Autotronic Controls Corporation v. IMS Net Ventures
Claim Number: FA0609000791671
Complainant is Autotronic Controls Corporation (“Complainant”), represented by Stephen L. Sapp, of Locke Liddell & Sapp, 2200 Ross Avenue, Suite 2200, Dallas, TX 75201. Respondent is IMS Net Ventures (“Respondent”), 2452 Coulsons Hill Road, Bradford, ON L3Z 2A5 CA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <esuperchips.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2006.
On September 7, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <esuperchips.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 September 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 3, 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@esuperchips.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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 <esuperchips.com> domain name is confusingly similar to Complainant’s SUPER CHIP mark.
2. Respondent does not have any rights or legitimate interests in the <esuperchips.com> domain name.
3. Respondent registered and used the <esuperchips.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Autotronic Controls Corporation,
manufactures and sells automotive products under the SUPER CHIP, SUPERCHIPS and
SUPERCHIPS INC. marks. Complainant
heavily promotes its high-performance automotive products through advertising
and has generated significant revenue from the sales of its products under the
marks. Complainant operates a website
at the <superchips.com> domain name (registered on January 6, 1996) offering
information about its products and the locations of authorized distributors.
Complainant has registered the SUPER CHIP (Reg. No. 1,876,383 issued January 31, 1995) and SUPERCHIPS INC. (Reg. No. 3,081,307 issued April 18, 2006) marks with the United States Patent and Trademark Office (“USPTO”) and has filed a trademark application with the USPTO for the SUPERCHIPS mark (Serial No. 76/663,073 filed July 14, 2006). Complainant is also in the process of registering variations of its marks with trademark authorities around the world, including Canada, Mexico and the European Community.
Respondent’s <esuperchips.com> domain name, which it registered on March 5, 2004, resolves to a website promoting and offering for sale aftermarket automotive tuning devices and related products similar to the products Complainant offers under its SUPER CHIP family of marks.
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 has established rights in the SUPER CHIP mark by registering the mark with the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <esuperchips.com> domain name. Complainant has the initial burden of making
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
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.”); see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <esuperchips.com>
domain name. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also 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 now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record that Respondent is
commonly known by the <esuperchips.com> domain name. Respondent has registered the domain name
under the name “IMS Net Ventures,” and Complainant has not authorized or
licensed Respondent to register a domain name incorporating its SUPER CHIP
mark. Consequently, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometer.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that
Respondent has registered and is using the disputed domain name for the primary
purpose of disrupting the business of Complainant, because Respondent is using
the <esuperchips.com> domain
name, which is confusingly similar to Complainant’s SUPER CHIP mark, to
maintain a competing automotive products website. Such conduct constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent); 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).”).
Respondent’s use of the <esuperchips.com> domain
name, which is confusingly similar to Complainant’s SUPER CHIP mark, to
redirect Internet users seeking Complainant’s automotive products to a
competing automotive products website also constitutes bad faith registration
and use under Policy ¶ 4(b)(iv), because Respondent is taking advantage of the
confusing similarity between the disputed domain name and the mark in order to
profit from the goodwill associated with the mark. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Dell Inc. v.
Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005)
(finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was
using the <dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services).
The Panel concludes 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 <esuperchips.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 19, 2006
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