WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Magna International Inc. and Donnelly Corporation v. Brian Evans

Case No. D2002-0898

 

1. The Parties

The Complainants are Magna International Inc. of Ontario, Canada and Donnelly Corporation of Michigan, United States of America; represented by Mr. Scott D. Alfree of Varnum, Riddering, Schmidt & Howlett, LLP also of Michigan in the United States of America, ("USA").

The Respondent is Brian Evans of Key West, Florida in the United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <magnadonnelly.com>.

The registrar of the disputed domain name is All West Communications, Inc. d/b/a AW Registry of Kamas, Utah in the USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Centre ("Center") received the Complaint via e-mail on September 27, 2002, and in hard copy on October 14, 2002. The Complaint nominated determination by a single member Panel. The Complaint specifies that copies of the Complaint were sent to the Respondent on September 27, 2002.

The Center transmitted an Acknowledgement of Receipt of Complaint to the Complainant and the Respondent on October 1, 2002. It also forwarded by e-mail the Request for Registrar Verification to AW Registry on that date.

On October 7, 2002, AW Registry confirmed by e-mail to the Center that it had received a copy of the Complaint and that:

(a) the domain name was registered with it,

(b) B. Evans was the current domain name holder and also the Administrative, Technical and Billing Contacts;

(c) the current contact details for B. Evans were the same as those set out in the Whois details included in the Complaint;

(d) the Uniform Domain Name Disputes Resolution Policy applied to the domain name; and

(e) the domain name registration agreement provided that the courts having jurisdiction at the location of the Registrarís principal office had jurisdiction over disputes concerning or arising from the use of the domain name.

The Center verified that the Complaint complied with the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 1999 (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment in the required amount had been received from the Complainant. Accordingly, the Center transmitted to the parties the Notification of Complaint and Commencement of Administrative Proceeding on October 16, 2002, specifying that date as the formal date of commencement. The notification, including a copy of the Complaint was transmitted to the Respondent both by e-mail and courier.

The Respondent has submitted by e-mail four communications to the Center, the last of which (on October 16, 2002, 11:09AM) made it clear that these are intended to be regarded as his Response. Subsequently, however, the Center received a hard copy of the Respondentís Response which included two attachments and some handwritten annotations.

Accordingly, following provision of my Statement of Acceptance and Declaration of Impartiality, the Center appointed me as the Sole Panelist on October 22, 2002, and advised the parties that the decision was due on November 5, 2002. The Center also forwarded the Case File to me by e-mail and courier.

I am satisfied that the procedural requirements of the Policy, the Rules and the Supplemental Rules have been complied with and that this Administrative Proceeding is properly constituted.

 

4. Factual Background

The Complainant Magna International Ltd is the owner of US registered trade mark No. 1,837,713 for MAGNA covering a range of goods and services related to auto parts in International Classes 7, 9, 40 and 42.

The Complainant Donnelly Corporation is the owner of US registered trademarks:

(a) 1,020,392 for DONNELLY in respect of goods in International Classes 9 and 12;

(b) 1,993,106 for DONNELLY in respect of goods in International Classes 11 and 12; and

(c) 2,441,212 for DONNELLY ELECTRONICS in respect of a range of goods in International Class 9.

On June 25, 2002, the Complainants published a press release announcing their agreement to merge their respective businesses pursuant to which Donnelly Corporation would become a wholly-owned subsidiary of Magna International Inc. The press release stated that the combined entity would operate under the business name Magna Donnelly.

The Respondent registered the disputed domain name also on June 25, 2002.

 

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

I deal with each of these elements in turn below. Before doing so, I should note that the Respondent has not raised any issue about the fact that there are two Complainants to the Complaint. The concerns which have confronted some panels, however, do not arise here: see the discussion in Schott Glas and NEC/Schott Components Corp. v Necschott WIPO Case No. D2001-0127. For example, the ownership claims to the respective trademark rights are clear. Also, the relationship between the two Complainants is clear and the Complainants have joined together in seeking transfer of the disputed domain name to the Complainant Magna International Inc. In the circumstances, therefore, I find that the involvement of two Complainants does not vitiate the Complaint.

Confusing similarity to Complainantís trademark rights.

There are two issues here: whether or not the Complainants have trade mark rights and, secondly, whether or not the domain name is confusingly similar to that (or those) trade marks. For the purposes of the comparison, the inclusion of the gTLD, .com, in the disputed domain name can be disregarded: e.g. Telstra Corporation Limited v Ozurls WIPO Case No: D2001-0046 and more recently Williams-Sonoma v John Zuccarini WIPO Case No. 2002-0582.

The Complainants put their case on this aspect of the Complaint on three bases: first, they allege that the disputed domain name is nearly identical to one or more of the trade marks identified above which they have respectively registered in the USA, citing Shire Biochem Inc v Hussain WIPO Case No. D2002-0453 and Schott Glas and NEC/Schott Components Corp. v Necschott WIPO Case No. D2001-0127. Secondly, they claim together to have common law rights to the trademark "Magna Donnelly" based on extended use of its constituent names and marks. Thirdly, they claim that the disputed domain name is nearly identical to the Complainantsí new service mark and trade name "Magna Donnelly".

The communications submitted by the Respondent contest these allegations by relying on the decision in PRGRS, Inc v BPB Prumerica Travel, WIPO Case No. D2002-0076. That decision concerned the domain name <prgshultz.com>. The respondent there registered that domain name on the same day that the complainant announced both its merger with Howard Schultz and Associates International Inc and its intention to change its name to PRG-Schultz. In that decision, the panelist denied the Complaint, considering that it fell squarely within the Policy "[b]ut for the complete lack of evidence of any existing trademark rights in the PRG-Schultz name".

It would appear that the complainant in the PRGRS case based its case solely on confusing similarity to its proposed name and a pending "intent to use" trademark application. It did not allege at all confusing similarity to the Complainantís longstanding registered trademark for "PRG". The complainant there also did not take up the panelistís invitation to submit argument on the extent to which a pending "intent to use" trademark application could qualify under the Policy as "trademark rights". The reasoning in the PRGRS case, therefore, is applicable only to the second ground on which the Complainants put their case. It is inapplicable to, and distinguishable from, the first and third grounds set out above.

Whatever may be said of the mark "PRG", the situation with the registered trademarks "MAGNA" and "DONNELLY" is quite different. Bearing in mind that the comparison is between the domain name and the sign(s) which constitute the trademark, I think there is a real likelihood of confusion with both trademarks. See for example AT&T Corp v Beomjoon Park WIPO Case No. D2001-0133, Shire Biochem Inc v Hussain WIPO Case No. D2002-0453, Schott Glas and NEC/Schott Components Corp. v Necschott WIPO Case No. D2001-0127. Of course, if one or other of these marks were used in relation to products wholly unrelated to the automotive industry, there might not be any confusion. In the context of the Policy, however, that is an issue for consideration under paragraphs 4(a)(ii) and (iii): see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Indust. AG v Bob Larkin WIPO Case No. D2002-0420.

Furthermore, the announcement and publicising of the merger evidenced by the Press Release (i.e., the third ground advanced by the Complainants) in itself gives rise to an interest which courts and panels have been willing to protect. See e.g. Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1982] FSR 1; Glaxo plc v Glaxowellcome Ltd [1996] FSR 288; and Time Warner Inc. and EMI Group plc v CPIC Net WIPO Case No. D2000-0433 citing Walt Disney Prod v Kusan 204 U.S.P.Q 284 (C.D. Cal 1979) and New West Corp. v. NYM Co. of Cal. Inc., 595 F.2d 1194, 1200 (9th Cir. 1979).

In these circumstances, it is unnecessary to consider the Complainantsí second ground and the extent, if any, to which the Press Release annexed to the Complaint might alone be sufficient to provide evidence of common law trade mark rights.

The domain name <magnadonnelly.com> is therefore confusingly similar to the Complainantsí registered trademarks and their joint rights in the name "Magna Donnelly".

No rights or legitimate interests

The Complainants submit that this requirement is satisfied because:

(a) they have not licensed or otherwise authorized the Respondent to use their trade marks;

(b) the Respondent is not commonly known by that name; and

(c) the Respondent has never used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services.

The Respondent does not dispute that his use is unauthorized by the Complainants. Nor does he claim to be commonly known by the name "Magna Donnelly". In two of the Respondentís submissions, however, he directs attention to the link "http://magnadonelly.vstoreelectronics.com/" and asserts: "Above link confirms and proves prior use of the name MAGNA DONELLY, further rendering complaint moot."

If one enters that URL into a browser (as I have done), one is indeed taken to a page which declares in a band across the top of the resulting page "Magna Donnelly Great Electronics Online!" and appears to offer a range of consumer electronics for sale.

One of the attachments to the hardcopy Response received by the Center on November 1, 2002, contains a print out of a virtually identical page which handwritten annotations declare "Next page is our ACTUAL WEBSITE where magnadonnelly.com currently points." For some reason, when the Center entered this URL as part of its administrative procedures on October 16, 2002, the URL timed out. However, it was functioning as indicated by the Respondent when this decision was being prepared.

The Respondentís submissions, apart from asserting that the link "proves prior use" do not actually give any details which confirm when the web page was first launched. This assumes considerable importance in the context of the record in this case.

First, after entering the first URL given by the Respondent, the browser redirected itself to a page which gave the URL "http://www.vstore.com/cgi-bin/pagegen/vstoreelectronics/magnadonnelly/page.html?mode=home&file=/page/home/home.spl". As can be seen "magnadonnelly" does indeed appear in that URL, although it is not the domain name. The URL "http://www.vstore.com" resolves to a website which, amongst other things, declares:

"Open your own store. Youíve got a great idea. Weíve got the products, the services, and the e-commerce savvy to make it profitable! It's fast. It's free."

No doubt, the Respondent or any other person wishing to start up a business might wish to take advantage of this service for perfectly legitimate reasons. Given the nature of the site, however, the Respondent could have set up the web page and pointed either of the URLs to it at any time.

Furthermore, on the record in this case, the failure to provide corroboration of the claim of prior use is all the more significant particularly as the record provides grounds for concluding that the offering of goods is not bona fide in the sense required by paragraph 4(c)(i) of the Policy.

The fact that the Respondent is at this time selling goods by reference to the name Magna Donnelly is not enough by itself. It is of course trite that the situations specified in paragraph 4(c) of the Policy are examples only. Nonetheless, to come within the terms of the Policy, the sales (or offering for sale) relied on by a respondent must be "bona fide". Sales could well qualify as "bona fide" where they were made in the context of a well-established and longstanding business. That is not to say that sales can be bona fide only in the case of a longstanding business. In the context of the Policy, however, sales (or offering for sale) could not be bona fide where the name was adopted with an intention to trade on the goodwill or reputation of anotherís trademark rights. Equally, it could not be bona fide where the offering of goods for sale was a pretext to conceal the real purpose of registration. For this reason, panels have recognized that there can be an interplay between the second and third limbs of paragraph 4(a) of the Policy. See e.g. Telstra Corporation Limited v. Barry Cheng Kwok Chu WIPO Case No. D2000-0423.

Where the record is such as to raise real questions about a respondentís bona fides in offering, or purporting to offer, goods or services for sale Ė as is the case here for reasons I discuss below in connection with registration and use in bad faith, it will be incumbent on the respondent to corroborate his or her claim to prior use with particular care. That will be the case especially where, as here, the domain name in question shows no natural or obvious connection with the Respondent.

In these circumstances, I do not think that the Respondentís bald claim of prior use can displace the prima facie case raised by the Complainants without corroboration such as more detailed documentary support. Accordingly, I find that, on this record, the Respondent does not have any rights or legitimate interests in the disputed domain name and the Complainants have satisfied paragraph 4(a)(iii) of the Policy.

Registration and use in bad faith

In this context, the Complainants claim that the registration of the disputed domain name on the same date as the merger was announced indicates a bad faith intention of registration for the purpose of selling it to the Complainants in breach of paragraph 4(b)(i) of the Policy. The Complainants also argue that the Respondent has engaged in a pattern of such conduct in breach of paragraph 4(b)(ii).

To support their claim under paragraph 4(b) of the Policy (i.e., registration and use in bad faith), the Complainants in this case seek to rely on a pattern of conduct evidenced, they say, by the decisions in:

- International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) (Complainants) v. Domains, EntreDomains Inc. and Brian Evans, WIPO Case No. D2000-1339;

- Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans, WIPO Case No. D2000-0072;

- Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490;

- Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236;

- AT&T Corp. v. Domains by Brian Evans, WIPO Case No. D2000-0790; and

- PRGRS, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0076.

The Respondentís primary defence to the Complaint is reliance on the PRGRS decision which the Respondent asserts is "the exact circumstances, minus the offer to sell the name. This only strengthens our positions [sic]." In relation to the paragraph 4(b)(ii) claim, the Respondent denies that he is the person involved in those cases and asserts that "[t]hose other cases have nothing at all to do with me." If matters stood there, it would be plausible that there was no connection between someone located in Florida and the Brian Evans (or Brian Evanses) of California or Nevada involved in some of those cases. However, matters do not stand there.

In the PRGRS decision, the respondent also claimed to have a contract with Vstore to distribute the respondentís products under the domain name PRG Schultz. In fact, however, the disputed domain name in that case did not point to the link, <prgschultz.vstoreauto.com>, as claimed by the respondent.

The respondent in the PRGRS decision was one "H Wilson" who gave as his or her address 1107 Key Plaza, Key West, Florida 33040". That is the same address as recorded in the Whois data for the Respondent. One of the attachments to the hardcopy Response states that 1107 Key Plaza is a P.O.Box service with about 2,000 mailboxes for people throughout Florida. The decision in the PRGRS decision records a number of instances where communications sent on behalf of the domain name registrant in that case were sent by one "B. Evans".

It might be thought surprising that the Respondent does not provide a post box number if there be more than one "B. Evans" use the P.O. Box service but, in any event, assuming the claim to be true there are other connections which this does not explain.

In WIPO Case No. D2000-0160, Creo Products Inc & anor v. Website in Development, however, at least one e-mail address used by the respective respondents was "bevans8576@aol.com", one of the e-mail addresses used by the respondent in the PRGRS decision and one of the registrants in Experian Information Solutions Inc. v BPB Prumerica Travel WIPO Case No. D2002-0367.

A number of identities involved in the Royal Bank of Canada decision also had addresses in Key West Florida, one being "BPB Prumerica Travel", the respondent in the PRGRS and Experian decisions. Moreover, the respondent in the Royal Bank of Canada decision at various times used the e-mail address "rfcmusic@aol.com" which is the e-mail address given for the administrative, technical and billing contacts in the Whois data for the present, disputed domain name. A person using that e-mail address also made an offer to sell the disputed domain name in the Experian case referred to above. Another e-mail used in the Royal Bank of Canada case was "riveravenue@email.com", the user specific component of which bears more than a passing resemblance to the email address used by the Respondent in making his submissions in this case, riveravenue@hotmail.com.

The Respondentís bald denial does not stand well with the similarities noted above. Moreover, the Respondent does not make any attempt to explain how he arrived at a domain name which uses either or both MAGNA or DONNELLY, neither of which appears on its face to have any connection with the Respondent. On the contrary, the respondent in the PRGRS case Ė whose address is the same as the present Respondentís and who also sought to disown any connection with "B. Evans" Ė claimed to be using the domain name in connection with auto parts and the domain name at issue in the Experian case was <experianautomotive.com> which suggests that the Respondent may be involved in, or have a degree of familiatiry with, the auto parts industry in the USA.

In these circumstances, I conclude that the Complainants have satisfied the requirements of paragraph 4(b)(ii) and, consequently, paragraph 4(a)(iii).

 

7. Decision

The Panel decides that:

(i) the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name, and

(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.

Accordingly, the Panel decides that the Complainants have proven each of the elements in paragraph 4(a) of the Policy and orders that the Domain Name <magnadonnelly.com> be transferred to the Complainant, Magna International Inc.

 


 

Rothnie, Warwick A.
Sole Panelist

Dated: November 5, 2002