Complainant is Transtar Industries Inc. of Cleveland, Ohio, United States of America ("USA"), represented by Vorys, Sater, Seymour and Pease, LLP, USA.
Respondent is Dennis Hansen, Precision of New Hampton, Inc. of New Hampton, Iowa, USA, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2014. On May 21, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. On May 27, 2014, the Center received two informal communications from Respondent inquiring about this proceeding and how to prepare a response. The Response was filed with the Center on June 4, 2014.
On June 6, 2014, the Center received an e-mail communication from the Complainant inquiring about the possibility of adding further domain names to this proceeding. On June 10, 2014, the Center indicated to the Complainant that the Rules do not explicitly provide for a Complaint to be amended, after the commencement of proceedings, to include additional domain names. Accordingly, the Center advised, it is for the Panel to determine whether it will accept the addition of new domain names to the Complaint. This matter will be taken up below.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 11, 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.
On June 13, 2014, Complainant submitted to the Center an unsolicited supplemental submission with a twofold purpose. First, Complainant provided evidence that Respondent had registered numerous other domain names containing a famous mark in the automotive industry appended to the term torque convertors. Second, Complainant repeated from its Complaint the fact that it had acquired DACCO, Inc. in early 2014, and asked, yet again, that the present case be expanded to include a request to transfer the Domain Name to Complainant.
Exercising its discretion, the Panel will not entertain a request to transfer additional domain names in this proceeding. It would not have been too great a feat for Complainant, before filing this Complaint, to check whether Respondent (who, Complainant knows perfectly well, holds itself out to the public as a remanufacturer of "all makes and models" of torque convertors) had also registered a domain name containing the DACCO mark and appending the term "torque convertor." Complainant is free to pursue other domain names in other proceedings. 4. Factual Background
Complainant is a distributor of transmission-related products for automobiles and trucks, as well as automotive specialty repair and refinishing products. Complainant holds a 1995 registration with the United States Patent and Trademark Office for the trademark TRANSTAR in connection with "transmission replacement parts for automobiles and light-duty trucks." Complainant has used the TRANSTAR mark since 1978. Complainant has also registered the TRANSTAR mark in connection with a similar line of goods in numerous countries throughout the world. In Canada, Complainant registered the TRANSTAR mark in 2000 in connection with "replacement parts for motor vehicles, namely, transmission replacement parts …"
Among the products Complainant markets are torque convertors. Simply put, a torque convertor is a device used in an automatic transmission vehicle (whereas manual transmission vehicles use a clutch) that permits an engine to keep running even while the wheels are not rolling. Without a torque convertor (or a clutch), an engine would cease if the vehicle stopped moving.
According to Respondent, Complainant purchased a torque convertor plant in 2007 and has been selling torque convertors under the mark RECON, not TRANSTAR.
The Domain Name was registered in April 9, 2009. The Domain Name resolves to Respondent's website, which features the text "Precision of New Hampton Torque Convertors." Among other things, the website states: "We have the largest selection of Torque Convertors and all other makes and models in the world to fit any transmission, model or vehicle application." The site also states: "We custom remanufacture all makes and models of Torque Convertors in 24 hrs, rebuild costs range from $250 - $400."
Complainant's counsel sent Respondent a cease-and-desist letter dated April 15, 2014. That day, Respondent replied by e-mail to Complainant's counsel, stating in part: "About one year ago we had received a similar letter from a large OEM [Original Equipment Manufacturer] and we used the word torque convertor with their name. It was decided at that time we were in our legal rights and we have maintained the site since." 5. Parties' Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent's main argument is that a torque convertor is an auto part that is attached to a transmission; it is not part of the transmission. Further, Respondent notes that Complainant sells its torque convertors under the RECON mark, not under the TRANSTAR mark. As such, the argument goes, Respondent is within its rights to use a domain name that reflects exactly what it does, namely, makes replacement torque convertors compatible with TRANSTAR transmissions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
It is beyond dispute that Complainant holds trademark rights in the mark TRANSTAR. The Panel further finds that the Domain Name, which fully incorporates the TRANSTAR mark and adds the descriptive term "torque convertor," is confusingly similar to Complainant's mark. Although a torque convertor may not be an actual part of a transmission, it is certainly related to the transmission and, as far as automobiles are concerned, would not appear to have any automotive function in the absence of a transmission. Put another way, a torque convertor is often closely associated with a transmission. This relationship, in the Panel's view, reinforces the confusion that one would likely experience upon seeing the TRANSTAR mark juxtaposed with the term "torque convertor."
The Panel also observes that Complainant's Canadian trademark registration describes the protected goods in general as "replacement parts for motor vehicles," followed by a long list of specific products within this general rubric. Thus, even if a torque convertor is viewed as entirely distinct from a transmission (as Respondent apparently tried to argue by looking at the United States Patent and Trademark registration in isolation), Complainant's trademark protection in at least Canada extends to replacement parts more generally. In any event, the Panel concludes that the relatedness of the torque convertor and the products protected by Complainant's TRANSTAR family of marks makes consumer confusion stemming from the Domain Name highly probable.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that Respondent has not been authorized by Complainant to use the TRANSTAR mark in any manner, and that the parties have no relationship. There is no evidence that Respondent is commonly known by the Domain Name.
The Panel also finds that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made a fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers. As Respondent knows, Complainant sells a wide range of automotive parts and systems, including transmissions and related parts, including torque convertors. To use the Domain Name, which features the mark TRANSTAR and adds the descriptive term for an auto part which is not only sold by Complainant (even if sold under a separate mark, RECON) but is also related to other auto parts and systems sold by Complainant under the TRANSTAR mark, cannot in this Panel's view be seen as bona fide or a fair use of the TRANSTAR mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv). It is undisputed that Respondent had Complainant's TRANSTAR mark in mind when registering the Domain Name.
It has also been found on the record of this case that there would be a likelihood of consumer confusion stemming from Respondent's use of Complainant's TRANSTAR mark in a Domain Name also including the term "torque convertor." Given the array of automotive products sold by Complainant under that mark, the use of the Domain Name to resolve to a website where Respondent offers its own closely related automotive goods and services creates an intolerable likelihood of confusion. Respondent's argument that a torque convertor is not technically part of a transmission notwithstanding, the Panel believes, by way of a simplifying analogy, that a company that has sold peas for years under the registered trademark TRANSTAR Peas should not have to tolerate someone else selling TRANSTAR Carrots.
There would seem to be no obstacle to Respondent advertising its remanufactured torque convertors that are compatible with TRANSTAR transmissions, but it is a bridge too far to use this Domain Name, because it suggests that the torque convertors in question are actually affiliated with Complainant.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: June 18, 2014
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