WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyo Tire & Rubber Co. Ltd. v. PrivacyProtect.org / wilson barros
Case No. D2012-1764
1. The Parties
The Complainant is Toyo Tire & Rubber Co. Ltd. of Osaka, Japan, represented by Calcagno Law PLLC, United States of America.
The Respondent is PrivacyProtect.org of Queensland, Australia / wilson barros of Pretoria, South Africa.
2. The Domain Name and Registrar
The disputed domain name <nittostore.com> is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2012. On August 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 5, 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 amended Complaint.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2012.
The Center appointed James Bridgeman as the sole panelist in this matter on October 10, 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.
4. Factual Background
The Complainant is a manufacturer and merchant of vehicle tires and tubes, and is the registered owner of the following United States trademark registrations:
U.S. Registered Trademark NITTO, registration No. 955,563 registered on August 27, 1968 in international class 12 for “vehicle tires and tubes”;
U.S. Registered Trademark NITTO RADIAL, registration No. 1,780,832 registered on July 6, 1993 in international class 12 for “tires, inner tubes, and wheels for land vehicles in class 12”;
U.S. Registered Trademark NITTO NT470, registration No. 1,960,861 registered on March 5, 1996 in international class 12 for “tires, inner tubes and wheels for vehicle in class 12”;
U.S. Registered Trademark NITTO NT555R EXTREME DRAG, registration No. 2,296,642 registered on November 30, 1999 in international class 12 for tires, inner tubes and wheels for vehicle in class 12”;
U.S. Registered Trademark NITTO MUD GRAPPLER registered on August 8, 2006 in international class 12 for Tires and inner tubes for vehicles.
The Complainant is the owner of the domain names <nittotire.com>, <nittoinvo.com>, <nittot850.com> and <invotire.com> which resolve to active websites established by the Complainant to promote its vehicle tire and tube business.
The disputed domain name was registered on July 16, 2012.
In the absence of any Response or communication from the Respondent, there is not information on the record relating to the Respondent except for that contained in the WhoIs database and the Complaint. According to the WhoIs search report dated August 29, 2012 the registrant of the disputed domain name was PrivacyProtect.org. According to the more recent search report dated September 4, 2012 as well as the information confirmed by the Registrar the registrant is “wilson barros”.
5. Parties’ Contentions
The Complainant submits that it is a leading manufacturer and seller of tires with world-wide sales under the marks NITTO and NITTO TIRES.
The Complainant submits that it has made exclusive and continuous use of the name NITTO TIRES since as early as 1949. Since then it has established a significant goodwill and reputation in the use of the NOTTO and NITTO TIRES marks through its wholly owned subsidiaries Nitto Tire U.S.A. Inc. and Nitto Japan Co. Ltd., having more than 5730 authorized dealers worldwide. The Complainant currently sells over 1.3 million tires under the NITTO and NITTO TIRES marks and corporate name in the United States, Canada and Japan. For fiscal years 1999-2010, the Complainant reported sales from Nitto Tire Companies’ continuing operations in excess of one billion.
The Complainant submits that because it enjoys significant recognition as a manufacturer and seller of tires, the Complainant receives countless inquiries concerning its tires. To facilitate consumers finding information about its products and its dealers on the Internet the Complainant has established a website to which the above-listed domain names resolve.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's NITTO and NITTO TIRES marks. The Complainant submits that the disputed domain name <nittostore.com> has been formed by co-opting the Complainant's famous NITTO mark in its entirety and adding the generic term “store” together with the generic top level domain name “.com” extension. The Complainant argues that consequently the disputed domain name immediately conveys the false and misleading impression that the disputed domain name identifies a web site that is sponsored by the Complainant. Furthermore the Complainant argues that the disputed domain name so nearly resembles the Complainant's well-known mark and name and the domain name used by the Complainant as the address of website established by the Complainant at “www.nittotire.com” that such resemblance could only be intentional.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues there is no evidence of record which suggests that the Respondent is commonly known by the disputed domain name <nittostore.com>, or any name reflected thereby. According to the WhoIs data, the Respondent is identified as “PrivacyProtect.org.”
The Complainant argues that the Respondent has made no use of the disputed domain name in connection with any bona fide offering of goods or service or any other legitimate commercial or noncommercial use of the domain name.
The Complainant alleges that the Respondent appears to be using the disputed domain name <nittostore.com> to defraud consumers. The Complainant states that in response to the takedown notice sent by the Complainant pursuant to the Digital Millennium Copyright Act, the webhosting company has removed the operational ability of the Respondent’s website. However, before the take down occurred, the disputed domain name resolved to a website that misappropriated the Complainant’s logos, text and photographs from the Complainant’s website. In support of this allegation the Respondent has adduced copies of relevant pages from both sites in annexes to the Complaint. The Complainant submits that because of the similarity of the Complainant’s trademark and the disputed domain name and the unauthorized use of the Complainant’s logos, text and photos and the use of the name “NittoStore” throughout the website to which the disputed domain name resolved, consumers were likely to believe mistakenly that the Respondent is authorized by the Complainant. The Complainant however asserts that the Respondent has not been authorized by the Complainant to register or use the disputed domain name and there is no connection between the Complainant and the Respondent. The Respondent is not an authorized agent, distributor, or seller of Complainant or Complainant’s products.
Further, the Complainant submits that the Respondent appears to be the same true party in interest against whom Complainant filed a UDRP complaint on August 16, 2012, and amended on August 22, 2012, in relation to the unauthorized registration and illegitimate use of the domain name <nittotireseurope.com>, thus establishing a pattern of bad faith registration and use. The Complainant refers to the decision of the panel in Toyo Tire & Rubber Co. Ltd. v. PrivacyProtect.org, Domain Admin / Wilson Barros, WIPO Case No. D2012-1646 <nittotireseurope.com> and requests this Panel to note that in the present Complaint, the name of the Registrant, Administrative, Billing and Contact information appear to be identical to that disclosed in the original <nittotireseurope.com> complaint, and many of the same misappropriated logos, text and photos from the Complainant’s website that appeared on the “www.nittotireseurope.com” site also appear on the website to which the disputed domain name resolved.
The Complainant further argues that the Respondent also appears to host a Twitter account at “www.twitter.com@nittostore”, which invites consumers to purchase tires online at the “www.nittostore.com” address and/or to become a dealer. The Complainant has furnished a print-out of the Twitter.com@nittostore site as an annex to the Complaint. The Complainant asserts that it does not authorize the sale of the majority of its tires for sale in Europe and cannot guarantee that any tires that the Respondent may sell comply with European laws regarding such products.
Further the Complainant states that it has not authorized the Respondent to establish an authorized Nitto Tire dealer network and consequently the Respondent’s use of the disputed domain names to defraud consumers does not constitute a bona fide offering of goods and services or a legitimate noncommercial fair use under Policy. See e.g., Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2002-0903 (November 2001), (finding that even an authorized reseller must use the site to sell only the trademarked goods, else it is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii)) of the Policy.
The Complainant further submits that the Respondent is also using the disputed domain name in a manner that does not accurately disclose the Respondents’ lack of relationship with Complainant. See, Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (November 2001), (finding that even an authorized reseller must accurately disclose its relationship with the trademark owner, else it is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii)) of the Policy.
The Complainant submits that the disputed domain name should be considered as having been registered and been used in bad faith for the following reasons:
With significant use internationally for approximately sixty (60) years, the Complainant's NITTO and NITTO TIRES marks and names have became well known and famous in the United States and abroad as symbols of the source and quality of Complainant's tires long prior to the date on which the disputed domain name was registered: July 16, 2012. Indeed, the Complainant reported sales from Nitto Tire Companies’ continuing operations in the amount of thirty three million dollars (USD 33,000,000) for 1999 which was thirteen years prior to the year during which the disputed domain name was registered.
The Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
The Complainant argues that the Respondent is most likely profiting from the receipt of payments from consumers defrauded into believing that the website to which the disputed domain name resolves is maintained by an authorized distributor of the Complainant. Such behavior constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel accordingly may conclude that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished sufficient evidence for this Panel to make a finding that it has rights in the NITTO trademark through its above-listed trademark registrations and significant use of the mark in relation to its global business as a manufacturer and merchant of tires and tubes over many years.
This Panel finds that the disputed domain name is confusingly similar to the NITTO mark. The disputed domain name is composed of three elements viz. the Complainant’s NITTO mark, the generic word “store” and the generic top level domain “.com”. The word “nitto” is the only distinctive element of the disputed domain name. The addition the word “store” does not add any distinguishing character and in fact since the additional element “store” imputes a retail element, this Panel finds that that on the balance of probabilities it is likely to add to the likelihood of confusion by giving the impression that the Complainant’s goods may be available for sale at the website or other location to which it resolves.
This Panel finds therefore that the disputed domain name <nittostore.com> is confusingly similar to the trademark NITTO in which the Complainant has rights through its U.S. trademark registration and at common law through long term extensive use in trade in association with its business as manufacturers and merchants of tires and tubes.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.
While it has been established that there are circumstances in which a domain name that is identical or confusingly similar to a complainant’s mark may be legitimately used by a third party to sell a complainant’s goods as identified in the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, <okidataparts.com> which has been followed by many panelists.
The consensus principles among panelists is described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") as follows:
“2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark? …
Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
The circumstances described above do not apply in this case. On the evidence, this Panel finds that the Respondent has endeavoured to create the impression that it is the Complainant or has some direct connection with the Complainant.
In these circumstances the burden of production shifts from the Complainant to the Respondent to demonstrate such rights or legitimate interest. The Respondent has failed to take that opportunity and has therefore failed to rebut the Complainant’s prima facie case.
The Complainant is therefore entitled to succeed in the second element of the test in paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
Having considered the evidence this Panel finds that on balance of probabilities the Respondent has intentionally selected and registered the disputed domain name because it is confusingly similar to the Complainant’s well known NITTO mark. The webhosting company has removed the operational ability of the site to which the disputed domain name resolved, however prior to that, the disputed domain name used to resolve to a website incorporating content taken from the Complainant’s site in order to give the impression that the Respondent’s website has some connection with the Complainant. The website to which the disputed domain name resolved did not in any way disclose the lack of relationship between the Respondent and the Complainant and in fact to the contrary gave a distinct impression that the website was either maintained by or with the consent of the Complainant.
The Respondent has also taken a further step by promoting the website to which the disputed domain name resolves on Twitter and has thereby created the impression that he has the authority to appoint agents for the Complainant.
On the balance of probabilities therefore, this Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's NITTO mark as to the source, sponsorship, affiliation, or endorsement of his web site and the products offered on the website.
This Panel finds therefore that he disputed domain name was registered and is being used in bad faith. The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in the application.
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 <nittostore.com> be transferred to the Complainant.
Dated: October 24, 2012