WIPO Domain Name Decision: D2004-1027

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arai Helmet Americas, Inc. v. LaPorte Holdings, Inc.

Case No. D2004-1027

1. The Parties

The Complainant is Arai Helmet Americas, Inc., Daytona, Florida, United States of America, represented by Oliff & Berridge, plc, United States of America.

The Respondent is LaPorte Holdings, Inc., Los Angeles, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <araiamerica.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2004. On December 7, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On January 14, 2005, NameKing.com transmitted by email to the Center its verification response advising that the Registrant is listed as LaPorte Holdings, Inc. and providing the contact details for the administrative billing and technical contacts. In response to a notification by the Centre that the complaint was administratively deficient on January 18, 2005. The Complaint filed an amendment to the Complaint on January 21, 2005. 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 February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2005.

The Center appointed Charné Le Roux as the sole panelist in this matter on April 1, 2005. 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 an affiliated company of Arai Helmet Limited. Arai Helmet Limited is the owner of the trade marks ARAI and ARAI HELMET registered in the United States of America in 1974 and 1995 respectively in respect of safety helmets, safety hats and their parts. The Complainant owns, inter alia, the domain name <araiamerica.com> registered since December 5, 1996, and has used the website attached to it and related websites namely, <araihelmets.com> and <araihelmets.biz> to promote its ARAI helmets.

The erstwhile Respondent in this dispute, namely Ling Shun Shing registered the Disputed Domain Name in September 2002. A letter was sent to him by e-mail on September 30, 2004, and later by post by the Complainant’s representatives setting out the Complainant’s rights in the ARAI and ARAI AMERICA’s trade marks and seeking immediate transfer of the disputed Domain Name to the Complainant. Mr. Shing did not reply. A subsequent database search conducted by the Complainant shows that the Disputed Domain Name was updated on January 13, 2005. The Disputed Domain Name is currently owned by the Respondent on record and is connected to a website which features a search engine containing various categories of links, including links entitled Motorcycle Helmets, Helmets, Motorcycle Tyres and Arai Helmets. These links lead to separate pages of various other websites, many of which advertise or display information about motorcycle helmets and related items. The website was substantially the same when the Disputed Domain Name was owned by Ling Shun Shing.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is a well-known manufacturer of quality helmets, that it has promoted its helmets under the trade marks ARAI, ARAI HELMETS and ARAI AMERICAS and that it sells its helmets under the ARAI name in over 40 countries. It contends that it has been devoted to the advancement and innovation of ARAI helmets since the 1950’s, and that it has invested substantial resources and energy into the development of its ARAI marks and the goodwill associated with them.

The Complainant contends that the Disputed Domain Name is confusingly similar to its ARAI trade marks because it consists of a slightly typographical variation of its ARAI AMERICAS trade mark and is designed to lead a consumer who misspells or mistypes the ARAI AMERICAS trade mark to the Respondent’s website.

The Complainant also contends that the Respondent lacks rights or a legitimate interest in the Disputed Domain Name in that:

a the Respondent does not own any relevant trade marks at the US Patent and Trade Mark Office, nor is it licensed or otherwise authorized to use the Complainant’s marks;

b the website to which the Disputed Domain Name resolves offers competing goods to that sold by the Complainant under its trade marks and therefore that the Respondent intended by the use and the registration of the Disputed Domain Name to mislead consumers into believing that the Respondent is the Complainant or associated with the Complainant;

c the Respondent’s previous conduct in misusing the trade marks of third parties in connection with domain names demonstrate a lack of a right or legitimate interest in the Disputed Domain Name.

The Complainant furthermore contends that the Respondent acquired and uses the Disputed Domain Name in bad faith. The Complainant indicates that:

a both the Respondent and the Complainant provide competing goods under confusingly similar or nearly identical trade marks which increases the potential for confusion;

b the Respondent’s registration of domain names of well-known trade marks constitutes a pattern of such conduct and is evidence of the Respondent’s bad faith;

c the Respondent failed to maintain a proper address and that its disregard for the Complainant’s rights and the Registrar’s policy clearly shows the Respondent’s bad faith;

d the Respondent receives a commercial interest from the sponsored links on the website attached to the Disputed Domain Name which benefit is based on the goodwill that the Complainant owns in its trade mark;

e the transfer by the erstwhile Respondent who has also repeatedly engaged in the misuse of well-known trade marks in connection with domain names of the Disputed Domain Name to the current Respondent is a pattern of behavior by both parties as part of an ongoing effort to conceal ownership, evade jurisdiction and/or avoid transfer of contentious domain names.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

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

6. Discussion and Findings

i. Procedural Matters

a Jurisdiction of the Panel

The Panel’s jurisdiction has not been placed in dispute and the Panel finds that the dispute is properly within the scope of the Policy and that it is within its jurisdiction to adjudicate the issues in this case.

b Default of the Respondent

The Respondent has not reacted to Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do however, in terms of the Rules, permit the Panel to draw appropriate inferences.

c. Submission to the jurisdiction of the Courts

The Centre notified that the Complaint was administratively deficient on the ground firstly that the person specified in the Complaint as the Respondent was not indicated as the Respondent by the concerned Registrar and secondly that since the current domain name holder (the Respondent) did not submit in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for adjudicating disputes concerning or arising from the use of the domain name, the Complainant must submit, with respect to any challenges to the decision in the administrative proceeding, canceling or transferring a domain name, to a jurisdiction of the courts at the location of the domain name holder’s address as specified in Rules, Paragraph 1 and Paragraph 3(b)(xiii).

The amended Complaint subsequently filed satisfied the first mentioned deficiency but no express amendment was made in respect of Paragraph 1 and Paragraph 3(b)(xiii) of the Rules. In the original Complaint (and the amended Complaint) the Complainant agrees to submit, with respect to any challenges, to the jurisdiction of the United States District Court for the Eastern District of Virginia, Alexandria Division, as the Court of the named jurisdiction of the Registrar.

The fact of this matter is that the current Respondent elected the address of the Registrar, as shown for the registration of the domain name in the Registrar’s whois database at the time that the amended Complaint was submitted to the Provider (Rule 1 Definitions: MUTUAL JURISDICTION). It follows thus that the court that was named as having jurisdiction at the location of the Registrar is in fact also the court having jurisdiction at the location of the Respondent’s address and the Panel finds that the second deficiency was materially satisfied.

ii. Substantive matters

Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:

a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

b. that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and

c. that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has proven that it owns rights in the trade mark ARAI, ARAI HELMETS and ARAI AMERICAS, although the US trade mark registrations for the first two trade marks belong to an affiliate company, namely Arai Helmet Limited. The Complainant has clearly made use of the trade marks ARAI and ARAI AMERICAS in promoting its goods on the Internet using the websites at the domain names <araiamerica.com> and, as investigated by the Panel, <araihelmets.com> and <araihelmets.biz>.

The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade marks ARAI and ARAI AMERICAS. The Disputed Domain Name consists of a slight typographical variation of the ARAI AMERICAS trade mark, i.e. in the singular form. It has been held by previous panels that the misspelling or a typographical variation of a trade mark does not assist a Respondent in escaping a finding of confusing similarity.

B. Rights or Legitimate Interests

The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, summarized the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interests in a domain name.

The Complainant in this matter has made the required assertion to which the Respondent has not reacted. The Panel finds that the Respondent’s failure to file a response has demonstrated a lack of legitimate interest. See Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317.

Furthermore, on the facts of this matter, the Respondent uses the Disputed Domain Name to promote the sale of motorcycle helmets and related goods in direct competition with the Complainant. The Panel finds that Internet users will be attracted to the website linked to the Disputed Domain Name by the ARAI AMERICAS and/or ARAI trade marks and that they will access the website because they are interested in the Complainant’s goods. It would appear that the Respondent’s only interest in the Disputed Domain Name is to derive a benefit from the goodwill that attaches to the Complainant’s trade marks and to share in revenues obtained from the diverted traffic.

The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or a legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant contends that the Respondent (and erstwhile Respondent) registered the domain names of other well known third parties. See WIPO Case No. D2003-0328 Citigroup Inc. v. Ling Shun Shing, WIPO Case No. D2003-0294 Ameriquest Mortgage Company v. Ling Shun Shing, WIPO Case No. D2003-0445 Sallie Mae, Inc. v. Ling Shun Shing, WIPO Case No. D2004-0851 Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No.D2004-0707 Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800 Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., and WIPO Case No. D2004-0849 Société des Hôtels Méridien v. LaPorte Holdings, Inc.. In that regard paragraph 4(b)(ii) of the Policy provides that where a Respondent has registered a domain name in order to prevent the owner of a trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct, the conduct constitutes evidence of the registration and use of a domain name in bad faith.

The Complainant also relies on paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.

The Panel finds that the registration by the Respondent of domain names that incorporate the trade marks of other parties as shown by the Complainant constitutes an attempt to prevent the Complainant from reflecting its trade marks in a corresponding domain name and an engagement in a pattern of such conduct. It is clear that the Respondent’s intention in continuing with its conduct is to frustrate the Complainant from exercising its rights. The Panel is critical of the Respondent’s (and erstwhile Respondent’s) conduct in persisting with the registration and maintenance of domain names that include the trade marks of third parties despite decisions against them by other panels to transfer such domain names.

The Panel also finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant’s ARAI and ARAI AMERICAS trade marks and that the Respondent is engaging in such conduct in order to reap a commercial benefit.

Consequently, the Panel holds that paragraphs 4(b)(ii) and 4(b)(iv) of the Policy have been satisfied and thus, that the Complainant has discharged its onus in showing that the Respondent has registered and used the Disputed Domain Name in bad faith. Having found for the Complainant on the basis of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy, the Panel does not consider it necessary to deal with the additional evidence of bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(ii) of the Policy and 15 of the Rules, the Panel orders that the domain name, <araiamerica.com> be transferred to the Complainant.

Charné Le Roux
Sole Panelist

Dated: April 15, 2005