Magna International Inc. v TsukimuraReiko

WIPO Case No. D2025-1930

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Magna International Inc. v. TsukimuraReiko

Case No. D2025-1930

1. The Parties

The Complainant is Magna International Inc., Canada, represented by Gowling WLG (Canada) LLP, Canada.

The Respondent is TsukimuraReiko, Canada.

2. The Domain Name and Registrar

The disputed domain name <magna-steyr-automotive.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2025. On May 14, 2025, the Center transmitted by email to the Registrar a request for registrar verification in con- nection with the disputed domain name. On May 15, 2025, 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 (Redacted For Privacy / Super Privacy Service LTD c/o Dynadot Ad- min) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 15, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal require- ments of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uni- form 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 Com- plaint, and the proceedings commenced on May 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2025.

The Center appointed Haig Oghigian as the sole panelist in this matter on June 26, 2025. 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.

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4. Factual Background

The Complainant, Magna International Inc, is Canadian automotive supplier with operations in over 27 coun- tries. According to the Complaint, the Complainant is the largest automotive parts manufacturers in North America, frequently ranking among the five largest globally. In connection with its business, the Complain- ant is the owner of a significant number of trademark registrations that consist of or comprise “magna”, which it has used for over 40 years. This includes several marks related to Magna Steyr Fahrzeugtechnik GmbH & Co KG (operating as Magna Steyr), a subsidiary of the Complainant.

The Complainant owns numerous trademark registrations for MAGNA and MAGNA STEYR, such as but not limited to:

Trademark	Country	Registration Number	Registration Date
MAGNA	Canada	TMA303870	June 21, 1985

MAGNA United States of America 1837713 May 31, 1994

MAGNA STEYR Canada TMA812245 November 21, 2011

The Complainant operates its website at <magna.com>, <magna-steyr.com> and others.

The disputed domain name <magna-steyr-automotive.com> was registered by the Respondent on March 9,

2025, and it does not resolve to an active website.

The Respondent is TsukimuraReiko, located in Canada.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant owns numerous trademark registrations for both “Magna” broadly and “Magna Steyr” spe- cifically, which all predate the registration of the disputed domain name by the Respondent by several years at minimum. The Complainant adds that their rights to and associations with these marks have been recog- nized by multiple UDRP panels in the past. The Complaint states that the relevant trademark, MAGNA STEYR, is contained within the disputed domain name, though with the “automotive” added on the end. The Complainant submits that the MAGNA STYER trademark is fully reproduced in the disputed domain

name and as “automotive” is a descriptive term, the addition of this descriptive or meaningless term does not prevent a finding of confusing similarity, and if anything reinforces the connection with the Complainant as the Complainant operates in the automotive industry.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that as they have demonstrated rights to the mark contained within the disputed domain name, and have never licensed mark to the Respondent, or have ever licensed or otherwise given permission for the creation of the disputed domain name. The Complainant states that the disputed domain name had an MX record associated with the disputed domain name for the purpose of hosting email ad- dresses at the disputed domain name, meaning it could be used for phishing or other malicious activities while posing as the Complainant; and that prior panels have found that activities potentially convey to

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unsuspecting Internet users the false belief that any website or email connected to that domain name is as- sociated with the complainant, and such a risk of affiliation or association with the complainant and its mark cannot constitute fair use.

The disputed domain name was registered and used in bad faith.

The Complainant states that the fact that the disputed domain name reproduces the Complainant’s mark, while having no relationship to that mark, has the potential to disrupt the Complainant’s business and there- fore constitutes of bad faith registration. The Complainant states that prior panels have found that the non- use of a domain name will not prevent a finding of bad faith under the doctrine of passive holding argues that they need not wait until the disputed domain name has been used to commit a fraud or other bad faith activ- ity before bringing a complaint under the UDRP to recover a domain name. The Complainant also argued that the active MX record, when combined with prior indications of bad faith through the unauthorized repro- duction of the Complainant's marks, is enough of an indication that the Respondent may have already been using or preparing to use the disputed domain name for illegal or illegitimate activity; and that prior panels have ruled that similar circumstances have been found to constitute a bad faith intent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Se- lected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark MAGNA is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the mark MAGNA STEYR is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here “automotive”, may bear on assessment of the second and third ele- ments, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

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of “proving a negative”, requiring information that is often primarily within the knowledge or control of the re- spondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evi- dence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy estab- lishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent acted in bad faith as they reproduced,
without authorization, the Complainant’s marks with the addition of the term “automotive” which given the
Complainant’s business would likely lead to more potential misuse than other generic terms.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel also notes that in accordance with prior panels, that an active MX record associated with the na- ture of the disputed domain name supports a finding of bad faith as the disputed domain name could poten- tially be used for illegitimate or illegal purposes.

The Panel finds that the Complainant has established the third element 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 <magna-steyr-automotive.com> be transferred to the Complainant.

/Haig Oghigian/
Haig Oghigian
Sole Panelist
Date: July 8, 2025