Car parts manufacturer, Dana Limited of Maumee, Ohio, just lost a URS on the domain names Dana.parts and Spicer.parts which are owned by FleetTruckParts.com of Blue Island, Illinois.
Dana has a federally registered trademark on both the terms DANA and SPICER.
The examiner Anne M. Wallace found despite owning the trademark Dana did “not established through clear and convincing evidence that Respondent has no legitimate right or interest to the disputed domain names. ”
“Furthermore, Respondent has raised questions about legitimate or fair use of the disputed domain names for the sale of second hand parts. These issues would more properly be determined through the UDRP or through a court process. These issues are not appropriate for determination under the URS.”
“Likewise, Complainant has not established through clear and convincing evidence that Respondent registered and is using the disputed domain names in bad faith as defined in the URS. ”
“Furthermore, Respondent has raised questions with respect to the bad faith element that would more properly be determined through the UDRP or through a court process. ”
“These issues are not appropriate for determination under the URS.”
There is no allegation, nor is there any evidence the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.
“The relief requested is denied. This URS proceeding is terminated without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.”
