NISSAN MOTOR CO., LTD. v. Domains By Proxy, LLC
Claim Number: FA1412001593535
Complainant: NISSAN MOTOR CO., LTD. of Yokohama-shi, Japan.
Complainant Representative:
Respondent: Cameron Roberson / The Moran Group of Baton Rouge, Louisiana, United States of America.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS:
Registries: Steel Falls, LLC
Registrars: GoDaddy.com, LLC
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 Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: December 5, 2014
Commencement: December 5, 2014
Default Date: December 22, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submits that it is a global leading company involved in manufacturing, sales and related business of automotive products and marine equipment. The Complainant employs a multinational workforce of over 160,000 people.
The Complainant submits that the trademark “NISSAN” is a coined word in Japanese. The trade mark of the Complainant is not a dictionary word and is thus entitled to protection.
The Complainant further submits that the Respondent has no legitimate right and interest in the trademark ‘NISSAN”. The Respondent is not a licensee of “NISSAN” and has no right to the use of NISSAN’s trademarks or domain names.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to establish a prima facie case, proven by clear and convincing evidence in each of the following three elements, in order to obtain an order for suspension of the domain name.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that it is a global leading manufacturing, sales and a business company in automotive products and marine equipment. The Complainant has further established that it has secured more than 2,000 registrations for the “NISSAN” trademark in about 180 nations and areas. The mark NISSAN is an invented mark deserving the highest degree of protection.
The Respondent has registered the domain name in dispute, i.e., <NISSAN.AGENCY> thus wholly incorporating the trademark “NISSAN” of the Complainant, which is found to sufficiently establish identity/confusing similarity. In fact the registering of domain name with the `.agency’ extension adds to confusion as to affiliation and sponsorship between the complainant and the respondent.
There is thus identity and confusing similarity between the Complainant’s mark and the Respondent’s domain name.
2. No Rights or Legitimate Interests:
The Respondent has registered a domain name containing the Complainant’s registered trademark “NISSAN”. The Complainant has a national trademark registration of “NISSAN” since 2002 and also has several domain names registered in its own name with the same mark. The Complainant has also been using the trademark for a long time. The Complainant has stated that the Respondent is not a licensee of NISSAN to use NISSAN’s trademarks. The Complainant has also shown that the Respondent is not making any legitimate use of the domain name `nissan.agency’. As the Respondent has not filed a Response, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has prima facie proved that the Respondent has no right or legitimate interest in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <nissan.agency> on May 01, 2014. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location.”
The Complainant has to prove that the Registrant has registered and used the domain name in bad faith. It has already been established by the Complainant that the trademark “NISSAN” is a coined word. It is further seen that the Respondent is not making use of this website with bona fide offerings of goods or services in any commerce. The Respondent has not sold any goods or services under the mark “NISSAN”, neither is the Respondent making any legitimate non-commercial use or fair use of this domain name. The website of the Respondent does not exist and is parked with the message “Sorry! This site is not currently available.” Thus, the Respondent’s registration and use of the impugned domain name by the Respondent is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
<NISSAN.AGENCY>
Prathiba M. Singh, Examiner
Dated: December 22, 2014
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