DECISION

 

DNA Limited and Goodyear Dunlop Tires North America v. n/a

Claim Number: FA0110000100568

 

PARTIES

Complainant is DNA Limited and Goodyear Dunlop Tires North America Ltd., West Amherst, NY (“Complainant”) represented by Michael Berchou, of Phillips, Lytle, Hitchcock, Blaine & Huber LLP.  Respondent is n/a, Canada (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <dunlop-tire.com>, registered with BulkRegister.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 12, 2001; the Forum received a hard copy of the Complaint on October 15, 2001.

 

On October 19, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <dunlop-tire.com> is registered with BulkRegister and that Respondent is the current registrant of the name.  BulkRegister has verified that Respondent is bound by the BulkRegister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@dunlop-tire.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On November 29, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <dunlop-tire.com> domain name is confusingly similar to Complainant's DUNLOP mark.

 

Respondent has no rights or legitimate interests in the <dunlop-tires.com> domain name.

 

Respondent registered the disputed domain name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Since 1987, Complainant has had the rights to the DUNLOP trademark.  The mark is registered with the U.S. Patent and Trademark Office and the Canadian Trademark Office.  The DUNLAP mark has been used continuously by Complainant and its predecessor companies in relation to the sale and manufacture of automobile tires.  The mark has become famous based on its widespread use.

 

Since 1995, Complainant and its predecessor have had a presence on the Internet as the owner of <dunloptire.com>.

 

Respondent registered the <dunlop-tire.com> domain name on January 3, 2001.  Respondent uses the domain name to redirect Internet users to a pornography website.  The website to which Internet users are redirected to is <cyclop.net>.  When the user is brought to this site it is unable to close the window because the closing function has been disabled and triggers many different windows to open up to various other pornographic websites even as the Internet user attempts to sign-off the Internet.  Respondent is paid for each user that is diverted to these pornography websites. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant, through registration and continuous use has established rights in the DUNLOP mark.  Furthermore, Respondent's <dunlop-tire.com> domain name is confusingly similar to Complainant's DUNLOP mark.  Respondent's domain name incorporates the entirety of Complainant's mark and merely adds the generic term "tire" and a hyphen to separate the two words.  The addition of a generic term to Complainant's mark is not enough for Respondent to create a distinctive mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).  Moreover, the use of a hyphen does not create a distinctive mark.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <dunlop-tire.com> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <dunlop-tire.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

 

Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

 

Respondent has linked the disputed domain names to various pornographic websites.  It has been found that this type of use does not create rights or legitimate interests.  See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

The <dunlop-tire.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the <dunlop-tire.com> domain name despite confusing similarity is evidence of bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

 

Furthermore, because of the famous and distinctive nature of Complainant's DUNLOP mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <dunlop-tire.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

 

Respondent has linked the confusingly similar <dunlop-tire.com> domain name to a pornographic website for commercial gain.  This conduct is evidence of bad faith.  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <dunlop-tire.com> be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: December 3, 2001