COMBINED
RESTRICTIONS DISPUTE RESOLUTION POLICY
DECISION
Charter
Warranty, LLC v. Dot Com Creative Solutions c/o Mark Walton
Claim Number: FA0504000454254
Complainant
is Charter Warranty, LLC (“Complainant”), represented by Christopher M.
Taylor, of Butzel Long, 350 South Main Street, Suite 300, Ann Arbor,
MI 48104. Respondent is Dot Com
Creative Solutions c/o Mark Walton (“Respondent”), 1200 Century Way,
Thorpe Park Business Park, Leeds, West Yorkshire LS158ZA, UK.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <autosave.biz>,
registered with Tucows Inc.
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.
Louis
E. Condon as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”
electronically on April 11, 2005; the Forum received a hard copy of the Complaint
on April 11, 2005.
On
April 12, 2005, Tucows Inc. confirmed by e-mail to the Forum that the domain
name <autosave.biz> is registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows
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”) and the Uniform Domain Name Dispute Resolution
Policy (the “UDRP”).
On
April 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 14,
2005 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
May 11, 2005 pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Louis E. Condon 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
1. Respondent is not making a bona fide
business or commercial use of the <autosave.biz> domain name.
2. Respondent’s <autosave.biz> domain
name is identical to Complainant’s AUTOSAVE mark.
3. Respondent does not have any rights or
legitimate interests in the <autosave.biz> domain name
4. Respondent registered and used the <autosave.biz>
domain name in bad faith.
B. Respondent failed to submit a
response in this proceeding.
Complainant,
Charter Warranty, LLC, is the producer of Autosave, an organic radiator
additive that improves the cooling systems of engines, motors and
machinery. Complainant has registered
the AUTOSAVE mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,854,934 issued June 15, 2004, filed December 27, 2001).
Respondent
registered the <autosave.biz> domain name on January 10,
2002. Respondent’s domain name is
currently parked and is being used to direct traffic to the registrar’s
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 UDRP 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;
(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.
Furthermore,
Paragraph 4(a) of the RDRP subjects complainants to an additional element,
requiring complainants to prove that the “domain name is not being or will not
be used primarily for a bona fide business or commercial purpose.” 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 the holder of a domain name registration use it primarily
for 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 ¶ 4(a).
Complainant
asserts that Respondent’s “parking” of the domain names for a period of two
years is evidence that the domain name is not being nor will be used primarily
for bona fide business or commercial purposes.
However, RDRP ¶ 4(a) specifically states that a complaint under the RDRP
cannot be considered valid if based exclusively on the nonuse of the domain
name. Thus, the Panel finds that
Complainant’s RDRP complaint based on Respondent’s long-term “parking” of the
domain name with the registrar cannot be considered valid under the RDRP. See Dana Corp. v. Safineh Co., FA
222043 (Nat. Arb. Forum Mar. 1, 2004) (refusing to apply RDRP analysis where
the respondent had not actively used the domain name in question); see also
Am. Nat’l Red Cross v. TreeTops, FA 152121 (Nat. Arb. Forum May 5, 2003)
(“While Respondent has not come forward to establish a bona fide business or
commercial purpose in connection with the <red-cross.biz> domain name,
Complainant has not satisfied its burden to demonstrate a lack of such a
purpose with more than a showing of non-use in regard to the <red-cross.biz>
domain name specifically.”).
Complainant
alternatively asserts that “Respondent’s unsolicited attempt to sell the domain
name to Complainant demonstrates that Respondent registered the domain name
solely for the purpose of selling, trading or leasing the domain name for
compensation” pursuant to RDRP ¶ 4(c)(ii).
However, the Panel finds that any offer made by Respondent was solicited
by Complainant, or at least made in the course of negotiations between the two
parties.
Because
the Panel finds that the requirements of the RDRP have not been met, the Panel
will proceed to analyze the dispute under the UDRP.
Respondent’s
<autosave.biz> domain name is identical to Complainant’s AUTOSAVE
mark. Respondent’s domain name
incorporates Complainant’s mark in its entirety and merely adds the generic
top-level domain “.biz.” Such addition
is not enough to distinguish Respondent’s domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Isleworth
Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830
(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); 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
has asserted that Respondent has no rights or legitimate interests in the
disputed domain name, and Respondent, in not submitting a response, has failed
to rebut this assertion. Thus, the
Panel may construe Respondent’s failure to respond as evidence that Respondent
lacks rights and legitimate interests in the <autosave.biz> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent’s
domain name, which is identical to Complainant’s AUTOSAVE mark, has been
“parked” for over two years. The Panel
finds that such long-term nonuse of the domain name cannot be considered a use
in connection with a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy.”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or is authorized to register domain names featuring
Complainant’s AUTOSAVE mark. Thus, the
Panel finds that Respondent has not established rights and legitimate interests
in the <autosave.biz> domain name pursuant to Policy ¶
4(a)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has made no use of the <autosave.biz> domain name since
registering and “parking” the domain name over two years ago. The Panel finds that such long-term nonuse
of the disputed domain name gives rise to the inference that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). 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 Mondich & Am.
Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that the respondent’s failure to develop its website in a two year
period raises the inference of registration in bad faith).
The
Panel finds that there is no conceivable way Respondent could use the disputed
domain name such that it would not infringe on Complainant’s AUTOSAVE mark, and
therefore it is illogical to await Respondent’s use of the domain name to find
bad faith registration and use. See
Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(a)(iii) even though respondent has not used
the domain name because “[i]t 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”); see
also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where respondent made no use of the domain name in question and there are no
other indications that respondent could have registered and used the domain
name in question for any non-infringing purpose); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the complainant”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
The
Panel finds that Complainant failed to satisfy the requirements under the
RDRP. However, Complainant has
established all three elements required under the UDRP, and thus the Panel
concludes that the relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <autosave.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 16, 2005
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