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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bridgestone Corporation v. Horoshiy, Inc.

Case No. D2004-0795

 

1. The Parties

The Complainant is Bridgestone Corporation, Tokyo, Japan, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Horoshiy, Inc., Curacao, Netherlands.

 

2. The Domain Name and Registrar

The disputed domain name <bridgestonegolf.com> is registered with NameKing.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2004. On October 1, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On October 1, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 6, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 13, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2004.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on November 17, 2004. 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 corporation organized and existing under the laws of Japan, with subsidiaries throughout the world. The Complainant is involved in various areas of business, including the manufacture of golf equipment, sponsorship of golf tournaments and golf athletes, etc. The Complainant began using the name “Bridgestone” as its name since 1928 and holds various trademark registrations throughout the world, most of which include some form of the term “Bridgestone”.

The Respondent registered the subject domain name on November 27, 2002.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to and confusingly similar to Complainant’s BRIDGESTONE trademark.

The subject domain name is comprised of the Complainants famous mark, BRIDGESTONE, and has merely added the generic term “golf”. The additional term “golf” is generic or descriptive and does not serve to dispel confusion.

The Respondent has no rights or legitimate interest in the subject domain name.

Respondent has no rights or legitimate interests in the subject domain name based on Complainant’s continuous and extensive use of its BRIDGESTONE mark for many years and the mark’s notoriety.

At the time Respondent selected BRIDGESTONE as part of its domain name, it was on constructive notice of Complainant’s trademark rights under 15 U.S.C. 1072.

Respondent cannot conceivably claim to have been unaware of the famous BRIDGESTONE trademark, or the fact that the mark is owned by Complainant. Nor can Respondent deny that he did not have permission to use BRIDGESTONE as part of a domain name or in any other way.

Complainant has not consented to or authorized Respondent’s registration and use of the subject domain name.

The domain name was registered and is being used in bad faith.

There is no justification for Respondent’s registration of Complainant’s mark other than to try to sell it to Complainant, or attract customers to its own website. On information and belief, Respondent’s registration of Complainant’s mark is intended to and will confuse the relevant purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the website located at “www.bridgestonegolf.com”.

There is no reason for Respondent to use Complainant’s famous mark in his domain name other than to use it to attract the public to Respondent’s website for commercial gain.

When one accesses the website associated with the <bridgestonegolf.com> domain name, one is led to a page maintained by “www.dp.information.com”. This is a search engine and portal that is operated by an entity called “domainsponser.com”. The site at “www.dp.information.com” lists sponsored websites on a variety of topics related to golf. Also, there are pop-up and pop-under advertisements displayed when the “www.dp.information.com” website is accessed. According to domainsponsor.com, it offers revenue which pays domain name owners “50 percent of all revenues generated from searches, pop-unders, pop-ups and exit pop-ups”.

Complainant also alleges that there is some relationship between the Respondent, Horoshiy, Inc., and an individual by the name of Henry Chan, who has been the Respondent in a number of domain name proceedings. The Complainant notes various points of similarity with a prior WIPO decision (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430), in which Henry Chan was the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has submitted evidence of its registered trademark rights for the term BRIDGESTONE in several countries throughout the world. While “bridgestonegolf” is not identical to Complainant’s registered mark, this Panel accepts Complainant’s argument that the addition of a descriptive or generic term to another’s registered trademark or service mark does not serve to dispel confusion. Bridgestone Corporation v. Jim Trader, WIPO Case No. D2003-0798 (BRIDGESTONE and <bridgestonemotorycyles.com>); Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 (HARRODS and <harrodsgarments.com>).

In the present case, the subject domain name consists of a combination of the Complainant’s mark BRIDGESTONE combined only with the additional term “golf”. This Panel finds the term “golf” to be descriptive or generic, particularly where the site displayed by the subject domain name relates to golf. Further, the Complainant has submitted evidence of its long history of using its mark BRIDGESTONE in connection with golf equipment, tournaments and other golf related goods and services. Therefore, not only is the additional term “golf” descriptive or generic, thereby not serving to avoid confusion, the conjunction of Complainant’s trademark with this non-distinctive term actually serves to increase the likelihood of confusion, since Complainant actually uses the subject mark in connection with golf, and has done so for quite some time.

For the reasons given above, the Panel finds that the Complainant has established this element, and concludes that the subject domain name is confusingly similar to Complainant’s registered trademark.

B. Rights or Legitimate Interests

Complainant has made the required allegations that Respondent has no rights or legitimate interests in the subject domain name. Complainant also states that it has not consented to or authorized Respondent’s registration and use of the subject domain name.

While Paragraph 4(c) of the Policy provides various examples of how a Respondent may demonstrate its rights or legitimate interests, the Respondent in this case has filed no Response, and there is no evidence or allegation of the Respondent’s rights or legitimate interests.

Accordingly, the Panel finds that the Complainant has established this element, and concludes that Respondent has no rights or legitimate interests in the subject domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) requires the Complainant to prove that the disputed domain name “has been registered and is being used in bad faith”. Four non-exclusive examples that would satisfy the requirements of Paragraph 4(a)(iii) are provided in Paragraph 4(b)(i-iv).

While it may be possible in this case to find the necessary bad faith based on more than one example under Paragraph 4(b), the Panel notes that correspondence with only one example is necessary, and finds the strongest support for Paragraph 4(b)(iv).

Paragraph 4(b)(iv) states as follows:

By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Where there has apparently been no communications with the Respondent, and the Respondent has failed to file a Response, it is often difficult to have direct and conclusive evidence in support of Paragraph 4(b)(i-iv), which are based on the Respondent’s intents and purposes. However, with the unchallenged evidence submitted by the Complainant, as well as inferences drawn by the Panel under Paragraph 14(b) of the Rules, the Panel finds that Paragraph 4(b)(iv) is applicable to the present case.

More specifically, the subject domain name is confusingly similar to Complainant’s trademark, with the only difference being the addition of the term “golf”, which corresponds to an area of the Complainant’s business. Further, the page displayed when the subject domain name is entered relates to golf related information, services and goods. Given the fact that the domain name is used to promote golf related products and services, it would not be a great leap of logic to find that the Respondent must have known of Complainant’s BRIDGESTONE trademark, which has been extensively used and promoted in connection with golf equipment, tournaments, etc. Although not necessary to reach its conclusions, the Panel also notes that the page displayed by the subject domain name also provides a button for “Precept Golf Balls”, which are in fact produced by the Complainant. Apparently, the “Precept Golf Balls” button was added sometime after the Complainant prepared its exhibits since Exhibit H of the Complaint shows a slightly different page without the “Precept Golf Balls” button.

Given all the circumstances recited above, it is reasonable to conclude that the Respondent registered the domain name in bad faith, knowing well that BRIDGESTONE was the Complainant’s trademark. It is also reasonable to conclude, given the extensive use of the BRIDGESTONE trademark in connection with golf, that there is a strong possibility of at least initial confusion as to source, sponsorship, affiliation, or endorsement of the site displayed by the domain name <bridgestonegolf.com>.

With respect to the issue of commercial gain by the Respondent, the Panel finds that there is sufficient evidence to find that the Respondent sought or realized commercial gain. First, the site displayed by the subject domain name provides links to commercial sites that appear to sell products and/or services. Further, the Complainant notes that the subject domain name actually displays a page maintained at “www.dp.information.com”, which is a search engine and portal operated by an entity called domainsponsor.com. A prior WIPO panel has already examined the commercial aspects of “www.dp.information.com” and domainsponsor.com. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584. The Panel in Deloitte made the following factual findings:

“The domain name is directed to a search engine and portal at ‘www.dp.information.com’ operated by an entity called <domainsponsor.com>. This provides links to sponsored websites on a variety of topics … The ‘www.dp.information.com’ website also causes numerous “pop-up” and ‘pop-under’ advertisements to be displayed when it is accessed. Domainsponsor.com offers a revenue program which pays domain name owners ‘50% of all revenues generated from searches, popunders, popups, and exit popups’ in respect of users directed to its website through the participant’s domain name.”

Under the circumstances described above, the Panel finds that the Respondent sought or realized commercial gain.

For the reasons given above, the Panel finds that the Complainant has established the third and final element under Paragraph 4(a)(iii) via the example provided in Paragraph 4(b)(iv) of the Policy.

 

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.


Ik-Hyun Seo
Sole Panelist

Date: November 29, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0795.html

 

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