Transamerican Auto Parts Company, LLC v.
TireDiscounter.com
Claim Number: FA0608000778966
PARTIES
Complainant is Transamerican Auto Parts Company, LLC (“Complainant”), represented by Stephen M. Lobbin, of Foley & Lardner LLP, 2029 Century Park East, Suite 3500, Los Angeles, CA 90067. Respondent is TireDiscounter.com (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4wheelsparts.com>,
registered with Moniker Online Services,
Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Charles K. McCotter, Jr.,
Steven L. Schwartz and Dennis A. Foster as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 15, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 17, 2006.
On August 28, 2006, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <4wheelsparts.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 August 31, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 20, 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 postmaster@4wheelsparts.com by
e-mail.
A timely Response was received and determined to be complete on September
19, 2006.
On September 25, 2006, in accordance with the Forum’s Supplemental Rule
7, the Complainant submitted a timely Additional Submission in reply to the
Response. The Panel took the
Complainant’s Additional Submission into account in reaching its Decision.
On October 2, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon.
Charles K. McCotter, Jr., Steven L. Schwartz and Dennis A. Foster as Panelists.
Owing to the
difficult issues in this Case, the Panel has extended the due date of
this Decision by two weeks, i.e., until October 30, 2006.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns and has used continuously (through its predecessors)
the well-known 4WHEELPARTS trademarks and service marks (the “4WHEELPARTS
Marks”) in the United States and abroad for its retail and wholesale
distributorship services since 1970, including but not limited to the federally
registered 4WHEELPARTS marks noted above.
Respondent’s <4wheelsparts.com> domain name is confusingly
similar to the Complainant’s registered 4WHEELPARTS trademarks and service
marks-the only difference being the addition of “S” in WHEELS, and the addition
of the top-level domain name “.com”. It
is well-settled, however, that a top-level domain name does not factor into any
analysis under Policy paragraph 4(a)(i), and the addition or omission of an “S”
from a mark does not avoid the finding of confusing similarity.
To the best of Complainant’s knowledge and belief, Respondent has no
rights to any trademark consisting of the term “4WHEELPARTS” in the United
States or any country. Respondent has
no affiliation or relationship with Complainant, nor any legitimate reason or
purpose for using the 4WHEELPARTS marks in the disputed domain name.
Respondent does not commercially use the term “4WHEELPARTS”, and the
Complainant is unaware of any evidence to establish that Respondent is commonly
known as a business, or in any other manner, by its registered domain name.
Respondent is not making a legitimate noncommercial or fair use of the
disputed domain name.
Respondent’s use of the disputed domain name to operate a search engine
web site that features links to competing goods and services suggests that
Respondent registered the domain name to disrupt Complainant’s business.
Under paragraph 4(b)(iv) of the Policy, using a domain name to
intentionally attempt to attract, for commercial gain, Internet users to a
website by creating a likelihood of confusion with the Complainant’s mark is
evidence of bad faith registration and use.
B. Respondent
Respondent has a legitimate interest in the disputed domain name
because “4 wheels” is a common descriptive term, which is short for “4 wheel
vehicles,” and the descriptive term “4 wheel parts” refers to parts for 4 wheel
vehicles.
Where a trademark incorporates a descriptive term, as in the present
case, minor differences between a mark and a domain name are sufficient to
eliminate a finding of confusing similarity.
The registration of domain names like <4wheelsparts.com>
that contain common descriptive terms subject to third party use ipso facto
establishes the Respondent’s legitimate interest. Complainant’s registered marks both contain a disclaimer as to
“parts,” and a distinctiveness limitation as to the term “4 wheel parts”.
Respondent’s legitimate interest is bolstered by the fact that it uses
the disputed domain name to post advertising links for automobiles, which
relate to the automotive meaning of the domain name.
Respondent had absolutely no knowledge of Complainant’s alleged mark
when it acquired the disputed domain name.
Respondent simply registered it because it incorporated an undeniably
descriptive term to which Complainant does not have exclusive rights.
Absent direct proof that a descriptive term domain name was registered
solely for the purpose of profiting from Complainant’s trademark rights, there
can be no finding of bad faith registration and use.
There is no evidence that Respondent has intended to create consumer
confusion as is required under paragraph 4(b)(iv).
C. Additional Submissions
Given that Complainant is the market leader in the industry and has 48
retail stores across the U.S. – four of which are in Florida where the
Respondent purports to be located – it is inconceivable that Respondent was
unaware of the Complainant.
Respondent’s only business is typo squatting well-known marks and
generating pay-per-click advertising revenues.
Respondent attempts to create issues where none exist by attacking the
strength of Complainant’s mark and attempting to infer a narrow scope of
protection. However, Respondent’s
arguments are entirely undermined by U.S. trademark laws, which mandate that a
registration on the Principal Register is prima facie evidence that the mark is
valid, distinctive, and the exclusive right of Complainant.
The Respondent has a pattern of registering domain names with the hopes
of profiting from the resulting confusion.
FINDINGS
The Complainant owns the service mark 4 WHEEL
PARTS: U.S. service mark registration no. 2937233 dated April 5, 2005 in
international class 035 for retail store services, wholesale store and
distributorship services featuring automobile vehicle parts and
accessories. The Complainant uses this
service mark to sell branded automotive parts to owners of 4 wheel drive
vehicles. In addition to its Internet websites that use its service mark,
the Complainant also operates stores throughout the United States, including in
Florida where the Respondent is located.
The Respondent registered the disputed domain
name, <4wheelsparts.com>, on January 2, 2005. The Respondent uses this domain name to lead
the Internet navigator to sellers of parts for 4 wheel drive vehicles. These sellers are in competition with the Complainant. The Panel infers that the Respondent derives
income from this click-through service.
In addition to being the Complainant’s
registered service mark, the Panel finds that “4 wheel parts” and “4 wheels
parts” have a common descriptive English language meaning, i.e., parts for
vehicles equipped with 4 wheel drive.
DISCUSSION
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.
As we stated supra in the Findings section,
the Complainant owns a United States service mark for 4 WHEEL PARTS. The Respondent registered the disputed
domain name <4wheelsparts.com>.
As the Complainant argues, it is well-settled under the Policy that
minor changes to a trademark, such as making the singular plural, will still
lead to a finding of confusing similarity. See Nat’l Geographic Soc’y v. Stoneybrook Inv., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (where the Panel found the disputed domain name <nationalgeographics.com> was
confusingly similar to the trademark NATIONAL GEOGRAPHIC); see also Gurney’s Inn Resort & Spa Ltd. v.
Whitney, FA 140656 (Nat. Arb. Forum Feb19, 2003).
The Respondent has pointed out that the
Complainant’s service mark was registered with
a disclaimer for “parts” and with a distinctiveness limitation for “4
wheels”. The Respondent argues that
when a trademark is primarily descriptive, as 4 WHEEL PARTS is, even small
changes such as making the singular plural can cure confusing similarity. The Panel chooses not to adopt the
Respondent’s argument because it is outside the mainstream of Policy decisions:
these find that a minor change such as changing a singular into a plural still
leads to confusing similarity under paragraph 4(a)(i) of the Policy. The strength or weakness of the Complainant’s
trademark does not matter. It is enough
that the Complainant shows trademark rights, weak or strong, in the disputed
domain name. For this purpose,
Complainant’s U.S. service mark registration is conclusive evidence. See
Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002).
The Panel finds the Complainant has satisfied its burden of proof under
paragraph 4(a)(i) of the Policy.
Rights and
Legitimate Interests
This case presents the common problem of a portal domain that resolves to a referring site whereby the domain owner engages in a commercial activity of receiving click-through income; and without actually engaging in the business(es) that are advertised on that website. Here, Respondent is employing this business approach. In and of itself, this kind of business activity has passed the muster of constituting a legitimate business activity thereby conferring upon its purveyor the characterization of having legitimate interests and rights in the domain. However, under the circumstances of this case, the Panel finds that Respondent was conducting its business in a way that was intended to trade off of Complainant’s mark, and as a result was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding Respondent’s use of the disputed domain name to redirect Internet users to web sites unrelated to Complainant’s mark, web sites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own web site, which contained a series of hyperlinks to unrelated web sites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
The disputed domain name was
originally registered using a privacy service that concealed the identity of
Respondent. However, upon the
instatement of this proceeding, it was confirmed that TireDiscounter.com of
Palm Beach Gardens, Florida is the registrant of the disputed domain name. Although Respondent contests the
enforceability of Complainant’s 4WHEEL PARTS mark, it does not submit evidence
that suggests that it is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Am. Online, Inc. v.
World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13,
2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); see also Yoga Works,
Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by”
the <shantiyogaworks.com> domain name despite listing its name as
“Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the
Panel that the respondent was ever ‘commonly known by’ the disputed domain name
prior to its registration of the disputed domain name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the domain name to
operate a search engine that links Internet users to web sites of Complainant’s
competitors. Where Respondent’s domain
is confusingly similar and redirects Internet traffic to entirely unrelated sites
with the apparent purpose of simply deriving income from the referral process
by trading off of the mark’s notoriety, Respondent has acted in bad faith. Although the mark seems to be generic and
descriptive and Complainant does not have exclusive rights to use of the mark,
Respondent had Complainant in mind when he registered and continued to use the
mark, thereby Respondent acted in bad faith.
Due
to the nature of the web site, the Panel may reasonably presume that Respondent
is receiving commercial gain from the operation of the resulting web site. Additionally, since the disputed domain name
is confusingly similar to Complainant’s mark, there is a likelihood of
confusion as to Complainant’s sponsorship or affiliation with the resulting
website due to the links related to the automotive part industry. Accordingly, the Panel finds that Respondent
has registered and used the <4wheelsparts.com>
domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) by attempting to attract Internet users to its website for
commercial gain by creating a likelihood of confusion through the use of a
domain name that is confusingly similar to Complainant’s mark. See Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”); see
also ESPN, Inc. v. Ballerini,
FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the
respondent linked the domain name to another domain name, <iwin.com>,
presumably receiving a portion of the advertising revenue from the site by
directing Internet traffic there, thus using a domain name to attract Internet
users for commercial gain); see also
STMicroelectronics, Inc. v. Modern Empire Internet Ltd., FA 604820 (Nat Arb. Forum Jan. 18, 2006) (finding “Respondent’s use of the
disputed domain name for the purpose of redirecting Internet users to websites
from which Respondent receives referral fees is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”); Cf Lumena s-ka zo.o. v.
Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000)
(finding no bad faith where the domain name involves a generic term, and there
is no direct evidence that Respondent registered the domain name with the
intent of capitalizing on Complainant’s trademark interest).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <4wheelsparts.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
_________________________________________________________________
Steven L. Schwartz, Panelist
Dated: October 30, 2006
I respectfully dissent from the Panel’s majority opinion. Per Policy ¶ 4(c)(i), I would find the Respondent has demonstrated rights and legitimate interests in the disputed domain name for the following reasons.
I believe that, even if the Respondent knew about the Complainant’s 4 WHEEL PARTS service mark at the time the Respondent registered the disputed domain name, <4wheelsparts.com>, the Respondent still could use the domain name in good faith to offer a fee-generating click-through service to other vendors’ web sites where 4 wheel drive automotive parts are sold. I am relying on the fact that “4 wheel parts” and “4 wheels parts”, independently of Complainant’s service mark rights, also exist as common English descriptive expressions. I believe that trademark law allows the public to use these descriptive expressions for the literal meaning they convey, just as the Respondent is doing. There are many decisions under the Policy that corroborate this finding. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb.19, 2001) (where “Respondent has persuasively shown that the domain is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business.”); see also Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (where the panel found “Common words and descriptive terms are legitimately subject to registration on a ‘first-come, first-served basis’.”).
Thus, in my opinion, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name as required by Policy ¶ 4(a)(ii).
______________________
Dennis A. Foster, Panel Chairman
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