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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Penske System, Inc. v. M Akkaoui a/k/a Moe Akkaoui

Case No. DAU2014-0017

1. The Parties

The Complainant is Penske System, Inc. of Wilmington, Delaware, United States of America ("United States"), represented by Deirdre Thomas, United States.

The Respondent is M Akkaoui a/k/a Moe Akkaoui of Bankstown, Australia.

2. The Domain Name and Registrar

The disputed domain name <penske.com.au> (the "Domain Name") is registered with AussieHQ Pty Ltd (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2014. On May 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 27, 2014.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 23, 2014.

The Center appointed William P. Knight as the sole panelist in this matter on June 26, 2014. 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 a member of a large, international group of companies providing a wide range of goods and services in connection with motor vehicles of all kinds, including retail automotive, truck leasing, transportation logistics, component manufacturing as well as being concerned in professional motorsports worldwide. The Complainant is the owner of a large number of trade mark registrations in numerous countries, including Australia, in which the Complainant owns registrations for PENSKE, PENSKE RACING, PENSKE AUTHENTICS and PENSKE & design. The Complainant and its related companies generally trade under, and have a significant reputation in, the name "Penske Corporation". The earliest date of registration for a trade mark registered by the Complainant comprising the word "Penske" appears from the evidence to be September 28, 1993, for a registration in the United States. The registration date of the earliest registration comprising the word "Penske" in Australia is August 21, 2000.

The evidence does not reveal the date on which the Domain Name was registered, as this information is not revealed by WhoIs searches in relation to the .au country code Top-Level-Domain. However, the "Wayback Machine" at "www.archive.org" suggests that the Domain Name was not available on the web before August, 2013 (although a website may go unnoticed by the Wayback Machine for some months after becoming available).

The website at the Domain Name is only periodically accessible. At the time of this decision, the website at the Domain Name could often not be accessed due to an unresponsive server. The website at the Domain Name, when accessible, features numerous articles, videos and other resources regarding careers, employment and job searching. The website at the Domain Name also features the following text, presented inconspicuously at the top of the home page; "Penske.com.au may be for sale, email your offer". This text on the website at the Domain Name is also a link to the website's "Contact Us" page. The website at the Domain Name also features a number of advertisements. The articles which make up almost all the substantive content on the website are dated and these dates indicate that the articles were uploaded in large batches. The most recent article on the website is dated March 23, 2013.

5. Parties' Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainant asserts:

(i) that the Domain Name is confusingly similar to its PENSKE trade marks;

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

(iii) that the Domain Name has been registered or subsequently used in bad faith.

The Complainant argues that the Penske brand is one which thrives in the United States, where it originated, and internationally. The Complainant also points to its numerous trade mark registrations in many countries around the world, including Australia and the United States. The Complainant asserts that the Respondent is not affiliated with it and was not authorised to make use of its trade mark registrations in registering and using the Domain Name. The Complainant argues that the Domain Name is confusingly similar to its trade mark registrations as it fully and exclusively incorporates the word "Penske", in which the Complainant has trade mark rights.

The Complainant argues that the material on the website at the Domain Name does not indicate a legitimate interest in the Domain Name. The Complainant asserts that the Respondent is not known by the PENSKE name, has not been authorised by the Complainant to make use of it, and has not evidenced a legitimate interest on the website at the Domain Name.

Based on a reverse domain name search, the Complainant says that hundreds of other domain names are registered in the name of the Respondent, many also comprising the names of large corporations, but also showing no specific concern with any particular type of business, ranging from clothing, pets, travel, media, wine, medicines and sports to many suited for pornography, intimate apparel and other adult products. Most are not in use. Those that are, such as "yourtube.com.au" and "sheraton.biz" are offered for sale in the same manner as the Domain Name.

The Complainant argues that this also demonstrates a pattern of behaviour in which the Respondent seeks to register Domain Names likely to be in demand by large corporations and others in future for the purpose of selling them for profit, that is, classic cybersquatting.

The Complainant also points to the correspondence it has had with the Respondent via email, in which the Complainant sought to purchase the transfer of the Domain Name. In this correspondence, the Respondent requested US$10,000 for transfer of the Domain Name, later reducing that figure to US$9,000, and refusing an offer of US$1,000. The amounts requested by the Respondent are clearly disproportionate to the Respondent's costs and labour for the registration of the Domain Name.

The Complainant argues that the conduct of the Respondent leads to the conclusion of registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:

1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

2 The 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.

Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent's default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).

A. Identical or Confusingly Similar

The Panel finds that the Complainant has trade mark rights in PENSKE, and numerous other trade marks comprising the word "Penske", for the purposes of the Policy.

The Panel is also satisfied that the Domain Name is identical to the Complainant's PENSKE trade marks and confusingly similar to a number of the Complainant's other trade marks which comprise the word "Penske" as a dominant component. The gTLD ".com" and the country code top-level domain ".au" do not carry any distinguishing weight.

B. Rights or Legitimate Interests

The Panel finds that the Respondent was most likely aware of the Complainant's established reputation and trade mark rights at the time of registering the Domain Name. There is nothing to connect the word "Penske" with either the Respondent's name or the business activity of the website at the Domain Name. The Complainant's substantial reputation over many years of trading and its international series of trade marks, along with the Respondent's pattern of behavior in registering domain names which comprise similar famous trade marks, indicate that the Respondent has not lighted upon the word "Penske" by accident but intended to register the Domain Name in order to take advantage of a possible interest in it by the Complainant.

Nothing on the website at the Domain Name offers any indication that the Respondent is making a legitimate use of the Complainant's PENSKE trade marks. The website offers numerous articles and other media relating to career and employment advice. However, all the material appears dated and designed only to give a superficial impression of being a genuine business activity.

In the absence of any explanation to the contrary by the Respondent, the Panel accepts that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered or Subsequently Used in Bad Faith

In the Panel's view, there can be no doubt whatsoever that the Respondent was fully aware of the Complainant's international trade mark rights in word "Penske". The Respondent's pattern of conduct of registering domain names which incorporate the trade marks and names of prominent businesses, as well as his correspondence with the Complainant in which he demanded $9,000 for the transfer of the Domain Name, is evidence that the Complainant registered and is using the Domain Name for the purposes of selling or otherwise transferring the Domain Name to the owner of a confusingly similar trade mark, a perfect example of registration and use of a domain name in bad faith under paragraph 4(a)(i) of the Policy.

Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.

7. Decision

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 <penske.com.au> be transferred to the Complainant.

William P. Knight
Sole Panelist
Date: July 8, 2014

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