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and Mediation Center
ADMINISTRATIVE PANEL DECISION
RDA Inc. d/b/a/ Easterns Automotive Group v. Manila Industries,
Case No. D2006-1562
1. The Parties
The Complainant is RDA Inc. d/b/a Easterns Automotive Group, McLean, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
The Respondent is Manila Industries, Inc., Santa Ana, California, United States
2. The Domain Name and Registrar
The disputed domain name <easternsmotors.net> is registered with Compana
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 11, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On January 18, 2007, Compana LLC 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 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 January 19, 2007. In accordance with the Rules, paragraph 5 (a), the due date for Response was February 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on February 9, 2007.
The Center appointed John E. Kidd as the sole panelist in this matter on March
1, 2007. 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.
4. Factual Background
The Complainant is the owner and operator of the worldwide website located at the domain name <easterns.com>, which is used to advertise its retail car dealerships and related services that are offered at fourteen (14) physical locations in the United States.
Complainant is also the owner of numerous trademark and service marks that use the mark EASTERN’s alone or in combination with other generic words or phrases for example EASTERN’s AUTO MALL or EASTERN’s AUTO OUTLET. All of Complainants marks were registered before Respondent registered the domain name in dispute.
In January 2006, five and a half years after Complainant registered its domain name in November 1999, Respondent registers the domain name in dispute. Respondent appears to use the disputed domain name for a website featuring primarily links to other sites that are apparently directly competitive with Complainant’s business.
The only difference between the domain name in dispute and Complainant’s EASTERN’s marks rests on the mere addition by Respondent of the dictionary term “motors” to the EASTERN’s mark.
Respondent has apparently engaged in a similar pattern of cybersquatting in the past, through its use and registration of other domains that were found to be by other WIPO panels confusingly similar to complainant’s mark.
Complainant has previously filed a UDRP complaint with WIPO against the Respondent. The complaint was settled in favor of Complainant. See RDA, Inc. d/b/a/ Easterns Automotive Group v. Manila Industries Inc., WIPO Case No. D2005-0893.
Prior to filing the present Complaint, counsel for Complainant on August 16,
2006, sent a cease and desist letter to Respondent’s counsel. On October
10, 2006, counsel for Respondent verbally advised Complainant’s counsel
that Respondent would voluntarily transfer the domain name in dispute to Complainant,
at no charge. Respondent’s counsel never fulfilled its agreement to transfer
the domain to Complainant .
5. Parties’ Contentions
Complainant contends that its domain name has become well-known and is distinctive as an indication of the origin of Complainant’s automobile dealership services.
Complainant contends that the domain name in dispute is confusingly similar to the Complainant’s Marks. Furthermore, there is a clear misuse and infringement on the part of Respondent of Complainant’s well-known EASTERN’s mark and such use is in breach of the Policy.
Complainant further contends that it never granted Respondent any rights to any of Complainant’s Marks or any derivatives thereof.
Complainant asserts that Respondent’s registration and use of the domain name in dispute for a website offering links to other automotive dealers competes with the Complainant’s goods and services and does not constitute a bona fide offering of goods.
Moreover Respondent has no relationship to Complainant and has not authorized Respondent to use its Marks. As such Respondent has no rights or legitimate interests in the domain name in dispute.
Finally, Complainant asserts that Respondent registered and used the domain name in dispute in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent has incorporated Complainant’s registered trademark EASTERN’s
in the domain name in dispute. Under the Policy this is sufficient to establish
that the domain name in dispute is identical or confusingly similar. See Magnum
Piering, Inc. v. The Mudjocker and Garwood S. Wilson Sr.,
WIPO Case No. D2000-1525.
The Panel also finds that the addition of the word “motor” is purely
descriptive and for trademark purposes, adds no distinctiveness or source of
origin elements to the domain name in dispute. Se Yahoo! Inc. v. Eitan Zviely
et al WIPO Case No. D2000-0273 where
the panel found that the combination of Complainant’s mark YAHOO with
a number of generic words such as a city name or abbreviations for a country
name, gave rise to a domain name that was confusingly similar to the registered
mark of the Complainant.
The Panel concludes that the domain name in dispute is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interest
The Panel finds that Respondent’s registration of a derivative of Complainant’s
Mark that is apparently being used in competition with Complainant’s goods
and services is not in connection with a bona fide offering of goods
or services pursuant to the Policy Paragraph 4(c)(i) or a legitimate noncommercial
or fair use pursuant to the Policy Paragraph 4(c)(iii). See Rada Mfg Co.
v. J. Mark Press a/d/a J. Mark Cutlery WIPO
Case No. D2004-1060.
The Panel finds that Respondent has no rights or legitimate interest in the domain name in dispute.
C. Registered And Used In Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. The Panel finds that paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(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 locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
The Panel concludes that the Respondent, by registering the domain name in dispute, is unfairly trading on the Complainant’s valuable good will established in its trademark EASTERN’s and its registration is deliberate and calculated to exploit the Complainant’s reputation in the automobile sales field. This is not acting in good faith.
The Panel considers that Respondent in all likelihood registered of the domain name in dispute primarily for the purpose of diverting Internet traffic to websites linked to Complainant’s competitors and the Panel holds that this constitutes “bad faith” under the Policy, Paragraph 4(b)(iv).
The Panel finds that Respondent has actual notice and knowledge o Complainant’s trademark rights and acted in complete disregard thereof upon registering the domain name in dispute.
The Panel further notes the Respondent’s registrations of multiple domain names in the past similar to those of Complainant.
The panel concludes that Respondent has registered and is using the domain
name in dispute in bad faith.
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 <easternsmotors.net> be transferred to the Complainant.
John E. Kidd
Dated: March 14, 2007