Nokian Tyres plc v. Whois Privacy Services Pty Ltd / Jeff Lander
Case No. D2012-1942
1. The Parties
The Complainant is Nokian Tyres plc of Nokia, Finland, represented by Benjon Oy, Finland.
The Respondents are Whois Privacy Services Pty Ltd of Queensland, Australia and Jeff Lander of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 2, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 3, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 8, 2012.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 9, 2012. 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.
At the time the original Complaint was filed the Registrar’s WhoIs database identified the first of the above-named Respondents, a privacy service, as the registrant of the Domain Name. However, in response to the Center’s registrar verification request the Registrar identified the second of the above-named Respondents, Jeff Lander, as the underlying registrant. Sometimes, the identification of a ‘new’ registrant at this stage can have a material effect on the Complainant’s choice of Mutual Jurisdiction. In this case however, that is not a concern as the Complainant has selected the jurisdiction of the courts at the location of the principal office of the Registrar and the Registrar has not changed.
In light of the fact that the privacy service is just that i.e. a service offered to conceal the identity of the underlying registrant, the Panel proposes to treat Jeff Lander as the ‘true’ registrant and all references hereafter to the “Respondent” are references to Jeff Lander.
From the Center’s communications with the parties appearing in the Case File, it appears possible that not all of the communications directed to the Respondent reached the Respondent. Certainly some of those sent by post failed to get through because, according to the courier, the address was incorrect and nobody answered the telephone.
However, Paragraph 2(a) of the Rules provides as follows:
“(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
sending Written Notice of the complaint to all postal-mail and facsimile addresses
(A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and
(B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@; and
(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).”
The Panel is satisfied that the Center has discharged its responsibility in this regard.
4. Factual Background
The Complainant is a Finnish tyre manufacturer, based in Nokia, specializing in tyres suitable for Nordic conditions. The Complainant has been trading under the name Nokian Renkaat (“Renkaat” means Tyres in Finnish) since 1987. The extract from the Finnish trade register annexed to the Complaint identifies the Complainant as Nokian Renkaat Oyj, but features Nokian Tyres plc as its “parallel company name”.
The Complainant is the registered proprietor of Community Trade Mark No. 000256883 dated May 15, 1996 (registered August 18, 1998) for NOKIAN TYRES (figurative mark) in classes 1, 12 and 37 for goods and services related to vehicle tyres. The registration details annexed to the Complaint indicate that the registration is in the name of the Complainant’s “parallel company name”, Nokian Tyres plc.
The Complainant is the registrant of several domain names including, (December 4, 1996); (October 20, 2003) and (December 4, 1996).
According to the Registrar’s WhoIs database, the Domain Name was first registered on April 8, 2006, but it is not known when the Respondent first acquired the Domain Name.
The Domain Name is connected to a parking page featuring sponsored listings. These links range from links relating specifically to vehicle tyres (including the Complainant’s vehicle tyres and the vehicle tyres of other manufacturers) to “Popular Categories” such as “Travel”, “Financial Planning” and “Computers” amongst several others.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its registered figurative trade mark, the most prominent textual element of which is the name “Nokian Tyres”, the name under which it has traded for many years, being an English translation of its name in Finnish, Nokian Renkaat.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
While the Complainant’s registered trade mark is a figurative mark, the only textual element is “Nokian Tyres” and that name stands out prominently in the mark. In addition the Complainant has done enough to satisfy the Panel that the Complainant has acquired unregistered trade mark rights in respect of its trading name, “Nokian Tyres”.
The Domain Name comprises the name “Nokia” the word “tires” and the generic “.com” top level domain suffix. It being well-established that it is permissible for the Panel to ignore the generic “.com” top level domain suffix when assessing identity and confusing similarity for the purposes of paragraph 4(a(i) of the Policy, the Panel is left to make the assessment comparing “nokiatires” with “Nokian Tyres”.
The Panel finds that the Domain Name is confusingly similar both visually and phonetically with the Complainant’s trade mark.
As indicated in section 4 above, the Domain Name is connected to a parking page featuring sponsored listings. These links range from links relating specifically to vehicle tyres (including the Complainant’s vehicle tyres) to “Popular Categories” such as “Travel”, “Financial Planning” and “Computers” amongst several others.
While the Panel recognizes that sponsored listings on parking pages may not be selected by the domain name owner, such listings are normally heavily influenced by the nature of the domain name in question and the selection of a domain name is very much a matter within the control of the registrant. In this case the Domain Name is not a natural word combination unless it is intended to refer to the tyre manufacturer based in Nokia in Finland, which trades under and by reference to the name “Nokian Tyres”. It is unsurprising therefore that many of the primary listings on the website to which the Domain Name is connected relate to vehicle tyres.
The Complainant asserts that it has never granted the Respondent any permission to use its trade mark or a variant thereof for this or any other purpose. The Respondent has not challenged that assertion.
The Complainant’s primary contention is that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and for the purpose of taking a free ride on the back of the Complainant’s trade mark rights for commercial gain.
Use of a domain name for the purpose of a bona fide offering of goods can constitute a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy (paragraph 4(c)(i) of the Policy). However, in the view of the Panel to use a domain name which is confusingly similar to a complainant’s trade mark, without the permission of the complainant and with a view to directing the Internet visitor to goods and services which include some having nothing to do with the complainant cannot on any basis be categorized as bona fide and particularly where, as here, there are links to sites offering goods which compete with the Complainant’s goods.
While it is for the Complainant to prove each element of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in respect of matters, which will often only be known to the respondent. In recognition of this difficulty, panels will ordinarily be satisfied if the complainant comes forward with a prima facie case. It is then incumbent upon the respondent to answer that case.
In the view of the Panel the Complainant has come forward with a prima facie case, which calls for an answer. What possible justification can the Respondent have had for adopting a domain name making prominent use of a confusingly similar variant of the Complainant’s trade mark for the purpose of directing visitors to its website to other sites selling inter alia products competing with those of the Complainant? There is no answer. The Respondent has not seen fit to come forward with any explanation to justify its selection of the Domain Name. Nor can the Panel conceive of any satisfactory explanation.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant makes several varying allegations as to the reasons why the Respondent registered the Domain Name. However, for present purposes it is only necessary for the Panel to address the Complainant’s primary contention, namely that the Respondent selected the Domain Name with knowledge of the Complainant’s trade mark and with the intention of using the Complainant’s trade mark to attract Internet users to other commercial websites for the purposes of commercial gain, some of them offering for sale goods which compete with the Complainant’s goods. The probable gain is Pay Per Click revenue or some other form of referral revenue derived from the sponsored listings. The Complainant contends that in so doing the Respondent is deceiving Internet users. The Complainant contends that Internet users, seeing the Domain Name, will believe that the website to which it is connected is either owned by or authorized by the Complainant.
The Panel agrees. The Panel believes it to be highly probable that there will be large numbers of Internet users, familiar with the Complainant, who will be likely to believe that the website to which the Domain Name is connected is either owned by or authorized by the Complainant. The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Date: November 21, 2012