Yokohama Tire Corporation v. Richard Jones
Claim Number: FA0606000739888
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 Richard Jones (“Respondent”), Residence Emeraude, Apt 160, Building 5 Rue Insel, Toulose S 31 200 US.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <yokahamatires.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), 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, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <yokahamatires.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 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@yokahamatires.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <yokahamatires.com> domain name is confusingly similar to Complainant’s YOKOHAMA mark.
2. Respondent does not have any rights or legitimate interests in the <yokahamatires.com> domain name.
3. Respondent registered and used the <yokahamatires.com> domain name 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 Company Ltd., a Japanese corporation. Complainant is the exclusive licensee of the YOKOHAMA and Y YOKOHAMA marks in the United States. Complainant has continuously used the YOKOHAMA and Y YOKOHAMA marks in the United States in connection with the manufacture, marketing and distribution of tires since 1971, while Complainant’s parent has continuously used the mark around the world to refer to its tire products and services for over ninety years. Complainant has operated a website at the <yokohamatire.com> domain name since February 28, 1996.
Complainant has registered the Y YOKOHAMA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,552,776 issued August 22, 1989; Reg. No. 1,307,949 issued December 4, 1984; Reg. No. 1,013,999 issued June 24, 1975; Reg. No. 3,042,048 issued January 10, 2006).
Respondent registered the <yokahamatires.com> domain name on September 23, 2003. Respondent’s domain name resolves to a web page displaying links such as “Yokohama Tire,” “Yokohama Tire Company,” “Truck Tires” and “Tires.” Internet users that click on these links are redirected to the websites of Complainant’s competitors in the tire and tire-related products and services industry.
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.
Because Complainant has registered the Y YOKOHAMA mark with the USPTO, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
Respondent’s <yokahamatire.com> domain name is confusingly similar to Complainant’s Y YOKOHAMA mark in several ways. First, the disputed domain name eliminates “y” from the front of the mark. Second, Respondent misspells the predominant term of the mark by substituting “a” for “o.” Third, Respondent’s misspelling of the predominant term is pronounced the same as the correct spelling of YOKOHAMA, thereby making the disputed domain name phonetically similar to Complainant’s mark. Finally, Respondent adds the term “tires” to the mark, which describes Complainant’s business. The Panel finds that the mere elimination, misspelling and addition of terms to Complainant’s mark in the <yokahamatires.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the Y YOKOHAMA mark, especially because the disputed domain name remains phonetically similar to the mark. Therefore, Respondent’s <yokahamatires.com> domain name is confusingly similar to Complainant’s Y YOKOHAMA mark pursuant to Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); 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 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); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the <yokahamatires.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <yokahamatires.com>
domain name. See Geocities v. Geocities.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); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is also no evidence in the record suggesting that
Respondent is commonly known by the <yokahamatires.com> domain
name. Respondent has registered the
domain name under the name “Richard Jones,” and Complainant has not authorized
or licensed Respondent to register a domain name incorporating its YOKOHAMA
mark. Consequently, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that the respondent
was not commonly known by the domain name <greatsouthernwood.com> where
the respondent linked the domain name to <bestoftheweb.com>); see also
Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not known
by the mark).
Respondent is maintaining a web page at the <yokahamatires.com> domain name that features links to tire and tire-related products and services, some of which are Complainant’s competitors. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Id. Because Respondent is also redirecting Internet users to competing websites for commercial gain, presumably by earning click-through fees for each consumer Respondent diverts to competing websites, Respondent is not using the <yokahamatires.com> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <yokahamatires.com> domain name resolves to a web page displaying links to Complainant’s competitors in the tire and tire-related industry. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered and used the <euro-disney.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme park. As Respondent is also redirecting Internet users interested in Complainant to competing websites and disrupting Complainant’s business, Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See 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).
Moreover, by maintaining a web page at the <yokahamatires.com> domain name that features links to various tire and tire-related products and services, Respondent is attempting to attract, for commercial gain, Internet users seeking Complainant’s products and services under the Y YOKOHAMA mark to competing websites. In BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the respondent registered and was using the <billboard.tv> domain name to operate a web page with links to entertainment and music websites. The panel found such use to constitute bad faith, as the complainant used the BILLBOARD mark in connection with music and entertainment services and there was “clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.” Id. In this case, Respondent’s website at the <yokahamatires.com> domain name also features links to products and services similar to those Complainant offers under its Y YOKOHAMA mark, and thus Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark. The Panel finds such registration and use to constitute bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yokahamatires.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 3, 2006
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