Dana Corporation v. $$$ This Domain is For Sale $$$ - MalibuTv@aol.com
Claim Number: FA0207000117328
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.”
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.
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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