TBC Retail Group, Inc. v. Gu Bei
Claim Number: FA1001001305344
Complainant is TBC
Retail Group, Inc. (“Complainant”), represented by Pallavi Mehta Wahi, of K&L Gates LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tirekindom.com>,
registered with
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2010.
On January 30, 2010, Hebei
International Trading (
On February 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2010 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@tirekindom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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
<tirekindom.com> domain name is confusingly similar to
Complainant’s
2. Respondent does not have any rights or legitimate interests in the <tirekindom.com> domain name.
3. Respondent registered and used the <tirekindom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TBC Retail Group, Inc.,
sells tires and provides installation and automotive services. Complainant has used its
Respondent, tirekindom.com, registered the <tirekindom.com> domain name on November 27, 2005. The disputed domain name resolves to a website containing a hyperlink directory, some of which resolve to Complainant’s competitors in the automotive products and services industry. Respondent has also made a general offer to sell the disputed domain name.
Respondent has been a respondent in multiple other UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases. See Disney Enters., Inc. v. Gu Bei, FA 1284140 (Nat. Arb. Forum Oct. 31, 2009); see also Am. Auto. Ass’n, Inc. v. Gu Bei, FA 1273425 (Nat. Arb. Forum Aug. 26, 2009).
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 holds multiple trademark registrations with the
USPTO for its
Respondent’s <tirekindom.com> domain name is confusingly similar to Complainant’s TIRE KINGDOM mark because Respondent’s disputed domain name is a simple misspelling of Complainant’s mark, removing the letter “g,” combined with the removal of a space and the addition of the generic top-level domain name (“gTLD”) “.com.” The Panel finds the misspelling of Complainant’s mark does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). The Panel further finds that the removal of a space and the addition of a top-level domain name is irrelevant in a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <tirekindom.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information lists Respondent as “tirekindom.com.” However, Respondent has offered no evidence further suggesting that Respondent is commonly known by the <tirekindom.com> domain name. Moreover, Complainant asserts that Respondent is not authorized to use the <tirekindom.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <tirekindom.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent’s <tirekindom.com> domain name resolves to a website featuring hyperlinks to Complainant’s competitors in the automotive products and services industry. Respondent presumably receives click-through fees from its use of the disputed domain name. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Respondent further offers the <tirekindom.com> domain name for sale. The disputed domain name is offered for sale through the website resolving from <sedo.com>, where Respondent solicits offers. The Panel finds an offer to sell the disputed domain name does not establish rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
In addition, Respondent’s use of the <tirekindom.com>
domain name, a common misspelling of Complainant’s
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <tirekindom.com>
domain name is a part of a pattern
of bad faith use and registration.
Respondent has been a respondent in multiple other UDRP
proceedings in which disputed domain names were transferred from Respondent to
the complainants in those cases. See Disney Enters., Inc. v. Gu Bei, FA 1284140 (Nat. Arb. Forum Oct. 31, 2009); see also Am. Auto. Ass’n, Inc. v. Gu Bei, FA 1273425 (Nat. Arb. Forum Aug. 26, 2009). The Panel finds this constitutes a pattern of
bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Respondent solicits offers in order to sell the <tirekindom.com> domain name. Respondent is attempting to sell the confusingly similar disputed domain name for more than Respondent’s out-of-pocket costs of registering the disputed domain name. The Panel finds Respondent’s attempt to sell the disputed domain name for more than its out-of-pocket costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent is using the <tirekindom.com> domain
name to resolve to a website featuring hyperlinks to Complainant’s competitors
in the automotive products and services industry. The Panel finds this use of a disputed domain
name that is confusingly similar to Complainant’s
The Panel presumes Respondent receives click-through fees
for the use of the disputed domain name to redirect Internet users, interested
in Complainant, to Respondent’s website containing links to Complainant’s
competitors. Therefore, the Panel finds
Respondent’s use of the disputed domain name constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through
its use of the <tirekindom.com> domain name, which is a common
misspelling of Complainant’s
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 <tirekindom.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 19, 2010
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