COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Dana Corporation v. Common Sense Enterprises, Inc. f/k/a Swarthmore Associates

Claim Number: FA0304000155897

PARTIES

Complainant is Dana Corporation of Toledo, OH (“Complainant”) represented by Robert S. Gurwin of Rader Fishman & Grauer PLLC. Respondent is Common Sense Enterprises, Inc., f/k/a Swarthmore Associates of Big Bear Lake, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <dana.biz> registered with Psi-Japan, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum” electronically on April 25, 2003; the Forum received a hard copy of the Complaint on April 25, 2003.

On April 27, 2003, Psi-Japan, Inc., confirmed by e-mail to the Forum that the domain name <dana.biz> is registered with Psi-Japan, Inc., and that Respondent is the current registrant of the name. Psi-Japan, Inc., verified that Respondent is bound by the Psi-Japan, Inc., 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 April 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2003, 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 June 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 “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 makes the following assertions:

(1)  Respondent is not making a bona fide business or commercial use of the <dana.biz> domain name.

(2)  The domain name registered by Respondent, <dana.biz>, is identical to Complainant’s DANA mark.

(3) Respondent has no rights to or legitimate interests in the <dana.biz> domain name.

(4) Respondent registered and is using the <dana.biz> domain name in bad faith.

      B.   Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is one of the world’s largest suppliers of components, modules and complete systems to global vehicle manufacturers and their related after-markets. Complainant’s roots date back to early 1900, when Complainant’s founder invented and patented the first commercially viable universal joints for use in automobile transmission systems.

Presently, Complainant operates approximately 300 major facilities in 30 countries and employs more than 75,000 people worldwide. Complainant’s primary trademark and service mark is the DANA mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (USPTO) for the DANA mark (Reg. No. 856,983 registered on September 17, 1968), in relation to universal joints, clutches, drive shafts, transmissions, power take off units, engine cylinders and sleeves, connecting rods, differentials, pistons, marine drive units gear boxes, drive axel units, valves for internal combustion engines and speed control devices. Complainant also holds more than 175 trademark registrations for the DANA mark in some 50 countries.

Complainant registered the <dana.com> domain name on September 9, 1993, and has been operating a website there since. Complainant has also registered over 230 domain names, which are used in promoting Complainant’s full line of products.

Respondent registered the <dana.biz> domain name on March 27, 2002. Respondent has not used the domain name.

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) 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 requires that a domain name be used primarily for a bona fide business or commercial purpose. Sections of the RDRP ¶¶ 4(b)(i-iii) provide examples of bona fide business or commercial purposes and RDRP ¶ 4(a) explicitly states that Complainant bears the burden of proving that the disputed domain name is not primarily being used for a business or commercial purpose.

Complainant contends that the <dana.biz> domain name is not primarily being used for such a purpose because Respondent registered the disputed domain name while knowing that the domain name infringed upon Complainant’s rights and has not used the domain name since its registration. However, RDRP ¶ 4(a) expressly advises, “A complaint under the RDRP will not be considered valid if based exclusively on the alleged non-use of [the] domain name.” Complainant failed to establish any active use of the <dana.biz> domain name that demonstrates that the disputed domain name is not being used for a bona fide business or commercial purpose. While Complainant alleges that Respondent had both actual and constructive knowledge of Complainant’s exclusive rights in the DANA mark, Complainant’s speculation with regard to Respondent’s bad faith registration and use does not meet the requirements of the RDRP. Moreover, the communication from Respondent to Complainant asserts that the registration and use of the disputed domain name was not in bad faith.

Despite Complainant’s urging, the Panel finds that Complainant has not met its burden of proving that the <dana.biz> domain name is not being used for a bona fide business or commercial purpose pursuant to RDRP ¶ 4(a) because Complainant’s showing consists exclusively of allegations of the non-use of the disputed domain name. 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

Complainant established in this proceeding that it has rights in the DANA mark through registration with the USPTO and by continuous use in commerce since 1946.

The domain name registered by Respondent, <dana.biz>, is identical to Complainant’s DANA mark because the disputed domain name appropriates Complainant’s entire mark and adds the generic top-level domain (gTLD) “.biz” to the end of the mark. The addition of a gTLD does not sufficiently differentiate a domain name from a mark for the purposes of UDRP ¶ 4(a)(i). See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

The Panel finds that Complainant has established UDRP ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding. Therefore, the Panel may accept as true all reasonable allegations and inferences in the Complaint. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

The Panel may presume that Respondent lacks any rights to or legitimate interests in the domain name because Respondent failed to respond to 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

As discussed in the analysis under the RDRP, Respondent has not used the <dana.biz> domain name since its registration. While Respondent’s non-use of the disputed domain name does not show that the domain name is not primarily being used for a bona fide business or commercial purpose under RDRP ¶ 4(a), Respondent’s failure to use the <dana.biz> domain name does establish that it lacks any rights to or legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii). 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 Policy”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

Moreover, Respondent proffered no proof that it is commonly known as either DANA or <dana.biz> and no evidence in the record indicates that Respondent is so known. Thus, Respondent failed to establish any rights to or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Complainant has established UDRP ¶ 4(a)(ii).

Registration and Use in Bad Faith

UDRP ¶ (4)(b) presents examples of bad faith registration and use of a domain name. However, those examples were never intended to be exclusive. At its discretion, the Panel may consider the totality of the circumstances in determining registration and use in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent’s failure to use the <dana.biz> domain name is evidence that Respondent registered and is using the disputed domain name in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Moreover, Complainant provides evidence that Respondent registered 41 domain names that wholly incorporate famous marks of others. As the Panel is permitted to accept any reasonable allegation in the Complaint as true, Complainant’s evidence establishes a pattern of Respondent registering domain names to prevent the owner of the trademark or service mark from reflecting its mark in a corresponding domain name, which is evidence of bad faith registration and use under UDRP ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any on-line presence or website).

The Panel finds that UDRP ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under the UDRP, the Panel concludes that relief shall be GRANTED.

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

Hon. Carolyn Marks Johnson, Panelist

Dated: June 16, 2003.

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