WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dixons Group Plc v Mr. Abu Abdullaah
Case No. D2000-1406
1. The parties
1.1 The Complainant is Dixons Group Plc of Maylands Avenue, Hemel Hempstead, Herts HP2 7TG, United Kingdom.
1.2 The Respondent is Mr. Abu Abdullaah of PO Box 10133, Madeenah, Saudi Arabia.
2. The Domain Name and Registrar
2.1 The domain name on which the Complaint is based is "dixons-online.com"
2.2 The registrar with which the domain name is registered is Register.com, 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2000.
3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated November 1, 2000 that:
3.4 The Panel accepts these findings and further finds that:
3.5 The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
3.6 The language of the proceeding is English.
4. Factual Background
4.1 The Complainant is the United Kingdom registered proprietor of a number of trade and service marks comprising the word "Dixons" on its own and with additions, as listed in Annxe C, behind Tab 3 in the Complaint. These are registered in various classes, but in the main relate to its business as a supplier of photographic equipment and services, and other electrical and associated products.
4.2 According to Register.com's WHOIS database, the Respondent/ Registrant is listed as the Administrative, Technical and Zone Contact for the domain name dixons-online.com (Annexe B, behind Tab 2 of the Complaint). This registration was created on December 9, 1999, expires on December 9, 2001 and was last updated on August 8, 2000.
5. Parties' Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied:
The Respondent denies each of the assertions of the Complainant with respect to the individual elements contained in paragraph 4(a) of the Policy:
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the Complainant has rights in a trade or service mark with which the Respondent's Domain Name is identical or confusingly similar
As stated above, the Complainant has a number of trade and service marks registered in the UK consisting of the word "Dixons" alone and with minor additions. In an earlier case concerning the disputed Domain Name "dixonssucks.com", the administrative panel found that Dixons was a well known trade mark in the UK for the supply of photographic and electrical products and associated services (Case D 2000-0584, behind Tab 4 of the Complaint). The Complainant does not have any registration consisting of the words "dixons-online" although those words in fact feature prominently on the Complainant's web site.
The main thrust of the Respondent's arguments on this point is that, as the Complainant does not actually have a registered trade mark or service mark for the words "dixons-online", this means that it (the Complainant) has no interest in those words and that it cannot therefore be a source of confusion for the disputed domain name to be registered and used in respect of a consumer Complaints service. It also points to the existence of other unrelated domain names that use the name "Dixons".
For the purposes of the present proceeding, the comparison that is to be made is between the Complainant's trade and service marks and the disputed domain name of the Respondent. Both consist of the word "Dixons", and to this extent are identical. However, the disputed domain name adds the word "-online", and the question is whether this is sufficient to prevent it being confusingly similar. No evidence of actual confusion has been presented by the Complainant, and the Respondent refers (but without adequate citation) to the eight factors listed by the US Court in AIM Inc v Sleekcraft Boats. These factors are helpful, but ultimately the question comes down to one of impression on the part of the tribunal. In the UK case cited by the Complainant (Atlantic Corp v Bell Atlantic, December 21, 1998, behind Tab 5 of the Complaint, the deputy High Court judge concluded that:
"...the question of whether a sign used is identical to a registered mark where the registered mark is presented, but with added matter, depends on whether the added matters actually renders the sign so different from the registered mark as to distinguish it from the mark."
The present case is on all fours with the earlier Panel decision in Dixons Group PLC v Purge I T and Purge I T Ltd (Case D 2000-0584) where the Panel found the domain name "dixonssucks" was confusingly similar to the Complainant's trade and service marks. In that case, the Panel stated:
"The first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead people to believe that the Complainant is connected with it."
In the present case, the Panel makes the same finding, namely that the addition of the word "-online" is insufficient to distinguish the disputed domain name from the "Dixons" trade and service marks, and that it is therefore confusingly similar to those marks.
The Panel therefore concludes that the Complainant has proved the requirement in paragraph 4(a)(i).
6.2 That the Respondent must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters which a Respondent can point to as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
(i) before any notice to you [the Respondent] of the dispute, your use, 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 organisation) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue.
No evidence has been presented by the Respondent that would fall within the first two of these sub-paragraphs, ie there is no evidence of any use or preparations for use of the domain name or a corresponding name prior to registration and no evidence that his business had been commonly known by that name. Such evidence as the Respondent presents under this heading of its Response is, in fact, directed at matters that are irrelevant for the purposes of paragraph 4(a)(ii), namely the provenance of the banner inserted on the Respondent's web site and the disclaimers which appear there. Such matters may be relevant under paragraph 4(a)(iii) which is concerned with registration and use in bad faith (see below), but they do not advance in any way the question of whether the Respondent has rights or legitimate interests in the disputed domain name.
On the other hand, it is arguable that some of the material that the Respondent advances on pages 7 and 8 of its Response in relation to paragraph 4(a)(iii) is, in fact, relevant to the third criterion specified in sub-paragraph (iii) of paragraph 4(c) and may provide a basis for establishing its rights or legitimate interests in the disputed domain name. In this part of its Response, the Respondent asserts that it is providing a consumer Complaints service which is free of charge and which is provided by the Respondent in his own time and with his own resources. Such public altruism is laudable, but the only evidence for this is the Respondent's own assertions. Accepting this evidence at face value, however, it would be possible to characterise the Respondent's registration and use of the disputed domain name as "non-commercial" and "without intent for commercial gain". However, these are not the sole matters referred to in sub-paragraph 4(c)(iii) which is drafted in terms that are far from clear. Thus, the use must not be such as "to misleadingly divert consumers or to tarnish the trademark or service mark at issue." On the evidence before the Panel, it is reasonable to conclude that the first of these things will occur, even if briefly. Thus, the Respondent's web site (Tab 8, Complaint) requires the viewer to read to the end of the page before the Respondent's disclaimer appears. Prior to this, however, the headings "Dixons-Online.com, Dixons-Online.co.uk" and the sub-heading "Dedicated to YOU the customers of Dixons PLC" give rise to the clear impression that the site is operated by the Complainant and not by an altruistic consumer Complaints service. In the Respondent's exhibits (Response, Annex 11), the disclaimer is more clearly presented towards the top of the page, but the words "Dixons-online" still give the impression of being associated with the Complainant and the viewer is left with some uncertainty as to the true nature of the site. Accordingly, there is the potential here for customers to be "misleadingly diverted" and possibly annoyed when they find out the web site is not what it seems. Whether this might amount to tarnishment of the Complainant's marks is less easy to say, and, the Panel is unable to reach any view on the evidence before it. However, it is sufficient to say that the fact that there may be a temporary misleading or diversion of customers makes it difficult for the Respondent to assert that its non-commercial use of the domain name provides it with sufficient right or legitimate interest for the purposes of paragraph 4(a)(ii).
In addition, it should be noted that sub-paragraph 4(c)(iii) requires that the non-commercial use should be "legitimate". "Legitimacy" in this context presupposes that there must be some justification in the choice or adoption of a particular domain name and, in the present case, such a justification seems lacking. The Respondent's domain name is virtually the same as the style adopted by the Complainant on its web site (Attachment 6, Complaint) and the latter has been widely advertised (see also Attachment 6). In view of this, it is difficult to describe the Respondent's use of the disputed domain name as "legitimate", even if it is otherwise non-commercial and done "without intent of commercial gain".
In light of the above, the Panel concludes that there is insufficient evidence to show that the Respondent can assert a right or legitimate interest in the disputed domain name by reference to the various criteria referred in sub-paragraph 4(c)(iii). Furthermore, while the criteria listed in paragraph 4(c) are not exhaustive, no other basis on which a finding of right or legitimate interest could be made has been advanced by the Respondent.
The Panel therefore concludes that the Complainant has proved the requirement in paragraph 4(a)(ii).
6.3 That the Domain Name has been registered and is being used in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, but includes:
"(i) circumstances indicating that you [the Respondent] 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 trademark 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 trademark or service mark from reflecting the mark is 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 on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the mark, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of the Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name to use it, after registration, with one of the purposes outlined in those paragraphs. It seems clear that this view has been taken in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, Case D2000-0615.
In the present proceeding, the Respondent did not himself register the disputed domain name, and is only the transferee. However, there is some basis for saying that the term "registration" extends beyond the original act of registration and covers subsequent acquisitions of the domain name. Thus, para 4(b)(i) specifically refers to circumstances in which the Respondent has registered or has acquired a domain name, and there are several prior Panel decisions in which it has been held more generally that "registration" extends to subsequent acts of acquisition: see BWR Resources Ltd v Waitomo Adventures Ltd Case No D2000-0861 and Motorola Inc v NewGate Internet, Inc Case No D2000-0079. The question, then, is whether the acquisition of the disputed domain name by the Respondent in the present case can be said to have done in bad faith. There is no direct evidence on this point, but the following pieces of evidence were presented by the Complainant with respect to the original registration of the domain name:
While no offer was made with respect to the disputed domain name in the present proceeding, in the absence of any evidence to the contrary the Panel draws the inference that this name was also registered by the original registrant with a similar intention. However, there is no evidence of any link or association between the original registrant and the Respondent and the latter denies any such affiliation or that he himself has ever contacted the Complainant with a view to selling the disputed domain name. Nonetheless, the disputed domain name, as found above, is confusing similar to the Complainant's registered UK trade marks, which have been registered since 1972 (in the case of the first: see Tab 3, Complaint). It is also clear that the Complainant has a very widespread trading reputation, in particular within the United Kingdom. It is therefore difficult to believe that the Respondent, in taking his transfer of the disputed domain name was unaware of these facts and that such acquisition was therefore made in good faith (to similar effect, see DFO Inc v Christian Williams, Case No 2000-0181). Accordingly, the Panel concludes that the first part of the requirement of paragraph 4(a)(iii) of the Policy is made out, namely that the acquisition of the disputed domain name by the Respondent was made in bad faith.
This leads to the question of whether the Respondent's use of the disputed domain name is also in bad faith. There is no evidence that the Respondent has used the disputed domain name for one of the purposes referred to in paragraphs 4(b)(i) and (ii). This then leaves for consideration the matters referred to in paragraphs 4(b)(iii) and (iv), although it must be repeated that these are not an exhaustive statement of what constitutes use in bad faith.
Taking paragraph 4(b)(iv) first, the Complainant asserts that the Respondent's use of the disputed domain name falls within the conditions specified here, namely that it intentionally attempts to attract, for commercial gain, internet users to his web site by creating a likelihood of confusion with the Complainant's trade mark. It has been held above that the Respondent's use of the disputed domain is, indeed, likely to mislead users, at least temporarily, to conclude that its web site is associated with the Complainant's mark and that the Respondent's choice and use of domain name can hardly be described as a "legitimate" use for the purposes of establishing its own entitlement to the name within the meaning of paragraph 4(a)(ii). While this finding is clearly relevant to both paragraph 4(a)(iii) and the criteria specified in paragraph 4(b)(iv), the stumbling block for the Complainant here is that it must establish, not merely assert, that the Respondent is using the domain name "for commercial gain". No evidence for this is presented by the Complainant under this part of its Complaint (para V.3), while the Respondent flatly denies it and states he operates his web site as a consumer Complaints service for which no charge is made. Under para V.2 of its Complaint, however, the Complainant does refer to this question, albeit in a different context. It states (with respect to the Respondent's web sites) that "If you were to visit both sites as they exist today, you will note the range of services being offered (i.e email services, affiliate programs, business resources and purchasing of stationery, furniture and technology equipment) which have no connection with the "customer Complaints" forum which the Respondent claimed was his intention to create (see attachment tab 8)." This contention is then rebutted by the Respondent (Response, p 6) with the explanation that these services were, in any event, associated with a banner inserted on his sites by Register.com and were in no way connected to him. An example of such a banner on another web site is given by the Respondent (Response, annexe 9) and the Respondent also furnishes exhibits of his present sites on which the banners have now been removed (Response, Annexe 11). There is no suggestion of any other commercial benefit which the Respondent may derive from the operation of his web page, such as the attracting of clients who wish to bring proceedings against the Complainant (as might be the case with a consumer law firm that sets up a Complaints site: see further Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, Case No 2000-0869). In consequence, there is no evidence before the Panel from which it can conclude that the Respondent is offering services or goods of any kind for commercial gain. In the absence of such evidence, it is therefore impossible for the Panel to make a finding of use in bad faith within the meaning of paragraph 4(b)(iv).
This leaves the question of whether there is any basis for finding use in bad faith under paragraph 4(b)(iii). This refers to registration (and use) of the domain name "primarily for the purpose of disrupting the business of a competitor". While it may be that the Respondent is not using its domain name for "commercial gain" as required by paragraph 4(b)(iii), it has been held in several Panel decisions that "competitor" has a wider meaning and is not confined to those who are selling or providing competing products. In this wider context, it means "one who acts in opposition to another and the context does not demand any restricted meaning such as commercial or business competitor": Mission Kkwa Sizabntu v Benjamin Rost, Case D2000-0279; see also Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, Case D2000-0615. In the present case, the Respondent is competing with the Complainant for the attention of internet users which it hopes to attract to its site. Given also its purpose of acting as a Complaint site, this seems evidence of both of the Respondent's intention to acquire and use the disputed domain name in bad faith. While the interests of free speech and consumer protection may be advanced to justify the Respondent's acquisition and use of the disputed domain name, this is a ".com" domain name, and clearly has the potential to disrupt the Complainant's business. This is not the same as Bridgestone Firestone Inc v Jack Mayers, Case No D2000-0190 in which the Respondent had only registered the "net" domain name for its Complaints site.
The Panel therefore concludes that the Complainant has also proved the second part of the requirement in paragraph 4(a)(iii), namely that the Respondent's use of the disputed domain name is in bad faith
The result is that the Complainant has established each of the matters referred to in paragraph 4(a).
In view of the above, the Panel ORDERS that the Respondent should transfer the disputed domain name to the Complainant.
Dated: January 18, 2001