WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Magna International Inc. v. Roger Wells Case No. D2018-1780 1. The Parties

The Complainant is Magna International of Aurora, Ontario, Canada, represented by Gowlings WLG (Canada) LLP, Canada.

The Respondent is Roger Wells of Toronto, Ontario, Canada. 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 August 7, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2018, 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 and contact information for the disputed domain name.

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").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2018.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 7, 2018. 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

The Complainant is a global automotive supplier which was founded in 1957, is implemented in 28 countries and 4 continents, and is listed on the Toronto Stock Exchange in Canada and the New York Stock Exchange in the United States of America ("United States").

The Complainant operates through its wholly-owned subsidiary Decostar Industries Inc. since at least 2002 under the business names and trademarks DECOSTAR and DECOSTAR INDUSTRIES (thereafter the DECOSTAR trademarks).

The Complainant owns a pending United States trademark application for DECOSTAR under No. 87375321 and asserts unregistered trademark rights on the DECOSTAR trademarks.

The disputed domain name was first registered on October 1, 2017 and redirects visitors to the Complainant's official website, at "". 5. Parties' Contentions A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant considers that the disputed domain name is confusingly similar to the DECOSTAR trademarks in which it has rights since before the date of registration of the disputed domain name, underlining that the UDRP Policy affords protection to both registered and unregistered trademarks.

The Complainant argues that "decostar" is a distinctive element and that the Complainant has rights in the DECOSTAR trademarks since they have been used in association with the Complainant's products and services in the United States and elsewhere in the world for at least 16 years, and thus have acquired significant secondary meaning.

In support of this allegation, the Complainant provides samples of invoices showing use of the DECOSTAR trademark and a photograph of a sign appearing outside of a manufacturing and distribution facility in the United States, that displays the DECOSTAR trademark, precising that the DECOSTAR trademark is similarly displayed outside of its other various manufacturing and distribution facilities.

The Complainant also underlines that its website "" features the DECOSTAR trademarks for promoting its subsidiary business, and actively promotes the products and services offered under the DECOSTAR trademarks through social media platforms, including YouTube, Facebook, Twitter, LinkedIn and Instagram.

The Complainant cites the decision Magna International Inc. v. Roger Wells and William Green,WIPO Case No. D2017-0888, which found that the "decostar industries" term had acquired secondary meaning, at least in the state of Georgia, in a case that involved the same respondent, namely Roger Wells.

The Complainant finally asserts that the disputed domain name is confusingly similar to the DECOSTAR trademarks since it contains the whole distinctive "decostar" and "decostar industries" terms, the addition of the descriptive and non-distinctive suffix "co", which is the abbreviation of "company", being insufficient to avoid confusion, as well as the addition of the generic Top-Level Domain ("gTLD") ".com".

Secondly, the Complainant contends that the Respondent has never been authorized, nor licensed, to register or use any of the DECOSTAR trademarks, and that the fact that the disputed domain name currently redirects visitors to the Complainant's website suggests that the Respondent uses it to fraudulently represent itself as the Complainant.

Thirdly, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith, for the purpose of disrupting the business of the Complainant by using email addresses associated with the disputed domain name to impersonate the Complainant and attempting to make large commercial purchases from third parties while purporting to be the Complainant.

In addition to the abovementioned UDRP panel decision that involved the same respondent, namely Roger Wells, and the domain name, the Complainant mentions that it has previously been targeted by a registrant with similar registrant information to the Respondent, including registrant, administrative and technical contact information, who used email addresses connected with the domain name in order to negotiate and conclude large commercial transactions with third-party businesses, purporting to be an employee of the Complainant.

On the basis of the above, the Complainant requests the disputed domain name be transferred to the Complainant. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and

(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademar