NATIONAL ARBITRATION FORUM URS FINAL DETERMINATION

 

 

 

Dana Limited v. farris nawas et al. Claim Number: FA1402001545160

 

 

 

DOMAIN NAME

 

<dana.holdings>

 

 

 

PARTIES

 

 

Complainant: Dana Limited of Maumee, OH, United States of America

Complainant Representative: Marshall & Melhorn, LLC John A Borell of Toledo, OH, United States of America

 

Respondent: Dana Holding in Jordan Farris Nawas of Austin, TX, United States of America

 

 

 

REGISTRIES and REGISTRARS

 

 

Registries: John Madison, LLC Registrars: Godaddy LLC

 

 

EXAMINER

 

 

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.

 

Darryl C. Wilson, as Examiner

 

 

PROCEDURAL HISTORY

 

 

Complainant Submitted: February 24, 2014

Commencement: February 24, 2014

Response Date: March 10, 2014

Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

 

 

RELIEF SOUGHT

 

 

Complainant requests that the domain name be suspended for the life of the registration.

 

 

STANDARD OF REVIEW

 

 

Clear and convincing evidence.

 

 

FINDINGS and DISCUSSION

 

 

Procedural Findings:

Multiple Complainants: There are no multiple Complainants. No domain names are dismissed from the complaint.

Multiple Respondents: There are no multiple Respondents. No domain names are dismissed from the

         complaint.

 

Findings of Fact:

 

Dana Holding Corporation (NYSE: DAN) is a publicly traded Fortune 500 company based in Maumee, Ohio; Dana Limited is a wholly owned subsidiary of Dana Holding Corporation. Dana Limited is the owner of the federally registered trademark DANA (U.S. Registration Numbers 4459800, 1190470, 856983, and 1200853) for various international classes. On June 19, 2013 Dana registered its mark with the Trademark Clearinghouse;

the marks status with the TMCH is VERIFIED. On February 13, 2014 Dana was notified by the TMCH that its mark was included in a registered domain name, dana.holdings. Dana was concerned that the use of the mark DANA, especially in connection with Dana Holdings might infringe on Dana's use of its trademark. On February 18, 2014, Dana, through its outside attorney, wrote to the registrant/Respondent, Mr. Nawas to address its concerns and asked him how he intended to use the domain dana.holdings. Mr. Nawas replied by email the same day and stated that: 1) he is not infringing on Dana's trademarks, 2) he refused to address any of Dana's concerns, including why he had a legitimate use for dana.holdings, and 3) he would sell the domain to Dana.

 

Complainant asserts 1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use 2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2] 3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name.

 

Respondent is listed as Farris Nawas of Houston, TX. Respondent initially addressed Complainant's concerns via email stating "I am an entrepreneur from Austin, TX. I recently bought the name Dana.holdings...to start my own holding company and with a little research I found that you are already an established company with the same name." In Respondent's URS documents he further asserted; "Dana is a common Middle Eastern female name. My family is of Middle Eastern descent. My intention is to establish a holding company in my native country and not in the United States. Upon my registration of the domain name www.Dana.Holdings,  I discovered that Dana Holdings is nationally registered in the United states. Out of Courtesy, I approached Dana Limited corporation myself to let them know that I have registered the domain name with the intention of starting my own holding company."

 

 

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.

 

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:

 

(i) for which the Complainant holds a valid national or regional registration and that is in current use; or

(ii) that has been validated through court proceedings; or

(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

 

Determined: Finding for Complainant

 

The Complainant has provided evidence in support of URS 1.2.6.1(i).

 

 

 

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

 

Determined: Finding for Complainant

 

The Complainant has not authorized Respondent to use its mark and Respondent has provided no arguments or evidence of its legitimate right or interest to the domain name.

 

 

 

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.

a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or

b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or

c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet

users to Registrant’s web site or other on­line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

 

Determined: Finding for Complainant

 

 

 

The Complainant has provided evidence in support of URS 1.2.6.3(a). Respondent denies the allegation stating; "I deny the allegation. We registered the domain in good-faith. I approached Dana Limited on Feb. 9th 2014. I provided them with my intentions for the use of the domain name, and out of courtesy, I was flexible enough at

that time to be willing to change my holding company name. I therefore made a good faith gesture to sell them the domain and would have accepted a valuation of documented out-of-pocket costs directly related to the domain name. However, since they did not reply to my email in timely manner, I assumed they were not interested in the domain name.”

 

The panelist finds Respondent's after the fact assertions dubious at best and highly improbable given the circumstances and additional evidence presented by both parties.

 

 

 

FINDING OF ABUSE or MATERIAL FALSEHOOD

 

 

 

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

 

Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

 

The Examiner finds as follows:

 

 

 

1.  The Complaint was neither abusive nor contained material falsehoods.

 

 

 

Complainant's mark was registered with the USPTO and TMCH. Complainant raised a valid concern, when contacting Respondent about the registration of the disputed domain name. Instead of addressing the potential use of its mark, the response to Complainant's inquiry was an offer to sell the domain name for an unspecified amount. Respondent is located in the US and has characterized himself as an entrepreneur. Respondent is elsewhere characterized as a person with a technical background. Respondent stated that it took little research to find out about Complainant.

 

 

 

DETERMINATION

 

After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

 

1.  dana.holdings

 

 

 

 

Darryl C. Wilson

Examiner

Dated: March 13, 2014