Nissan North America, Inc.
v. gmgl marketing services inc
Claim Number: FA0908001281576
PARTIES
Complainant is Nissan of North America, Inc. (“Complainant”), represented by Micol
Cecchi, of Nissan North America, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nissanextendedwarranties.com>, <infinitiextendedwarranties.com>,
<extendedwarrantiesfornissan.com>,
and <extendedwarrantiesforinfiniti.com>,
registered with Wild West Domains, Inc.
PANEL
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.
Mr. Maninder Singh as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 25, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 26, 2009.
On August 26, 2009, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <nissanextendedwarranties.com>, <infinitiextendedwarranties.com>,
<extendedwarrantiesfornissan.com>,
<extendedwarrantiesforinfiniti.com>
domain names are registered with Wild West
Domains, Inc. and that the Respondent is the current registrant of the
name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 2, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 22, 2009 by which Respondent
could file a Response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@nissanextendedwarranties.com, postmaster@infinitiextendedwarranties.com, postmaster@extendedwarrantiesfornissan.com, and postmaster@extendedwarrantiesforinfiniti.com by e-mail.
A timely Response was received and determined to be complete on September 21, 2009.
An Additional Submission was received from Complainant on Sept. 25, 2009. The Additional Submission was compliant with Supplemental Rule 7.
On 8.10.09 the panelist has received the response
of the respondent to the additional submissions filed on behalf of complainant.
On 25.9.09, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mr. Maninder Singh as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
It is
the case set up by the Complainant that Nissan North America, Inc. is the
exclusive distributor of Nissan vehicles, parts and accessories, and the sole
licensee of the NISSAN and INFINITI trademarks in the
·
It has
been submitted by the Complainant that every year, the Complainant spends
millions of dollars in advertising and promoting the NISSAN and the INFINITI
trademarks through a variety of media, including television, radio, magazines,
newspapers, billboards, by direct marketing, at auto shows, and via the internet.
Complainant advertises on the internet in the
·
It has
also been submitted that in addition to manufacturing, selling, and marketing
motor vehicles, the Complainant offers and promotes, under the NISSAN and
INFINITI brands, extended service contracts for the maintenance and repair of
NISSAN and INFINITI branded motor vehicles. The Complainant has offered
extended service contracts under its NISSAN trademark since at least as early
as 1988, and under its INFINITI trademark since at least as early as 1999. All
Nissan and Infiniti customers are offered Nissan or Infiniti limited warranties
with the purchase of a vehicle and are also offered extended service contracts,
which they may purchase at Nissan and Infiniti dealers. Complainant’s extended
service contracts are advertised through direct mailings, on the internet, and
through leaflets and brochures given out at dealerships.
·
The
Complainant has submitted that as a result of Complainant’s extensive and
high-profile promotion of the NISSAN and INFINITI trademarks, the Trademarks
have become instantly recognizable throughout the
·
It is
the contention of the Complainant that in May 2009, the Complainant became
aware of Respondent’s registration of the following domain names:
<nissanextendedwarranties.com>, <infinitiextendedwarranties.com>,
extendedwarrantiesfornissan.com>, and
<extendedwarrantiesforinfiniti.com>. On May 14, 2009, Complainant sent a
cease-and-desist letter to the registrant listed in the WhoIs information by
both mail and email. Respondent refused to accept delivery of the letter by
mail, likely because it already knew its contents through receipt of the same
letter sent by email to one Mr. Wayne Craig at the email address provided in
the WhoIs record. True and correct copies of this correspondence are attached
as Annex E. Respondent has never replied to Complainant’s letter and, till date,
is continuing its wrongful use of Complainant’s Trademarks.
·
Towards
fulfillment of the conditions as postulated in paragraph 4(a) of the Policy,
the Complainant has raised various contentions and has also placed reliance on
certain decisions. One of the decisions
which has been relied by the Complainant is also placed alongwith the complaint
as Annexure – F in Toyota Motor Sales U.S.A. Inc. v. The Car Openers Inc.,
FA 233077 (Nat. Arb. Forum Dec. 31, 2008) holding that Complainant’s LEXUS
registrations with the USPTO held to constitute sufficient evidence of
Complainant’s rights in the mark under Policy 4(a)(i). Reliance has also been placed by the
Complainant on the decision in the case of Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) noting that “Complainant has established rights
in the MICROSOFT mark through registration of the mark with the USPTO. Similarly, the Complainant has also referred
to another decision in the case of Morgan Stanley v. Fitz-James, FA
571918 (Nat. Arb. Forum Nov. 29, 2005) finding from a preponderance of the
evidence that the complainant had registered its mark with national trademark
authorities, it was determined that “such registrations present a prima facie
case of Complainant’s rights in the mark for purposes of Policy 4(a)(i).”.
·
It is
the contention of the Complainant that when a party without rights to a
trademark incorporates that trademark in its entirety into a domain name, that
is sufficient to establish that the domain name is identical or confusingly similar
to a complainant’s registered mark. In this regard, the Complainant has placed
reliance upon the following :-
(a) Trip.com, Inc. v. Daniel Deamone,
WIPO Case No. D2001-1066 (Nov. 4, 2001) holding that the incorporation of a
trademark in its entirety is sufficient to establish that a domain name is
identical or confusingly similar to the complainant’s registered mark;
(b) Berlitz
Investment Corporation v. Katelin Adkins, WIPO Case No. D2007-
0008 (March 13,
2007) finding that importantly, a party who wrongfully incorporates a valid
trademark into his own domain name does not exculpate himself
by simply adding descriptive or generic words or phrases to the name. Indeed,
the addition of generic wording, such as “extended warranties” or “extended warranties
for,” is not sufficient to overcome a finding of confusing similarity pursuant
to Policy Para. ¶ 4(a)(i).
(c) Toyota Motor Sales, U.S.A. Inc. and
Toyota Motor Credit Corporation v. Wayne Craig d/b/a/ GMGL Marketing Services
Inc., FA 550216 (Nat. Arb. Forum October 10, 2005), wherein
(d) Berlitz Investment
Corporation v. Katelin Adkins (WIPO
Case No. D2007-0008,
March
13, 2007) finding that Respondent’s addition of the generic designation
“languagecourse” does not prevent the domain name from being confusingly
similar to the BERLITZ mark.
(e) Fred W.Gretsch Enterprises, Ltd. v.
NOLDC, Inc., FA 1270597 (Nat. Arb. Forum August 5, 2009) concluding that Neither
the addition of such a descriptive term [drum] nor the addition of the
gTLD.com sufficiently distinguishes this domain name from the incorporated mark
for purposes of Policy ¶ 4(a)(i).”;
(f) G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nov. 21, 2002) holding that the addition of the generic term
“drugstore” after Complainant’s famous CELEBREX mark in the disputed domain
name is not capable of overcoming a claim of confusing similarity because it is
merely descriptive and therefore Complainant’s mark is still the most prominent
part of the disputed domain name.”).
·
The
Complainant has also contended that the addition of the top level domain
<.com> does not add any distinctiveness to the domain names and is
irrelevant in the evaluation of whether a domain name is identical or confusingly
similar to a trademark and in this regard, the Complaint has drawn attention to
Nev. State Bank v. Modern Ltd.-Cayman Web Dev., FA204063 (Nat. Arb. Forum
Dec. 6, 2003) holding that 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.”.
·
It has
already been noticed above that the Complainant has used the NISSAN trademark
since at least 1959 and the INFINITI trademark since at least 1987. Both
Trademarks have been long registered with the USPTO, and such registrations are
valid and incontestable and, therefore, the Complainant has rights to the
NISSAN and INFINITI trademarks. The disputed Domain Names are confusingly
similar to Complainant’s well-known NISSAN and INFINITI marks. Respondent
clearly incorporates the NISSAN and INFINITI marks in their entirety into the
Domain Names in question, and then makes an ostensible attempt to avoid
liability by adding generic or descriptive words before or after: <nissanextendedwarranties.com>;
<extendedwarrantiesfornissan.com>; <infinitiextendedwarranties.com>;
and <extendedwarrantiesfornissan.com>. In addition, because Complainant
offers the same or similar types of contracts as Respondent – and therefore
places itself in competition with Nissan – the addition of the words “extended
warranties” only makes its liability clearer: it increases the likelihood of
confusion with Nissan’s Trademarks. See Berlitz Investment Corporation v.
B. Respondent
·
The respondent in his response to the complaint
has stated that
a) When standing alone, “Nissan” and “Infiniti” are trademarks or service marks.
b) When linked with “extended warranties” the meaning and interpretation of those terms by customers change and become generic like the products “formica” and “kleenix (sic).”
c) Both “Nissan” and “Infiniti” are generic because they are proper nouns found in formal languages, such as, “Nissan” is found in Hebrew and “Infiniti” is found in Greek mythology.
d) The Respondent has no knowledge or record in six years of the subject domain names confusing anyone into believing these sites are factory-related sites.
e) The use of the word “for” in half of the subject domain names further separates the Respondent from any association with the factory names.
f) The Respondent’s website states “GMGL is an independent broker of extended warranties,” thereby not claiming to be a part of nor representing either Nissan or Infiniti.
g) The Respondent’s name is clearly printed at the bottom of each site saying “GMGL Marketing, Inc., 2003”
· It is the plea of the Respondent that it is in the business of marketing extended warranties. In doing so, it has a right and legitimate business interest to make its products known and to make sales on the internet. Therefore, Respondent GMGL has rights and legitimate interests in respect to the subject domain names it registered and maintains.
· The respondent contends that that it has registered and uses the subject domain names listed above.
· The Respondent uses those domain names not in bad faith but rather in good faith.
· The Respondent has never slandered nor put down Nissan or Infiniti.
· The Respondent has spent over $6,000.00 maintaining those sites.
· The Respondent has likely directly promoted service department sales at Nissan and Infiniti dealerships by selling extended warranties to customers who will return to the dealers’ shops for repairs to their Nissans and Infinitis.
· The Respondent has an A+ rating with the Better Business Bureau and no complaints with state agencies.
· The Respondent has further contended that both GMGL and search engines such as Google, DEX, Yellow Pages, Yahoo!, MSN and Bing produce sales off “clicks” and the incidental use of many registered names including Nissan and Infiniti without paying for them or doing any harm. Repair facilities countrywide use auto manufacturers’ logos incidentally in the advertising of their shops. And, finally, Nissan of North America, Inc., has not offered to purchase the subject domain names from GMGL. The Respondent has also attached examples of search results and has cited an example stating that when “nissan warranties” is searched in Yahoo!, 45,800,000 results are returned, only one of which is GMGL.
· In summary, for all the above stated reasons, GMGL believes that Nissan has not proven that GMGL has violated all three required elements, that Nissan’s complaint is without merit, and that Respondent GMGL should retain possession of the subject domain names.
C. Additional Submissions
·
The
Complainant has submitted that, in its Complaint, it has proven all three
elements required by the Uniform Domain Name Dispute Resolution Policy (the
“Policy”), namely, that: (1) the domain names registered by Respondent (the
“Domain Names”) are identical or confusingly similar to the trademarks (the
“Trademarks”) in which Complainant has right; (2) the Respondent has no rights
or legitimate interests in the Trademarks; and (3) the Domain Names have been
registered and are being used in bad faith.
·
The
Complainant has submitted that Respondent did not dispute that the Domain Names
are confusingly similar to the Trademarks in which Complainant has rights. Instead,
Respondent alleged that the Trademarks “change and become generic” when
linked to other words, such as “extended warranties.”
·
It has
also been submitted that Respondent did not submit any evidence in support of
this argument. And indeed such evidence would have been hard to find, as
trademark law does not support Respondent’s position at all. It is simply not
true that a strong trademark becomes generic just because is associated to
other terms. In fact, the opposite is true: a trademark remains strong when it
is associated to generic terms that describe the goods and services it is used
for, and any known case of genericization of a trademark was due to the
fact that there was no generic name to refer to the branded product (e.g.,
escalator, once a brand of Otis Elevator Company and now the common word for a
moving staircase). Companies today want the public to use generic terms next to
their trademarks: for example, Microsoft provides guidelines indicating how to
appropriately associate its trademarks to its products (e.g., “Microsoft® software”);
Xerox Corporation wants customers to use the trademark XEROX® together
with “printer.” Evidence attached as Exhibit 1. Complainant’s Trademarks are
not, and have not become, generic words due to their association to “extended warranties”
by Respondent, and are not generic terms for “motor vehicles” or “extended warranties;”
indeed, Respondent itself has admitted that Complainant’s Trademarks are valid trademarks
or service marks.
·
In reply
to Respondent’s response that both NISSAN and INFINITI are generic because they
allegedly have a meaning in foreign languages (““Nissan” is found in Hebrew
and “Infiniti” is found in Greek mythology”) it has been contended by the
Complainant that the Respondent has not submitted any evidence in support of
its claim and in any event, even if it were true, it is irrelevant, as the Respondent
is not using the Trademarks to refer to a Hebrew word or Greek mythology.
Rather, the Respondent is specifically using the Trademarks to refer to
Complainant’s motor vehicles, and Respondent has admitted that Complainant’s
Trademarks are trademarks or service marks.
·
In
response to Respondent’s contention that the Respondent has no knowledge of
actual consumer confusion, it has been submitted by the Complainant that
evidence of actual confusion, however, is but a factor in a trademark
infringement analysis and is not a
requirement under either the Policy or trademark law.
Instead, identity or confusing similarity of the disputed Domain Names to Complainant’s
Trademarks is one of the elements required under the Policy, and Complainant
has shown in the Complaint how Respondent’s Domain Names are confusingly
similar to Complainant’s Trademarks by incorporating the Trademarks in their entirety
and associating them with products also offered by Complainant under those Trademarks.
The issue here is not mere confusion as to identity, but also as to whether Respondent
may be believed to be licensed or endorsed by Complainant. Complainant submits that
it is likely that the public would believe that the Respondent was authorized
by Complainant to use the NISSAN and INFINITI trademarks in the Domain Names.
The unauthorized use of the NISSAN and INFINITI brands in the Domain Names is
trademark infringement and dilutes the good will of Complainant’s Trademarks.
·
It has
further been submitted by the Complainant - in response to the Respondent’s
contention that on its website, the Respondent clearly refers to GMGL as an “independent
broker of
extended warranties” and
does not claim to be a part of or represent Complainant– that as an initial
matter, trademark law does not require an express claim of association to
identify one entity as affiliated, endorsed, or licensed by another. Secondly,
a review of Respondent’s web sites shows that Respondent prominently displays
“Nissan Extended Warranties” and “Infiniti Extended Warranties” at the top of
its web pages and seems to be using “Nissan Extended Warranties” and “Infiniti
Warranties” as the trade name of its “independent brokers,” thus creating a
false impression that these may be Nissan- or Infiniti-issued contracts, or
that Respondent is affiliated to or licensed by Complainant. In addition, the
presence on the web page of Complainant’s phone number and links to Complainant’s
official web site increases the likelihood that the public would be mislead
into believing that Respondent has an association or affiliation with
Complainant, or that is being licensed by Complainant. Third, Respondent’s copyright
notice is irrelevant because it is not a disclaimer of ownership of
Complainant’s Trademarks, and it does not inform the public as to whether
Respondent’s use of the Trademarks is authorized by Complainant. Finally, the
issue at hand here (and the only relevant issue under Para. 1 of the Policy) is
Respondent’s registration and use of Domain Names that incorporate, without
authorization, Complainant’s Trademarks in their entirety, and that are used by
Respondent to attract internet users to its web sites for commercial gain. None
of this is disputed by Respondent.
·
The Complaint has submitted that it does not
dispute the arguments of the Respondent that, since it markets extended warranties, it has “a right and legitimate
interest to make its product known and to make sales on the internet.” The Complainant has shown his disagreement
with the notion that this “right” gives Respondent to unlawfully use
Complainant’s marks, or otherwise gives Respondent “rights and legitimate
interests in respect to the subject domain names it registered and maintains.”
Indeed, Respondent has no rights or legitimate interests in using the NISSAN
and INFINITI brands in its Domain Names, as Complainant has not authorized any
such use. In furtherance of his “right” to promote its products and services on
the internet, Respondent must select domain names that do not infringe
Complainant’s trademark rights.
·
In reply
to Respondent’s contention that the Respondent is using the Domain Names in
good faith, the Complainant has submitted that the Respondent has not given any
grounds for making this claim. Complainant has already explained in its Complaint
why the Domain Names were registered and are used in bad faith, with the intent
and for purpose of attracting internet users to Respondent’s web sites to sell
products that are competing with Complainant’s contracts. Under the Policy and
prior decisions already on record, this is evidence of bad faith registration
and use. In addition, Respondent’s assertion that
Complainant has
not offered Respondent to purchase the Domain Names is not
only not supporting Respondent’s claim of good faith, but it is actually
additional evidence of
Respondent’s bad
faith pursuant to Paragraph 4.(a)(i) of the Policy.
Neither trademark law nor the Policy requires that Complainant offer to buy its
own mark from Respondent before it makes a claim of trademark infringement. On
the other hand, Respondent’s willingness to sell a domain name to a trademark
owner is evidence of bad faith use and registration of the domain name.
·
The
Respondent has submitted printouts of internet pages showing the results of
searches
for Nissan and Infiniti in connection with
“warranties” and “extended warranties,” which
returned some third party uses of NISSAN and INFINITI
in connection with extended warranties. This argument, however, misses the
point entirely. Complainant is not trying to altogether prevent the sale of
extended service contracts for its vehicles by third parties. Rather, Complainant
is simply trying to prevent Respondent from using the NISSAN and INFINITI marks
in its Domain Names, without authorization, to attract internet users to its
web sites for commercial gain. Such use creates a likelihood of confusion with
the Complainant’s Trademarks as to the source, sponsorship, affiliation or
endorsement of Respondent’s web sites. This is trademark infringement and
evidence of bad faith registration and use of the Trademarks.
·
The
respondent has submitted response to the additional submissions of the
complainant. This has also been considered. The respondent has almost reiterated its
submissions made in the original response.
However, the respondent in the additional submissions has also stated :
-
“……..Finally, as a resolution to this matter, Nissan of North America, Inc., may offer to purchase the subject domain names from GMGL at $25,000 each, or best offer……”
FINDINGS
The panel finds
that the domain names <nissanextendedwarranties.com>, <infinitiextendedwarranties.com>, <extendedwarrantiesfornissan.com>,
and <extendedwarrantiesforinfiniti.com>
belong to Complainant as Complainant is the owner thereof.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 the 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.
With reference to
Clause 4(a)(i) of the Policy, the Complainant has
relied upon the decisions in the cases of:
(a) Trip.com, Inc. v. Daniel Deamone,
WIPO Case No. D2001-1066 (Nov. 4, 2001) holding that the incorporation of a
trademark in its entirety is sufficient to establish that a domain name is
identical or confusingly similar to the complainant’s registered mark;
(b) Berlitz
Investment Corporation v. Katelin Adkins, WIPO Case No. D2007-
0008 (March 13,
2007) finding that importantly, a party who wrongfully incorporates a valid
trademark into his own domain name does not exculpate himself
by simply adding descriptive or generic words or phrases to the name. Indeed,
the addition of generic wording, such as “extended warranties” or “extended
warranties for,” is not sufficient to overcome a finding of confusing
similarity pursuant to Policy Para. 4(a)(i).
(c) Toyota Motor Sales, U.S.A. Inc. and
Toyota Motor Credit Corporation v. Wayne Craig d/b/a/ GMGL Marketing Services
Inc., FA 550216 (Nat. Arb. Forum October 10, 2005),
wherein
(d) Berlitz Investment
Corporation v. Katelin Adkins (WIPO
Case No. D2007-0008, March 13, 2007) finding that
Respondent’s addition of the generic designation “languagecourse” does not
prevent the domain name from being confusingly similar to the BERLITZ mark.
(e) Fred W.Gretsch Enterprises, Ltd. v.
NOLDC, Inc., FA 1270597 (Nat. Arb. Forum August 5, 2009) concluding that “Neither
the addition of such a descriptive term [drum] nor the addition of the
gTLD.com sufficiently distinguishes this domain name from the incorporated mark
for purposes of Policy ¶ 4(a)(i).”;
(f) G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nov. 21, 2002) holding that the addition of the generic term
“drugstore” after Complainant’s famous CELEBREX mark in the disputed domain
name is not capable of overcoming a claim of confusing similarity because it is
merely descriptive and therefore Complainant’s mark is still the most prominent
part of the disputed domain name.”).
Respondent contends that when standing alone, “Nissan” and “Infiniti” are trademarks or service marks and when linked with “extended warranties” the meaning and interpretation of those terms by customers change and become generic. Both “Nissan” and “Infiniti” are generic because they are proper nouns found in formal languages, such as, “Nissan” is found in Hebrew and “Infiniti” is found in Greek mythology. The Respondent has further contended that it has no knowledge or record in six years of the subject domain names confusing anyone into believing these sites are factory-related sites and that the use of the word “for” in half of the subject domain names separates the Respondent from any association with the factory names. The Respondent’s website states “GMGL is an independent broker of extended warranties,” thereby not claiming to be a part of nor representing either Nissan or Infiniti. The Respondent’s name is clearly printed at the bottom of each site saying “GMGL Marketing, Inc., 2003”.
The panel finds that the Respondent is specifically using the
Trademarks to refer to Complainant’s motor vehicles. The Respondent has not disputed that the
Domain Names are confusingly similar to the Trademarks in which Complainant has
rights. Instead, Respondent has alleged that the Trademarks “change and
become generic” when linked to other words, such as “extended warranties.” It
is seen that Complainant’s Trademarks are generic words due to their
association to “extended warranties” by Respondent, and are not generic terms
for “motor vehicles” or “extended warranties;” The panel further holds that
evidence of actual confusion is not a requirement under either the Policy or
trademark law, as has been contended by the Respondent. Display of “Nissan
Extended Warranties” and “Infiniti Extended Warranties” at the top of Respondent’s
web pages and use of “Nissan Extended Warranties” and “Infiniti Warranties”
creates a false impression that Respondent is affiliated to or licensed by
Complainant. The presence on the web
page of Complainant’s phone number and links to Complainant’s official web site
increases the likelihood that the public would be mislead into believing that
Respondent has an association or affiliation with Complainant, or that is being
licensed by Complainant. Thus, the Complainant has sufficiently established
that how Respondent’s Domain Names are confusingly similar to Complainant’s
Trademarks by incorporating the Trademarks in their entirety and associating
them with products also offered by Complainant under those Trademarks.
In the facts and circumstances of the present
case, the Panel is of the view that the Complainant has made out a case that
Respondent lacks rights and legitimate interests in the disputed domain name
under Policy 4(a)(ii). There cannot be any dispute in
relation to the proposition that the respondent has a right to remain and grow
in its business for extending warranties for maintenance / repair of motor
vehicles, however, the said right of the respondent cannot be at the cost of
the complainant and / or by using the marks of the Complainant by the
Respondent in this regard. The Complainant has established that the Respondent
is unlawfully using the Complainant’s marks.
Such unlawful usage does not give Respondent rights and legitimate interests in respect to the subject domain names
it registered and maintains.
Complainant contends in its Additional
Submission that the respondent has shown willingness to sell the domain names @ $25,000 each. The panel finds that in
the facts and circumstances of the present case and also having regard to the
similar attempts of the respondent against other well-reputed vehicle
manufacturers having failed – there cannot be any doubt that the registration
of the impugned domain names by the respondent is in bad faith. Complainant has
already explained in its Complaint why the Domain Names were registered and has
established that they are used in bad faith, with the intent and for purpose of
attracting internet users to Respondent’s web sites to sell products that are
competing with Complainant’s contracts.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nissanextendedwarranties.com>, <infinitiextendedwarranties.com>, <extendedwarrantiesfornissan.com>,
and <extendedwarrantiesforinfiniti.com>
domain names be TRANSFERRED from Respondent to Complainant.
Mr. Maninder Singh, Panelist
Dated: 12th October 2009
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