Bridgestone Brands, LLC v. Jose Corral II
Claim Number: FA1102001371311
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 Jose Corral II (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com>, registered with Godaddy.Com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2011; the National Arbitration Forum received payment on February 4, 2011.
On February 5, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. 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 February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@firestoneblog.com, postmaster@firestonelied.com, postmaster@firestonehorrorstories.com, postmaster@firestonehorrorstory.com, postmaster@firestonesucks.net, and postmaster@firestonesucksblog.com. Also on February 8, 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 March 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com> domain names are confusingly similar to Complainant’s FIRESTONE mark.
2. Respondent does not have any rights or legitimate interests in the <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com> domain names.
3. Respondent registered and used the <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bridgestone Brands, LLC, is an international manufacturer and seller of tires, textiles, roofing and building products, and industrial products. Complainant owns the FIRESTONE mark and has used the mark for over a century in connection with its tires, automotive maintenance and repair stores, rubber, and other products. Complainant holds numerous trademark registrations for its FIRESTONE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 140,804 issued March 29, 1921).
Respondent, Jose Corral II, registered the disputed domain names on December 7, 2010. The disputed domain names resolve to directory websites featuring links to third-party sites, some of which directly compete with Complainant’s tire business.
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 maintains that it has established rights in its FIRESTONE mark. Prior panels have determined that a complainant may establish rights in a mark through federal trademark registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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.”) Here, Complainant holds numerous trademark registrations for its FIRESTONE mark with the USPTO (e.g., Reg. No. 140,804 issued March 29, 1921). The Panel concludes that Complainant has demonstrated its rights in the FIRESTONE mark through its trademark registration under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to its FIRESTONE mark. The disputed domain names all use the FIRESTONE mark in its entirety. The disputed domain names merely differ through the addition of the generic top level domain (“gTLD”) “.com” or “.net” and the generic words “blog”, “lied”, “horror stories”, “horror story”, and “sucks.” The Panel finds that the addition of generic words fails to properly distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel also finds that the affixation of a gTLD does not overcome a finding of confusing similarity. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s FIRESTONE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel expressed 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. Here, Complainant has made a prima facie case in support of its claims against Respondent. Given the fact that Respondent chose not to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will look to the record first in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by any of the disputed domain names. The WHOIS information in the record identifies Respondent as “Jose Corral II,” which is not similar to the disputed domain names. Complainant additionally argues that is has never authorized Respondent to use its FIRESTONE mark in the disputed domain name or in any manner. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) as there is no apparent evidence in the record that indicates otherwise. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The disputed domain names resolve to directory websites which feature third-party links, some of which are in direct competition with the tire sales and manufacture portion of Complainant’s business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain names to reroute Internet users to Complainant’s competitors, or even unrelated sites, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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)).
Complainant alleges that Respondent is attempting to sell the disputed domain names. The websites display the statement “Want to buy this domain?” and then a provide a link for interested purchasers. The Panel finds that Respondent’s general offer to sell the disputed domain names to the public is further evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent has offered to sell the disputed domain names to the public. The resolving websites state “Want to buy this domain name?” along with a link to help Internet users get the domain name. The Panel finds that such an open attempt to sell the disputed domains is evidence of bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that Respondent’s use of the disputed domain name disrupts its business. The disputed domain names resolve to website featuring a directory of third-party links, some of which directly compete with Complainant by offering similar tire related products and services. Internet users intending to purchase from Complainant may find Respondent’s website instead and purchase from a competitor as a result. The Panel finds that Respondent’s use of the confusingly similar disputed domain names does disrupt Complainant’s business which constitutes bad faith use and registration pursuant 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).
The Panel infers that Respondent receives click-through fees from the aforementioned third-party links. Internet users searching online for Complainant may find Respondent’s websites due to the confusingly similar disputed domain names. Users may be misled as to Complainant’s sponsorship of, or affiliation with, the disputed domain names, resolving websites, or even the services offered by third-party links. Respondent attempts to profit from this misperception through the receipt of click-through fees. The Panel finds that Respondent’s use of the disputed domain names constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firestoneblog.com>, <firestonelied.com>, <firestonehorrorstories.com>, <firestonehorrorstory.com>, <firestonesucks.net>, and <firestonesucksblog.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 8, 2011
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