Mazda Motor of America, Inc. d/b/a Mazda North American Operations v. Xwings Domains / Net Manager
Claim Number: FA 1358402
Complainant is Mazda Motor of America, Inc. d/b/a Mazda North American Operations (“Complainant”), represented by Amy C. Leshan of Brooks Kushman P.C., Michigan, USA. Respondent is Xwings Domains / Net Manager (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teammazda.com>, registered with REBEL.COM CORP.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2010; the National Arbitration Forum received payment on November 15, 2010.
On November 15, 2010, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <teammazda.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the name. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teammazda.com. Also on November 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <teammazda.com> domain name is confusingly similar to Complainant’s MAZDA mark.
2. Respondent does not have any rights or legitimate interests in the <teammazda.com> domain name.
3. Respondent registered and used the <teammazda.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mazda Motor of America, Inc. d/b/a Mazda North American Operations, is a wholly owned subsidiary of Mazda Motor Corporation which was founded in 1920 as an automotive manufacturer. Complainant holds numerous trademark registrations for its MAZDA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 706,561 issued Nov. 1, 1960) and with Australia’s Department of Innovation, Industry, Science and Research (“DIISR”) (e.g. Reg. No. 157,716 issued Dec. 29, 1959).
Respondent, Xwings Domains / Net Manager, registered the <teammazda.com> domain name on December 31, 2004. The disputed domain name resolves to a directory website with third-party links, some of which directly compete with Complainant’s automotive business.
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 contends that it has established rights in its MAZDA mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. Here, Complainant holds trademark registrations for its MAZDA mark with the USPTO (e.g. Reg. No. 706,561 issued Nov. 1, 1960) and with Australia’s DIISR (e.g. Reg. No. 157,716 issued Dec. 29, 1959). The Panel concludes that Complainant has established rights in its MAZDA mark through its trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <teammazda.com> domain name is confusingly similar to its MAZDA mark. The disputed domain names incorporates Complainant’s entire mark and merely adds the generic word “team” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic word and a gTLD fail to properly distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel concludes that Respondent’s <teammazda.com> domain name is confusingly similar to Complainant’s MAZDA mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been met.
Complainant asserts that Respondent does not have rights and legitimate interests in the <teammazda.com> mark. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel determined that, “once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Complainant has provided a prima facie case in support of its allegations. Due to Respondent’s failure to respond to the Complaint the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <teammazda.com> domain name. The WHOIS information identifies Respondent as “Xwings Domains / Net Manager,” which is not similar to the disputed domain name. Complainant asserts that it has not given Respondent permission to use or register its MAZDA mark in the disputed domain name. Additionally, the Panel finds no evidence in the record that indicates Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <teammazda.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <teammazda.com> domain name to reroute Internet users to a directory website featuring third-party commercial links, some of which directly compete with Complainant’s automotive business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to operate a website with competing and non-competing links is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent’s use of the <teammazda.com> domain name disrupts its business. Internet users searching for Complainant’s automotive goods may instead find Respondent’s website because of Respondent’s confusingly similar domain name and purchase similar goods from one of Complainant’s competitors as a result. The Panel finds that Respondent’s use of the <teammazda.com> domain name does disrupt Complainant’s business, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel infers that Respondent likely collects click-through fees from the previously mentioned third-party links. Respondent’s <teammazda.com> domain name reroutes Internet users to a website with a directory of commercial links. Because of Respondent’s confusingly similar domain name, Internet users may become confused as to Complainant’s sponsorship of, or association with, the disputed domain name, resolving website, and third-party links. Respondent attempts to capitalize on this confusion by collecting click-through fees. The Panel concludes that Respondent’s use of the disputed domain name is further evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that ¶ Policy 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teammazda.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 22. 2010
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