WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inoue Rubber Co., LTD v. Pythagoras FZE, Administrator of the Day
Case No. D2018-0230
1. The Parties
The Complainant is Inoue Rubber Co., LTD of Nagoya, Japan, represented by Bruno Suttles, United States of America (“United States”).
The Respondent is Pythagoras FZE, Administrator of the Day of Ras Al Khaimah, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <irctire.com> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on March 28, 2018. 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 was founded in 1926. It has its headquarters in Japan with offices globally. The Complainant manufactures and sells motorcycle, bicycle and wheelchair tires. Group sales globally were USD 2 billion in 2017. The Complainant has several website addresses using the IRC brand, including “www.irc-tire.com” “www.irctires.com” and “www.irctireusa.com”. Its global site uses the domain name <irc-tire.com>. IRC Tire is used extensively in advertising, packaging and promotional items. The Complainant also maintains social media pages on Facebook and Instagram.
The Complainant is the proprietor of a trademark for IRC (United States Patent and Trademark Office (“USPTO”) Registration Number 0975501), with a Registration Date of December 25, 1973, registered in International Class 12 for bicycle and motorcycle tires and tubes, with a first use in commerce in 1960.
The domain name in dispute, <irctire.com> (hereafter the “Domain Name”), was registered on March 3, 2000.
5. Parties’ Contentions
The Domain Name resolves to an automotive tire website which is in no way affiliated with the Complainant. This is very confusing to Internet users as the Complainant only manufactures and sells motorcycle, bicycle and wheelchair tires (as opposed to car tires). Thus, when the Complainant’s customers enter the company name, IRC Tire into a browser and type “www.irctire.com”, they are taken to products that have nothing to do with the Complainant. This is harmful to the Complainant’s brand (and confusing). The Respondent is not affiliated with the Complainant. Nor does it have a business associated with the Domain Name. It is believed that the Respondent is a domain name squatter. There is evidence to suggest that the Domain Name is for sale (“https://whois.domaintools.com/irctire.com”) but when the Complainant attempted to contact the Respondent, on several occasions, by email and telephone, there was no response. Investigations have revealed that the Respondent is associated with several other domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the IRC trademark by virtue of its USPTO registration (and most probably also unregistered trademark rights in the brand ‘IRC Tire’ by virtue of its extensive use of that mark).
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s IRC trademark, followed by the word “tire”. As the IRC registered trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The IRC trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “tire” which follows it, renders the Domain Name something other than confusingly similar. In the Panel’s view, it does not. The nature of such term may however bear on assessment of the second and third elements. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, if one were to compare the Domain Name to the mark in which the Complainant, in all likelihood, has unregistered rights, namely “IRC Tire”, mark and Domain Name would be identical.
The Panel finds that the Domain Name is confusingly similar to the registered IRC trademark (and, to the extent the Complainant enjoys unregistered rights, identical to the “IRC Tire” mark) for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant (as is the case here), it might still be able to demonstrate rights or legitimate interests. For instance, where a respondent can demonstrate that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers, rights or legitimate interests may be established. However, in this case, the Respondent is not known by the Domain Name and, given the nature of the website to which the Domain Name resolves, it cannot be said that there is legitimate noncommercial or fair use. In any event, for a respondent to rely on legitimate noncommercial or fair use, there must be an absence of an intent to mislead but here, the Respondent’s choice of Domain Name may well suggest the opposite, i.e. that there was in fact an intent to mislead Internet users into believing that there is some form of association between the Respondent and the Complainant. Indeed, inclusion of the word “tire” in the Domain Name implies an intention to mislead given the nature of the Complainant’s business.
A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, given the Complainant’s description of the webpage to which the confusingly similar Domain Name resolves, i.e. a third party site concerning automotive tires, it is unlikely that such use could amount to a bona fide offering of goods or services without clear justification. No such justification has been advanced in this case, or indeed appears likely.
It is not clear when the Complainant began using its registered mark in conjunction with “Tire”. The Domain Name was registered some time ago (in 2000) but it is for the Respondent to answer the Complaint and show, despite a prima facie case being made out by the Complainant (on rights/legitimate interests) that it (the Respondent) nevertheless does have rights or legitimate interests in the Domain Name. The Respondent has played no part in these proceedings and the Panel can only assume that there is nothing it could have said that would have provided evidence of rights or legitimate interests in the Domain Name (or otherwise answered the Complaint). The Panel therefore finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Thus, one way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Another is to show that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or for the purposes of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The examples in the Policy of circumstances suggesting bad faith registration and use are non-exhaustive. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Here, we have a well-known mark (IRC) of which the Respondent is very likely to have been aware given the use to which the confusingly similar (identical, if comparing the IRC Tire brand) Domain Name has been put. In these circumstances, it is incumbent on the Respondent to come forward with an explanation if it is to avoid the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that has been taken into account in past decisions in considering bad faith under the Policy.
As previously mentioned, the inclusion of the word “tire” in the Domain Name implies an intention to mislead and attract Internet users to the Respondent’s site because of a likelihood of confusion with the Complainant’s mark(s). In all the circumstances of this Complaint, including non-participation of the Respondent, the Panel finds that for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <irctire.com> be transferred to the Complainant.
Date: April 5, 2018