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Green Tyre Company Plc. v. Shannon Group [2005] GENDND 1813 (5 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Green Tyre Company Plc. v. Shannon Group

Case No. D2005-0877

1. The Parties

The Complainant is Green Tyre Company Plc., Middlesbrough, United Kingdom of Great Britain and Northern Ireland, represented by Schiff Hardin LLP, United States of America.

The Respondent is Shannon Group, Randolph, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <greentyre.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2005. On August 17, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 18, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.

The Center appointed Alfred Meijboom as the sole panelist in this matter on September 21, 2005. 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, Green Tyre Company Plc, is a manufacturer of polyurethane tires for bicycles, wheelchairs and light industrial applications.

The Complainant holds a device trademark registration for GREENTYRE in the United Kingdom with registration number 2018169, filed on April 20, 1995, registered since July 5, 1996 in class 12 for solid polyurethane tyres for bicycles and wheelchairs.

The Respondent registered the domain name <greentyre.com> (the “Domain Name”) on June 29, 1995.

The Domain Name is currently exploited by GREENTYRE USA Ltd. to promote ‘flat-free’ tires for bicycles, turf, wheelbarrow and hand trucks and wheelchairs. These products do not appear to be GREENTYRE branded.

Although the Complainant has not filed any proof of the following contentions, the Panel accepts these as established facts between the Complainant and the Respondent in this proceeding, because the Respondent has left the Complainant’s contentions undisputed:

- the Respondent was a licensed, authorized distributor of the Complainant’s GREENTYRE branded products from approximately 1993 until 1997;

- the Complainant allowed the Respondent to register the Domain Name in order to promote the Complainant’s products, under condition that the Respondent would relinquish its ownership of the Domain Name upon the Complainant’s request;

- after the termination of the Respondent’s license, the Complainant then licensed GREENTYRE USA Ltd. to use the GREENTYRE trademark in connection with the authorized sale of the Complainant’s GREENTYRE branded products. The Complainant allowed Greentyre USA Ltd. to use the Domain Name, still owned by and registered in the name of the Respondent;

- in June 2004, the Complainant terminated Greentyre USA Ltd.’s license to use the GREENTYRE trademark, including the Domain Name;

- the Respondent has acknowledged that it should and will transfer the Domain Name to the Complainant in accordance with the agreement, but so far has failed to do so.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.

The Complainant contends that the Domain Name is identical to the Complainant’s GREENTYRE marks, other than the addition of the top level domain “.com”.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names.

The Complainant states that the Respondent is no longer authorized to use the GREENTYRE marks and is under an obligation to transfer the Domain Name to the Complainant.

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

The Complainant asserts that the Respondent knew of the existence of the GREENTYRE marks when it registered the Domain Name. The Complainant subsequently contends that, because the Respondent refused to transfer the Domain Name as agreed pursuant to the license agreement, the Respondent’s original registration of the Domain Name, allowed upon condition of transfer at the conclusion of the license agreement, was made in bad faith. In order to substantiate its line of reasoning in this respect the Complainant refers to an earlier WIPO UDRP Decision (C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc, WIPO Case No. D2004-0466).

Furthermore, the Complainant states that by facilitating the use of the Domain Name to Greentyre USA Ltd., an ex-licensee that sells competitive products, the Respondent is using the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant holds a device trademark registration for GREENTYRE in the United Kingdom with registration number 2018169, filed on April 20, 1995, registered since July 5, 1996 in class 12 for solid polyurethane tyres for bicycles and wheelchairs.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the gTLD “.com” is disregarded, being a necessary element of domain names. The relevant part of the Domain Name is “greentyre”, which is identical to the word element in the Complainant’s stylized trademark. This leads the Panel to the conclusion that the Domain Name is confusingly similar to the Complainant’s GREENTYRE trademark.

B. Rights or Legitimate Interests

The Complainant undisputedly contends that the Respondent was a licensed, authorized distributor of the Complainant’s GREENTYRE branded products, but since the termination of the license in 1997 is no longer authorized to hold and use the Domain Name. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

It is undisputed that the Complainant allowed the Respondent to register the Domain Name in order to promote the Complainant’s products. At the time of registration on June 29, 1995, the Respondent was a licensed, authorized distributor of the Complainant’s GREENTYRE branded products.

The Complainant contends that the following facts which took place after the date of the registration of the Domain Name cause that the original registration should be considered to be a registration in bad faith in retrospective. These are the fact that the registration took place under condition that the Respondent would relinquish its ownership of the Domain Name upon the Complainant’s request, that the Respondent has acknowledged that it should and will transfer the Domain Name to the Complainant in accordance with the license agreement but has failed to do so, plus the alleged use in bad faith of the Domain Name by the Respondent by facilitating use thereof to Greentyre USA Ltd., a former licensee of the Complainant that sells competitive products. To found the argumentation of bad faith registration, the Complainant has cited an earlier WIPO UDRP Decision: “the circumstances of the dispute between the parties and the current bad faith use are all indications that the disputed domain name was originally registered in bad faith” (C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc.,WIPO Case No. D2004-0466).

The present case appears to be a dispute between a licensor, the Complainant, and its former licensee, the Respondent, involving a domain name. In this respect, it is important to keep in mind that the Policy was designed to prevent the extortionate behaviour commonly known as cybersquatting and that it cannot be used to litigate all disputes involving domain names (The Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470, and Oki Data Americas, Inc v. ASD, Inc., WIPO Case No. D2001-0903,).

The Panel finds that an important difference between the cited case and the present one (a difference which does not emerge from the Complainant’s quote) is that the respondent in the cited case did not have any license, permission or other rights relating to the Complainant’s trademark, nor was there any clear written indication that the complainant in the cited case agreed to the initial registration of the disputed domain name. Considering the Complainant’s explicit permission for registration of the Domain Name by the Respondent in the present case, the Panel finds that the Respondent did not have the requisite bad faith when it registered the Domain Name. Furthermore, the Panel finds that the circumstances as mentioned by the Complainant which are of a later date than the registration of the Domain Name, cannot lead to the conclusion that the original registration in good faith in retrospective has become a registration in bad faith.

Now that the Panel has concluded that the Complainant has failed to prove that the Respondent had registered the Domain Name in bad faith, it can be left undecided whether the Respondent’s use of the Domain Name by facilitating use thereof to Greentyre USA Ltd., a former licensee that sells competitive products, establishes use in bad faith or not.

The Panel notes, that this decision is not in any way to be interpreted detrimental to the Complainant if it decides to pursue the matter in a relevant national court.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alfred Meijboom
Sole Panelist

Date: October 5, 2005