WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Tire Rack, Inc. v. Phayze 1, Phayze 2, Phayze Inc.
Case No. D2003-0315
1. The Parties
The Complainant is The Tire Rack, Inc., South Bend, Indiana, United States of America, represented by Michael Anderson of Barnes & Thornburg, South Bend, Indiana, United States of America.
The Respondent is Phayze 1, Phayze 2, Phayze Inc., Paris, France.
2. The Domain Name and Registrar
The disputed domain name <tirerac.com> is registered with Computer Services Langenbach GmbH d/b/a Joker.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 25, 2003, the Center transmitted by email to Computer Services Langenbach GmbH d/b/a Joker.com a request for registrar verification in connection with the domain name at issue. On April 25, 2003, Computer Services Langenbach GmbH d/b/a Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 26, 2003
The Center appointed Hub J. Harmeling as the sole panelist in this matter on June 5, 2003. 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.
The language of the proceeding is English.
4. Factual Background
Given the absence of a response, the following facts are undisputed:
Complainant, The Tire Rack, Inc. (hereinafter, ĎComplainantí) is a corporation, formed and existing under the laws of the State of Indiana, USA. Complainant has been doing business as "The Tire Rack" since 1979. It was founded as a single retail store but transitioned to a primarily mail-order company that distributed high performance tires and wheels to consumers and dealers. In 1996, Complainant introduced its website <tirerack.com> and began offering on-line purchasing of tires, wheels and other automotive parts and accessories.
The Tire Rack now is the oldest and largest mail order and on-line tire and wheel seller in the United States. The Tire Rackís headquarters are located at its 530,000 square-feet distribution center, in South Bend, Indiana. The Tire Rack operates three other warehouses, which are located in New Castle, Delaware (USA), Shreveport, Louisiana (USA), and Reno, Nevada (USA).
The Tire Rack owns a United States Trademark Registration for the mark THE TIRE RACK, registered on October 21, 1986, for retail store and distributorship services in the field of automotive tires. The Tire Rack also owns a United States Trademark Application for the mark THE TIRE RACK, filed on July 25, 2002, for mail order, retail store and on-line store services featuring automotive wheels and tires, brakes, shocks, springs, brake pads, specialty headlamps, wiper blades, fog lamps, fender skirts, automotive body kits and after-market automotive parts.
Complainant also owns trademark registrations for THE TIRE RACK in Brazil, the Benelux, Canada, China, Germany, the United Kingdom, Japan, Mexico and the European Community and active trademark applications in Australia, the European Community, Japan, Korea, Mexico and the Russian Federation.
Complainant registered the domain name <tirerack.com> on May 2, 1996. The Tire Rack also owns each of the following domain name registrations, all of which are forwarded directly to The Tire Rackís Tirerack.com web site located at the URL "www.tirerack.com":
The Tire Rack owns at least thirteen (13) other domain names that incorporate the mark TIRE RACK, which are forwarded directly to The Tire Rackís Tirerack.com web site.
Respondent registered <tirerac.com> on March 11, 2002. Respondent has configured and caused the domain name <tirerac.com> to resolve to a commercial pornographic web site located at the URL "www.hanky-panky-college.com", where the user who types "www.tirerac.com" into his or her web browser is automatically forwarded. When an Internet user types "www.tirerac.com" into his or her web browser a "pop-up" site also appears called "www.yes-yes-yes.com", which is a web site offering numerous commercial links. After the user types TIRERAC.COM into his web browser and is directed to the "www.hanky-panky-college.com" web site, when the user attempts to close the "www.hanky-panky-college.com" web site, the "pop-up" advertisement for the "www.yes-yes-yes.com" web site appears. When the user then attempts to close the "www.yes-yes-yes.com" window, the user is automatically forwarded to the URL "www.mp3messenger.com", where an advertisement appears offering to download MP3s and movies. When the user then attempts to close the "www.mp3messenger.com" window, the user is automatically forwarded to yet another web site. This time the user is sent to the URL "www.prescription-drugs.org", where the user is invited to purchase "PENIS ENLARGEMENT PILLS".
Respondent has had two previous Complaints against him under the UDRP, based on similar facts, and in both cases was ordered to transfer the disputed domain name.
Complainant has no commercial relationship with Respondent whatsoever. Complainant has never authorized or given permission in any way for Respondent to own or use the domain name <tirerac.com> or to engage in any of the activities described above.
On February 20, 2003, Complainant, by counsel, sent a letter to Respondent to the e-mail and postal addresses reflected in the Joker.com WHOIS report for the domain name <tirerac.com>. Specifically, counsel for Complainant sent the letter via e-mail to "firstname.lastname@example.org#0" and DHL Air Mail.
The letter was returned by DHL, which informed counsel for Complainant that the letter was undeliverable to the address specified in the WHOIS report as listed above. Counsel for Complainant also sent the letter via e-mail to "email@example.com", suspecting that the "firstname.lastname@example.org#0" address was fictitious. The e-mail sent to "email@example.com#0" was returned as undeliverable, while the e-mail to "firstname.lastname@example.org" was apparently delivered satisfactorily. In the letter, Complainant, through counsel, informed Respondent of Complainantís trademark rights in THE TIRE RACK marks and demanded that Respondent cease using the domain name <tirerac.com> by February 28, 2003, and requested that Respondent inform counsel for Complainant that Respondent complied with these demands. Counsel for Complainant received no response whatsoever from Respondent concerning the letter. Likewise, The Tire Rack received no response from Respondent concerning the letter.
5. Partiesí Contentions
The Complainant relies on the above described factual background and contends that the three elements of the Paragraph 4(a) of the Policy have been met.
Complainant argues that the disputed domain name <tirerac.com> is identical or confusingly similar to the marks in which Complainant holds exclusive rights by virtue of its numerous THE TIRE RACK trademark registrations, and Complainantís rights in the trademark TIRE RACK, standing alone (without the word THE), by virtue of its use of its commercial web site located at the URL "www.tirerack.com" for over six years.
The word THE in Complainantís trademark registration is generic and legally insignificant as a source-indicating feature of the mark THE TIRE RACK. The words TIRE RACK therefore, are the only source-identifying portions of Complainantís marks. For all intents and purposes, then, Complainantís numerous trademark registrations and applications are for the source identifier TIRE RACK.
The only differences between Respondentís <tirerac.com> domain name and Complainantís marks are: (1) the K is dropped from Respondentís domain name; and (2) Respondentís domain name contains the particle .COM.
The second difference is insignificant and does not remove the likelihood of confusion caused by Respondentís use of the domain name; the .COM portion of the domain name should, in the opinion of Complainant, be disregarded in the Panelís analysis of the "identity or confusing similarity" issue.
Furthermore, both Complainantís TIRERACK.COM mark and domain name contain the same .COM notion that Respondentís <tirerac.com> domain name contains. Therefore, a trademark in which Complainant has rights, namely the TIRERACK.COM mark, also contains the .COM particle, leaving the dropped K in Respondentís domain name as the only difference between the respective marks.
The first difference, namely the dropping of the letter K from Respondentís domain name, is equally irrelevant in determining whether Respondentís domain name is identical or confusingly similar to Complainantís trademarks.
Complainant argues that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant holds that the current case is nearly identical to the cases of Ultimate Electronics, Inc. v. Phayze, Inc., WIPO Case No. D2002-0851, (November 3, 2002) and Voicestream Wireless Corp. v. Phayze 1 Phayze 2, Phayze, Inc., WIPO Case No. D2002-0636 (September 3, 2002), in each of which a panel of this Center held that Phayze, Inc.ís domain names should be transferred to the respective complainants because Phayze, Inc. linked its domain names to pornographic web sites, including the "www.hanky-panky-college.com" web site, in bad faith and had no legitimate interests in the "typo" domain names it had registered.
Furthermore, Complainant points out that, similar to the above mentioned cases, with regard to determining that Phayze, Inc. has no legitimate rights in the disputed domain name, Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the domain name <tirerac.com> or any other domain name.
In addition, Respondent is not making a legitimate non-commercial fair use of the domain name. Instead, Respondent has its <tirerac.com> domain name linked to pornographic and other commercial web sites that do not incorporate or even reference the domain name <tirerac.com>. The fact that Respondentís domain name is linked to no web site that incorporates or references the domain name is, according to Complainant, conclusive of Respondentís lack of a legitimate right or interest in the domain name.
Moreover, Complainant states that Respondent is not using the domain name in connection with a bona fide offering of goods or services. Respondent, "Phayze, Inc.", is not commonly known as TIRERAC.COM or TIRERAC, and Respondent is not making a legitimate non-commercial or fair use of the domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith as Respondent, has registered and is using the domain name <tirerac.com> to purposely misdirect Complainantís customers to pornographic and other commercial web sites.
Complainant points out that Complainantís obligation under the Policy is only to make out a prima facie case, and once it has done so, it is then incumbent upon the Respondent to either justify or explain its business conduct.
Under the Policy, intentionally using a domain name to attract, for commercial gain, Internet users to the registrantís web site or other on-line location, by creating a likelihood of confusion, constitutes "bad faith." Linking a domain name to a pornographic web site, as Respondent has done in this case, can itself constitute bad faith. Moreover, the Complainant argues that engaging in typo squatting constitutes, ipso facto, bad faith registration and use of a domain name under Paragraph 4(b)(iv) of the Policy.
Complainant argues that Respondentís activities constitute bad faith registration and use. When consumers looking for the <tirerack.com> web site inadvertently fail to strike the "k" key on their keyboard or misspell "rack", they are purposely misdirected by Respondent to the "www.hanky-panky-college.com" pornographic web site. In other words, Respondent is engaging in "typo-squatting" for the purpose of attracting Complainantís customers to its <tirerac.com> domain, and then misdirecting Complainantís customers to the "www.hanky-panky-college.com" pornographic web site as well as other commercial sites. This constitutes intentional tarnish of Complainantís service marks and, thus, bad faith.
Complainant is of the opinion that Respondent is, without any legitimate interest in the domain name, attempting to ride on the fame of Complainantís mark and use of the fame to divert consumers to its websites for commercial advantage. Complainant finds that it must be assumed that Respondent is being compensated monetarily (i.e. for commercial gain) for forwarding traffic to the pornographic web site and for the "pop up" advertisements that appear for "www.yes-yes-yes.com", "www.mp3messenger.com" and "www.prescription-drugs.org."
Furthermore, Complainant reminds the Panel that Respondent has a long and notorious history of "typo-squatting." This case is not an isolated incident. Respondentís notoriety for this illegal activity is evidenced by the panel decisions in the Ultimate Electronics and Voicestream cases. Respondent makes a business of registering misspellings of famous or popular trademarks for the purpose of capitalizing on the goodwill of those trademarks.
Finally, Respondentís use and registration of the domain name violates the very terms and conditions of its registration agreement with the Registrar. Pursuant to the registration agreement, Respondent "must ensure that the services or domain forming the subject of the agreement (Ö) do not provide access to pornographic or other offensive content Ö"
Complainant requests, pursuant to Paragraph 4(i) of the Policy, that the domain name registration for <tirerac.com> be transferred to Complainant.
No other proceedings have been commenced or terminated in connection with or relating to the domain name that is the subject of this Complaint.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Panel notes that the Respondent has not filed a response. However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainantís prima facie case meets the requirements of paragraph 4 of the Policy (Creative Hairdressers, Inc. v. Dynamic Progressive Technologies, Inc., Claim No. FA0207000114772. Also: VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303).
Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief.
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The differences between the disputed domain name <tirerac.com> and Complainantís registered trademark THE TIRE RACK lie in the addition of the word THE, the dropping of the letter K and the addition of ".COM".
As regards the first difference, the panel finds that the simple elimination of the (subordinate) word THE does not take away the prima facie confusing similarity between the disputed domain name and Complainantís trademark.
Concerning the second difference, the dropping of the letter K, the Panel holds that the omission of this single letter from Complainantís trademark is insignificant, especially as this letter does not change the pronunciation of the mark. The Panel finds that this difference in spelling does not in any way remove the confusing similarity. See also: Microsoft v. Microsof.com a/k/a Tarek Ahmed, WIPO Case No. D2000-0548.
As regards the third difference, the Panel points out that it is generally accepted that the addition of .COM does not take away the identicality or confusing similarity. See amongst others: VAT Holdings v. Vat.com, WIPO Case No. D2000-0607; Western Bonded Products v. Webmaster, Claim No. FA0007000095286.
The Panel therefore concludes that the disputed domain name is confusingly similar to Complainantís THE TIRE RACK trademark.
B. Rights or Legitimate Interests
The Panel notes that Complainant bears the "general burden of proof" under paragraph 4(a) (ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See: Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones v. Hephzibah Intro-Net Project, WIPO Case No. D2000-0704.
The Panel finds that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy. This finding is based on the following, non-disputed, circumstances brought forward by Complainant.
Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the domain name <tirerac.com> or any other domain name.
Respondentís domain name is linked to no website that incorporates or references the domain name.
The Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services by simply forwarding internet users to pornographic websites offered under different (domain) names, nor is Respondent commonly known by TIRERAC or <tirerac.com> name or is Respondent making a legitimate non-commercial fair use of the domain name. Compare Ultimate Electronics, Inc. v. Phayze, Inc., WIPO Case No. D2002-0851; Voicestream Wireless Corp. v. Phayze 1 Phayze 2, Phayze, Inc., WIPO Case No. D2002-0636.
Accordingly, pursuant to Paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Complainant has argued that Respondent is engaging in "typo-squatting" for the purpose of attracting Complainantís customers to its <tirerac.com> domain, and then redirecting Complainantís customers to the "www.hanky-panky-college.com" pornographic web site as well as other commercial sites.
According to the Policy, para. 4(b)(iv), intentionally using a domain name to attract, for commercial gain, Internet users to the registrantís web site or other on-line location, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondents website or location, or of a product or service on the website or location, constitutes "bad faith".
The Panel considers it prima facie established in this case that Respondent has in fact engaged in a "typo-squatting" activity for the purpose of attracting Internet traffic to its URL and then redirecting that traffic to a pornographic website. The Panel also agrees with Complainant to the effect that this redirection of the traffic must be assumed to be for the purpose of economic benefit for Respondent. It is settled case law under the UDRP that these circumstances constitute evidence of registration of the domain name, and the use of it, in bad faith in the sense of the Policy. See e.g.: Victoriaís Secret et al v. John Zuccarini, Claim No. FA0010000095762, Time Warner Entertainment Company L.P. et al v. John Zuccarini et al, WIPO Case No. D2001-0184 and Yahoo!Inc. and Geocities v. Data Art Corp et al, WIPO Case No. D2000-0587.
Moreover, the Panel agrees with Complainant that Respondentís use of the disputed domain name to link to pornographic sites constitutes a tarnish of Complainantís trademark. See: Bernstein v. Action Advertising, WIPO Case No. D2000-0706.
Therefore, the Panel finds that the Complainant has convincingly made a prima facie case that Respondent has registered and is using the disputed domain name in bad faith.
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 <tirerac.com> be transferred to the Complainant.
Hub J. Harmeling
Dated: June 20, 2003