WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magna International Inc. v. Roger Wells and William Green
Case No. D2017-0888
1. The Parties
The Complainant is Magna International Inc. of Aurora, Ontario, Canada, represented by Gowlings WLG (Canada) LLP, Canada.
The Respondents are Roger Wells of Carrollton, Georgia, United States of America and William Green of Troy, Michigan, United States of America.
2. The Domain Names and Registrar
The disputed domain names <cosmamerica.com> and <decostarindustries.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 10, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was May 30, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 31, 2017.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 6, 2017. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a global automotive supplier, founded in 1957 and incorporated pursuant to the laws of Ontario, Canada, and listed and traded on the Toronto Stock Exchange in Canada and the New York Stock Exchange in the United States of America. In total, the Complainant employs over 155,000 people in 317 manufacturing operations and 102 product development, engineering and sales centers, across 29 countries. The Complainant had global sales in 2016 of over USD 36.4 billion.
Cosma International of America Inc. and Decostar Industries Inc. are both subsidiaries of the Complainant.
The Complainant is the owner of numerous trademark registrations worldwide for COSMA, covering, inter alia, custom design and manufacture of automotive parts, components and assemblies, tooling for the production of automotive parts, and automotive parts, including United States trademark registration numbers 1698018, 2235838, and 4257837, registered on June 30, 1992, March 30, 1999, and December 11, 2012 respectively (jointly the "COSMA Marks").
The Complainant does not own any registered rights in the DECOSTAR mark or the DECOSTAR INDUSTRIES mark.
The disputed domain name <decostarindustries.com> was first registered on March 2, 2017, and the disputed domain name <cosmamerica.com> was first registered on March 5, 2017. At present, the disputed domain names resolve to "Decostar Industries" and "Cosma America Holdings" websites respectively, which contain content suggesting that the owner is in the business of providing various automotive-related goods and services.
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) Next to the COSMA Marks, the Complainant claims to also own unregistered rights in the distinctive DECOSTAR trademarks (including DECOSTAR and the trading name Decostar Industries) in the United States of America, Canada and elsewhere in the world, as well as a pending U.S. trademark application for DECOSTAR. The disputed domain names are allegedly confusingly similar to the Complainant's very well-known DECOSTAR and COSMA Marks, as they misappropriate the whole of the Complainant's distinctive trademarks, while the addition of the geographical term "america" in <cosmamerica.com> is insufficient to avoid a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in the disputed domain names, as the activities of the Respondent are fraudulent, intend to trade off or disrupt the goodwill and reputation in the Complainant's trademarks and do not constitute a bona fide offering of goods or services, as the Respondent has never been authorized to register or use any of the Complainant's trademarks in any manner whatsoever, as there is no evidence to suggest that the Respondent has ever been commonly known by either of the disputed domain names, and as the Respondent's current use of the disputed domain names does not constitute a legitimate noncommercial or fair use of either of such names.
(3) The Complainant contends that the disputed domain names were registered and are being used in bad faith as the Respondent engaged in a pattern of registering domain names that contain trademarks to which it is not entitled, preventing trademark owners from registering those trademarks as domain names – not only with regard to the disputed domain names but also with regard to several other recently registered domain names, which contain the registered trademarks of third parties, the WhoIs information of which shows the Respondent and the associated email address as the registrant. Furthermore, the Respondent allegedly registered the disputed domain names for the purpose of disrupting the business of the Complainant, and the use of the email address associated with the disputed domain names is supposed to display an intent to take advantage of the Complainant's reputation with authorized vendors of the Complainant to carry out fraud, thereby establishing bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Procedural issue – Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion, while paragraph 3(c) of the Rules allows for consolidation of multiple domain names in a single complaint provided that the domain names are registered by the same domain name holder, and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. According to paragraph 4.11 of the WIPO Overview 3.0, where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
The Complainant alleged that the disputed domain names are under common control: while the Respondent used two different aliases to register the disputed domain names ("Roger Wells" and "William Green"), he also used the same email address as the registrant contact, administrative contact, and technical contact for both the disputed domain names. Moreover, the websites at "www.decostarindustries.com" and "www.cosmamerica.com" share certain similarities regarding content as well as look and feel. The Panel therefore finds it more likely than not that the two disputed domain names are under common control.
Moreover, the Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient.
In view of the above, the Panel determines that the disputed domain names <cosmamerica.com> and <decostarindustries.com> shall be consolidated under this proceeding in accordance with paragraphs 3(c) and 10(e) of the Rules.
B. Identical or Confusingly Similar
The Panel must determine whether the disputed domain names are each identical or confusingly similar to a trademark in which the Complainant has rights.
(i) The DECOSTAR Marks and DECOSTAR INDUSTRIES Marks
The Complainant is required to show that it has UDRP-relevant rights in a trademark which is identical or confusingly similar to the disputed domain name <decostarindustries.com>. In this regard, the Complainant relies upon a trademark application for DECOSTAR as well as unregistered trademark rights for DECOSTAR and DECOSTAR INDUSTRIES.
Generally, a pending trademark application does not by itself establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy, unless such application has proceeded to grant (see, Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349 with further references).
The Panel therefore needs to consider whether the Complainant owns unregistered or common law trademark rights in DECOSTAR and/or DECOSTAR INDUSTRIES. Paragraph 1.3 of the WIPO Overview 3.0 provides the following consensus view of what needs to be shown by a complainant in this regard: "To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. … Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning. As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP."
The evidence provided by the Complainant in this regard is rather poor. It consists mainly of statements either emanating from the Complainant itself or relating not to DECOSTAR or DECOSTAR INDUSTRIES but to the Complainant Magna International Inc. However, there is evidence that the Complainant has carried on business through its wholly-owned subsidiary Decostar Industries, Inc. since 2002 and since then continuously expanded its plant in Carrollton, Georgia, United States of America, investing large sums of money and creating a substantial number of jobs over time. The Complainant has also substantiated and evidenced that Decostar Industries has been manufacturing auto parts under this moniker for over 12 years and been producing automotive exterior parts for several of the world's biggest automobile manufacturers, including KIA, HYUNDAI, NISSAN, and BMW in large numbers.
The term "decostar" can be seen as consisting of an abbreviation of "decoration" and of "star", both being dictionary words. Still, the particular combination with the term "industries" can be considered as sufficiently unique and creative to allow for a secondary meaning in the field of business of the Complainant.
As a result, as described above, at least in the state of Georgia, the Panel accepts that the term DECOSTAR INDUSTRIES (the "DECOSTAR INDUSTRIES Mark") has acquired secondary meaning for the purposes of paragraph 4(a)(i) of the Policy (see UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575).
The disputed domain name <decostarindustries.com> is identical with the Complainant's DECOSTAR INDUSTRIES Mark. The Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy with regard to the disputed domain name <decostarindustries.com>.
(ii) The COSMA Marks
The Complainant is also required to show that it has UDRP relevant rights in a trademark which is identical or confusingly similar to the disputed domain name <cosmamerica.com>. Such disputed domain name fully incorporates the Complainant's COSMA Marks, adding only the geographical denomination "America", while omitting either the last letter of "Cosma" or the first letter of "America" for ease of pronunciation, and is therefore confusingly similar to such mark.
The Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(i) of the Policy with regard to the disputed domain name <cosmamerica.com>.
C. Rights or Legitimate Interests
Even though the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case under of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the Respondent's rights or legitimate interests in the disputed domain name will then shift to the Respondent. If the Respondent fails to rebut the Complainant's prima facie showing, the Complainant may be deemed to have fulfilled the requirements under the second element.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c) of the Policy.
Based on the evidence before the Panel, the Panel cannot otherwise find any rights or legitimate interests of the Respondent either. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
(i) Bad faith registration
The Panel is satisfied that the Respondent registered the disputed domain names in bad faith: the disputed domain names both relate to subsidiaries of the Complainant and were registered only three days apart. Only a few weeks later, both of the disputed domain names were made to resolve to websites pretending to originate from the Complainant or its subisdiaries and sharing certain similarities with regard to content as well as look and feel. In the view of the Panel, the Respondent must have had the Complainant and its trademark rights in the COSMA Marks and the DECOSTAR INDUSTRIES Mark in mind when registering the disputed domain names.
(ii) Bad faith use of <decostarindustries.com>
As to bad faith use with regard to the disputed domain name <decostarindustries.com>, pursuant to the its registration of such domain name, the Respondent operated a website at the address of the disputed domain name, displaying the Complainant's DECOSTAR INDUSTRIES Mark and revealing content that seems to emanate from the Complainant, thereby causing Internet visitors to think that they are visiting a website of the Complainant's subsidiary. According to the evidence provided by the Complainant, the Respondent Roger Wells did so for commercial gain, i. e., to carry out fraudulent activities: The Respondent used an email address associated with the disputed domain name impersonating the Complainant and placing orders for products to be charged to the Complainant (see SAP SE v. Name Redacted / Domains By Proxy, LLC, WIPO Case No. D2016-0410).
Such behavior constitutes bad faith use under paragraph 4(b)(iv) of the Policy.
(iii) Bad faith use of <cosmamerica.com>
As to bad faith use with regard to the disputed domain name <cosmamerica.com>, according to the evidence provided by the Complainant, the Respondent, using aliases, owns at least three other domain names made up of the names and trademarks of third party companies in addition to the disputed domain names. This indicates that the Respondent is engaged in a pattern of conduct of registering other companies' trademarks as domain names for the purposes of preventing owners from reflecting their marks in a corresponding domain name in breach of paragraph 4(b)(ii) of the Policy (see e.g. Bayer AG v. Lizhe, WIPO Case No. D2017-0126).
Such behavior constitutes bad faith use under paragraph 4(b)(ii) of the Policy.
The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy with regard to both disputed domain names.
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 names <cosmamerica.com> and <decostarindustries.com> be transferred to the Complainant.
Date: June 14, 2017