COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

 

Charter Warranty, LLC v. Dot Com Creative Solutions c/o Mark Walton

Claim Number: FA0504000454254

 

PARTIES

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.

 

PANEL

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES CONTENTIONS

            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.     

 

FINDINGS

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.

 

DISCUSSION

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.

 

Bona Fide Business or Commercial Use

           

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. 

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the AUTOSAVE mark through registration of the mark with the USPTO.  The Panel finds that Complainant’s rights in the mark date back to at least December 27, 2001, the date in which Complainant’s successful trademark registration was initially filed.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); see also Planetary Soc’y v. Salvador Rosillo domainsforlife.com, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).

 

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.

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

           

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.

 

DECISION

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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