The Complainant is Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co. Ltd.), of Kanagawa, Japan, represented by Claro & Cia, Chile.
The Respondent is Automovil Click, Fernando Leiva of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 21, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 30, 2015.
The Center verified that the Complaint together with the amendment to 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 February 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 26, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 4, 2015. 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
Complainant is a Japanese multinational automobile manufacturer headquartered in Nishi-ku, Yokohama, Japan. The company was founded 80 years ago, in 1934. Since then, Nissan has grown to become one of the largest and best-known automakers globally.
The disputed domain name was used for a website containing images of Nissan cars and forms to collect leads from Internet users.
The disputed domain name was registered on April 16, 2012. 5. Parties' Contentions A. Complainant
The Complainant owns numerous registrations for its trademark NISSAN in different jurisdictions around the world. The Complainant also owns multiple trademark registrations for NISSAN in Chile.
The disputed domain name contains the registered trademark NISSAN, which in addition is the word that constitutes the essence of the Complainant's name: Nissan Jidosha Kabushiki Kaisha. The other half of the disputed domain name – "Chile" – is just a reference to one of the many countries where Nissan products are sold. The combination "Nissan Chile" is simply an indication of a specific country of interest for Nissan and for consumers.
The disputed domain name is confusingly similar to the Complainant trademark.
The Complainant states that multiple facts demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name:
The word "nissan" has no meaning in Spanish, which is the language spoken in Chile, i.e., the country referred to within the disputed domain name. The word "nissan" therefore is not a descriptive word, which the Respondent might have an interest to use in its generic sense. It follows that the use of the word "nissan" in combination with "Chile" in the disputed domain name makes no sense other than to refer to the Complainant's name/trademark and its business in Chile;
Neither the Respondent nor his enterprises are commonly known by the disputed domain name;
Neither the Complainant nor its Chilean or regional subsidiaries have licensed or otherwise consented to the Respondent's use or registration of the disputed domain name;
The Respondent is most definitely not using the disputed domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services. The evident purpose of the website to which the disputed domain name resolves, is to misleadingly attract Internet users and consumers and harvest their personal data, such as their names, e-mail addresses and telephone numbers;
There is no doubt that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since (a) it is his obvious purpose to mislead consumers by making them think that the disputed domain name has a connection with Nissan and Nissan's products, and (b) upon luring consumers to his website, the only thing they will ultimately find is an on-line form that, if filled out, will give away their personal information. Such a website simply cannot be considered, by any standards, a legitimate noncommercial or fair use of the domain name.
With respect to bad faith, the Complaint states that the disputed domain name includes the Complainant's famous registered trademark NISSAN. According to the Complainant, this alone is a sign of bad faith.
The Complainant further states that the website, to which the disputed domain name resolves, prominently features the NISSAN trademark, logo and slogan, and images of NISSAN cars. Several mentions of "Nissan Chile" appear on the website as well as a copyright notice: "© Copyright 2013 Nissan Chile | Todos los Derechos Reservados".
The Complainant asserts that the Respondent actively used the disputed domain name and the corresponding website with the purpose of attracting consumers and misleading them as to the true nature of such website and the identity of the company/person behind it.
The Complainant states that the Respondent has set up a fake website in such a way that consumers are tricked into giving away their personal information. All links provided in the disputed domain name ultimately lead to an on-line form, which seeks to obtain consumers' names, e-mail addresses, telephone numbers and other data. The heading of the form invites consumers to "obtain a quote from Nissan Chile" on the price of any of the various NISSAN vehicle models shown in the website. The Complainant states that that all links in the website ultimately lead to one of these two very similar on-line forms asking for personal information, there can be no question that the purpose of the Respondent's website and of the disputed domain name is, precisely, to harvest such personal data from website visitors.
According to the complaint, the Respondent admitted using the website –and consequently the disputed domain name– for the aforesaid purpose and to obtain "leads" from website visitors that do not fill out either form for any reason.
The Complainant states that the Respondent "presents himself as the CEO of various enterprises, allegedly located in Chile and in Panama, that do business involving on-line marketing and the sale of automobiles […] the disputed domain name, which prominently features the Complainant's registered NISSAN trademark, is used – and world-famous – precisely in connection with vehicles".
The Complainant states that the Complainant's representatives contacted Mr. Leiva and requested that the disputed domain name be transferred to Nissan. Mr. Leiva admitted having registered the disputed domain name, but refused to transfer it unless he were paid a substantial amount of money. The Complainant states that the Respondent asked for payment of USD 8.000 to transfer the disputed domain name to Nissan. According to the Complaint, this amount vastly exceeds the reasonable out-of-pocket expenses normally incurred for registering a domain name.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in NISSAN as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the Complainants' trademark NISSAN. The name Nissan is clearly the dominant element of the disputed domain name.
"Chile" and the generic Top-Level Domain ("gTLD") suffix ".com" do not change this finding. These elements are insufficient to distinguish the domain name from the trademark. In addition, many Internet users would suppose that this domain name had been registered by the Complainant or an affiliate of the Complainant to promote its business in the Chile (Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc.,WIPO Case No. D2002-0954).
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you 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 (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 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of his default.
The Complainant's NISSAN trademarks are famous, and have evidently been known to the Respondent when registering the disputed domain name. Said domain name is highly unlikely to have been registered if it were not for the Complainant's trademarks. In this respect, see Nissan Jadish Kabushiki Kaisha (dba Nissan Motor Co., Ltd.) v. Maurilio Sixto,WIPO Case No. D2013-1032 Nissan Mexicana S.A. de C.V. v. Gustavo Adolfo Luja Membrilla,WIPO Case No. D2009-1301 and Nissan Mexicana S.A. de C.V. v. Leonor Méndez Martínez,WIPO Case No. DMX2009-0004 (all decisions recognizing
In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant's rights in the NISSAN trademark when he registered the disputed domain name, since the Complainant's trademark is a widely and well-known trademark.
In addition the Complaint states that the Respondent "[…] presents himself as the CEO of various enterprises, allegedly located in Chile and in Panama, that do business involving online marketing and the sale of automobiles" and adds that "[…] the disputed domain name, which prominently features the Complainant's registered "NISSAN" trademark, is used […] precisely in connection with vehicles".
Respondent has not denied this assertions and it is the conclusion of the Panel that Respondent was aware of the NISSAN trademarks at the time of registering the disputed domain name. Thus, in the circumstances, the disputed domain name was registered in bad faith.
With respect to bad faith use, the Panel notes that at the time of filing the Complaint, the website to which the disputed domain name resolved, featured prominently the NISSAN trademark, logo and slogan, and images of Nissan cars. The website included a mention of "Nissan Chile" as well as a copyright notice: "© Copyright 2013 Nissan Chile | Todos los Derechos Reservados". At the time of rendering this Decision the disputed domain name contains an image of a NISSAN trademark cross our and the legend "Actualizando sitio" (in English "updating website").
The Complainant contends that the disputed domain name was being used to trick Internet users into giving away their personal information. Therefore, the circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant's NISSAN trademarks when registering the disputed domain name and that he has intentionally used the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website and/or disrupt the Complainant's business.
Therefore the Panel concludes that the Respondent has registered and is using the domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: March 23, 2015
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