Reinalt-Thomas Corporation d.b.a Discount Tire v. Extreme Customs, LLC et al.
Claim Number: FA1709001749615
Complainant: Reinalt-Thomas Corporation d.b.a Discount Tire of Phoenix, AZ, United States of America
Complainant Representative: Ballard Spahr LLP Jessica A Wilson of Phoenix, AZ, United States of America
Respondent: Extreme Customs, LLC Tyler G. Reilly of Oshkosh, WI, United States of America
Respondent Representative: Dempsey Law Firm, LLP Heath G. Mynsberge of Oshkosh, WI, United States of America
REGISTRIES and REGISTRARS
Registries: Half Trail, LLC
Registrars: 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 Examiner in this proceeding.
Richard W. Hill, as Examiner.
Complainant Submitted: September 18, 2017
Commencement: September 19, 2017
Response Date: October 3, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the three elements listed below to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
URS Procedure 8.6 states:
“… if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.”
The Examiner will discuss the three elements of the URS in light of the burden of proof. This is, of course, without prejudice to what might be found in the course of a UDRP proceeding, which has a different standard of proof and allows greater opportunities for the presentation of the parties’ arguments.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant states that it does business as “Discount Tire”. It is the leading independent tire and wheel retailer in the USA and owns federal and common law rights to “DISCOUNT TIRE” and “DISCOUNT TIRE DIRECT” with rights that long predate the registration of the disputed domain name.
The registered domain name is clearly identical to Complainant’s mark. Respondent does not address this issue in its response. The Examiner determines that Complainant has satisfied its burden of proof for this element of the URS Procedure.
Registrant has no legitimate right or interest to the domain name
Complainant states that Respondent sells tires and wheels under the trade name “Extreme Customs,” but uses DISCOUNTTIRE.DIRECT to redirect consumers to Respondent’s competing ecommerce platform, EXTREMECUSTOMS.COM. Registrant’s business name bears no relationship to the subject URL or the Trademarks. It is simply diverting Internet traffic using Complainant’s Trademarks to point consumers to EXTREMECUSTOMS.COM.
Respondent states that its business has grown to where it is the largest aftermarket wheel and tire company in Wisconsin. Respondents sell tires for a discount directly to the consumer every day of the week. Because of its business of selling discount tires, Respondent purchased the domain name “discounttire.direct.” Respondent’s purpose in registering the domain name is evident to continue to sell tires directly to the consumer at a discount. Respondent does not hold itself out as being “Discount Tire” or “Discount Tire Direct.” It does not, in any way, seek to benefit from whatever “fame” Complainant has generated for itself with its mark.
According to Respondent, its actions are permitted pursuant URS section 5.7.1. Prior to the dispute, Respondent was using the domain name with a bona fide purpose of offering goods and services by selling tires directly to consumers for “the best prices” or at a "discount." Thus, Respondent has a legitimate interest in the domain name because the domain is a generic or descriptive term that describes the product that Respondents sell; discounted tires that are sold directly to consumers. Respondent cites Eauto, LLC v. Triple S Auto Parts, (WIPO March 24, 2000) (“eautolamps”, which was similar to the complainant’s “EAUTO” mark was an example of a domain that describes the product Respondent sold, which he had a legitimate interest in because he sold auto lamps online.)
Moreover, says Respondent, the term “discount tire” is so generic that there really is no better way to describe what it is that Respondent does.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, rights or legitimate interests in a domain name can be found based on its dictionary meaning, in particular if the domain name is genuinely used in connection with the relied-upon dictionary meaning.
In light of the above, the Examiner finds that Complainant has failed to satisfy its burden of providing clear and convincing evidence to support its allegations to the effect that Respondent has no legitimate right or interests to the disputed domain name.
The domain name(s) was/were registered and is being used in bad faith
Complainant alleges that Respondent disrupts its business for commercial gain, because as a direct competitor with no legitimate interest in DISCOUNTTIRE.DIRECT, Respondent’s only purpose is to attract Complainant’s customers to purchase tires and wheels from Respondent, not Complainant.
Respondent states that it is using the domain “discounttire.direct” to direct users to its primary business website because the domain name is a generic description of the products that Respondent sells, and it is not a clear reference to Complainant’s business. Further, Respondent did not use the domain name to attract, for commercial gain, internet users to its website or other online location by creating a likelihood of confusion with the complainant's mark about the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location. Respondent has put nothing on its website to confuse consumers about the source of products. Respondent proudly posts a list of providers for tires, which does not include Complainant Discount Tire. Moreover, Respondent does not have the words “Discount Tire” anywhere on its website, and this so as to ensure consumers are not confused about the source of the products. A person seeking to purchase discount tires will be able to do so when they shop with Respondent and, at no time, will there be any confusion with whom they are shopping. There is simply no likelihood of confusion with the use of the domain by Respondent.
As already noted, the Examiner has determined that Complainant has failed to satisfy its burden of providing clear and convincing evidence to support its allegations to the effect that Respondent has no legitimate right or interests to the disputed domain name. Consequently, the Examiner determines that Complainant has failed to satisfy its burden of providing clear and convincing evidence to support its allegations to the effect that Respondent is using the disputed domain name in bad faith as alleged by Complainant.
Complainant states that Respondent owns over five hundred domain names, including prominent competitors’ business names. As but one example, Registrant uses TIRERACKFORUM.COM to redirect to EXTREMECUSTOMS.COM. Tire Rack is a several billion dollar-a-year online tire retailer, the largest in the Country. So Respondent serially registers competitors’ trademarks as domain names for commercial gain.
Respondent states that there is no pattern of conduct by Respondent in this regard. The lone fact that Respondent has registered TIRERACKFORUM.com does not render this a "pattern." Numerous panels have found that two to three registrations is not sufficient to establish a pattern of bad faith. See Ingersoll-Rand Co. v. Gully, (WIPO Mar. 9, 2000); Bellevue Square Managers, Inc. v. Redmond Web, (WIPO Mar. 27, 2000). Since Complaint only mentioned one other potentially suspicious registration it failed to establish a pattern of bad faith by Complainant.
The Examiner notes that Complainant does provide a very long list of domain names registered by Respondent. But he also notes that, at first glance, most if not all of those domain names appear to consist of generic terms.
Consequently, the Examiner finds that Complainant has failed to satisfy its burden of providing clear and convincing evidence to support its allegations to the effect that Respondent has engaged in a pattern of registering domain names in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name.
For the reasons given above, the Examiner determines that Complainant has not met its burden of proof for this element of the URS Procedure.
The Examiner finds that the Complaint was not brought in an abuse of this proceeding and that it did not contain material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be returned to the control of Respondent:
1. discounttire.direct
Richard W. Hill, Examiner
Dated: October 4, 2017
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