Bridgestone Brands, LLC v. EDGELYNE RODRIGUEZ
Claim Number: FA1310001524580
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 EDGELYNE RODRIGUEZ (“Respondent”), Phillippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <firestoneroofingproducts.com>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2013; the National Arbitration Forum received payment on October 15, 2013.
On October 16, 2013, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <firestoneroofingproducts.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2013 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@firestoneroofingproducts.com. Also on October 16, 2013, 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 November 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not and has not been commonly known by FIRESTONE or “Firestone Roofing Products.”
ii. Respondent registered and is using the domain name for a commercial pay-per-click website that features sponsored-link advertisements for various websites.
i. Respondent uses the domain name to disrupt Complainant’s business by operating a website featuring links to third-party websites.
ii. Respondent uses the domain name to intentionally attract, for commercial gain, 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 and/or Respondent’s pay-per-click website associated with the domain name.
iii. There is no question that Respondent had knowledge of Complainant’s rights in its FIRESTONE mark when it registered the domain name.
B. Respondent
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 is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FIRESTONE mark (e.g., Reg. No. 1,445,182, registered June 30, 1987).
Respondent, EDGELYNE RODRIGUEZ, registered the <firestoneroofingproducts.com> domain name on May 29, 2013. Respondent
uses the domain name for a commercial pay-per-click website that features sponsored-link advertisements for various websites.
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.”).
The Panel finds that Complainant has established rights in the FIRESTONE mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates so long as the complainant can show rights in the mark in some jurisdiction).
Complainant asserts that Respondent’s domain name <firestoneroofingproducts.com> is confusingly similar to Complainant’s FIRESTONE mark because it comprises Complainant’s mark in its entirety and the generic terms “roofing” and “products.” Respondent’s inclusion of generic terms to Complainant’s mark in its domain name is inconsequential to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Respondent includes the generic top-level domain (“gTLD”) “.com” in its disputed domain name. Respondent’s addition of a gTLD to Complainant’s mark in a domain name is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007)(the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel finds that Respondent’s <firestoneroofingproducts.com> domain name is confusingly similar to Complainant’s FIRESTONE mark pursuant to Policy ¶ 4(a)(i).
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.
Complainant alleges that Respondent is not and has not been commonly known by FIRESTONE or “Firestone Roofing Products.” Complainant argues that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the <firestoneroofingproducts.com> domain name and Complainant has not authorized Respondent to use its FIRESTONE mark. The WHOIS information for the disputed domain name identifies “EDGELYNE RODRIGUEZ” as the registrant. The Panel finds that Respondent is not commonly known by the <firestoneroofingproducts.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006)(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 respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent registered and is using the <firestoneroofingproducts.com> domain name for a commercial pay-per-click website that features sponsored-link advertisements for various websites. Respondent’s domain name resolves to a commercial website offering competing links titled “Firestone roofing,” “House repair,” “House Roofing,” and more. Respondent’s use of the disputed domain name to provide competing hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent uses the <firestoneroofingproducts.com> domain name to disrupt Complainant’s business by operating a website featuring links to third-party websites. Prior panels have held that a respondent’s use of a domain name to provide competing links demonstrates bad faith use and registration 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).”). Consequently, the Panel finds that Respondent registered and is using the <firestoneroofingproducts.com> domain name disruptively and in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent uses the <firestoneroofingproducts.com> domain name to intentionally attract, for commercial gain, 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 and/or Respondent’s pay-per-click website associated with the domain name. Presumably, Respondent commercially gains through its listing of competing links on its disputed domain name. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel held that “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).” Therefore, the Panel finds that Respondent is using the <firestoneroofingproducts.com> domain name in bad faith to attract Internet users to its own website, showing bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had knowledge of Complainant’s rights in its FIRESTONE mark when it registered the <firestoneroofingproducts.com> domain name. Complainant argues that Respondent’s knowledge of Complainant’s rights in the FIRESTONE mark is evidenced by Respondent’s use of copyright elements from Complainant’s own website, such as Complainant’s commercial roof installation photo, and Respondent’s use of Complainant’s FIRESTONE mark in its distinctive red color. The Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Therefore, Respondent registered the <firestoneroofingproducts.com> domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firestoneroofingproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 21, 2013
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