The Complainant is Magna International Inc. Aurora, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Victor Silva of Maple, Ontario, Canada.
The disputed domain name <mymagna.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2012. On August 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or UDRP”), 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 August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Center received an informal email communication from the Respondent on August 7, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on August 28, 2012.
The Center appointed Cherise Valles as the sole panelist in this matter on September 7, 2012. 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.
The Complainant, Magna International Inc. is a global automotive supplier, which provides automotive content for virtually every automotive manufacturer for every major brand of automobile in the world. The relevant trademark in this Complaint is MAGNA, which the Complainant uses in connection with automobile supplies. The Complainant had sales in 2011 of USD 28.7 billion. The Complainant is listed and traded on the Toronto Stock Exchange in Canada and the New York Stock Exchange in the United States America (“US”). The Complainant is the owner of several trademark registrations that are comprised of, or contain, MAGNA, as described more fully in Section 6A below. The Complainant has used MAGNA as a trademark for over 40 years in association with its businesses.
The Complainant registered the domain name <magna.com> in 1991 and has operated a website from that domain name since 2001. The website features the MAGNA trademarks and promotes the Complainant’s businesses in association with the MAGNA trademarks.
The disputed domain name <mymagna.com> was registered on October 10, 2011 with the Registrar.
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on August 2, 2012, the Complainant asserts that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the Complainant’s many registered trademarks containing, or comprised of, the term “magna”, in light of the fact that it wholly incorporates the Complainant’s mark. The disputed domain name differs only from the registered trademark of the Complainant through the addition of the prefix “my”.
- The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent has not filed a formal response to the Complainant’s contentions. He did, however, engage in informal communications with the Complainant in which he made offers to sell the disputed domain name to the Complainant, which the Complainant refused.
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence.
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the MAGNA trademarks. The trademark, MAGNA, has been in use in commerce since 1957. The Complainant has submitted evidence in Exhibit 6 to the Complaint demonstrating that it is the owner of multiple trademark registrations worldwide for the mark MAGNA, including the following ones in the US and Canada:
Trademark | Reg. No. | Country |
|
MAGNA |
1837713 |
US |
|
MAGNA & Design |
2551426 |
US |
|
MAGNA SEATING |
4031719 |
US |
|
MAGNA ELECTRONICS |
4031578 |
US |
|
MAGNA POWERTRAIN |
3822192 |
US |
|
MAGNA |
TMA 303,870 |
Canada |
|
MAGNA & Design |
TMA 553,535 |
Canada |
|
MAGNA POWERTRAIN |
TMA 728,738 |
Canada |
|
MAGNA MIRRORS |
TMA 820,321 |
Canada |
|
MAGNA STEYR & Design |
TMA 812,244 |
Canada |
|
MAGNA STEYR |
TMA 812,245 |
Canada |
|
MAGNA |
010109221 |
CTM |
In addition, the Complainant submitted evidence in Exhibit 5 to the Complaint that it owns and has registered the domain name <magna.com>.
The Panel finds that the Complainant’s trademarks are distinctive and well-known in the automotive supplies industry, as evidenced by the extensive use and publicity associated with the MAGNA trademark and by the longstanding use of the MAGNA trademark. The disputed domain name is confusingly similar to the MAGNA trademark. The disputed domain name contains the term “magna”. The fact that the disputed domain name wholly incorporates a mark owned by the Complainant supports the conclusion that it is confusingly similar to MAGNA trademark in which the Complainant has rights.
In addition, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-1206. See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
The addition of the non-distinctive prefix “my” is not sufficient to dispel confusion. Previous UDRP panels have found that where a domain name incorporates a registered trademark with the addition of a possessive pronoun, the domain name is identical or confusingly similar for the purposes of the Policy. Sony Corporation v. Sin Eonmok, WIPO Case No. D2000-1007. The likelihood of such confusion is increased where a complainant is the owner of a well-known trademark, Fendi Adele S.r.l. v. Carl Lim, WIPO Case No. D2006-1589. In light of Complainant’s extensive and long-standing usage of the MAGNA trademark, the Panel finds that MAGNA constitutes a well-known trademark.
The addition of a generic top-level domain (gTLD) “.com” to the Complainant’s mark does not change the likelihood of confusion, as the addition of a gTLD is without legal significance in determining whether there is confusing similarity, Research in Motion Limited v. International Domain Name Inc / Moniker Privacy Services, WIPO Case No. D2008-0780.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Complainant submits that the Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Complainant submits that there has never been any relationship between the Complainant and the Respondent and the Complainant has never licensed, or otherwise, authorized the Respondent to use the MAGNA trademark in any manner whatsoever.
The disputed domain name resolves to the Respondent’s website, which displays a banner featuring an image of an automobile. It is a “parking” website populated with “pay-per-click” advertisements that resolve to websites promoting automotive goods and services. The website also provides a means by which end users can search for links to other automotive related businesses.
Directing a domain name, that is confusingly similar to another’s trademark, to a pay-per-click website does not constitute bona fide use of the domain name, Research in Motion Limited v. International Domain Name Inc / Moniker Privacy Services, WIPO Case No. D2008-0780.
The disputed domain name is being used to divert Internet traffic to a pay-per-click website that displays sponsored links to other automotive related websites and places the Respondent in a position to reap a financial benefit. Such use constitutes prima facie evidence that the Respondent lacks a legitimate interest in the disputed domain name.
Furthermore, there is no evidence on record that the Respondent has been commonly known by the disputed domain name or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location.
The Complainant submits that the Respondent registered and has used, and is continuing to use, the disputed domain name in bad faith.
The fact that the Respondent’s website features an offer to sell the disputed domain name for USD 1,500, an amount that far exceeds the Respondent’s registration fees, may be prima facie evidence of bad faith.
The Panel finds that the Complainant’s trademarks are well-known in connection with automotive supply services. The Respondent is using the disputed domain name that is confusingly similar to trademarks in which the Complainant has rights. The Respondent’s use of the disputed domain name that provides links to other automotive related businesses - a primary activity of the Complainant – suggests that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
The Respondent’s use of the disputed domain name appears to be an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, Research in Motion Limited v. International Domain Name Inc / Moniker Privacy Services, WIPO Case No. D2008-0780.
Moreover, the Complainant has submitted evidence that the Respondent is the owner of over twenty “.com” domain names including <my7eleven.com>, <mycaptinmorgan.com>, <mycathaypacific.com>, <myferrarorocher.com>, <mymountaindew.com> and <mysnickers.com> and has further submitted evidence in Exhibit 23 to the Complaint of the legitimate third party registrations of similar trademarks.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mymagna.com> be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: September 21, 2012