WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TRS Quality, Inc. v. Chirs Robert
Case No. D2010-1663
1. The Parties
Complainant is TRS Quality, Inc of Fort Worth, Texas, United States of America, represented by Haynes and Boone, LLP of United States of America.
Respondent is Chirs Robert, of Saint Paul, Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <radioshackcoupons.org> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2010. On October 4, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On October 6, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 28, 2010.
The Center appointed Gary Nelson as the sole panelist in this matter on November 2, 2010. 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 a wholly-owned subsidiary of the RadioShack Corporation and licenses the RADIOSHACK trademark to the RadioShack Corporation which operates a chain of retail consumer electronic stores within the United States, among other countries.
The RadioShack Corporation operates approximately 4,400 stores, 1,300 dealer outlets, 500 wireless phone kiosks in the United States and 200 company-operated stores in Mexico, all under the RADIOSHACK trademark.
The RadioShack Corporation operates a website at “www.radioshack.com” where consumers can shop online and through which RadioShack Corporation sells a variety of products and services.
Complainant owns the following trademark registrations, among others:
DATES OF APPLICATION AND REGISTRATION
March 31, 1960
November 8, 1960
August 4, 1964
September 28, 1965
September 30, 1976
November 8, 1977
June 21, 1982
August 20, 1985
Respondent appears to have registered the <radioshackcoupons.org> domain name on July 1, 2010. The corresponding website appears to offer numerous “click through” opportunities to websites offering a variety of coupons, as well as a “click through” opportunity to Complainant's own website at “www.radioshack.com”.
5. Parties’ Contentions
Complainant owns trademark rights in the RADIO SHACK trademark, and is the owner of numerous trademark registrations for RADIO SHACK in the United States, among other countries.
Complainant became aware that Respondent had registered the <radioshackcoupons.org> domain name in August 2010.
Complainant has not authorized Respondent to use the RADIOSHACK mark, nor has Respondent ever sought Complainant's permission or authorization to use the RADIOSHACK mark as a trademark, service mark or URL.
The <radioshackcoupons.org> domain name resolves to a parked link-farm website featuring a link to Complainant’s own website, and that Respondent receives a financial benefit each time an Internet user clicks on the displayed links, and the apparent purpose and use of the <radioshackcoupons.org> domain name is to exploit the RADIOSHACK trademark for profit through the use of sponsored links at the website.
Respondent has registered and is using Complainant's RADIOSHACK domain name in bad faith to profit from consumer confusion.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the RADIO SHACK trademark and the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant owns numerous RADIO SHACK trademark registrations in the United States. One of these registrations is for United States Trademark Office Registration No. 706,962. The registration date for this trademark (i.e., November 8, 1960) precedes the date upon which Respondent registered the disputed domain name (i.e., July 1, 2010).
Accordingly, Complainant has established rights in its RADIO SHACK trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The disputed domain name, <radioshackcoupons.org>, is confusingly similar to Complainant’s RADIO SHACK trademark because the disputed domain name incorporates the entirety of Complainant’s RADIO SHACK trademark and merely adds a generic word along with the generic top-level “.org” domain name. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the disputed domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). The addition of the word “coupons” is insufficient to overcome Complainant’s allegation of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000) (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <radioshackcoupons.org> domain name, or that it is commonly known by any name consisting of, or incorporating the words “radio shack,” “coupons” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the disputed domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its RADIO SHACK trademark.
Respondent is currently operating websites at <radioshackcoupons.org> which is merely an advertising portal and parking page that offers click-through opportunities, of which many are associated with coupons. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i). See The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet user accesses the website at <radioshackcoupons.org> and clicks on any of the numerous options available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no right or legitimate interest in the contested domain names. See Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194.
Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
In regard to <radioshackcoupons.org>, Respondent maintains a corresponding website that hosts pay-per-click advertisements, including a click through opportunity to Complainant’s own primary website. This activity constitutes evidence of bad faith registration and use of the contested domain name. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy[.]”).
The Panel also finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the RADIO SHACK trademark. Respondent’s awareness of Complainant’s RADIO SHACK trademark may be inferred because the famous mark was registered with the USPTO prior to Respondent’s registration of the contested domain name and since the RADIO SHACK trademark is well known and famous. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) vs. Fredrik and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Respondent has clearly provided inaccurate contact information with the Registrar. Neither the telephone/fax numbers provided (i.e., +55.5555555) nor the address of Respondent (i.e., 111 Bat Ave., St. Paul MN 55106) appear to be legitimate. This false information, provided by the Respondent, is evidence of bad faith registration and use of the contested domain name. See MySpace, Inc. v. Gomez, WIPO Case No. D2007-1231 (finding bad faith where respondent supplied inaccurate telephone number, fax number and physical address).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <radioshackcoupons.org>, be transferred to Complainant.
Gary J. Nelson
Sole PanelistDated: November 12, 2010