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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TRW Inc. v. Autoscan Inc.

Case No. D2000-0156

 

1. The Parties

The Complainant is TRW Inc., a corporation organized in the State of Ohio, United States of America (USA), with place of business in Cleveland, Ohio, USA.

The Respondent is Autoscan Inc., with address in Peachtree City, Georgia, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "trw.net".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on

March 14, 2000, and by courier mail received by WIPO on March 16, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On March 14, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc.

b. On March 20, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. Such notification was sent both to the registrant as listed on Network Solution’s WHOIS database (Autoscan Inc.) and to the party identified as registrant’s technical contact (InfoQuest Technologies, Inc.). On March 20, 2000, WIPO attempted to transmit notification of the complaint and commencement of the proceeding to the Respondent via telefax using the number provided by Respondent in its domain name registration. Telefax transmission was not successful.

c. On April 11, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail, telefax and courier mail. Courier mail was again sent both to the registrant and its technical contact. Telefax transmission was not successful.

d. On April 11, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On April 11, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e. On April 11, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by April 24, 2000. On April 11, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has provided copies (Complaint, Exhibit 3) of four U.S. Patent and Trademark Office trademark registrations for "TRW". These are: registration number 933,814, dated July May 16, 1972, on the Principal Register, for stylized letters "TRW", covering, inter alia, automobile parts; registration number 1,098,547, dated August 8, 1978, on the Principal Register, for the letters "TRW", covering, inter alia, structural parts of land vehicles; registration number 1,480,453, dated March 15, 1998, on the Principal Register, for stylized letters "TRW", covering, inter alia, original or replacement parts for vehicles, and; registration number 1,061,135, dated March 15, 1977, on the Principal Register, for the letters "TRW", covering, inter alia, ball and roller bearings and hydraulic machines. Complainant states that these trademark registrations remain valid and subsisting. The validity of Complainant’s trademark registrations for "TRW", with and without stylization, has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of valid service mark registrations for "TRW" in the United States.

Complainant’s trademark registrations indicate use of the "TRW" trademark at least as early as 1964, and Complainant has submitted evidence of its use of the trademark "TRW" in commerce (Complaint, Exhibits 3 and 4). Respondent has not contested Complainant’s use of the trademark in commerce.

Complainant registered the domain name "trw.com" and uses this domain name in connection with its corporate activities (Complaint, para. 11) 1.

Network Solutions’ WHOIS database query response (Complaint, Exhibit 1) indicates that Autoscan Inc., with Administrative Contact at "Tony, Waldrop", is the registrant of the domain name "TRW.NET". The record of this registration was created on December 1, 1998, and was last updated on November 5, 1999.

There is evidence that the domain name "trw.net" has been used by Respondent to conduct business (or attempt to conduct business) on the Internet. Complainant has provided a copy of a computer screen printout, dated October 22, 1998, of a web page headed "Welcome to TRW Distributors", showing various headings and subheadings relating to the sale of new and used automobiles. On a separate web page printout of the same date, an item "About TRW Distributors", states: "TRW Distributors Online is a service oriented new & used car buying service. It is dedicated to making your next vehicle purchase a pleasant one". The foregoing web page printouts indicate that they appeared at the domain name addresses "www.trw.net" and "www.trw.net/about.htm", respectively.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Parties’ Contentions

Complainant

Complainant indicates that it is the holder of trademark and service mark registrations for "TRW", with and without stylization, covering products in the automotive sector (Complaint, para. 10) (see Factual Background, supra). It states that those marks have become incontestable. It states that it has used the "TRW" mark in commerce since 1956 (Complaint, para. 10).

Complainant states:

"11. But-for the first level domain name ‘.NET,’ Registrant’s domain name ‘TRW.NET’ is identical to TRW’s trademarks, service marks, and domain name ‘TRW.COM.’ … TRW’s web site is accessible at ‘WWW.TRW.COM.’]

"12. TRW is the owner of the ‘TRW’ name and mark for automotive products, and a wide variety of other goods and services. TRW is one of the world’s largest suppliers of automotive products, and its ‘TRW’ name and mark have long been famous for those and other goods. … TRW has registered the ‘TRW’ mark in the United States for a variety of automotive products and services.

"13. Respondent registered the domain name ‘TRW.NET’ and used the website located at www.trw.net to advertise and promote the services of ‘TRW Distributors,’ a buying service for new and used cars. A copy of the printout from the web site accessible at ‘WWW.TRW.NET,’ prior to its placement on ‘Hold’ status by NSI … advertising and promoting the services of ‘TRW Distributors’, is attached ….

Elsewhere at the website, Respondent used the ‘TRW’ name and mark on its website in rightward-facing, slanted letters that copied the design of the ‘TRW’ mark in Registration No. 933,814.

"14. In October, 1998, upon learning of Respondent’s domain name, website and company, all of which incorporated the ‘TRW’ trademark and service mark, TRW contacted Respondent, demanding that it cease further use of the domain name ‘TRW.NET’ and the ‘TRW Distributors’ name and mark, and transfer the domain name ‘TRW.NET’ to TRW. Respondent agreed to remove the website of ‘TRW Distributors’ and transfer the domain name ‘TRW.NET’ to TRW. Despite that agreement, and despite having sent Respondent a copy of NSI’s Registrant Domain Name Change Agreement on four separate occasions, Respondent has refused to sign and return, and continues to refuse to sign and return, the Registrant Domain Name Change Agreement so that the domain name ‘TRW.NET’ may be transferred to its acknowledged rightful owner, TRW.

"15. When it became apparent that Respondent had reneged on its agreement to transfer the domain name ‘TRW.NET’ voluntarily, TRW contacted NSI requesting that the domain name ‘TRW.NET’ be placed on hold because the second-level domain name ‘TRW’ was identical to TRW’s registered ‘TRW’ trademarks and infringed TRW’s trademark rights….

"16. In March, 1999, NSI notified Respondent of TRW’s complaint and required Respondent to respond within 37 days of NSI’s letter or NSI would place the domain name on ‘Hold’ status. Respondent never responded to NSI’s letter, thereby tacitly admitting that it had no lawful right in and to the domain name ‘TRW.NET.’ …. The domain name was subsequently marked on ‘Hold’ status by NSI by letter dated April 15, 1999. …

"17. TRW and the Respondent have both used the ‘TRW’ name and mark in the automotive industry. In view of Respondent’s prior use of ‘TRW’ in rightward-facing, slanted letters substantially identical to those in Registration No. 933,814, the only reasonable inference is that Respondent registered and used the domain name ‘TRW.NET’ with the purpose of disrupting TRW’s business, and with the intent of attracting, for financial gain, Internet users to its web site or other on-line location, by suggesting that ‘TRW.NET’ was a TRW website and that ‘TRW Distributors’ was a part of TRW’s automotive business, or was otherwise sponsored or licensed by, or affiliated with, TRW. Respondent’s use of this domain name likely has caused persons seeking to reach TRW on the Internet, and persons otherwise exposed to Respondent’s domain name and website, to believe mistakenly that Respondent was a part of TRW, or was otherwise affiliated with, or sponsored or licensed by, TRW.

…"

Complainant requests that the Panel ask the registrar to transfer the domain name "trw.net" from Respondent to it (id., para. 19).

Respondent

Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 2. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify Respondent of the filing of the Complaint and commencement of these proceedings, and that the failure of Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail, that Respondent and the party designated as the Technical Contact for the Respondent were notified of the Complaint and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 14(b)).

Complainant is the holder of the registered trademark "TRW" in the United States and is using that mark in commerce (see Factual Background, supra) 3. Complainant’s registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of that mark in U.S. law 4, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "TRW". Based on the August 8, 1978, date of Complainant’s registration of the trademark "TRW", the Panel determines that Complainant’s rights in that trademark arose prior to Respondent’s registration, on January 4, 1998, of the disputed domain name "trw.net".

Respondent has registered the domain name "trw.net". This name is identical to Complainant’s trademark "TRW" 5, except that (1) the domain name adds the generic top-level domain name ".net", and (2) the domain name employs lower case letters, while the trademark is used with capital letters. For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent’s domain name is "identical" to Complainant’s trademark, since Respondent’s domain name "trw.net" is without doubt confusingly similar to Complainant’s trademark "TRW".

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "trw.net", other than that it has registered the domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. In addition, bad faith use of a domain name does not establish rights or legitimate interests in respect of such name in the sense of paragraph 4(a)(ii) of the Policy.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

There is evidence on the record of this proceeding that Respondent has used the domain name "trw.net" to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with Complainant’s mark, "TRW", and suggesting that Complainant sponsors or is affiliated with Respondent’s web site.

Complainant’s mark is arbitrary. It combines letters with no apparent meaning in the English language. It is unlikely that a business would serendipitously select this set of letters as a trade name, and Respondent has provided the Panel with no explanation of its selection of these letters for its domain name 6. As Respondent intended to conduct a business involving automobile retail services, and Complainant is a major provider of automobile industry supplies, there is a substantial likelihood that Respondent would have been aware of Complainant’s trademark when it registered its domain name.

There is some difference in the lines of business pursued by Complainant and Respondent. Complainant is a major producer and distributor of automotive supplies to manufacturers. Respondent is attempting to attract retail purchasers of automobiles to its Internet service business. The Panel considers that the lines of business of Complainant and Respondent are sufficiently close, and Complainant’s trademark sufficiently well-known in the United States (based on its long-established usage and the level of Complainant’s sales penetration in the automotive products market), that a likelihood of confusion among Internet users is created by Respondent’s use of Complainant’s trademark in a substantially similar domain name 7. The Panel determines that Respondent used Complainant’s trademark "TRW" to intentionally attempt to attract Internet users to Respondent’s website at "trw.net" by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with Respondent’s web site.

The Panel determines that Respondent has registered and used the domain name "trw.net" in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "trw.net" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Autoscan Inc., has engaged in abusive registration of the domain name "trw.net" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "trw.net" be transferred to the Complainant, TRW Inc.

 


 

Frederick M. Abbott
Sole Panelist

April 24, 2000

 


Footnotes:

1. The Panel’s Network Solutions’ WHOIS database search of April 23, 2000 indicated a July 9, 1987 date of registration for the domain name "trw.com".

2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

3. For purposes of making its determination in this proceeding, the Panel does not need to consider the significance of any differences between the stylized marks and plain letter marks for "TRW" registered by Complainant. The Panel is satisfied that Complainant holds a valid trademark registration for the letters "TRW" covering automotive parts. Furthermore, the Panel does not find it necessary to address whether Complainant has rights in "TRW" as a service mark, noting that the U.S. PTO registrations that it furnished as evidence (Complaint, Exhibit 3), each concern a trademark.

4. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.

5. The Panel is making this determination solely on the basis of Complainant’s letter mark "TRW" without stylization.

6. Complainant has indicated that Respondent at some point alleged that the letters "TRW" correspond to the initials of one of its officers, Tony Waldrop, who appears as its Administrative Contact (Complaint, para. 17). As Complainant notes, this connection is nowhere indicated on Respondent’s web pages. Respondent has failed to proffer this information to the Panel, and the Panel does not find it necessary to consider this further.

7. Complainant has alleged that Respondent used its stylized letter mark "TRW" on its Internet web pages, in addition to using Complainant’s non-stylized letter mark. However, Complainant did not provide evidence of such usage by Respondent. Use by Respondent of a stylized letter mark similar to Complainant’s would constitute additional evidence of its intent to cause Internet-user confusion. The Panel has not, however, considered such usage by Respondent to be established.

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0156.html

 

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