WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sheppard Industries Limited v. Tiagra Investments, Christopher Murphy / Whois Agent / Whois Privacy Protection Service, Inc.
Case No. D2014-1248
1. The Parties
The Complainant is Sheppard Industries Limited, Mount Wellington, Auckland, New Zealand, represented by AJ Park IP Pty Ltd, New Zealand.
The Respondents are Tiagra Investments, Christopher Murphy, Banksia, North South Wales, Australia / Whois Agent / Whois Privacy Protection Service, Inc., C/O avanti.bike, Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <avanti.bike> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2014. On July 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2014, 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 July 24, 2014 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 on July 29, 2014.
The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 20, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 29, 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.
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whois Agent / Whois Privacy Protection Service, Inc.) is a privacy or proxy registration service while the other Respondents (Tiagra Investments, Christopher Murphy) are the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly, this decision is in the name of, and directed at all Respondents. However, it seems clear that the substantive Respondents are Tiagra Investments and Christopher Murphy and accordingly, where this decision refers below to "the Respondents" this is a reference to Tiagra Investments and Christopher Murphy.
4. Factual Background
The relevant facts are straightforward and can be summarized very briefly as follows.
The Complainant is a New Zealand corporation. It is a manufacturer of bicycles and since 1985 it, or its predecessors, have manufactured and sold bicycles under and by reference to the name AVANTI. The Complainant's AVANTI branded bicycles and bicycle accessories are marketed and sold in a number of countries throughout the world including New Zealand, Australia, China, Singapore, Japan, Thailand, Malaysia and the United Kingdom of Great Britain and Northern Island.
The Complainant owns a number of trademark registrations for the AVANTI trademark, either by itself or in conjunction with other elements, throughout the world. The registrations generally relate to bicycles and bicycle accessories but some registrations are for broader goods and services. By way of example the Complainant owns New Zealand registered trade mark number 161337 for the word AVANTI registered on the October 1, 1985 and European Community trade mark number 8437998 for the word AVANTI registered on July 25, 2010.
The Respondents registered the Domain Name on March 2, 2014, shortly after the generic Top Level Domain ("gTLD") ".bike" domain space opened for public registration on February 5, 2014. Since March 3, 2014, the Respondents have used the Domain Name in connection with a holding page which provides "click through" links to web sites advertising or promoting other parties products including those of competitors of the Complainant.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
The Domain Name is identical to its trade mark AVANTI in which it clearly has rights.
The Respondents have no rights or legitimate interests in the term "Avanti". There is no other meaning associated with that term other than in relation to the Complainant and the registration of the Domain Name in the ".bike" gTLD confirms that the Respondents were simply seeking to appropriate the Complainant's brand name and reputation. In relation to bicycles, the AVANTI trademark enjoys widespread reputation and recognition. A well-known mark, such as AVANTI, is not one that traders could legitimately adopt, especially in the ".bike" gTLD, for purposes other than creating an impression of association with the Complainant. No evidence exists to suggest that the Respondents, as an individual, business, or other organization, have been commonly known by the domain name, or are making a legitimate noncommercial or fair use of the domain name. The Respondents have no connection to or affiliation with the Complainant and have not received any franchise, license or consent agreement, express or implied, from the Complainant to use the AVANTI trademarks in a domain name or in any other manner.
The Complainant further submits that it is not necessary in this case to have regard to the use of the gTLD ".bike" in assessing identity or similarity.
The Top Level suffix ".bike" is descriptive for bicycles. Internet users will expect that a website that has the gTLD ".bike" will relate to bicycles. The Complainant has rights in the trademark AVANTI. Those trademark rights relate to bicycles and related goods and services. Internet users seeing the combination of "Avanti" and ".bike' in the Domain Name will expect any website hosted at that Domain Name to relate, in some legitimate way, to the Complainant's AVANTI branded bicycles.
The Respondents' use of the Domain Name is for commercial gain and does not amount to fair use. Since at least March 3, 2014, the Respondents have run a pay-per-click website either at the Domain Name or at another domain name which the Domain Name redirected to.
The use in the Domain Name of the Complainant's distinctive AVANTI trademarks in conjunction with the descriptive top level suffix ".bike" would result in Internet users expecting to find the Complainant's AVANTI branded bikes on the website hosted at the Domain Name. The use of the Domain Name by the Respondents therefore misleadingly diverts Internet users to their website with the intention of commercial gain. The Domain Name has clearly been registered and is being used in bad faith,
The Respondents have not replied to the Complainant's contentions.
6. Discussion and Findings
No communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Over view 2.0") namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents' failure to file any Response.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark AVANTI. The Complainant has carried on business internationally under the name AVANTI for many years and its bicycles have clearly been marketed under that name on an international basis. Further, the Complainant has a wide range of registered trade mark rights in the word "Avanti".
The Domain Name is identical to the AVANTI trade mark. The Panel agrees with the Complainant that it is not necessary in this case to have regard to the use of the gTLD ".bike" in assessing identity or confusing similarity (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206<canyon.bike> for a similar example).
Accordingly the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
AVANTI is the Complainant's brand and is not a word which has any meaning in the English language so far as the Panel is aware. It may have meaning in other languages but the evidence establishes that the Complainant is the only entity which uses that term in relation to bicycles.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondents of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the domain name, even if the Respondent have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Name or to use the AVANTI trade mark. The Complainant has prior rights in the AVANTI trade mark which precede the Respondents' registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests the Domain Name. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the AVANTI trade mark, and the evidence as to the use the Complainant makes of the AVANTI trade mark in relation to bicycles, and the identical nature of the Domain Name to the AVANTI trade mark, the registration of the Domain Name in the ".bike gTLD, and the lack of any explanation from the Respondents as to why they registered the Domain Name lead the Panel to conclude that the Respondents selected the Domain Name because of its association with the Complainant.
The website operated by the Respondents at the Domain Name comprises a series of "click through" links to other third party websites. The Panel infers that some consumers, once at the Respondents' website will follow the provided links and "click through" to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably earn "click through" linking revenue as a result. The Panel suspects the Respondent's' website is probably automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the complainant, such use amounts to bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <avanti.bike>, be transferred to the Complainant.
Nick J. Gardner
Date: September 5, 2014