Everybody's Oil Corporation
d/b/a Tire Barn v.
Claim Number: FA0910001291661
Complainant is Everybody's Oil Corporation d/b/a Tire Barn
(“Complainant”), represented by James J. Saul, of Baker & Daniels
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tirebarn.com> and <tirebarn.tv>, registered with Network Solutions.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2009.
On October 28, 2009, Network Solutions confirmed by e-mail to the National Arbitration Forum that the <tirebarn.com> and <tirebarn.tv> domain names are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions 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 November 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2009 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. Subsequently, due to extenuating circumstances, the National Arbitration Forum granted Respondent until December 8, 2009, to submit its Response.
A Response was received on December 8, 2009. However, because no hard copy of the Response was received before the deadline, the Response has been determined not to be complete, and is deficient pursuant to ICANN Rule 5.
An Additional Submission was received from Complainant on December 14, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.
On December 16, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant claims rights in
the TIRE BARN trademark since its first use in December 1976, and asserts that
Complainant has used TIRE BARN WAREHOUSE and the short form TIRE BARN
In July 1999, the Complainant registered <tirebarnusa.com> and launched its website shortly thereafter. In August 7, 2009, Complainant filed a federal trademark application for TIRE BARN, which is now pending (Annex 10 of the Compliant showing printouts from the USPTO TARR database).
to the Complainant, it has achieved secondary meaning for the TIRE BARN
mark in its territory of use,
Since 1976, the Complainant has enjoyed approximately U.S. $1 billion in sales in connection with the TIRE BARN brand, and has spent approximately U.S. $30 million advertising the mark. Complainant advertising expenditures have secured various forms of advertising, including print advertising, television commercials, sponsorships, and discount programs (Annexes 11 and 12 of the Complaint showing examples of advertising).
The Complainant states that the disputed domain names <tirebarn.com> and <tirebarn.tv> are virtually identical to Complainant's TIRE BARN mark.
Complainant asserts that it has never given the Respondent permission, authorization, consent, or license to use the TIRE BARN mark, and argues that Respondent has never been commonly known by "Tire Barn" or the disputed domain names, and has used the <tirebarn.com> only to redirect Internet users to other websites.
On May 16, 2005, Complainant sent Respondent a cease-and-desist. Respondent thereafter disabled the <tirebarn.com> domain name and responded to Complainant on June 11, 2005, demanding $12,000 in exchange for the domain name. Respondent made no mention of any affiliation with a business enjoying any rights in the mark TIRE BARN, admitting, "We do understand that [Complainant] would receive a greater benefit from the name than we would at this point in time.” Complainant was not interested in paying an extortion premium. Respondent recently restarted use of the domain name, again directing Internet users to its own website at <midwesttire.com>. Complainant in turn sent a cease-and-desist letter to Respondent, dated August 17, 2009, demanding the transfer of <tirebarn.com>. With respect to the <tirebarn.tv> domain name, Respondent does not appear to have made any active use and is instead passively holding the Domain Name.
The Respondent registered the disputed domain names in
December 1996 and November 2001, at least 20 years after the Complainant’s
first use of the TIRE BARN mark. Respondent was
a direct competitor of the Complainant in
Complainant suggests that Respondent has shown bad faith registration and use as Respondent has used one of the disputed domain names to redirect Internet users to its own website for the purpose of advertising its own competitive services, as well as demanded compensation for the transfer of the domain names – for a consideration extended Respondent’s out-of-pocket expenses.
The Respondent states that the “Tire Barn” is the name commonly given to the Respondent, and can trace its roots to the 1950’s when the father of the owner of Respondent ran a repair business in North West Indiana. Respondent opened its own tire and auto repair business in 1982, and customers still refer to this as the “Tire Barn.”
In December 16, 1996, Respondent registered <tirebarn.com>, “invoking the spirit of the business his father started in the 1950's and incorporating the common name of Respondent's tire and auto repair business.” The disputed domain name was used to re-direct Internet users to Respondent’s main website located at <midwestautorepair.com>.
Respondent asserts that it was not aware of the
Complainant at the time of the registration of the disputed domain names, and
came to know about Complainant when it was first contacted by the owner of the
Complainant in the spring of 2005. Respondent informs that the parties had a
meeting during a trade show in
Respondent, fearing litigation, disabled <tirebarn.com> in a good faith effort to resolve the dispute. As Complainant never responded to the offer from Respondent, the disputed domain name was re-activated. Respondent did not hear from the Complainant again until August 17, 2009.
In early 2009, Respondent entered in negotiations
The Respondent argues that this is not a clear case of cybersquatting because 1) Complainant does not have exclusive rights to the mark TIRE BARN; 2) Respondent has a legitimate business interest in both of the domain names; and 3) each domain as registered and continues to be used in good faith. Respondent points to the fact that "Tire Barn" is used by numerous third parties to refer to tire and auto repair businesses and that a search in the search engine Google for "tirebarn" results in 188,000 third party web pages containing the terms.
Respondent also points to the fact that the Complainant has known about Respondent’s domain names since at least 2005, and that the delay in Complainant’s actions has lead Respondent to draw the conclusion that it’s use of the disputed domain names was uncontested.
C. Additional Submissions
In its additional submission, the Complainant argues that
Respondent has shown no evidence that it is commonly known by “Tire Barn.”
Complainant repeats it arguments that TIRE BARN is at least suggestive and that
Complainant possesses exclusive common law
rights to TIRE BARN in the geographic area
where both companies operate, and to the extent TIRE BARN was not immediately distinct, it has achieved
secondary meaning in its territory of operation, including
As mentioned above under “Procedural History,” Respondent’s Response was received in electronic copy; however no hard copy was received prior to the Response deadline. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.
The Panel notes that Respondent has filed a timely and full Response in electronic format. In the interests of fairness and in accordance with ICANN Rule 10(b), the Panel has decided to consider the Response in spite of the lack of a timely filed hard copy Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Doctrine of laches
The Respondent seems to suggest that Complainant has lost its rights to file a Complaint, or that Respondent has acquired rights in the disputed domain names, due to the fact that Complainant waited at least 4 years to file this Complaint, counted from the date of Complainant’s first approach.
However, as rightly observed by the
Complainant, and established in a number of UDRP Cases, the doctrine
of laches is not relevant to the Panels consideration of the instant
E.W. Scripps Co. v. Sinologic Indus.,
D2003-0447 (WIPO July 1, 2003) ("[T]he Policy does not provide any defence
of laches. This accords with the basic objective of the Policy of providing an
expeditious and relatively inexpensive procedure for the determination of
disputes relating to egregious misuse of domain names."); see also See
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.
Although the Complainant does not have a trademark registration for the TIRE BARN mark, a trademark registration is not required to satisfy Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant contends that since its first use in 1976, the TIRE BARN mark
has acquired secondary meaning through the promotion of its automotive products
and services at its 30 stores in
It is evidenced by the Complainant that it has used the TIRE BARN trademark displayed outside its repair stores, and also that the mark has been advertised. The Complainant has however failed to provide evidence on the alleged extensive U.S. $30 million advertisement in the form of “television commercials, sponsorships, and discount programs”. Annexes 11 and 12 of the Complaint shows only a few examples of print advertising.
Nevertheless, the Panel finds that Complainant has, through its repair stores and other local use, as well as via Internet search engines, at least acquired secondary meaning to the TIRE BARN mark locally. Accordingly, the Complainant has rights in the TIRE BARN mark pursuant to Policy ¶ 4(a)(i) through the continuous use in commerce since at least 1982. See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The relevant part of the disputed domain names is “tirebarn” See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The only difference between Complainant’s common law mark TIRE BARN and the domain names is that the latter are written as one word. This minor amendment is insufficient to distinguish Respondent’s domain names from Complainant’s mark.
Thus, the Panel concludes that both <tirebarn.com> and <tirebarn.tv> are identical or virtually identical to Complainant’s mark TIRE BARN, and accordingly that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy.
Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); 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.”).
Respondent asserts that the “Tire Barn” is the name “commonly given” to the Respondent, tracing its roots to the 1950’s when the father of the owner of Respondent ran a repair business in North West Indiana. Respondent, who opened its business in 1982, claims that the registration of <tirebarn.com> in December 1996 incorporated “the common name of Respondent's tire and auto repair business”. It should have been easy for the Respondent to provide evidence of the firm statement that it is commonly known as TIRE BARN, however there is no evidence whatsoever, except for the Respondent’s own statement. Respondent has been identified as “Midwest Auto Repair,” and nothing in the WHOIS information for the disputed domain names suggests that Respondent has even been known by any variant of the TIRE BARN mark.
The Panel therefore finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also 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.”).
Complainant contends that Respondent is not making an active use of the disputed domain names, and that this is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent has never used <tirebarn.tv>, and the <tirebarn.com> has been re-directed first to Respondent’s own competing web site and later to another competitor’s web site. Such use is not considered fair use under Policy ¶ 4(c)(i).
Finally, Respondent offered to sell the disputed domain names to Complainant for $12,000, which is obviously more than the out-of-pocket registration costs to Respondent. The Panel finds that this evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name, and finds for Complainant under Policy ¶ 4(a)(ii).
Although the Complainant does not have a registered trademark right to TIRE BARN, it is established to be at least locally known and with acquired common law rights. Further, Complainant and Respondent are not only direct competitors, they compete in the same states and with repair shops geographically close to each other. It is unlikely that Respondent should not have been aware of Complainant’s use of the TIRE BARN trademark at the time Respondent registered the two disputed domain names.
The fact that several other business are using or may use trademarks similar to TIRE BARN for related services in other states, does not alter the conclusion that Respondent registered <tirebarn.com> and <tirebarn.tv> especially with the Complainant in mind. The two companies are geographically neighbors and Respondent has not used TIRE BARN for its own services.
Further, Respondent’s offer to sell the disputed domain names for more than Respondent’s out-of-pocket costs is evidence of Respondent’s registration and use in bad faith pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
The Panel holds that the Respondent has registered and is using the disputed domain names in bad faith and concludes that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tirebarn.com> and <tirebarn.tv> domain names be TRANSFERRED from Respondent to Complainant.
Dated: December 30, 2009
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