WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Apollo Tyres Limited v. Name redacted

Case No. D2016-1639

1. The Parties

The Complainant is Apollo Tyres Limited of Gurgaon, India, represented by Saikrishna & Associates, India.

The Respondent is Name Redacted of Louisiana, United States of America (the “United States”).

2. The Domain Name and Registrar

The disputed domain name <apolltyres.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2016. On August 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2016, 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 August 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2016.

The Center appointed David Taylor as the sole panelist in this matter on September 26, 2016. 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.

The Panel has decided that no purpose is to be served by including the name of the Respondent in this decision, and has therefore redacted his name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed Domain Name that includes the name of the Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances (see Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788).

4. Factual Background

The Complainant, Apollo Tyres Limited, is an international tyre manufacturer founded in India in 1972. The Complainant has registered trade mark rights in the term APOLLO in many countries around the world, including India and the United States, for goods in class 12 (commercial and truck tires), including but not limited to:

- United States Trade mark No. 2468681, APOLLO, registered on July 17, 2001 and

- Indian Trade mark No. 383045, APOLLO, registered on November 13, 1981.

The Complainant’s official website is available at “www.apollotyres.com” (the domain name <apollotyres.com> was registered by the Complainant in 1998).

The Respondent appears to be an individual based in the United States. No additional information about the Respondent is known.

The Domain Name was registered by the Respondent on June 28, 2016. It is being used by the Respondent to send emails misrepresenting itself as the Complainant. At the time of filing, the Domain Name was resolving to a website displaying the following message: “You have reached a domain that is pending ICANN verification”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is one of the largest tyre manufacturers in the world. It asserts that its APOLLO trade marks, first adopted in the year 1972, have gained worldwide recognition and goodwill as a result of its extensive and continuous use throughout the world. As evidence, the Complainant has supplied a list of its trade mark registrations and pending applications along with copies of representative registration certificates for the APOLLO trade marks worldwide.

The Complainant states that its Apollo products are available in over 100 countries and that it has a global workforce consisting of approximately 16,000 employees. The Complainant further asserts that at the end of the financial year on March 31, 2015, it had a turnover of USD 2.08 billion. The Complainant also submits that it has invested over USD 7 million, in promoting and advertising its products and services throughout the past ten years worldwide and has provided as evidence sample promotional materials as well as invoices showing the sale of products under the APOLLO trade mark across the world.

The Complainant asserts that the Domain Name is confusingly similar to a trade mark in which it has rights, as it consists of an intentional misspelling of its APOLLO trade mark, consisting of omitting the letter “o”. It argues that the essential and distinctive element of the Complainant’s trade mark has been copied entirely by the Respondent in the Domain Name.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent is in no way related to or connected or associated with the Complainant nor is the Respondent an authorized agent or licensee of the Complainant. Further, the Complainant states that it has not entered nor does it intend to enter into any agreement granting the Respondent any right, license or authorization to make use of its registered trade marks or domain names including the APOLLO trade marks. The Complainant further asserts that there is no evidence that the Respondent is commonly known as “Apollo Tyres”.

The Complainant asserts that there is no evidence that the Respondent is using the Domain Name in connection with a bona fide offering of goods and/or services or a legitimate noncommercial use or fair use of the Domain Name. The Complainant argues that, instead, the Respondent is using the Domain Name as part of a phishing scheme. In this regard, the Complainant explains that the Respondent is using the Domain Name, which has been registered using the name of the Complainant’s Chairman and Managing Director without authorisation, to send emails to officers and employees of the Complainant asking for sensitive financial information and requesting payment. As evidence, the Complainant has submitted copies of said emails.

The Complainant submits that the Domain Name was registered and is being used in bad faith. It argues that the Respondent, who is masking its actual name and identity, registered the Domain Name in bad faith in order to deceitful attempt to create a nexus between the Complainant and the Domain Name by using the name of the Chairman and Managing Director of the Complainant. It argues that providing false information when registering a domain name is an indication of bad faith registration. The Complainant further argues that the Respondent’s use of the Domain Name to send email correspondence from fake email accounts created using the Domain Name to actual employees of the Complainant is also in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term APOLLO in connection with commercial and truck tires. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name consists of a misspelt version of the Complainant’s APOLLO trade mark (having omitted the last “o” in “Apollo”) with the addition of the descriptive term “tyres”. Prior panels deciding under the Policy have held that when a domain name contains a common or obvious misspelling of a trade mark, as in the present case, it will normally be found to be confusingly similar to such trade mark, where the misspelt trade mark remains the dominant or principal component of the domain name. See paragraph 1.10 of the WIPO Overview 2.0 and also National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011 (<minorleaugebaseball.com>)(“Typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark […]. The Panel finds the disputed domain name is confusingly similar to that mark”).

The addition of the descriptive term “tyres” does nothing to diminish the confusing similarity with the Complainant’s trade mark and so the dominant component of the Domain Name is the Complainant’s trade mark. If anything, the Panel is of the view that the term “tyres” actually reinforces the confusing similarity with the Complainant’s trade mark as it is a term descriptive of the goods for which the Complainant’s trade marks have been registered.

The generic Top Level Domain (“gTLD”) “.com” is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.2 of the WIPO Overview 2.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(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.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of the WIPO Overview 2.0.

The Complainant has asserted that the Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its APOLLO trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Name to send emails to officers and employees of the Complainant asking for sensitive financial information and requesting payment, as shown by the evidence put forward by the Complainant, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is using the Domain Name, which consists of a typosquatted version of the Complainant’s trade mark, to fraudulently misrepresent itself as the Complainant in order to unduly take advantage of the Complainant’s rights.

The Complainant has therefore made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(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 website or location or of a product or service on your website or location.”

The Panel finds that the Domain Name was registered in bad faith. The Complainant’s APOLLO trade mark not only significantly predates the registration date of the Domain Name, but also enjoys considerable renown worldwide in connection with “tyres”, as shown by the evidence put forward by the Complainant. Furthermore, the Domain Name consists of an intentional misspelling of the Complainant’s trade mark and, moreover, almost identically mirrors the Complainant’s domain name <apollotyres.com> (which the Complainant has used since 1998 to resolve to its official website and for email purposes). Prior panels deciding under the Policy have held that “typosquatting is inherently parasitic and of itself evidence of bad faith”. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, supra. Indeed, given the Complainant’s renown worldwide and the nature of the Domain Name itself, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Domain Name and that it deliberately registered it to take advantage of such rights.

The Respondent is using the Domain Name, which consists of a typosquatted version of the Complainant’s trade mark, to send emails misrepresenting itself as the Complainant. Whilst none of the circumstances set out in paragraph 4(b) of the Policy, as outlined above, perfectly describe the Respondent’s conduct, this list is not exhaustive and so the Panel is free to consider other circumstances for the purposes of determining bad faith use. The Panel therefore finds that the Respondent’s use of the Domain Name for email purposes to fraudulently misrepresent itself as the Complainant is in bad faith.

The Panel also finds that an additional circumstance indicative of the Respondent’s bad faith is the fact that the Respondent registered the Domain Name using false details, which is aggravated by the fact that the Respondent has used the Complainant’s own details (in particular the name of the Complainant’s Chairman and Managing Director). Prior panels deciding under the Policy have held that actively providing (and failing to correct) inaccurate, incomplete or false WhoIs data constitutes additional evidence of bad faith.

Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.

The Complainant has therefore satisfied 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 Domain Name <apolltyres.com> be transferred to the Complainant.

For purposes of properly executing this order, the Panel also directs the Registrar's attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name <apolltyres.com> be transferred from that individual to the Complainant.

The Panel directs the Center that Annex 1 shall not be published along with this decision.

David Taylor
Sole Panelist
Date: October 10, 2016