Mazda D2006 0766

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Mazda D2006 0766

  1. 1. WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mazda Motor of America, Inc. and PB&J Automotive, Inc. dba Tustin Mazda v. Janet Hansen Case No. D2006-0766 1. The Parties The Complainants are Mazda Motor of America, Inc., of Irvine, California, United States of America, and PB&J Automotive, Inc. dba Tustin Mazda, of Tustin, California, United States of America, both represented by Kit M. Stetina of Stetina Brunda Garred & Brucker, United States of America. Mazda Motor of America, Inc. and PB&J Automotive, Inc. dba Tustin Mazda will be collectively referred to as “Complainant.” The Respondent is Janet Hansen, Anaheim Hills, California, United States of America. 2. The Domain Name and Registrar The disputed domain name <tustinmazda.com> is registered with Go Daddy Software. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2006. On June 22, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 22, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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”). 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 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was page 1
  2. 2. July 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2006. The Center appointed Gary J. Nelson as the sole panelist in this matter on July 28, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. This proceeding is being conducted in English. 4. Factual Background Complainant is the owner of the following United States Trademark Registrations: - 3,009,448 MAKE MINE MAZDA - 3,004,024 MAZDASPORT - 2,945,834 MAZDA FULL CIRCLE SERVICE - 2,987,176 MAZDA FULL CIRCLE SERVICE - 2,766,864 THE MAZDA TEST DRIVE EXPERIENCE - 2,700,586 MAZDA FUEL - 2,697,170 MAZDA DRIVER’S ASSURANCE PLAN - 2,684,491 MAZDA ELITE - 2,795,335 MAZDA RX-8 Complainant operates a website at “www.mazdausa.com” where it uses the MAZDA trademark and MAZDA-based trademarks for the promotion and sale of automobiles, automotive parts and accessories. Respondent registered the <tustinmazda.com> domain name on September 23, 2002. Respondent does not maintain an active website at this URL address. 5. Parties’ Contentions A. Complainant Complainant claims ownership in a variety of MAZDA-based trademarks and service marks, and that the <tustinmazda.com> domain name is confusingly similar to these MAZDA-based trademarks and service marks. Complainant alleges Respondent has no rights or legitimate interests in the <tustinmazda.com> domain name, and that Respondent registered and is using the <tustinmazda.com> domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of page 2
  3. 3. the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in the contested domain name; and (iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant owns at least nine MAZDA-based trademark registrations in the United States. Based on the existence of these registrations, Complainant claims trademark rights in MAZDA. Because the Panel finds that the MAZDA portion of these registrations is the dominant portion of each subject mark, and because Respondent has not contested Complainant’s claim of trademark ownership rights in MAZDA, the Panel concludes that Complainant has established rights in the MAZDA trademark and service mark for automotive products and services pursuant to Policy, Paragraph 4(a)(i). The <tustinmazda.com> domain name is confusingly similar to Complainant’s well- known MAZDA trademark. The contested domain name is identical to Complainant’s MAZDA trademark except for the addition of the generic geographic identifier “Tustin,” and the generic top-level “.com” domain name. “Tustin” is a city located in Southern California and is a suburb of Los Angeles, California. Neither the addition of a generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name is dispute contains the identical mark of the Complainant combined with a generic word or term). See also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph 4(a)(i) is satisfied). Complainant has proven the requirement of Policy, Paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel finds that Respondent has no rights or legitimate interests in the contested page 3
  4. 4. domain name. Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd. and Glenn Greenhouse, WIPO Case No. D2000-1221 (Dec. 4, 2000) (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names). By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <tustinmazda.com> domain name, or that it is commonly known by any name consisting of, or incorporating the name, “Tustin Mazda.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, the Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <tustinmazda.com> domain name predates Complainant’s rights in the MAZDA trademark. In regard to the <tustinmazda.com> domain name, Respondent maintains a passive and undeveloped website. Respondent’s failure to develop an active website corresponding to the <tustinmazda.com> domain name is evidence supporting the conclusion that Respondent has no right or legitimate interest in this domain name. See Pharmacia & Upjohn AB v. Darro H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interest where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name). Complainant has proven the requirement of Policy, Paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Panel finds that Respondent registered and is using the contested domain name in bad faith. Respondent has registered the <tustinmazda.com> domain name which corresponds to a passive website. This fact is evidence that Respondent registered and is using this domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766(finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use). page 4
  5. 5. The Panel also finds that Respondent likely chose the disputed name with full knowledge of Complainant’s rights in the MAZDA trademark. Respondent’s awareness of Complainant’s MAZDA trademark may be inferred because the MAZDA-based trademarks and service marks were registered with the USPTO prior to Respondent’s registration of the contested domain name and since the mark is well known in the automotive industry. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”). Complainant has proven the requirement of Policy, Paragraph 4(a)(iii). 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, <tustinmazda.com> be transferred to the Complainant. Gary J. Nelson Sole Panelist Dated: August 11, 2006 page 5

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