Mazda Domain Name Dispute Wiho

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  • 1. 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. page 1
  • 2. 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 mark MAZDA. 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 page 2
  • 3. 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 A. Complainant 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. B. Respondent 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 page 3
  • 4. 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. 7. Decision 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 Sole Panelist Dated: July 20, 2007 page 4