COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
DECISION
Dana
Corporation v. Common Sense Enterprises, Inc. f/k/a Swarthmore Associates
Claim Number: FA0304000155897
Complainant
is Dana Corporation of Toledo, OH (“Complainant”) represented by Robert
S. Gurwin of Rader Fishman & Grauer PLLC. Respondent is Common
Sense Enterprises, Inc., f/k/a Swarthmore Associates of Big Bear
Lake, CA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <dana.biz>
registered with Psi-Japan, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”
electronically on April 25, 2003; the Forum received a hard copy of the
Complaint on April 25, 2003.
On
April 27, 2003, Psi-Japan, Inc., confirmed by e-mail to the Forum that the
domain name <dana.biz> is registered with Psi-Japan, Inc., and
that Respondent is the current registrant of the name. Psi-Japan, Inc.,
verified that Respondent is bound by the Psi-Japan, Inc., registration
agreement and has thereby agreed to resolve domain name disputes brought by
third parties in accordance with the Restrictions Dispute Resolution Policy
(the “RDRP Policy”) and the Uniform Domain Name Dispute Resolution Policy (the
“UDRP Policy”).
On
April 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 20,
2003, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the
Uniform Dispute Resolution Policy as supplemented by the Supplemental
Restrictions Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
June 2, 2003, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
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
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
is not making a bona fide business or commercial use of the <dana.biz>
domain name.
(2) The
domain name registered by Respondent, <dana.biz>, is identical to
Complainant’s DANA mark.
(3)
Respondent
has no rights to or legitimate interests in the <dana.biz> domain
name.
(4)
Respondent
registered and is using the <dana.biz> domain name in bad faith.
B. Respondent did not submit a Response in this
proceeding.
Complainant
is one of the world’s largest suppliers of components, modules and complete
systems to global vehicle manufacturers and their related after-markets.
Complainant’s roots date back to early 1900, when Complainant’s founder
invented and patented the first commercially viable universal joints for use in
automobile transmission systems.
Presently,
Complainant operates approximately 300 major facilities in 30 countries and
employs more than 75,000 people worldwide. Complainant’s primary trademark and
service mark is the DANA mark. Complainant holds a trademark registration with
the United States Patent and Trademark Office (USPTO) for the DANA mark (Reg.
No. 856,983 registered on September 17, 1968), in relation to universal joints,
clutches, drive shafts, transmissions, power take off units, engine cylinders
and sleeves, connecting rods, differentials, pistons, marine drive units gear
boxes, drive axel units, valves for internal combustion engines and speed
control devices. Complainant also holds more than 175 trademark registrations
for the DANA mark in some 50 countries.
Complainant
registered the <dana.com> domain name on September 9, 1993, and has been
operating a website there since. Complainant has also registered over 230
domain names, which are used in promoting Complainant’s full line of products.
Respondent
registered the <dana.biz> domain name on March 27, 2002.
Respondent has not used the domain name.
Paragraph
15(a) of the Rules instructs this Panel to “decide a Complainant 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 UDRP Policy requires that the 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 the
Complainant has rights;
(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.
Paragraph
4(b) of the RDRP Policy defines “bona fide business or commercial use” as the
bona fide use or bona fide intent to use the domain name or any content
software, materials, graphics or other information thereon, to permit Internet
users to access one or more host computers through the DNS:
(1) to exchange goods, services, or property
of any kind; or
(2) in the ordinary course of trade or
business; or
(3) to facilitate the exchange of goods,
services, information, or property of any kind or the ordinary course of trade
or business.
The RDRP
requires that a domain name be used primarily for a bona fide business or
commercial purpose. Sections of the RDRP ¶¶ 4(b)(i-iii) provide examples of bona
fide business or commercial purposes and RDRP ¶ 4(a) explicitly states that
Complainant bears the burden of proving that the disputed domain name is not
primarily being used for a business or commercial purpose.
Complainant
contends that the <dana.biz> domain name is not primarily being
used for such a purpose because Respondent registered the disputed domain name
while knowing that the domain name infringed upon Complainant’s rights and has
not used the domain name since its registration. However, RDRP ¶ 4(a) expressly
advises, “A complaint under the RDRP will not be considered valid if based
exclusively on the alleged non-use of [the] domain name.” Complainant failed to
establish any active use of the <dana.biz> domain name that
demonstrates that the disputed domain name is not being used for a bona fide
business or commercial purpose. While Complainant alleges that Respondent had
both actual and constructive knowledge of Complainant’s exclusive rights in the
DANA mark, Complainant’s speculation with regard to Respondent’s bad faith
registration and use does not meet the requirements of the RDRP. Moreover, the
communication from Respondent to Complainant asserts that the registration and
use of the disputed domain name was not in bad faith.
Despite
Complainant’s urging, the Panel finds that Complainant has not met its burden
of proving that the <dana.biz> domain name is not being used for a
bona fide business or commercial purpose pursuant to RDRP ¶ 4(a) because
Complainant’s showing consists exclusively of allegations of the non-use of the
disputed domain name. Because the requirements of the RDRP have not been
proven, the Panel will move on to Complainant’s claim under the UDRP.
Complainant
established in this proceeding that it has rights in the DANA mark through
registration with the USPTO and by continuous use in commerce since 1946.
The
domain name registered by Respondent, <dana.biz>, is identical to
Complainant’s DANA mark because the disputed domain name appropriates
Complainant’s entire mark and adds the generic top-level domain (gTLD) “.biz”
to the end of the mark. The addition of a gTLD does not sufficiently
differentiate a domain name from a mark for the purposes of UDRP ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also
Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
(finding that "the addition of the generic top-level domain (gTLD) name
‘.com’ is . . . without legal significance since use of a gTLD is required of
domain name registrants").
The
Panel finds that Complainant has established UDRP ¶ 4(a)(i).
Respondent
did not submit a Response in this proceeding. Therefore, the Panel may accept
as true all reasonable allegations and inferences in the Complaint. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
The
Panel may presume that Respondent lacks any rights to or legitimate interests
in the domain name because Respondent failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent failed to invoke
any circumstance that could demonstrate any rights or legitimate interests in
the domain name).
As
discussed in the analysis under the RDRP, Respondent has not used the <dana.biz>
domain name since its registration. While Respondent’s non-use of the disputed
domain name does not show that the domain name is not primarily being used for
a bona fide business or commercial purpose under RDRP ¶ 4(a), Respondent’s
failure to use the <dana.biz> domain name does establish that it
lacks any rights to or legitimate interests in the disputed domain name under
UDRP ¶ 4(a)(ii). See Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
Moreover,
Respondent proffered no proof that it is commonly known as either DANA or <dana.biz>
and no evidence in the record indicates that Respondent is so known. Thus,
Respondent failed to establish any rights to or legitimate interests in the
disputed domain name pursuant to UDRP ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no
rights in a domain name when Respondent is not known by the mark).
Accordingly,
the Panel finds that Complainant has established UDRP ¶ 4(a)(ii).
UDRP
¶ (4)(b) presents examples of bad faith registration and use of a domain name.
However, those examples were never intended to be exclusive. At its discretion,
the Panel may consider the totality of the circumstances in determining
registration and use in bad faith. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
Respondent’s
failure to use the <dana.biz> domain name is evidence that
Respondent registered and is using the disputed domain name in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing
domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith).
Moreover,
Complainant provides evidence that Respondent registered 41 domain names that
wholly incorporate famous marks of others. As the Panel is permitted to accept
any reasonable allegation in the Complaint as true, Complainant’s evidence
establishes a pattern of Respondent registering domain names to prevent the
owner of the trademark or service mark from reflecting its mark in a
corresponding domain name, which is evidence of bad faith registration and use
under UDRP ¶ 4(b)(ii). See Nabisco
Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that
registration of numerous domain names is one factor in determining registration
and use in bad faith); see also
BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000)
(finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of
other domain name registrations incorporating others’ trademarks and the fact
that the domain names in question do not link to any on-line presence or
website).
The
Panel finds that UDRP ¶ 4(a)(iii) has been established.
Having
established all three elements required under the UDRP, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <dana.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2003.
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