WIPO Domain Name Decision D2021-3458 for nortonmotorcycles.co, nortonmotorcycles.net, nortonracing.net

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Norton Motorcycle Co. Limited v. Brian O’Connor, Norton Motorcycles Ltd and Zeus Racing Case No. D2021-3458 1. The Parties

The Complainant is The Norton Motorcycle Co. Limited, United Kingdom (“UK”), represented by Khaitan & Co, India.

The Respondents are Brian O’Connor, Norton Motorcycles Ltd, and Zeus Racing, UK.

2. The Domain Names and Registrars

The disputed domain name is registered with Wild West Domains, LLC (the “First Registrar”).

The disputed domain name is registered with Tucows Inc. (the “Second Registrar”).

The disputed domain name is registered with Wix.com Ltd. (the “Third Registrar”).

The First Registrar, Second Registrar, and Third Registrar are together referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 19, 2021, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with the disputed domain names. On October 19, 2021, October 20, 2021, and October 21, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2021, providing the multiple underlying registrants and contact information disclosed by the Registrars, and inviting the Complainant to either submit an amendment to the Complaint or separate the Complaint. The Complainant filed an amended Complaint on December 15, 2021.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 13, 2022.

The Center appointed Ian Lowe as the sole panelist in this matter on February 1, 2022. 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.

The Complaint has been filed against multiple respondents. For the reasons set out below, the Panel finds that the three disputed domain names are under common control and that consolidation of the complaints in respect of all disputed domain names would be fair and equitable to all parties as well as providing procedural efficiency.

4. Factual Background

The Norton Group was founded by James Norton in the UK in 1898. From 1902, it was engaged continuously in the manufacture and sale of motorcycles and associated parts and fittings under the NORTON mark. On January 29, 2020 the Norton Group went into administration. On April 17, 2020, the Complainant (which is part of the TVS Motor Company, India) acquired from the administrators of constituent companies of the Norton Group various business assets including the NORTON trademark and variants including the stylized word mark ”Norton” (the “Norton Marks”), together with all the goodwill and reputation associated with the Norton Marks.

The Complainant is accordingly the proprietor of a substantial number of registered trademarks around the world in respect of the Norton Marks, including Australia trademark number 35619 NORTON registered on March 14, 1923 and UK trademark number 2150309A NORTON registered as of November 3, 1997.

The Complainant is also the owner of a number of domain names comprising NORTON, including , , , , , and .

The and disputed domain names were registered on July 13, 2020; The disputed domain name was registered on July 16, 2020. The disputed domain name now resolves to a parking page of the Third Registrar and the other two disputed domain names both redirect to the same web page. At the time of filing of the Complaint, , resolved to a webpage (to which the other two disputed domain names redirected) featuring Norton motorcycles and the company name Norton Motorcycle Racing Ltd.

On February 3, 2020, Brian O’Connor (the First Respondent) incorporated five UK companies comprising the NORTON trademark, appointing himself director and secretary. These included Norton Motorbikes Ltd, and Norton Motorcycle Racing Limited. Of these companies, four were dissolved on August 10, 2021. On December 6, 2021, on the application of the Complainant, the UK Company Names Tribunal made an order requiring Norton Motorcycle Racing Ltd to change its name to one that was not similar to NORTON. In default of such a change, the company’s name was changed by statutory provision to 12439719 Ltd. on February 9, 2022. It is now subject to an active proposal to strike it off the register of companies for failure to file a Confirmation Statement.

On July 14, 2020, the First Respondent incorporated two further UK companies comprising the NORTON trademark, appointing himself director and secretary, namely Norton Motorcycles Ltd (the Second Respondent), and Norton Racing Ltd. The Second Respondent is subject to an active proposal to strike it off the register of companies for failure to file accounts and Norton Racing Ltd was dissolved on December 21, 2021.

5. Parties’ Contentions A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its NORTON trademarks, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the Respondents registered and are using the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.

B. Respondent

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

6. Discussion and Findings

As noted above, the Complaint is filed against multiple respondents. The WhoIs data provided by the Registrars, and data from the UK Companies House records provided by the Complainant, disclose that:

- the disputed domain name was registered by the First Respondent;
- the disputed domain name was registered by the Second Respondent (of which the First Respondent is the director and secretary);
- the disputed domain name was registered by the Third Respondent whose post address and email address are the same as those of the Second Respondent and whose telephone contact number is the same as that of the First and Second Respondents.

The Panel notes that the First Respondent is also the director of a company called Zeus Racing Products Limited.

Accordingly, the Panel finds that the three disputed domain names are under common control and that as noted above consolidation of the complaints in respect of all disputed domain names would be fair and equitable to all parties as well as providing procedural efficiency.

For this Complaint to succeed in relation to the disputed domain names the Complainant must prove that:

(i) the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the Norton Marks, both by virtue of its many trademark registrations around the world and as a result of the goodwill and reputation acquired through its predecessors’ widespread use of the marks over very many years. Ignoring the generic Top-Level Domain (“gTLD”) “.net” and the country code Top-Level Domain (“ccTLD”) “.co”, the disputed domain names comprise the Complainant’s NORTON word mark together with the words “motorcycles” and “racing”. In the Panel’s view, the addition of these words does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark. Accordingly, the Panel finds that the disputed domain names are each confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondents could have no rights or legitimate interests in respect of the disputed domain names. The First Respondent registered five UK companies comprising the NORTON mark within a week after the Norton Group went into administration in January 2020. Two further companies matching the disputed domain names were registered within the same week when the disputed domain names were registered in July 2020. The disputed domain names have been used for a website featuring motorcycles manufactured by the Complainant’s predecessors and the name of a company incorporated by the First Respondent that has been forced to change its name to one that does not include the NORTON mark.

There is no question of the Complainant or its predecessors having given the Respondents permission to use the NORTON mark as part of the disputed domain names. The Panel notes the apparently opportunistic registration of companies comprising the NORTON mark immediately after the Norton Group went into administration and within a couple of days around the registration of the disputed domain names. In the Panel’s view, these incorporations do not give rise to any rights or legitimate interests in respect of the disputed domain names.

The Panel also notes that the Respondent filed a UK trademark application number 3511309 for the mark NORTON MOTORCYCLE RACING, which has been refused following the Complainant’s opposition.

The Respondents have chosen not to respond to the Complaint to explain their use of the disputed domain names or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondents do not have any rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

In light of the use to which the Respondents have put the disputed domain names and the First Respondent’s actions in incorporating many companies comprising the NORTON trademark and words alluding to motorcycles and racing, the Panel is in no doubt that the Respondents had the Complainant and its rights in the NORTON mark in mind when they registered the disputed domain names.

The Panel cannot conceive of any good faith use to which the disputed domain names could be put. The disputed domain names have been used for a website featuring motorcycles manufactured by the Complainant’s predecessors and were registered shortly after the Complainant acquired business assets of the Norton Group. Accordingly, the Panel considers that the Respondents registered the disputed domain names for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the Norton Marks, by confusing Internet users into believing that the disputed domain names were being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities.

Alternatively, the plausible inference is that the Respondents registered the disputed domain names with a view to selling them to the Complainant for a sum in excess of the Respondents’ out of pocket expenses for registering the disputed domain names or with a view to disrupting the business of the Complainant.

Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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 disputed domain names, , , and be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: February 15, 2022

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