Bridgestone Corporation v. Vahid Chitsaz
Claim Number: FA0706001015367
Complainant is Bridgestone Corporation (“Complainant”), represented by Mary
A. Moy, of Ladas & Parry LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bridgestonetiresale.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2007.
On June 25, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bridgestonetiresale.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 June
27, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 17, 2007
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@bridgestonetiresale.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bridgestonetiresale.com> domain name is confusingly similar to Complainant’s BRIDGESTONE mark.
2. Respondent does not have any rights or legitimate interests in the <bridgestonetiresale.com> domain name.
3. Respondent registered and used the <bridgestonetiresale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bridgestone Corp., is one of the world’s leading producers of tires and rubber products. While a large portion of Complainant’s business involves producing tires for conventional automobiles, it also manufactures tires and other products for the construction, agricultural, and recreational industries, along with a wide range of diversified products. Complainant has conducted business under its BRIDGESTONE mark for more than 20 years and uses the mark widely in advertising and promotional materials. Complainant holds a federal trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BRIDGESTONE mark (Reg. No. 1,342,473 issued June 18, 1985). Complainant also owns nearly 250 domain name registrations incorporating the BRIDGESTONE mark and currently operates a website at the <bridgestone.com> domain name.
Respondent registered the <bridgestonetiresale.com> domain name on July 20, 2005. The disputed domain name previously redirected Internet users to Respondent’s website at the <discountpartstore.com> domain name that offered for sale auto parts and accessories in direct competition with Complainant. At a later date, the disputed domain name resolved to a website displaying links to third-party websites in direct competition with Complainant. Respondent’s disputed domain name currently resolves to a webpage displaying a message from Respondent to Complainant. After Complainant sent Respondent a cease and desist letter, Respondent offered to sell the disputed domain name to Complainant for an amount greater than Respondent’s out-of-pocket expenses.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant’s registration of the BRIDGESTONE mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that Respondent’s <bridgestonetiresale.com> domain name is confusingly similar to Complainant’s BRIDGESTONE mark. The Panel agrees, as the disputed domain name incorporates the entire mark, adding the word “tire,” which describes Complainant’s business, and the generic term “sale” onto the mark. These minor additions to the BRIDGESTONE mark do not negate any confusing similarity between the disputed domain name and the mark. Moreover, the addition of the generic top-level domain “.com” to the mark is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <bridgestonetiresale.com> domain name is confusingly similar to Complainant’s BRIDGESTONE mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <bridgestonetiresale.com> domain name. Under Policy ¶ 4(a)(ii), the initial burden falls on Complainant to prove that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has established a prima facie case, however, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint allows the Panel to presume that Respondent lacks rights or legitimate interests in the <bridgestonetiresale.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <bridgestonetiresale.com> domain name and thus lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the disputed domain name. In addition, Respondent is not connected to Complainant and is not authorized to use the BRIDGESTONE mark for any purpose. The Panel therefore finds that Respondent lacks rights and legitimate interests in the <bridgestonetiresale.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <bridgestonetiresale.com>
domain name originally redirected Internet users to a website selling auto
parts and accessories in direct competition with Complainant. The Panel presumes that Respondent profited
when Internet users purchased items from this website. This does not qualify as either a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii).
Additionally, the use of the <bridgestonetiresale.com>
domain name to display links to third-party websites in competition with
Complainant does not fall under Policy ¶ 4(c)(i) or
(iii). This further indicates that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). As mentioned previously, Respondent’s <bridgestonetiresale.com> domain name originally resolved to a commercial website offering products for sale in direct competition with Complainant. The Panel finds that such use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Respondent previously used the <bridgestonetiresale.com> domain name to redirect Internet
users to Respondent’s website at the <discountautoparts.com> domain name,
and the Panel presumes that Respondent benefited commercially when users
purchased products from this website.
The disputed domain name later resolved to a links page from which
Respondent also presumably accrued commercial benefit through click-through
fees. Respondent was therefore taking
commercial advantage of the likelihood that Internet users seeking
Complainant’s products would confuse the source of the disputed domain name as
being affiliated with Complainant. This
is also evidence that Respondent registered and is using the <bridgestonetiresale.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
In addition, after receiving a cease and desist letter from
Complainant, Respondent offered to sell the <bridgestonetiresale.com> domain name to Complainant for an
amount greater than Respondent’s out-of-pocket costs. This offer to sell is further evidence of bad
faith registration and use under Policy ¶ 4(b)(i). See
Little Six, Inc. v. Domain For
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgestonetiresale.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 1, 2007
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