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Weld Racing, Inc. v. Modern Empire Internet Limited [2005] GENDND 767 (23 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weld Racing, Inc. v. Modern Empire Internet Limited

Case No. D2005-0305

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 Modern Empire Internet Limited, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <weldwheel.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2005. On March 24, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 24, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the current contact information for this domain can be found by doing a whois lookup at “http:// whois.enom.com”.

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 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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2005.

Paragraph 2(a) of the Rules provides that, it is the provider’s responsibility to employ reasonably available means to achieve actual notice of the dispute to the Respondent. The Panel accepts that, in light of the information available to it, the Center has fulfilled its obligation to employ reasonable means to achieve actual notice of the complaint to the Respondent by making all the communications to it by email, fax and by courrier.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2005.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 9, 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 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 registered the disputed domain name <weldwheel.com > in October, 26, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name is identical to the Complainant’s registered trademark, except that the domain name is without the pluralized “s”;

- the goods and services offered via Respondent’s domain name are similar to the goods and services associated with the Complainant’s registered trademark WELDWHEELS;

- 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 companies that offer for sale goods related to automotive wheels on “www.weldwheel.com”, fact which, in the Complainant’s opinion, proves the illegitimate commercial or fair use of the domain name in relation to the Complainant’s trademark;

- by using the domain name <weldwheel.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.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

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

The Complainant’s rights in the WELDWHEELS mark are uncontestable. As can be seen from the US registration of the mark, the trademark is for distributorship services in the field of automotive wheels.

A.2. The similarity between the disputed domain name <weldwheel.com> and the WELDWHEELS mark

The disputed domain name incorporates the WELDWHEELS mark except for the letter “s”.

An important body of WIPO UDRP decisions concluded that, adding or deleting the plural “s” from a trademark is a common mistake consumers make when referring to companies and or their marks (see Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033. ACCOR v. Marc Zibi, WIPO Case No. D2003-0561, Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274, Kejr, Inc., d/b/a Geoprobe Systems v. Art’s Manufacturing & Supply, Inc., WIPO Case No. D2001-1348, Système U Centrale Nationale v. C2IB, WIPO Case No: D2001-0417) and does not exclude the confusing similarity of such domain names with such trademarks.

In line with the decisions of other WIPO UDRP panels, mentioned above, the Panel finds that deleting the plural “s” from the mark WELDWHEELS does not make the disputed domain name less confusingly similar to the Complainant’s 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 Panel’s view is that the last two circumstances are not applicable to the present case.

The Respondent as an individual, business, or other organization, has not been commonly known by the disputed Domain Name, as the Respondent’s name is Modern Empire Internet Limited.

Neither is the Respondent making a legitimate noncommercial or fair use of the domain name. The website to which the disputed domain name resolves provides links to companies that offer for sale automotive wheels and also other products such as mobile phones. On the basis of that, it is reasonable to infer that the Respondent is using the disputed domain name in a commercial context.

Referring to the first circumstance, the Panel has to take into consideration aspects, which relate to the conduct of the Respondent prior and during these proceedings.

The Respondent has been involved in a WIPO UDRP case, see Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455, in which the Panel found that the conditions set out in the Policy for the transfer of the domain name to Complainant had been fulfilled.

Even though, the Respondent was involved in a prior administrative proceeding and is thus familiar with the UDRP and despite the fact the Respondent was properly notified of the complaint, it did not answer to any of the Complainant’s allegations and therefore did not offer any indication of a bona fide offering of goods or of 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.

Given the said facts and the Respondent's prior involvement in a UDRP proceeding as a Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Based on the evidence presented in the case and based on the Panel’s own search, the Panel concludes that the Complainant’s mark is relatively known on the Internet.

Given the fact that the trademark WELDWHEELS was registered in the nineties, and that the Complainant is relatively known on the Internet, the content of the website to which the disputed domain name resolves, and based on the balance of probabilities, this leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith in order to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's registered trademark.

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

Beatrice Onica Jarka
Sole Panelist

Dated: May 23, 2005