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Weld Racing, Inc. v. Web Development Group Ltd. [2005] GENDND 1120 (6 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weld Racing, Inc. v. Web Development Group Ltd.

Case No. D2005-0357

1. The Parties

The Complainant is Weld Racing, Inc., Kansas City, Missouri, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.

The Respondent is Web Development Group Ltd., Belize City, Belize, represented by Greenberg & Lieberman, United States of America.

2. The Domain Name and Registrar

The disputed domain name <weldwheels.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2005. On April 7, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 7, 2005, Tucows 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 April 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2005. The Respondent requested an extension of the term and the Center granted the extension of 10 days after consultation with the Complainant’s representative. The Response was filed with the Center within the 10 days extension term on May 12, 2005.

On May 19, 2005, the Complainant filed a “Supplemental Reply to Web Development Group’s late Response”.

On May 20, 2005, the Center notified to both parties the acknowledgement of receipt of Complainant’s Supplemental Filing. The Respondent did not provide further comments on the Complainant’s Supplemental Filing.

The Center appointed Beatrice Onica Jarka as the Sole Panelist in this matter on May 23, 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.

On May 24, 2005, the Complainant filed a Request for consideration of supplemental reply.

4. Factual Background

The Complainant has rights in the mark WELDWHEELS. The US trademark application was filed in early 1995. The mark was registered under the number 2,086,419 for international class 042 - distributorship services in the field of automotive wheels.

The Respondent acquired the disputed domain name <weldwheels.com > in October 27, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name is identical to the Complainant’s registered trademark;

- the Respondent has not been known by the disputed domain name and has no rights in the disputed domain name given the fact that the Complainant mark was registered in US, in 1997;

- the Respondent is using the disputed domain name in order to receive monetary compensation for providing Internet users links to a list of Sponsored Links to websites as “www. cheaptickets.com”, “www.expedia.com”, “www.orbitz.com” and “www. travelzoo.com”, fact which, in the Complainant’s opinion, proves the illegitimate commercial use of the domain name in relation to the Complainant’s trademark;

- by registering and using the domain name <weldwheels.com>, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s registered trademark (i.e., WELDWHEELS) as to the source, sponsorship, and endorsement of the Respondent’s website, and also attempted to prevent the Complainant to reflect its mark in a corresponding domain name;

- the Respondent has engaged in a pattern of such conduct, by registering also another domain name “chicory.com” which resolves to a website identical to the disputed domain name.

B. Respondent

The Respondent alleges that:

- the Complainant’s trademark WELDWHEELS is generic and descriptive of the Complainant’s products and therefore is not entitled to exclusive protection;

- the Complainant never objected to the previous registrant use of the disputed domain or to the Respondent’s use of the disputed domain name, prior to the Complaint;

- it has a legitimate interest in the disputed domain name because it acquired the disputed domain name due to it being generic with many development possibilities, to be followed in the future;

- it did not know about the Complainant’s trademark, when it acquired the disputed domain name;

- it registered the disputed domain name in good faith because it is a generic term made up from common dictionary words;

- the registration in good faith is further sustained by the Complainant’s failure to police its mark by not asserting its rights during the two years (2000 - 2002) the domain name was registered and owned by Friend to Friend Foundation and the subsequent three years (2002 –present) while the domain name was registered and owned by the Respondent;

- there is nothing on the web resolving to the disputed domain name that would create the impression that the site is affiliated with Complainant.

6. Discussion and Findings

6.1. Procedural Ruling

6.1.1. Position of the Panel concerning the late filed Response

The Response was filed on May 12, 2005, following an extension of 10 days granted by the Center after getting the approval of the Complainant’s representative. The Panel finds that, due to the consent of the Complainant for the extension in filing the Response, and also due to the filing of the Response within the extended term, the Response shall be considered in this case.

6.1.2. Position of the Panel on the supplemental filing of the Complainant

The paragraph 12 of the Rules states that “In addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.

The Policy, the Rules and the Supplemental Rules do not contain further provisions on the supplemental filings.

In this case, the Supplemental Filing made by the Complainant has not been requested by the Panel. In addition, the Supplemental Filing does not bring any new facts which were not available at the time of filing the Complaint or were not included because the Complainant had no basis for believing they would be relevant to the proceeding. The Supplemental Filing is merely a comment on the Response, presenting no new facts in the case.

Taking also into consideration the provisions of paragraph 10 of the Rules, as prior WIPO UDRP Panels before it: See, Plaza Operating Partners, Ltd. v. Pop Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166, Easyjet Airline Company Ltd. v. Steggles, WIPO Case No. D2000-0024, J. P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035, The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038, the Panel rejects the Request for consideration of Supplemental Filing and decides not to consider the Supplemental Filing.

6.2. Ruling on the merits

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

The Complainant has provided evidence on its registered WELDWHEELS trademark. As one can see from this US trademark registration, the trademark is for distributorship services in the field of automotive wheels.

The Panel joins to the consensus view of WIPO panels, that by owning a registered trademark, the Complainant satisfies the threshold requirement of having trademark rights.

A.2. The identity between the disputed domain name <weldwheels.com> and the WELDWHEELS mark

The disputed domain name incorporates the WELDWHEELS mark in its entirety.

Therefore the Panel finds that the disputed domain name is identical with the Complainant’s registered trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three non-exclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the disputed Domain Name:

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

(iii) the 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.

Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.

The Respondent’s main defense in asserting rights or legitimate interests in relation to the disputed domain name is based on paragraph 4(c)(i) of the Rules, the Respondent asserts that it uses the disputed domain name in connection to a bona fide offering of goods by providing Internet search services and general advertising links.

The Respondent asserts that it has legitimate rights and interests in the disputed domain name because the domain name consists of a generic term which was registered on a first come, first served basis.

The Respondent alleges that the common sense of the term “weld wheel” is to designate a welding process “resistance welding electrode”, a high strength welding process. The Respondent has attached to the Response in appendix 2 – Declaration of Stevan Lieberman - Exhibit C, Internet findings on the terms “weld” in connection to the term “wheel”, which state the following: “primary dual weld wheel” in “leister varimat dual weld kit contents” page 2 of Exhibit C, or “wheel welding” in “the basics of rotary contact wheel welding”, page 12 of Exhibit C.

The Panel has noted Respondent’s arguments on the terms “weld” and “wheel” but as evidenced, the trademark WELDWHEELS was registered for distributorship services in the field of automotive wheels, and thus the trademark WELDWHEELS is rather suggestive than descriptive of the Complainant’s sale products. Considering the Panel’s finding under 6C, the Panel finds that the use of the disputed domain name is not in connection with a bona fide offering of goods or services.

Finally, the Respondent does not contend, and the Panel finds no evidence of circumstances indicating that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, or that it is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers. Therefore the Panel finds, that the second element of paragraph 4(a) of the Policy has been established.

C. Registered and Used in Bad Faith

The Complainant refers to two circumstances of registration and use in bad faith of the disputed domain name, namely, those provided by paragraphs 4(b)(ii) and 4(b)(iv) of the Rules.

To these allegations, the Respondent answers that due to the genericness of the disputed domain name, its registration had been done without knowledge of the Complainant’s trademark. Further, the Respondent asserts that its good faith in registering the disputed domain name is sustained by the fact that the Complainant failed to police its mark by not contesting the registration of disputed domain name for a period of more than five years (two years in which the domain name was registered and owned by Friend To Friend foundation and the subsequent three years while the domain name was registered and owned by the Respondent).

The issue brought to discussion by the Respondent is whether the silence and the lack of action from the Complainant as to the use of its trademark as the disputed domain name for several years may be interpreted as acquiescence to the use of the disputed domain name and disentitles the Complainant to a remedy under the Policy.

The Panel finds that such silence and lack of action from the Complainant does not disentitle the Complainant to a remedy under the Policy, bearing in mind also the fact that on one side, neither the Policy, the Rules nor the Supplemental Rules provide for such sanction and on the other side, no rule nor principle of law had been asserted by the Respondent under US law or under Belize law in support of this contention (see Scorpions Musikproductions und Verlagsgesellschaft MBH .v. Alberta Hot Rods, WIPO Case No. D2001-0787).

The Respondent also alleges that the Respondent did not have any knowledge whatsoever of the Complainant’s trademark WELDWHEELS and registered it only due to its genericness. In support of this allegation, the Respondent provides a search regarding the registration of the weld wheel in Belize for international classes 12, 1, 7, 8. (Appendix 2 – Declaration of Stevan Lieberman - exhibit D). The Panel does not consider that this evidence proves the Respondent’s lack of knowledge referring to the Complainant’s trademark.

It is the opinion of the Panel, that given the presence of the Complainant’s trademark on Internet in connection to online sale of automotive wheels, that the Respondent had knowledge of the Complainant’s trademark at the time of registration.

In addition, as the Complainant asserted in the Complaint and the Respondent did not contest, it seems that the Respondent is not at its first registration and use as domain name of other trademarks (the use and registration of <chicory.com> with the same content as the disputed domain name). Such a fact, in itself, represents an element of the circumstance 4(b)(ii) of the Policy, but also further evidence in proving the existence of paragraph 4(b)(iv) of the Policy.

The fact alleged by the Respondent, that the website under the disputed domain name, provides no reference to the Complainant is not of relevance under paragraph 4(b)(iv) of the Policy because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to commercial content.

The Panel accepts that for the purpose of the Policy it is enough for the Complainant to prove one of the circumstances of paragraph 4(b). It is therefore the Panel’s view that the Respondent registered and used the disputed domain name in bad faith, by intentionally attempting to attract, for commercial gain, Internet users to its 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 their website or location or of a product or service on their website or location.

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

Beatrice Onica Jarka
Sole Panelist

Dated: June 6, 2005