1441
NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 1441
Hutchinson Industries Inc -v-Tyron Automotive Group Limited
Decision of Independent Expert
1. Parties:
Complainant:Hutchinson Industries Inc
Country: US
Respondent: Tyron Automotive Group Limited
Country: GB
2. Domain Name:
rodgard.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet in full on 4 December 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 9 December 2003 and informed the Respondent that it had to lodge a Response by 5 January 2004. No Response was filed. On 13 January 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 6 February 2004, Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
There are no outstanding procedural issues that arise.
5. The Background:
The Complainant is Hutchinson Industries Inc., a subsidiary of the French Group, Hutchinson S.A., which is said to employ more than 18,000 employees in 26 countries, with annual sales that exceed $2 billion. For the past 50 years, it has developed runflat tyre systems, which provide continued vehicular mobility at a variety of tyre pressures, including complete air loss.
Rodgard, established in 1972, is a division of Hutchinson Industries. It is alleged to be an industry leader in the design and manufacture of tyre mobility inserts.
The Complainant is the proprietor of numerous trade mark registrations for the word mark "RODGARD" in class 12 including US Federal trademark n°1914802, filed on 12 October 1994; UK trade mark, n°2060834, filed on 11 March 1996; German trade mark, n°39606319, filed on 12 February 1996; French trade mark, n°96 611272, filed on 14 February 14; Benelux trade mark, n°589916, filed on 20 February 1996; and Italian trade mark, n°00789267, filed on 4 April 1997.
The Complainant's UK specification, which is in similar terms to its other national registrations, covers "devices which fit around vehicles wheels inside fitted tyres in order to enable a driver to maintain control of a vehicle after tyre failure, and to continue driving with one or more tyres deflated; and parts and fittings of such devices".
The Complainant is the registrant of the domain name rodgard.com, which resolves to a website that promotes safety devices for inflatable tyres. This domain was registered on 6 September 1999.
The Respondent, Tyron Automotive Group Limited, was founded in 1979. It also manufactures, among other products, vehicle runflats and safety systems. It is the registrant of the domain name tyron.com, which also resolves to a website, which promotes the Respondent's business.
The Respondent registered the disputed domain name on 13 January 2001. The Respondent used the domain name for at least some of the time by linking it to its own website.
The Complainant wrote to the Respondent on 22 May 2003, and asked the Respondent to remove the link. The Respondent agreed to do so the following day and invited the Complainant to make an offer to transfer the domain name. During the course of without prejudice correspondence the Respondent rejected an offer of €1,000 and sought payment of £5,000. The Respondent sought to justify its offer on the basis that the link was now dormant, and because the Respondent had purchased the domain name "in good faith" and "for the benefit of Rodgard", and that "...if [the Complainant] would like the use of it, then it is not unreasonable to ask them to purchase it". It is alleged that during a phone conversation, the Respondent asked the Complainant to bear all the costs incurred in promoting the name "Rodgard" and the costs of excluding all references to "Rodgard" on the Respondent's website.
6. The Parties' Contentions:
The Complainant alleges that the Respondent has no legitimate rights to use the "Rodgard" name, as it does not own any registered trade marks corresponding to the word which comprise the domain name, and does not have any connection with an identical or similar mark. Moreover, as a close competitor, the Complainant alleges that the Respondent was fully aware of the Complainant's trade mark but nonetheless registered the domain name in issue to promote its own products. The Complainant alleges that the Respondent was also fully aware of the Complainant's rights on the basis of the evidence in the Complaint, and in particular its willingness to remove the link between the disputed domain name and the Respondent's website. The Complainant states that it has rights in respect of a name or mark which is identical to the domain name in dispute.
The Complainant alleges that there are several reasons why the Respondent's registration is an abusive one under the terms of the Policy. First, the offer to sell the domain name for £5,000, is a sum that exceeds the Respondent's registration costs. Secondly, because the disputed domain name acts as a blocking registration, on the basis that the disputed domain name is strictly identical to the Complainant's trade marks, and therefore likely to be the initial guess of an Internet user seeking the Complainant's website. Thirdly, because the Respondent was aware, at the time of registration, of the Complainant's rights because they are close competitors. Fourthly, because the Respondent's activities are bound to disrupt the Complainant business since they are close competitors who both commercialise automotive-related products. Fifthly, the web forwarding configuration creates an obvious risk of confusion both within the industry and among internet users who are misled into believing that Rodgard's products are manufactured by the Respondent. The Complainant concludes by alleging that the disputed domain name has been used in a manner which has led internet users to believe that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7. Discussion and Findings:
Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on the balance of probabilities, that it has rights in respect of a name or mark identical or similar to the domain name and that the domain name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant has rights in the name "Rodgard" by virtue, amongst other things, of its UK trade mark registration. The Expert finds that the Complainant has rights in respect of a name or mark that is identical to the domain name.
Abusive Registration
The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this as a domain name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
The potentially relevant factors in this Complaint are contained in subparagraphs 3 a i, A B and C and 3 ii that is:
3 a i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
3 a ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
The Respondent has not filed a Response. This makes the Complainant's task of establishing an abusive registration considerably easier, though it is still necessary to establish such abusive conduct on a balance of probabilities.
On the evidence it is difficult to determine whether the Respondent's primary purpose in registering the disputed domain name has been to sell, rent or otherwise transfer it to the Complainant or a competitor of the Complainant for a premium. Domain names are tradeable assets and, in the circumstances of this particular case, I do not believe the Respondent's £5,000 offer is determinative of the issue. It seems to me that the offer could, with equal justification, be seen as a genuine counter-offer, that arose solely as a result of being contacted by the Complainant, more than two years after the Respondent's registration. Nor am I willing to conclude on the evidence that the Respondent registered the domain name as blocking registration.
However, there is sufficient evidence of an abusive registration under 3. a. i. C and 3.a. ii for the following reasons:
1 The Respondent's business appears to have no connection with the name "Rodgard". In the correspondence attached to the Complaint there is a suggestion that the Respondent has promoted the Complainant and its products; but there is no evidence of any connection to the "Rodgard" name or its products, whether on the Respondent's website or otherwise. In any event, using the domain name purely to operate as a link to the Respondent's website, does not promote the Complainant or its products. It amounts to mere impersonation.
2 The evidence suggest that that the primary purpose in registering the domain name was to unfairly disrupt the Complainant's business.
3 It appears to me that that the Respondent has used the disputed domain name in a way which is likely to have confused people or businesses into believing that the domain name is connected with the Complainant. This is hardly surprising given that part of the Complainant's business is identical to the Respondent's. The fact that the Respondent linked the domain name to its own website prior to notification by the Complainant of its concerns does not make the Respondent's offering of goods and services genuine (being one of the possible grounds for establishing in a Response that the domain name is not an abusive registration, under 4 a i A of the Policy). The use of a domain name cannot be genuine if it is being used to unfairly disrupt a Complainant's business, or being used to confuse internet users into believing there is a connection between the Complainant and the Respondent
4 Prior to suspension of the link between the disputed domain name and the Respondent's website, internet users searching for information about the Complainant and its products would have been taken, unfairly, to the Respondent's site. In my view, the Respondent has deliberately registered and used the disputed domain to target the Complainant's actual and potential customers. The fact that the link has been suspended merely operates as an illegitimate exploitative threat hanging over the head of the Complainant.
6 In these circumstances, and in particular given the Respondent's prior knowledge of the Complainant, and the business with which it is connected, it is the Expert's view that the Respondent sought to divert users seeking information about the Complainant and its products to its own website. An offering of goods cannot be genuine where that offering is dependent, as here, upon the use of a domain name that impersonates another's trade mark.
In my view, the disputed domain name has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's rights. Accordingly, I find that the domain name is an abusive registration.
8. Decision:
In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration, I direct that the domain name be transferred to the Complainant.
Expert Cerryg Jones
Date 9 February 2004