Safelite Group, Inc. v. Wanzhongmedia / Zhong Wan
Claim Number: FA1210001469184
Complainant is Safelite Group, Inc. (“Complainant”), represented by Maurine L. Knutsson of Ice Miller LLP, Indiana, USA. Respondent is Wanzhongmedia / Zhong Wan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safeliteautoglass.com>, registered with Eurodns S.A.
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 October 25, 2012; the National Arbitration Forum received payment on October 25, 2012.
On October 29, 2012, Eurodns S.A. confirmed by e-mail to the National Arbitration Forum that the <safeliteautoglass.com> domain name is registered with Eurodns S.A. and that Respondent is the current registrant of the name. Eurodns S.A. has verified that Respondent is bound by the Eurodns S.A. 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 October 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@safeliteautoglass.com. Also on October 30, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <safeliteautoglass.com> domain name is confusingly similar to Complainant’s SAFELITE AUTO GLASS mark.
2. Respondent does not have any rights or legitimate interests in the <safeliteautoglass.com> domain name.
3. Respondent registered and used the <safeliteautoglass.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns the SAFELITE AUTO GLASS trademark and has used the SAFELITE AUTO GLASS mark since 1951 in relation to its automobile glass installation services and goods. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,512,458 registered November 27, 2001).
Respondent registered the <safeliteautoglass.com> domain name on February 4, 2004, and the resolving website is a parked page that does not include any content.
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."
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.
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.”).
The Panel finds that Complainant’s rights in the SAFELITE AUTO GLASS mark are secured by its USPTO registration pursuant to Policy ¶ 4(a)(i). The panel in AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), established that the complainant’s USPTO registration demonstrated its rights in the mark under the Policy. The Panel notes that Complainant is not required to register its mark in the same country as Respondent’s residence for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <safeliteautoglass.com> domain name contains Complainant’s entire SAFELITE AUTO GLASS mark, with the spaces removed, and the generic top-level domain (“gTLD”) “.com” added. The Panel thus finds that <safeliteautoglass.com> domain name is identical to Complainant’s SAFELITE AUTO GLASS mark under Policy ¶ 4(a)(i). See Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the complainant’s mark, RADIO SHACK); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <safeliteautoglass.com> domain name and states that Respondent does not have permission or license from Complainant to use the SAFELITE AUTO GLASS mark. The WHOIS information corresponding to the disputed domain name identifies “Wanzhongmedia / Zhong Wan,” which the Panel finds does not indicate that Respondent is commonly known by the <safeliteautoglass.com> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent uses the domain name to park the resolving website and generate traffic to the site to drive up the value of the domain name. Complainant argues that this use of the <safeliteautoglass.com> domain name does not satisfy the requirement of making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the resolving website. The panel in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), stated that the respondent’s use of the website, which displayed a series of hyperlinks, some of which competed for the complainant’s business, did not constitute a bona fide offering of goods or services. Thus, the Panel finds that Respondent’s use of the <safeliteautoglass.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that the <safeliteautoglass.com> domain name was registered and is being used in bad faith because Respondent intentionally aims to confuse consumers who intend to find Complainant’s website and instead come across Respondent’s website and the hyperlinks featured therein. Complainant argues that Respondent benefits financially from its use of the disputed domain name and uses Complainant’s goodwill to attract customers to the resolving website. The Panel agrees and finds that Respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safeliteautoglass.com> domain name be TRNASFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 12, 2012
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