Thus, Respondent’s actions and the timing of Respondent’s

registration also strongly indicates that Respondent registered and uses the

Domain Names in order to intentionally infringe AutoNation, Inc.’s name and

mark.

5. Parties’ Contentions

A. Complainant

Essentially, the contentions of the Complainant are as follows:

1) Complainant has valid and subsisting rights in its AUTONATION trademarks/service

marks and its Domain Name - <autonation.com>.

2) Respondent has no rights or legitimate interests in the Disputed Domain

Names.

3) The Disputed Domain Names were registered and are being used in bad faith.

B. Respondent

In view of the fact that the Respondent has not filed a Response, the Panel

is in no position to make out its contentions.

6. Discussion and Findings

6.1 Effect of Respondent’s Default

By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:

"[r]espond specifically to the statements and allegations contained in

the complaint and include any and all bases for the Respondent (domain name

holder) to retain registration and use of the disputed domain name…"

In the event of a default, under paragraph (14)(b) of the Rules:

"…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits,

Inc. v. Shane Brown, doing business as Big Daddy’s Antiques WIPO Case

No. D2000-0004 :

"Respondent’s failure to present any such evidence or to deny complainant’s

allegations allows an inference that the evidence would not have been favorable

to respondent."

In the instant administrative proceeding, the Respondent’s default entitles

the Panel to conclude that the Respondent has no evidence to rebut the assertions

of the Complainant.

6.2 Elements to be proven

However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed,

the Complainant must establish that:

i) the Respondent’s Domain Name is identical or confusingly similar to a trademark

in which the Complainant has rights; and

ii) the Respondent has no rights or legitimate interests in respect of the

Domain Name; and

iii) the Respondent’s Domain Name has been registered and is being used in

bad faith.

The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO

Case No. D2000-0140 notes that under the Policy, even if the respondent

is in default,

"…the complainant must prove that each of these three elements are present."

6.3 Identical or Confusingly Similar

The Disputed Domain Names <auto-nation.com> and <auto-nation.net>

are identical to AutoNation, Inc.’s marks AUTONATION and <autonation.com>.

The presence or absence of punctuation and the ".com" or ".net"

are of no consequence when establishing the identity of marks. See WIPO

Center Decision D2000-0059.("That Respondent has omitted the punctuation

and spacing that appears in Complainant’s mark from the domain name does not

defeat this identity."; "The top level domain designators ‘.com’ and

‘.net’ simply function to indicate that the domain name owner purports to be

a business.").

Further, the Disputed Domain Names <auto-nation.com> and <auto-nation.net>

are confusingly similar to AutoNation, Inc.s’ service marks AUTONATION DIRECT,

AUTONATION USA, AUTONATION USA CAFE, <AUTONATIONDIRECT.COM>, <AUTONATION.COM>

AND AUTONATION EXPRESS because "AUTONATION" is the primary component

of each of these marks and the Domain Name(s).

6.4 Respondent’s Rights or Legitimate Interests in the Disputed Domain Name(s)

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights

and interests in the said Disputed Domain Name(s) by showing:

i) its use of, or demonstrable preparations to use, the said Disputed Domain

Name(s) or a name corresponding to the said Disputed Domain Name(s) in connection

with a bona fide offering of goods or services before any notice to him of the

dispute; or

ii) he (as an individual, business, or other organization) has been commonly

known by the said Disputed Domain Name(s), even if he has acquired no trademark

or service mark rights; or

iii) he is making a legitimate noncommercial or fair use of the said Disputed

Domain Name(s), without intent for commercial gain to misleadingly divert consumers

or to tarnish the trademark or service mark at issue.

There is no evidence presented by Respondent in demonstrating any of the foregoing

factors because Respondent is in default and has failed to respond in this action.

Accordingly, the evidence available contains nothing that may justify a legitimate

noncommercial or fair use of the said Disputed Domain Name(s) by Respondent.

Neither is there any evidence for any of the other two foregoing requirements.

Respondent's usage is clearly infringing of AutoNation, Inc.’s rights in the

name and mark AUTONATION in connection with automobile related goods and services.

Because Respondent’s use of the Domain Name <auto-nation.com> is an infringing

use of AutoNation, Inc.’s service mark, Respondent cannot have established any

legitimate right or interest in the Domain Name. "An infringing use of

Complainant’s trademark can not give rise to a legitimate right or interest

on the part of Respondent (the Policy 4(a))." WIPO

Center Decision D2000-0346.

6.5 Registration and Use in Bad Faith

As stated by the panel in World Wrestling Federation Entertainment, Inc.

v. Michael Bosman, WIPO Case No.

D1999-0001 in order for the Complainant to succeed:

"... the name must not only be registered in bad faith, but it must also

be used in bad faith."

The Complainant must prove that the Respondent registered and also used the

said Disputed Domain Name in bad faith in order to establish ‘bad faith’ on

the part of the Respondent.

From the foregoing facts, the Panel finds that Respondent had actual knowledge

of Complainant's nationally famous name and mark, AUTONATION, at the time Respondent

(and/or its predecessors) registered the Disputed Domain Names.

The Panel further finds that Respondent clearly intends to benefit from AutoNation,

Inc.’s goodwill in its nationally famous name and marks. Such intentional infringement

designed to "parasitiz[e] the goodwill of Complainant’s trademark"

"is compelling evidence of bad faith in the registration and use

of the disputed domain name." WIPO Center

Decision D2000-0346 (citing WIPO Center Decisions D2000-0014

and D2000-0015). It is also both reasonable

and likely to conclude that if Respondent is unable to use the <auto-nation.com>

name it will begin to use the <auto-nation.net> name in its place to achieve

the same wrongful objective of parasitzing the goodwill of AutoNation’s trademark.

In other words, Respondent registered and used the Domain Names "to attract,

for commercial gain, Internet users to [its] website or other on-line location,

by creating a likelihood of confusion with the complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of [its] website or location

or of a product or service on [its] website or location." Policy, Paragraph

4(b)(iv).

Based on the alleged facts, which have not been disputed, Complainant has established

and the Panel finds that the Respondent has engaged in the practices defined

in Paragraph 4(b)(iv) of the Policy as evidencing the registration and use of

the said Disputed Domain Name in bad faith.

7. Decision

For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15),

the Panel finds that the Complainant has proved each of the three elements of

paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain

Names, namely, <auto-nation.com> and <auto-nation.net>, be transferred

to the Complainant pursuant to paragraph 4(i) of the Policy.

Terrell C. Birch

Panelist

Dated: June 18, 2001

Footnotes:

1. e-Possibility.com, Inc. subsequently changed its corporate name to Sticky

Web, Inc. The entity Sticky Web, Inc. is also the successor by merger of the

Perfect Web Corporation. (back to text)

2. Although previously separate legal entities, the registrant for <auto-nation.net>

(The Perfect Web Corp.) and the registrant for <auto-nation.com> (e-Possibility.com,

Inc.) have now merged into a single entity: Sticky Web, Inc. In fact, the two

domains, <auto-nation.com> and <auto-nation.net> are housed on the

same servers: NS1.THEUP-TICK.COM (216.242.169.61) and AIRFACE.COM (208.233.96.253).

(back to text)

3. The Web page at <auto-nation.net> previously stated that <AUTONATION.NET>

is "FOR SALE" and that interested bidders should "MAKE AN OFFER"

by contacting Respondent, e-Possibility.com, at 411 East Atlantic Ave., Suite

#6, Delray Beach, FL 33483. (back to text)

More cases by this complainant

• AutoNation, Inc. — D2024-3528 · Terminated
• AutoNation, Inc. — D2020-1761 · Terminated
• AutoNation, Inc. v. Paul Schaefer — D2001-0289 · auto-nation-direct.com, auto-nationdirect.com, auto-nation-direct.net · Transfer · 24 Apr 2001