national
arbitration forum
DECISION
Automotive Racing Products, Inc. v. Linecom
Claim Number: FA0611000836787
PARTIES
Complainant is Automotive Racing Products, Inc. (“Complainant”), represented by Daniel
M. Cislo, of Cislo & Thomas LLP, 233 Wilshire Boulevard, Suite 900,
Santa Monica, CA
90401. Respondent is Linecom (“Respondent”), 1 Sejongro, Jongro, Seoul 100-050, KR.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <arpfastener.com>, registered with Onlinenic, Inc.
PANEL
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.
John J. Upchurch as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 8, 2006;
the National Arbitration Forum received a hard copy of the Complaint on November 13, 2006.
On November 9, 2006,
Onlinenic, Inc. confirmed by e-mail to
the National Arbitration Forum that the <arpfastener.com>
domain name is registered with Onlinenic, Inc.
and that Respondent is the current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, 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 November 13, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of December 4, 2006
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 postmaster@arpfastener.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 7, 2006, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed John J. Upchurch 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." 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.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<arpfastener.com> domain
name is confusingly similar to Complainant’s ARP mark.
2. Respondent
does not have any rights or legitimate interests in the <arpfastener.com> domain name.
3. Respondent
registered and used the <arpfastener.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Automotive Racing Products, Inc., has continuously and extensively used the ARP mark since
1975 in association with high performance metal fasteners for use in the
automotive racing industry. Complainant
has generated sales of over $280 million since 1975 and has spent approximately
$10 million advertising and promoting its products under the ARP mark in
magazines and on the Internet.
Complainant also maintains websites at several domain names, including
<arpfasteners.com>.
Complainant holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the ARP mark (Reg. No.
1,472,833 issued January
19, 1988).
Respondent’s <arpfastener.com> domain name,
which it registered on August
2, 2006, resolves to a website indicating that the disputed domain
name is for sale. Complainant has sent
Respondent letters offering to purchase the <arpfastener.com>
domain name registration for $1,500 but Respondent has failed to respond to any
of Complainant’s offers. As a result,
Complainant believes that Respondent would like to sell the disputed domain
name registration for a larger amount.
In addition, Respondent apparently registered the <arpfastener.com>
domain name after the previous registrant, A-1 Technologies, inadvertently
allowed the disputed domain name registration to lapse while negotiating the
transfer of the disputed domain name to Complainant.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant has established rights in the ARP mark through
registration of the mark with the USPTO.
See
Paisley Park
Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the
complainant had established rights in the PAISLEY PARK mark under Policy ¶
4(a)(i) through registration of the mark with the USPTO); see also VICORP
Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005)
(“Complainant has established rights in the BAKERS SQUARE mark by registering
it with the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <arpfastener.com> domain name
incorporates Complainant’s ARP mark in its entirety and merely adds the term
“fastener,” the main type of product Complainant manufactures, markets and
sells under the ARP mark. In Gillette
Co. v. RFK Assocs.,
FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that the addition of the
term “batteries,” which described the complainant’s products, and the generic
top-level domain “.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark. Moreover, in L.L. Bean,
Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000),
the panel concluded that the <shopllbean.com> domain name was confusingly
similar to the complainant’s L.L. BEAN mark because the addition of a generic
word does not avoid the confusing similarity aspect of the ICANN policy. Because similar circumstances exist in the
present case, the Panel finds that Respondent’s <arpfastener.com>
domain name is confusingly similar to Complainant’s ARP mark pursuant to Policy
¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent lacks rights and
legitimate interests in the <arpfastener.com>
domain name. Complainant must first make
a prima facie case in support of its allegations, and then the burden
shifts to Respondent to show it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <arpfastener.com> domain name.
See CMGI, Inc.
v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s
failure to produce requested documentation supports a finding for the
complainant); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654
(WIPO Aug. 21,
2000) (finding no rights or legitimate interests where the
respondent fails to respond). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
There is no evidence in the record suggesting that
Respondent is commonly known by the <arpfastener.com>
domain name. As a result, Respondent has
not established rights or legitimate interests in the <arpfastener.com> domain name under
Policy ¶ 4(c)(ii).
See The 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); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that
the respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record).
Respondent’s website at the <arpfastener.com> domain name contains text stating that the
domain name registration is for sale.
Respondent’s readily apparent willingness to sell the disputed domain
name provides evidence that Respondent lacks rights and legitimate interests in
the <arpfastener.com> domain
name, as simply offering the disputed domain name registration for sale does
not constitute 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 Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the respondent registered the
domain name with the intention of selling its rights); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat.
Arb. Forum May
27, 2003) (holding that under the circumstances, the respondent’s
apparent willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain
name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent is using the <arpfastener.com> domain name to market the domain name
registration for sale. Even after
Complainant offered to purchase the disputed domain name registration for
$1,500 from Respondent, Respondent simply failed to respond. The Panel infers that Respondent is seeking
an amount far in excess of its out-of-pocket registration costs and therefore,
the Panel finds that Respondent registered and is using the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”); see also Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16,
2000) (finding bad faith where the respondent offered domain names
for sale).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arpfastener.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: December 21, 2006
