The Complainant is Magna International Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.
The Respondent is Stefan Polisky, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2021, 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 Complainant on April 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15 and 16, 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2021. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 20, 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. The Panel noted that Complainant asserted that it holds numerous trademark registrations for the sign MAGNA provided in an excel table. Consequently, on June 3, 2021, the Panel issued the Administrative Panel Order No. 1 to request that the Complainant provide more detailed evidence for the relevant cited trademark registrations. The due date was accordingly extended. Complainant replied to the Panel Order on June 7, 2021. 4. Factual Background Complainant is the company Magna International Inc., a global automotive supplier founded in 1957, notably implanted in Canada and in the United States. Complainant owns trademark rights for the sign MAGNA in various jurisdictions around the world, including: - Canadian trademark “MAGNA” No. TMA303870, registered on June 21, 1985, in classes 7, 9, 12, 40 and 42, and duly renewed since then; Complainant is also and among others operating the domain name The disputed domain name - Complainant asserts that the disputed domain name is confusingly similar to its MAGNA trademarks Complainant argues that the disputed domain name reproduces its MAGNA trademarks with the mere addition of the descriptive and non-distinctive terms “canada” and “inc”, which do not dispel confusing similarity. It alleges that the disputed domain was registered decades after first use of Complainant’s trademarks. Internet users will understand that the disputed domain name refers to Complainant. Finally, it argues that Complainant is at least well known in Canada and the disputed domain name then suggest an association with its business, particularly since Respondent used the disputed domain name to target third parties by email. - Complainant also claims that Respondent has no rights or legitimate interests in respect of the disputed domain name Complainant recalls that it must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that once such prima facie case is made, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to Respondent. Complainant argues that intentional trade on its goodwill and reputation cannot constitute a bona fide offering of goods and services. As soon as a disputed domain name is confusingly similar to Complainant’s trademark, it cannot be said that it constitutes a bona fide offering of goods and services. Besides, Complainant asserts that Respondent was never related to, licensed or authorized by Complainant to register or use the MAGNA trademarks in any manner whatsoever. Complainant further asserts that Respondent was not commonly known by this name. Finally, Complainant explains that Respondent committed fraud targeting third party Canadian businesses through the disputed domain name, in association with an email containing purchase orders for personal equipment purporting to emanate from Complainant, using Complainant’s trademarks, listing Complainant’s street address, and in some instances a link to Complainant’s website. Complainant considers this as evidence that Respondent lacks rights or legitimate interests in the disputed domain name and that such use cannot be legitimate, noncommercial or fair but that Respondent intended to disturb Complainant’s business. - Finally, Complainant considers that Respondent registered and used the disputed domain name in bad faith Complainant relies on previous panel decisions and emphasizes that its MAGNA trademarks are well known in Canada, in the United States, in the world in the automotive industry and for the general public. As a result, Complainant considers that Respondent had actual or constructive knowledge of Complainant’s MAGNA trademark when registering the disputed domain name. Complainant further states that given Respondent fraudulent use of the disputed domain name, the use of the disputed domain name intended to take advantage of Complainant’s goodwill and to attract Internet users for commercial gain. Respondent used the disputed domain name to reach vendors or third parties and create a confusion. At least two vendors have contacted Complainant because they were confused whether Respondent was legitimate. Respondent tried to disturb Complainant’s business and harm the valuable goodwill of Complainant’s trademarks. B. Respondent Respondent did not reply to Complainant’s contentions, and is therefore in default. 6. Discussion and Findings According to Policy 4(a) there are three conditions, that the Complainant must satisfy in order to obtain a decision that the disputed domain name registered by the Respondent be deleted or transferred to the Complainant: (i) the disputed 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 the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant holds valid trademark rights for the MAGNA trademarks. Complainant argues that the disputed domain name is confusingly similar to its MAGNA trademark, that is reproduced identically, with the mere addition of the terms “canada” and “inc”. In similar circumstances, previous panels have found that confusing similarity between the prior trademark and the disputed domain name was established. For example, a UDRP panel has reached the following decision: “All of the disputed domain names incorporate the Complainant’s GALERIES LAFAYETTE trademark in its entirety, simply omitting the space between the words ‘galeries’ and ‘lafayette’, together with the addition of the element ‘outlet’, ‘loutlet’ (which may be read as ‘l’outlet’ in French or ‘the outlet’ in English), or ‘france’. The Panel finds the Complainant’s GALERIES LAFAYETTE trademark to be readily recognizable in the disputed domain names, and further finds that the additional elements do not prevent a finding of confusing similarity; see WIPO Overview 3.0, sections 1.7 and 1.8. The Panel finds the disputed domain names to be confusingly similar to the Complainant’s GALERIES LAFAYETTE trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy”. (See Société Anonyme des Galeries Lafayette v. Contact Privacy Inc. Customer 0154762002 / Athena Company, galerieslafayette-outlet / Athena Comp-Un, Galeries Lafayette Outlet / Passaro First,WIPO Case No. D2019-1736). Another UDRP panel concludes the following; “The Complainant is, according to the submitted evidence, the owner of the registered trademark ACCENTURE. The disputed domain name incorporates the ACCENTURE trademark in its entirety with the addition of a hyphen and the element ‘inc’, which is a common abbreviation of the term ‘incorporation’. In the present case, the Complainant’s trademark is readily recognizable in the disputed domain name and the addition of the element ‘inc’ together with a hyphen does not prevent a finding of confusing similarity under the first element test. It is standard practice to disregard the generic Top-Level Domain (‘gTLD’) under the confusingly similar test. Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ACCENTURE and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy”. (See Accenture Global Services Limited v. Ranjan M,WIPO Case No. D2021-0235). For these reasons, the panel considers that the mere addition of the terms “inc” and “canada” would not prevent a finding of confusing similarity under the first element. Given that the disputed domain name reproduces Complainant’s mark in its entirety, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. Therefore, the panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As claimed by Complainant, previous UDRP panels have stated that: “Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden [of production] of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1”. (See Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio,WIPO Case No. D2020-2200). Complainant asserts that Respondent was never related to, licensed, or authorized by Complainant to register or use the MAGNA trademarks in any manner and that Respondent was not commonly known by this name. This has in prior cases generally considered as evidence that Respondent lacks right or legitimate interests in the disputed domain name – for example: “The Complainant contends, credibly, that it has not authorized the Respondent to register or use any domain name incorporating the Complainant’s trademark AGFA, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any bona fide offering of goods or services under the disputed domain name nor any legitimate noncommercial or fair use of the disputed domain name. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy”. (See Agfa-Gevaert N.V. v. Bruce C. Whitehurst, Xray Eye & Vision Clinics,WIPO Case No. D2020-1105). The Panel finds that in the absence of a response on this matter, it shall be considered that Respondent is not commonly known under the disputed domain name, nor related to, licensed, or authorized by Complainant to register or use any domain name incorporating Complainant’s marks. As a result, the Panel considers that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that intentional trade on its goodwill and reputation cannot constitute a bona fide offering of goods and services because it operates the disputed domain name to commit fraud targeting third party businesses and that such use cannot be legitimate, noncommercial or fair. The use of a disputed domain name to commit fraud has in prior cases generally considered by UDRP panels as evidence that Respondent does not have rights or legitimate interests in the disputed domain name – for example; “Second, Complainant responds to the Procedural Order by providing evidence of Respondent’s illegal activity, namely, using the disputed domain name to impersonate Complainant in emails to third parties to perpetrate fraud. The Panel finds that such activity, as evidenced in the additional submissions, ‘can never confer rights or legitimate interests on a respondent.’, WIPO Overview 3.0, section 2.13.1”. (See Beam Suntory Inc. v. Name Redacted,WIPO Case No. D2018-2861). As a result, the Panel finds that the disputed domain name is not used in connection with any bona fide offering of goods or services and that such fraudulent use cannot be considered legitimate, noncommercial or fair. Consequently, the panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant considers that Respondent registered and is using the disputed domain name in bad faith Complainant demonstrates that its MAGNA trademarks are well known. As a result, Complainant considers that Respondent had actual or constructive knowledge of the Complainant’s MAGNA trademark when registering the disputed domain name. Previous UDRP panels have held this as evidence of bad faith registration – for example: “Several of Complainant’s trademark registrations for ELLE in Canada predate the registration of the Disputed Domain Name. […] Complainant also has shown that its mark ELLE was mentioned in a trademark textbook published in 1999 as an example of a notorious mark, in the same rank of IBM and Coca-Cola. Annex 13 to the Complaint. Further, Complainant reports that in 2010, the year when the Disputed Domain Name was registered, Complainant obtained over EUR 395 million from its publishing of ELLE editions and over EUR 383 million from its licensing of ELLE products. Annex 12 to the Complaint. Complainant also has shown that it had been publishing the ELLE Quebec magazine in French and the ELLE Canada magazine in English much before the Disputed Domain Name was registered. The Panel shares the view of prior panels that the ELLE trademark is well known in respect of magazines. See e.g., Hachette Filipacchi Presse v. Peter B. King, WIPO Case No. D2010-2089 (“The panel has no doubt that ELLE is a well-known mark for the purposes of the proceedings and the same view is shared by prior panels.”). In the opinion of the Panel, all these facts strongly indicate that at the time of registering the Disputed Domain Name, Respondent, knew of the ELLE magazine and trademark quite well, and targeted them. In the circumstances of this case, this means that Respondent registered the Disputed Domain Name in bad faith”. (See Hachette Filipacchi Presse v. Registration Private, Domains By Proxy, LLC / Isaac Gelin, For Haiti,WIPO Case No. D2018-2147). The Panel finds that, given the well-known character of the MAGNA trademarks, Respondent registered the disputed domain name in bad faith. Complainant has demonstrated Respondent’s fraudulent use of the disputed domain name, to take advantage of Complainant’s goodwill and to attract Internet users for commercial gain. In particular, Respondent is committing fraud targeting third party businesses, using an email address connected to the disputed domain name. In similar circumstances, UDRP panels have decided the following – for example: “It is well accepted that use of a domain name to perpetuate fraud constitutes bad faith (see section 3.4 of the WIPO Overview 3.0). That fraud was the intention of the Respondent upon registration of the Domain Name, and that the Domain Name has been used for fraud, is clear from the evidence discussed above”. (See Airports Company South Africa SOC Limited v. Domains By Proxy, LLC / Dill Martine,WIPO Case No. D2020-2716). In the present case, given the important and fraudulent use of the disputed domain name, the Panel finds that the domain name is used in bad faith. Therefore, the panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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 Nathalie Dreyfus
- United States trademark “MAGNA” No. 1837713, registered on May 31, 1994, in classes 7, 9, 40 and 42, and duly renewed since then;
- European Union trademark “MAGNA” No. 011330529, registered on April 12, 2013, in classes 12, 40 and 42.
Sole Panelist
Date: June 14, 2021
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