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

PARTIES

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.

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.

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.

RELIEF SOUGHT

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

PARTIES CONTENTIONS

            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.        

FINDINGS

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.

DISCUSSION

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.

Bona Fide Business or Commercial Use

           

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

           

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.

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 <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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