The Tire Track, Inc. v.
Claim Number: FA0804001178356
Complainant is The Tire Rack, Inc. (“Complainant”), represented by David
A. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wholesaletirerack.com>, registered with Compana, LLC.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2008.
On April 15, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <wholesaletirerack.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 April 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 7, 2008.
On May 12, 2008, Complainant submitted an Additional Submission that was determined to be timely.
On May 19, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that:
· It has rights in the Marks: THE TIRE RACK and TIRE RACK registered with United States Patent and Trademark Office and throughout the world.
· It has common law rights in the trademark TIRE RACK WHOLESALE.
· It holds numerous domain names consisting of, or incorporating the term TIRERACK (“Complainant’s Domain Names”), all of which are forwarded directly to The Tire Rack’s famous TIRERACK.COM or TIRERACKWHOLESALE.COM websites located at the URLs <www.tirerack.com> and <www.tirerackwholesale.com> respectively.
· The disputed domain name is confusingly similar to Complainant’s THE TIRE RACK, TIRE RACK, and TIRE RACK WHOLESALE trademarks and Complainant’s Domain Names in which the Complainant has rights, as incorporates Complainant’s Marks and simply adds the term “wholesale” to Complainant’s TIRE RACK mark, inverts the terms of Complainant’s TIRE RACK WHOLESALE mark, and adds the generic top-level domain “.com.”
· Respondent’s website associated with <wholesaletirerack.com> domain name prominently features a generic search engine with numerous links to direct competitors for Complainant, for which the Respondent receives commissions for diverting Internet users to third-party websites via the search engine and links located at Respondent’s website.
· Respondent’s use of Complainant’s Marks and Complainant’s Domain Names in the Respondent’s domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain, which is an evidence of Respondent’s bad faith registration and use;
· Respondent’s registration of the <wholesaletirerack.com> domain name years after Complainant has established trademark rights in Complainant’s Marks coupled with the near identical nature of Respondent’s domain name with Complainant’s Marks strongly suggests that Respondent knew of Complainant’s rights in its marks.
· Respondent has a pattern of registering domain names in bad faith concerning the registration trademark-related domain names.
The Respondent asserts that:
· Complainant has no rights in a mark identical or confusingly similar to the disputed domain name, as it has not registered any mark containing the words wholesale tire and rack and has no common law rights in such a trademark, as it is a generic combination of words;
· It has rights and legitimate interests in the disputed domain name;
· Complainant has not demonstrated that the Respondent has registered and used the disputed domain name in bad faith;
· It is the registrant of thousands of domain names and it was involved in several UDRP proceedings finalized some of them with transfer.
C. Additional Submissions
In its Additional Submission, the Complainant further contends that:
· The subject domain name is confusingly similar to Complainant’s trademark in which Complainant has rights;
· Respondent’s only interest in the subject domain name is merely to trade on the goodwill of Complainant’s Marks and confuse Internet users seeking Complainant’s goods and services, all the while collecting pay-per-click revenue.
· Respondent is imputed with constructive knowledge, if not actual knowledge, of Complainant’s prior rights to the Complainant’s Mark;
· The many findings of Respondent’s bad faith registrations provide a clear picture of the Respondent’s continuous malfeasance and wrongdoing, regardless of the number of domain names it has registered.
The Respondent objected and replied to the Complainant’s additional submission:
· Respondent believes that Rule 7 is an improper modification of the Rules;
· The constructive knowledge theory is inconsistent with the Policy.
The first finding in this case refers to the consistency of the Supplemental Rule 7 with the Rules for Uniform Domain Name Dispute. As the Respondent itself asserted in the Additional Submission the Supplemental Rules represents the housekeeping of the Uniform Domain Name Dispute provider. In the same time, one cannot consider the Additional Submission based on Supplemental Rule 7 inconsistent with the Rules for Uniform Domain Name Dispute and make use itself to the procedural means provided by this Rule. If the Panel were to accept Respondent’s reasoning as to the inconsistency of the Complainant’s Additional Submission, the Panel should also not consider Respondent’s Additional Submission. In such situation, the Panel chooses to consider both Additional Submissions in these proceedings.
As to the merits of the case, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, the Respondent has no rights in the disputed domain name and registered the disputed domain name to trade on the goodwill of Complainant’s Marks and confuse Internet users seeking Complainant’s goods and services.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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.
Complainant asserts that it registered the mark, THE TIRE RACK, with the United States Patent and Trademark Office (“USPTO”) on October 21, 1986 (Reg. No. 1,414,570), and has registered the mark with several other governmental trademark authorities. The Panel finds that this registration with the USPTO is sufficient for Complainant to establish rights to THE TIRE RACK mark under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).
Complainant also contends that it has established common law rights to the TIRE RACK WHOLESALE mark through use in commerce. Complainant has provided an affidavit as evidence of these rights. Complainant also owns the <tirerack.com> and <tirerackwholesale.com> domain names. The Panel does not consider necessary for the purpose of these proceedings to establish the common rights of the Complainant in the TIRE RACK WHOLESALE mark.
For the purpose of Policy ¶ 4(a)(i), it is sufficient for the Panel to consider the rights resulting from the registered trademarks of the Complainant in THE TIRE RACK mark.
Complainant contends that the <wholesaletirerack.com> domain name is confusingly similar to Complainant’s THE TIRE RACK mark because it incorporates Complainant’s mark, but removes the word “the,” and adds the generic term “wholesale,” as well as the generic top-level domain (“gTLD”) “.com.” Complainant contends that these minor changes are not sufficient to distinguish the disputed domain name from the mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s THE TIRE RACK mark pursuant to Policy ¶ 4(a)(i). See 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 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).
While Respondent contends that the <wholesaletirerack.com> domain name is comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s THE TIRE RACK mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.
The Panel considers that the Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), which was not rebutted by the Respondent in its Response or Additional Submission. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <wholesaletirerack.com> domain name, and that it has never authorized Respondent to use its mark. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 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).
Complainant also maintains that Respondent is using the disputed domain name to divert Internet users to its commercial website where links to competing third-party websites are displayed. From this the Panel infers that the Respondent is financially gaining from click-through fees. Complainant contends that this use fails to demonstrate rights or legitimate interests. The Panel finds that Respondent’s use is not 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Although Respondent has argued that it lacks
control over the advertisements that appear on the website that resolves from
the disputed domain name, the Panel finds that this argument is without merit
because Respondent is ultimately responsible for what appears on its
website. See St. Farm Mutual Auto. Ins.
Registration and Use in Bad Faith
The Complainant contends that the Respondent had constructive knowledge of its The Tire Rack marks and the Respondent asserts that the constructive knowledge theory is not consistent with the Policy. The Panel considers registration in bad faith provided by the Policy requires that the Respondent knew about the Complainant trademark and registered similar or identical domain name in order to take advantage of this trademark. In this situation, the registration of the THE TIRE RACK trademarks together with the extensive use of these trademarks by the Complainant represent strong indication of bad faith registration of the disputed domain name by the Respondent.
Complainant contends that by linking Internet users with Complainant’s competitors, Respondent’s use of the disputed domain name to incur click-through fees from Internet users evidences registration and use in bad faith. Complainant contends that Respondent’s use is capable of creating confusion as to Complainant’s affiliation with the website that resolves from the disputed domain name. The Panel finds that Respondent’s use demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith 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.”).
Complainant contends that
Respondent has a pattern of registering domain names that infringe on others’
marks, and that Respondent has been ordered to transfer the disputed domain
names by several previous UDRP panels. See Am. Airlines, Inc. v.
Complainant has argued in its Additional Submission, and the Panel may find that the disputed domain name is not comprised of common terms. The Panel may conclude that this further evidences registration and use in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wholesaletirerack.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: June 2, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum