DECISION

Dana Corporation v. Allstate Engine & Parts Supply

Claim Number: FA0307000166005

PARTIES

Complainant is Dana Corporation, Toledo, OH (“Complainant”) represented by Robert S. Gurwin of Rader, Fishman & Grauer PLLC. Respondent is Allstate Engine & Parts Supply, Saddle Brook, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cleviteengineparts.com> registered with Network Solutions.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 July 1, 2003; the Forum received a hard copy of the Complaint on July 2, 2003.

On July 9, 2003, Network Solutions confirmed by e-mail to the Forum that the domain name <cleviteengineparts.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 July 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 2003 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@cleviteengineparts.com 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 August 6, 2003, 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 makes the following assertions:

1. Respondent’s <cleviteengineparts.com> domain name is confusingly similar to Complainant’s CLEVITE mark.

2. Respondent does not have any rights or legitimate interests in the <cleviteengineparts.com> domain name.

3. Respondent registered and used the <cleviteengineparts.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the CLEVITE mark (Reg. No. 707,366 registered on November 22, 1960) in relation to bearings, bushings, wear plates and seals, particularly for use in automobiles, aircraft, farm machinery, replaceable railroad journal bearings and tire bead expanders. Complainant also holds a number of international trademark registrations.

Respondent, a distributor and reseller of Complainant’s products, registered the <cleviteengineparts.com> domain name on October 22, 2002. Respondent has not linked the disputed domain name to an active website.

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 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 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 Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights in the CLEVITE mark through registration with the USPTO. See The Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <cleviteengineparts.com> domain name is confusingly similar to Complainant’s CLEVITE mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name incorporates Complainant’s entire mark and simply adds the generic terms “engine” and “parts” to the end of the mark. The addition of the generic terms “engine” and “parts” does not significantly differentiate the domain name from the mark because the added terms are directly related to Complainant’s business. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense).

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also 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).

Moreover, by failing to answer the Complaint, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <cleviteengineparts.com> domain name. After Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent has not linked the <cleviteengineparts.com> domain name to an active website since the domain name’s registration on October 22, 2002. Mere registration does not bestow rights to or legitimate interests in a domain name. Respondent’s nonuse of the disputed domain name does not indicate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Furthermore, Respondent has not come forward with any proof and there is no evidence in the record suggesting that Respondent is commonly known by CLEVITE ENGINE PARTS or <cleviteengineparts.com>. Thus, Respondent has failed to establish its rights to or legitimate interests in the disputed domain name with regard 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 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").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b) lists four circumstances that evidence bad faith registration and use of a domain name, however, this list was not meant to be exclusive. In appropriate circumstances, the totality of the circumstances may be considered in determining whether a domain name has been registered and used in bad faith under Policy ¶ 4(a)(iii). See 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”); see also 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”).

Respondent’s nonuse of the <cleviteengineparts.com> domain name, commonly referred to as passive holding, can itself be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used 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 has produced evidence that Respondent is a distributor and reseller of automotive parts and that Respondent has purchased small quantities of CLEVITE brand products from Complainant. The Panel deduces from this evidence that Respondent had actual or constructive knowledge of Complainant’s rights in the CLEVITE mark when Respondent registered the <cleviteengineparts.com> domain name. Respondent’s registration and use of the disputed domain name despite actual or constructive knowledge of Complainant’s rights in its mark evidences registration and use in bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

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

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 20, 2003

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