Complainant is The Goodyear Tire & Rubber Company, United States of America (“United States”), represented by Brennan, Manna & Diamond, LLC, United States.
Respondent is Contact Privacy Inc., Customer 0140721886, Canada / River Oaks Tire & Services Center, Inc., United States / Kyle Martin, Goodyear Tire Center, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 14, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 24, 2020. 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 15, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on October 6, 2020. 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 is the owner of numerous United States Trademark and Service Mark Registrations for the mark GOODYEAR, including United States trademark registration No. 0507923 registered on March 22, 1949 in International Classes 07, 12 and 17 (the “GOODYEAR Mark”). The Domain Name was registered on March 8, 2010 and resolved to a website presenting the “River Oaks Tire & Services Center, Inc.” displaying Complainant’s GOODYEAR Mark and advertising tire goods and services. 5. Parties’ Contentions A. Complainant With respect to the first element of the Policy, Complainant alleges that the Domain Name consists of Complainant’s registered GOODYEAR Mark plus the geographic term, “River Oaks.” Complainant contends where the Domain Name incorporates Complainant’s trademark in its entirety, the addition of geographic terms does not avoid confusing similarity between the Domain Name and Complainant’s trademark. With respect to the second element of the Policy, Complainant alleges that Respondent is in no way affiliated with Complainant and is not an authorized reseller or service provider of any of Complainant’s goods or services. In addition, Complainant points out that there is no evidence in the record to suggest that Respondent is commonly known by the term “Goodyear River Oaks”. Complainant asserts that Respondent is attempting to either misappropriate Complainant’s corporate identity, or palm off of the goodwill that Complainant has built in GOODYEAR Mark, as well as, siphon off people searching for Complainant’s existing domain names With respect to the third element of the Policy, Complainant bases its claim of bad faith registration and use on the fact that Respondent registered and is using the Domain Name, which is confusingly similar to Complainant’s domain name and GOODYEAR Mark in an effort to misappropriate Complainant’s identity and purposefully frustrating Internet users from visiting Complainant’s website. Complainant points out that the Domain Name presents a potential loss of customers due to Internet user impatience, caused by Respondent’s deliberate attempts to generate confusion, disrupts Complainant’s business, and constitutes bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and, (iii) the Domain Name has been registered and is being used in bad faith. Noting Respondent’s failure to respond to the Complaint, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of at least eleven trademark registrations in the United States for trademarks containing the word GOODYEAR, including a date of first use that dates back to October, 1906. It is well-established, and the Panel agrees, that the addition of a descriptive or dictionary word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans,WIPO Case No. D2010-0097. Furthermore, the Panel also agrees with the finding of previous WIPO UDRP panels that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See e.g., Playboy Enterprises International Inc. v. Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart.,WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda,WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437. Here, the addition of “River Oaks” is similarly insufficient to distinguish the Domain Name from Complainant’s GOODYEAR Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s GOODYEAR Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Here, Complainant asserts that Respondent is not an authorized reseller or service provider of any of Complainant’s goods. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn,WIPO Case No. D2010-1017;. Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions. As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Goodyear”. Complainant asserts that the Domain Name resolved to a website that imitated Complainant to palm off its goodwill. Respondent has not submitted any response to rebut these allegations. The Panel notes that the website at the Domain Name describes Respondent as a “Family-owned and operated by the Martin family since 1982, the ASE certified mechanics at River Oaks Tire & Service Center have been providing exceptional automotive repair services to the community for over 30 years.” There is no disclaimer on the website disclosing the relationship between Complainant and Respondent. The Panel finds that the use of the Domain Name in this manner to divert Internet traffic is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding analyzing this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed,WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka,WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.) Without a response from Respondent justifying its use of the Domain Name as authorized by Complainant or as fair use, the Panel cannot find Respondent has a legitimate interest. In addition, where a domain name consists of a trademark plus a geographic term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to Complainant’s GOODYEAR Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed, and in fact, the addition of the geographic term “River Oaks” increases the likelihood of confusion because consumers are likely to believe the Domain Name is for the River Oaks, Texas location of Complainant. As discussed herein, Respondent registered the Domain Name and linked it to a website that Complainant contends used the GOODYEAR Mark, and which was advertising tire sales and services. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). As detailed above, the Panel finds on the record before it that Respondent’s alleged intention in registering the Domain Name was more likely than not to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Thus, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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 Domain Name John C. McElwaine
Sole Panelist
Date: October 19, 2020
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