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Arai Helmet Americas, Inc. v. Goldmark [2005] GENDND 46 (22 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arai Helmet Americas, Inc. v. Goldmark

Case No. D2004-1028

1. The Parties

The Complainant is Arai Helmet Americas, Inc., Daytona, Florida 32120-9485, United States of America, represented by Oliff & Berridge, plc, United States of America.

The Respondent is Goldmark, 5903 Harvest Hill Rd., Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <arai.com> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2004. On December 7, 2004, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the domain name at issue. On December 9, 2004, R&K Global Business Services, Inc. d/b/a 000Domains.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. 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 December 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2004. The Response was filed with the Center on December 30, 2004.

The Center appointed Frederick M. Abbott as the Sole Panelist in this matter on January 6, 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

Complainant is the holder of trademark registrations for the word marks “ARAI” and “ARAI HELMET” on the Principal Register of the Untied States Patent and Trademark Office (USPTO), Reg.. No. 0985068, dated May 28, 1974, and Reg. No. 1925172, dated October 10, 1995, respectively, in international class 009, covering “safety helmets, safety hats, and parts therefor”. (Complaint, Para. 12 & Annex C).

Complainant is a leading manufacturer of safety helmets well known, inter alia, in the racing sector. Complainant encourages the custom fitting of its helmets and does not permit its dealers to sell over the Internet. (Id.)

Complainant promotes its helmets on the Internet at the address (among others) “www.araiamerica.com”, with the underlying domain name registered in 1996. (Id., Annex E).

According to the Registrar’s Verification Response, Respondent is registrant of the disputed domain name <arai.com>. According to a Better-Whois.com search report submitted by Complainant, the record of registration was created on June 2, 2003.

Complainant has provided evidence of use of the term “arai.com” on a website identified by the URL “http://search.information.com [plus character string]”. The web page submitted by Complainant appears to have been a response to entry of the search term “helmets” in a search engine. By clicking through on one of the links on the web page (“www.saferacer.com”), an Internet user is taken to another website which advertises a variety of helmet brands, including “ARAI”. Complainant has not submitted any evidence that the disputed domain name, <arai.com>, is used in a URL to identity any website. Complainant has not submitted any evidence linking the disputed domain name as a functioning URL to any website offering Complainant’s or any third party’s helmets. (Complaint, Para.12 and Annexes F & G).

On September 30, 2004, Complainant through its counsel sent a cease and desist and transfer demand to Respondent at the address indicated on its record of registration. That letter was returned by the post office. (Id., Annex H).

Complainant refers to another panel determination under the Policy, CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark, WIPO Case No. D2004-0330, decided June 24, 2004, as evidence that Respondent has engaged in a pattern of conduct constituting bad faith. The corporate name of Respondent in this case and the respondent in that case are the same, although the address of the respondent in the prior case is in a different city in Texas. Respondent has not denied that he is the same party as the respondent in the earlier case.

Respondent asserts that he registered the disputed domain as a reference to a city in Japan. He asserts that he is in the real estate business, has had a long time interest in this city and eventually intends to build a vacation and rental home there. Because he wants to help build up the reputation of Arai as a vacation destination, he plans to post information about his rental property and the city on his website. Respondent has submitted several current general third party-created web pages about Arai (the city) with his Response. Respondent asserts that up until receipt of Complainant’s cease and desist and transfer letter his son had “parked” the domain name on a web page that included a statement that a website was coming along with some generic advertisements. (Response).

The Registration Agreement in effect between Respondent and R&K Global Business Services, Inc. d/b/a 000Domains.com, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the trademark “ARAI” (and related ARAI-formative marks) and that the disputed domain name is identical and confusingly similar to its mark. Complainant asserts that its trademark is well known in the field of safety helmets.

Complainant alleges that Respondent has no rights or legitimate interests in its mark. It alleges that Respondent is not authorized to use its mark and that Respondent’s use of the mark is not legitimate.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith. Complainant alleges that Respondent was aware of its well known mark when he registered the name, that Respondent has placed the mark on his website and in metatags to divert Internet users to his website, where there are sponsored links to competing products. Complainant alleges on information and belief that Respondent receives compensation for these sponsored links. Complainant alleges that Internet sales through non-authorized dealers damages its goodwill and endangers customers because Complainant encourages custom fitting by its dealers.

Complainant requests the panel to transfer the disputed domain name to it.

B. Respondent

Respondent does not contest Complainant’s rights in its mark, but asserts that it is using the term “Arai” in its geographically descriptive sense for a city in Japan. Respondent asserts that Complainant has created the confusion by choosing the name of a Japanese city for its trademark.

Respondent asserts that he has legitimate interests in the term because he intends to use it to advertise his future vacation home in Japan and to promote the city of Arai.

Respondent claims that he did not register or use the disputed name in bad faith. The name was “parked’ prior to notice from Respondent on a website including some generic advertisements. That parking page has been taken down until he can replace it with information about his future vacation home and Arai, the city.

Respondent requests the panel to reject Complainant’s demand for transfer of the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has submitted evidence of registration of the trademark “ARAI” on the Principal Register of the USPTO. Such registration establishes presumptive validity of the mark and Respondent has not challenged Complainant’s rights in the mark.¹ The disputed domain name, <arai.com>, is identical to the trademark for purposes of the Policy.² The panel finds that Complainant has rights in the trademark “ARAI” and that the disputed domain name is identical to its mark.

Complainant has alleged that its trademark is well known in the field of safety helmets. It refers to the investment of substantial financial resources in the promotion of its mark, and to the adoption by several of the most prominent NASCAR racing drivers of its equipment.³ Respondent has not challenged Complainant on this point. The panel finds for purposes of this proceeding that the “ARAI” mark is well known among consumers of helmet safety equipment.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)).

Respondent does not claim to have made a bona fide offer of goods or services under the disputed domain name or to be commonly known by the name.

Respondent argues that he intends to make fair use of the name as a geographical identifier in connection with a rental property which he intends at some point in the future to purchase. Respondent is not currently using the name for this purpose, nor has he previously done so. The express langrage of the Policy appears to require that a respondent be actively “making” a legitimate noncommercial or fair use of a domain name to establish rights or legitimate interests. This sole panelist has previously acknowledged various circumstances in which the Policy may be construed so as not to require that a respondent be actively making fair use of a name, for example, where concrete preparations to use it in a timely manner are demonstrated by substantial evidence,⁴ where a requirement of immediate use might chill free speech,⁵ and where non-use can be justified by the public interest.⁶ In this case, Respondent is not making fair use of the disputed domain name and has not provided a persuasive explanation for this. He has provided only a story about plans for a future vacation home, along with current third party website printouts about a city in Japan. There is no concrete evidence that Respondent has had any contact with or interest in the city which he claims to have visited four times since 1984 and in which he claims to have a deep interest.⁷ Based on his failure to provide evidence to support his story, Respondent has not established rights or legitimate interests in the disputed domain name. Complainant has succeeded in proving the second element needed for a finding of abusive domain name registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)); (2) that a 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 [the respondent has] engaged in a pattern of such conduct” (id., paragraph 4(b)(ii)), and (3) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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] web site or location of a product or service on [its] website or location” (id., paragraph 4(b)(iv)).

Complainant’s main argument for establishing Respondent’s bad faith is that Respondent registered and has used the disputed domain name to divert Internet users to his website for commercial gain. The Panel does not accept this argument. Complainant has not presented evidence that the disputed domain name directed Internet users to any website supported by or associated with Respondent. The only relevant webpage printout submitted by Respondent shows the URL of a search engine provider (having no established connection to Respondent). While the webpage identified by that URL shows the disputed domain name in its text, there is nothing to connect its appearance there with Respondent. While it might be that Respondent is somehow involved, the evidence submitted by Complainant is consistent with Respondent’s assertion that the disputed domain name was “parked”. The domain name registrar’s “parking” system may have included a search feature that generated the results submitted by Complainant. The panel is not prepared here, nor is it necessary, to determine that Respondent is responsible for this feature of the “parking” system, if this is indeed how the webpage submitted by Complainant was generated.

Nonetheless, Respondent has registered the well known and distinctive trademark of Complainant. The term “ARAI” is not part of common English language and would not be selected as a domain name without a specific motive or intention. Respondent has provided an unsupported and not particularly plausible story. Respondent here, “Goldmark”, has not denied the fact (alleged by Complainant) that he is the same person as respondent “Goldmark” in a similar recent proceeding under the Policy.⁸ In that case, the well known service mark of a major Chicago radio station (WBBM) was claimed by the respondent to be used in a domain name for a bona fide offering of services as an acronym for a dating service (“Women …Bulletin Boards…Men”). The panelist in that case found the bona fide use claim “improbable”, and denied it. The panel also found that the respondent acted in bad faith.⁹ This prior proceeding is evidence that Respondent has engaged in a pattern of registering the well known marks of others so as to prevent them from registering those marks as names. The Panel finds that Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it, and that this is part of a pattern of such registrations. This constitutes bad faith under paragraph 4(b)(ii) of the Policy.

Complainant has therefore proved each of the three elements necessary for a finding that Respondent has engaged in abusive domain name registration and use, The Panel will direct the Registrar to transfer the disputed domain name to Complainant.

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

Frederick M. Abbott
Sole Panelist

Dated: January 22, 2005

² It is well-settled that the addition of “.com” to a mark does not distinguish it for purposes of assessing contusing similarity under the Policy.

³ It refers to “Jeff Gordon, Jeff Burton, Mark Martin and others”. Complaint, Para. 12.

⁴ Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000, (September 25, 2000).

⁵ Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, (July 20, 2000).

⁶ . Pfizer Inc v. Van Robichaux,WIPO Case No. D2003-0399, (July 16, 2003).

⁷ Compare this with the legitimate “fan interest” shown in .2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001, (Mar. 26, 2004).

⁸ CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark, WIPO Case No. D2004-0330, (June 24, 2004).

⁹ In different circumstances than those presented here.