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Bridgestone Corporation v. Bridgestone Homes [2004] GENDND 1318 (26 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bridgestone Corporation v. Bridgestone Homes

Case No. D2004-0736

1. The Parties

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

The Respondent is Bridgestone Homes, Rochester, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bridgestonehomes.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2004. On September 13, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 15, 2004, Network Solutions, LLC 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. The Center verified that 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 September 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2004.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on October 21, 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, a Japanese corporation, is the largest tire and rubber company in the world. Its gross worldwide sales of all products were in excess of (US) $21 billion in 2003, and its tire sales were in excess of (US) $15 billion in 2003. BRIDGESTONE has been in use as a trademark and company name by Complainant since 1928. The BRIDGESTONE mark has been used on tires and other products in the United States since at least as early as 1956. BRIDGESTONE is registered as a trademark for various products throughout the world. In addition to tires for all types of vehicles, the BRIDGESTONE mark has been used, and is registered for a variety of other products. The Complainant operates websites at “www.bridgestone.com” and “www.bridgestonetire.com”, where the Complainant’s products are displayed under the BRIDGESTONE mark.

One of Complainant’s subsidiary companies is Bridgestone Americas Holding, INC (BSAH). This subsidiary company, which was formed in 1990, produces a variety of products, including building materials.

The Respondent registered the disputed domain name on January 3, 2004. The domain name resolves to a site offering custom home building services.

5. Parties’ Contentions

A. Complainant

Due to Complainant’s long use of BRIDGESTONE as a trademark, the fact that it is the second largest tire company in the world with annual sales under the BRIDGESTONE mark in the billions of dollars and advertising expenditures in the hundreds of millions of dollars, BRIDGESTONE is a famous mark and name which is entitled to a broad scope of protection. By virtue of Complainant’s long use and the renown of Complainant’s BRIDGESTONE mark, BRIDGESTONE is associated exclusively with Complainant and its related companies. The reputation associated with Complainant’s marks is excellent by virtue of the quality of Complainant’s goods and services.

The disputed domain name is identical to and confusingly similar to Complainant’s BRIDGESTONE trademark. A domain name comprised of a generic or descriptive term and another’s trademark or service mark does not serve to dispel confusion.

The domain name is confusingly similar to Complainant’s BRIDGESTONE mark.

The Respondent has no rights or legitimate interests in the domain <bridgestonehomes.com> 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 disputed domain name.

Respondent registered and used the domain name 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. 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. If Respondent is permitted to continue to use and hold the domain name, the public is likely to be confused into believing or assuming that Complainant does not object the use of its trademark in a domain name used to sell homes. This confusion constitutes trademark infringement and dilution in both the tarnishing and blurring senses, irreparably damaging a famous trademark and an invaluable asset of Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in the appropriate form, but sent an email message on September 15, 2004, to the Center in which he wrote, inter alia, the following:

“Never once has the federal, state governments or the IRS told me that the name that I chose was illegal. Now some multi-national company wants to put me out of business because they claim ownership to a word. I have spent thousands on a web site design, logos, signs, bank account, checks, lines of credit and name recognition, just for them to tell me to change it because they think I will affect their business, that is nothing short of ridiculous (sic). I chose the name because of its parts. Bridge - as in costruction (sic) and building a bond between my and my customers and stone for the implications of rugged, sturdy, solid. Even the web site has no implication of any connection the Bridgestone Tires.”

Even though proper procedure was not followed, the Panel wishes to discuss the Respondent’s contentions. I will do so below, except with respect to the first point, of which I will dispose here, simply by pointing out that it is not the IRS’s mandate, nor that of any governmental agency (though they may have a theoretical right to act ex officio) to detect and prosecute trademark infringements. It is chiefly the trademark owner’s responsibility to do so, as was done here.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.3.).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

1. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the wording of paragraph 4(a)(i) in regard to trademark or service mark has been interpreted by numerous Panels in the past to include both registered marks and common law marks. The record confirms that the Complainant’s mark BRIDGESTONE is registered in the United States, where the Respondent is based. Therefore, the Panel finds that the Complainant has rights in the mark BRIDGESTONE.

As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s mark. The disputed domain name incorporates the Complainant’s mark BRIDGESTONE with a generic word “homes” and the generic top-level domain reference ‘.com’. As a rule, when a domain name wholly incorporates a complainant’s mark and adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.

2. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant’s prior use of the BRIDGESTONE mark.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

As was decided by several administrative panels, while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. The Complainant denies the Respondent’s legitimate interests and, in this Panel’s view, made a sufficient prima facie case. The Respondent, whom did not file a proper response, could be said not to have filed any evidence in support of a finding of legitimate interest. In the interest of maximum transparency and fairness, however, the Panel will consider the email of September 15, 2004. In that connection, I should note that, if the Respondent felt strongly about the disputed domain name, he should have filed a response an evidence in accordance with the terms of the Policy and Rules.

As to the choice of the name BRIDGESTONE, in his email of September 15, 2004, the Respondent does not deny that it knew BRIDGESTONE was a trademark for tires, and he acknowledges it is a coined or invented word, even though it is made up of two common words, namely “bridge” and “stone.” The Respondent asserts that the mark is better suited for a construction business than for tires. Yet, the Respondent builds homes, not bridges. Additionally, though there are exceptions, stronger trademarks tend to be those that are not descriptive of the product or service in relation with which they are used, even when they are composed of existing words (e.g. “Apple” for computers).

There is no evidence to decide in favor of the Respondent under subparagraph 4(c)(ii). Indeed, a simple assertion does not suffice to establish that one is “commonly known” by a certain name (see, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Documentary evidence is required (see paragraph 4(c) and Rule 5(b)(ix)).

There is, however, a different question to consider under (a), for the Respondent seems to have spent a considerable amount of money and may have developed some local goodwill in the name BRIDGESTONE. Where the Respondent fails is in showing that the use was bona fide. Under US law, he was under constructive notice of the Complainant’s mark. Under the Policy, commercial use of a well-known mark as a domain name is not bona fide use (see, e.g, Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169).

A final point made by the Respondent is about his liability under US law rather than the Policy. The Panel notes, first, that the Respondent contractually accepted the terms of the Policy when he registered the domain name. Second, under US law, the Respondent was under constructive notice that Bridgestone was a registered trademark in the US Patent and Trademark Office not just for tires but also for building materials. On that basis, the Complainant would have a strong case under the US Anti-Cybersquatting Consumer Protection Act (ACPA) [15 U.S.C. § 1125(d)] and possibly also under the anti-dilution provision of the Lanham Act [15 U.S.C. § 1125(c)], though that is not for this Panel to determine.

The Panel fully understands the predicament of the Respondent, but the Panel is bound to apply the law and the terms of the Policy. The principles that underpin both in this area could be summarized as follows: if one is negligent in not making sure that a name is “free to use” as a trademark, then one cannot escape the consequences of that negligence by using that name, even if a significant amount of money has been spent.

The Panel also notes that this decision only affects the transfer of the domain name, not the broader question of use of BRIDGESTONE by the Respondent on web pages or generally as a trademark. That is an issue left for the parties and that remains exclusively within the jurisdiction of US courts.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name, as that term is used and defined in the Policy.

3. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product.

There is evidence of the situation described in paragraph 4(b)(iv). The relevant facts are mentioned below.

Apart from the famous nature of the Complainant’s marks, the domain name is identical and confusingly similar to the Complainant’s mark BRIDGESTONE. It is reasonable to conclude that the Respondent was familiar with the Complainant’s mark whether or not that person knew that such registration and use would be illegal under the Policy or applicable national laws (in this case the Lanham Act). The Policy requires an “intention to attract,” nothing more, and this intention may be deduced from the facts, especially in cases where the Complainant’s mark is famous or consists of an invented word. Here, BRIDGESTONE is both.

Use of the disputed domain name would likely have the effect of establishing an association between the Complainant and the Respondent in the minds of potential buyers, thus allowing the Respondent to benefit from the goodwill acquired through years of advertising, sales etc. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461.

Based on the facts submitted, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainant’s mark, especially because of one the uses in respect of which the Complainant’s BRIDGESTONE mark is registered is to sell building materials.

The Panel finds for the Complainant on this third element of the test.

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, <bridgestonehomes.com>, be transferred to the Complainant

Daniel J. Gervais
Sole Panelist

Dated: October 26, 2004