Bridgestone Corporation v. Saif Ashfaq
Claim Number: FA1706001735354
Complainant is Bridgestone Corporation (“Complainant”), represented by Julie Ismail of Khursheed Khan & Associates, Pakistan. Respondent is Saif Ashfaq (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bridgestonepk.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2017; the Forum received payment on June 10, 2017.
On June 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bridgestonepk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2017 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@bridgestonepk.com. Also on June 12, 2017, 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 July 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Bridgestone Corporation, is a global tire and rubber with business based in Tokyo, Japan.
Complainant has rights in the BRIDGESTONE mark based upon registration with the Trademark Registry of Pakistan and otherwise.
Respondent’s domain name is confusingly similar to Complainant’s mark as it wholly appropriates the mark, adds the geographic identifier “pk” in reference to Pakistan, and the generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to register a domain name reflecting the BRIDGESTONE mark. Further, Respondent fails to use <bridgestonepk.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use; instead, the disputed domain name resolves to a page offering goods for sale in direct competition with Complainant.
Respondent registered and uses <bridgestonepk.com> in bad faith. Respondent disrupts Complainant’s business through the use of a confusingly similar domain name and resolving website to sell products similar to those of Complainant. Respondent attempts to profit through its passing off behavior, attracting Internet users to a website said users believe is Complainant’s site, for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BRIDGESTONE mark as evidenced by its registration of such mark with the Trademark Registry of Pakistan.
Complainant’s rights in the BRIDGESTONE mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the at-issue domain name to address a website that is designed so that Respondent may pass itself off as Complainant and offer goods for sale that compete with those offered by 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a Trademark Registry of Pakistan trademark registration for the BRIDGESTONE trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”).
Respondent’s at-issue domain name contains Complainant’s entire BRIDGESTONE trademark followed by the geographic identifier for Pakistan, “pk”. A necessary top-level domain name, here “.com,” is added to complete the domain name. The slight differences between the at-issue domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purposes of the Policy. Therefore the Panel finds that Respondent’s <bridgestonepk.com> domain name is confusingly similar to Complainant’s BRIDGESTONE trademark under Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (ForumAug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the <bridgestonepk.com> domain name lists “Saif Ashfaq” as its registrant. There is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain and Respondent makes no claim that it is known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <bridgestonepk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Respondent uses the confusingly similar <bridgestonepk.com> domain name to pass itself off as Complainant and compete with Complainant. Using the <bridgestonepk.com> domain name in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as discussed above concerning Respondent’s rights and interest in the at-issue domain name, Respondent’s <bridgestonepk.com> website deceives internet users into believing that they are dealing with Complainant when they are not so that Respondent may unfairly compete with Complainant. Using the confusingly similar domain name in this way is disruptive to Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s use of the confusingly similar domain name likewise demonstrates Respondent’s bad faith under Policy ¶ (a)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Additionally and although not specifically urged by Complainant, the Panel finds that Respondent registered the <bridgestonepk.com> domain name with actual knowledge of Complainant’s BRIDGESTONE trademark. Respondent’s knowledge of Complainant’s mark is apparent from the notoriety of Complainant’s trademark, from Respondent’s display of Complainant’s trademark and confusingly similar logo on Respondent’s <bridgestonepk.com> website and from Respondent’s purposing of the website to compete with Complainant. Respondent’s actual knowledge of Complainant’s rights in the BRIDGESTONE mark prior to its registering the <bridgestonepk.com> domain name further indicates that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bridgestonepk.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 6, 2017
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