WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bridgestone Corporation v. Jim Trader

Case No. D2003-0798

 

1. The Parties

The Complainant is Bridgestone Corporation, of Kodaira-shi, Tokyo, Japan, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Jim Trader, of Springfield, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bridgestonemotorcycles.com> is registered with Catalog.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2003. On October 9, 2003, the Center transmitted by email to Catalog.com a request for registrar verification in connection with the domain name at issue. On October 14, 2003, Catalog.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 October 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 7, 2003.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on November 13, 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.

 

4. Factual Background

The Complainant is one of the largest rubber and tyre companies in the world, with a gross worldwide sales in 2002, of all products under the BRIDGESTONE mark, in excess of $US 18 billion (Complaint, paragraph 7). It is stated that BRIDGESTONE has been in use since 1928, as a trade mark and company name, and that it has been used in respect of tyres and other products in the US since as early as 1956 (Complaint, paragraph 7). A range of US trade mark registrations for BRIDGESTONE in different forms and representations in respect of various goods is set out in Exhibit A of the Complaint. These goods include tyres, conveyor belts, rubber dock fenders, non-metallic hose pipes and rubber bearings, storage tanks, golf balls and other golf products, machine parts, clothing, furniture and office items, and date from 1985 to 2001. There is also an expired trade mark registration for motorcycles and their parts that dates from 1963. It appears that these motorcycles are no longer produced, but are still available under that name (Exhibit B). Referring to its long usage, large annual turnover and advertising expenditure, the Complainant asserts that BRIDGESTONE is now a famous mark and name (Complaint, paragraph 11). It also operates websites at "www.bridgestone.com" and "www.bridgestonetire.com" where its various products are advertised (Exhibit C). These include information about BRIDGESTONE motorcycles and "Bridgestone Motorsport: Motorcycles/Karts" (Exhibit C).

The Respondent registered the domain name <bridgestonemotorcycles.com> on April 13, 2001 (WHOIS information for Network Solutions at Exhibit D).

 

5. Partiesí Contentions

A. Complainant

The Complainant alleges that the three requirements for a successful complaint under paragraph 4(a) of the Policy are satisfied in the present case.

As to paragraph 4(a)(i), the Complainant submits that the domain name <bridgestonemotorcycles.com> is identical to and confusingly similar to its BRIDGESTONE trade mark. In particular, it argues that all the Respondent has done is to add the generic term "motorcycles" to the word "Bridgestone", and, in this regard, refers to various prior Panel decisions in which such additions have been held not to prevent such domain names falling within the ambit of paragraph 4(a)(i). It argues further that the addition of a disclaimer to its website by the Respondent after it had received notice of the Complainantís objections does nothing to dispel the confusion, referring here to Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521.

As to paragraph 4(a)(ii), the Complainant argues that the Respondent has no rights nor legitimate interest in the domain name. In this regard, the Complainant points to its own long standing use of the mark BRIDGESTONE and asserts that the Respondent could not "conceivably claim to have been unaware of the famous BRIDGESTONE trade mark". The Complainant further alleges that the disclaimer on the Respondentís website cannot create any legitimate right or interest in the domain name, and, also notes that there is no evidence that the Respondent has been commonly known by the domain name or that there is any evidence that the Respondent has been making a legitimate noncommercial or fair use of the domain name.

As to the third requirement in paragraph 4(a)(iii) (registration and use in bad faith), the Complainant asserts that both elements here are satisfied. This appears to be a repetition of points previously made, with further references to the Respondentís insertion of a disclaimer on its website after notice of its objections from the Complainant, a general reference to the Respondentís constructive knowledge of the existence of the Complainantís famous mark (Complainant, paragraph 28), and a final allegation that the Respondent has ignored requests to assign or transfer the domain name to the Complainant and has refused to respond to the latterís requests.

B. Respondent

The Respondent did not reply to the Complainantís contentions. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances the Panel is entitled to "draw such inferences therefrom as it considers appropriate".

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements. Each of these must be shown in turn.

A That the Complainant has rights in a trade or service mark with which the Respondentís domain name is identical or confusingly similar

The Complainant has satisfied the first part of this element, in that it has US registered trade marks for BRIDGESTONE in respect of various goods.

The remaining question therefore is whether the domain name is identical or confusingly similar to this trade mark. While it is not identical, the Panel accepts the Complainantís submission that there is confusing similarity. Thus, the primary element of both the domain name and trade mark Ė the word BRIDGESTONE Ė is the same. Moreover, this comes at the start, where it is to be seen and heard first as the predominant component of both the domain name and trade mark. This similarity is not removed by the addition of the word "motorcycles" to the domain name, as this is a purely descriptive and non-distinctive component. For other cases in which panels have held that confusingly similarity can arise where such additions are made, see: Nintendo of America, Inc v Tyasho Industries and Thomas G Watson, WIPO Case No. D2001-0976 ("POKEMAN" and <Pokemantrader.com>), and Harrods Ltd v. Vineet Singh, WIPO Case No. D2001-116 ("HARRODS" and <harrodsactual.com>)

Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).

B That the Respondents must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence before the Panel of any of these matters. Furthermore, although the Complainant does not expressly state this, it is clear that it appears that it has given no consent or authorization to the Respondent to use the name "bridgestone" or anything similar as a domain name or otherwise in its business. In the absence of any Response, the Panel is therefore entitled to infer that the Respondent has no rights or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a).

C. Registration and use in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the mark, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of the Administrative Panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate. The Panel therefore concludes that the registration and use of the domain name here was, in fact, made in bad faith, and refers here to the following matters that have been raised by the Complainant.

(i) The trade mark BRIDGESTONE is clearly well known and has been the subject of trade mark registrations in the US for a considerable period of time. Moreover, these registrations are in relation to tyres and other motor products, including (for a while) motorcycles. In the absence of any evidence from the Respondent, it is difficult to believe that the Respondent was unaware of the existence of the Complainantís trade mark at the time he registered the domain name.

(ii) In offering, and continuing to offer, motorcycles at its website "www.bridgestonmotorcycles.com" (Exhibit E), it must be inferred that the Respondentís conduct falls within that referred to in sub-paragraph (iv) of paragraph 4, namely that he is intentionally attempting to attract, for commercial gain, Internet users to his site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of his site or of a product or service on that site. In this case, it is relevant to note that many of the products with respect to which the trade mark BRIDGESTONE is registered relate to motor products, in particular tyres, and that there was previously a registration of BRIDGESTONE with respect to motorcycles.

(iii) While adding a disclaimer to its website after receipt of notice from the Complainant, the Respondent has not responded to any further requests from the Complainant to assign or transfer the domain name to it. This silence, and failure to respond to or explain its position, provides a further basis for the Panel to infer that the Respondentís continued use of the domain name is in bad faith. In addition, it notes that the disclaimer will only be seen after an Internet user has accessed the Respondentís website, making it likely that the consequences referred to in sub-paragraph 4(b)(iv) will have already occurred.

On the basis of the above findings, the Panel concludes that there is sufficient evidence to infer that the Respondent has both registered and used the domain mark in bad faith since the time of registration.

 

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 <bridgestonemotorcyles.com> should be transferred to the Complainant.

 


 

Staniforth Ricketson
Sole Panelist

Dated: November 27, 2003