national arbitration forum

 

DECISION

 

Bridgestone Brands, LLC v. Alexander / Tornado

Claim Number: FA1101001367353

 

PARTIES

Complainant is Bridgestone Brands, LLC (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA.  Respondent is Alexander / Tornado (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <firestonecreditcard.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2011; the National Arbitration Forum received payment on January 13, 2011.

 

On January 13, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <firestonecreditcard.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@firestonecreditcard.org.  Also on January 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 10, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <firestonecreditcard.org> domain name is confusingly similar to Complainant’s FIRESTONE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <firestonecreditcard.org> domain name.

 

3.    Respondent registered and used the <firestonecreditcard.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Bridgestone Brands, LLC, is an international manufacturer and seller of a wide array of consumer and commercial products, including tires, industrial products, textiles, roofing and building products, and polymers.  Complainant, by and through its related companies, has also offered credit card services under its FIRESTONE mark for many years.  Complainant’s FIRESTONE mark is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 140,804 issued March 29, 1921). 

 

Respondent, Alexander / Tornado, registered the disputed domain name on December 11, 2010.  The disputed domain name resolves to a website that prominently displays Complainant’s FIRESTONE mark and logo and the tagline “Convenient & secure banking with Firestone Credit card.”  The resolving website purports to offer information about Complainant’s FIRESTONE credit card services, but is actually displays incorrect information about Complainant’s credit card services.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in its FIRESTONE mark by virtue of its registration of the mark with the USPTO (e.g., Reg. No. 140,804 issued March 29, 1921).  The Panel finds that Complainant’s longstanding registration of its FIRESTONE mark is conclusive evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).”).  The Panel also finds that Respondent’s residence in a country outside the jurisdiction where Complainant’s mark is registered is not relevant to a determination of Complainant’s rights in the mark.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). 

 

Complainant argues that Respondent’s <firestonecreditcard.org> domain name is confusingly similar to Complainant’s FIRESTONE mark.  The disputed domain name contains Complainant’s entire FIRESTONE mark along with the terms “credit” and “card,” which aptly describe one of Complainant’s many offerings under its mark, and adds the generic top-level domain (“gTLD”) “.org.”  The Panel finds that the addition of words descriptive of Complainant’s business do not sufficiently distinguish the disputed domain name from Complainant’s mark.  See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  The Panel also finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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.”).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <firestonecreditcard.org> domain name is confusingly similar to Complainant’s FIRESTONE mark.

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  The Panel finds that Complainant has made a prima facie case in support of that allegations so that, pursuant to Policy ¶ 4(a)(ii), the burden of proof as to rights and legitimate interests in the disputed domain name effectively shifts to Respondent.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”).  Respondent has not submitted a Response to these proceedings which allows the Panel to infer that Respondent does in fact lack rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) in order to make a complete determination as to whether Respondent has rights or legitimate interests in the disputed domain name. 

 

Complainant argues that Respondent is not, and has not been, commonly known by the disputed domain name.  Complainant further argues that nothing in the WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name and Complainant has not authorized Respondent to use Complainant’s FIRESTONE mark.  The WHOIS information indicates that the registrant of the disputed domain name is “Alexander / Tornado.”  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant indicates that Respondent’s disputed domain name resolves to a website that prominently features Complainant’s FIRESTONE mark and logos and purports to provide information about Complainant’s credit card services.  The Panel finds that Respondent is attempting to pass itself off as Complainant and that use of a confusingly similar domain name for such a purpose is not 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

The Panel finds that Policy ¶ 4(a)(ii) is satisfied. 

 

Registration and Use in Bad Faith

 

Complainant presumes that Respondent profits in some way from the website resolving from the disputed domain name, either directly or indirectly by gathering information from Complainant’s customers.  Therefore, Complainant argues, and the Panel agrees, that Respondent registered and is using the disputed domain names to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant and its FIRESTONE mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s disputed domain name.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Additionally, Complainant argues that Respondent’s resolving website prominently displays Complainant’s FIRESTONE mark and logos and purports to offer information about Complainant’s credit card services.  The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).

 

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <firestonecreditcard.org> domain name be TRANSFERRED from Respondent to Complainant. 

 

James A. Carmody, Esq., Panelist

Dated:  February 14, 2011

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page