Grappone TS, Inc. v. Fei Zhu
Claim Number: FA1201001424557
Complainant is Grappone TS, Inc. (“Complainant”), represented by James F. Laboe of Orr & Reno, P.A., New Hampshire, USA. Respondent is Fei Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grapponetoyota.com>, registered with Rebel.Com Corp.
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 January 13, 2012; the National Arbitration Forum received payment on January 17, 2012.
On January 13, 2012, Rebel.Com Corp. confirmed by e-mail to the National Arbitration Forum that the <grapponetoyota.com> domain name is registered with Rebel.Com Corp. and that Respondent is the current registrant of the name. Rebel.Com Corp. has verified that Respondent is bound by the Rebel.Com Corp. 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 January 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@grapponetoyota.com. Also on January 23, 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 February 16, 2012, 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" 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 <grapponetoyota.com> domain name is identical to Complainant’s GRAPPONE TOYOTA mark.
2. Respondent does not have any rights or legitimate interests in the <grapponetoyota.com> domain name.
3. Respondent registered and used the <grapponetoyota.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Grappone TS, Inc., has sold automobiles since 1924 and began selling TOYOTA automobiles in 1984 under its GRAPPONE TOYOTA mark. Complainant became a standalone legal entity on January 13, 1984, under the GRAPPONE TOYOTA mark.
Respondent, Fei Zhu, registered the <grapponetoyota.com> domain name on October 21, 2005. The disputed domain name resolves to a corrupted website that contains viruses.
Respondent was a respondent in prior UDRP cases in which the panels ordered Respondent to transfer disputed domain names to the respective complainants. See Liberty Counsel v. Zhu, FA 1332473 (Nat. Arb. Forum Aug. 5, 2010); see also AOL, Inc. v. Zhu, FA 1300077 (Nat. Arb. Forum Feb. 9, 2010); see also W.W. Grainger, Inc. v. Zhu, FA 1320491 (Nat. Arb. Forum June 3, 2010); see also Hudson v. Zhu, FA 1290319 (Nat. Arb. Forum Dec. 8, 2009).
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 claims rights in its GRAPPONE TOYOTA mark under Policy ¶ 4(a)(i), but Complainant does not provide the Panel with a national trademark registration for its mark. The Panel determines that Complainant is not required to own a national trademark registration in order to establish rights in a mark as long as Complainant can demonstrate common law rights in the mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
In support of common law rights, the Panel determines that Complainant began selling TOYOTA automobiles in 1984 under its GRAPPONE TOYOTA mark. Complainant became a stand alone legal entity on January 13, 1984, under the GRAPPONE TOYOTA mark and continuously marketed and promoted its business under the GRAPPONE TOYOTA mark for the past 28 years. The Panel finds that Complainant presented sufficient evidence of its continuous use of the mark and the acquisition of secondary meaning to establish common law rights in its GRAPPONE TOYOTA mark. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership). Therefore, the Panel concludes that Complainant owns rights in its GRAPPONE TOYOTA mark under Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <grapponetoyota.com> domain name is identical to Complainant’s GRAPPONE TOYOTA mark pursuant to Policy ¶ 4(a)(i) because the only differences between the two are the deletion of a space and the addition of a generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <grapponetoyota.com> domain name. Under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests when Complainant makes a prima facie case in support of its allegations. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <grapponetoyota.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant and Respondent do not provide this Panel with any evidence as to whether or not Respondent is commonly known by the <grapponetoyota.com> domain name. Therefore, the Panel is left with the WHOIS information, which lists “Fei Zhu” as the registrant of the disputed domain name. As the Panel determines that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the <grapponetoyota.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s <grapponetoyota.com> domain name resolves to a corrupted website that contains viruses. The Panel finds that the use of a disputed domain name to host a website containing viruses is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <grapponetoyota.com> domain name under Policy ¶ 4(c)(iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
Respondent was a respondent in prior UDRP cases in which the panels ordered Respondent to transfer disputed domain names to the respective complainants. See Liberty Counsel v. Zhu, FA 1332473 (Nat. Arb. Forum Aug. 5, 2010); see also AOL, Inc. v. Zhu, FA 1300077 (Nat. Arb. Forum Feb. 9, 2010); see also W.W. Grainger, Inc. v. Zhu, FA 1320491 (Nat. Arb. Forum June 3, 2010); see also Hudson v. Zhu, FA 1290319 (Nat. Arb. Forum Dec. 8, 2009). The Panel concludes that these prior UDRP proceedings are evidence that Respondent’s registration and use of the <grapponetoyota.com> domain name is a part of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
As noted above, Respondent’s <grapponetoyota.com> domain name resolves to a corrupted website that contains viruses. The Panel determines that Respondent’s registration and use of the disputed domain name for such a purpose evidences Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Dell Inc. v. grilth, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding bad faith registration and use when Internet users were exposed to malicious software downloads).
The Panel deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grapponetoyota.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 29, 2012
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