WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
South Fork Hardware, Inc., DBA TireChain.com v. Vulcan Sales, Inc., DBA Vulcan Tire Sales
Case No. D2013-0199
1. The Parties
Complainant is South Fork Hardware, Inc., DBA TireChain.com of Johnstown, Pennsylvania, United States of America (“US”), represented by Meyer, Unkovic & Scott, LLP, US.
Respondent is Vulcan Sales, Inc., DBA Vulcan Tire Sales of Sandy, Utah, US, self-represented.
2. The Domain Names and Registrar
The disputed domain names <tirechian.com> and <tirechians.com> are registered with Network Solutions, LLC (the “Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2013. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 29, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013.
On February 12, 2013 the Center received an informal communication from Respondent, which the Center replied to on the same date. The formal Response was filed with the Center on February 25, 2013.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 4, 2013. 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.
On March 11, 2013, Complainant submitted to the Center an unsolicited supplemental submission. On that same day, Respondent sent an email communication to the Center requesting, among other things, to be notified if the Panel was going to consider the supplemental submission filed by Complainant. On March 14, 2013, the Center informed the parties of the Panel’s decision not to accept Complainant’s supplemental submission or a responsive supplemental submission by Respondent.
4. Factual Background
Complainant has used TIRECHAIN.COM and TIRECHAINS.COM (“the asserted Marks”) since 1998. It uses the TIRECHAIN.COM Mark in connection with anti-skid chains for vehicle tires; anti-skid chains for vehicles; chains for motor cars; land vehicle parts, namely, tire chains; and land vehicle parts, namely, tire snow chains. Complainant has a Pennsylvania state trademark registration and a pending application to register TIRECHAIN.COM with the United States Patent and Trademark Office (U.S.P.T.O). Complainant uses TIRECHAINS.COM in connection with a website providing online information concerning safety risks relating to driving in hazardous conditions, including state road conditions, winter driving tips, vehicle safety products and related state laws. Complainant also has a Pennsylvania state trademark registration and a pending application to register TIRECHAINS.COM with the U.S.P.T.O. Complainant previously filed an application to register TIRECHAIN.COM with the U.S.P.T.O. but it was refused registration because it was deemed to merely describe Complainant’s goods and/or services and to be generic in connection with the identified goods.
Respondent registered the Domain Names on September 23, 2004.
Complainant sent a cease and desist letter to Respondent on September 28, 2012. By letter dated October 12, 2012, Respondent responded to Complainant’s letter, among other things, denying Complainant’s claims.
5. Parties’ Contentions
When Complainant filed its first application to register TIRECHAIN.COM with the U.S.P.T.O. it was without the aid of legal counsel. That application was abandoned after Complainant did not provide the Examiner with evidence showing the acquired distinctiveness and secondary meaning of TIRECHAIN.COM as a trademark. The asserted Marks have acquired distinctiveness and a secondary meaning with customers. In this regard Complainant points to external signage for its business using TIRECHAIN.COM, an article dating back to 2000 that refers to TIRECHAIN.COM as the company name for Complainant and that associates the TIRECHAIN.COM name with the related goods, i.e., tire chains. Also Complainant includes posted consumer and client comments on Complainant and specifically reflects consumer acknowledgement of TIRECHAIN.COM as a trade name for Complainant.
The Domain Names are nearly identical and are confusingly similar to the asserted Marks because they reflect “typo squatting”. The Domain Names direct users to Respondent’s primary website “www.vulcantire.com”, which sells various tire products, including tire chains.
Respondent has no rights or legitimate interests in the Domain Names because before any notice to the Respondent of the dispute, the Domain Names led users to a website providing a general listing of vendors for tires (but not tire chains). In response to Complainant’s cease and desist letter, Respondent denied any liability and altered the content associated with the Domain Names so that they now directly link to Respondent’s website. Respondent has not been commonly known by the Domain Names and, instead, has used the mark “Vulcan” to promote Respondent’s goods and services. Respondent has not sought to use the Domain Names in connection with a bona fide offering of goods or services. Respondent is using the Domain Names for commercial gain and with the intent of diverting consumers away from Complainant and/or to tarnish the asserted Marks.
Respondent is using the Domain Names in bad faith because they are being used for the purpose of disrupting the business of a competitor. In addition, by using the Domain Names Respondent is intentionally attempting to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s asserted Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and/or of a product or service on Respondent’s web site.
Complainant has no rights in the Domain Names because neither is a protectable mark. They are generic because they are the common or class name for the goods and services they are associated with, namely tire chains. Adding “.com” does not transform the generic term “tirechain” into a protectable mark.
Complainant’s recent U.S. trademark applications (dated November 05, 2012 and January 16, 2013) have yet to be assigned to an examining attorney. However, one can logically conclude that Complainant’s most recent applications will be refused just as the previous application was refused (and ultimately abandoned) for TIRECHAIN.COM because the term was found to be generic, among other things.
Respondent’s use of the Domain Names is not confusing. When a user enters the websites associated with the Domain Names, Internet users see a webpage that clearly identifies the business as “Vulcan Tire Sales”. Additionally, one can find Respondent’s tire chain products listed on these landing pages. According to a Google web search interest data (“Google Trends”) Complainant is not commonly known as Tirechain.com or Tirechains.com in the tire chain marketplace. Google data shows that search volume for the terms “tirechain.com” and “tirechains.com” is less than 1% of that of the search volume for the term “tire chains”.
The Domain Names are common misspellings of the generic terms “tire chain” and “tire chains” respectively. Because these terms are generic anyone has the right to use them. Additionally, Respondent currently uses and has used the Domain Names to offer tire chain products for many years. Respondent has a long history of selling tire chains online since 1998 and therefore is justified in using the generic term “tire chain” and “tire chains” or their misspellings in a domain name. Additionally, Respondent has recently spent over USD 250,000.00 on pay-per-click advertising featuring tire chain related search terms. Respondent has used the Domain Names in connection with a bona fide offering of goods or services before receiving any notice of the dispute. A bona fide offering of goods started immediately after the Domain Names were registered in 2004.
The Domain Names are being use for the sole purpose of selling tire chain products. Respondent has made no attempt to disrupt Complainant’s business. By using the Domain Names Respondent is attempting to attract Internet users interested in the generic class of product, tire chains. When a user enters the Domain Names into their web browser the user is presented with a webpage that clearly identifies the business as “Vulcan Tire Sales”. The Domain Names were not registered or acquired for the purpose of selling, renting, or otherwise transferring them to Complainant. Respondent has made no attempt to sell them to Complainant. Complainant has offered to purchase the Domain Names from Respondent in the past before sending its “cease and desist” letter. Respondent ignored the offer without knowledge of the price Complainant was offering.
6. Discussion and Findings
To succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Names in dispute are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Supplemental Submissions
The first issue that needs to be discussed is the Panel’s decision not to accept Complainant’s unsolicited supplemental submission. In general, the UDRP makes no provisions for unsolicited filings by either party. While there are occasions when a Panel may request additional filings, the Panel did not do so here.
With respect to unsolicited filings, this Panel is of the view expressed in Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596, that unsolicited submissions will be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances and why the material could not have been submitted with the Complaint.
Complainant has made no showing of exceptional circumstances. The purpose of the supplemental filing is to point out allegedly false assertions Respondent made in responding to the Complaint in this proceeding. In fact, as Complainant points out, the Complaint already provided similar information to the Panel. And Complainant did not explain why the materials in its unsolicited submission could not have been submitted earlier, insofar as it provided similar information earlier. Consequently, the Panel will not consider Complainant’s supplemental filing nor did the Panel deem it necessary to request further briefing from Respondent.
B. Identical or Confusingly Similar
Although Respondent’s registration of the Domain Names with a deliberate typographical error (<tirechian.com> instead of TIRECHAIN.COM, and <tirechians.com> instead of TIRECHAINS.COM) to attract the public to its competing website may suggest bad faith, Complainant has failed to establish on the record here the first element of the Policy -- rights in the alleged Marks. In light of this determination, the Panel does not need to consider whether the Domain Names are identical or confusingly similar to Complainant’s alleged Marks. Nor need the Panel consider whether Respondent has rights or legitimate interests in the Domain Names, nor whether Respondent’s registration and use of the Domain Names were in bad faith.
Complainant attempts to rely on its Pennsylvania state registrations to demonstrate rights in the alleged Marks, however the Pennsylvania registrations are insufficient to establish trademark rights for purposes of the Policy. Because state registrations are issued with no examination, a state registration does not give rise to the same presumptions of validity and ownership as does a federal registration. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.1 (“[P]anels have typically found trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) are not owed the same deference under the UDRP as examined registrations.”).
Another hurdle Complainant has not cleared on the record here is the descriptive and/or generic nature of the alleged Marks. The term “tire chain” is defined as follows: “Noun 1. tire chain - chain attached to wheels to increase traction on ice or snow” (see ”www.thefreedictionary.com/tire+chain”); and “a chain designed to be fastened over the tread of a tire in order to give a firmer grip on a road and esp. to prevent skidding or slipping” (see ”www.merriam-webster.com/dictionary/tirechain”). Complainant has applied to register TIRECHAIN.COM with the U.S.P.T.O. for the very goods defined in these definitions, namely, “Anti-skid chains for vehicle tires; Anti-skid chains for vehicles; Chains for motor cars; Land vehicle parts, namely, tire chains; Land vehicle parts, namely, tire snow chains.” And Complainant has applied to register TIRECHAINS.COM with the U.S.P.T.O. for providing online information concerning safety risks relating to driving in hazardous conditions, for which it includes information about “vehicle safety products”. Complainant uses both of the alleged Marks to sell goods on its website as defined in the aforesaid definitions (e.g., ATV Tire Chains, Care Tire Chains, Farm Tractor Tire Chains, Fork Lift Tire Chains, Lawn Tractor Tire Chains, Snow Blower Tire Chains, Travel Trailer Tire Chains and Truck Tire Chains). And as the U.S.P.T.O. stated in its earlier rejection of Complainant’s application for TIRECHAIN.COM, “[t]he TLD in the applied-for mark indicates an Internet address and, in general, adds no source-identifying significance.” See also Shopping.com v. Internet Action Consulting, WIPO Case No. D2000-0439. Thus, based on the record here, TIRECHAIN.COM and TIRECHAINS.COM appear generic, if not clearly descriptive, of the goods and/or services with which they are used.
Complainant argues that the alleged Marks have acquired distinctiveness and a secondary meaning with customers. In this regard Complainant points to external signage for its business using Tirechain.com, and an article dating back to 2000 posted on the website of “Outdoor Life” at ”www.tirechain.com/outdoorexplorer.htm” entitled “How to Mount Tire Chains”, which refers to a “chain expert” from “tirechain.com” recommending two types of chains for cars and light trucks. Also Complainant provided the Panel with a printout of ratings logged by Internet users on “Epinions” allegedly reflecting customer’s views about Complainant’s business, namely: “overall rating”, “ease of ordering”, “customer service”, “selection” on “on-time delivery”. Complainant argues that these consumer and client comments reflect consumer acknowledgement of Tirechain.com as a trade name for Complainant.
Assuming that TIRECHAIN.COM and TIRECHAINS.COM are not generic, Complainant’s evidence (i.e., external business signage of Tirechain.com and reference in one article) at best shows trade name use of Tirechain.com. Indeed, Complainant acknowledges that the Epinion consumer ratings reflect trade name use. Evidence of trade name use, however, is not necessarily evidence of trademark rights, as is the case here. Complainant’s evidence falls far short of the kind and amount of evidence required to establish secondary meaning and distinctiveness such that the relevant purchasing public exclusively associates the terms with Complainant as a source of services. See Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105; see also WIPO Overview 2.0 at paragraph 1.7 (“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
This Panel finds that Complainant has failed on the present record to fulfill the first element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Date: March 14, 2013