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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Magneti Marelli Powertrain U.S.A. LLC v. Top-End Performance

Case No. D2009-1272

1. The Parties

Complainant is Magneti Marelli Powertrain U.S.A. LLC of Sanford, North Carolina, United States of America, represented by Bliss McGlynn, P.C., United States of America.

Respondent is Top-End Performance of North Hollywood, California, United States of America, of represented by Law Offices of Frank G. Blundo, Jr., United States of America.

2. The Domain Name and Registrar

The disputed domain name <webercarbs.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2009. On September 25, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On September 25, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the 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"). By email dated October 5, 2009, Complainant filed an amendment to its Complainant changing the request for remedy from cancellation to transfer of the disputed domain name.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. By email dated October 21, 2009, counsel for Respondent requested an extension of the due date for filing a Response for an additional 20 day period. Counsel for Complainant objected to such extension on grounds that the request did not refer to any exceptional circumstances. By email dated October 26, 2009, the Center notified Respondent that its request an for extension of 20 days was declined based on factors including Complainant`s objection, the proximity of the request to the due date, and the absence of exceptional circumstances but that the due date would be extended until October 30, 2009. The Response was filed with the Center on October 30, 2009.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 6, 2009. 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 recorded assignee of registration of the word trademark WEBER on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 1685066, dated May 5, 1992, in International Class (IC) 7, covering "carburetors; fuel injectors for internal combustion engines". Complainant also is assignee of the design trademark consisting of a stylized letter "W" with an underscore line in the form of a block rectangle, registration number 1246851, dated August 2, 1983, in IC 7, covering, inter alia, "jets for fuel injection in internal combustion engines and parts thereof".

Complainant through its commonly controlled affiliated companies, based in Milan, Italy, is a major producer of high technology engine and transmission component systems and modules for the automobile industry, with a substantial research and development and production presence in Europe, the United States, and elsewhere. Complainant is a long-standing manufacturer of carburetors for use in automobiles. Although current-model automobiles primarily use fuel injection systems rather than carburetors, there remains a substantial international market for WEBER carburetor conversion kits for use in racing and classic automobiles, and generally as replacement parts for older vehicles. Complainant offers and sells WEBER carburetors in the United States through authorized distributors. Complainant has expended substantial sums in advertising and promoting WEBER automotive products, and considers that the WEBER trademark is "among the most famous marks for automotive-related products in the world".

According to the Registrar`s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on May 9, 1998.

As of September 9, 2009,¹ Respondent uses the disputed domain name, <webercarbs.com> to redirect Internet users to the Internet address (URL) "www.racetep.com/weber.html". The landing webpage is headed with the following text:

"Welcome to ....

WeberCarbs.com

The #1 source for Weber Carbs, Conversions and Components. The Low price High Quality Leader and FREE UPS Shipping on all Kits. We will not be undersold on any NEW Weber Carb or Conversion.

The aforesaid text is followed by the stylized W trademark alongside the capitalized terms WEBER CARBURETORS, and the statement "Distributed by REDLINE" followed by the statement "America`s premier distributor of genuine WEBER Carburetors for over 20 years". Underneath the trademarks, is this statement:

BUYER ALERT

We Sell ONLY GENUINE WEBER CARBURETORS and Conversion Kits that are manufactured in the Real European Weber Factory for the last 30+ years (Spain for the last 18+ years), NOT the US Made or China Knock Offs. 1 Year warranty on all new Real Weber Carbs. Don`t get Burned or Waste your Money buying Cheap Copies. Call or e-mail us if you are not sure.

WeberCarbs.com is the largest and oldest independant Weber Carb distrbutor in the USA. We have been in business since 1984 and we know Weber Carbs. We have the Best Prices and the Best Technical Expertise to help our customers get the most from their Carb purchase. […]

Beware of the Imitators and Cheap Knock Off Look-Alike Carbs on the Market. We sell NEW Authorized REAL Weber Carbs and Conversions. Not the made in China knock-offs that you cannot get any support for. [This paragraph in bold typeface]

The web landing page associated with the disputed domain name is primarily associated with WEBER trademark products, and "Redline Weber". In the bottom left-hand corner of the landing page is a link to Respondent`s (Top-End Performance) main website. That main website lists the trademarks and related products of other automobile parts manufacturers, such as Turbonetics, Electromotive, Haltech and Ferrea.

Internet users are enabled to purchase products from Respondent, including WEBER carburetors and related products, on Respondent`s commercial Internet website.

Complainant through its counsel transmitted a cease-and-desist and transfer demand letter to Respondent dated March 4, 2009 by express courier, and reiterated that cease-and-desist and transfer demand by courier letter to Respondent dated May 4, 2009. Complainant in its correspondence indicated that it had communicated with Respondent by telephone, and had left several follow-up telephone messages, but had not been contacted by Responded to follow up. In its correspondence, Complainant stated, inter alia, that it had "recently become aware that Top-End Performance has been offering to sell and selling automotive components that do not originate with [Complainant] but that use [Complainant`s] WEBER and W trademarks without any implied or explicit authorization to do so."

The Registration Agreement in effect between Respondent and Network Solutions, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties` Contentions

A. Complainant

Complainant asserts that it has rights in the trademarks WEBER and W (together hereinafter referred to as the "WEBER marks") based on long use in commerce in the United States and elsewhere, and as evidenced by registration at the USPTO. Complainant argues that the WEBER marks are well known because of extensive advertisement of those marks and consumer recognition.

Complainant contends that the disputed domain name is confusingly similar to its WEBER mark because the disputed domain name fully incorporates that trademark and adds a term which identifies a well-known product of Complainant.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent has not used the disputed domain name for a bona fide offering of goods or services, that Respondent has not been authorized by Complainant to use its trademark, that Respondent has not acquired any trademark rights in the disputed domain name, and that Respondent is not making fair use of its mark in the disputed domain name because it is using Complainant`s trademark to divert Internet users based on a nonexistent association with Complainant. Complainant alleges that Respondent is using Complainant`s trademark to sell counterfeit products and that this cannot constitute fair use.

Complainant contends that Respondent registered and has used the disputed domain name in bad faith because it has intentionally for commercial gain diverted Internet users to Respondent`s website by suggesting or implying an affiliation or association with Complainant. Complainant contends that because its mark is famous, its use by Respondent in connection with Respondent`s website strongly suggests an association with Complainant, and that Respondent`s use of Complainant`s trademark was done deliberately. Complainant argues that Complainant has the right to determine what parties use its trademark to sell Complainant`s products, and that Respondent is competing unfairly with Complainant`s products by selling carburetors under Complainant`s mark.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

The Response filed by Respondent`s counsel consists of a series of general statements denying the allegations of the Complaint. There is no factual information or legal argumentation included in the Response beyond the general series of denials.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy 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 establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent had notice of the Complaint and its counsel filed a Response to the Complaint. Complainant had twice transmitted letters expressing its legal concerns to Respondent, had spoken by telephone with Respondent, and had attempted on a number of additional occasions to contact Respondent by telephone to resolve this dispute. Respondent requested an extension of the due date for filing its Response, and this was objected to by Complainant. The Center thereafter granted a shorter extension. Under the circumstances in which Respondent was given long opportunity to address the concerns raised by Complainant, the decision by the Center not to extend the due date for filing a Response by the requested 20 days was consistent with the Center`s responsibilities under the Policy. Respondent under the circumstances had adequate opportunity to respond to the Complaint.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, 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 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.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence to demonstrate rights in the WEBER trademark based on use in commerce in the United States, and as evidenced by registration at the USPTO (see Factual Background supra). Complainant has also provided substantial evidence to demonstrate rights in the stylized W trademark, likewise based on use in commerce in the United States, and as evidenced by registration at the USPTO. The Panel determines that Complainant has rights in the WEBER marks.

The disputed domain name directly incorporates the WEBER trademark, and adds the term "carbs" to it. The term "carbs" is a short form for reference to "carburetors". Complainant`s trademark is registered in connection with carburetors, and its trademark is associated in the minds of Internet users with carburetors. The addition by Respondent of the term "carbs" to Complainant`s WEBER trademark to form the disputed domain name <webercarbs.com> takes advantage of an expected association of Internet users between Complainant`s mark and the product principally associated with the mark. The Panel determines that the disputed domain name is confusingly similar to Complainant`s WEBER trademark.

Furthermore, Complainant alleges that its WEBER trademark is well known among purchasers and users of carburetors. Complainant states that it has expended substantial resources in advertising its mark. The text on Respondent`s website highlights the quality and characteristics of Complainant`s products, implying that those products are well known to Internet users in the relevant market. Based on these factors, the Panel accepts that the term WEBER is well known among prospective Internet purchasers of carburetors.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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." (Policy, paragraph 4(c))

Complainant has stated a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent had the opportunity to rebut or refute the factual and legal assertions of Complainant. Respondent merely transmitted a general denial of the allegations of the Complaint, without any attempt to specifically challenge the facts alleged by Complainant.

Complainant alleged that Respondent did not make a bona fide offering of goods prior to notice of the dispute because Respondent was not authorized to sell Complainant`s products, and because Respondent offered for sale and sold counterfeit products using Complainant`s trademark. Respondent registered the disputed domain name which contained Complainant`s trademark when it was already well known among purchasers of carburetors. Respondent might reasonably have anticipated that Complainant would object to said registration and use.

In any case, Respondent has not replied to Complainant`s assertion that its sales of carburetor products under Complainant`s trademark are not bona fide because (a) Respondent is not authorized to sell Complainant`s products and (b) Respondent is selling counterfeit products, while holding itself out as an authorized representative.

Respondent could have provided evidence that it is a reseller of genuine WEBER products acquired through lawful channels. It did not. Under these circumstances, the Panel will not find that Respondent has rebutted Complainant`s prima facie showing of a lack of bona fide offering of goods prior to notice of the dispute.

Complainant has further argued that Respondent has not made fair use of its trademark in the disputed domain name. This Panel has on a number of occasions had opportunity to address whether a reseller of goods has a fair use right to use a trademark in a domain name (compare, e.g., Yamaha Motor Corporation, USA v. Powers Motor Sports, WIPO Case No. D2007-0396, finding absence of fair use by authorized reseller based on contract restrictions with supplier, and; Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774), finding fair use by authorized reseller based on status and historic implied trademark holder consent). These decisions indicate that whether use of a trademark by a reseller is "fair" depends on a number of factors, including whether there are contract terms between the supplier and reseller that address domain name usage, the general practice of an industry sector, and the extent to which the reseller states or implies an association with the trademark owner. Other panelists deciding cases under the Policy involving resellers also appear to assess cases depending on the specific circumstances.²

In the instant proceeding, Respondent is not and has not been an authorized reseller of Complainant. Respondent states on its website that it is reselling "genuine" products of Complainant originating in Complainant`s Spanish manufacturing facility. But, despite direct contact from Complainant and an opportunity in this proceeding to substantiate its claim of reselling genuine products originating in Complainant`s factory, Respondent has not done so. Respondent states that it is the "largest and oldest independent Weber Carb distributor in the USA". But, Respondent has not sought to substantiate the legitimate characteristics of its business in this proceeding.

Moreover, Respondent did not limit its use of Complainant`s trademark to the identification of Complainant`s products. It used Complainant`s trademark as the name of its Internet business. The term "WeberCarbs.com" was used by Respondent as the name of its dedicated website offering Complainant`s products for sale. Respondent has made substantially more use of Complainant`s trademark than is necessary to identify its products, and this factor argues against a finding of nominative fair use (see, e.g., discussion of nominative fair use elements in Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399, including references therein to Horphag Research. v. Mario Pellegrini, 328 F. 3d 1108 (9^th Cir. 2003) and Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002).

Based on the foregoing factors, the Panel determines that Respondent has failed to adequately rebut Complainant`s prima facie showing that Respondent is not using Complainant`s trademark fairly.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that "by using the domain name, [respondent 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] website or location or of a product or service on your website or location" (Policy, paragraph 4(b)(iv)).

Respondent has used the disputed domain name, which is confusingly similar to Complainant`s well-known trademark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent`s web site, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent`s website. Respondent used Complainant`s trademark as its business name on its website, exacerbating potential Internet user confusion regarding Complainant`s affiliation with or sponsorship of Respondent`s business.

The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <webercarbs.com> be transferred to the Complainant.