Decision for dispute CAC-UDRP-107203

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

According to the evidence submitted by Complainant, Complainant is the owner of the International Trademark NORAUTO, registration number 591237 and registration date 9 July 1992. 

According to the information provided the disputed domain name <norautode.com> was registered on 30 September 2024.  

According to the information provided by Complainant the disputed domain name currently does not resolve to an active website. Previously it resolved to an online store selling car accessories, among other things, under the brand and denomination NORAUTO.   

Complainant:

Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

According to the evidence submitted by Complainant, Complainant is European leader in the car maintenance sector. Its centers provide multi-brand maintenance solutions. With over 10,622 employees and 631 centers worldwide, Complainant offers a platform of smart solutions for “drivers” and “car users” thanks to its network of car centers, its various service offers and its products. Complainant is also the owner of several domain names including the trademark NORAUTO, such as the domain name <norauto.com>, registered since 20 November 1996.

Complainant submits that the disputed domain name is confusingly similar to Complainant's NORAUTO trademark. Complainant asserts that the addition of the geographic term “DE” (i.e. the country code for Germany) is not sufficient to escape the finding that the domain name is confusingly similar to the trademark NORAUTO.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Complainant asserts that Respondent is not known as the disputed domain name. Complainant contends that Respondent is not affiliated with him nor authorized by him in any way to use the trademark NORAUTO. Complainant does not carry out any activity for, nor has any business with Respondent. Finally, the disputed domain name resolved to an online store selling car accessories, among other things, under the brand and denomination NORAUTO. Respondent used the disputed domain name to disrupt Complainant’s business and to attract users by impersonating Complainant, as Respondent identifies itself as “norauto”. Impersonation of a complainant, by using its trademark in a disputed domain name and seeking to defraud or confuse users, indicates a lack of rights or legitimate interests by a respondent.

According to Complainant the disputed domain name was registered and was being used in bad faith. Complainant asserts that Respondent was aware of its trademark and intended to create a likelihood of confusion with Complainant’s mark by impersonating Complainant. Past panels have held that this is sufficient to prove bad faith. Given the distinctiveness of Complainant's trademark and its reputation, it is reasonable to infer that Respondent has registered and used the domain name with full knowledge of Complainant's trademark. Moreover, the disputed domain name redirected to an online store selling, among other things, car accessories and equipment. Therefore, it competes with the products offered by Complainant. Using a domain name in order to offer competing products is often been held to disrupt the business of the owner of the relevant mark and is bad faith.

Respondent:
No administratively compliant Response has been filed.

Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

Complainant has, to the satisfaction of the Panel, shown Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

In the opinion of the Panel the disputed domain name is confusingly similar to Complainant's NORAUTO trademark. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the relevant trademark is recognizable within the disputed domain name. Complainant has established that it is the owner of a trademark registration for NORAUTO. The disputed domain name incorporates the entirety of the NORAUTO trademark as its distinctive element. The addition of the geographical term “de” (=Germany) is insufficient to avoid a finding of confusing similarity. The Top-Level Domain (“gTLD”) “.com” in the disputed domain names may be disregarded.

The Panel notes that Complainant’s registration of its trademark predates the creation date of the disputed domain name. 

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain name incorporating its mark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent. In addition, Complainant has demonstrated that the disputed domain name resolved to a website selling car accessories, among other things, under the brand and denomination NORAUTO which does not does not represent a bona offering of goods or services.

Respondent did not submit any response.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.  

The Panel finds that the disputed domain name has been registered and is being used in bad faith. Complainant has rights in the NORAUTO trademark. Respondent knew or should have known that the disputed domain name includes Complainant’s mark.
The Panel notes that the disputed domain name currently does not resolve to an active website. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3. of the WIPO Overview 3.0).

The Panel also notes the undisputed submission of Complainant, supported by evidence, that the disputed domain name previously resolved to a website which incorporated Complainant’s trademark in its entirety and which sold NORAUTO branded products, which indicates that Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.