The Complainant is Arai Helmet Americas, lnc. incorporated in New Jersey, with its principal place of business in Daytona, Florida, United States of America, represented by Oliff & Berridge, PLC, Virginia, United States of America.
The Respondents are PrivacyP. of Nobby Beach, Queensland, Australia and Domain Tech Enterprises of Santiago, Chile. 2. The Domain Name and Registrar
The domain name (the “Disputed Domain Name”) is registered with Power Brand Centre Corp (the “Registar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2011. On June 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. After numerous attempts to contact the concerned Registrar in relation to the verification of registrant data and domain name lock status, 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”), on the basis of the unverified registrant data in the Registrar’s publicly-available WhoIs. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified PrivacyP of the Complaint on July 5, 2011. On July 7, 2011, the Registrar transmitted by email to the Center its verification response, stating that its “mail server upgrade caused our systems to crash and resulted in so many problems”, and proceeded to indicate that the Domain Name had been Registrar locked, and 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 July 7, 2011 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to amend its Complaint by July 12, 2011.
The Complainant submitted the amended Complaint on July 8, 2011. The Centre verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UDRP, Rules and Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified both Respondents (i.e., the privacy service that was featured as the registrant at the date of the filing of the Complaint and the true registrant subsequently identified by the Registrar) of the Complaint, and the proceedings commenced on July 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2011. No formal Response was received by the due date. Accordingly, the Center notified the Respondents’ default on July 29, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 3, 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.
Having examined the Complaint, the Panel noted that the Complainant had not demonstrated that it has rights in the ARAI trade mark, which is owned by Arai Helmet, Ltd (a Japanese company which is not a party to these proceedings). Accordingly the Panel issued a Panel Order No. 1 on August 25, 2011, inviting the Complainant to provide further submissions relating to its rights in the ARAI trade mark by August 30, 2011, with the Respondents to reply by September 2, 2011. The Complainant submitted further submissions on August 26, 2011. The Respondents failed to submit any additional submissions.
The Panel notes that both PrivacyP and Domain Tech Enterprises are Respondents in these proceedings. However, the Panel shall treat the true registrant of the Disputed Domain Name, Domain Tech Enterprises, as the substantive Respondent and subsequent references in this Decision to the “Respondent” shall be construed as references to Domain Tech Enterprises. 4. Factual Background
The Complainant is the United States (“US”) affiliate of a well-known Japanese producer of motorcycle and automobile racing helmets. The Complainant’s Japanese affiliated company has been producing headgear since 1937 and now sells its products in over 40 countries. Several well-known drivers and motorcycle competitors use Arai branded helmets, and the brand has won several customer satisfaction awards. The Complainant has sold headgear under the ARAI mark in the US since 1971, and its affiliated company first secured registration of its trade mark in the US in 1974.
The Complainant markets its products using its website located at “”, which prominently features the trade marks ARAI and ARAI HELMETS.
The Disputed Domain Name was registered on October 11, 2008. The Disputed Domain Name currently resolves to a parking page containing links to helmet retailers selling helmets produced by the Complainant and third party manufacturers (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s trade marks. The Disputed Domain Name incorporates the Complainant’s ARAI trade mark and is confusingly similar to the Complainant’s other trade marks;
(b) The Respondent has utilised the Complainant’s trade marks in an attempt to confuse shoppers and to divert customers from the Complainant’s website;
(c) The Disputed Domain Name is currently parked and contains links to the Complainant’s products. Moreover, the Website contains sponsored links to retailers from which the Respondent generates revenue;
(d) Shoppers visiting the Website are likely to be confused as to the origin and sponsorship of the Website as well as to the relationship between the Complainant and the owners of the linked websites;
(e) The Respondent is neither licensed nor otherwise authorised to use the Complainant’s trade marks. The Complainant is not aware of any trade marks owned by the Respondent for the ARAI mark in the US. The Respondent is not making any use of the Disputed Domain Name in connection with a bona fide offering of goods or services and it is not commonly known by the Disputed Domain Name; and
(f) The Disputed Domain Name was registered and is being used in bad faith which is also supported by the fact that the Respondent has hidden its identity using a privacy service. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file such Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences submitted by the Complaint as true. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Disputed Domain Name be identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. It does not require that the Complainant is the owner of any such trade mark rights, nor that it is the exclusive licensee of such rights (see American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A.,WIPO Case No. D2004-0473).
The owner of the ARAI trade mark relied upon has been shown to be Arai Helmet, Ltd., a Japanese Corporation which is not a party to these Proceedings. Arai Helmet, Ltd holds a US registration for the ARAI trade mark, which dates back to 1974 and has used this mark in commerce since 1937.
The Complainant submitted a Statutory Declaration signed by its President, in which it is stated that while no formal licence agreement has been entered into between Arai Helmet, Ltd and the Complainant with respect of the ARAI trade marks, the Complainant is authorised by Arai Helmet, Ltd to use the ARAI trade marks (and to authorise others to use the ARAI trade marks), in connection with its promotional activities. Further, it is stated in the Statutory Declaration that the owner of Arai Helmet, Ltd is a majority shareholder of the Complainant (with the President of the Complainant being the only other shareholder), and that the Complainant is authorised, as agent for Arai Helmet, Ltd, to take steps to protect the ARAI trade mark in the Americas, including filing the present proceedings.
The Panel notes that while the Complainant submitted a Statutory Declaration of its President in which it was stated that the Complainant is authorised by Arai Helmet, Ltd to use the ARAI marks, no such confirmation was provided by Arai Helmet, Ltd as the owner of the trade marks in question. Further, while the Statutory Declaration contained statements relating to the common shareholding of the Complainant and Arai Helmet, Ltd, no evidence was provided to support such statements.
Despite this, the Panel believes that it is possible to conclude from the entire circumstances, that the Complainant has been authorised by Arai Helmet, Ltd to use the ARAI trade marks, and accordingly has rights in such marks. One relevant factor is the Complainant’s relationship with Arai Helmet, Ltd. While the Complainant did not provide evidence supporting its assertion that the two companies have a common shareholder, the Panel notes that the website of Arai Helmet, Ltd directs any customer enquiries relating to the Arai brand in the Americas to the Complainant. Further, the Complainant has been doing business under a company name which incorporates the ARAI trade mark. While neither of these factors in isolation necessarily mean that the Complainant is authorised to use the ARAI marks, the Panel accepts that the combination of these factors tend to support the Complainant’s evidence regarding the relationship between the Complainant and A Arai Helmet, Ltd and the authorisation for the Complainant to use the ARAI trade marks.
In addition, while the Complainant did not make this assertion, the Panel notes that in order to satisfy this element, the Complainant does not need to have rights in a registered trade mark, and rights may flow from common law use of a trade mark. The Panel accepts, based on the evidence provided, that the Complainant has been using the ARAI trade marks to promote Arai helmets in the Americas for a number of years. In the decision of American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A.,WIPO Case No. D2004-0473, the panel supported the view that a complainant may establish that it has rights in a mark for the purposes of paragraph 4(a)(i) of the Policy, by proving that it has used the mark over a period of time. This is consistent with the decision in Arai Helmet Americas, Inc. v. LaPorte Holdings, Inc.,WIPO Case No. D2004-1027, where the panel found that the Complainant had proven that it owns rights in the ARAI trade marks by virtue of its use of these marks, even though the registrations for these marks are held by its affiliated company.
Now that it has been established that the Complainant has rights in the ARAI mark, the Panel turns to the question of whether the Disputed Domain Name is confusingly similar to the ARAI trade mark.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, may be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the ARAI trade mark in which the Complainant has rights in its entirety. The only difference is the inclusion of “usa” as an abbreviation of “United States of America”. It is well-established that in cases where the distinctive and prominent element of a Disputed Domain Name is the Complainant’s trade mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the Disputed Domain Name and the mark. See Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088. The Panel finds that “ARAI” is the distinctive component of the Disputed Domain Name and the addition of the letters “usa” does nothing to distinguish it from the ARAI trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774. Given that the Complainant conducts business under the ARAI trade mark in the US, the “usa” component of the Disputed Domain Name, if anything, serves to increase the likelihood that consumers will be misled into thinking that the Disputed Domain Name is somehow associated with the Complainant’s US business.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the ARAI trade mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that once a Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the Respondent, the Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where the Respondent fails to do so, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent’s rights in the Disputed Domain Name (or lack thereof) based on the Respondent’s use of the Disputed Domain Name in accordance with the available record.
The Panel accepts that the Complainant has not authorised the Respondent to use the ARAI trade mark. The Panel further accepts that there is insufficient evidence to suggest that the Respondent has not become commonly known by the Disputed Domain Name.
Accordingly, the only way for the Respondent to acquire rights or legitimate rights in the Disputed Domain Name in accordance with of 4(c) of the Policy would be through use of the Disputed Domain Name for legitimate noncommercial purposes or in connection with bona fide offerings of goods or services.
The Disputed Domain Name resolves to a website which features sponsored links, promoting the Complainant’s products and those of its competitors. The Panel assumes that the Respondent profits from the advertisement and promotion of these third party goods and services. The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not to be a bona fide offering of goods or services (See PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; and Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437).
The Panel finds that there is insufficient evidence that the Respondent can assert rights or legitimate interests in the Disputed Domain Name. The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent. See Samsonite Corporation v. Colony Holding, NAF Claim No. FA 94313. The Complainant provided evidence that its ARAI trade marks are globally recognised and well-established in connection with automobile and motorcycle helmets, and that said marks were registered over thirty years before the creation of the Disputed Domain Name. Given the degree of fame of the ARAI trade mark throughout the world for many years at the time that the Disputed Domain Name was registered by the Respondent, as well as the fact that a number of links on the Website make reference to the Complainant's products, the Panel accepts that the Respondent was aware of the Complainant’s ARAI trade mark at the time of registering the Disputed Domain Name.
Given the fame of the Complainant’s ARAI trade mark, the Panel accepts that the Respondent has registered and used the Disputed Domain Name solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits, not only by attracting to the Website customers who the Panel accepts would be drawn to the Website on the mistaken assumption that the website was authorised by or connected with the Complainant, but by then redirecting those customers to competitors of the Complainant. See Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.
The Panel accepts that the Respondent registered the Disputed Domain Name for the sole purpose of creating confusion with the Complainant’s famous ARAI trade mark and benefitting from this confusion by generating revenue from sponsored advertising links.
In the circumstances, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 Disputed Domain Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: September 12, 2011
Full & Egal Universal Law Academy