WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION CEAT Limited v. DNS Administrator, Cykon Technology Limited Case No. D2018-2339 1. The Parties

The Complainant is CEAT Limited of Mumbai, India, represented by DePenning & DePenning, India.

The Respondent is DNS Administrator, Cykon Technology Limited, Kowloon, Hong Kong, China, represented by Muscovitch Law P.C., Canada. 2. The Domain Name and Registrar

The disputed domain name is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2018. On October 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2018, 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 October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. On November 12, 2018, the Respondent requested an extension to file a Response. On November 13, 2018, the Center granted the automatic 4-day Response extension until November 18, 2018. On November 14, 2018, the Respondent requested an additional 3-day extension to file a Response. On November 16, 2018, the Center granted the Response extension until November 21, 2018. The Response was filed with the Center November 21, 2018.

The Center appointed Luca Barbero, Vinod K. Agarwal and The Hon Neil Brown Q.C. as panelists in this matter on December 14, 2018. The Panel finds that it was properly constituted. Each member of 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.

On January 2, 2019, the Decision due date was extended to January 14, 2019. 4. Factual Background

The Complainant is a tyre manufacturer based in India, which traces back its history to 1924, when its predecessor in interest and title, CEAT S.p.A., was established in Turin, Italy.

The Complainant manufactures tyres for passenger and commercial vehicles and motorcycles under the trademark CEAT, which is the acronym for “Cavi Elettrici e Affini Torino” i.e., “Electrical Cables and Allied Products Turin”.

As a part of its marketing campaign, the Complainant launched the CEAT Cricket Rating in 1995 and the CEAT International Cricket Rating Awards, an annual event to recognize excellence in international cricket.

The Complainant’s annual turnover in the year 2010 – 2011 was approximately INR 3,529.14 Crores, whilst the Complainant’s advertisement expenditure for the promotion of its goods and services in the year 2010 – 2011 was around INR 44.86 Crores.

The Complainant has received various awards from trade associations and committees, such as the Reader’s Digest Trusted Brand Gold Award in 2009, the Employer Branding Award for Excellence in Training by the Asia Pacific HR congress for the year 2007-08, the National Centre for Quality Calibration (NCQC) Distinguish Award for the years 2004 and 2006 and the CCQC Mumbai Chapter Distinguish Award in 2007.

The Complainant relies on the following trademark registrations, of which it submitted trademark registration certificates as Annex 8 to the Complaint:

- Indian trademark registration No. 204251 for CEAT (word mark), registered in the name of the Complainant’s predecessor in right and interest Ceat Gomma Società per Azioni, filed on August 17, 1961, in class 12,

- Indian trademark registration No. 466079 for a figurative mark consisting of the words CEAT and BORN TOUGH with device elements, filed on January 14, 1987 and registered in the Complainant’s name, in class 12,

- Indian trademark registration No. 561135 for a figurative mark consisting of the words RHINO CEAT and BORN TOUGH with device elements, filed on October 30, 1991 and registered in the Complainant’s name, in class 12,

- Indian trademark registration No. 605276 for CEAT (figurative mark), filed on August 27, 1993, and registered in the Complainant’s name, in class 12,

- Indian trademark registration No. 1678126 for CEAT (figurative mark), filed on April 21, 2008 and registered in the Complainant’s name, in class 12.

The Complainant provided also evidence of ownership of additional trademark registrations including CEAT in Sri Lanka and Viet Nam.

The Complainant is also the owner of several domain names incorporating the trademark CEAT, including , registered on May 11, 2000, , registered on February 10, 2005, and , registered on March 9, 2006.

The Complainant obtained the transfer of the domain name from a prior owner following the filing of a UDRP complaint in 2011 (CEAT Limited, CEAT Mahal v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd,WIPO Case No. D2011-1981).

The disputed domain name was registered on June 17, 2010, and is pointed to a parking page with generic sponsored links where it is stated that the disputed domain name may be for sale. 5. Parties’ Contentions A. Complainant

The Complainant states that, by virtue of its very nature – being an invented word – and of the priority in adoption, long, continuous, uninterrupted and extensive usage of the trademark CEAT since at least 1924, its trademark CEAT has acquired distinctiveness, is well-known and associated exclusively with the Complainant and its business.

The Complainant contends that the disputed domain name is identical to its trademark CEAT. The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name for the following reasons:

i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark CEAT or to apply for any domain name incorporating said trademark,

ii) the Respondent has not made any legitimate offering of goods or services under the trademark CEAT through the disputed domain name,

iii) since the Complainant’s trademark CEAT is an invented word, there could be no plausible explanation for the use of the disputed domain name by the Respondent other than to misappropriate the reputation of the Complainant’s trademark and divert traffic from the Complainant’s websites.

The Complainant also states that the Respondent registered and is using the disputed domain name in bad faith because:

i) the Respondent had constructive notice of the Complainant’s rights in the trademark CEAT by virtue of the Complainant’s well spread reputation, use and registrations,

ii) a respondent should have known of a complainant’s trademark if it is shown to be well-known or in wide use on the Internet or otherwise,

iii) the very use of a domain name by someone with no connection with the Complainant suggests opportunistic bad faith,

iv) the Respondent has not made any legitimate use of the disputed domain name and has merely redirected the users to various third-party websites including the Complainant’s website “www.”. This circumstance would further confirm that the Respondent is “merely making dishonest gain by riding on the repute associated with the Complainant”,

v) today, business transactions are primarily being carried out only through Internet addresses rather than street addresses or post boxes or even faxes. Hence, the Complainant concludes that “it becomes critical that unscrupulous individuals are not allowed to usurp well-known trademarks and domain names to unfairly benefit from such act”. B. Respondent

The Respondent denies all the Complainant’s contentions and states that, although the Complainant alleges that it is “one of the most well-known tyre manufacturers in the world”, its evidence of alleged renown is limited to India and the Complainant submitted copies of trademark registrations only for India, Sri Lanka, and Viet Nam, thus it is highly questionable and entirely unproven whether the Complainant has any significant reputation outside of India, let alone where the Respondent is located, i.e., Hong Kong.

The Respondent also submits that, despite the fact that the Complainant has trademark rights in CEAT in connection with tyres, it has no monopoly over this term since it is widely used by third parties worldwide and indeed there are numerous third parties that lawfully use the name “Ceat” for a variety of unrelated purposes without any license or authorization being required from the Complainant.

The Respondent highlights that the disputed domain name and the Complainant’s trademarks are plainly not identical nor confusingly similar, in light of the addition of the letter “e” to the trademark CEAT.

The Respondent informs the Panel that it is a corporation incorporated pursuant to the laws of Hong Kong which is engaged in the import and sale of consumer goods from China to the Hong Kong market and also invests in non-infringing domain