WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Duvals of Romsey Limited v. Duval UK Exports
Case No. D2001-1429
1. The Parties
The Complainant is Duvals of Romsey Limited of Unit 25, Romsey Industrial Estate, Romsey, Hampshire, SO51 0HR, U.K., a limited liability company incorporated and registered at Companies House , U.K., under No. 01044798. It is represented by Mr. Michael Gunn of the firm Bond Pearce Solicitors, U.K.
The Respondent is Duval UK Exports whose address is stated to be: 4 Earlsfort Road, Lucan, County Dublin, Ireland.
The Respondentís administrative contact is Emilia Ogoo of the above address and its technical contact is Tech Address ActiveBytes Software LLC of 2530 Channin Drive, Wilmington, DE19810, U.S.A.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is <duvaluk.com>
The Registrar is Melbourne IT, trading as Internet Names Worldwide ("Melbourne IT").
3. Procedural History
On December 6, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on December 11, 2001.
The Center sent a Request for Registrar Verification to Melbourne IT on December 12, 2001, by email. Melbourne IT responded on the same day and confirmed: (1) that it was in receipt of a copy of the Complaint, (2) that it was the Registrar for the disputed domain name, (3) that the Respondent, Duval UK Exports, was the current Registrant of the disputed domain name, (4) that the Respondentís contact details as set out above were correct, (5) that the UDRP applied to the domain name, (6) that the current status of the contested domain name was ĎActiveí, (7) that the language of the agreement was English, and (8) that the Agreement said "Without prejudice to other potentially applicable jurisdictions, Registrant submits to the jurisdiction of the courts as provided in the UDRP Dispute Policy".
On December 13, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, facsimile, and e-mail, as well as to its Administrative and Technical contact.
No more was heard, and the Center sent a Notification of Respondent Default to the Respondent on January 3, 2002.
The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of January 31, 2002, to the Respondent and the Complainant on January 17, 2002, via email. A copy was also sent to the Panel on the same date by email.
The Center sent by email a Transmission of Case File to the Panel, copying the Respondent and the Complainant on January 17, 2001. Hard copies of this material were sent to the Panel on the same day and received on January 18, 2002.
4. Factual Background
Activities of the Complainant
The Complainant claims to be one of the largest suppliers of dry-cleaning equipment and preparations in Europe. The majority of its business is conducted in the UK and Europe, although a worldwide export service is provided for overseas customers. Dry-cleaning machines, along with preparations and material treatments for use in such machinery, is the staple business of the Complainant, while packaging and transportation of these goods are an ancillary requirement.
The Complainantís Trademarks
The Complainant owns a registered Community trademark of the word DUVAL No. 323030 which was registered on August 15, 1996 for goods and services in classes 3, 7, 39 and 40 a copy of which was annexed to the Complaint. The Complainant apparently uses the trademark in respect of each of the classes for which it is registered.
5. The Partiesí Contentions
The Complainant draws attention to the facts set out above and alleges that it first became aware of the contested domain name on or around October 1, 2001, when someone, attempting to access the Complainantís website, <http:// www.duval-uk.com> accidentally omitted the hyphen. As a result, he was immediately redirected from <http://www.duval.uk.com> to a pornographic website at <http://www.gaymen.com>. On discovering this virtually identical domain name, an email was sent to the forwarding service utilized by the Respondent on October 1, 2001, expressing concern at the forwarding by their company to the pornographic site. A reply was received to this email on October 3, 2001.
The Complainant contends that on or around October 5, 2001, the disputed domain name ceased to forward to a pornographic site and instead linked to a specific page within the website of a UK company, Axon Enterprises Limited ("Axon"). The page to which users were now forwarded was <http://www.axon-enterprises.co.uk/commercial_products/miele/index.htm> which is a web page advertising Miele Professional Cleaning Machines and, at the date of the Complaint, the disputed domain name continued to redirect users to this page on Axonís website. A printout of the page was annexed to the Complaint, as were copies of the email correspondence between the Complainantís authorized representative and the forwarding company.
On October 8, 2001, the Complainantís authorized representative contacted Axon by faxed letter expressing concern as to the redirection to one of their web pages. Axon replied by telephone that they had no knowledge of the redirection and did not want to be associated in any way with the Complainantís business. This was confirmed to the Complainantís authorized representative in an email on October 9, 2001. Copies of both the letter and email were annexed to the Complaint.
The Respondentís address is stated as being in Dublin, Ireland. However, on investigation by Irish lawyers it transpired that this address was false. Accordingly, what the Complainant described as a Ď7 day letterí attempting to negate the necessity of bringing these proceedings was sent to the Respondent by post and fax on November 5, 2001, and by email on November 6, 2001, to the details contained in the domain registration information. The Respondentís fax number was unreachable. The post and email to the Respondent have not been returned to date. A copy of the letter was annexed to the Complaint.
On November 16, 2001, the Complainantís authorized representative received a telephone call from a Mr. Peter Ellis who stated that he acted as agent on behalf of Emilia Ogoo, the Respondentís administrative contact. According to the Complaint, Peter Ellis stated during this call that he hosts the domain name on Emilia Ogooís behalf and had received by email a copy of the Complainantís letter dated November 5, 2001. The purpose of his call was said to be to inquire as to whether the Complainant wished to purchase the disputed domain name for the sum of £750.00, which he stated was much cheaper than the $2000 to be paid under the ICANN procedure and he went on to say that when the transfer transaction was finalized he could immediately redirect the domain name to the Complainantís web site.
In reply, the Complainantís authorized representative stated that the Complainantís position was that Duval UK Exports were infringing the Complainantís rights as the Complainant holds a trademark in the word DUVAL. Peter Ellis stated that they did not hold a trademark in the word UK. It was pointed out that this is a generic term and did not change the fact that Duval UK Exports were infringing the DUVAL trademark. Peter Ellis said that he had nothing to do with that side of things, and that if the Complainant had any complaints on that front, it should contact Emilia Ogoo.
Peter Ellis reiterated that if the Complainant was interested in transferring the disputed domain name it should contact him. When asked that the offer be placed in writing, Peter Ellis replied that according to the ICANN rules he would not be able to do that and could only make an offer over the telephone. Peter Ellis gave his contact telephone number as 353 86 3129765 which the Complainant notes is the administrative contact telephone number for Emilia Ogoo.
The Complainant confirms that it has not provided any license or other permission for its trade mark to be used by a third party.
The Complainant contends that as the disputed domain name contains the words "duval" with a suffix of "uk", it is identical to its Community trade mark; the Respondent is passing off the Complainantís business as being connected with firstly, a pornographic site and secondly, with the business of Axon. The Complainant further contends that the disputed domain name is identical to the Complainantís domain name save for the omission of a hyphen.
The Complainant points out that the Community trade mark was registered on August 15, 1996, and its domain name of <duval-uk.com> was registered on July 7, 1997. Accordingly registration of the disputed domain name by the Respondent on August 15, 2001, was made five years after the Complainant had protected its rights under the Community trade mark.
The Complainant contends that the disputed domain name has been registered and used in bad faith and puts forward a number of reasons for saying so.
The Complainant contends that the Respondent has in the first instance, utilized the Complainantís registered trade mark in connection with a pornographic website, and secondly the Complainantís registered trademark has been utilized to forward users to a competitorís professional cleaning machine web page. This behaviour is tarnishing the Complainantís registered trade mark.
The Complainant submits that there is no evidence of the Respondent using, or making demonstrable preparations to use, the dispute domain name in connection with a bona fide activity, that the Respondent is not making any legitimate use of the domain name, is misleading customers, and is diverting them to a competitorís web page.
The Complainant submits that use of the suffix "uk" in the disputed domain name by a Respondent with a contact address in Dublin, Ireland, and no apparent connection with the UK is further designed to establish a link with the Complainantís trade mark and business, which is largely conducted in the UK.
The Complainant relies upon the change in use from homosexual pornography to professional cleaning machines as evidence that the Respondent has no bona fide right or legitimate interest in respect of the disputed domain name and the fact that the Respondent has offered to sell the disputed domain name to the Complainant as an indication that the Respondent has no genuine interest in the domain name.
On the basis that the disputed domain name is confusingly similar to both the Complainantís domain name and/or identical to the registered trade mark, the Complainant submits that the disputed domain name was registered primarily for the purpose of disrupting the Complainantís legitimate business activity.
By changing the forwarding link from the disputed domain name to a page within a competitorís website, who also sells professional cleaning machines, the Complainant contends that the Respondent is misleading and diverting the Complainantís customers away from the Complainantís legitimate web site and business. Accordingly, the Respondent has created a likelihood of confusion with the Complainantís mark as to the source, endorsement, location and products offered for sale on the forwarded commercial cleaning machinery page of Axon.
The Complainant fails to see why, save in acting in bad faith, the Respondent needs to utilize the trade mark "DUVAL", or a domain name so confusingly similar to that of the Complainant. Duval is not a generic term and the Complainant cannot see any legitimate reason as to why the trade mark is included in the disputed domain name except to create a likelihood of confusion and to intentionally attempt to attract internet users to the Respondentís chosen forwarded online location. Currently, the Respondentís chosen location is a competitorís web page. The Complainant has a genuine concern that the forwarded location may again be moved to a sordid site.
The Respondent also appears to have supplied a false address to register the disputed domain name. This is inconsistent with acting in good faith.
The Complainant contends that the Respondent's interest in the disputed domain name was simply to sell it to the Complainant at a value in excess of the genuine out of pocket expenses incurred. In addition, as evidenced by the comment of Peter Ellis on November 16, 2001, the price was pitched at a level which makes taking the ICANN procedural route less attractive.
The Respondent did not respond to the Complaint or to the allegations made therein.
6. Discussion and Findings
Since the Respondent has not submitted a Response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint. Nevertheless, even though there has been no Response, the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint" which the Panel will now do.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:
(i) that the domain name 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 in bad faith.
The Complainant has established that it has registration rights in the trademark DUVAL. This is not identical to the contested domain name but in the opinion of the Panel it is confusingly similar to it. For the purposes of comparison, it is standard practice under the Policy to ignore a TLD suffix such as, in this case, Ď.comí. Thus the comparison is between DUVAL and DUVALUK. ĎUKí is generic and non-distinctive, but in addition to the trademark, the Complainant also owns, and has undisputed rights in, the domain name <duval-uk.com>.
Consequently the Panel rules that the contested domain name is confusingly similar to the trademark and other rights belonging to the Complainant.
In connection with any legitimate rights or interest, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name.
By its default, the Respondent has done nothing to contest the allegations of the Complainant that it lacks any rights or legitimate interests in the disputed domain name. Consequently, since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favour under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has also been proven.
By its default, the Respondent has also not responded directly to the allegation of the Complainant that the Respondent registered the domain names in bad faith. The burden of proof for doing so is on the Complainant which, in the opinion of the Panel, it has fully discharged. Paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, and in the opinion of the Panel, the Respondent has committed at least two of them. For example, his only response to the Complaint was to offer to sell the contested domain name for more than his out of pocket expenses, which is contrary to paragraph 4(b)(i) of the policy. Furthermore, the domain name was used initially to direct typosquatters to a pornographic website and then, when this was stopped through the actions of the Complainant, users of the site were directed not to the home page of a competitor, but to a page buried deeply within that competitorís website where a product that was in direct competition with the Complainantís products was displayed. Thus the Panel has had little difficulty in concluding that the actions of the Respondent were in contravention of paragraphs 4(b)(iii) and (iv) of the Policy.
However, it should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith but it is clear from the above, that there has been use in this case.
These proceedings are binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular, the Respondent has not denied that it registered or is using the domain name in bad faith.
The Panel therefore concludes that the Respondent did indeed register and has used the contested domain name in bad faith.
In the result, the Panel, having found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith, the Complaint succeeds.
Accordingly, the Panel directs that the registrations of the domain name <duvaluk.com> be transferred to the Complainant.
David H. Tatham
Dated: January 27, 2002