BFS Retail & Commercial Operations LLC v. Pluto Domain Services Private Limited
Claim Number: FA0810001230459
Complainant is BFS
Retail & Commercial Operations, LLC (“Complainant”), represented by Douglas A. Rettew, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gcrtire.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2008.
The National Arbitration Forum attempted to verify that the <gcrtire.com> domain name was registered with Lead Networks Domains Pvt. Ltd. and that Respondent was the current registrant of the domain name. Lead Networks Domains Pvt. Ltd., however, did not respond to multiple contact attempts from the National Arbitration Forum. The National Arbitration Forum then contacted ICANN regarding Lead Networks Domains Pvt. Ltd.’s lack of response to the verification request, and notified ICANN that it would be proceeding without verification. The National Arbitration Forum commenced the case on November 6, 2008.
On November 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 1, 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 to postmaster@gcrtire.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <gcrtire.com> domain name is confusingly similar to Complainant’s GCR TIRE CENTERS mark.
2. Respondent does not have any rights or legitimate interests in the <gcrtire.com> domain name.
3. Respondent registered and used the <gcrtire.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BFS Retail & Commercial Operations LLC,
owns GCR Tire Centers, which was created in 2001 based on tire dealerships
dating back to at least 1975.
Complainant owns more than 150 stores and 300 customer locations in the
Respondent registered the disputed <gcrtire.com> domain name on December 26, 2006. The disputed domain name is used to display third-party advertisements for Complainant’s competitors.
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.
In order to obtain standing under the UDRP, it is not
necessary for Complainant to have a trademark that is registered with a governmental
trademark authority. Rather, it is
sufficient if Complainant can demonstrate requisite common law rights in the
mark through a showing of secondary meaning.
See
Complainant has asserted its rights in the GCR TIRE CENTERS mark under common law. Complainant has asserted that it has utilized this mark since 2001, and has asserted the size and breadth of its operations. The Panel finds that Complainant has demonstrated sufficient common law rights and secondary meaning in order to obtain standing under Policy ¶ 4(a)(i) for the GCR TIRE CENTERS mark. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Respondent’s disputed <gcrtire.com> domain name
differs from Complainant’s GCR TIRE CENTERS mark in the following manners: (1)
CENTERS and the “s” in TIRES has been removed; (2) the spaces between the words
have been removed; and (3) the generic top-level domain “.com” has been
added. The Panel begins by noting that
the deletion or words or letters from a mark generally fails to create a
meaningful distinction. See, e.g., Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17,
2006) (finding that the <granarolo.com> domain name was confusingly
similar to the complainant’s registered G GRANAROLO mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel notes that the WHOIS information lists Respondent
as “Pluto Domain Services Private Limited.”
Complainant has asserted, and the Panel so finds in light of the WHOIS
information, that Respondent is not nor has ever been commonly known by the
disputed domain name under 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 the 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 Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected).
Respondent’s disputed domain name resolves to a website that promotes Complainant’s competitors via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As stated above, the resolving website for the disputed
domain name displays advertisements for Complainant’s competitors. The disruptive nature of this endeavor as it
affects Complainant’s business is clear, and therefore the Panel finds that Respondent
has engaged in Policy ¶ 4(b)(iii) bad faith registration. See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”); see
also David
Finally, the Panel finds that Respondent has created a
likelihood of confusion as to Complainant’s source of, or affiliation with, the
disputed domain name and resolving website.
The Panel infers Respondent primarily intended to garner commercial
benefit through the registration and use of the confusingly similar disputed
domain name, and the resulting advertisements on the corresponding
website. Thus, Respondent has engaged in
bad faith registration and use under Policy ¶ 4(b)(iv). See
GMAC LLC v. WhoisGuard Protected, FA
942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy,
evidence that a domain name registrant has intentionally attempted to attract,
for commercial gain, Internet users to the registrant’s website by creating a
likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”);
see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25,
2007) (holding that the use of a confusingly similar domain name to display
links to various third-party websites demonstrated bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
The Panel 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 <gcrtire.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 16, 2008
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