WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tarmac Trading Limited v. Maureen Twist / Michael & Paul Wilson trading as Abbey Tarmac & Asphalt
Case No. D2021-3768
1. The Parties
The Complainant is Tarmac Trading Limited, United Kingdom (“UK”), represented by Freeths LLP, UK.
The Respondent is Maureen Twist, UK, and Michael & Paul Wilson trading as Abbey Tarmac & Asphalt, UK, both represented by Maureen Twist, UK.
2. The Domain Name and Registrar
The disputed domain name <abbeytarmac.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2021, 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 16, 2021 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 November 17, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2021. The Response was filed with the Center on December 9, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 16, 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 is a limited company registered under the laws of England and Wales in the UK with company number 00453791, with its registered office in Birmingham, UK. The Complainant is a supplier of building materials, road building and repairing materials, and associated construction and building services and uses the trademark TARMAC.
The Complainant is the registered proprietor of various UK and European Union trademark registrations for the word TARMAC, the earliest of which appears to be UK Registered Trademark no. 254287 for the word mark TARMAC, registered on May 6, 1903 in Class 19 (Tarred slag for use for making roads and pavements and for construction purposes and tar concrete). Said mark contains a disclaimer that the mark gives no right to the exclusive use of the word “tar”. Others of the Complainant’s TARMAC word marks do not contain this disclaimer, for example, UK Registered Trademark no. 904257101, registered on March 21, 2006 in Classes 19 (non-metallic building materials), 35 (consultancy), 36 (insurance and real estate services), 37 (construction services), 39 (transport services for the construction industry), and 42 (architectural design services for the construction industry). This latter mark was originally a European Union registered trademark, itself deriving seniority from an older, now defunct, UK registered trademark. It was converted into a national UK registered trademark as a result of the UK exiting the European Union at the end of December 2020, and is treated as having been registered on the same date as the European Union mark.
The disputed domain name was registered on April 3, 2020. The holder of the disputed domain name states that it is an independent web development and hosting company. It also states that its customer is Michael and Paul Wilson trading as Abbey Tarmac (the Panel presumes this entity to be a partnership between the two named individuals) based in Newtonabbey, Northern Ireland, UK. The website associated with the disputed domain name promotes a driveway surfacing business under the heading “Abbey Tarmac & Asphalt”, which claims “over 30 years of experience in the tarmacing industry”. The website states that its owners are “Specialists in Tarmacing and Asphalt” and that the business offers “Tarmac Driveways and Tarmacing Services in Belfast, Carrickfergus, Newtownabbey, Whitehead, Larne, Bangor and beyond within Northern Ireland”. A prominent information box on the site states “Tarmac and asphalt contain many significant differences. Often referred to as tarmac asphalt or bitumen tarmac, there are several factors to consider before choosing.” Three boxes are provided under an “Our Services” label, headed “Tarmac Driveway”, “Asphalt Driveway”, and “Driveway Sealing”. The first of these goes on to state “Tarmac, short for tarmacadam, is made when a layer of crushed stone or aggregate is coated and mixed with tar. This mixture is laid and then compacted with a vibrating roller to form a smooth surface”.
5. Parties’ Contentions
The Complainant contends as follows:
Identity of the Respondent
Notwithstanding the registrant details, which refer to Maureen Twist as holder, the disputed domain name is believed to be held under contract on behalf of Michael Wilson and Paul Wilson, trading as Abbey Tarmac, and the latter are the true Respondent.
Identical or confusingly similar
TARMAC is a name protected by the Complainant’s trademarks. The Complainant also benefits from rights in passing off based on the substantial reputation and goodwill which the Complainant has in the TARMAC name. The disputed domain name incorporates the Complainant’s TARMAC trademark. The additional word “abbey” refers to a geographical location, therefore it is descriptive and non-distinctive. The mere appearance of the Respondent’s name on the publicly accessible records relating to the disputed domain name amounts to a misrepresentation which is likely to deceive the public into believing that the disputed domain name is operated by the Complainant or a connected company. The incorporation of the TARMAC trademark enhances confusion as it suggests that the disputed domain name will host webpages related to goods or services specifically sold by the Complainant.
Internet users will be confused into believing that the disputed domain name is registered to or at least operated, authorized, or endorsed by the Complainant. An inference is drawn that any website hosted at the disputed domain name is operated by or with the Complainant’s consent. Prominent use of the TARMAC trademark is made on the website associated with the disputed domain name. Most individuals navigating to the disputed domain name will be expecting to reach a website operated by or associated with the Complainant. The overall construction of the disputed domain name only serves to enhance confusion between the disputed domain name and the Complainant.
Rights or legitimate interests
The Complainant’s trademark rights predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s TARMAC mark. The Respondent therefore has no rights or legitimate interests in the disputed domain name, nor any rights in the Complainant's marks, or association with the Complainant whatsoever.
Registered and used in bad faith
The disputed domain name makes use of the Complainant’s TARMAC registered trademark in direct contravention of the Complainant’s rights. In view of the presence of such mark in the disputed domain name, it is inevitable that Internet users will be confused into believing that the disputed domain name has some form of association with the Complainant. The registration of the disputed domain name therefore took unfair advantage of the Complainant’s rights. On this basis alone, the Complainant considers the registration of the disputed domain name to be in bad faith.
The disputed domain name has been used intentionally to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the TARMAC trademark, such likelihood arising as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Respondent contends as follows:
Maureen Twist runs “Marketing Tech & Design”, an independent web development and hosting company that received the contract from the Respondent, Michael and Paul Wilson trading as Abbey Tarmac and Asphalt, a local independent driveway and tarmacing service in Northern Ireland, trading since 2015.
The Complaint should be refused as the Respondent is not selling “Tarmac”. It is very clearly advertising its service for driveways and roads to both commercial and private clients which use tarmac. To lay copyright [sic] for an entire term that needs to be used for SEO purposes to be found is not reasonable.
In Northern Ireland, there is a location called Newtownabbey, which is colloquially shortened to “Abbey”. “Tarmac” is generally understood to mean someone who works with the substance.
Identical or confusingly similar / rights and legitimate interests
The Complainant’s branding is white and blue. The Respondent’s is orange and purple. Abbey Tarmac is not the same as TARMAC as one is denoting a location and taking into consideration the way the term “Tarmac” is used, while the other is simply the stated word.
Before the Respondent received any notice of the dispute, there is evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has been or is commonly known by the disputed domain name, even if it has acquired no trademark rights. The Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue.
Registered and used in bad faith
The Response did not specifically address the topic of registration and use in bad faith other than in its introductory remarks.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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. Preliminary Matter – Identity of the Respondent
The UDRP Rules define the respondent as “the holder of a domain name registration against which a complaint is initiated”. However, the Panel retains discretion to substitute or join another entity as a respondent by way of its general powers as set out in paragraph 10(a) of the Rules. In this case, the holder of the disputed domain name is Maureen Twist. Nevertheless, Ms. Twist has identified the fact that she prepared the website associated with the disputed domain name for, and presumably registered the disputed domain name on behalf of, Michael and Paul Wilson trading as Abbey Tarmac and Asphalt. The associated website appears to promote the latter’s business. It seems clear to the Panel that Ms. Twist is not the principal Respondent, albeit that she is the holder of the disputed domain name, as she is only incidentally concerned with the disputed domain name by virtue of her web design work. The beneficial holder of the disputed domain name appears to be Ms. Twist’s customer, Michael and Paul Wilson trading as Abbey Tarmac and Asphalt. Although Ms. Twist designs this entity as “sole traders”, the Panel notes that two personal names are mentioned, suggesting that the entity is most probably a partnership, given that two traders together in one business cannot be “sole traders”. In any event, the legal form of this particular entity is not material to the outcome of the administrative proceeding.
In all of the above circumstances, the Panel determines that the proper Respondent is Michael and Paul Wilson trading as Abbey Tarmac and Asphalt. Nevertheless, the Panel also retains Ms. Twist’s name as Respondent in order to ensure that the Registrar could give effect to a decision to transfer the disputed domain name, in the event that the Complaint succeeds. Ms. Twist has prepared the Response on her customers’ behalf and the Panel has therefore noted that she is the Respondent’s representative in this matter.
B. Identical or Confusingly Similar
The first element inquiry proceeds in two steps. First, the Complainant must demonstrate rights in a trademark, whether registered or unregistered. Secondly, the disputed domain name is compared to any such trademark, typically in a straightforward side-by-side manner intended to identify whether the latter is recognizable in the former, usually disregarding the generic Top-Level domain (in this case “.com”) as being required for technical reasons only.
In the present case, having consulted the public database of the UK Intellectual Property Office in respect of the registered trademarks noted in the factual background section above, the Panel is satisfied that the Complainant possesses UDRP-relevant trademark rights in the registered mark TARMAC. The Complainant merely provided a table of trademark numbers, leaving the Panel to check one or more of the registrations concerned on a publicly available database (on this topic, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). It is not necessary for the Panel to deal with the Complainant’s allegations of unregistered trademark rights.
The Panel notes that the preferable course for a complainant to take is to provide screenshots from the publicly available database or copies of trademark certificates corresponding to one or more of the relevant registered marks. The Complainant should not assume that all panels under the Policy will necessarily complete its work for it by consulting one or more of the relevant public databases should it merely offer a list of marks by way of evidence.
Comparing the Complainant’s TARMAC mark to the disputed domain name, the Panel notes that this is repeated in the disputed domain name in its entirety, prefixed by the word “abbey”. The presence of this prefix, whether it has a geographic connotation or not, would not prevent a finding of confusing similarity under the Policy (see section 1.8 of the WIPO Overview 3.0). The Complainant’s TARMAC trademark is entirely recognizable in the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the Complainant has carried its burden in terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
It is an essential requirement of the third element of the Policy that both registration in bad faith and use in bad faith must be proved by the Complainant on the balance of probabilities. In respect of registration in bad faith, the Complainant must show that the Respondent had the Complainant’s rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights. The Complainant makes relevant submissions in the Complaint, arguing in particular that the disputed domain name has been registered intentionally to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainant’s TARMAC trademark.
The Respondent’s case is somewhat brief but indicates that the Respondent’s use of the term “tarmac” refers not to the Complainant’s trademark as such but rather to what it describes as “someone who works with the substance”. Based on the website associated with the disputed domain name, the Panel presumes “the substance” referred to is tarmacadam or asphalt, commonly shortened to “tarmac”. Indeed, as may be seen from the extracts in the factual background section above, the website makes multiple descriptive uses of the word “tarmac”, including in both gerund and adjectival forms, “specialists in tarmacing” and “tarmacing services”. These do not appear to be intended to reference the Complainant’s mark as such but rather to refer to a road or driveway surfacing material.
It appears from the panel’s first footnote in Tarmac Trading Limited v. Tarmac Group, Tranetech Software Solutions, WIPO Case No. D2018-0909, that the origins of the Complainant’s corporate group are to be found in the invention and patented process of creating the original version of the eponymous road surfacing material, followed in 1903 by the registration of the Complainant’s first TARMAC trademark. Nevertheless, the Panel considers that times have changed and that the public, at least in the UK where both Parties and the Panel are based, typically refer to most driveway surfaces (a “substance” as the Respondent puts it) as “tarmac” without intending to imply any commercial connection with the Complainant’s group of companies or their registered trademark portfolio. It is in this context that the disputed domain name appears to have been registered and used, not as a source-identifier of the Complainant, its group of companies, or its products and services.
It must be acknowledged that a partnership in the construction business such as the Respondent’s would probably have been aware of the Complainant’s TARMAC mark when the disputed domain name was registered, at least in the sense that such mark is used as the name of the Complainant’s corporate group (dating back to 1903), which is a substantial construction conglomerate in the UK. Nevertheless, the existence of any such knowledge, on its own, would not necessarily mean in the circumstances of this case that the Respondent would seek to use such term for its common meaning versus having had any intent to gain an unfair commercial advantage from an apparent association with the Complainant’s TARMAC mark, or that it intended to create or benefit from any likelihood of confusion with the Complainant’s mark by way of the disputed domain name or the associated website. While the Complainant has asserted this, it has not proved it on the present record to the Panel’s satisfaction.
On the contrary, the Panel accepts the general thrust of the Respondent’s case that it merely intended to describe, in loose terms, the substance (“tarmac”, presumably short for “tarmacadam”) with which it works, or the surfacing job (which it refers to as “tarmacing”) that it performs. In the disputed domain name, it has suffixed this term to the geographic area, suitably abbreviated for its local customer base, where its business is situated. Accordingly, and in particular noting that the burden rests on the Complainant – which in the circumstance of this case is a reasonably high one given the claim by the Respondent of use of a common term, the Panel cannot see the registration and present use of the disputed domain name as indicative of any bad faith intent on the part of the Respondent regarding either the Complainant in general or its trademark in particular. For example, the circumstances of the present case may be suitably contrasted with Tarmac Trading Limited v. Tarmac Group, Tranetech Software Solutions, supra, in which the domain name concerned was <tarmacgroup.net> which appeared to the panel to positively indicate a reference to the Complainant’s corporate group and which was pointed to pay-per-click advertising related to roofing and construction work. There was no suggestion from the respondent in that case nor any indication from the evidence that it was making a descriptive use along the lines claimed by the Response in the present case.
In these circumstances, the Panel finds that the Complainant, on whom the burden of proof rests, has not proved on the balance of probabilities that the disputed domain name was registered and is being used in bad faith, and the Complaint therefore fails. While such finding serves to dispose of the present administrative proceeding, the Panel notes for completeness that this is a finding for the purposes of the Policy alone. The scope of the Policy is narrowly drawn, and focuses on cybersquatting. It does not focus on commonplace trademark infringement and unfair competition issues (noting in particular the tension between the 100-plus-year duration of the Complainant’s trading activity with the Respondent’s effective claim to genericness), and this Decision therefore does not seek to answer the question of whether the Respondent might or might not be infringing any of the Complainant’s registered trademarks by its present use of the disputed domain name or the associated website in connection with the Respondent’s particular subset of construction services. Different considerations apply to that question, and these would require to be raised in an alternative (court) forum. Bearing this in mind, the Panel notes that it entertains no notion of what may be done with this Decision after the Panel is functus officio, and does not address this Decision to the attention of any other forum which may ultimately be seized of the matter.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: December 30, 2021