WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bridgestone Brands, LLC v. Inc. Services
Case No. D2017-0957
1. The Parties
Complainant is Bridgestone Brands, LLC of Nashville, Tennessee, United States of America ("U.S."), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., U.S..
Respondent is Inc. Services of Akron, Ohio, U.S.
2. The Domain Name and Registrar
The disputed domain name <firestone.feedback> (the "Domain Name") is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 15, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2017. Respondent did not submit a response. Accordingly, the Center notified Respondent's default on June 12, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 20, 2017. 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
Complainant and its predecessors in interest, related companies, and licensees have used the FIRESTONE trademark and name for over a century, dating from 1903 when The Firestone Tire and Rubber Company produced its first tire. By 1906, sales passed the million-dollar mark and in that same year, Complainant delivered 2,000 sets of tires to the Ford Motor Company – the largest order for tires placed by the auto industry at the time – starting a business partnership that lasted for decades. In 1911, the first Indianapolis 500 car race was won on a set of FIRESTONE tires. By 1948, 25 consecutive Indianapolis 500 races had been won on FIRESTONE tires, and Complainant has maintained its visibility in the Indianapolis 500 over the years, providing tires for the winning car in over 50 races between 1911 and 2016.
Over the course of the 20th century, The Firestone Tire and Rubber Company continued to expand its FIRESTONE branded product offerings, grow in size, and enjoy commercial success. In 1930, the first commercially-sponsored musical program on radio, THE VOICE OF FIRESTONE, hit the air and lasted for 35 years. The year 1943 saw the premiere of FIRESTONE TELEVUES, a regularly presented television program. By 1950, The Firestone Tire and Rubber Company had grown into a worldwide organization employing more than 70,000 people. By 1955, it had become the world's largest rubber producer. By 1975, the company had grown into a multi-billion dollar, diversified, international manufacturing and merchandising enterprise, with operations in 28 countries and six continents. In 1988, The Firestone Tire and Rubber Company entered into a joint tire manufacturing venture with Bridgestone Corporation and, one year later, merged into a single company.
Today, Complainant and its related companies and licensees develop, manufacture, and market FIRESTONE branded tires for virtually every type of land vehicle, including tires for passenger, light truck, commercial truck and bus, agriculture, and off-the-road vehicles. Complainant's tires have one of the largest market shares for passenger vehicles and have been offered as original equipment on some of the world's top-selling cars and trucks, including those made by BMW, Toyota, Nissan, General Motors, Chrysler, Daimler (Mercedes-Benz), Mazda, Subaru, and others.
In addition to tires, Complainant and its related companies have offered retail store services under the FIRESTONE mark since 1926. Through its related company, Bridgestone Retail Operations, over 1,700 Firestone Complete Auto Care retail stores provide a full assortment of tires and automobile maintenance and repair services nationwide. Complainant's tires are sold through approximately 2,200 company-owned stores and 10,000 independent wholesalers and retailers throughout the country—ranging from retailers such as WAL-MART and SEARS to independent tire dealers.
Complainant and its related companies and licensees spend tens of millions of dollars annually advertising, marketing, and promoting the FIRESTONE mark through every type of digital, broadcast, and print media, including print advertisements (e.g., magazines and newspapers), television and radio commercials, Internet advertising, social media, billboards, brochures, catalogs, point-of-sale displays, sponsorships, trade shows, and promotional items. The FIRESTONE mark has also been promoted online through various company websites, popular social-networking websites (including Facebook, Twitter, and YouTube) and advertising on third-party websites. As a result of the distinctive nature of the FIRESTONE mark, its long-standing and widespread use, plus advertising, publicity, and promotion; and billions of dollars of sales, the FIRESTONE mark is well known and famous.
Complainant's rights in its FIRESTONE mark are based on its trademark registrations and common-law rights acquired through the substantial and continuous use since around 1900. Complainant owns the following trademarks registered with the United States Patent and Trademark Office (USPTO) for the FIRESTONE mark, most of which are incontestable:
- U.S. Trademark Reg. No. 0140804 for the mark FIRESTONE; filed April 5, 1920; registered March 29, 1921; covering "rubber tires" in International Class 7 (asserting a first-use date of 1900);
- U.S. Trademark Reg. No. 0948402 for the mark FIRESTONE; filed May 10, 1971; registered December 12, 1972; covering "raw or partly prepared plastic resins in the form of powders, granules, pellets, or chips, for further use in the industrial arts" in International Class 1 (asserting a first-use date of June 10, 1958);
- U.S. Trademark Reg. No. 1178631 for the mark FIRESTONE; filed February 15, 1980; registered November 17, 1981; covering "retail tire and automotive store services" in International Class 42 (asserting a first-use date of 1928);
- U.S. Reg. No. 2223630 for the mark FIRESTONE; filed April 7, 1997; registered February 16, 1999; for "providing, by means of an on-line computer network, information in the field of roofing and other building products" in International Class 37 (asserting a first-use date of January 14, 1996);
- U.S. Trademark Reg. No. 4240996 for the mark FIRESTONE; filed February 13, 2012; registered November 13, 2012; covering "credit union services" in International Class 36 (asserting a first-use date of July 31, 1965).
The Domain Name was registered on July 26, 2016.
5. Parties' Contentions
(i) Identical or confusingly similar: Complainant states that the incontestable registrations for its FIRESTONE trademark on the U.S. Principal Register constitute conclusive evidence of the validity of its FIRESTONE mark, of Complainant's ownership of the mark, and of Complainant's exclusive rights to use the mark throughout the United States. Complainant's rights in the FIRESTONE mark predate Respondent's registration of the Domain Name by over a century.
Complainant contends the Domain Name is confusingly similar to Complainant's FIRESTONE mark because it is identical to the mark, adding only the non-distinguishing generic Top-Level Domain ("gTLD") ".feedback." The gTLD is insufficient to distinguish the Domain Name from Complainant's FIRESTONE mark. UDRP panels have consistently held that gTLDs are inconsequential when conducting an analysis of confusing similarity. Specifically, panels have held that the addition of the gTLD ".feedback" actually increases the confusing similarity because it suggests this is an official website of Complainant soliciting feedback from its customers regarding its goods and services.
(ii) Rights or legitimate interests: Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. In particular, Respondent is using the Domain Name to attract visitors to its fake review website by impersonating Complainant and trading off on it name, logos, contact information, notoriety, and reputation. Complainant states the Domain Name resolves to a website disguised as an official FIRESTONE website featuring what are passed off as genuine and current customer feedback comments. The website displays the FIRESTONE mark and the famous F logo, as well as Complainant's actual address and links to its official <firestone.com> website and Facebook page. Under the guise of customer "feedback", Respondent's website features purported customer comments about Complainant's products and services. However, these comments are not what they seem. Some comments appear to have been copied in their entirety from another website and have been altered to feature current postings dates. It also appears that Respondent censors customer feedback. The Domain Name was registered on July 26, 2016, but an inspection of the reviews posted on Respondent's website reveals that many of them were written long before the Domain Name was registered. For example, on July 22, 2008, a customer posted on Yelp: "Beat Wheel Works price got an appointment right away. The car was done when promised. The close proximity to downtown Campbell was great easy walk good places to eat." The identical review was posted on Respondent's website more than eight years later on August 5, 2016. Complainant has provided evidence of numerous other prior Yelp reviews that have been copied to Respondent's site. Furthering its deceptive nature as a genuine FIRESTONE customer feedback forum, Respondent registered the Domain Name using Complainant's contact information, specifically, the identical information used for Complainant's <firestone.com> domain name. Complainant indicates that previous UDRP panels have found that such use of a domain name in association with a fake review website does not constitute a bona fide offering of goods or services.
In addition, Complainant asserts that Respondent's use of the Domain Name does not constitute fair use. According to Complainant, when a website purports to be a site for customer reviews or criticism, UDRP panels require evidence that the domain name is being used for the genuine airing of criticism. Here, Complainant states the evidence demonstrates that the website is not a genuine review site: (a) the purported customer comments are in many cases copied from another website; (b) the dates of the posts are altered to give the false impression that they are relatively current ― many have actual dates since before the Domain Name was created; (c) it appears that the comments are censored; and (d) the comments are presented alongside Complainant's mark, logo, contact information, and links to its genuine social media pages ― all of which are likely to mislead visitors to mistakenly believe that the site is put up or approved by Complainant and that the posts are genuine and credible. Complainant asserts that in almost identical circumstances involving ".feedback" gTLD websites, UDRP panelists found no legitimate noncommercial or fair use.
Complainant also states that Respondent has not been commonly known by the Domain Name. Nothing in Respondent's WhoIs information or the record demonstrates that Respondent is commonly known by the Domain Name, and Complainant has not authorized Respondent to use the FIRESTONE mark. Finally, Complainant states that Respondent has no rights or legitimate interests in the Domain Name because Respondent used false contact information to masquerade itself as Complainant.
(iii) Registered and used in bad faith: Complainant contends that Respondent's registration and use of the Domain Name meet the grounds of bad faith outlined in the Policy, as well as additional grounds of bad faith articulated in previous UDRP decisions.
Complainant contends that Respondent's registration and use of the Domain Name constitutes bad faith under Policy, paragraph 4(a)(iii), as has been recognized by two virtually identical cases involving domain names registered in the ".feedback" gTLD. See LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, WIPO Case No. D2016-2181 (finding the respondent registered and used the domain name <lacoste.feedback> in bad faith where it (i) extensively reproduced the LACOSTE trademarks, including the famous crocodile logo, (ii) intentionally created confusion between it and the complainants by giving official information and links to consumers, and (iii) featured non-reliable consumer reviews, selecting reviews posted on another website and identically reproduced except for the posting dates, which had been modified); De Beers Intangibles Limited v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2016-1465 (finding bad faith registration and use of the <debeers.feedback> domain name where respondent used it in connection with a fake review website).
Complainant further states that Respondent's registration and use of the Domain Name constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy because Respondent uses the Domain Name for a fake review website that passes itself off as an official Complainant website by displaying Complainant's FIRESTONE mark, famous F logo, and contact information, all of which create a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of the website. Though Respondent's website includes a disclaimer in small font at the bottom right side of the page, the presence of a disclaimer does not nothing to cure Respondent's bad faith. Complainant also states that Respondent's registration and use of the Domain Name constitutes bad faith under the Policy because Respondent provided false registration information when registering the Domain Name.
Finally, Complainant contends that Respondent undoubtedly knew of Complainant's rights in the FIRESTONE mark prior to registering the Domain Name, especially given Complainant's federal trademark registrations and the fame and long-standing use of its FIRESTONE mark, the fact that the Domain Name incorporates Complainant's FIRESTONE mark in its entirety, and Respondent's impersonation of Complainant through the Domain Name. By registering the Domain Name with knowledge of Complainant's rights in the FIRESTONE mark, Respondent acted in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Paragraph 15(a) of the Rules provides that the Panel will decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decision (as it has requested) that the Domain Name be transferred to it:
(i) The Domain Name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel determines that Complainant has strong rights in its well-known FIRESTONE trademark, based on the evidence of Complainant's numerous trademark registrations, as well as the use and widespread promotion of the FIRESTONE mark for over 100 years.
The Panel finds that the Domain Name is identical to Complainant's FIRESTONE trademark. In this regard, the ".feedback" gTLD is irrelevant to the confusing similarity analysis. As stated by section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[t]he applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." See LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra (the domain name <lacoste.feedback> is identical to the trademark in which the complainants have rights, disregarding the gTLD ".feedback;" this gTLD tends to increase rather than diminish the confusing similarity); De Beers Intangibles Limited v. Domain Admin, WhoIs Privacy Corp., supra (ruling the domain name <debeers.feedback> is identical to the complainant's DE BEERS trademark, disregarding the gTLD ".feedback").
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
As to the second element of the Policy, WIPO Overview 3.0, section 2.1, states that "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests with respect to the Domain Name, while Respondent has failed to submit a Response. Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use its FIRESTONE mark. Complainant has submitted evidence that Respondent is using the Domain Name to attract visitors to a fake review website by impersonating Complainant, including trading off on Complainant's trademark, name and logos, while using false contact information both on the website and in the WhoIs record for the Domain Name to masquerade as Complainant – all of which are likely to mislead visitors to mistakenly believe that the website was created or approved by Complainant and that the review posts are genuine. Complainant asserts that in almost identical circumstances involving ".feedback" gTLD websites, UDRP panelists found no legitimate noncommercial or fair use. See LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra ("The fact that the Respondent creates confusion between it and the Complainants by (i) extensively reproducing the LACOSTE trademarks including the famous crocodile logo, (ii) providing links to official Lacoste website and social networks, and (iii) reproducing only the best consumer reviews copied from another website and changing the posted dates of same, supports the Complainants' claim that this apparent usage is not a legitimate noncommercial or fair use. The Panel notes that the appearance of the <lacoste.feedback> website and the consumer reviews are extremely suspicious. It provides strong support to the Complainants' allegation."); De Beers Intangibles Limited v. Domain Admin, WhoIs Privacy Corp., supra (finding <debeers.feedback> was not used for legitimate noncommercial or fair use purposes where the website reviews were not genuine, stating: "If the website were genuinely operating as a feedback forum, one would ordinarily expect the reviews to have appeared at or close to their respective dates. That they were not on the website on March 24 and did not appear until after the letter of demand was sent calls for explanation.").
Accordingly, Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark."
Here, the Panel finds there is clear evidence that Respondent targeted Complainant's FIRESTONE trademark when it registered the Domain Name, which includes the mark in its entirety. Further, the Domain Name has been used to take unfair advantage of Complainant's mark. As discussed above, Respondent registered the Domain Name for purposes of using it for a fake review website, impersonating Complainant through the content of the website as well as by providing false registration information corresponding to Complainant's contact information. See LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra ("Doubts on the bad faith of the Respondent, if any, are removed by the illegitimate use of the postal and email addresses of the Complainants in the WhoIs contact information.").
The Panel concludes that Respondent's registration and use of the Domain Name for a fake review website impersonating Complainant constitutes bad faith under paragraph 4(b)(iii) of the Policy. The use of a disclaimer by Respondent does nothing to change the Panel's determination in this regard. See WIPO Overview 3.0, section 3.7 ("[…] where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith."); LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, supra (the presence of a disclaimer on the respondent's <lacoste.feedback> site did not cure bad faith); De Beers Intangibles Limited v. Domain Admin, WhoIs Privacy Corp., supra (bad faith found in registration of <debeers.feedback> website despite presence of disclaimer).
The Panel determines that Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <firestone.feedback>, be transferred to Complainant.
Christopher S. Gibson
Date: July 6, 2017