1. The Parties

The Complainant is BVS Limited (trading as Tunit), Lancashire, United Kingdom of Great Britain and Northern Ireland, represented by Guy & Hinton, Solicitors, Australia.

The Respondent is Not For Publication, Australia.

2. The Domain Name and Registrar

The disputed domain name <tunit.com> is registered with Enetica Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. It named as the Respondent Mr. Leimroth, shown by a Whois search conducted on August 25, 2005, as the administrative and technical contact in relation to the Domain Name at issue, the Registrant being shown by that search to be “Private” with the same address as Mr. Leimroth.

On August 26, 2005, the Center transmitted by email to the concerned Registrar, Enetica Pty Ltd a request for registrar verification in connection with the Domain Name. On September 6, 2005, Enetica Pty Ltd transmitted by email to the Center its verification response confirming “the Respondent” (presumably Mr. Leimroth) as the current registrant and providing the following contact details for the registrant, administrative, billing, and technical contact:

“Private, anonymous, t-unitdesigns@[email address]

null

2000, null null

AU

+61.41371 Fax: tunit.com”

Enetica Pty Ltd also confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the Domain Name and that the Domain Name would remain locked during the proceeding.

The Center enquired of Enetica Pty Ltd whether the Domain Name is actually under a private registration service provided by Enetica Pty Ltd and sought information as to an actual entity behind such service. On September 26, 2005, Enetica Pty Ltd informed the Center that the information in the Whois was as stated in its database and the Domain Name is not under the Enetica Pty Ltd’s a private registration service.

On September 30, 2005, the Center notified the Complainant of a deficiency in the Complaint, namely that the registrant of the Whois record did not appear to be Mr. Leimroth. The Center requested the Complainant to amend the Complaint so as to accord with the Whois record and Registrar Verification, which identified the registrant as “Private, anonymous.” The Center noticed that the Whois record had further changed after the Center notified the Complaint deficiency because the Whois record showed the Registrant as “not for publication AU” and “Mr. O’Brien” as technical and administrative contact. On October 7, 2005, Enetica Pty Ltd confirmed that the Domain Name remained under registrar lock and stated “this does not prevent the owner from making changes to the domain.” On October 12, 2005, the Complainant filed an amendment to the Complaint naming the Respondent as “Not For Publication”.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 (by sending the notification to all known contact addresses associated with the domain name) and the proceedings commenced on October 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2005.

On October 15, 2005, the Center received an email from Mr. Leimroth of AWD Technologies (“Manufacturers and Suppliers of ‘Cutting Edge’ Automotive Technology”) saying:

The Center replied by referring to the information contained in the Whois record dated August 28, 2005, submitted with the Complaint and to paragraph 2 of the Rules.

On October 15, 2005, the Center received an email from Mr. O’Brien, stating “I am the current owner and administrator of the website in this complaint.” The Response was filed with the Center by Mr. O’Brien on October 18, 2005. It named “Not For Publication” as the Respondent.

The Center appointed Alan L. Limbury as the Sole Panelist in this matter on October 31, 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.

The Response noted that the Complainant’s representative appears as one of the panelists on the Center’s website and expressed the hope that the Respondent will not be disadvantaged by this and that the Complainant’s representative will not have any influence over the decision because of her position as a panelist. The Panel had been informed by the Center of the identity of Complainant’s representative prior to making the Declaration of Impartiality and Independence and has no reason to alter that Declaration.

4. Factual Background

In February 2002, Mr. Bromley, the Managing Director of the Complainant, came to an arrangement with the Austrian manufacturer of certain products (used in connection with the tuning of diesel engines) previously purchased by the Complainant that the Complainant would continue to purchase them and would develop its own market for them using its own trademark. The Complainant began selling such products under the mark TUNIT in April 2002 in the United Kingdom and has since established a market for them in other countries.

On July 15, 2002, Mr. Bromley became the registered proprietor of UK trademark 2305323 TUNIT DIESELPERFORMANCE, for certain goods in Class 9 (“the registered mark”). This was assigned to the Complainant on September 1, 2002, but the assignment did not become effective until July 27, 2005.

The Complainant advertised for distributors in the September 2003 issue of an Australian magazine, “Overlander Australia 4x4” under the heading “TUNIT® performance.” On September 2, 2003, the Complainant received an email from Mr. Leimroth of Berrima Diesel Service, New South Wales, Australia, saying he had noticed the advertisement and expressing interest in becoming the Complainant’s Australian agent. Shortly thereafter, Berrima Diesel Service began placing orders for the Complainant’s products and was supplied with them by the Complainant.

On November 19, 2003, Mr. Leimroth informed Mr. Bromley: “We have…decided to promote the Tunit through our niche product arm ‘AWD Tech’” and expressed interest in tying up Australian distribution. Emails from Mr. Leimroth ended by referring to both Berrima Diesel Service and to AWD Technologies.

An arrangement was made for the Complainant to host a website at “www.tunit.com.au” and for Berrima Diesel Service to use associated email addresses such as [email address]@tunit.com.au. The Complainant passed on the cost of the hosting to Berrima Diesel Service.

Negotiations over a formal distributorship agreement continued. In April 2004, they were put “on hold” at Mr. Leimroth’s suggestion, due to pressure of work. Mr. Leimroth reported enquiries for Tunit products from New Zealand, Malaysia and the Philippines and Mr. Bromley replied: “We have no problem with you covering New Zealand and any of SE Asia …” He offered to stop any companies selling into Australia.

In the absence of any formal agreement, Tunit products continued to be supplied by the Complainant in response to orders from Berrima Diesel Service until May 2005.

On August 8, 2004, the disputed domain name was registered. As mentioned, Mr. Leimroth was shown as administrative and technical contact and the address of the registrant (named as “Private, anonymous”), was the same as his address. This registration did not come to the attention of the Complainant until May 2005, when on May 25, 2005, one of the Complainant’s representatives, Mr. Baldwin, emailed Mr. Leimroth, regarding Berrima Diesel’s ‘new site’:

“We are a little concerned that, seeing as you are using our brand name and brand style, you haven’t run any of your new ideas by us. Also the fact that you have bought ‘www.tunit.com’ without consultation is disturbing. There are a number of things about the site that don’t seem to sit quite right, it may not be your intention but from a layman’s point of view, you are Tunit and we are one of your distributors. We would very much like to know what your intentions are with regard to our future business relationship.”

Mr. Leimroth replied: “Our intentions are that we are in the business of doing business. We certainly don’t want to ‘hi-jack’ this but certainly want to ‘lock up’ the Australasian region…”

Having spoken to Mr. Bromley, Mr. Baldwin replied: “How you wish to market Tunit in Australia is very flexible to us, however, you may not hold yourself out as ‘Tunit Worldwide’, which unfortunately your website strongly suggests.

Mr. Leimroth responded: “…all we are doing is protecting ourselves from any unforeseeable problem that might arise…”

There was no response to two ‘cease and desist’ letters dated June 29, and July 25, 2005, addressed to Anscott Pty Ltd at the same Berrima address as AWD Technologies, for the attention of Mr. Leimroth, which mentioned, among other things, the disputed domain name and two applications by Anscott Pty Ltd to register in Australia the mark TUNIT.

On July 30, 2005, the Complainant applied to register in the UK the mark TUNIT.

As at August 25, 2005, the website at“www.tunit.com” displayed prominently the logo “tunit® diesel performance”, the flags of several countries, including Australia (at the top) and the U.K. (near the bottom), detailed information about Tunit products and, at the end of four pages, the following:

“AWD Technologies [address and other contact details]

Please note: any representation of Tunit or claim to sell Tunit in Australasia by Bromleys Tuning, BVS Ltd or [Mr.] Bromley of Chorley is without our authorization/permission. Anscott Pty Ltd is the owner of the TUNIT trademark in Australia…”

As already mentioned, the Complaint was filed next day.

As at October 14, 2005 (the date of the commencement of this proceeding), the website at “www.tunit.com” displayed information about the Tunit people of Arctic Canada, “ancestors of the present day Inuit” and the statement: “We’d like to thank AWD Tech – Cutting Edge Automotive Technology – for kindly donating this website and hosting.”

5. Parties’ Contentions

A. Complainant

The Complainant claims common law rights in the trademark TUNIT in Australia and the U.K. and contends that the disputed domain name is identical to that mark and confusingly similar to the mark TUNIT DIESEL PERFORMANCE. Further, that the Respondent has no rights or legitimate interests in the disputed domain name, which it registered and is using in bad faith. Because the only amendment to the Complaint was to the name of the Respondent in the title, these contentions are directed at Mr. Leimroth and do not make any assertions against Mr. O’Brien.

B. Respondent

Mr. O’Brien, who filed the Response, claims ownership of the website “www.tunit.com.”

As to whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Mr. O’Brien says: “a search of the internet shows a few companies that have used the name Tunit and may have a claim to it such as “www.tunit.it” and also “http://www.tunit.de/” which is an automotive website. I don’t see why they have an issue with my website which has nothing to do with cars. Maybe they are just trying to get .com why don’t they claim the German website instead??”

He also refers to a trademark application for TUNIT dated June 20, 2005, in an unspecified country by Adidas International Marketing B.V. Private Limited in respect of athletic footwear and parts thereof and goalkeepers gloves and parts thereof; and to a Canadian trademark registration dated November 18, 1994, by “Mr. Mayer operating as Doctor Tunit, etc.”

As to legitimacy, Mr. O’Brien says he has no idea about that which is mentioned in the Complaint; that his website is still undergoing updates; that the Tunit people are commonly known by that name (quoting an entry about the Tunit people from an internet search); that his website is about the Tunit people and is “a legitimate non-commercial or fair use of the domain name(s) without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark(s) or service mark(s) at issue.”

As to bad faith, Mr. O’Brien says the website at “www.tunit.com” has nothing to do with automotive parts.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

On the evidence, the Complainant has rights in the U.K. registered mark TUNIT DIESEL PERFORMANCE.

As to the Complainant’s application in July 2005 to register TUNIT in the U.K., it is well established that trademark applications confer no rights.

However, the evidence (which includes copies of invoices for goods sold under the mark) establishes that the Complainant has common law rights in Australia in the mark TUNIT, having sold products there under that mark since 2003, notably to Berrima Diesel Service. The existence of other TUNIT marks owned by others in other countries in relation to different goods is irrelevant.

The disputed domain name is clearly identical to the Complainant’s Australian common law mark TUNIT. It is unnecessary to decide whether the disputed domain name is identical or confusingly similar to the registered mark TUNIT DIESEL PERFORMANCE.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case against the Respondent, the burden is on the Respondent to provide evidence of its right or legitimate interests under paragraph 4(c): see for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

The question now arises: who is the Respondent? The substance of the Complainant’s case is directed against Mr. Leimroth even though the amended Complaint is intituled as against ‘Not For Publication’. When the Complainant first tackled Mr. Leimroth over the disputed domain name in May 2005, he did not seek to dissociate himself from its registration. To the contrary, he explained: “…all we are doing is protecting ourselves from any unforeseeable problem that might arise…”

Mr. Leimroth was aware from the moment he first set eyes on the Complainant’s advertisement in the September 2003 issue of an Australian magazine, “Overlander Australia 4x4” that TUNIT® was claimed to be a registered trademark. He ordered from the Complainant and traded in TUNIT marked goods for almost a year before registering the disputed domain name and for several months thereafter. Until the Complaint was filed he promoted TUNIT marked goods on the website to which the disputed domain name led. Thereafter, and before the formal commencement of this administrative proceeding, the details of the registrant were changed from ‘Private, anonymous’ to “Not For Publication” and the administrative and technical contacts changed from himself to Mr. O’Brien. The content of the website also changed from promoting TUNIT automotive products to providing information about the Tunit people.

Under these circumstances, Mr. Leimroth’s question to the Center on October 15, 2005: “Can you please explain what this is about? I do not own this site and never have” is disingenuous in the extreme, since he knew exactly what this is about and had failed to deny ownership of the site when first tackled about it.

But Mr. O’Brien claims to be the Respondent. He says he has no idea of that which is mentioned in the Complaint and puts up a defence of legitimate non-commercial or fair use, on the site at “www.tunit.com” “kindly donated” by AWD Tech – Cutting Edge Automotive Technology.

Under paragraph 8(a) of the Policy, which forms part of the registration agreement, a registrant may not transfer a domain name registration to another holder during a pending proceeding under the Policy or for 15 business days after its conclusion. An administrative proceeding can be “pending” as soon as the complainant files the complaint and not necessarily only after the “commencement of the administrative proceeding” within the meaning of Paragraph 4(c) of the Rules: L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585. See also University of Maryland University College v. Nucom Domain Brokers & Urban Music Underground Club (WIPO Case No. D2002-0081).

Here, the Complaint having been filed on August 26, 2005, the Registrar put the disputed domain name under registrar lock on September 6, 2005, at a time when the registrant was identified as ‘Private, anonymous’. By October 7, 2005, those details had changed to “not for publication AU”. The registrar confirmed on that day that the domain name remained under registrar lock and said “this does not prevent the owner from making changes to the domain”.

The Panel concludes from this and from all the surrounding circumstances that the Registrar, acting appropriately in accordance with paragraph 8(a) of the Policy, allowed the change to the details of the registrant because the owner remained unchanged. The Panel also concludes from all the surrounding circumstances, including that the address of the registrant on August 8, 2004, was the same address as that of Mr. Leimroth, who was then listed as the administrative contact and the technical contact, and who later justified the registration by saying: “…all we are doing is protecting ourselves from any unforeseeable problem that might arise…” that the registrant of the disputed domain name on August 8, 2004, was Mr. Leimroth and that he remains the registrant despite the change of description from ‘Private, anonymous’ to ‘Not For Publication’ and despite the claim by Mr. O’Brien to be “the current owner and administrator of the website in this complaint.”

The Complainant has established that Mr. Leimroth was well aware of the Complainant’s mark TUNIT when he registered the disputed domain name, that he did not have the Complainant’s permission to do so, and that the website at the disputed domain name misleadingly purports to be that of the worldwide distributor of the Complainant’s products. This is a prima facie case and so the onus shifts to Mr. Leimroth to demonstrate rights in or a legitimate interest in the domain name. Here Mr. Leimroth is hoist with his own petard, since he has made no submissions other than to imply that he does not know what this proceeding is all about and to assert that he has never owned the site, both of which propositions the Panel has rejected. Even taking into account the Response filed by Mr. O’Brien, it fails to address the circumstances in which the disputed domain name was registered by Mr. Leimroth and used prior to the filing of the Complaint.

The Panel finds that the Respondent has no rights in or legitimate interests in the disputed domain name. The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

The Respondent was well aware of the Complainant’s Australian common law trademark TUNIT when he registered the disputed domain name. The Panel finds that he did so for the purpose of trading off the Complainant’s goodwill and so that he could pretend that his business was that of the Complainant and was the source of goods bearing the TUNIT mark. The Panel finds this was registration in bad faith.

The Respondent used the disputed domain name prior to the filing of the Complaint intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the endorsement of his website. The disclaimer at the end of four pages did nothing to dispel that misleading impression. This is evidence of both bad faith registration and bad faith use.

Mr. O’Brien’s submission that the website (following the filing of the Complaint) has nothing to do with automotive parts does not alter any of these conclusions.

The Complainant has established this element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tunit.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist

Dated: November 10, 2005