COMBINED
RESTRICTIONS DISPUTE
RESOLUTION POLICY
UNIFORM DOMAIN NAME DISPUTE
RESOLUTION POLICY
DECISION
Dana Corporation v. Safineh Co. a/k/a
Dana Co. a/k/a Ali Amiri
Claim Number: FA0312000222043
The
Complainant is Dana Corporation, Toledo,
OH (“Complainant”), represented by Robert
S. Gurwin, of Rader Fishman &
Grauer PLLC, 4500 Door St., Toledo, OH 43615. The Respondent is Safineh
Co., a/k/a Dana Co. a/k/a Ali Amiri Dana Co. #4 8th St., Farahani
Ave., Tehran 15868, Iran (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <dana-co.org>
and <dana-co.biz>, registered
with iHoldings.com, Inc. d/b/a DotRegistrar.
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”
electronically on December 26, 2003; the Forum received a hard copy of the
Complaint on December 29, 2003.
On
January 8, 2004, iHoldings.com, Inc. d/b/a DotRegistrar confirmed by e-mail to
the Forum that the domain names <dana-co.org>
and <dana-co.biz> are
registered with iHoldings.com, Inc. d/b/a DotRegistrar and that Respondent is
the current registrant of the name. iHoldings.com,
Inc. d/b/a DotRegistrar has verified that Respondent is bound by the iHoldings.com,
Inc. d/b/a DotRegistrar 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
January 12, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 2, 2004 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
February 17, 2004, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Judge Harold Kalina
(Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (“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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent is not making a bona fide
business or commercial use of the <dana-co.biz>
domain name.
2. Respondent’s <dana-co.org> and <dana-co.biz>
domain names are confusingly similar to Complainant’s DANA mark.
3. Respondent does not have any rights or
legitimate interests in the <dana-co.org>
and <dana-co.biz> domain
names.
4. Respondent registered and used the <dana-co.org> and <dana-co.biz> domain names in bad
faith.
B. Respondent
No Response was received.
Complainant
is one of the world’s largest suppliers of components, modules, and systems to
global vehicle manufacturers and its related after markets. Complainant has used the DANA mark since
1946, registering it in the Islamic Republic of Iran (Reg. No. 32298) on
December 8, 1968. Complainant holds the
registration for <dana.com>, registered on September 9, 1993.
Respondent
registered the <dana-co.org>
and <dana-co.biz> domain names
on December 11, 2001, and Deccember, 13, 2001, respectively. At the <dana-co.org>
site, Respondent sells automative products it identifies as “Dana brand.” Respondent is not using the <dana-co.biz> site.
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) the 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
Policy requires that the holder of a domain name registration use it primarily
for a bona fide business or commercial purposes. Complainant bears the burden of proving that the holder is not
primarily using the domain name for bona fide business or commercial purposes
pursuant to RDRP Policy ¶ 4(a).
Complainant
contends that Respondent’s use of <dana-co.biz>
is not bona fide because Respondent registered the domain knowing that it
infringed upon Complainant’s rights.
However, the RDRP Policy only looks at the strict nature of the domain
name user’s use. It does not consider
bad faith. See Dana Corp. v. Common Sense Enters., FA155897 (Nat. Arb. Forum
June 16, 2003) (“Complainant’s speculation with regard to Respondent’s bad
faith registration and use does not meet the requirements of the RDRP”).
Furthermore,
Respondent is not using the <dana-co.biz>
domain name. RDRP ¶ 4(a) expressly
states that “a Complainant under the RDRP will not be considered valid if based
exclusively on the alleged non-use of [the] domain name.”
The
Panel finds that the Complainant has not met its burden of proving that the <dana-co.biz> domain name is not
being used for a bona fide business or commercial purpose pursuant to RDRP
Policy ¶ 4(a). Because the requirements
of the RDRP have not been proven, the Panel will move on to Complainant’s claim
under the UDRP.
Complaint
has established rights in the DANA mark through registration with the Islamic
Republic of Iran and use of the mark in commerce since 1946.
The
disputed <dana-co.org> and <dana-co.biz> domain names are
confusingly similar to Complainant’s DANA mark. Except for the addition of “-co”, the domain name is identical to
Complainant’s mark. “Co” is a commonly
used abbreviation for the word “company.”
The addition of a generic word to a mark does not distinguish the newly
created word from the mark under UDRP Policy ¶ 4(a)(i). See
Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001)
(finding that the generic term “INC” does not change the confusing similarity);
see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark).
The
Panel finds that Complainant has established UDRP ¶ 4(a)(i).
Respondent
did not submit a Response in the proceeding.
Therefore, the Panel may accept as true all reasonable allegations and
inferences of 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding
that Respondent has no rights or legitimate interests in the domain name
because Respondent never submitted a response or provided the Panel with
evidence to suggest otherwise).
In
regards to the <dana-co.org>
domain name, Respondent is using a domain name confusingly similar to
Complainant’s mark to sell Complainant’s goods. This is not a bona fide offering of goods or services pursuant to
UDRP Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the
domain name pursuant to UDRP Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Am. Online
Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000)
(finding that Respondent’s operation of a website offering essentially the same
services as Complainant and displaying Complainant’s mark was insufficient for
a finding of bona fide offering of goods or services).
In
regards to <dana-co.biz>,
Respondent is not using the disputed domain name. Additionally, Respondent has not been using it since 2001; its
behavior constitutes passive holding.
Passive holding of a domain name is not a bona fide offering of goods or
services pursuant to UDRP Policy ¶ 4(c)(i) nor a legitimate noncommercial or
fair use of the domain name pursuant to UDRP Policy ¶ 4(c)(iii). 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 [UDRP] Policy”); see also Flor-Jon
Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding
that Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name).
The
<dana-co.org> domain name is
registered, in part, to “Dana Co.”
Because of Complainant’s extensive holding of international
registrations of the DANA mark, including Respondant’s territory of Iran, the panel
may infer that Respondant is not commonly known as “Dana” or “Dana Co.” despite
the WHOIS domain name registration information pursuant to UDRP Policy ¶
4(c)(ii). See Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat.
Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as
the sole holder of all rights and legitimate interests in the NEIMAN MARCUS
mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite
naming itself “Neiman-Marcus” in its WHOIS contact information); see also Yoga Works, Inc. v. Arpita d/b/a
Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”).
The
Respondant is not commonly known as <dana-co.biz>
given the WHOIS registration information for that domain name. Accordingly, it cannot establish legitimate
interests in the <dana-co.biz>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly,
the Panel finds that UDRP Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using the <dana-co.org> to
sell automotive parts it advertises as being under the “Dana Brand.” Because Respondent is the second comer to
Complainant’s territory, and Respondent is using Complainant’s mark on its goods,
the Panel concludes that Respondent has registered the domain name to disrupt
the Complainant’s business in that area, pursuant to UDRP Policy
4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat.
Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and
used in bad faith where Respondent and Complainant were in the same line of
business in the same market area); see also, S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Respondent’s
lack of use of the <dana-co.biz>
domain name does nothing to mitigate its bad faith. Complainant’s registration of the DANA mark in Respondent’s
country of buisness implies constructive knowledge of its existence. Respondant’s knowledge of Complaiant’s mark
and its passive holding evidence bad faith registration and use pursuant to
UDRP Policy ¶ 4(a)(iii). Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Respondent
is using <dana-co.org>, a
domain name that is confusingly similar to Complainant’s mark, to compete with
Complainant, which is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). Furthermore,
although Respondent has not used <dana-co.biz>,
because of its use of <dana-co.org>,
the Panel concludes that there is no way that Respondent could use <dana-co.biz> that would not be
for commercial gain. See Computerized Sec. Sys., Inc. d/b/a
SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name, evidence of bad faith registration and use pursuant
to Policy 4(b)(iv)); see also Fossil Inc.
v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent
acted in bad faith by registering the <fossilwatch.com> domain name and
using it to sell various watch brands where Respondent was not authorized to
sell Complainant’s goods); see also Phat
Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain
name because “It makes no sense whatever to wait until it actually ‘uses’ the
name, when inevitably, when there is such use, it will create the confusion
described in the Policy”).
Thus,
the Panel finds that UDRP Policy ¶ 4(a)(iii) has been 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 <dana-co.org>
and <dana-co.biz> domain names
be TRANSFERRED from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
March 1, 2004
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