WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magna International Inc. v. Redacted for Privacy, WhoisGuard, Inc. / Ahmed Salamah
Case No. DCO2020-0094
1. The Parties
The Complainant is Magna International Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Redacted for Privacy, WhoisGuard, Inc., Panama / Ahmed Salamah, Saudi Arabia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <magna.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2021 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 January 30, 2021.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Response was filed with the Center on February 14, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 12, 2021. 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 global automotive supplier and owns hundreds of trademark registrations that consist of or comprise the word MAGNA, including MAGNA, United States of America Reg. No. 1837713, registered on May 31, 1994. The Complainant has also owned and used its own <magna.com> domain name since 1991.
The disputed domain name was originally registered in 2010 but that registration expired in July 2017. The Respondent claims to have registered the disputed domain name in August 2017. According to the Respondent, in December 2017, the Respondent placed the disputed domain name for sale, for USD 5,400.
In August 2020, the Respondent contacted the Complainant via LinkedIn, stating in relevant part as follows:
“I own <Magna.co> domain name and I am reaching out to few companies to explore a possible sale of the domain name.
When I setup the email address for magna.co to contact potential end users, I started receiving business emails concerning your company (check attachment).
Would you be interested in owning this domain name to protect your business information and brand?”
The Complainant rejected this initial offer to buy the disputed domain name. The Respondent then sent another LinkedIn message as follows:
“Thank you for your reply. I thought its better that your company owns this domain name. In the last three weeks I got 350+ emails concerning your company.
Imagine your competitors American Axle & Manufacturing, Lear Corporation, Visteon, Faurecia, Linamar, Aptiv or Gentex owning the domain name and what information they can extract from the emails to gain advantage on your company. It can be a minor leak with serious consequences.
Once the domain is sold to an end user its very difficult and expensive to own. If you are reconsidering this matter, Visit magna.co and submit your offer.”
In November 2020, following these unsuccessful negotiations, the Respondent increased the for-sale price of the disputed domain name to USD 49,500.
5. Parties’ Contentions
The Complainant principally asserts that the Respondent has engaged in typosquatting, specifically by using a "catch-all" email address to collect messages intended for the Complainant. According to the Complainant, the Respondent then leveraged those messages (and the specter of the Complainant’s competitors obtaining the domain name and thereby receiving like messages in the future) to pressure the Complainant into purchasing the disputed domain name. The Complainant has introduced evidence to show that the Respondent should have known of the Complainant at the time it registered the disputed domain name – top results for an Internet search using the version of Google available in Saudi Arabia for the word "magna" pertain to the Complainant.
The Respondent denies most of the Complainant's claims, asserting, among other things, that it did not acquire the disputed domain name for purposes of intercepting email messages intended for the Complainant and that it did not "threaten" to sell the disputed domain name to the Complainant. Instead, the Respondent claims that it was not aware of the Complainant when it acquired the disputed domain name, that it only became aware of the Complainant after receiving email messages intended for the Complainant, and that it registered the disputed domain name with the intention of using it to start a digital marketing business.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established all three of these elements.
A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the MAGNA mark by providing evidence of its trademark registrations. The disputed domain name incorporates the MAGNA mark in its entirety. This is sufficient for showing identity or confusing similarity under the Policy.
The Panel finds that the Complainant has established this first element under the Policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts, among other things, that:
- The Respondent intentionally traded off the goodwill of the MAGNA mark in registering the disputed domain name.
- The Complainant is unaware of any legitimate business carried on by the Respondent with the disputed domain name.
- It appears the primary purpose of registering the disputed domain name was to sell it to the Complainant in excess of out-of-pocket costs.
- There is no evidence the Respondent has been commonly known by the disputed domain name.
- The Respondent is not making a permitted noncommercial or fair use of the disputed domain name.
The Respondent repeatedly asserts that when it purchased the disputed domain name in 2017, it did so in connection with its plans to start an online business. Paragraph 4(c)(i) of the Policy provides that a Respondent can prove rights or legitimate interests in respect of a disputed domain name by showing “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”.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides the following at section 2.2:
[D]emonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.
Additionally, “the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.” Id. And “[i]f not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.” Id.
The Respondent did not produce correspondence or other documentation, or any other relevant pre-complaint evidence relating to its purported activities in 2017 to launch a business using the disputed domain name. And the fact that more than three years have passed since the Respondents’ acquisition of the disputed domain name, without any site development, tends to undermine what on its face at least could support a right or legitimate interest.
The Panel finds that the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name, and with the burden of production shifting to the Respondent that the Respondent has not overcome that showing.
Accordingly, the Complainant has succeeded on this second element of the Policy.
C. Registered and Used in Bad Faith
Given the Respondent’s actions as noted above, the Panel infers that the Respondent registered and used the disputed domain name in bad faith as is understood under the Policy. The Complainant has introduced evidence showing that the Respondent reasonably should have known of the Complainant at the time it registered the disputed domain name. The top results for an Internet search using the version of Google available in the Respondent’s apparent location for the word "magna" pertain to the Complainant. The Panel also finds it more likely than not that the Respondent set up a "catch-all" email address for the disputed domain name in hopes that emails intended for the Complainant would be misdirected to the Respondent and therefore to gain inappropriate leverage over the Complainant, and moreover improperly obtaining sensitive information intended for the Complainant. When those emails began to come in (i.e., sometime in 2020 or earlier), the Respondent seems to have had a plan in place for how to communicate its offer to sell the disputed domain name to the Complainant. In the very first sentence of its first communication to the Complainant, it raises the specter of the threat to sell the disputed domain name to a competitor: "I own Magna.co domain name and I am reaching out to few companies to explore possible sale of the domain name." (Emphasis added.)
The Respondent repeatedly (at least twice) reached out to the Complainant seeking to sell the disputed domain name. The intensity of the threat to convey the disputed domain name to a competitor of the Complainant intensified in the second communication. In this communication, the Respondent specifically mentioned seven other companies that the Respondent – apparently after some detailed research of the Complainant and its industry – viewed as competitors of the Complainant. In the following weeks, the Respondent raised the asking price of the disputed domain name more than tenfold. This increase in threat intensity is inconsistent with the Respondent’s assertions that its communications with the Complainant were in “utmost good faith to make [the Complainant] aware of the deflection of emails”. They are moreover, squarely opposed to the Respondent’s purported plans to use the disputed domain as part of a legitimate business – thus undermining the potential credibility in this statement. Instead, the conduct demonstrates an escalating and threatening pattern that one can categorize as bad faith under the Policy.
Although the Respondent now asserts that the disputed domain name was registered for use with an anticipated business it wanted to start, such contention appears to be pretextual and created after the filing of the Complaint by the Complainant. Simply put, the evidence before the Panel makes it appear more likely than not that the Respondent registered the disputed domain name to profit in bad faith from its connection to Complainant’s mark and email address ending and the misdirected emails that the Respondent likely knew it would receive from the catch-all email inbox Respondent created with the disputed domain name.
Accordingly, the Panel finds that Complainant succeeds under this third element 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 <magna.co> be transferred to the Complainant.
Evan D. Brown
Date: April 11, 2021