DECISION

K & N Engineering, Inc. v. Autoair Holdings Bhd

Claim Number: FA0205000114351

PARTIES

Complainant is K & N Engineering, Inc., Riverside, CA, USA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Autoair Holdings Bhd, Sg Buloh, Selangor, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <filtercharger.net>, registered with Intercosmos Media Group.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.

On May 21, 2002, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <filtercharger.net> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name.  Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 19, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@filtercharger.net by e-mail.

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 July 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <filtercharger.net> domain name is identical to Complainant’s FILTERCHARGER mark.

Respondent has no rights or legitimate interests in the <filtercharger.net> domain name.

Respondent registered and used the <filtercharger.net> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns numerous trademarks for the FILTERCHARGER mark worldwide, including Reg. No. 1,281,461 with the United States Patent and Trademark Office.  For nearly twenty years Complainant’s FILTERCHARGER mark has been closely associated with its automotive air filters distributed around the world.  Complainant sells its automotive air filters in Malaysia, Respondent’s domicile, through two Malaysian distributors. 

Respondent registered the <filtercharger.net> domain name on May 6, 2002.  Respondent does not actively use the domain name.  Respondent is in the business of selling and distributing automotive products, which are similar to Complainant’s products. 

Prior to registering the <filtercharger.net> domain name, Respondent registered <filtercharger.com> and <filtercharger.biz> and lost them to Complainant in previous UDRP disputes.  Complainant attempted to amicably settle the prior domain name disputes with Respondent but Respondent demanded that Complainant pay a cost in excess of out-of-pocket expenses for the domain names.  Regarding the current matter, Respondent sent a letter to Complainant after registering <filtercharger.net> warning Complainant that, “God will punish those who hijack domains without compensation.” 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the FILTERCHARGER mark through trademark registration throughout the world and subsequent continuous use.

Respondent’s <filtercharger.net> domain name contains Complainant’s entire FILTERCHARGER mark.  Since the addition of the generic top-level domain “.net” is inconsequential when conducting an “identical” analysis, Respondent’s domain name is identical to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

After Respondent registered <filtercharger.net> it notified Complainant of the registration.  In an email to Complainant Respondent stated, “[y]ou are free to submit for more disputed domains that we have and one day we will take them all back from your client.”  This message appears to be a threat to Complainant designed to induce Complainant not to enforce its trademark rights in the FILTERCHARGER mark.  Respondent’s behavior permits an inference that it registered the <filtercharger.net> domain name in order to market it to Complainant.  Also, Respondent has made no active use of the <filtercharger.net> domain name.  Therefore, due to Respondent’s threatening behavior and passive holding of the domain name, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Respondent does not own any trademarks in the FILTERCHARGER mark and does not operate its business under that name, nor is Respondent commonly known by <filtercharger.net>.  Respondent registered the domain name under the auspices of “Autoair Holdings Bhd.”  Therefore, Respondent has no rights or legitimate interests in the <filtercharger.net> domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered <filtercharger.net> after it lost the <filtercharger.com> and <filtercharger.biz> domain names to Complainant in prior UDRP disputes.  Hence, Respondent was aware of Complainant’s rights in the FILTERCHARGER mark upon registering <filtercharger.net>.  Therefore, Respondent registered the domain name in bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) the Respondent knew or should have known of the Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon the Complainant’s mark); see also 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).

Given Respondent’s aforementioned threats to Complainant regarding the <filtercharger.net> domain name and the fact that Respondent sells and distributes similar automotive products as Complainant, it can be inferred that Respondent registered the domain name primarily to disrupt Complainant’s business.  Therefore, Respondent registered and used the domain name in bad faith pursuant to 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 Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.

Accordingly, it is Ordered that the <filtercharger.net> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: July 15 2002.

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