Claim Number: FA0706001025060
Complainant is Bridgestone Firestone North American Tire LLC and BFS Brands
LLC (“Complainant”), represented by Douglas A. Rettew, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New
York Avenue Nw, Washington, DC 20001.
Respondent is Jamie Lanier (“Respondent”), 1801 Lejeune Bld.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bridgestonetiresusa.com> and <firestonetiresusa.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 1, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. 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 July 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 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 firstname.lastname@example.org and email@example.com by e-mail.
Respondent submitted two separate documents as a Response in
the instant proceeding, both of which are procedurally deficient. The first, received on July 31, was late and
not received in hard copy, and accordingly deficient under ICANN Rule 5. The second Response, received on August 2,
was also late and not received in electronic format, again, making the Response
procedurally deficient under ICANN Rule 5.
As the Responses were deficient, the Panel has sole discretion as to the
amount of weight given to the Responses.
See Telstra Corp. v. Chu,
Accordingly the Responses will be considered, and the matter will proceed as a contested proceeding.
On July 27, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Bridgestone Firestone is an international manufacturer and seller of products including tires, and has continuously used the Firestone name for over a century.
In 1990 Firestone Tire and Rubber
Company merged with Bridgestone to form Firestone Bridgestone, a subsidiary of
Bridgestone Corporation, the world’s largest tire and rubber company. Bridgestone has continuously used the
Bridgestone mark and name since 1928 and has used the mark in the
Bridgestone owns numerous
Respondent uses the Domain Names for “under construction” pay-per-click websites which connect to websites that directly compete with Bridgestone Firestone and/or its authorized dealers.
In November and December 2005, Complainant set Respondent cease-and-desist letters demanding transfers of the names to no avail.
Respondent’s <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names are confusingly similar to Complainant’s BRIDGESTONE and FIRESTONE marks, respectively, because each is Bridgestone Firestone’s mark in its entirety, coupled with the generic term “tires” and the geographic term “USA.” These additives are not sufficient to distinguish the domain names from those marks.
Respondent does not have any rights or legitimate interests in the <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names. Respondent’s registration and use of the domain names for commercial pay-per-click websites providing links to competing websites and other commercial websites does not constitute a bona fide offering of goods or services under the UDRP.
Respondent registered and used the <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names in bad faith as set forth in Paragraph 4(b)(iv) of the UDRP, in that Respondent uses the domain names to intentionally attract Internet users to his websites by creating a likelihood of confusion with Bridgestone Firestone and its marks as to the source, sponsorship, affiliation and endorsement of Respondent and/or the pay-per-click websites associated with the domain names.
B. Respondent makes the following assertions:
purchased over three hundred thousand dollars of Bridgestone tires a year and
using the subject domain names would increase business. The term
2. Respondent was authorized to use the subject domain names and as proof it has “letters of accommodation for a job well done from BS/FS, as well as checks for payment on the Firestone credit card.”
3. There was no bad faith as Respondent was “trying to sell their tires.” Respondent’s reason for doing “this is because I purchase from distributors over 300 thousand dollars plus…worth of bridgestone (sic) and Firestone product a year . . . and thought it would be a good way to increase sales for my store and for firestone/bridgestone (sic).”
4. The “websites take people directly to sites that sell Firestone and Bridgestone Tires.” “There are no links, other than to their own product.” There is no bad faith as Respondent is promoting the Complainant’s tires.
Bridgestone Firestone North American Tire LLC and BFS Brands LLC, collectively “Complainant,” are subsidiaries of Bridgestone Corporation, an international manufacturer and retailer of various consumer and commercial products, including tires, industrial products, roofing and building products, and polymers. In connection with the promotion and sale of tires and related products, Complainant utilizes the FIRESTONE and BRIDGESTONE marks. Both marks are currently registered with the United States Patent and Trademark Office (“USPTO”), namely, FIRESTONE (Reg. No. 2,464,055 issued June 26, 2001) and BRIDGESTONE (Reg. No 1,342,473 issued June 18, 1985). Complainant Bridgestone Firestone North American Tire LLC is licensed to use the BRIDGESTONE mark by the parent Bridgestone Corporation. Complainant BFS Brands LLC owns the trademark registration for the FIRESTONE mark. By means of these marks, Complainant also extensively promotes and markets its goods and services via the Internet and currently holds the <bridgestone-firestone.com>, <bridgestone.com>, and <firestone.com> domain names, among others.
Respondent registered the <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names on April 13, 2005. Respondent’s domain names currently resolve to web pages indicating the sites are under construction and providing Internet users with a directory of keyword searches subsequently expanding into a wide array of third-party links, namely competitors of Complainant.
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."
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.
Registration of the FIRESTONE and BRIDGESTONE marks with the
USPTO is sufficient to establish Complainant’s rights in the marks pursuant to
Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9,
2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
and <firestonetiresusa.com> domain
names are confusingly similar to Complainant’s BRIDGESTONE and FIRESTONE marks,
respectively. The domain names at issue are
a conglomeration of Complainant’s marks, the common term “tires,” the
geographical identifier “
Based on the foregoing, the Panel determines Complainant has adequately met the requirements of Polciy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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).
Complainant contends that nothing in the record and nothing in Respondent’s WHOIS information suggests that Respondent is commonly known by either of the <firestonetiresusa.com> or <bridgestonetiresusa.com> domain names, and that Respondent is not authorized to use Complainant’s marks. Therefore, the Panel finds that Respondent is not commonly known by either of the <firestonetiresusa.com> or <bridgestonetiresusa.com> domain names pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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 use of the domain names in question as directories of search terms leading to pages of commericial links for third parties is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommerical or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Further, the advertised “under construction” status of Respondent’s <firestonetiresusa.com> and <bridgestonetiresusa.com> domain names also suggests to the Panel a lack of rights or legitimate interests in these domain names, given Respondent’s registration of the domain names over two years ago. See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Franzus Co. v. Cotner, FA 125365 (Nat. Arb. Forum Nov. 7, 2002) (determining that after the respondent’s passive holding of the disputed domain name for five years, its “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect of the domain name at issue”).
In sum, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the confusingly similar domain names at
issue to resolve to directories of keyword searches subsequently connecting
Internet users to pages of third-party links, primarily those of Complainant’s
competitors. Such use by Respondent
evidences bad faith registration and use of the <firestonetiresusa.com> and <bridgestonetiresusa.com>
domain names pursuant to Policy ¶ 4(b)(iii) by attempting to divert Internet
users seeking Complainant to other competing third parties and, thereby,
disrupting Complainant’s business.
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent registered and used the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name
resolved to a website that displayed commercial links to the websites of the
complainant’s competitors); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Second, considering the confusing similarity Respondent’s <firestonetiresusa.com> and <bridgestonetiresusa.com> domain names bear to Complainant’s FIRESTONE and BRIDGESTONE marks, respectively, the Panel finds Internet users are likely to be confused as to Complainant’s endorsement or association with the listed third-party links. Moreover, the Panel infers Respondent is attempting to capitalize on this confusion in order to commerically benefit from Internet users who visit Respondent’s <firestonetiresusa.com> and <bridgestonetiresusa.com> domain names, click on the sponsored links, and presumably genereate referral fees for Respondent as users are then directed to the websites of third parties. This further suggets bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds Respondent’s registration and use of the <firestonetiresusa.com> and <bridgestonetiresusa.com> domain names constitute bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgestonetiresusa.com> and <firestonetiresusa.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
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