Nissan North America, Inc. v. Lifeguard Marketing Center
Claim Number: FA1208001459365
Complainant is Nissan North American, Inc. (“Complainant”), represented by Micol Cecchi of Nissan North America, Inc., Tennessee, USA. Respondent is Lifeguard Marketing Center (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infinitiextendedwarranty.us>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2012; the National Arbitration Forum received payment on August 24, 2012. A hard copy of the Complaint was received on August 24, 2012.
On August 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <infinitiextendedwarranty.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 27, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 17, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the INFINITI mark. Respondent’s domain name is confusingly similar to Complainant’s mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <infinitiextendedwarranty.us> domain name, and that Respondent registered and uses the domain name in bad faith.
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 or 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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it owns trademark registrations with the USPTO for the INFINITI mark (e.g., Reg. No. 1,478,618 registered March 1, 1988). Complainant has supplied copies of its registration certificates. The Panel finds that Complainant has established its rights in the INFINITI mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”).
Further, Complainant argues that the <infinitiextendedwarranty.us> domain name is confusingly similar to Complainant’s INFINITI mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s INFINITI mark, in addition to the generic and descriptive terms “extended” and “warranty,” as well as the ccTLD “.us.” In General Motors LLC v. Light, D2011-2176 (WIPO Mar. 25, 2012), the panel found the domain name <chevyextendedwarranty.com> to be confusingly similar to the complainant’s CHEVY mark under UDRP Policy ¶ 4(a)(i). Further, in Toyota Motor Credit Corp. v. Light, FA 1393651 (Nat. Arb. Forum July 28, 2011), the panel found that respondent’s <toyotaextendedwarranty.us> domain name was confusingly similar to the TOYOTA mark under Policy ¶ 4(a)(i). Based upon these prior decisions, the Panel finds that Respondent’s <infinitiextendedwarranty.us> domain name is confusingly similar to Complainant’s INFINITI mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent, “Lifeguard Marketing Center,” is not commonly known by the disputed domain name and is not connected to or affiliated with Complainant in any manner. Based upon the available evidence and WHOIS information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). 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).
Further, Complainant asserts that Respondent is using the disputed domain name to resolve to a website that sells the same competing, extended warranty services as Complainant. The Panel finds that Respondent’s use of the disputed domain name to offer competing extended warranty services for Complainant’s INFINITI automobiles is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Toyota Motor Credit Corp. v. Light, FA 1393651 (Nat. Arb. Forum July 28, 2011) (finding that respondent’s use of the <toyotaextendedwarranty.us> domain name to offer “for sale the same warranty services Complainant sells” was not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s disputed domain name is being used to sell directly competing products that Complainant also offers. The Panel finds that such use of the <infinitiextendedwarranty.us> domain name is disruptive of Complainant’s business and extended warranty products, and is therefore evidence of bad faith under Policy ¶ 4(b)(iii). See Toyota Motor Credit Corp. v. Light, FA 1393651 (Nat. Arb. Forum July 28, 2011) (finding that respondent’s use of the <toyotaextendedwarranty.us> domain name to offer similar warranty programs as complainant was evidence of bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant argues that Respondent is using the disputed domain name to commercially gain from the confusion caused by Respondent’s use of the INFINITI mark. The Panel infers that Respondent commercially benefits through the sale of warranty programs for Complainant’s automobiles by confusing Internet users into believing that the <infinitiextendedwarranty.us> domain name is connected to or affiliated with Complainant. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See General Motors LLC v. Light, D2011-2176 (WIPO Mar. 25, 2012) (finding that respondent used the <chevyextendedwarranty.com> domain name in bad faith under UDRP ¶ 4(b)(iv) by creating confusion with complainant’s CHEVY mark so that respondent could offer extended warranty plans for complainant’s vehicles).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the INFINITI mark because the INFINITI mark is famous and well-known. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under UDRP ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infinitiextendedwarranty.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 2, 2012
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