WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Goodyear Rubber and Tire Co. v. Jeff Albrecht
Case No. D2003-0846
1. The Parties
The Complainant is The Goodyear Rubber and Tire Co., Akron, Ohio, of United States of America, represented by Hall Dickler Kent Goldstein & Wood, LLP, United States of America.
The Respondent is Jeff Albrecht, Kent, Washington, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <dunloptires.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2003. On October 28, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name) at issue. On October 28, 2003, Register.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 November 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 25, 2003.
The Center appointed Thomas P. Pinansky as the Sole Panelist in this matter on December 2, 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
(a) DNA (Housemarks) Limited, a wholly-owned subdivision of The Goodyear Rubber and Tire Co., has federally registered DUNLOP in the United States under Registration No. 2,621,023 on September 17, 2002, in connection with tires. Complainant has made continuous use of its mark since 1893 (see registration record as provided in Annex 3 of the Complaint).
(b) Complainant is also owner of the domain name registration of <dunloptires.com> and has been using the mark DUNLOP on this site for the sale of tires (see Whois record as provided in Annex 4 of the Complaint).
(c) The trademark and trade name DUNLOP are known throughout the world and enjoy a reputation for high quality tire products, performance and prestige. The Complainant has spent over a century and immense expense to build this reputation.
(d) The subject domain name has not been put into use since its registration date of January 25, 2000. The registrant has been contacted by telephone and in writing, and has refused to transfer the domain name to Complainant.
5. Partiesí Contentions
(i) The disputed domain name is similar to Complainantís trade name and trademark DUNLOP in that this trademark forms the distinctive part of the domain name, which was clearly engineered to refer to Complainant.
(ii) The Respondentís domain name is effectively identical to Complainantís United States registered service mark DUNLOP. The domain name incorporates in its entirety Complainantís distinctive trademark and as such creates sufficient similarity between the trademark and the domain name to render it confusingly similar (see section 4(a) of the Policy).
(iii) Based upon the virtual identity between Respondentís domain name and Complainantís mark, internet users and consumers are likely to be confused into believing there is some affiliation, connection, approval or association between Respondent and Complainant when in fact no such affiliation or association exists.
(iv) Complainant is the owner of two federal trademark registrations for DUNLOP, as well as the common law rights therein, is the owner of the domain name <dunloptires.com>, and has not licensed or otherwise permitted Respondent to use any of its marks or to apply for or use any domain name incorporating its mark (see Section 4(a) (ii) of the Policy).
(v) Aside from the rights derived from its incontestable federal registration, Complainant has acquired substantial reputation under common law by virtue of its substantially exclusive and continuous use of its mark since at least as early as 1893.
(vi) Respondent is not making a legitimate non-commercial or fair use of the subject domain name, in that it is warehousing the domain with hopes of extorting money from the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
In the light of the above, the Panel may draw such inferences from the Respondentís failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainantís trademark or service mark;
(ii) 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.
A. Identical or Confusingly Similar
The Complainant has federally registered DUNLOP in the United States in connection with tires and has made continuous use of its mark since 1893. Complainant also owns the domain name registration <dunloptire.com>. The disputed domain name incorporates Complainantís distinctive trademark and as such creates sufficient similarity between two disputed domain names to be confusingly similar (see Section 4(a) of the Policy).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainantís trademarks pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant for using its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panelís review is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainantís trademark is very well known worldwide, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainantís trademark.
Bad faith can be presumed based on the fame of Complainantís mark, such that that Respondent was aware or should have been aware of Complainantís well-known mark and claim of rights thereto. Furthermore, any trademark check of the records of the United States Patent and Trademark office would have made Complainantís registration known to Respondent.
The domain name has been held passively by Respondent and not used for any purpose since it was registered. Such "passive" holding of a domain name is evidence of bad faith (see Quanta S.p.A. v. François Kyan, WIPO Case No. D2003-0158; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172).
The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the domain name in bad faith.
In the light of the above, the Panel concludes that the Complainant has proven had faith in registration and use on the part of the Respondent.
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, <dunloptires.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: December 15, 2003