Bridgestone Brands, LLC v. Above.com Domain Privacy
Claim Number: FA1206001451311
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 Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firestonecfna.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 29, 2012; the National Arbitration Forum received payment on June 29, 2012.
On July 2, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbi-tration Forum that the <firestonecfna.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 July 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2012 by which Re-spondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and bil-ling contacts, and to postmaster@firestonecfna.com. Also on July 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 1, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant holds the FIRESTONE name and mark, which for generations has been used in connection with the marketing of tires, as well as retail tire and automotive maintenance and repair store services and rubber products.
Complainant has registered the FIRESTONE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 140,804, registered March 29, 1921).
Complainant’s sister company, Credit First National Association (“CFNA”), issues private-label credit cards for a number of retailers, including FIRE-STONE COMPLETE AUTO CARE stores.
CFNA has registered the CFNA service mark with the USPTO as Registry Number 1,883,103, registered March 7, 1995.
Respondent registered the disputed domain name on February 7, 2012.
Respondent’s <firestonecfna.com> domain name is confusingly similar to Complainant’s FIRESTONE mark.
Respondent uses the disputed domain name to operate a pay-per-click web-site featuring links that resolve to the websites of Complainant’s competitors.
Respondent generates income through the operation of its website.
Respondent has not been commonly known by the disputed domain name.
Respondent is not using the disputed domain name to make a bona fide of-fering of goods or services or a legitimate noncommercial or fair use.
Respondent has neither any rights to nor any legitimate interests in the con-tested domain name.
Respondent’s operation of the website resolving from the disputed domain name disrupts Complainant’s business.
Respondent uses the domain name to attract Internet users to its website, for its commercial gain, by creating a likelihood of confusion with Complainant and its FIRESTONE mark as to the possibility of Complainant’s sponsorship, affiliation, and/or endorsement of that website.
Respondent knew of Complainant’s rights in the FIRESTONE mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the FIRESTONE trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of the DISNEY trademark with the USPTO is sufficient to prove that that complainant has rights in the mark under Policy ¶ 4(a)(i)).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <firestonecfna.com> domain name is confusingly similar to Complainant’s FIRESTONE trademark under Pol-icy ¶ 4(a)(i). The domain name includes the entire FIRESTONE mark, together with a mark owned by one of its sister companies, CFNA, which is also a regis-tered mark. The disputed domain name also includes the generic-top level do-main (“gTLD”) “.com.” These alterations of the mark, made in creating the do-main name, do not remove the domain name from the realm of confusing simi-larity is confusingly similar to Complainant’s FIRESTONE mark under the stand-ards of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also G.D. Searle & Co. v. Para-mount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the ad-dition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name. Moreover, there is nothing in the record to suggest that Complainant has ever authorized Respondent to employ its FIRESTONE trademark, whether in a domain name or otherwise. And the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Above.com Domain Privacy,” which does not resemble the contested domain name. On this record, we con-clude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name within the con-templation of Policy ¶ 4(c)(ii) where there was no evidence in the record indicat-ing that that respondent was commonly known by the disputed domain name).
We next observe that Complainant also asserts, without objection from Respond-ent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Re-spondent uses the disputed domain name to operate a pay-per-click website featuring links to the websites of Complainant’s commercial competitors, from visits to which by Internet users Respondent generates click-through revenues. This 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name … currently resolves to a website displaying Complainant’s marks and contains links to Complain-ant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied Policy 4(a)(ii).
Respondent’s operation of the website resolving from the disputed domain name, in the manner described in the Complaint, disrupts Complainant’s business. This stands as evidence that Respondent registered and uses the contested domain name in find bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
In addition, it is plain from the record that Respondent uses the contested domain name <firestonecfna.com>, which is confusingly similar to Complainant’s FIRE-STONE trademark, to attract Internet users to its resolving website, for its com-mercial gain, by creating a likelihood of confusion among users as to the possi-bility of Complainant’s sponsorship or endorsement of Respondent website. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See 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 web-site which features links to competing … comercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv).
Finally under this head of the Policy, we are persuaded from the evidence that Respondent knew of Complainant’s FIRESTONE mark when it registered the disputed domain name. This is made clear by Respondent’s act of appending the related CFNA service mark to the FIRESTONE trademark in forming the domain name, which stands as further evidence of bad faith registration and use of the domain name. See, for example, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith where that re-spondent had "actual knowledge of Complainant's mark when registering the dis-puted domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <firestonecfna.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 14, 2012
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