Kal Tire, A Partnership v. Craig Howes
Claim Number: FA1602001659222
Complainant is Kal Tire, A Partnership (“Complainant”), represented by Theodore W. Sum of Smart & Biggar, Canada. Respondent is Craig Howes (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2016; the Forum received payment on February 2, 2016.
On February 02, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@gokaltire.com, postmaster@caltyre.com, postmaster@kaltyres.com, postmaster@mykaltire.com, postmaster@mykaltire.net, postmaster@mykaltyre.com. Also on February 3, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names are confusingly similar to Complainant’s KAL TIRE mark.
2. Respondent does not have any rights or legitimate interests in the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names.
3. Respondent registered and uses the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names in bad faith.
B. Respondent filed to file a Response in this proceeding.
Complainant uses the KAL TIRE mark in connection with its automobile and truck maintenance business that specializes in installing, repairing, and balancing tires. Complainant has registered the mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA417695, registered October 1, 1993).
Respondent registered the <gokaltire.com> domain name on August 20, 2012, the <mykaltire.com>, <mykaltire.net>, <caltyre.com>, and <mykaltyre.com> domain names on February 21, 2015, and the <kaltyres.com> domain name on March 30, 2015. Respondent uses the disputed domain names to resolve to websites containing hyperlinks to direct competitors of Complainant.
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(f), 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.”).
Complainant holds a registration for its KAL TIRE mark with CIPO. Past Panels have found that a valid CIPO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the KAL TIRE mark under Policy ¶ 4(a)(i).
Respondent’s <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names all incorporate Complainant’s mark and/or simply substitute one letter. Some of the domain names also include the generic terms “my” or “go.” The disputed domain names eliminate the space between the words in the mark and add the gTLDs “.com” or “.net.” Prior panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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 NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). Therefore, the Panel finds that Respondent’s <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names are confusingly similar to Complainant’s KAL TIRE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names and is not commonly known by the disputed domain names. The WHOIS information lists “craig howes” or “Craig Howes” as registrant of the disputed domain names. Complainant also asserts that it has not given Respondent permission to use its KAL TIRE mark. The Panel finds that there is nothing in the record to suggest that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names. Complainant contends that each domain name redirects to a website that says “This Web page is parked for FREE, courtesy of GoDaddy.com.” and contains hyperlinks that resolve to the websites of direct competitors of Complainant. The Panel notes that the links include: “Quality Tires and Rims,” “Car Tires,” and “Discount on Wheels & Tire.” Previous panels have found that such use by a respondent is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use, regardless of whether it posts the hyperlinks itself or allows the registrar to do so. 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); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Thus, the Panel finds that Respondent’s use of the disputed domain names to offer competing hyperlinks does not constitute a bona fide offering of goods or services or a legitimate or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has a pattern of domain name misuse as evidenced by Respondent’s current holding of several domain names containing Complainant’s KAL TIRE mark. Complainant contends that Respondent did not respond meaningfully to Complainant’s request to purchase the <kaltyre.com> domain name. The day after Complainant’s offer to purchase <kaltyre.com>, Respondent registered <caltyre.com>, <mykaltire.com>, <mykaltire.net>, and <kaltyres.com>, which are the subject of this dispute. The Panel agrees and finds that Respondent’s registration of several infringing domain names constitutes bad faith under Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Respondent’s use of the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names disrupts Complainant’s business by offering links to competing products and services. Prior panels have agreed that where a respondent has diverted Internet users to competitors of a complainant via hyperlinks, such use constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Thus, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Respondent has also attempted to attract Internet users to its sites for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that Internet user confusion results in clicking of the featured hyperlinks, which no doubt results in pay-per-click fees for Respondent. The Panel agrees and finds that this constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Panels have routinely found that a respondent is ultimately responsible for the use of their domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Complainant also contends that, in light of the fame and notoriety of Complainant's KAL TIRE mark, it is inconceivable that Respondent could have registered the <gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Since Respondent is directly competing with Complainant and, due to the timing of the registration, the Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names. Actual knowledge is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<gokaltire.com>, <caltyre.com>, <kaltyres.com>, <mykaltire.com>, <mykaltire.net>, and <mykaltyre.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 3, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page