Complainant is Radiator Express Warehouse of Benicia, California, United States of America (“U.S.”) represented by Stokes Lawrence, P.S., U.S.
Respondent is Paydues Inc. of Santa Fe, New Mexico, U.S.
The disputed domain name <1800radiatorfranchise.net> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2012 against both <1800radiatorfranchise.net> and <1800radiatorfranchise.org>. On June 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <1800radiatorfranchise.net> and providing the contact details and advising that another entity owned <1800radiatorfranchise.org>. In response to a notification by the Center that the Complaint was administratively deficient due to the fact that the identified Respondent was not the listed owner of both domain names, the Complainant filed an amendment to the Complaint on June 30, 2012 limiting the Complaint to <1800radiatorfranchise.net>.
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” 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 Respondent of the Complaint, and the proceedings commenced on July 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2012.
The Center appointed Barbara A. Solomon as the Sole Panelist in this matter on August 1, 2012. 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.
The factual background is taken from the allegations contained in the Complaint and the exhibits annexed thereto none of which have been contested by Respondent.
Complainant is an independent direct distributor of automobile parts and accessories operating throughout the U.S.. Founded in 1985, Complainant has been using the mark 1-800-RADIATOR in connection with its franchise network since at least approximately 1996. Complainant has been advertising and promoting its goods and services under the 1-800-RADIATOR marks for approximately 15 years. Complainant owns U.S. and Canadian trademark registrations for the 1-800-RADIATOR mark including an incontestable U.S. federal trademark registration. In addition, Complainant has been providing goods and services under domain names that include the 1-800-RADIATOR mark since as early as 1996.
Complainant has no relationship or affiliation with Respondent who registered the disputed domain name <1800radiatorfranchise.net> on July 7, 2011. Respondent uses the disputed domain name to resolve to a website that offers visitors the opportunity to download Respondent’s franchise toolkit. It also asks visitors to provide information about themselves including names, addresses, phone numbers and email addresses. There are no indications on the website that the website and its contents are not owned, authorized, affiliated, endorsed or sponsored by Complainant.
With respect to the specific elements that Complainant must prove under the Policy, Complainant makes the following claims:
1. Complainant alleges that it has trademark rights in the 1-800-RADIATOR mark by virtue of its use of the mark since 1996 and its ownership of numerous U.S. and Canadian registrations for the 1-800-RADIATOR mark.
2. Complainant contends that the disputed domain <1800radiatorfranchise.net> is confusingly similar to Complainant’s 1-800-RADIATOR registered trademark noting that the addition of the term “franchise” to the 1-800-RADIATOR mark does not dispel a connection between Complainant’s mark and the disputed domain name. Complainant further alleges that the addition of the term “franchise” to Complainant’s registered trademark exacerbates confusion because it directly references Complainant’s business and creates a false impression that Respondent is somehow affiliated with Complainant and Complainant’s franchise network.
3. Complainant contends that Respondent has no rights or legitimate interest with respect to the disputed domain name noting, among other facts, that Respondent does not own any registered or common laws marks containing the term “1-800-radiator”, Respondent has not made any legitimate use of or entered into any preparations to use the disputed domain name in connection with the bona fide offering of goods or services, Respondent has never been commonly known or operated a business under the 1-800-RADIATOR name, Respondent is not affiliated with Complainant, and Complainant has not granted Respondent a license to use Complainant’s trademark. Complainant further contends that Respondent has a history of cybersquatting and is using the disputed domain name for purposes of phishing for personal data from Internet users.
4. Complainant contends that the disputed domain name was registered and is being used in bad faith. Complainant alleges that the disputed domain name was registered to create confusion, to attract unsuspecting Internet users to Respondent’s website and to pass Respondent and its services off as Complainant and its services. Complainant also alleges that Respondent’s use and registration of the disputed domain name is in bad faith because the registration is part of an established and documented history of cybersquatting by Respondent.
Respondent did not reply to Complainant’s contentions. Accordingly, the Panel must decide the dispute based on the Complaint. All factual allegations are accepted as true, and the Panel may draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed 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 with respect to the disputed domain name; and (iii) the disputed domain name has been registered and used in bad faith.
As a preliminary matter, the Panel finds that Complainant has established rights in the mark 1-800-RADIATOR sufficient for these proceedings. Complainant has provided numerous registrations on the U.S. Principal Register for the 1-800-RADIATOR mark which attest to the mark having acquired distinctiveness as a result of continuous and substantially exclusive use of the mark in U.S. commerce. Further, at least one of Complainant’s registrations for the mark of 1-800-RADIATOR is incontestable which constitutes conclusive proof of the validity of the mark and prevents the registration from being challenged on the grounds that the mark is merely descriptive. Given Complainant’s trademark registrations, including its incontestable registration, all of which precede the date on which the disputed domain name was registered, Complainant has established rights in its 1-800-RADIATOR mark pursuant to Policy, paragraph 4(a)(i). Crunch IP Holdings, LLC v. Paydues, Inc., WIPO Case No. D2012-1033.
The disputed domain name <1800radiatorfranchise.net> incorporates in its entirety the 1-800-RADIATOR mark of the Complainant. As to the addition of the term “franchise,” given that Complainant in fact does franchise its business, the addition of the generic term “franchise” is likely to only further the association between Respondent and Complainant. Indeed, in cases brought against Respondent, UDRP Panels consistently have found that the addition of the word “franchise” to complainant’s mark is insufficient to avoid a finding of confusing similarity. See, e.g., Six Continent Hotels, Inc. v. Paydues, Inc., WIPO Case No. D2012-0756; HBH Limited Partnership v. Paydues, Inc., WIPO Case No. D2012-0446.
The Panel therefore finds that Complainant has proven the requirements of paragraph 4(a)(i) of the Policy.
Although Respondent has defaulted, the burden of proof remains on Complainant to establish the absence of rights or legitimate interests in the disputed domain name.
Complainant states that there is not and has never been a relationship between Complainant and the Respondent, that Respondent is not affiliated or related to the Complainant, is not a licensee of Complainant, and no authorization has been granted to Respondent to use the 1-800-RADIATOR mark. Respondent does not challenge any of these assertions. Respondent also has not put in any facts or evidence to show that it is generally know by the disputed domain name or that it has acquired trademark or service mark rights in the disputed domain name.
Respondent is not a stranger to UDRP proceedings. A search of the WIPO database shows that in the last two years nine (9) proceedings have been brought against Paydues through the Center and four (4) proceedings have been filed against Respondent with the National Arbitration Forum. In all cases, Respondent engaged in essentially the same conduct as here, namely taking complainant’s trademark, adding the term “franchise” to the end to create a domain name, and creating a website at the domain name offering information on how to secure a franchise under complainant’s mark. In all cases the website created appears to feature trademarks and other indicia of complainant. Here too, Respondent has gone to pains to create a site that looks like Complainant’s by copying not only Complainant’s mark but also its logo, its date of creation (1985) and even mimicking some of the text found on Complainant’s website. The manner in which Respondent is using the disputed domain name appears calculated to confuse and is likely to confuse Internet users into believing that Respondent’s website at the disputed domain name <1800radiatorfranchise.net> is somehow associated or endorsed by Complainant. Indeed, looking at the website there would be no way to know that this was not in fact Complainant’s website. The only conclusion that can be drawn is that Respondent is trying to pass itself off as Complainant. This does not constitute rights or legitimate interest. Malayan Banking Berhad v. Beauty, Success & Truth Internationall, WIPO Case No. D2008-1393.
It is not evident from the papers submitted what the true purpose is for Respondent’s use of the disputed domain name. What is evident is that Respondent is seeking to collect data, including names, email addressees and other contact information from visitors to the website. To the extent that Respondent is engaged in phishing or harvesting personal information, this demonstrates Respondent’s lack of any right or legitimate interests in or to the disputed domain name. Apple Computer, Inc. v. PrivacyProtect.org / Private Registration Aktien Gesellschaft, WIPO Case No. D2012-0879 (noting that a phishing website cannot constitute a bona fide use of the domain name under the Policy). Further, it would appear that the only reason for Respondent to use not only Complainant’s registered trademark but also its logo is to confuse consumers and trade on Complainant’s rights and reputation. Using a website to create confusion cannot be a legitimate use under the Policy. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.
Based on the evidence, the Panel is satisfied that the second element of the Policy is met.
Paragraph 4(b) of the Policy sets forth various circumstances that can give rise to and otherwise constitute evidence of registration and use of a domain name in bad faith. Although the Policy identifies activities that constitute bad faith use and registration, the list set forth in paragraph 4(b) of the Policy is not exhaustive. United Feature Syndicate, Inc. v. Takeshi Komaba, WIPO Case No. D2002-0901.
This is approximately the fourteenth case that addresses what appears to be the identical conduct of Respondent. Prior UDRP Panels have all determined that the very conduct of Respondent exhibited here constitutes bad faith use and registration of complainant’s trademark. This Panel agrees with those prior decisions and finds that the disputed domain name in this case was registered and is being used in bad faith.
The website uses the federally registered 1-800-RADIATOR mark of Complainant in its entirety. It uses the design mark shown in Complainant’s registrations. It uses language that while not identical to what is on Complainant’s website is very similar. It claims that it was founded in 1985 which is the year that Complainant was founded. These similarities cannot be mere coincidence and Respondent has not explained them away. The only conclusion that can be drawn is that Respondent knew of and had in mind Complainant when registering the disputed domain name.
The activity of Respondent appears to suggest that Respondent’s goal in registering the disputed domain name is to attract, for commercial gain, Internet users to its website but creating a likelihood of confusion in violation of paragraph 4(b)(iv) of the Policy. Respondent also is using Complainant’s trademarks in order to obtain personal information under the guise of offering franchises. Taken together, Respondent is exploiting Complainant’s trademark in violation of the Policy. See Match.com, LP v. Bill Zag and NWLAWS, ORG, WIPO Case No. D2004-0230. Finally, Respondent’s registration of numerous domain names containing third party trademarks is evidence of a pattern and history exploiting the trademarks of others without any rational justification. This activity by Respondent is evidence of its bad faith registration and use here. See La Quinta Worldwide L.L.C. v. Paydues, Inc., WIPO Case No. D2012-0016 (finding bad faith registration and use when the evidence clearly established Respondent had engaged in a pattern and history of registering domain names that included the trademarks of others for purposes of diverting Internet users to Respondent’s own websites.)
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 <1800radiatorfranchise.net> be transferred to Complainant.
Barbara A. Solomon
Sole Panelist
Dated: August 13, 2012