WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nokian Tyres plc v. Yansheng Zhang, gname.com Pte. Ltd.
Case No. D2020-3032
1. The Parties
The Complainant is Nokian Tyres plc, Finland, represented by Roschier Brands, Attorneys Ltd., Finland.
The Respondent is Yansheng Zhang, gname.com Pte. Ltd., Singapore.
2. The Domain Name and Registrar
The disputed domain name <tyresnokian.com> (“Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2020, 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 November 23, 2020 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 amendment to the Complaint on November 27, 2020.
The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021.
The Center appointed Linda Chang as the sole panelist in this matter on January 25, 2021. 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, founded in 1988, is a Finnish tire manufacturer. The Complainant owns a number of trademark registrations of NOKIAN TYRES in numerous jurisdictions worldwide, including International Trademark No. 1001768, which was registered on December 11, 2008 and extended to Singapore, among other territories.
The Domain Name was registered on September 8, 2020 and is redirecting to a website with contents of online gaming.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trademark NOKIAN TYRES as the Domain Name contains the trademark NOKIAN TYRES in reversed order.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, including not registering it as a trademark, service mark, or company name at the time of applying for registration of the Domain Name.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The evidence submitted by the Complainant clearly demonstrates that the Complainant has rights over the trademark NOKIAN TYRES in numerous jurisdictions, including in Singapore where the Respondent resides.
The Domain Name consists of “tyresnokian” with the addition of the generic Top‑Level Domain (“gTLD”) “.com”. It is well established that the gTLD “.com” can be ignored when assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy. The dominant part of the Domain Name “tyresnokian” shares two identical words “tyres” and “nokian” with the trademark NOKIAN TYRES and only differs in the order of the words. The Panel determines that the trademark NOKIAN TYRES remains recognizable in the Domain Name despite the order of words and incorporating the trademark NOKIAN TYRES in reversed order in the Domain Name does not prevent a finding of confusing similarity.
The Panel therefore finds that the Domain Name is confusingly similar with the Complainant’s trademark NOKIAN TYRES.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent did not register “tyres nokian” as a trademark, service mark, or company name at the time of applying for registering the Domain Name, and thus did not have any rights or legitimate interests to the Domain Name. Furthermore, the Panel notes the use of the Domain Name, comprising the Complainant’s trademark in reverse order, to redirect to a gambling website does not constitute a bona fide or noncommercial fair use in the circumstances of this case.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent. The Respondent however chose not to respond and did not provide any evidence to prove its rights or legitimate interests in the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant has trademark rights over NOKIAN TYRES in numerous jurisdictions worldwide and has developed goodwill in the mark. Given the distinctiveness of the trademark NOKIAN TYRES and the fame gained by the Complainant, the Panel finds it implausible that the Respondent chose the Domain Name without knowing the trademark NOKIAN TYRES. The Respondent’s obvious awareness of the trademark NOKIAN TYRES when registering the Domain Name constituted opportunistic bad faith registration.
The Respondent is using the Domain Name to redirect to a website showing contents of online gaming. The Panel agrees that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant’s trademark NOKIAN TYRES as to the source, sponsorship, affiliation, or endorsement of its own website or of a product or service on the website. Therefore Panel determines that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith.
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, <tyresnokian.com>, be transferred to the Complainant.
Date: February 8, 2021