MAHLE Clevite Inc. v. Click Cons. Ltd
Claim Number: FA0711001114760
Complainant is MAHLE Clevite Inc. (“Complainant”), represented by Christopher
N. Hayes, of Internet Applications & Solutions, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mahlepiston.com>, registered with Belgiumdomains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mahlepiston.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mahlepiston.com> domain name is confusingly similar to Complainant’s MAHLE mark.
2. Respondent does not have any rights or legitimate interests in the <mahlepiston.com> domain name.
3. Respondent registered and used the <mahlepiston.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MAHLE Clevite Inc., is a well-known global automotive supplier. Complainant has been manufacturing and selling various automotive parts since at least 1920. The United States Patent and Trademark Office (“USPTO”) has registered the MAHLE mark (Reg. No. 683,990 issued August 25, 1959).
Respondent registered the <mahlepiston.com>
domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of a trademark registration
with the USPTO for the MAHLE mark.
However, the trademark indicates that the owner of the mark is a “Mahle
Kommandit-Gesellschaft,” and that the trademark was renewed to “Mahle GMBH,”
neither of which is Complainant. The
Panel presumes, due to the nature of the mark, Complainant’s name and the names
on the trademark registration and renewal, that the holder of the trademark
registration and renewal are either parent companies or
predecessors-in-interest to Complainant.
Therefore, despite the sparse information provided by Complainant, the
Panel finds that Complainant has met the low threshold necessary to establish
rights in the MAHLE mark for the purposes of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
The Panel finds that the <mahlepiston.com>
domain name is confusingly similar to Complainant’s MAHLE mark under Policy ¶
4(a)(i) as the disputed domain name contains Complainant’s mark in its entirety
along with the addition of the term “piston,” which has an obvious relationship
to Complainant’s business, as well as the generic top-level domain “.com.” Such modifications to Complainant’s mark are
insufficient to distinguish the disputed domain name from Complainant’s mark
under Policy ¶ 4(a)(i). See Brown & Bigelow, Inc.
v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to the
complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat.
Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case that Respondent lacks rights and legitimate interests in the <mahlepiston.com> domain name, and once Complainant meets this burden, the burden shifts to Respondent to present evidence that it has rights or legitimate interests in the disputed domain name. Despite Complainant’s slim presentation of evidence in its Complaint, the Panel finds that it is sufficient to met the low burden required of Complainant under Policy ¶ 4(a)(ii), and thus the burden has shifted to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint allows the Panel to assume Respondent lacks rights and legitimate interests in the <mahlepiston.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, although not required to do so, the Panel chooses to examine the evidence under Policy ¶ 4(c) before rendering a decision with regards to Policy ¶ 4(a)(ii).
An examination of the evidence in the record shows that
Respondent’s WHOIS information lists Respondent as “Click Cons. Ltd,” and there is no other information to indicate that
Respondent is in any way commonly known by the <mahlepiston.com>
domain name, or authorized to use the MAHLE mark. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum
The Panel finds that Respondent’s use of the <mahlepiston.com> domain name to display hyperlinks to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <mahlepiston.com> domain name is
presumably for Respondent’s commercial gain through the accrual of click-through
fees. Moreover, the confusingly similar
nature of the disputed domain name to Complainant’s mark is capable of creating
a likelihood of confusion as to Complainant’s source, sponsorship, affiliation
or endorsement of the disputed domain name and resulting website. The Panel thus finds evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mahlepiston.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 14, 2008
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