Bridgestone Brands, LLC v. Global365 / Barry Peterson
Claim Number: FA1101001367397
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 Global365 / Barry Peterson (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firestone-coupons.com>, registered with eNom.
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.
Tyrus R. Atkinson, Jr., as Panelist.
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 14, 2011, eNom confirmed by e-mail to the National Arbitration Forum that the <firestone-coupons.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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@firestone-coupons.com. 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 Tyrus R. Atkinson, Jr., as Panelist.
Respondent sent to the Forum a document purporting to be an “Agreement.” There is no submission from Complainant indicating that the “Agreement” is genuine nor requesting that it be considered as part of this proceeding. The Panel does not find the “Agreement” to be a proper Response. This case will proceed as a case of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <firestone-coupons.com> domain name is confusingly similar to Complainant’s FIRESTONE mark.
2. Respondent does not have any rights or legitimate interests in the <firestone-coupons.com> domain name.
3. Respondent registered and used the <firestone-coupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bridgestone Brands, LLC, is part of the Bridgestone Group, 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 owns multiple trademark registrations for the FIRESTONE mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 140,804 issued March 29, 1921;
Reg. No. 1,178,631 issued November 17, 1981;
Reg. No. 1,387,468 issued March 25, 1986; and
Reg. No. 2,464,005 issued June 26, 2001.
Respondent, Global365 / Barry Peterson, registered the <firestone-coupons.com> domain name on September 17, 2010. The disputed domain name resolves to a commercial website featuring numerous pay-per-click link advertisements for a variety of websites, including some that compete with Complainant and some that claim to sell Complainant’s products.
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 owns multiple trademark registrations for the FIRESTONE mark with the USPTO:
Reg. No. 140,804 issued March 29, 1921;
Reg. No. 1,178,631 issued November 17, 1981;
Reg. No. 1,387,468 issued March 25, 1986; and
Reg. No. 2,464,005 issued June 26, 2001.
The Panel finds that a trademark registration with the USPTO provides conclusive evidence of Complainant’s rights in the FIRESTONE mark for the purposes of Policy ¶ 4(a)(i), regardless of where Respondent is located. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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 alleges that Respondent’s <firestone-coupons.com> domain name is confusingly similar to Complainant’s FIRESTONE mark because Respondent modifies Complainant’s mark only by adding a hyphen, the term “coupons,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a hyphen and a generic term like “coupons” to Complainant’s mark have no effect on preventing confusing similarity. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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.”); see also 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). The Panel accordingly finds that Respondent’s <firestone-coupons.com> domain name is confusingly similar to Complainant’s FIRESTONE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant is required by Policy ¶ 4(a)(ii) to put forth a prima facie case in regard to this assertion. Subsequently, the burden shifts to Respondent to demonstrate that it does possess rights and legitimate interests in the disputed domain name. In the instant proceedings, the Panel concludes that Complainant has sufficiently established a prima facie case. Respondent’s failure to respond results in an inference by the Panel that Respondent lacks any rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors in order to make an independent determination on whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant supports its argument against Respondent’s rights and legitimate interests with the assertion that Respondent is not commonly known by the <firestone-coupons.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Global 365/Barry Peterson,” a name which has no apparent connection to the disputed domain name. The Panel finds that the WHOIS information’s failure to nominally associate Respondent with the disputed domain name is evidence that Respondent is not commonly known by the <firestone-coupons.com> domain name and accordingly lacks rights and legitimate interests pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <firestone-coupons.com> domain name resolves to a commercial directory featuring sponsored pay-per-click link advertisements for directly competing websites and other commercial websites. The Panel finds that maintaining a directory page like this in connection with the disputed domain name fails to meet the requirements of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a Complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not 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).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant argues that Respondent’s <firestone-coupons.com> domain name redirects Internet users to a generic web page advertising other commercial websites that compete with Complainant. These links promoting other business’ goods disrupt Complainant’s business because the unwary Internet user may arrive at Respondent’s directory page and be directed away from Complainant, despite an initial intent to visit Complainant’s web page. The Panel finds that Respondent’s use of the disputed domain name to divert Complainant’s intending customers reveals bad faith registration and use according to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant asserts that Respondent’s use of Complainant’s well-known FIRESTONE mark in the <firestone-coupons.com> domain name is intended to attract Complainant’s customers attempting to reach Complainant’s website. After arriving on Respondent’s pay-per-click page, the Internet users convert into profit for Respondent by way of the “click-through” fees generated whenever they click on one of the displayed links. The Panel finds that Respondent’s efforts to mislead and attract Complainant’s customers to Respondent’s own website for its commercial gain demonstrate bad faith registration and use for the purposes of Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also 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).
The Panel finds 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 <firestone-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 24, 2011
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