The Complainant is Tyre Depot Holdings Pty Ltd of Arncliffe, New South Wales, Australia, represented by Gilbert & Tobin Lawyers, Australia.
The Respondent is Tyre Kingdom Pty Ltd of North Parramatta, New South Wales, Australia represented by IP Wealth, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with NetRegistry Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2014. On May 9, 2014, the Center transmitted by email to NetRegistry Pty Ltd a request for registrar verification in connection with the disputed domain name. On May 14, 2014, NetRegistry Pty Ltd. 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 .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. The Response was filed with the Center on June 6, 2014.
The Center appointed David Stone as the sole panelist in this matter on June 23, 2014. 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.
On June 16, 2014, the Complainant filed Further Submissions. Rule 12 of the Rules allows the Panel sole discretion in permitting further statements from either party. The Submissions by the Complainant call in to question the integrity of the evidence submitted by the Respondent, highlight alleged inaccuracies in the Response and introduces new evidence as to the behaviour of the Respondent after the Complaint had been filed. The Panel finds this evidence of material value to the dispute, and so permits the Further Submissions. 4. Factual Background
The Complainant is an Australian company based in New South Wales. Since May 2009, the Complainant and its predecessor in title have operated a large and successful tyre wholesale business under the business name "Tyre Depot". The Complainant first registered the business name "Tyre Depot" in New South Wales on June 22, 2009.
The Complainant is the owner of two Australian trade mark registrations for TYRE DEPOT:
1. No. 1428785 for TYRE DEPOT, registered from June 3, 2011 in class 35 for the distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); and
2. No. 1527429 for TYRE DEPOT and device, registered from November 22, 2012 in classes 12 and 35 for automobile tyres, tyres for motor vehicles, distribution of goods (not being transport services) (agent, wholesale, representative services, by any means);
(together referred to as the "TYRE DEPOT Marks"). The TYRE DEPOT Marks were registered by the Australian authorities on the basis that they had acquired distinctiveness.
The Respondent is an Australian company incorporated on May 19, 2009. The Disputed Domain Name was registered by the Respondent with Netregistry Pty Ltd on July 22, 2009. 5. Parties' Contentions A. Complainant
The Complainant submits that (i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered or subsequently used in bad faith.
The Complainant submits that the Disputed Domain Name fully incorporates its trade mark TYRE DEPOT, adding only the country code Top-Level-Domain ("ccTLD") extension ".". As such, the Complainant contends that the similarity will cause users mistakenly to believe that the Disputed Domain Name originates from or is otherwise associated with the Complainant. The Disputed Domain Name is therefore confusingly similar to the TYRE DEPOT Marks, for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant submits that the Respondent is not making a bona fide use of the Disputed Domain Name, nor is the Respondent making a protected noncommercial or fair use of the Disputed Domain Name. The Respondent is not commonly known by the name "Tyre Depot". Furthermore, the Respondent is not licensed or authorized by the Complainant to register the Disputed Domain Name, lodge trade mark applications for TYRE DEPOT or register "Tyre Depot" as a business name. The Respondent applied for registration of the trade mark TYRE DEPOT on July 23, 2009 and June 7, 2011, and has registered "Tyre Depot" as a business name in certain states. However, the mere fact that the Respondent has filed trade mark applications does not give rise to rights or legitimate interests in the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name was registered and is subsequently being used in bad faith. The Respondent registered the Disputed Domain Name with actual knowledge of the Complainant's rights and reputation in the TYRE DEPOT Marks, which evidences bad faith registration within the meaning of the Policy at para 4(a)(iii). The Complainant further submits that the timing of the Respondent's registration of the Disputed Domain Name indicates an intent to prevent the Complainant from reflecting its TYRE DEPOT mark in the corresponding "." domain name. B. Respondent
The Respondent made the following submissions in Response.
The Respondent acknowledges that the Disputed Domain Name is identical or confusingly similar to the TYRE DEPOT Marks.
The Respondent denies that it has no rights or legitimate interests in the Disputed Domain Name, or that it used the name "Tyre Depot" in order misleadingly to divert customers or to tarnish the TYRE DEPOT Marks for commercial gain. The "Tyre Depot" name, it says, was chosen in February 2009 and continuously used by the Respondent for the wholesale branch of its tyre business. Price lists and invoices dated between July 23, 2009 and September 9, 2013 confirm that prior to notice of the subject matter of the dispute the Respondent had bona fide use of the Disputed Domain Name in connection with offering goods and services. There is no evidence to show that the Respondent is not conducting a real business. The Respondent submits that the test under para 4(a)(ii) of the Policy is not a comparative one, the test is whether the Respondent has any rights or legitimate interests at all.
The Respondent contends that the Disputed Domain Name was not registered or used in bad faith. The Disputed Domain Name was registered by the Respondent because it related to and was substantially connected to the Respondent's business. The Complainant asserts that it first used the name "Tyre Depot" in May 2009, and the Disputed Domain Name was registered on July 22, 2009. The Respondent contends that it is an erroneous belief that the Complainant had acquired significant reputation in the name "Tyre Depot" between May and July 22, 2009 such that the Respondent in registering the Disputed Domain Name did so in bad faith. Furthermore, the Respondent says that it was not aware of the Complainant, or the Complainant's alleged rights in TYRE DEPOT, during that time. C. Complainant's Further Submissions
The Complainant used the Further Submissions to raise doubts about the integrity of the evidence submitted in the Response. The Complainant made an informal approach to the Respondent in early June 2011, and it believes that it was only after this approach that the Respondent began taking active steps to use "Tyre Depot". On June 10, 2014 the Complainant wrote to the Respondent to request inspection of original invoices and tax documents. The Respondent replied on June 12, 2014 that they would not be provided for reasons of commercial sensitivity.
The Complainant received offers from the Respondent on May 22, 2014 offering to transfer the Disputed Domain Name to the Complainant in exchange for payment of AUD 5,000. The Complainant submits that this is evidence of bad faith in registering and using the Disputed Domain Name for dishonest commercial motives. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied. A. Identical or Confusingly Similar
The Complainant owns an Australian Registered Trade Mark for the words TYRE DEPOT. The Disputed Domain Name is . It is thus clear that the Disputed Domain Name and the Complainant's trade mark are confusingly similar and as such, the Panel finds that the first element of the Policy is satisfied. The Respondent has acknowledged this in any event. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of paragraph 4(1)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trade mark or service mark at issue.
The Complainant states that the Respondent is not commonly known by the name "Tyre Depot" and that the Respondent could show no bona fide offering of goods and services under the Disputed Domain Name. This claim is supported by print-outs of the website for the Disputed Domain Name, which the Complainant describes as a "shell". The website contains several empty pages and contact details referring to the Respondent's Tyre Kingdom business. Furthermore, the Complainant asserts that its business was known to the Respondent when the Disputed Domain Name was registered in July 2009, also providing invoices of transactions between the Complainant and the Respondent from December 2009 to June 2011. In the Panel's view, this provides a prima facie case against the Respondent and the burden therefore shifts to the Respondent to provide evidence of its rights or legitimate interests under paragraph 4(c) of the Policy (see Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753).
The Respondent rebuts these assertions by providing price lists and sale invoices issued by the Respondent's business between 2009 and 2013. The Respondent also supplied Google search results and listings for "Tyre Depot" and "Tyre Depot Australia" in the Australian Yellow and White Pages from 2009 to 2013. Furthermore, the Respondent submits the Disputed Domain Name was registered in July 2009, two years before registration of the TYRE DEPOT Marks.
The Complainant raised concerns about the authenticity of these documents in its Further Submissions. Although such a claim should not be taken lightly, absent any ability for the Panel to test the evidence of the Respondent, the Panel is bound to take it at face value (see EnergyAustralia Pty Ltd v Free Energy Australia Pty Ltd, WIPO Case No. DAU2013-0019).
As noted above, paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent has no legitimate interests. Having demonstrated a prima facie case, the onus shifts to the Respondent to demonstrate rights or legitimate interests. The concept of the legitimacy of the Respondent's interest is further carried through in the Policy, in that paragraph 4(a)(ii) specifies a bona fide offering of goods or services. Both "legitimate" and "bona fide" incorporate into this aspect of the Policy a notion of good faith. In World Wrestling Federation Entertainment, Inc. v. Rift,WIPO Case No. D2000-1499, the panel stated "not all use prior to notice of the dispute can qualify as bona fide use". Further, the panel in Madonna Ciccone p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847, noted specifically that intentionally infringing use should not be viewed as bona fide use:
"We . . . conclude that use which intentionally trades on the fame of another cannot constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
In this case, the Panel is unable to conclude on the face of the evidence that, as alleged by the Complainant, some of the documents submitted by the Respondent are not authentic. However, the Panel is able to take into account the refusal of the Respondent to provide originals for inspection. The Panel is further able to take into account the significant reputation enjoyed by the Complainant in the name "Tyre Depot" (sufficient, by 2011, for the Australian authorities to register what is otherwise a non-distinctive expression on the grounds of acquired distinctiveness), as well as the Complainant's invoices of December 2009 which show that, at least by then, the Respondent was aware of the Complainant. Further, the Panel is able to take into account the "shell" nature of the website at the Disputed Domain Name, and the very small number of tyres shown on the Respondent's invoices to have been sold – insufficient, in the Panel's view, to meet the Respondent's burden of proving a bona fide offering of goods for what it claims was a wholesale business. The Respondent asserts that there is no evidence to show that it is not conducting a real business. This is not sufficient. The onus having shifted, it must prove that it is conducting a real business, and it has, in the Panel's view, failed to do so.
The Panel therefore finds that the Respondent has not provided sufficient evidence to show that through a name connected to the Disputed Domain Name it was carrying out a bona fide offering of goods and services, before any notice to it of the dispute. The Respondent has therefore not demonstrated its rights to or legitimate interests in the Disputed Domain Name. C. Registered or Subsequently Used in Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to another person for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.
The Complainant states in its Further Submissions that on May 22, 2014, after the Complaint had been filed, the Complainant received telephone calls from the Respondent offering to transfer the Disputed Domain Name to the Complainant in exchange for payment of AUD 5,000. As supported by previous decisions under the UDRP and auDRP (see The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd,WIPO Case No. D2009-0998 and Sungen International Limited v. D C F X Solar Systems Pty Ltd,WIPO Case No. DAU2011-0035) an offer to sell the Disputed Domain Name in this way is evidence of bad faith on the part of the Respondent and further undercuts his assertions as to operating a legitimate business through the Disputed Domain Name. The Panel finds that the offer to sell the Disputed Domain Name therefore clearly constitutes bad faith for the purposes of Paragraph 4(b)(i). Further, the Panel finds that, on the facts before it, the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting its TYRE DEPOT mark in the corresponding . domain name. 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 be transferred to the Complainant.
David Stone
Sole Panelist
Date: July 15, 2014
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