WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyo Tire & Rubber Co. Ltd. v. PrivacyProtect.org, Domain Admin / Wilson Barros

Case No. D2012-1646

1. The Parties

The Complainant is Toyo Tire & Rubber Co. Ltd. of Osaka, Japan, represented by Calcagno Law PLLC, United States of America.

The Respondent is PrivacyProtect.org, Domain Admin of Nobby Beach, Queensland, Australia / Wilson Barros of Pretoria, South Africa.

2. The Domain Name and Registrar

The disputed domain name <nittotireseurope.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2012, 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 August 17, 2012 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 August 22, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not file a formal Response. However, it sent to the Center an informal email communication on August 17, 2012, to which the Center replied on the same date.

The Center appointed Antony Gold as the sole panelist in this matter on September 26, 2012. 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, Toyo Tire & Rubber Co. Ltd., is a Corporation existing under the laws of Japan.

The Complainant asserts that it is the registered owner of the domain names <nittoinvo.com>, <nittont850.com>, <invotire.com> <nt850.com> and <nittotire.com> albeit it has not provided any evidence to support this assertion. The Complainant describes itself as a leading manufacturer and seller of tires, selling through its wholly-owned subsidiaries Nitto Tire U.S.A. Inc. and Nitto Japan Co. Ltd. The Complainant asserts that it has more than 5,730 authorised Nitto Tire dealers worldwide and states that “[f]or fiscal years 1999-2010, [the] Complainant reported sales from Nitto Tire Companies’ continuing operations in excess of one billion.”, although there is nothing to indicate which is the applicable currency and the Complainant has not provided financial accounts or other evidence to support its assertions.

The Complainant is the registered owner of the US Trade Mark NITTO, registered on August 27, 1968 (registration number 855,563), in International Class No. 12 in respect of, inter alia, tires. The Complainant has provided a copy of the relevant registry entry, together with the abstract of title which shows that the mark was assigned to it from Nitto Tire Co. Ltd. The Complainant is also the registered proprietor of 3 other US trade marks which contained the word “Nitto”, namely NITTO RADIAL ZR4, NITTO NT470 and NITTO NT555R EXTREME DRAG. The Complainant also says it is “...the owner of the trademark NITTO TIRES.” although no evidence in support of this assertion is provided.

The Complainant states that it has made continuous and exclusive use of the marks and names NITTO and NITTO TIRES and that both names have become internationally famous.

The disputed domain name was registered on March 7, 2012.

As described in the Procedural History section above, the Panel does not have any information about the Respondent, save that on August 17, 2012, the registrar confirmed by email to the Center that Mr. Wilson Barros is the registrant of the disputed domain name. Also on August 17, 2012, the Center copied Mr. Barros to its Notice of Change in Registrant Information email, who replied by email on the same day, stating “...I just was the webdesigner for the website...”. In the absence of any evidence to the contrary, the Panel finds that Mr. Barros is the proper Respondent to this Complaint.

No formal response to the Complaint has been filed.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

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

In support of its assertion that the disputed domain name is confusingly similar to the Complainant’s marks NITTO and NITTO TIRES, the Complainant contends that the disputed domain name has been formed by using the Complainant’s well-known NITTO trade mark in its entirety and adding the generic terms “tires” (the American spelling for “tyres”) and “europe”. The Complainant asserts that the disputed domain name is therefore identical or confusingly similar to the Complainant’s trade mark.

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name

In its original Complaint, the Complainant asserted that the Respondent was not commonly known by the disputed domain name and provided a WhoIs domain registration search, which identified the registrant of the disputed domain name as “PrivacyProtect.org”. The Complainant has repeated this assertion in its amended Complaint. The Complainant further asserts that there is no evidence to suggest that the Respondent is known by the disputed domain name <nittotireseurope.com> or anything similar. The Complainant states that the Respondent has not been authorised to register or use the disputed domain name and is not connected to the Complainant.

The Complainant also asserts that the Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services and has made no legitimate commercial or noncommercial use of the domain name. Further, the Complainant asserts that the Respondent’s website is being used to defraud consumers, as it features content which it alleges has been copied from the Complainant’s website. The Complainant has provided screenshots from its own website and from the Respondent’s website. It is clear from these screenshots that the “N”, “MOTIVO” and “NITTO” logos, and the text and photo relating to the “Mud Grappler” product, appear on both the Complainant’s website and the Respondent’s website. The general layout on both of the sites is also very similar. The Complainant asserts that it has received complaints from its customers that the Respondent has used the site to pretend to be an authorised agent of the Complainant.

(iii) the disputed domain name was registered and is being used in bad faith

The Complainant asserts that its NITTO and NITTO TIRES marks and names were well-known long prior to March 8, 2012; the date when the Respondent registered the disputed domain name. The Complainant asserts that “Nitto Tire Companies’ continuing operations” reported sales “...in the amount of $33,000,000, thirty three million dollars for 1999, thirteen years prior to the year in which disputed domain name was registered”.

The Complainant asserts that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and that this constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not file a formal Response to the Complainant’s contentions but did send an informal communication to the Center on August 17, 2012, as further described above.

6. Discussion and Findings

Paragraph 14(b) of the Rules provide that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements is order to succeed in its Complaint:

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

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

For the purposes of assessing whether the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights, a comparison must be made between the Complainant’s registered trade mark NITTO and/or its mark NITTO TIRES. It is widely accepted by UDRP panels that the “.com” suffix is disregarded for the purpose of making such a comparison.

So far as the Complainant’s rights are concerned, the Complainant is the proprietor of a US Trade Mark NITTO, under which it sells tires. The Complainant also asserts that it is the registered owner of the domain name <nittotire.com> among others, and has made extensive use of the marks NITTO and NITTO TIRES. Whilst it would have been helpful for the Complainant to have provided financial statements in respect of tire sales made under the marks NITTO and/or NITTO TIRES, or otherwise substantiated its assertions that its marks NITTO and NITTO TIRES are internationally well-known, the Complainant’s rights in the mark NITTO evidently date back several decades. In the absence of any evidence from the Respondent to rebut the Complainant’s assertions, and on the basis of the evidence submitted, the Panel accepts that the Complainant has goodwill and reputation in the mark NITTO.

The Panel finds that the distinctive element of the disputed domain name is “nitto”, which is identical to the Complainant’s registered trade mark. Moreover, “NITTOTIRES” is virtually identical to NITTO TIRE. The addition of the geographic term “Europe” and the generic word “tires” does not lessen the confusing similarity between the disputed domain name and the mark NITTO.

As a result, the Panel concludes that paragraph 4(a)(i) of the Policy is satisfied. The Complainant has rights in the mark NITTO and the disputed domain name is confusingly similar to NITTO.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint. There is no evidence in this case to suggest that the Respondent is known by the names NITTO and/or, NITTO TIRES and/or NITTO TIRES EUROPE, or anything similar. Accordingly, there is no evidence to suggest that the Respondent is authorised and/or entitled to use the NITTO mark.

Moreover, the Panel does not consider that the Respondent has any legitimate interests in the disputed domain name as it is not using it in connection with a bona fide offering of goods and services. In the absence of any response from the Respondent, the Panel accepts that the disputed domain name was registered by the Respondent solely to benefit from the Complainant’s goodwill and reputation in the NITTO mark. The screenshots provided by the Complainant of its website and the Respondent’s website show that the “N”, “MOTIVO” and “NITTO” logos, and the text and photo relating to the “Mud Grappler” product appear on both websites and that the general layout of each website is similar. In the absence of any evidence to the contrary, or any other disclaimer or explanatory language on the website clarifying the Respondent’s relationship with the Complainant, the Panel accepts the Complainant’s assertion that the Respondent has copied the Complainant’s website and that this is evidence of the Respondent not using the disputed domain name in connection with a bona fide offering of goods or services.

Having no other basis on which to find any rights or legitimate interests, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive examples of bad faith registration and use, any of which, if found by the Panel to be present, shall be evidence of registration and use of the disputed domain name in bad faith.

Of particular relevance in this instance is paragraph 4(b)(iv) of the Policy, which states that where the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, then this behaviour shall be taken as evidence of the registration and use of the disputed domain name in bad faith.

As discussed above, the Panel considers that the Respondent’s use of the disputed domain name creates a likelihood of confusion with the Complainant’s NITTO mark. In the absence of any evidence from the Respondent, the Panel agrees with the Complainant that the Respondent’s primary use of the disputed domain name is to confuse and mislead customers and potential customers of the Complainant who are seeking the Complainant’s website.

In the absence of evidence to the contrary, the Panel accepts the Complainant’s assertion that the use by the Respondent’s website of the “NITTO” logo as well as other text and photographs found on the Complainant’s website substantiate their belief that the Respondent’s website is being used for commercial gain.

Accordingly, the Panel agrees with the Complainant’s contention that the Respondent is using the disputed domain name in the manner described in paragraph 4(b)(iv) of the Policy and that the disputed domain name was registered and is being used in bad faith.

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 <nittotireseurope.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Dated: October 5, 2012