Walser Automotive Group, LLC v. Domain MANAGER / Domain Brokers
Claim Number: FA1409001579779
Complainant is Walser Automotive Group, LLC (“Complainant”), represented by Bret A. Puls of Oppenheimer Wolff & Donnelly LLP, Minnesota, USA. Respondent is Domain MANAGER / Domain Brokers (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walsermazda.com>, registered with BigRock Solutions Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2014; the National Arbitration Forum received payment on September 15, 2014.
On September 15, 2014, BigRock Solutions Ltd confirmed by e-mail to the National Arbitration Forum that the <walsermazda.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 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@walsermazda.com. Also on September 22, 2014, 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 October 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <walsermazda.com> domain name is confusingly similar to Complainant’s WALSER mark.
2. Respondent does not have any rights or legitimate interests in the <walsermazda.com> domain name.
3. Respondent registered and uses the <walsermazda.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant promotes its car dealership through websites hosted on domain names such as <walser.com> and <walser-mazda.com> and has used its WALSER mark since 1954. Complainant is a licensed franchisee of Mazda Motor Corporation, and has had the right to use the MAZDA mark in connection with its WALSER mark since 1978. Complainant has established common law rights in its WALSER mark.
Respondent registered the <walsermazda.com> domain name on November 6, 2008. At times the <walsermazda.com> domain name has resolved to a website requesting that Complainant authorize an unknown caller to take control of Complainant’s computers; at other times the domain name has resolved to a hyperlink-advertisement website.
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 and 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.”).
Complainant is a car dealership operating out of Minnesota and known throughout the upper Midwest United States. Complainant opened the first WALSER dealership in 1954, and its operations have grown to include the sale of Mazda, Jeep, Chrysler, Dodge, Ram, Buick, Chevrolet, Cadillac, Hyundai, Toyota, Honda, GMC, Nissan, Scion, and Subaru vehicles. Complainant promotes its car dealership through websites hosted on domain names such as <walser.com> and <walser-mazda.com>. As a licensed franchisee of Mazda Motor Corporation, Complainant has had the right to use the MAZDA mark with its WALSER mark at its Burnsville, Minnesota “Walser Mazda” business since 1978. Thus, Complainant claims it has common law rights in its WALSER mark. The Panel notes the Minnesota State Department filings for Complainant’s business and the sworn statement of Candice J. Menge, detailing the widespread use and advertising of the WALSER mark. The Panel finds that Complainant has established common law rights in its WALSER mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
Respondent’s <walsermazda.com> domain name is formed by combining Complainant’s WALSER mark with the MAZDA mark, and adding the generic top-level domain “.com.” As a combination of the WALSER mark with a term descriptive of goods sold under that mark, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant notes that Respondent lacks Complainant’s authority to use the WALSER mark in Internet domain names, and argues that Respondent isn’t known by the name “Walser Mazda.” The WHOIS record lists “Domain MANAGER” as the registrant of record. The Panel finds that nothing in the record demonstrates that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent has used the <walsermazda.com> domain name to resolve to a website with a virus alert and a request to authorize an unknown caller to take control of Complainant’s computers, and also to resolve to a hyperlink-advertisement website. The Panel finds that neither of these uses constitute a bona fide or legitimately noncommercial use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009), where the panel agreed that using a website to install malicious software was outside any acceptable Policy ¶ 4(a)(ii) use; see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004), the panel agreed that using a domain name to phish for Internet users’ information was neither bona fide nor legitimately noncommercial or fair. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel thus finds that the <walsermazda.com> domain name is not protected under Policy ¶ 4(c)(i) or (iii), and Respondent does not have any rights or legitimate interests in the domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the <walsermazda.com> domain name for commercial purposes unrelated to Complainant’s business demonstrates Respondent’s intent to confuse Internet users. The Panel agrees that using the disputed domain name for malware, or for commercial hyperlinks, presumably for profit, is bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Respondent’s use of the domain name to host malicious software and/or a phishing scam on the disputed domain name’s website is also bad faith under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
The Panel finds 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 <walsermazda.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 27, 2014
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