national arbitration forum

 

DECISION

 

The Tire Network, Inc. v. Whois Watchdog         

Claim Number: FA1202001430092

 

PARTIES

Complainant is The Tire Network, Inc. (“Complainant”), represented by Joseph D. Hooe, Maryland, USA.  Respondent is Whois Watchdog (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thetirenetwork.com>, registered with TUCOWS, INC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received payment on February 28, 2012.

 

On February 17, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <thetirenetwork.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@thetirenetwork.com.  Also on March 2, 2012, 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 April 4, 2012, 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.

 

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

a.    Complainant has rights in its THE TIRE NETWORK mark by registering the mark with the State of Maryland (Reg. No. 1998/00619 registered April 1, 1998).

b.    Complainant is engaged in the sale, service, and installation of tires, and operates its business through the Internet and traditional retail outlets.

c.    Respondent, Whois Watchdog, acquired the <thetirenetwork.com> domain name after a former employee allowed the Complainant’s registration of the domain name to lapse.

d.    Respondent’s domain name is confusingly similar to the THE TIRE NETWORK mark.

e.    Respondent does not have permission to use the THE TIRE NETWORK mark in any way, and is not affiliated with Complainant’s business.

 

 

B. Respondent

      Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

1.     Complainant has rights in THE TIRE NETWORK mark.

2.    The Respondent has no rights to or legitimate interests in <thetirenetwork.com> domain name.

3.    Complainant’s mark and the disputed domain name are identical.

4.    Respondent registered and used the disputed domain name in bad faith.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant does not have a registration for its THE TIRE NETWORK mark through a national trademark registration authority; however, the Complainant is not required to register a service mark through a government authority for rights to exist under the Rules, if the Complainant has established common law rights in its mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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).

 

Complainant argues that it has rights in its THE TIRE NETWORK mark by its common law rights in the mark because it has used the mark in its business since 1998. The only evidence of this claim supplied by Complainant is a state of Maryland trademark registration for THE TIRE NETWORK (Reg. No. 1998/00619, registered April 1, 1998).  In Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007), the panel held that the complainant had established common law rights in its mark by using it before the respondent registered the disputed domain name. Similarly, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found common law rights existed in the complainant’s mark when it had used the mark in commerce long before the respondent registered the disputed domain name. The Panel finds that Complainant has common law rights in the THE TIRE NETWORK mark under Policy ¶ 4(a)(i). The Panel finds that Complainant has provided sufficient evidence of rights in its mark through an established secondary meaning.

 

Complainant argues that the <thetirenetwork.com>  domain name is confusingly similar to its THE TIRE NETWORK mark. The Panel finds that because the domain name uses the mark in its entirety, while removing the spaces between the words and adding only the generic top-level domain (“gTLD”) “.com,” the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under 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.”).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).

 

Complainant argues that Respondent is not commonly known by the <thetirenetwork.com>  domain name. While Complainant provides no evidence supporting this allegation, the Panel notes that the WHOIS information identifies the domain name registrant as “Whois Watchdog,” which the Panel determines does not support a finding that Respondent is commonly known by the disputed domain name 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 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 argues that Respondent is not using the disputed domain name in a manner constituting a bona fide offering of goods or services, or a legitimate noncommercial or fair use because it claims that Respondent’s domain name corresponds to a website that lists external links to automotive-related services in competition with Complainant’s business. The Panel notes that Complainant does not provide any evidence to support this claim.  However, the Panel finds that Respondent is not making a bona fide offering of goods or services through the domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)).  

 

Complainant asserts that it previously held the domain name, but through an employee’s unauthorized account changes, Complainant failed to renew the domain name and lost it. The Panel may find that because Complainant had a prior registration of the domain name, and because Respondent failed to respond to these proceedings, Respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Earth Forums v. Yi, FA 143702 (Nat. Arb. Forum Mar. 7, 2003) (holding that the respondent’s immediate registration of the disputed domain name after the complainant’s registration expired, in light of the fact that other domain names incorporating the complainant’s mark with a different generic top-level domain were available for registration at the time that the respondent deliberately chose to register the complainant’s lapsed domain name, was evidence that the respondent lacked rights or legitimate interests in the domain name); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”).

 

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s disputed domain name capitalizes on the goodwill and reputation that Complainant’s business has built with its customers, which causes consumers confusion and misleads Internet users. Complainant provides no evidence to demonstrate that Respondent uses the domain name to make a profit from confusing Internet users; however, the Panel finds that by using a confusingly similar domain name to attract consumers to its own website, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). 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).

 

Complainant contends that because it previously used the <thetirenetwork.com>  domain name which it had unintentionally allowed to expire, Respondent’s ensuing registration of the domain name demonstrates bad faith. The panels in Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003), and RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) found that when a complainant’s domain name expires, respondent’s subsequent registration of the same domain name is evidence of bad faith registration under Policy ¶ 4(a)(iii). The Panel holds that because Respondent registered the domain name after it had lapsed for the Complainant, Respondent’s registration was in bad faith pursuant to Policy ¶ 4(a)(iii).

Complainant asserts that its trademark for the THE TIRE NETWORK mark existed before Respondent registered the domain name. Complainant argues that Respondent has constructive knowledge of Complainant's claims to the mark. Previous panels have held that constructive notice is insufficient to find bad faith; however, this Panel finds that Respondent had actual notice in Complainant’s rights to the mark, and  that Respondent registered the <thetirenetwork.com>  domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

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 <thetirenetwork.com> domain name be TRANSFERRED from Respondent to Complainant .

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 15, 2012

 

 

 

 

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