WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Just Wheels & Tires Co. d/b/a TSW Alloy Wheels v. Covanta Corporation / DNS Admin Case No. D2009-1242 1. The Parties
The Complainant is Just Wheels & Tires Co. d/b/a TSW Alloy Wheels of California, United States of America (“USA”) represented by Jackson DeMarco Tidus Petersen & Peckenpaugh of the USA.
The Respondents are Covanta Corporation of the USA and DNS Admin of Panama (collectively, the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Covanta Corporation a/k/a Gregory Ricks on September 17, 2009.
The Center transmitted its request for registrar verification to the Registrar on September 18, 2009. The Registrar replied on September 19, 2009, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name was locked and would expire on July 31, 2010, and that the registration agreement was in English. The Registrar also provided the contact details in respect of the Domain Name on its WhoIs database, which identified the Registrant as Domain Admin covanta@ Covanta Corporation with an address in the USA.
The Center verified that the Complaint satisfied the formal requirements of the 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”).
Following the registrar verification, the details of the registrant of the Domain Name on the Registrar's WhoIs database were changed to DNS Admin directnav@ Direct Navigation Associates with a different email address and a postal address in Panama. The Registrar confirmed the revised details, but did not explain how they were changed when the Domain Name was supposed to have been on Lock status.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2009. The notification was sent to the addresses on the Registrar's WhoIs database as stated in the registrar verification and as subsequently changed. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 27, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant has produced, marketed and sold wheel products under the mark TSW since 1992 and has registered TSW as a trademark on the primary register in the USA since 1997.
The Domain Name was transferred from Moniker Privacy Services to the Respondent on November 28, 2008, and resolves to a website which displays links to websites of third parties selling wheel products. 5. Parties' Contentions A. Complainant
The Complainant contends that it has common law and registered rights in the mark “TSW”. It submits that the Domain Name is confusingly similar to this mark, since it differs from the mark only in the addition of the word “wheels”, which is descriptive of the Complainant's products and serves only to amplify the risk of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points out that the Respondent has no relationship with it and no permission to use its mark. It states that its mark was already well-known when the Domain Name was originally registered in 2003. It submits that the links which the Respondent's website displays do not constitute a bona fide offering of goods or services. It states that the Respondent is not commonly known by the name “tswwheels” and that the Respondent's use of the Domain Name is not non-commercial or fair.
The Complainant further alleges that the Domain Name has been registered and is being used in bad faith. It draws attention to previous findings of bad faith registration and use made against the Respondent or its President, Gregory Ricks, under the UDRP. It submits that the Respondent is attempting to attract Internet users to its website for commercial gain by creating the appearance that the Complainant is the source, sponsor, affiliate or endorser of the Respondent's website.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
As stated above, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which it has rights; (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.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark TSW.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the word “wheels”, which describes the Complainant's principle product, and the generic top level domain suffix. The Panel considers that many Internet users would assume that the Domain Name was registered by the Complainant to promote its business of selling wheel products under the mark TSW
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel considers that the use made by the Respondent of the Domain Name does not constitute a bona fide offering of goods or services for the purpose of paragraph 4(c)(i) of the UDRP. The content of the Respondent's website appears to be automatically generated and does not provide any real service. In any case, the Panel finds that it is not a bona fide use of the Domain Name. On the contrary, it is a use in bad faith to attract Internet users to the Respondent's website by confusion with the Complainant's mark and to profit from click-through commissions when some of those Internet users are diverted by the links provided to other websites.
It is evident that the Respondent is not commonly known by the Domain Name or any corresponding name. The Panel further finds that the Respondent is not making legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent is making illegitimate and unfair use of the Domain Name to profit through click-through commissions from confusion and diversion of Internet users as described above.
On the evidence, there does not appear to be any other basis on which the Respondent could claim to have rights or legitimate interests in respect of the Domain Name, and the Panel finds that it does not. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain in the form of click-through commissions on sponsored links by creating a likelihood of confusion with the Complainant's trademark as to the source of the website.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith. There is no material in the file which displaces this presumption. Previous findings of bad faith against the Respondent or its President under the UDRP and the changes made to the registration of the Domain Name in this case following the Complaint corroborate the evidence of bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied. 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 be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: November 6, 2009
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