WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Etyres Limited v. Orchard Digital Ltd

Case No. D2014-0115

1. The Parties

The Complainant is Etyres Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Orchard Digital Ltd of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <etyres.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 27, 2014 the Respondent sent an informal email communication to the Center indicating that the Respondent had become aware of the Complaint and enquiring about next steps. On January 28, 2014, the Center replied to the Respondent stating that the Respondent would receive formal notification shortly and indicating the procedural steps following such notification.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2014. On February 26, 2014, the Respondent sent an informal email communication to the Center requesting a list identifying materials sent to the Panel, which was provided by the Center, by email to the Respondent copying the Complainant, on the same date.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on February 26, 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.

4. Factual Background

The Complainant is a limited company incorporated under the laws of England and Wales, United Kingdom, which was formerly named Fleet Mobile Tyres Limited. The Complainant provides tyre repair, fitting, maintenance, retreading and vulcanization services. The Complainant operates a website at “www.etyres.co.uk” through which it provides a national service in the United Kingdom for mobile vehicle tyre and battery fitting. The Complainant is the owner of two trade marks in respect of the word mark ETYRES covering goods and services in international classes 12 and 37, namely European Community Trade Mark Registration no. 4988648, filed on March 15, 2006 and registered on February 12, 2007; and United Kingdom Trade Mark Registration no. 2212847, filed on October 29, 1999 and registered on April 6, 2001. The owner of the said trade marks is still listed as Fleet Mobile Tyres Limited and the Complainant produces an extract from the relative information at United Kingdom Companies House demonstrating that this is its former corporate name and thus that it is one and the same entity.

The Respondent is a limited company with Registration no. 08826396 incorporated under the laws of England and Wales, United Kingdom on December 27, 2013. The disputed domain name was created on June 26, 1999 and was most recently updated on January 24, 2014. Prior to transfer to the Respondent, the disputed domain name was registered in the name of Ironbit Limited, a limited company with Registration no. 07261352 incorporated under the laws of England and Wales, United Kingdom. The Complainant states that Ironbit Limited acquired the disputed domain name on September 28, 2013. Both the Respondent and Ironbit Limited share the same director, Mr. David Orchard.

On October 1, 2013, Mr. Orchard contacted the Complainant’s marketing manager indicating that his company owned the disputed domain name and advising that he was either looking to develop this or sell the disputed domain name on. He added that, as an alternative to sale of the disputed domain name, he was considering developing a tyre price comparison website and asked the Complainant “as a major player in the industry” for its thoughts and input. On October 8, 2013, the Complainant’s marketing manager replied that it would be interested in owning the disputed domain name but that he thought the valuations would be too far apart and advising the Respondent that the Complainant owned the trade name [sic] “etyres” and the legal team would pursue any company attempting to utilize that name in any way. The email closed with a request for the Respondent’s valuation of the disputed domain name. On the same date, Mr. Orchard replied that he paid GBP 6,500 for the disputed domain name and was therefore looking to receive GBP 8,000 for it.

The disputed domain name has primarily been used to display holding pages on which it is offered for sale. At various times including October 21, 2013, December 6, 2013, January 10, 2014 and January 22, 2014 the website associated with the disputed domain name was noted to be forwarding to “www.national.co.uk”, which is operated by one of the Complainant’s competitors. According to screenshots taken by the Complainant on January 22, 2014, the disputed domain name has also been used to point to a website operated by the “Sedo” parking service on which the disputed domain name was offered for sale and also displayed hyperlinks in respect of car tyres and fitting services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to trade marks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.

The Complainant contends that no use is presently being made of the disputed domain name, as it resolves to a “For Sale” page, and that there has also been no historic use of the disputed domain name. The Complainant asserts that there has been no attempt by the Respondent to offer goods or services under the disputed domain name. The Complainant states that the Respondent is not known by the name “etyres” and adds that the Respondent was incorporated on December 27, 2013. The Complainant submits that there has been no legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the transfer of the disputed domain name from Ironbit Limited to the Respondent was an attempt by Mr. Orchard to prevent action being taken against it and to frustrate the Complainant’s actions. The Complainant describes the intermittent redirects placed on the disputed domain name and explains that one of the Complainant’s franchisees was confused by these. The Complainant submits that the redirects were intended to place pressure on the Complainant in an attempt by the Respondent to sell the disputed domain name. The Complainant notes that when the Respondent was informed of the Complainant’s intention to take action, the redirect was removed in an attempt at concealment of the Respondent’s actions.

The Complainant submits that the disputed domain name has been acquired and is being used in bad faith on the basis of paragraph 4(b)(i) of the Policy. The Complainant asserts that the correspondence shows that Ironbit Limited acquired the disputed domain name on September 28, 2013 in order to make an offer to sell it to the Complainant on October 1, 2013, some three days later. The Complainant states that Mr. Orchard’s offer to sell the disputed domain name for GBP 8,000 is an attempt to make a significant profit in excess of the Respondent’s out of pocket costs.

The Complainant contends that the redirects demonstrate that the Respondent was also considering offering the disputed domain name for sale to the Complainant’s competitor. The Complainant submits that the implication from the correspondence is that the Respondent was threatening to create a website which would direct business away from the Complainant and advertise the Complainant’s competitors, unless the Complainant was prepared to purchase the disputed domain name. The Complainant adds that the correspondence shows that Mr. Orchard was aware of the Complainant’s rights in the mark ETYRES and that he must therefore have appreciated the bad faith implications of the disputed domain name.

The Complainant submits that the disputed domain name is passively held and has been registered and used in bad faith. The Complainant also points to the redirects of traffic using the disputed domain name to the Complainant’s competitor as indicative of bad faith.

With regard to the transfer of the disputed domain name between Ironbit Limited and the Respondent, the Complainant notes that both companies are owned by Mr. Orchard, who is sole director of both, and that the transfer of the disputed domain name can be seen to be an attempt to frustrate the Complainant by setting up a “clean” company. The Complainant notes that a redirect was nevertheless set up by the Respondent once the disputed domain name was under its control.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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 Panel is satisfied that the disputed domain name is identical to the Complainant’s trade marks, on the basis that the generic Top-Level Domain (gTLD) suffix, “.com” in the disputed domain name may be disregarded for the purposes of the comparison, as is customary in cases under the Policy. While the registration of the Complainant’s trade marks post-dates the creation of the disputed domain name, the Panel takes no account of this fact under the present head (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In these circumstances, the Panel finds that the disputed domain name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case by reference to its submissions (1) that there has been no attempt by the Respondent to offer goods or services under the disputed domain name; (2) that the Respondent is not known by the name “etyres”; and (3) that there has been no legitimate noncommercial or fair use of the disputed domain name. Accordingly the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in respect of the disputed domain name.

The Respondent has not filed any response by way of which it could have provided an explanation or details of any alleged rights or legitimate interests which it might have claimed in the disputed domain name. There is no evidence on the available record that the Respondent has been commonly known by the disputed domain name, nor that it is making any legitimate noncommercial or fair use thereof. While the correspondence between Mr. Orchard and the Complainant indicates that the Respondent was proposing to operate a tyre price comparison service, there is no evidence on the available record of the Respondent’s demonstrable preparations to use the disputed domain name for this or any other purpose. Furthermore, had such evidence been available, the Panel would not necessarily have accepted this as constituting a bona fide offering of goods and services, given the extent to which it would have conflicted with the Complainant’s marks.

There is evidence before the Panel that the disputed domain name has been used at different times since its acquisition by the Respondent to forward traffic to one of the Complainant’s competitors and to point to a parking page offering pay-per-click hyperlinks relative to the Complainant’s area of business. Such uses appear to the Panel to be designed to target the Complainant’s rights in its trade marks and could not be considered to confer any rights or legitimate interests upon the Respondent.

In these circumstances, the Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.

C. 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 trade mark 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 trade mark 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 web site or other online 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 web site or location”.

It is worth noting at the outset of the Panel’s consideration of this topic that while the disputed domain name was originally created in 1999 it has only recently been acquired by the Respondent. The Complainant has provided evidence that the Respondent was only incorporated on December 27, 2013 and accordingly that it must have received a transfer from the previous registrant, Ironbit Limited, at some point on or after that date. The Complainant states, and there is no contradictory evidence on this point, that Ironbit Limited itself acquired the disputed domain name relatively recently, namely on September 28, 2013. The Complainant points out that both Ironbit Limited and the Respondent are controlled by one and the same person, namely Mr. Orchard, such that the actings of both of these companies should be taken together in the assessment of registration and use in bad faith.

According to paragraph 3.7 of the WIPO Overview 2.0, the transfer of a domain name to a third party amounts to a new registration for the purposes of determining whether the domain name was registered in bad faith. However, paragraph 3.7 goes on to note that formal changes in registration data are not necessarily deemed to constitute a new registration where evidence clearly establishes an unbroken chain of underlying ownership by a single entity or within a genuine conglomerate, and it is clear that any change in WhoIs registrant data is not being made to conceal an underlying owner’s identity for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.

The Complainant in the present case argues first that the transfer from Ironbit Limited to the Respondent was just such an attempt to frustrate the assessment of liability and secondly that as both of these companies are controlled by the same underlying owner, they should be treated as one and the same for present purposes. The Respondent has not filed any response in this proceeding and therefore has not disputed these contentions. In these circumstances, the Panel is satisfied that for the purposes of assessing registration and use in bad faith the actings of each of Ironbit Limited, the Respondent and Mr. Orchard may be taken into consideration.

The Panel notes that Mr. Orchard contacted the Complainant to propose a sale of the disputed domain name within three days of Ironbit Limited’s acquisition thereof. The proposition ultimately made by the Respondent was for a sale at a price considerably in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. Furthermore, it appears from screenshots prepared by the Complainant that the disputed domain name has been offered for sale on the associated website. The Panel accepts the Complainant’s contention that Mr. Orchard’s indication that he might use the disputed domain name for a price comparison site for tyres was on the balance of probabilities a device designed to encourage the Complainant to purchase the disputed domain name at the asking price quoted by the Respondent. All of these matters are strongly supportive of the Complainant’s contention that the primary purpose behind the acquisition of the disputed domain name by Ironbit Limited was to sell it to the Complainant at a significant profit. Accordingly, the Panel considers that this is a factor indicative of registration and use in bad faith.

The Panel notes from the screenshots prepared by the Complainant that the website associated with the disputed domain name has displayed hyperlinks relative to the Complainant’s area of business and which seek to profit from trading on the Complainant’s marks. The Respondent has not shown any good faith attempt toward preventing inclusion of such advertising links on its website and, on the contrary, such inclusion appears to the Panel to be a deliberate act. This is a further factor indicative of registration and use in bad faith. The Panel adds for completeness that this use of the disputed domain name does not constitute “passive holding” as the Complainant contends but is rather an active use which is in present circumstances capable of forming a basis for finding bad faith.

Finally, the Panel notes that throughout the period of registration of the disputed domain name by both Ironbit Limited and the Respondent the disputed domain name has been used intermittently to redirect visitors to a website operated by one of the Complainant’s direct competitors. It is not clear whether the Respondent has put this redirection in place for commercial gain, for example, by virtue of membership of an affiliate scheme, or whether it was a further device designed to encourage a sale of the disputed domain name to the Complainant. In either event, the Panel considers that such redirection of traffic constitutes a typical cybersquatting act of the kind that the Policy is intended to prevent. Accordingly, this is also a factor indicative of registration and use in bad faith.

While the Respondent has issued informal emails to the Center it has chosen not to address the case put forward in the Complaint, leaving the Panel to assess the question of registration and use in bad faith on the basis of the Complaint and relative annexes. The Panel has identified three separate instances of factors of which any one could have led to a finding of registration and use in bad faith on its own. Furthermore, the Panel cannot conceive of any potential good faith use for the disputed domain name which might have been contemplated by the Respondent.

In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <etyres.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: March 12, 2014