Yokohama Tire Corporation v. Pertshire Marketing, Ltd
Claim Number: FA0606000739872
Complainant is Yokohama Tire Corporation (“Complainant”), represented by Miriam Claire Beezy, of Foley & Lardner LLP, 2029 Century Park East, Suite 3500, Los Angeles, CA 90067. Respondent is Pertshire Marketing, Ltd (“Respondent”), Trident Chambers, Wickhams Cay 1, PO Box 146, Road Town, Tortola VG.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <yokahamatire.com>, registered with DotRegistrar, Llc, and <yokohamtire.com>, registered with and Belgiumdomains, 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 Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2006.
On June 27, 2006, Belgiumdomains, Llc confirmed by e-mail to the National Arbitration Forum that the <yokohamtire.com> domain name is registered with Belgiumdomains, Llc and that Respondent is the current registrant of the name. Belgiumdomains, Llc has verified that Respondent is bound by the Belgiumdomains, Llc 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 July 11, 2006, 2006 DotRegistrar, Llc confirmed by e-mail to the National Arbitration Forum that the <yokahamatire.com> domain name is registered with DotRegistrar, Llc and that Respondent is the current registrant of the name. DotRegistrar, Llc has verified that Respondent is bound by the DotRegistrar, Llc 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 July 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 2, 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@yokahamatire.com and postmaster@yokohamtire.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <yokahamatire.com> and <yokohamtire.com> domain names are confusingly similar to Complainant’s Y YOKOHAMA mark.
2. Respondent does not have any rights or legitimate interests in the <yokahamatire.com> and <yokohamtire.com> domain names.
3. Respondent registered and used the <yokahamatire.com> and <yokohamtire.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yokohama Tire Corporation, is a California corporation and a wholly owned subsidiary of Yokohama Rubber (“Yokohama Rubber”) Company, Ltd., a Japanese Corporation. In connection with the manufacturing, marketing and distribution of vehicle tires, Yokohama Rubber holds numerous trademark registrations throughout the world, including the registration for the Y YOKOHAMA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,552,776 issued Aug. 22, 1989).
Complainant is the exclusive U.S. licensee of the Y YOKOHAMA mark.
Respondent registered the <yokahamatire.com> and <yokohamtire.com> domain names on February 12, 2003 and December 5, 2005, respectively. The disputed domain names resolve to Respondent’s website that displays an array of links that lead to numerous third-party websites, including links entitled “Yokohama Tire,” “Yokohama,” and “Tires.”
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Yokohama Rubber has obtained rights in the Y YOKOHAMA mark through its registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”). Complainant, through its exclusive license agreement with Yokohama Rubber has obtained rights in the Y YOKOHAMA mark.
Complainant alleges that the disputed domain names are confusingly similar to the Y YOKOHAMA mark. The Panel finds that the <yokahamatire.com> domain name is confusingly similar to the Y YOKOHAMA mark because the disputed domain name: omits the initial “Y” from Complainant’s mark; contains a common misspelling of Complainant’s mark by interchanging the letter “O” for the letter “A”; and, adds the term “tire,” a term that describes Complainant’s business. See Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) (finding the <yokahamatires.com> domain name to be confusingly similar to the complainant’s Y YOKOHAMA mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Additionally, the Panel finds the <yokohamtire.com>
domain name to be confusingly similar to Complainant’s Y YOKOHAMA mark because
the domain name: omits the letters “Y” and “A” from Complainant’s mark; and
adds the term “tire,” a term that describes Complainant’s business. See Wells Fargo & Co. v. Bogucki,
FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding the
<wellfargobank.com> domain name to be confusingly similar to the
complainant’s mark even though it omitted a letter and added of a word that
described the complainant); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to make a prima facie showing that Respondent lacks rights and legitimate interests is the disputed domain names. Once Complainant successfully fulfills its burden, Respondent must affirmatively prove that it does have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has successfully fulfilled its burden through its uncontested assertions in the Complaint.
Respondent’s failure to submit a Response in this dispute creates a presumption Respondent lacks rights and legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel, however, chooses to analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain names.
Complainant asserts that the disputed domain names resolve
to a website that displays an array of links that lead to numerous third-party
websites, including links entitled “Yokohama Tire,” “Yokohama,” and “Tires,”
from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use of the
confusingly similar domain names to display links related to Complainant’s
business does not qualify as a bona fide offering of goods or services
in the light of Policy ¶ 4(c)(i) or a legitimate noncommercial use in the light
of Policy ¶ 4(c)(iii). See TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that the respondent’s diversionary use of the complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to the complainant’s competitors, was not a bona fide offering of
goods or services); see also WeddingChannel.com Inc. v. Vasiliev, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the 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).
Additionally, Complainant asserts that Respondent is not
commonly known by the either of the disputed domain names. According to the WHOIS registry, the
disputed domain names are registered to “Pertshire Marketing, Ltd.” Furthermore, there is no evidence in the
record to suggest that Respondent is commonly known by either of the disputed
domain names, or any variation thereof.
Accordingly, the Panel must conclude that Respondent is not commonly
known by either of the disputed domain names.
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent registered and used the
disputed domain names in bad faith. The
Panel finds that Respondent’s registration and use of the confusingly similar
domain names will likely cause confusion as to Complainant’s sponsorship of or
affiliation with the resulting websites.
Through its uncontested assertions, Complainant has successfully shown
that Respondent registered and used the disputed domain names in bad faith by
pointing them to a website that features links to third-party websites for
which Respondent presumably receives referral fees. Accordingly, the Panel finds that Respondent’s registration and
use of the disputed domain names violates Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of
an infringing domain name to redirect Internet users to banner advertisements
constituted bad faith use of the domain name); see also Bama Rags,
Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad
faith where the respondent used a misspelling of the complainant’s famous mark
to attract Internet users to a series of advertisements).
Moreover, the links featured on Respondent’s website contain terms affiliated with Complainant’s business, including “Yokohama Tire,” “Yokohama” and “Tires.” These links, however, point to various third-party companies, some of which compete directly with Complainant. The Panel finds that the use of a confusingly domain name to mislead Internet users to competing websites with falsely labeled links that are related to Complainant and its business constitutes disruption and evidences bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
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 <yokahamatire.com> and <yokohamtire.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 18, 2006
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