The Complainant is Toyo Tire & Rubber Co. Ltd. of Osaka, Japan, represented by Calcagno Law PLLC, United States of America.
The Respondent is Privacy P of Munsbach, Luxembourg / Domain Tech Enterprises, Domain Administrator of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 15 and 21, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name and a reminder. On March 22, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2011, providing the registrant and contact information disclosed by Power Brand Center Corp. and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 28, 2011.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on March 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 28, 2011. 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 is a Japanese-based manufacturer and distributor of automobile tires. Through its wholly-owned subsidiaries, Nitto Tire U.S.A. Inc. and Nitto Japan Co. Ltd., the Complainant sells its products under the trademark NITTO. The Complainant indicates that its products are sold via a network of roughly 5,730 authorized dealers and that it has used the NITTO mark continuously in connection with its international sales since as early as 1949. Further, the Complainant contends that its sales between the years 1999 and 2010 exceeded USD 1 billion, and in the year 1999 alone (the year prior to the registration of the disputed domain name) its sales totaled USD 33 million.
The Complainant is the owner of several NITTO trademarks, the first of which was registered by a predecessor-in-interest in 1968 and later assigned to the Complainant in 1983. Since that time, the Complainant has registered additional trademarks containing NITTO, including NITTO NT555R EXTREME DRAG, NITTO NT470, NITTO RADIAL ZR4 (collectively the “NITTO marks”), all of which were registered before the creation of the disputed domain name in August of 2000. The Complainant has also registered a number of domain names reflecting its mark, including , which it uses to promote its brand online. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to its NITTO marks as it fully includes the distinctive portion of such trademarks followed by the addition of the descriptive term “tires” and the gTLD “.com”.
The Complainant further contends that it has not authorized the Respondent to use its NITTO marks in any fashion, that the Respondent has no connection to the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use.
Finally, the Complainant states that the disputed domain name was registered and has been used in bad faith due to the length of its use of the NITTO mark in connection with automobile tires, and its numerous registrations for the marks which predate the registration of the disputed domain name. As the website at the disputed domain name displays a number of pay-per-click links for products related to or in direct competition with the Complainant’s products, the Complainant argues that the Respondent has registered the disputed domain name in order to divert Internet traffic to its website for commercial gain in violation of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698.
The addition of a generic word or term which is descriptive of a complainant’s goods or services will not serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. In this case, the descriptive term “tires” has been appended to the Complainant’s registered NITTO mark, which may serve to heighten Internet user confusion.
Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant's NITTO marks and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to rebut this case by showing for example one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the domain name at issue. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its NITTO marks in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, on the website active at the disputed domain name, or in the publicly-available WhoIs records to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the domain name. Additionally, as the website displays pay-per-click links, through which the Respondent appears to generate click-through revenue, the Respondent clearly is not making any legitimate noncommercial or fair use of the disputed domain name. Finally, the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services as it is trading on the goodwill of the Complainant’s trademark in order to generate revenue.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to its rights or legitimate interests in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Complainant provided evidence that its NITTO marks are globally recognized and well-established in connection with automobile tires, and that said marks were registered over thirty years before the creation of the disputed domain name. Additionally, the disputed domain name selected by the Respondent differs from the Complainant’s domain name , where the Complainant hosts its main website, by only one letter. It is therefore inconceivable that the Respondent registered the disputed domain name while unaware of the Complainant’s rights in its NITTO marks.
Furthermore, by fully incorporating the NITTO marks in the disputed domain name and using the disputed domain name in connection with a parking website providing links to third parties’ websites, the Respondent was, in all likelihood, trying to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion with the Complainant’s marks. Such use constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy. See F. Hoffmann-La Roche AG v. DOMIBOT,WIPO Case No. D2006-0327.
Additionally, the Panel notes the Complainant’s contention that the Respondent has previously undertaken similar bad faith registrations of domain names containing third-party trademarks, which provides additional indicia of bad faith in this matter. See Victoria’s Secret Stores Brand Management, Inc. v. Domain Tech Enterprises c/o Domain Administrator, NAF Claim No. 1369407; Capital One Financial Corp. v. Domain Tech Enterprises / Domain Administrator, NAF Claim No. 1375034; and Nautica Apparel, Inc. v. Domain Tech Enterprises / Domain Administrator, NAF Claim No. 1376406.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 7. Decision
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 be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: May 11, 2011
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