WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dixons Group Plc v. Mr. Abu Abdullaah
Case No. D2001-0843
1. The Parties
The Complainant is Dixons Group Plc, a British corporation with its principal place of business at Maylands Avenue, Hemel Hempstead, Herts HP2 7TG, UK. The Complainant is represented by Andrew Horrocks, Barlow Lyde & Gilbert, Beaufort House, 15 St Botolph Street, London EC3A 7NJ, UK.
The Respondent is Mr. Abu Abdullaah, P.O. Box 10133, Madeenah, Madeenah, SA.
2. The Domain Names and Registrar
The domain names at issue are <dixons-online.net> and <dixons-online.org>. The domain name is registered with Register.com, 575 Eighth Avenue, 11th Floor, New York, NY 10018, USA ("the Registrar").
3. Procedural History
The Complaint submitted by Dixons Group Plc was received on July 2, 2001, (electronic version) and July 4, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On July 4, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, Register.com.
By email dated July 5, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registrations <dixons-online.net> and <dixons-online.org>.
- The Respondent is shown as the "current registrant" of the domain names.
- The administrative technical and zone contact is Mr. Abu Abdullaah at the same address as the Respondent. No telephone number is listed for Mr. Abdullaah in the copy of the WHOIS database provided by the Registrar.
- The UDRP applies to the registration.
- The domain name registrations <dixons-online.net> and <dixons-online.org> are currently active.
- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain names in question are still active indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on July 9, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on July 31, 2001. On August 1 and 2, 2001, the Respondent sent an informal communication to WIPO Center advising that it needed further time to obtain legal counsel and prepare a response. On August 2, 2001, the Center advised the Respondent by e-mail that if the Respondent wishes to file a late submission with the Center, it will not be considered as the Response and it will be at the sole discretion of the Administrative Panel (once appointed) to decide whether it will be considered in arriving at a decision. On August 2, 2001, the Respondent advised the Center by e-mail that Respondent would be filing a late submission.
WIPO Center invited Mr. Ross Carson of Ogilvy Renault, Ottawa, Ontario, Canada to be the Panelist in the case. It transmitted to Mr. Carson a statement of acceptance and requested a declaration of impartiality and independence. Mr. Carson forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On August 9, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by August 23, 2001.
The Respondent did not file a Response within the delay provided by the Uniform Domain Name Dispute Resolution Policy. In an interlocutory decision dated August 13, 2001, the Panelist refused to extend the time for the Respondent to file a Reply. On August 16, 2001, the Respondent e-mailed the Panelist a document entitled Defense documents. The document e-mailed on August 16, 2001, is not accepted as a Response.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
(a) The Complainant has many registered UK trademarks the first of which have been registered since 1972 (Tab 6 of Complaint). The Complainant is very well known in the United Kingdom as retailers of electronic products. (Tab 7 of the Complaint).
(b) The ĎDIXONSí mark was originally used by the Complainant in 1997, in connection with the establishment of the Complainantís own trading website (the domain name for which is <dixons.co.uk>). Total sales arising from orders placed via this website for the year up to April 29, 2000, were £2.3 million and £1.875 million for the year up to April 29, 2001. In the year April 29, 2000, to April 28, 2001, 4.7 million hits were received by the Complainantís website. The marketing materials annexed at tab 7 show that the Complainant uses the trademark DIXONS ONLINE in promoting net shopping in connection with its business as retailers of electronic products. The Complainant is a very well known nationwide retailer with a very widespread trading reputation, in particular within the United Kingdom. The Complainant has invested substantial amounts in advertising this site and in the development of goodwill associated with it (examples are annexed at Tab 7 of Complaint).
(c) The Complainant has given the Respondent no right or license to use the mark "DIXONS".
5. Partiesí Contentions
(a) The domain names <dixons-online.net> and <dixons-online.org> are confusingly similar to the DIXONS mark and name. The Complainant submits that the present domain names include the word "Dixons", which is well known as being the name of an electrical retailer. This gives rise to an expectation as to what is to be found at the subject domain names. The Complainant submits that confusion arises in the instant cases before the Registrantís website has even been accessed. Complainant submits that in Panavision International v. Toeppen, 141 F.3d 1316 (9th Circ. 1998), it was held that the use of trademarks in domain names create a high likelihood of consumer confusion, i.e. that reasonable prudent consumers would believe that the site using the appropriated name was the trademark ownerís site. When the average Internet user enters one of the subject domain names into a browser, they will have a legitimate expectation that the website will have some connection with the Complainant. Upon being presented with the subject domain names <dixons-online.net> and <dixons-online.org> they cannot fail to be confused. In determining confusion, it is the name which has to be considered, not the content of the website.
Complainant submits that the words "Dixons customers" appear in huge, bold print at the top of the home pages of both of Respondentís websites (see tab 8). Anyone accessing the sites will, at least initially, believe the sites to be maintained by the Complainant. Although the words "this site has no connection with Dixons plc" appear on the sites, these words are, in comparison to the above-mentioned heading, in very small, faint print. By the time the disclaimer is viewed, confusion on the part of the Internet user will already have occurred. Complainant submits that at any time the Respondent may decide to remove the disclaimer.
(b) Respondent has no rights or legitimate interest in the domain names <dixons-online.net> and <dixons-online.org>.
(1) Complainant submits that the ĎDixonsí mark was originally used in online trading by the Complainant in 1997, in connection with the establishment of the Complainantís own trading website (the domain name for which is <dixons.co.uk>). Total sales arising from orders placed via this website for the year up to April 29, 2000, were £2.3 million and £1.875 million for the year up to April 29, 2001. In the year April 29, 2000 to April 28, 2001, 4.7 million hits were received by the Complainantís website.
(2) No evidence to suggest that Respondent has rights in the mark "Dixons" has been provided in previous proceedings against the Respondent involving the domain name <dixons-online.com>, Case No. D2000-1406, Dixons Group Plc v. Mr. Abu Abdullaah (Tab 4 of the Complaint).
(3) The Respondent during the <dixons-online.com> dispute referred to other registered domain names using the Dixons name as purported justification for its own use. Those domain names by themselves add no legitimacy whatsoever to the Respondentís use of the name. Furthermore, most of these sites relate to businesses which have "Dixons" somewhere in their names, which gives them a reason to utilize a domain name which incorporates it (provided that such use of Dixons in their names is not otherwise unlawful).
(c) Respondent registered and is using the domain names <dixons-online.net> and <dixons-online.org> in bad faith.
(d) The Complainant submits that when registering the domain names in dispute the Respondent was aware of the Complainantís trademark rights in the United Kingdom. The Respondent had earlier acquired the <dixons-online.com> domain name which had been offered to the Complainant for £150,000 before being acquired by the Respondent. (Tab 4 to the Complaint).
The Respondentís request for an extension of time to file a Response was denied in an interlocutory decision of the Administrative Panel dated August 13, 2001.
On August 16, 2001, the Respondent e-mailed to the Panel, "Defense documents" after the expiry of the deadline to file a Response. The "Defense documents" are not accepted as a Response. In the "Defense documents" the Respondent asserts that Respondent is providing a consumer complaint service to Dixons Customers and employees free of charge using Respondentís own resources.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements:
(i) That the Complainant has rights in a trademark or service mark with which the Respondentís Domain Names are identical or confusingly similar;
(ii) That the Respondent has no rights or legitimate interests in the Domain Names; and
(iii) That the Domain Names have been registered and are being used in bad faith.
6.1 The first issue is whether the Complainant has rights in a trademark or service mark and whether the domain names in dispute <dixons-online.net> and <dixons-online.org> are identical or confusingly similar to that mark..
In a previous dispute between the Complainant and the Respondent, WIPO Case No. D2000-1406 the domain name in dispute was <dixons-online.com>. The Panelist found on the evidence presented that Complainant has a number of trade and service marks registered in the U.K. consisting of the words "Dixons" alone and with minor additions. The same evidence is presented by the Complainant in this dispute. The Complainant is a very well known nationwide retailer of electronic products with a widespread trading reputation particularly in the U.K.
The distinctive portion of the domain names in dispute is the word "dixons". The domain names in dispute are confusingly similar and are likely to lead people to believe that the domain names <dixons-online.net> and <dixons-online.org> are connected with the Complainant. I agree with the reasons and conclusion of the Panelist in WIPO Case No. D2000-1406 between the same Complainant and Respondent in which the Panelist found on similar evidence that the domain name in dispute, in that case <dixons-online.com>, was confusingly similar to the DIXONS trademarks of the Complainant which are extensively used in the U.K. in respect of electronic products.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain names in dispute.
The Respondent did not file a Response within the time period provided by the Policy. Further, in an interlocutory decision the Panelist refused an extension of time to permit the Respondent to file a Response to the Complaint. Subsequently on Thursday, August 16, 2001, the Respondent forwarded a Response. By e-mail dated Thursday August 2, 2001, the Case Manager at WIPO advised the Respondent "Should you wish to file a late submission with the Center now, please be advised that it will not be considered as the Response, and it will be at the sole discretion of the Administrative Panel (once appointed) to decide whether it will be considered in arriving at a decision."
The substance of the Respondentís submission with respect to the issues in paragraphs 4.a(ii) and 4.a(iii) of the Policy is that the Respondent is operating the websites of the web addresses <dixons-online.net> and <dixons-online.org> on a non-profit basis to provide websites at which customers of the Complainant, Dixons Group Plc, may openly post any legitimate comments relating to their contact with Dixons Group Plc. The printout from the web pages in dispute (Tab 8 to the Complaint) shows that the web pages provide links whereby visitors to Dixonís Customers may link directly to other sites.
The addresses <dixons-online.net> and <dixons-online.org> connect to a web page having the title "DIXONS CUSTOMERS". The web page advises among other matters that it is "The site which gives you, the electronic conscious public a platform to air your views".
The Dixons Customers Web Page includes hypertext links, which provide links to <bravenet.com> and deZignpro websites. The Dixons Customers web page includes a box stating "created by deZignpro" with associated letters d and z. Clicking on the deZignpro hypertext link brings forward the deZignpro home page, which advises that the deZignpro team is committed to develop and produce only the best interactive projects for our new and existing client base. DeZignpro currently operate from London (England), Jeddah and Madeenah (Saudi Arabia). The DeZignpro home page includes the hypertext words: Methodology, Services, Portfolio: Contact Us and Home.
Under the heading " Links To Third Party Sites" on the Dixons Customers home page, the Respondent expresses the following disclaimer:
"Any dealings with third parties (including advertisers) included within the Dixonscustomers Sites or participation in promotions, including the delivery of and the payment for goods and services, and any other terms, conditions, warranties or representations associated with such dealings or promotions, are solely between you and the advertiser or other third party. Dixons customers shall not be responsible or liable for any part of any such dealings or promotions."
The Panel finds that the Respondent is using the websites <dixons-online.net> and <dixons-online.org> to attract persons to these websites because of a perceived connection with Dixons Group Plc. Once connected to the websites the Respondent uses hypertext links to commercial websites on the Dixons Customers home page to attract visitors to the advertised commercial services. The carrying of the advertisements benefits the Respondent and not the Complainant. The Panel finds that the Respondentís principal interest in the domain names in dispute is not to gratuitously provide customers or others having a connection with the Complainant with a web page on which to express their opinions. The Panel finds that the Respondentís principal interest is to attract persons familiar with Dixonís Group Plc to the Dixons Customers home page so that some of the visitors will be attracted by advertisements to link to other web pages to the benefit of the Respondent.
6.3 The domain names <dixons-online.net> and <dixons-online.org> were registered by the Respondent on Friday September 29, 2000. The Respondent had earlier acquired the domain name <dixons-online.co.uk> from the Original Registrant on July 18, 2000. (Tab 5 to the Complaint). The Original Registrant wrote to Dixons Group Plc on June 20, 2000, offering to transfer the domain name <dixons-online.co.uk> to Dixons Group Plc for £150,000. Dixons Group Plc offered to purchase the domain name from him for £100. Receiving no response Dixons Group Plc instructed their solicitors to obtain an assignment of <dixons-online.co.uk> domain name or commence proceedings against the Original Registrant. The solicitors for Dixons Group Plc wrote to him expressing the instructions received from Dixons Group Plc on July 7, 2000. On July 18, 2000, the Original Registrant advised Dixons Group Plc that <dixons-online.co.uk> has now been transferred over to an interested third party and is no longer in his possession. On July 18, 2000, when the Respondent acquired the domain name <dixons-online.co.uk> the Respondent, if he was diligent, must or should have been aware of the objection by Dixons Group Plc to the registration of the domain name <dixons-online.co.uk>.
In the <Nominet.uk> written recommendations relating to the domain name <dixons-online.co.uk> (Annex 5 to the Complaint) at page 8 paragraph 18 the independent expert Mr. Abnett refers to the fact that the Respondent and the Original Registrant both wrote letters to Nominet dated July 11, 2000. The independent expert found that the typeface, layout and format of the two letters was identical. The independent expert concluded that it is likely that the two letters were printed in the same place by the same printer. I find that at the date of registration of the domain names in dispute on September 29, 2000, the Respondent was aware of the objection of the Complainant to registration of domain names including dixons-online as a top level domain name or as a country code top level domain.
Turning to the issue of bad faith, the Panel concludes that the Respondent has registered and is using the domain names <dixons-online.net> and <dixons-online.org> in bad faith. Evidence of bad faith can include using a domain name or domain names to attract for commercial gain, Internet users to Respondentís website (ICANN Policy para. 4.b(iv)). Respondentís website includes links to web designers who offer web design services for commercial gain. Respondentís website, Dixons Customers, offers links to other commercial websites. The domain names in dispute <dixons-online.net> and <dixons-online.org> will attract customers of the Complainant to a web page operated by the Respondent including commercial links.
For the foregoing reasons, the Panel decides:
(a) That the domain names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) The Respondentís domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <dixons-online.net> and <dixons-online.org> be transferred to the Complainant.
Dated: August 23, 2001