The Complainant is Tyre24 GmbH of Kaiserslautern, Germany, represented by PricewaterhouseCoopers Legal AG Rechtsanwaltsgesellschaft, Germany.
The Respondent is W. Verburg of Hoorn, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through RegistratieDirect. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 31, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On November 1, 2012, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed two amended Complaints on November 7 and 9, 2012, respectively. The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2012. In accordance with the Regulations, article 7.1, the due date for Response was November 29, 2012. The Response was filed with the Center on November 19, 2012.
On November 23, 2012, SIDN commenced the mediation process. On December 20, 2012, SIDN extended the mediation process until January 22, 2013. On January 4, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.
On January 11, 2013, the Respondent submitted a supplemental filing.
The Center appointed Wolter Wefers Bettink as the panelist in this matter on January 23, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
On January 28, 2013, the Complainant submitted a supplemental filing.
As noted, both parties have at a late stage in the proceedings submitted supplemental filings containing additional documents and statements. Noting also that these were not submitted at the request of the Panel, the Panel will disregard the supplemental filings in accordance with article 11.2 of the Regulations. 4. Factual Background
The Complainant holds the Community Trademark TYRE24, filed on November 15, 2007 and registered under No. 6443642 for, inter alia, the online sale of tires for different kinds of vehicles (the “Trademark”). The Complainant also holds domain names with the “tyre24” element under various country code toplevel domains (.de, .fr, it, .es and .us).
The Respondent holds the domain name , registered on June 21, 2010 (the “Domain Name”). The Domain Name redirects to the Respondent’s website under . The Respondent operates a wholesale company offering different types of tires on the Dutch market. The Respondent’s company was registered at the Dutch Chamber of Commerce on January 4, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name and the Trademark are confusingly similar. Furthermore, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, since:
a) the Complainant has not given the Respondent permission to register the Domain Name; and
b) the Complainant does not have a business relationship with the Respondent.
In addition, the Domain Name has been registered and is being used in bad faith since, according to the Complainant, the Respondent “may know our platform in other European countries”, is trying to exploit the Trademark (which the Complainant alleges is well known) for his own business and has not reacted to two letters of summons, in which the Complainant demanded that the Respondent surrender the Domain Name. B. Respondent
The Respondent asserts that he chose the Domain Name because his customers can order tires 24 hours a day via his webshop. According to the Respondent the word “tyre” and the number “24” are generic indications, which implies they cannot be owned by anyone. Furthermore, the Respondent points out that similar domain names have been registered by other companies, such as , and . The Respondent states that “” has been registered as his trade name at the Dutch Chamber of Commerce. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trademark by submitting a copy of the certificate of registration and an extract of the Office for Harmonization in the Internal Market (OHIM) online trademark database.
As the top-level suffix “.nl” may be disregarded under the identity or confusing similarity test, the Panel finds that the Domain Name is clearly identical to the Trademark, which has not been contested by the Respondent. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent in relation to this element, the burden is on the respondent to provide appropriate allegations or evidence of its rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied article 2.1(b) of the Regulations.
The Respondent has not disputed that it has not received permission from the Complainant to register the Domain Name, nor that it does not have a business relationship with the Complainant. Rather, the Respondent relies on its statement that “tyre” and “24” are generic indications that anyone may use. Respondent does not state, but perhaps means to imply, that the combination “tyre24” is generic. However, that this combination has a sufficient degree of distinctiveness (and is not fully generic) is confirmed by the fact that OHIM has registered “tyre24” as a Community Trademark. After all, if this sign were generic, devoid of any distinctive character or merely descriptive OHIM should have refused to register the Trademark in accordance with article 7, paragraph 1, sub b., c. or d. of the Community Trademark Regulation.1 As the Respondent is using the Domain Name to redirect Internet users to his website under where he offers products and services competing with those of the Complainant, without having obtained the Complainant’s consent nor having a business relationship with the Complainant, the Domain Name is not being used in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial use of the Domain Name. The Panel further could not find any evidence in the record that the Respondent (as an individual, business or other organization) is commonly known by the Domain Name. The mere registration of “tyre24” as a trade name at the Dutch Chamber of Commerce (more than three years following the Complainant’s registration of the Trademark) is insufficient in this context.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The registration of the Trademark predates the registration of the Domain Name by more than two years. The Respondent has not refuted that he was aware of the Trademark when registering the Domain Name. Instead, he submits that he is entitled to use the Domain Name since it consists of a combination of the dictionary term “tyre” and the number “24”, which assertion the Panel has addressed in section 6.B above.
Taking also into account the circumstances referred to under section 6.B above, in particular the fact that the Domain Name redirects Internet users to the Respondent’s website under where he offers products and services competing with the previously trademarked products and services of the Complainant, the Panel concludes that the Respondent uses the Domain Name for commercial gain, by attracting Internet users to his website through the likelihood of confusion with the Complainant’s Trademark as to the source, affiliation, or endorsement of the Respondent’s website.
Under these circumstances, the Panel concludes that the requirement of registration or use in bad faith of the Domain Name has been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to the Complainant.
Wolter Wefers Bettink
Panelist
Date: February 1, 2013
1 COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
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