WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mazda Motor Corporation v Zone Mp3
Case No. D2007-0730
1. The Parties
The Complainant is Mazda Motor Corporation of Hiroshima, Japan.
The Respondent is Zone Mp3, with a postal address in Aberta (sic), Canada.
2. The Domain Name and Registrar
The disputed domain name <usamazda.com> is registered with eNom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) by email on May 18, 2007 and by hard copy on May 18, 2007.
On May 21, 2007, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the domain name at issue. This was responded
to on the same day. The Registrar transmitted by email to the Center its verification
response confirming that the Respondent is listed as the registrant and providing
contact details. The Center has verified that the Complaint satisfies the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”),
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the
WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the “Supplemental Rules”).
Notification of a deficiency in the Complaint was given to the Complainant by the
Center on May 29, 2007. The deficiency was corrected by an amendment to the
Complainant which was received on June 5, 2007.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on June 6, 2007.
In accordance with the Rules, paragraph 5(a), the due date for the Response was
June 26, 2007.
No Response was received from the Respondent by the time allotted and accordingly
Notification of Respondent’s Default was given to the Respondent on June 28, 2007.
On July 9, 2007, Mr. Clive Duncan Thorne was appointed as sole Panelist.
The Panel finds that it has been properly constituted. It has submitted the required
Statement of Acceptance and Declaration of Impartiality and Independence as required
by the Center to ensure compliance with the Rules paragraph 7.
4. Factual Background
The Complainant, or its predecessor in interest, has been doing business with the motor
industry since 1920. In the early 1930’s, the Complainant began producing and
exporting automotive vehicles. Currently, Mazda vehicles, accompanying parts,
accessories and products are sold in over 130 countries including Canada and the
United States of America, by nearly 6,000 dealers, many operating explicitly under the
The Complainant is among the most well-respected manufacturers in the automotive
industry, as Mazda automobiles and motor vehicles regularly receive highly prestigious
awards from the press and automotive research organizations identifying them as
among the very best automotive vehicles on the market. Evidence of this is given at
Exhibit J to the Complaint.
Since its first use over 40 years ago, the “Mazda” name and the MAZDA mark have
continuously served to identify the Complainant’s famous brand of well-engineered,
high quality passenger cars and automotive vehicles. As a result, the MAZDA mark
has come to signify the quality, high technical standards and high production values
associated with Mazda vehicles. Due to their high quality, Mazda cars are among the
most successful in the market place. In the fiscal year 2004, Mazda generated net sales
in excess of US$25 billion. The success of the market place translates in to a high
degree of consumer recognition of the MAZDA mark. The Complainant owns a large
number of trademark registrations for the mark MAZDA in over 100 countries
worldwide so as to provide trademark protection around the globe. This includes marks
registered in the United States of America and in Canada.
Exhibited to the Complaint are print-outs of the website of the United States Patent and
Trademark Office showing the Complainant’s trademark registrations of the mark
MAZDA. Additionally, the Complaint’s affiliate Mazda Corporation of America Inc.
has filed a registration for the mark MAZDAUSA. A copy of the filing for
MAZDAUSA is exhibited at Exhibit E to the Complaint.
The Complainant also owns four national trademark registrations for the mark MAZDA
in Canada. Copies of the Complainant’s Canadian trademark registrations are exhibited
to the Complaint at Exhibit F to the Complaint.
The Complainant is also the owner of the domain name <mazdausa.com> which the
Complainant uses in relation to the marketing of its MAZDA brand vehicles. At
Exhibit H to the Complaint is a print-out of the “www.mazdausa.com” homepage and
the Whois database record for the Complainants <mazadausa.com> domain name.
Having considered this evidence, the Panel is satisfied that the Complainant has valid
subsisting trademark registrations for the marks MAZDA in Canada and the United
States of America and an application for the mark MAZDAUSA in the United States
Patent and Trademark Office.
In the Panel’s view, the evidence of use by the Complainant of the mark MAZDA
throughout the world also shows that the Complainant has unregistered trademark
rights in the mark MAZDA.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that the Respondent’s domain name <usamazda.com> is
confusingly similar to the Complainant’s trademark MAZDA in its entirety.
Rights or Legitimate Interest in the Domain Name
The Complainant submits that the Respondent cannot demonstrate or establish any
legitimate interest in the domain name in dispute. There is no evidence of any
relationship between the Complainant and the Respondent that would give rise to any
license, commission or other right by which the Respondent could own or use any
domain name incorporating the Complainant’s famous MAZDA mark.
The domain name was registered and is used in bad faith
The Complainant submits that because the Complainant’s mark MAZDA enjoys
international recognition and its retail trading locations are well-known, it is
inconceivable that the Respondent was unaware of the Complainant’s trademarks.
It also relies upon the fact that the Respondent is using the domain name in dispute as a
general search engine for a wide array of goods and services, including automobiles
and motor vehicles that compete directly with the Complainant’s products. This is
evidence that the Respondent has registered the domain name primarily to trade off the
Complainant’s reputation and divert Internet users who are otherwise searching for the
Complainant so as to bring those users to Respondent’s website for commercial benefit.
There are no submissions from the Respondent.
6. Discussion and Findings
A. Identical or confusingly similar
The Complainant submits that the domain name in dispute is confusingly similar
because it incorporates the Complainant’s mark MAZDA and that the mere addition of
the geographic indicator “USA” before MAZDA in the domain name does not
diminish the Complainant’s rights in the mark.
In addition, the Complainant submits that the domain name in dispute merely reverses
the two terms “Mazda” and “USA” which comprise the Complainant’s official website
domain at “mazdausa.com”. In summary, it submits that absent the generic top level
domain indicator and the geographical indicator “USA” which is also used in the
Complainant’s official website domain name, the domain name in dispute is identical
to the Complainant’s mark MAZDA and nearly identical to the Complainant’s official
website. Thus the domain name is confusingly similar to the Complainant’s mark.
The Panel accepts these submissions and therefore finds that the domain name in
dispute is confusingly similar to the mark MAZDA in which the Complainant has
established trademark rights.
B. Rights or Legitimate Interests
The basis of the Complainant’s submission is that the Respondent is unable to show
any use of the domain name in connection with the bona fide offering of goods and
services and that the Respondent has not been commonly known by the domain name.
In the absence of any evidence to the contrary from the Respondent, the Panel accepts
the Complainant’s submissions and finds that the Respondent has no rights or
legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Given the widespread use of the mark MAZDA by the Complainant, the Panel accepts
that it is inconceivable that the Respondent was unaware of the Complainant’s
trademark MAZDA when it registered the domain name.
Moreover, having considered Exhibit L to the Complaint, which is an extract from the
Respondent’s website “www.usamazda.com”, it is abundantly clear that the
Respondent is using the website as a search engine for goods and services, including
automobiles and motor vehicles manufactured by the Complainant. In the Panel’s view
it inevitably follows that the Respondent has registered the domain name primarily to
trade off the Complainant’s reputation and divert website users who are otherwise
searching for the Complainant in order to bring those users to the Respondent’s own
website for commercial benefit. In the Panel’s view, this is clear evidence of bad faith.
Accordingly, the Panel finds for the Complainant in respect of this element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name in dispute <usamazda.com>
be transferred to the Complainant.
Clive Duncan Thorne
Dated: July 20, 2007