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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Tire Rack, Inc. v. Domain Online Advertising

Case No. D2006-0347

 

1. The Parties

The Complainant is The Tire Rack, Inc., South Bend, Indiana, United States of America, represented by Barnes & Thornburg, South Bend, Indiana, United States of America.

The Respondent is Domain Online Advertising, West Bay, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <tirerackcom.com> is registered with Address Creation.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 22, 2006, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On March 28, 2006, Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2006.

The Center appointed Joan Clark as the sole panelist in this matter on May 9, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Respondent is the registrant of the domain name <tirerackcom.com> which was created on May 3, 2004. The domain name has been placed on registrar-HOLD during the course of this dispute proceeding.

Complainant owns United States trademark registration for the mark THE TIRE RACK registered on October 21, 1986, for use in connection with retail store and distributorship services in the field of automotive tires, and for the mark THE TIRE RACK for mail order, retail store and online store services featuring automotive wheels and tires and similar automotive parts, and also registrations for the mark THE TIRE RACK registered in Brazil in 1998, in Benelux in 1994, in Canada in 2002, in China in 1996, in the European Community in 1999, in Australia on January 8, 2003, in Japan in 1997, and in Mexico in 1995. Complainant also owns the domain name <tirerack.com> which it declares it has used continuously since 1996.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts its rights based upon its trademarks THE TIRE RACK, TIRE RACK and <tirerack.com>.

Complainant avers it was founded in 1979, as a single retail store called “The Tire Rack” in Indianapolis, Indiana and that it has been doing business as The Tire Rack and Tire Rack ever since; that, beginning in 1982, Complainant shifted its company focus to a mail-order business and began distributing high performance automotive tires and wheels nationwide across the United States; and, that by the late 1980’s, Complainant had transitioned to a primarily mail-order company that distributed high performance tires and wheels to consumers and dealers.

Complainant further avers that, in 1996, it introduced its innovative website “www.tirerack.com”, and in 1998 began offering on-line purchasing of tires and wheels through its website. It continues to offer on-line sales of tires, wheels and other automotive parts and accessories.

Complainant states it has operated its website continuously since 1996.

Complainant contends it is the oldest and largest mail order and online tire and wheel seller in the United States and that its website “www.tirerack.com” has become a substantial part of Complainant’s business.

Complainant states it supplies hundreds of thousands of tires every year across the United States and internationally, that it carries sixteen tire brands and twenty-nine wheel brands, fifteen of which are exclusive lines, and that its retail customers include automotive enthusiasts, grassroots racers, luxury automobile owners, consumers seeking specialty applications and commodity tire customers.

Complainant declares its wholesale customers include tire and wheel mass merchandisers, independent tire dealers, automobile dealers, specialty service providers and national and regional tire retailers and avers it is an official equipment replacement source for Honda, Audi and Porsche dealers in the United States.

Complainant refers to awards it has received as the leading international honour for achievement in technology and creativity in web design, and that it is the subject of a large number of articles in industry publications and news articles over the years.

Complainant asserts it is recognized as having achieved wide brand recognition among car enthusiasts as a result of its advertising.

In addition to its domain name registrations for <tirerack.com> and <thetirerack.com>, Complainant claims it owns numerous domain name registrations in which “.com” has been replaced by “.net”, “.biz”, “.org”, “.info”, “.us”, and “.cc” among others.

Complainant contends that it owns over ninety more domain name registrations, all of which incorporate the phrase “tirerack” in some variations, as each of these domain names forwards directly to Complainant’s <tirerack.com> website located at “www.tirerack.com”.

Complainant refers to Respondent’s domain name <tirerackcom.com> which was registered on May 3, 2004, and claims that it was configured and caused to resolve to a commercial pay-per-click website located at “www.tirerackcom.com”.

Complainant further avers that Respondent is engaged in the business of providing pay-per-click listings and services to merchants via the Internet.

Complainant avers that Respondent delivers pay-per-click advertising listings that are reflective of Respondent’s merchant subscribers’ products and services to online users in response to the users’ keyword search queries. Complainant also states that these pay-per-click listings are generally ordered in the search results based on the amount that Respondent’s merchant advertisers choose to pay for a targeted placement.

Complainant continues that Respondent receives revenue from the merchants on a pay-per-click basis, based upon the number of times and extent to which Respondent directs these Internet users to Respondent’s subscribing merchants’ websites.

Furthermore, Complainant asserts that Respondent and its merchant advertisers create keyword listings unrelated to the merchants’ products, such as keywords that are comprised of and/or contain the trademarks or names of the advertising merchants’ competitors, so that an Internet user searching a competitor’s trademark with an Internet search engine will be directed to the advertising merchant’s website.

Complainant continues that Respondent connects its subscribing merchants with consumers who are searching for particular brands, names, information, products and services on the Internet, and often, as in the present case, Respondent connects its subscribing merchants with consumers by unlawfully using as keywords the trademarks of others such as Complainant’s trademarks.

Complainant avers that Respondent’s website under the domain name in dispute contains direct links to at least seven direct competitors of Complainant.

Complainant declares it has no commercial relationship with Respondent and has never authorized or given permission for Respondent to own or use the domain name <tirerackcom.com>, and that, upon information and belief, Respondent has no rights or legitimate interests in the domain name in dispute.

Complainant states that on February 15, 2006, its counsel sent a letter to Respondent to the e-mail and postal addresses reflected in the Registrar’s WHOIS report, complaining about the domain name in dispute and demanding that Respondent cease using the domain name <tirerackcom.com>, to which Respondent did not respond. The letter, when sent by express mail, was returned to Complainant’s counsel by the United States postal service for the reason that there is no such address in the Cayman Islands as the one listed by Respondent.

Complainant states that Respondent’s domain name is identical or confusingly similar to Complainant’s trademarks in which Complainant has rights; further, that Respondent has no rights or legitimate interests in the domain name <tirerackcom.com>; and upon information and belief that Respondent has at no time made 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; and, has never been commonly known by the name “Tire Rack Com” or <tirerackcom.com>.

Complainant further states that Respondent is not making a legitimate or non commercial fair use of the domain name, but is attempting to attract for commercial gain Internet users to commercial websites by creating a likelihood of confusion with Complainant’s trademarks.

Complainant maintains that Respondent has intentionally used a domain name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks, which constitutes bad faith registration and use of the domain name.

Complainant maintains it has made out a prima facie case of bad faith registration and use by Respondent, confirmed by the false contact information in the domain name registration for the disputed domain name, and that Respondent’s failure to respond and meet its burden of refuting the prima facie case allows the Panel to draw a negative inference of bad faith.

Complainant requests that the domain name registration for <tirerackcom.com> be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

Complainant has established, by the Affidavit of its Chairman and CEO, Mr. Thomas S. Veldman, that it owns a United States trademark registration for the mark THE TIRE RACK registered on October 21, 1986, for use in connection with retail store and distributorship services in the field of automotive tires, as well as a registration for the mark THE TIRE RACK registered for mail order, retail store and on-line store services featuring automotive wheels and tires and related auto parts, and that it has registrations in numerous other countries for the mark THE TIRE RACK. While copies of certificates of these registrations of THE TIRE RACK were not produced, there has been no challenge to Mr. Veldman’s Affidavit.

As Complainant has pointed out, the suggestive word “tirerack” in the disputed domain name is the only source-identifying portion of Complainant’s marks and is also the only source-identifying portion of the disputed domain name. The addition of “.com” tacked on at the end of “tirerack” is not sufficient to avoid confusion, and the presence or absence of the article “the” is irrelevant in respect of creation of confusion. See Ultimate Electronics, Inc. v. Phayze, Inc., WIPO Case No. D2002-0851 (holding the addition of “.com” to respondent’s domain name was, “as has been found in a number of earlier decisions, an insignificant distinction which does not remove the likelihood of confusion”); see also VAT HoldingAG v. Vat.com, WIPO Case No. D2000-0607 (applying “the principle that in assessing identity, the portion “.com” of the Domain Name is to be ignored and the comparison is to be with the characterizing part. This has been a principle applied in many prior decisions under the ICANN policy.” (vat.com identical to trademark VAT)); see also Western Bonded Products Inc. dba Flex Foam v. Webmaster, NAF Case No. FA95286 (“the addition of “.com” is not a significant difference”).

The Panel finds that the domain name <tirerackcom.com> is confusingly similar to trademarks in which Complainant has rights, and the first criterion for a finding in favour of Complainant has been satisfied.

B. Rights or Legitimate Interests

None of the evidence produced by Complainant indicates that Respondent has any rights to or legitimate interests in the domain name. There is no indication that Respondent was commonly known by the disputed domain name, and there is no indication that Respondent was making a legitimate non commercial or fair use of the domain name.

The fact that there was extensive and widespread use of Complainant’s trademarks for a number of years prior to registration of the domain name <tirerackcom.com> which the Panel finds is close to and confusingly similar to Complainant’s trademarks, coupled with Complainant’s assertion that it has never authorized or given permission to Respondent to own or use the domain name <tirerackcom.com>, makes it difficult to assume that Respondent’s use of <tirerackcom.com> was in connection with a bona fide offering of goods or services. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, wherein a Panel stated that use of complainant’s entire mark in an infringing domain name makes it difficult to infer a legitimate use. It appears from the printouts of the <tirerackcom.com> website that Respondent’s site does not contain an offering of goods and services but rather links to the sites of others, including some of Complainant’s competitors. Accordingly, the domain name in dispute is not used by Respondent in connection with a bona fide offering of goods or services available directly from Respondent. See America Online, Inc. v. Tencent Communications Corporation, NAF Case No. 93668; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205; Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087; UPIB, Inc. v. Domains Asia Ventures, WIPO Case No. D2004-0020; American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A., WIPO Case No. D2004-0473; Humana Inc. v. Domains Ventures, WIPO Case No. D2006-0263 .

Complainant has established a prima facie case that Respondent had no rights to or legitimate interests in the domain name, and since Respondent has failed to file a Response and therefore to rebut the prima facie case, the Panel is justified in drawing a negative inference from Respondent’s failure to respond. See Pivotal Corporation v. Discovery Street Trading Co. Ltd.; WIPO Case No. D2000-0648; Matchnet PLC , supra; Oki Data, supra; UPIB, Inc., supra, Humana Inc., supra. 

The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name. The second criterion for a finding in favour of Complainant has been satisfied.

C. Registered and Used in Bad Faith

Complainant maintains that Respondent registered the <tirerackcom.com> domain name for the purpose of attracting Complainant’s customers to its commercial pay-per-click website and then misdirecting Complainant’s customers to the website of other merchants, many of which are direct competitors of Complainant.

The Panel finds no clear evidence of the “pay-per-click” arrangement whereby Respondent would receive remuneration from merchants based upon the number of times and extent to which Respondent directs Internet users to Respondent’s subscribing merchants’ websites.

Nevertheless, it would be naпve to assume that Respondent created the website under the disputed domain name with links to a number of sites of other merchants, without the expectation of a financial return. The Panel concludes that a prima facie case has been made that Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Since Respondent has chosen not to refute the assertions made by Complainant, the Panel concludes that the domain name <tirerackcom.com> was registered and used in bad faith. See Voicestream Wireless Corporation v. Phayze 1 Phayze 2; Phayze Inc., WIPO Case No. D2002-0636, (“While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith.”)

The Panel concludes that the domain name <tirerackcom.com> was registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tirerackcom.com> be transferred to the Complainant.

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Joan Clark, Q.C.
Sole Panelist

Dated: May 23, 2006