WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tarmac Trading Limited v. Tarmac Group, Tranetech Software Solutions
Case No. D2018-0909
1. The Parties
The Complainant is Tarmac Trading Limited of Solihull, Birmingham, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Freeths LLP, UK.
The Respondent is Tarmac Group, Tranetech Software Solutions of Abu Dhabi, United Arab Emirates, internally represented.
2. The Domain Name and Registrar
The disputed domain name <tarmacgroup.net> 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 April 24, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2018, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. The Response was filed with the Center on May 19, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on May 29, 2018. 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, incorporated in the UK in 1948, is a well-known supplier of building materials and construction services. The Complainant is a successor to the original Tar Macadam Syndicate Limited, founded in 1903. The Complainant's origins trace back to a road surface material patented by Edgar Purnell Hooley in 1902, originally named "Tarmacadam", and later shortened to "Tarmac".1 Today the Complainant provides building services and construction solutions under the TARMAC mark in numerous countries and regions, including Belgium, China, Czech Republic, France, Germany, Hong Kong, China, India, Middle East, Poland and Spain. The Complainant is the owner of multiple trademark registrations for the TARMAC mark, issued on various dates between 1986 and 2015 in the UK and the European Union.
The Respondent registered the disputed domain name on April 4, 2018, according to the concerned Registrar's WhoIs records. The disputed domain name resolves to a parking page with pay-per-click links related to roofing and construction work.
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain name <tarmacgroup.net> is confusingly similar to the Complainant's TARMAC mark, which the Complainant asserts is a well-known mark. The Complainant relates that it was founded in May 1948, and that it incorporated TARMAC mark as its registered company name in July 1987. The Complainant explains that a number of subsidiary companies, collectively referred to as the Tarmac Group, are licensed to use the TARMAC mark, and that one such company, Tarmac Holdings Limited, is the registrant of the domain name <tarmacgroup.com>, which redirects to the Complainant's website at "www.tarmac.com". The Complainant observes that the disputed domain name combines the Complainant's TARMAC mark and the word "group", and as such is likely to deceive the public into believing that the disputed domain name will be used to host a website relating to goods or services provided by the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant observes that the Complainant's rights in the TARMAC mark predate the Respondent's registration of the disputed domain name, and avers that the Respondent has not been licensed or otherwise authorized by the Complainant to use the TARMAC mark. Further, according to the Complainant, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that Internet users inevitably will be deceived into believing that the disputed domain name is associated with the Complainant. The Complainant further contends that the Respondent either has used or is planning to use the disputed domain name to intentionally attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website by the Complainant. The Complainant also asserts there is a distinct possibility that the Respondent registered the disputed domain name with the intention of selling the disputed domain name to the Complainant or a competitor of the Complainant at a price higher than the cost of registration.
B. Respondent
The Respondent represents that it is a software company licensed under the municipality of Abu Dhabi, United Arab Emirates. The Respondent submits that it purchased the disputed domain name for the development of a website for a client, Tarmac Contracting and General Maintenance, established in August 2009. According to the Respondent, this client also holds a commercial license under the municipality of Abu Dhabi issued in October 2017. The Respondent states that it has an existing website at "www.tarmacgroup.ae".
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <tarmacgroup.net> is confusingly similar to the Complainant's TARMAC mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the domain name.
In this case, the Complainant's TARMAC mark is clearly recognizable in the disputed domain name. The inclusion of the word "group" in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant' mark for purposes of paragraph 4(a)(i) of the Policy.3
Additionally, generic Top-Level Domains ("gTLD") generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's TARMAC mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant's mark, and which resolves to a parking page with advertising links relevant to the Complainant's business and trade.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In light of the attendant circumstances, the Panel considers that the Respondent in all probability was aware of the Complainant's TARMAC mark when registering the disputed domain name, and concludes that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant's trademark rights. Internet users diverted to the Respondent's website could easily expect that the disputed domain name <tarmacgroup.net> would be linked to the Complainant's website or another website that is affiliated with, or has the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
As previously noted, the disputed domain name resolves to an apparent pay-per-click site with advertising links related to building materials and construction services. While the Respondent claims its "client" is in the building and construction industry and maintains an existing website at "www.tarmacgroup.ae", the Panel found no such website. Further, neither the Respondent nor its "client" is identified as the WhoIs registrant of the domain name <tarmacgroup.ae>. The Panel thus considers that the Respondent's proffered explanation as to the registration and use of the disputed domain name is in all likelihood pretextual.
In any event, should the Respondent's commercial license be valid, this evidence on its own is insufficient to establish that the Respondent was "commonly known by the domain name" for purposes of the Policy. As observed in The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim, WIPO Case No. D2016-2270, quoting Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672, "proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name".
In view of the foregoing, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's TARMAC mark, and the Respondent can make no claim to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The record is convincing that the Respondent had the Complainant's TARMAC mark in mind when registering the disputed domain name. The Panel considers the Respondent's explanation for the registration of the disputed domain name to be pretextual, and finds that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise profit from the Complainant's trademark rights, whether by generation of pay-pre-click income or other monetization of the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <tarmacgroup.net> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 5, 2018
1 Hooley patented the process of heating tar, adding slag and breaking stones within the mixture to form a smooth road surface. In 1903 Hooley formed Tar Macadam Syndicate Ltd and registered TARMAC as a trademark. See "http://www.bbc.co.uk/nottingham/content/articles/2009/07/03/edgar_hooley_tarmac_feature.shtml".
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 See WIPO Overview 3.0, section 1.11.1 and cases cited therein.