Magnadyne Corporation v. Traffic Domain
Claim Number: FA1359994
Complainant is Magnadyne Corporation (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Traffic Domain (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carbine.com>, registered with 000DOMAINS 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2010; the National Arbitration Forum received payment on November 22, 2010.
On November 29, 2010, 000DOMAINS LLC confirmed by e-mail to the National Arbitration Forum that the <carbine.com> domain name is registered with 000DOMAINS LLC and that Respondent is the current registrant of the name. 000DOMAINS LLC has verified that Respondent is bound by the 000DOMAINS LLC 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@carbine.com. Also on November 29, 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 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <carbine.com> domain name is identical to Complainant’s CARBINE mark.
2. Respondent does not have any rights or legitimate interests in the <carbine.com> domain name.
3. Respondent registered and used the <carbine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Magnadyne Corporation, is the owner of the CARBINE mark. Complainant uses the mark in connection with its vehicle alarms, remote start, and keyless entry systems. Complainant registered the <carbine.com> domain name in 1996 and used the website for the promotion and distribution of its vehicle electronics and wireless products. Unintentionally, the <carbine.com> domain name registration lapsed earlier this year. Complainant holds trademark registration for its CARBINE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,913,213 issued August 22, 1995).
Respondent, Traffic Domain, registered the <carbine.com> domain name on April 24, 2010 after it was posted for auction. The disputed domain name is now being used as a directory website featuring third-party links unrelated to Complainant’s vehicle electronics 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 it has established rights in its CARBINE 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. Additionally, in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel concluded that “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).” Here, Complainant holds trademark registration for its CARBINE mark with the USPTO (e.g. Reg. No. 1,913,213 issued August 22, 1995). The Panel therefore finds that Complainant has established rights in its CARBINE mark through its trademark registration pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <carbine.com> domain name is identical to Complainant’s CARBINE mark. The disputed domain name incorporates Complainant’s entire mark and merely adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD fails to sufficiently differentiate the disputed domain name from Complainant’s mark. See 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 the disputed domain name is identical to Complainant’s CARBINE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <carbine.com> domain name. Previous panels have found that if complainant first establishes a prima facie showing in support of its allegations, the burden then shifts to respondent to prove that it does have rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established 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 made a prima facie showing. Given the fact that Respondent failed to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c) before coming to any conclusions.
Complainant asserts that Respondent is not commonly known by the <carbine.com> domain name. The WHOIS information identifies Respondent as “Traffic Domain,” which is not similar to the disputed domain name. Complainant asserts that it has not authorized or licensed Respondent to register or use the disputed domain name and that Complainant had owned the <carbine.com> domain name since 1996 and did not intend to let the renewal lapse. The Panel finds no additional evidence within the record that indicates Respondent is commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The disputed domain name currently resolves to a directory website featuring links to third-party website unrelated to Complainant’s vehicle electronics business. Respondent likely receives click-through fees from these links. The Panel concludes that Respondent’s use of the <carbine.com> domain name to operate a directory website for Respondent’s own gain is not 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). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant alleges that it was the prior registrant of the <carbine.com> domain name and inadvertently allowed the registration to lapse earlier this year. The domain name was to expire on March 12, 2010. Complainant asserts that Respondent took over the domain name on April 24, 2010 immediately following the 40 day grace period allowed under the Registrar’s Registration Agreement. The Panel finds that Complainant’s prior registration of the disputed domain name and Respondent’s opportunistic registration of the lapsed domain name are further evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name.”)
Complainant provides evidence that indicates Respondent is attempting to sell the <carbine.com> domain name. Respondent listed the disputed domain name for sale at the auction website <sedo.com>. The Panel finds that Respondent’s willingness to selling the disputed domain name demonstrates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent is attempting to sell the <carbine.com> domain name. Respondent has listed the disputed domain name for sale on a website which auctions domain names, <sedo.com>. The Panel finds that Respondent’s actions in promoting the sale of the disputed domain name constitute bad faith use and registration. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
The disputed domain name redirects Internet users to a website featuring a directory of third-party links which are unrelated to Complainant’s vehicle electronics business. Internet users searching for Complainant’s website will find Respondent’s website instead as a result of Respondent’s use of an identical domain name. Users may then become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links. Respondent attempts to profit from this confusion through the receipt of click-through fees from the previously mentioned links. The Panel finds that Respondent’s use of the <carbine.com> disputed domain name to operate a website for its own commercial game constitutes bad faith use and registration under Policy disputed domain name to operate a website for its own commercial game constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant contends that it was the prior registrant of the <carbine.com> domain name and unintentionally allowed the registration to lapse earlier this year. Complainant asserts that Respondent registered the domain name following the 40 day grace period allowed under the Registrar’s Registration Agreement. The Panel finds that Complainant’s prior registration of the disputed domain name and Respondent’s registration of the domain name immediately following the lapse are evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).
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 <carbine.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 30, 2010
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