Tire Discounters, Inc. v. TireDiscounter.com
Claim Number: FA0604000679485
Complainant is Tire Discounters, Inc. (“Complainant”), represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is TireDiscounter.com (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tirediscounter.com>, registered with Moniker Online Services, Inc.
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.
James A. Carmody, Steven L. Schwartz and Mark McCormick as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 18, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <tirediscounter.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 9, 2006.
A timely Additional Submission was received from Complainant on May 14, 2006 in accordance with The Forum’s Supplemental Rule #7.
A timely Additional Submission was received from Respondent on May 19, 2006 in accordance with The Forum’s Supplemental Rule #7.
On May 31, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James A. Carmody, Steven L. Schwartz and Mark McCormick as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant – Tire Discounters, Inc.
Complainant contends it has established rights in the TIREDISCOUNTERS mark through continuous and extensive use of the mark in connection with its retail tire store services since 1977. Complainant contends that the mark has established secondary meaning sufficient to satisfy Policy ¶4(a)(i). Complainant also asserts it established rights in the TIREDISCOUNTERS name by registering its mark with the United States Patent and Trademark Office. Complainant contends that the <tirediscounter.com> domain name is confusingly similar to Complainant’s mark pursuant to policy 4(a)(i) since Respondent’s domain name incorporates Complainant’s registered TIREDISCOUNTERS mark in its entirety, omitting only the letter “s” from Complainant’s mark and adding the top-level domain “.com.”
Complainant contends that Respondent’s use of the <tirediscounter.com> domain name is likely to cause “initial interest confusion” between Complainant’s mark and Respondent’s domain name by luring consumers to Respondent’s website and promoting goods and services that are directly competitive with Complainant’s goods and services. Complainant asserts that Respondent’s use of the domain name to attract Internet users will lead customers to believe that Complainant and Respondent are somehow connected when they are not.
Complainant contends that Respondent has no rights or legitimate interests in the domain name because Respondent has no relationship with Complainant and has not been given permission to use the name. Complainant alleges that Respondent is using Complainant’s mark for the illegitimate purpose of confusing customers and attracting them to paid advertising links relating to the term “tire, including tire-related merchandise.”
Complainant contends Respondent registered and uses the <tirediscounter.com> domain name in bad faith because it is using the <tirediscounter.com> domain name for commercial gain by diverting Internet users interested in Complainant’s products and services to Respondent’s website featuring competing products and services. This use of the <tirediscounter.com> domain name for commercial gain is a bad faith use under Policy ¶4(b)(i)(b).
B. Respondent - TireDiscounter.com
Respondent contends that Complainant does not have enforceable trademark rights to the term Tire Discounters because the term is merely descriptive, as confirmed by Complainant in a document filed with the Patent and Trademark Office (“PTO”) and, furthermore, Complainant expressly disclaimed the exclusive right to use Tire Discounters. Respondent contends that the mark is so weak that the added “s” and the design element of Complainant’s mark makes Complainant’s mark sufficiently different from the <tirediscounter.com> domain name that the domain name is not confusingly similar to Complainant’s mark.
Respondent also contends that Respondent has rights and a legitimate interests in the disputed domain name because Complainant’s mark is comprised of generic and/or common descriptive terms and is not exclusively associated with Complainant’s business. In addition, Respondent relies on Complainant’s admission that the words are descriptive. Respondent alleges that because the domain name incorporates a common term, the posting of related advertising links constitutes use of the domain name for the bona fide offering of goods and services, demonstrating Respondent’s legitimate use of the domain name within the meaning of Policy ¶4(a)(ii).
Respondent denies that it registered the domain name in bad faith and asserts it had no knowledge about Complainant’s mark when it registered the disputed domain name. Respondent contends that even if it had knowledge of Complainant’s mark when it registered the domain name the disclaimer in the mark was sufficient to constitute permission to register a domain name containing the term. Respondent contends that this is a case of “reverse domain name hijacking.”
C. Additional Submissions
Complainant in its additional submission relies on its trademark registration and allegation that the descriptive mark is protectable by virtue of its acquired distinctiveness and secondary meaning. Complainant points out that it has filed an application for the mark TIREDISCOUNTERS (words only) registration, supported by affidavit, and contends that the TIREDISCOUNTERS mark has become distinctive of Complainant’s services. Complainant repeats its contentions that the domain name is a blatant attempt by Respondent to divert Internet traffic intended for Complainant to Respondent’s website. Complainant adds that Respondent has confirmed its bad faith by adding a “retaliatory” link to its <tirediscounter.com> website which provides links to Complainant’s direct competitors in Cincinnati, Ohio. Respondent in its additional submission repeats its previous contentions and asserts that the alleged retaliatory link was not placed there by Respondent but by domain sponsor technology as part of the sponsor’s regular services.
Complainant has operated a retail business involving the repair, sale and installation of motor vehicle tires since 1977 and registered the stylized TIREDISCOUNTER mark with the PTO in 1995. Since 1997, Complainant has operated a website at <tirediscounters.com> which provides additional information about the retail store locations and other information about Complainant’s business. Complainant operates its tire retail stores in Kentucky, Ohio and Indiana. In its registration of the mark, Complainant disclaims the term “Tire Discounters.” The mark expressly states: “No claim is made to the exclusive right to use “Tire Discounters” apart from the mark as shown.” Complainant’s pending application for approval of registration of the term “Tire Discounters” was initially refused. Complainant in that proceeding admitted that its mark, when taken as a whole, is merely descriptive of its services. The mark is being permitted to be registered by the PTO based on acquired distinctiveness.
Respondent acquired the disputed domain name on February 20, 2000 after the prior registrant failed to renew it. Respondent selected the domain because it incorporates the descriptive term “Tire Discounter.” Respondent had no knowledge of Complainant’s trademarks when it registered the disputed name and hosts the disputed domain on a website that provides sponsored links related to discount tires.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant in its PTO filings disclaimed the exclusive right to use the term TIREDISCOUNTERS in its registered trademark and expressly admitted its mark is descriptive. Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002). The omission of the letter “s” from the mark is one of those small differences that matters in this context. Complainant has failed to meet its burden to establish that Respondent’s <tirediscounter.com> domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶4(a)(i). See Men’s Warehouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002).
Respondent has persuasively shown that its <tirediscounter.com> domain name is comprised of common terms and, in any event is not exclusively associated with Complainant. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001). Respondent has also demonstrated it has rights and legitimate interests in the disputed domain name because it is using the domain name to make a bona fide offering of goods and services. See Funskool (India) Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000).
Respondent has rights and legitimate interests in the domain name within the meaning of Policy ¶4(c)(ii).
Respondent did not know of Complainant’s use of the TIREDISCOUNTERS mark at the time Respondent registered its <tirediscounter.com> domain name. Respondent was offering services under the domain name prior to the initiation of the dispute and has rights or legitimate interests in using the <tirediscounter.com> domain name. Moreover, it was Respondent’s website sponsor rather than Respondent that established a click through link to competitors of Complainant in Cincinnati. The record shows Respondent was using the descriptive domain name <tirediscounter.com> to lead consumers to retail discounters of tire products in good faith. Complainant has not established that Respondent registered or used the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000).
Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Mark McCormick, Chair
James A. Carmody, Steven L. Schwartz and Mark
Dated: June 14, 2006
National Arbitration Forum