The Tire Rack, Inc. v. Santiago Rojas
Claim Number: FA2209002014017
Complainant is The Tire Rack, Inc. (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Santiago Rojas (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tirerackoffroad.com>, <tirerackoffroads.com>, <tireracksale.com>, <tirerackshop.com>, <tirerackstore.com>, <tirerackwholesalers.com>, <rimandtirerack.com>, <rimtirerack.com>, <tirerackandwheel.com>, <wheeltirerack.com>, <wheelsandtireracks.com>, <wheelsandtirerack.com>, <wheelandtirerack.com>, <wheelandtireracks.com>, <wheelandtirerack.store>, <wheelandtirerack.shop> and <wheelandtirerack.net>, (“Disputed Domain Names”). The Disputed Domain Names are registered with GoDaddy.com, LLC. (“Registrar”).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on September 29, 2022; Forum received payment on September 29, 2022.
On September 30, 2022, GoDaddy.com, LLC the Registrar confirmed by e-mail to Forum that the Disputed Domain Names are registered with it and that Respondent is the current registrant of the names. The Registrar has verified that Respondent is bound by its 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 3, 2022, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of September 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the respondents’ registrations as technical, administrative, and billing contacts, and to their corresponding “postmaster” addresses.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant asserts trademark rights in TIRE RACK. Complainant holds a national registration for that trademark. Complainant submits that the Disputed Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an online retailer of automotive tires and wheels, sold by reference to the trademark, TIRE RACK, which is registered with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 3,761,241, registered March 16, 2010;
2. the Disputed Domain Names were registered on December 29, 2021 or March 12, 2022 and are used to redirect Internet users to https://www.discountwheelsonline.com where wheels and tires are offered for sale; and
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of TIRE RACK with the USPTO, a national trademark authority.
In relation to comparison of the trademark with the Disputed Domain Names, the Complaint states that:
“[t]o demonstrate that a domain name is confusingly similar to a complainant’s trademark pursuant to UDRP Policy ¶ 4(a)(i), the complainant need only demonstrate that its mark is included in the disputed domain name.”
The Panel is concerned to see this proposition advanced by yet another complainant. As explained many years ago in CHRISTIAN DIOR COUTURE v. Kianna Dior Productions, WIPO Case No. D2009-0353 (May 24, 2009):
“… the unqualified statement that confusing similarity exists if a disputed domain name completely incorporates the relevant trademark does not, without more, prove dispositive... . .. [T]he Complainant's trademark DIOR could be wholly incorporated in the hypothetical domain name <diorama.com>, however the word “diorama” has, in English at least, an independent dictionary meaning which dispels any confusion with DIOR. The trademark NIKE is incorporated within, for example, the domain name <nikethamide.com>, a drug used as a respiratory stimulant. In such cases, there may very well be no confusing similarity. … Added matter invites a contextual comparison on a case by case basis. Put simply, there is no authority to the blanket statement that if a trademark is wholly subsumed within a domain name there will always be confusing similarity.”
Insofar as a broad statement of principle can be made, this Panel follows the many cases like Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) which have routinely found confusing similarity where the disputed domain name contains complainant’s mark and differs only by the addition of a generic or descriptive word or phrase, together with the top-level domain. Here, Complainant’s trademark has been combined with either generic terms, such as “store”, “sale”, “wholesalers” or “shop”, and/or words descriptive of the goods in which Complainant trades, such as “off road”, “wheel/s” and “rim”.
The additions are of no distinctive value and in each case the trademark remains the recognizable part of the domain name. As such, the Panel finds the Disputed Domain Names to be confusingly similar to the trademark (see also, The Tire Rack, Inc. v. Texas International Property Associates- NA NA, FA0804001178356 (Forum, June 2, 2008) transferring <wholesaletirerack.com>; The Tire Rack, Inc. v. liu ying jun, FA2106001949192 (Forum, June 29, 2021) transferring <tireracktires.com>).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The name of the underlying domain name holder, as disclosed by the Registrar, is “Santiago Rojas”. That name does not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
The competitive use, already described, does not comprise a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) (see, for example, Upwork Global Inc. v. Shoaib Malik, FA1654759 (Forum Feb. 3, 2016) finding that where complainant provided freelance talent services, and respondent competed by promoting freelance talent services via a confusingly similar domain name, there was neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the name).
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving website exist for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the Disputed Domain Names to attract, for commercial gain, internet users to the resolving website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of those websites (see, for example, CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv) by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 12, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page