The Complainant is National Tyre Service Limited of Stockport, Cheshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondent is National Tyres Network Limited (now renamed Tyres Network Limited) of Macclesfield, United Kingdom, internally represented. 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2014. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, confirming that it had received a copy of the Complaint, that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applied, that the Domain Name would remain locked during this proceeding, that the registration agreement was in English, and that the Respondent had submitted to the jurisdiction at the Registrar's principal office. The Registrar also provided the full contact details held in respect of the Domain Name on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Complaint to the Respondent, and the proceeding commenced on September 29, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 19, 2014. The Response was filed with the Center on October 2, 2014.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 15, 2014. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel, in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant specializes in the provision of motor vehicle tyres and services for fitting them. It was incorporated in and has traded since 1970. It now has 228 retail branches and its revenue in 2013 was GBP 119 million. It has maintained a website at "" since 1994. It has registered United Kingdom trademarks for logos of NATIONAL TYRES AND AUTOCARE, NATIONAL and NATIONAL FLEET. It refers to itself as "National Tyres" in some of its literature.
The Respondent is a wholly owned subsidiary of Silkmoth Limited ("Silkmoth"), a developer of software and web applications, which provided IT services to the Complainant and companies in its group from 2006 to 2012. Silkmoth registered the Domain Name and the corresponding "." domain name in December 2013 and commenced a business called "National Tyres Network" which provides an online directory of independent tyre fitting centres. The Respondent was incorporated in April 2014.
The Complainant threatened legal proceedings for an injunction and damages for passing off. On May 16, 2014 Silkmoth wrote to the Complainant on its headed paper as follows:
"Whilst not accepting that we have been passing off and given that it would not be our intention to do so in the future, I'm happy to commit as follows.
In consideration of you refraining from taking proceedings against us for an injunction preventing passing off and damages for passing off, we undertake that
1. We will not whether acting by ourselves, our servants, officers, directors, employees, agents or otherwise howsoever do the following acts, that is to say:
a. Sell, supply, offer or expose for sale or supply or advertise the provision of motor vehicle tyres and tyre fitting services under or by reference to National Tyres or any other mark confusingly similar.
b. Otherwise pass off or enable, assist or procure others to pass off our business as and for your business by reference to the mark National Tyres or any other mark confusingly similar.
2. We will take all necessary steps to remove any reference on the internet that makes reference to the marks referred to above.
3. We will deliver all printed material that makes reference to the marks to you.
Regarding point 2, we have submitted a redirect of the domain "www.nationaltyresnetwork." to a new domain and changed words on the site to avoid any potential confusion in the interim until Google has updated its index. Google has started the process of removing references to the above domain from its index.
Regarding point 3, there are no printed materials.
If the above is not adequate for you to commit to not taking any further action, please let me know."
In July 2014, a Nominet Expert gave a decision finding that the domain name was an abusive registration in the hands of the Respondent and directing that it be transferred to the Complainant.
Silkmoth and/or the Respondent have continued their online directory of tyre fitting centres through their website at "www.tyresnetwork.". Until recently, the Domain Name was directed to this website, but the link was removed following a letter from the Complainant in September 2014 threatening to commence proceeding under the UDRP unless the Domain Name was transferred to the Complainant. The Domain Name is currently parked with the Registrar. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the marks NATIONAL TYRES AND AUTOCARE, NATIONAL, NATIONAL TYRE SERVICE and NATIONAL TYRES in which it has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that there is no evidence of the Respondent's use of the Domain Name in connection with a bona fide offering of goods or services. According to the Complainant, the name "National Tyres Network" was chosen by the Respondent to profit from the Complainant's goodwill. The Complainant points out that if it had been intended to be purely descriptive, the ungrammatical plural "tyres" would not have been used. The Complainant further notes that Silkmoth was very familiar with the Complainant's company name, trading names and trademarks, having worked for the Complainant for six years. The Complainant adds that the Respondent is not commonly known by the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant reiterates that it was originally registered for commercial gain and draws attention to the undertakings given by Silkmoth, which it says have been breached. The Complainant observes that Silkmoth was well aware of its business having developed three websites for the Complainant's group. The Complainant adds that the Respondent has stated that it will consider offers by the Complainant to purchase the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
The Respondent accepts that the Complainant has rights over the name "National Tyres" and points out that it accepted this in its letter of May 16, 2014. However, the Respondent submits that the Domain Name could only be considered confusingly similar to the Complainant's marks within the United Kingdom. The Respondent points out that the Complainant has not objected to the use of the domain names and by a company called National Tyres in Australia, nor of , by a company called National Tyres in India.
The Respondent emphasizes that the content and style of a website located by a domain name are crucial when determining whether a registration is confusingly similar or infringes a trademark. The Respondent states that in accordance with its undertakings, it will not use the Domain Name for a website that targets the United Kingdom, but intends to operate a website using the Domain Name directed at another territory.
The Respondent states that it embarked in 2013 on a highly successful programme of launching ecommerce websites for independent tyre retailers in the United Kingdom, resulting in a national network of 900 such websites. It states that its website, formerly at "www.nationaltyresnetwork.", and now at "www.tyresnetwork.", serves as a directory of these websites. The Respondent continues that it is now working with partners in other territories to launch similar networks, and intends to make fair use of the Domain Name in a territory where the Complainant does not operate.
The Respondent disputes the allegation that the Domain Name was registered and is being used in bad faith. The Respondent states that the Domain Name was registered to serve as a website for a directory for a non-United Kingdom national network of independent tyre retailers. According to the Respondent, the link to the website at "www.tyresnetwork." was an oversight which it promptly rectified on being alerted by the Complainant.
The Respondent also states that the "offers" to sell the Domain Name alleged by the Complainant refer to a proposal for a mediated settlement made without prejudice by the Respondent under the guidance of the Nominet mediator. The Respondent exhibits an email to the Nominet mediator in which it said that it planned to use the ".com" domain name for its operation in the United States of America and would not include it in a suggested deal to transfer the "." domain name to the Complainant for GBP 750, but if the Complainant wanted to make an offer for the ".com" Domain Name as well, the Respondent would consider it. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove on the balance of probabilities: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn. A. Identical or Confusingly Similar
It is not disputed that the Complainant has rights in the mark NATIONAL TYRES in the United Kingdom.
In assessing whether a domain name is confusingly similar to a complainant's mark for the purpose of the first requirement of the UDRP, it is well established that the comparison should be made between the domain name and the mark, typically without regard for the content of any website for which the domain name is or may be used. See, for example, Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman,WIPO Case No. D2008-1267 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. This reflects the role of the first requirement in the UDRP of ensuring that a complainant has a sufficient interest in the disputed domain name; whether the registration and use of the disputed domain name are objectionable is assessed under the second and third criteria.
The Complainant's mark NATIONAL TYRES is highly descriptive. On the other hand, it is clear from the evidence that the Complainant has a very strong reputation under this mark in its niche market in the United Kingdom. In all the circumstances the Panel finds that the Domain Name is confusingly similar to the Complainant's mark NATIONAL TYRES, which it incorporates in its entirety together with the generic word "network" and the generic top level domain suffix. The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel considers that the use made by the Respondent or its parent company of the name "National Tyres Network" and of the domain names and in connection with a directory of United Kingdom tyre retailers did not constitute a bona fide offering of goods and services. On the contrary, the Panel finds that the Respondent used these domain names in bad faith to exploit confusion with the Complainant's mark and to trade off the Complainant's reputation and leading market position.
There is no evidence that the Respondent has so far used or made demonstrable preparations to use the Domain Name or any corresponding name in connection with a bona fide offering of goods or services outside the United Kingdom. The Panel does not regard the assertion by the Respondent of an intention so to use the Domain Name in the future as satisfying the criterion identified in paragraph 4(c)(i) of the UDRP, which clearly contemplates actual use or at least demonstrable preparations for use.
It appears that the Respondent is not commonly known by the Domain Name, and to the extent that it has become known by the Domain Name, this has been through its bad faith use of the Domain Name, as described above, which cannot be regarded as establishing a right or legitimate interest in it.
Nor is the Respondent making a legitimate noncommercial or fair use of the Domain Name. As matters stand, it is not currently making any active use of the Domain Name, and such active use as it has made of the Domain Name in the past has been commercial, illegitimate and unfair. The Respondent's expression of an intention to use the Domain Name in future in a manner which it contends would be fair cannot be regarded as establishing an existing right or legitimate interest in the Domain Name or a corresponding name.
Having reviewed the material on the file, the Panel is satisfied that the Respondent does not have any right or legitimate interest in respect of the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
It is clear from the terms of the UDRP, and has been confirmed in many cases, that the two elements of its third substantive requirement are cumulative criteria which must both be satisfied for a complaint to succeed. A complainant must show on the balance of probabilities that the disputed domain name was both registered in bad faith and is being used in bad faith.
The Panel finds in this case that the Domain Name was registered in bad faith for use to promote the Respondent's directory of tyre retailers in the United Kingdom by trading off the Complainant's reputation and goodwill under the name "National Tyres" and similar names.
It is well established that passive use of a domain name in bad faith can satisfy the second prong of the third requirement of the UDRP, particularly where the registrant is threatening to use it actively in bad faith. See paragraph 3.2 of WIPO Overview 2.0 and the cases cited there.
The Respondent's parent company has given undertakings as set out above in section 4 of this Decision. These undertakings are not limited in terms to the United Kingdom and the Panel considers that they apply worldwide. In consideration of not being sued for passing off, the Respondent's parent undertook not to advertise the provision of motor vehicle tyres and tyre fitting services under or by reference to "National Tyres" or any other mark confusingly similar, and to take all necessary steps to remove any reference on the Internet to any such marks.
There is no reason to read into these undertakings a limitation to the United Kingdom which is not expressed in them. The Complainant has a real interest in preventing use of the Domain Name by the Respondent in relation to such goods and services outside as well as within the United Kingdom. Such use could cause confusion with the Complainant's United Kingdom business and would make it more difficult for the Complainant to extend its business outside the United Kingdom.
The Panel therefore considers that the Respondent's threatened use of the Domain Name to advertise a national network of tyre retailers in another country would be contrary to the undertakings given by its parent company to avoid legal proceedings and would amount to reneging on the settlement in bad faith.
The Panel further finds that by its use of the Domain Name the Respondent has attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of its website. Indeed, the Respondent continued to do so, through the link to its website at "www.tyresnetwork.", even after it gave the undertakings mentioned above, until further challenged by the Complainant. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith.
In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
Since all three requirements of the UDRP are met, it is appropriate to order that the Domain Name be transferred to the Complainant. 7. Decision
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.
Jonathan Turner
Sole Panelist
Date: October 26, 2014
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