Dana Corporation v. $$$ This Domain is
For Sale $$$ - MalibuTv@aol.com
Claim Number: FA0207000117328
PARTIES
Complainant
is Phillip Rotman Dana Corporation,
Toledo, OH (“Complainant”) represented by Michael
B. Stewart, of Rader, Fishman &
Grauer PLLC. Respondent is $$$ This Domain is For Sale $$$ -
MalibuTv@aol.com, Malibu, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwdana.com>,
registered with Dotster, Inc.
PANEL
On
November 13, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James P. Buchele as
Panelist. The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 31, 2002; the Forum received a hard copy of the
Complaint on July 31, 2002.
On
September 25, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the
domain name <wwwdana.com> is
registered with Dotster, Inc. and that Respondent is the current registrant of
the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
October 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 21,
2002 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@wwwdana.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<wwwdana.com> domain name is confusingly similar to
Complainant’s registered DANA mark.
Respondent does not have any rights or legitimate
interests in the <wwwdana.com> domain
name.
Respondent registered and used the <wwwdana.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Dana Corporation, is one of
the world’s largest suppliers of components, modules, and complete systems to
global vehicle manufacturers and related markets. Complainant operates 300
facilities in 35 countries, employing 75,000 people worldwide in its
manufacture of, inter alia, automotive axle products, drive shafts,
frames, and brake systems. Complainant operates its business under its primary
service mark and trademark DANA, a mark it has continuously used since 1946.
This mark has been registered over 184 times in over 50 Countries worldwide,
including the United States (e.g., U.S. Reg. No. 1,190,470, registered
on February 23, 1982 on the Principal Register of the United States Patent and
Trademark Office). Complainant has operated a website at <dana.com> since
September 9, 1993, and has registered over 180 domain names for use in
promoting its full line of products.
Respondent, $$$ This Domain is For Sale
$$$ - MalibuTv@aol.com, registered the <wwwdana.com>
domain name on March 1, 2000 and is not licensed or otherwise authorized to
make use of the DANA mark for any purpose. Respondent has not developed a
website associated with its domain name. Respondent’s contact information,
rather than listing Respondent’s actual name, states “I Transfer You
The Domain First You Pay Me After, Call Me, Now To Buy This Name Today
818-599-xxxx…$$$ This Domain is For Sale $$$…Don't Be Shy Buy This Domain
Now…Make An Offer Today Use it tomorrow.”
DISCUSSION
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 the 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.
Paragraph
4(a) of the Policy requires that the 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.
Identical and/or Confusingly Similar
Complainant has established rights in its
DANA mark through registration of its mark on the Principle Register of the
United States Patent and Trademark Office, as well as via continuous and
widespread use of the mark worldwide.
Respondent’s <wwwdana.com> domain name is confusingly similar to
Complainant’s registered DANA mark. The only difference between Respondent’s
domain name and the registered mark of Complainant is the addition of the
top-level domain “.com” after the mark and the prefix “www”. As top-level
domain names are a standard feature for any domain name, its addition does not
prevent a finding of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top-level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
The addition of a “www” prefix to
Complainant’s registered DANA mark also fails to sufficiently differentiate the
disputed domain name from Complainant’s mark. A domain name consisting of a
“www” prefix followed by a registered mark takes advantage of Internet users
who fail to type the period between the traditional “world-wide web”
abbreviation and the second-level domain name they are attempting to reach. The
dominant feature of the disputed domain name in this case remains Complainant’s
distinctive DANA mark. See Bank of
Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”).
Accordingly, the Panel finds that the <wwwdana.com> domain name is
confusingly similar to Complainant’s registered DANA mark under Policy ¶
4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon a complainant. Under
Policy ¶¶ 4(c)(i-iii), a respondent can rely on a “bona fide offering of goods
or services” connected with the disputed domain name, the fact that it has been
“commonly known by the domain name,” or that it is making a “legitimate
noncommercial or fair use of the domain name” to demonstrate a right or
legitimate interest in a domain name. If a complainant rebuts each of these
elements, it has satisfied its burden by successfully addressing any of the
specified claims a respondent could make under Policy ¶¶ 4(c)(i-iii), thereby
shifting the burden to the respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name).
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark registered that mark with the
intention of selling the registration. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb.
Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when
one has made no use of the websites that are located at the domain names at
issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling it). Respondent has not developed the disputed domain
name. Furthermore, Respondent’s administrative and technical contact
information listed with its Registrar, rather than accurately stating
Respondent’s name and other necessary information, instead claims that, “$$$ This Domain
is For Sale $$$…Don't Be Shy Buy This Domain Now…Make An Offer Today Use it
tomorrow.” This attempt to sell its domain name registration to any interested
party, including competitors of Complainant, is evidence that Respondent is not making a bona fide
offering of goods or services nor using its domain name for noncommercial or
fair uses.
Complainant has not given Respondent
permission or consent to use its DANA mark. Furthermore, Respondent’s
registration of the disputed domain name occurred decades after Complainant
initially registered its DANA mark and began using it in commerce and
Respondent’s administrative contact information (which nowhere mentions the
word “Dana”), are all evidence that Respondent is not “commonly known by” the
WWWDANA or <wwwdana.com> name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question). In light of Respondent’s failure to offer any
evidence that it has ever been commonly known by the disputed domain name, The
Panel concludes that Complainant has adequately met its burden under Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail").
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in Response to this Complaint, Respondent fails to meet that burden, and
the Panel may conclude that Respondent has no rights or legitimate interests in
the disputed domain name. See Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights
or legitimate interests where Respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in its domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent both
registered and used its <wwwdana.com> domain name in
bad faith. Policy ¶ 4(b)(i) states that, “in circumstances indicating that
[Respondent has] registered primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration…for valuable consideration
in excess of [Respondent’s] documented out-of-pocket costs” bad faith
registration and use is evidenced. Using its administrative contact information
to advertise its domain name registration is for sale is one way a respondent
can violate Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v.
Domain For Sale VMI,
D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which Respondent chose
to identify itself and its administrative and billing contacts both conceals
its identity and unmistakably conveys its intention, from the date of the
registration, to sell rather than make any use of the disputed domain name”); see also Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding bad faith where Respondent’s WHOIS registration information contained
the words, “This is domain name is for sale”). In the present dispute,
Respondent has done nothing with the disputed domain name other than to offer
the registration for sale via its WHOIS information.
Furthermore, Respondent’s <wwwdana.com> domain name is an
example of “typosquatting”, taking advantage of common typing errors to
register a domain name that resembles a mark in which another has rights. This
practice of “typosquatting” has been recognized as a bad faith use of a domain
name under the Policy. See e.g. AltaVista Co. v. Stoneybrook,
D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other
misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Accordingly, the Panel finds that
Respondent both registered and used its <wwwdana.com>
domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwdana.com> domain name be TRANSFERRED
from Respondent to Complainant.
James P. Buchele, Panelist
Dated: November 19, 2002
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