WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kingspan Group Plc and Kingspan Access Floors Limited v. Mark Thomas
Case No. D2005-0320
1. The Parties
The Complainants are Kingspan Group Plc and Kingspan Access Floors Limited, Kingscourt, County Cavan, Ireland; Marfleet, Ireland, (the “Complainant”) represented by F.R. Kelly & Co., Ireland.
The Respondent is Mark Thomas, Rugby, Warwickshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names:
are registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2005. On March 29, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On March 30, 2005, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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, and the proceedings commenced on April 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2005.
The Center appointed Peter G. Nitter as the Sole Panelist in this matter on May 18, 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.
4. Factual Background
The Complainant is the market leader in Ireland and the United Kingdom (UK) in its various sectors and in 2003, it had turnover of 783,000,000 euros, (of which raised access flooring was 115,700,000 euros or 14.7%) and 3100 employees. The Complainant trades throughout the world and is a major company in European terms, being quoted on the Irish and London Stock Exchanges.
Complainant has registered Community trademarks and trademarks in various countries around the world consisting of or containing the word KINGSPAN.
Respondent has registered and used the domain names at issue.
5. Parties’ Contentions
The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Kingspan Group plc has registered rights in the UK, as Community trademarks and in various countries around the world in respect of Marks consisting of or containing the word “kingspan”. In addition, the Marks KINGSPAN and KINGSPAN ACCESS FLOORS are also unregistered Marks which are used in course of trade in Ireland and UK by Kingspan Group plc and by Kingspan Access Floors Limited.
The domain names are identical or virtually identical to the Marks. The suffixes of the domain names, accessfloors, raisedfloors, floors, raisedaccessflooring and accessflooring, are all generic descriptive words in relation to the fields of interest of the Complainant and the Respondent, being raised access flooring. The comparable word “Roofing” has been held in the WIPO Case No. D2004-0023, to be purely descriptive. Therefore, these words are to be ignored in a comparison of the Marks and the domain names, see WIPO Case No. D2004–0670. Where a generic term is added to a non-generic invented registered trademark such as KINGSPAN, the resulting domain name will be confusingly similar to the trademark, see WIPO Case No. D2002-1070.
The Respondent has no rights or legitimate interests in respect of the domain names.
The history of the parties precludes any possibility that the domain names are used or in preparation for a bona fide offering of goods and services. The intentions of the Respondent in registering the domain names were not bona fide and any subsequent use cannot be bona fide.
The Respondent does not trade through the website on these domain names but rather uses it to entice potential customers to its own website, where it offers services which are in competition with those provided by the Complainant. Such potential customers are attracted first by the domain names and then further misled by the text on the website and the use of the Complainant’s Marks.
Use of a domain name for a competing business is not a bona fide offering of goods or services, as exemplified in National Arbitration Forum Decision No. (“NAF”) 97776.
A bona fide offering of goods or services prior to notice of the dispute has been held to refer ‘dispute’ in the broadest sense of the word. The Respondent registered the domain names specifically in response to Complainant’s decision to grant an exclusive license to another party and as an “act of vengeance” for their various disagreements. By the action of registering these domain names, the Respondent commenced this dispute and therefore cannot have made a bona fide offering before this.
The incorporation of the Complainant’s logo as a link to the Complainant’s website has been regarded as precluding any bona fide offering of goods or services, see WIPO Case No. D2000-0385.
The Respondent is not commonly known by the disputed domain names. The name under which the Respondent trades is Mercia Flooring and it has its own domain names <merciaflooring.com> and <merciaflooring.co.uk>, which it uses for its websites.
Even if the Respondent has been able to attract some visitors to the website posted on the domain names, this does not assist it in showing that it has rights or legitimate interests in that domain names. The Respondent must have been commonly known by the domain names as of the date of registration of the domain name, see WIPO Case No. D2002-0672. The Complainant conducted searches using various Internet search engines and the only references to the Respondent and the trademark KINGSPAN was in lists of companies involved in the flooring industry in which both the Complainant and the Respondent are mentioned, and references on search engines to this infringing website. This shows that the Respondent is not known by the Marks KINGSPAN nor KINGSPAN ACCESS FLOORS nor is it using the Marks.
The Respondent does not have trademark registrations in its name for the domain names. Complainant has undertaken a search of numerous trademark Registries world-wide. The Respondent does not have any registrations in any of these jurisdictions, let alone for the Marks containing the word KINGSPAN.
The Registrant of record is named Mark Thomas. There is no link between this name and the name KINGSPAN, nor is the related company Mercia Flooring in any way connected or affiliated to Kingspan Group plc or its subsidiaries. The Respondent is not authorised as an agent to carry out activities, on behalf of the Complainant or its subsidiaries. The Respondent is merely a purchaser of the Complainant’s goods which it installs on occasion for customers of the Respondent.
The intentions for the registration of the domain names are obvious; to obtain some leverage with the Complainant to re-establish the referral relationship with them which had previously existed with the predecessors of the Complainant and to benefit in the meantime, or permanently if the Complainant refused to accede to this pressure, from the attraction of visitors seeking the Complainant to their own competing services. Further, the Respondent has posted a misleading and infringing website on the domain names. The Respondent changed the text on the website in response to the demand from the Complainant and admitted that the original text had been misleading but the website which it now uses is still misleading and infringing.
It cannot be a coincidence that the Respondent registered these domain names, particularly in light of the past history of the parties.
The use of the Complainant’s Marks, and particularly using its logo as a link to the Complainant’s website, clearly shows a lack of rights or legitimate interests. This was emphasized in WIPO Case No. D2003-0222, where it was noted that use of the logo was not necessary, much less use of the trademark in the domain name itself.
The purported disclaimer which the website of the Respondent now bears is not effective and does not assist in showing rights or legitimate interests.
The history of the parties at most shows an informal referral relationship with the Complainant’s predecessor, during which time when it did not even use the Mark KINGSPAN, and a few limited occasions when it sub-contracted installation work on some of its projects to the Respondent. This does not make it an agent, licensee or distributor. However, even if the Respondent should argue, which is strenuously denied, that it acted as an agent or distributor for the Complainant or its predecessors, this still does not create a right or legitimate interest, see WIPO Case Nos. D2001-0410, D2000-0113 and D2000-1525.
As regards the domain name <kingspanaccessfloors.net>, the Respondent has been the holder of the domain name for some four years without using it, other than for a holding page. This is prima facie evidence that it has no rights or legitimate interests in the domain name, see WIPO Case Nos. D2001-0295 and D2000-0004.
The domain names at issue were registered and are being used in bad faith.
The domain names were registered primarily for the purpose of selling them to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. This is evidenced by copies of correspondence between the Respondent and the Complainant’s representatives.
It is clear that the Respondent registered the domain names either to try to force the Complainant to re-enter a business relationship or to recoup the revenue which it previously made as a result of the former business relationship.
Even where there is no actual demand for a sum in excess of out-of-pocket expenses, it has been held in cases such as WIPO Case No. D2003-0366, that it is bad faith if “the Respondent tries to get benefit in money’s worth out of the domain names. Even if the Respondent never tried to sell or rent the domain names to the Complainant for an amount of money exceeding the Respondent’s out-of-pocket costs, it continuously exercises pressure over the Complainant”.
It is clear that by registering these domain names, the Respondent is preventing the Complainant from reflecting its Mark in the corresponding domain names. It is irrelevant for this purpose that the Complainant has or can register other domain names incorporating its Marks, see WIPO Case No. D2004-0711.
The Respondent has registered six “.com” and “.net” domain names incorporating the trademarks KINGSPAN and KINGSPAN ACCESS FLOORS. In addition, it has also registered four similar “.co.uk” domain names, against which the Complainant is also instituting domain name dispute proceedings. It has often been held that registration of a number of domain names incorporating trademarks of one party can constitute a pattern of conduct.
The Respondent seeks to disrupt the business of the Complainant, both in terms of attracting its potential customers and in creating difficulties for customers of the Complainant who may stumble upon its website when trying to find the website of the Complainant. The fact that these domain names do not link automatically to the main websites of the Respondent but rather to a website which contains misleading information and a link to their main website (as well as to the Complainant’s website) is irrelevant. The intention is to attract visitors seeking the Complainant and the obvious thing to do once a visitor reaches this website is to click on the link to the entity maintaining the website, which leads to the Respondent’s main website.
The Respondent is a competitor of the Complainant, both because it offers installation services, which are also offered by the Complainant and in the wider sense of the word, in that it is acting in opposition to the Complainant’s rights. This ground is also made out where the parties were previously involved in a business relationship.
Pointing the domain name to a website which offers services similar to those of the Complainant is evidence of use and registration in bad faith, see WIPO Case No. D2001-0970. This intention will be easily proven where the website in question also uses the trademarks of the Complainant. This was confirmed in WIPO Case No. D2003-0222, where it was noted that use of the logo was not necessary, much less use of the trademark in the domain name itself. The fact that the Respondent had not obtained permission to display the logo of the Complainant on its website or in the domain names was held to be bad faith.
It is also irrelevant that the Complainant may derive some revenue from the Respondent as a result of its purchases of goods to install for its customers, see NAF Case No. 94927.
The domain names were registered in the same month as the corporate name change to Kingspan Access Floors Limited was completed. In addition, the Complainant has given sworn evidence that the domain names were registered at the time when it was announcing the proposed rebranding to its customers. Its customers at the time included the Respondent. The Respondent has no bona fide basis on which to register or hold these domain names which are not similar to its name and it is implausible that it registered these domain names, which are identical or very similar to the new identity of the Complainant, coincidentally at the same time announcement was made. It is not possible to prove that the Respondent had knowledge of the intended rebranding when registering the domain names but in the circumstances, it is more than reasonable to assume that this is the case and it is the only plausible explanation for their registration.
It must be concluded that the use of the Mark KINGSPAN ACCESS FLOORS by the Complainant commenced with the announcement of the intended rebranding. This was prior to the date of registration of the domain names, as this is the only reasonable inference to be drawn as to why the Respondent registered these domain names. Even where substantial use of the new trademark commences after the announcement and after the date of registration of the domain name, this trademark may be considered when assessing whether the domain name is identical or confusingly similar to a trademark of the Complainant.
It was held in WIPO Case No. D2000-0545 that the fact that trademark rights were acquired by the Complainant in the new Mark after the registration of the identical domain name “cannot represent an advantage for a registrant of a domain name identical to the service mark following its acquiring notice of the ongoing merger”. That decision also confirmed that leaks prior to the announcement of a merger could be considered sufficient notice of the upcoming merger.
The Respondent has changed the text of its website to include the sentence “Kingspan Raised Access Floors supplied and fitted by Mercia Flooring, a business that is not connected to any Kingspan Group Companies, and one that considers service to be an important part of the product”.
This purported disclaimer does nothing to dispel the likely confusion. It is subsumed in the text of the website and is not highlighted in any way. It fails to state that the Complainant does not endorse or is in any way connected with the website, the Respondent or its services. It does not state that the Respondent has no licence to use the trademarks of the Complainant, it is not an authorised dealer of the Complainant nor is the Complainant in any way co-operating with the Respondent. The eye of the visitor would inevitably be drawn downwards to the logo of the Complainant which links to its main website and the inevitable result of this is that visitors would click into their main website without giving full consideration to or understanding the purported disclaimer. The misleading nature of the website and the disclaimer in particular are exacerbated by the use of the Complainant’s Marks, both unadorned in the domain names and in the text of the website. The Respondent even uses the Complainant’s logo beside its own, with a link to the Complainant’s website.
In a similar case on disclaimers, WIPO Case No. D2004-0711, it was held that it is not a bona fide offering of goods or services if the website does not accurately disclose the registrant’s relationship with the trademark owner and a specific example of this which is given is that if it falsely suggests that “it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents”. The decision also gave considerable weight to the fact that the website used the Complainant’s logo and that the position of the disclaimer rendered it an effective defence. In the present case, the Respondent uses the Complainant’s logo, the purported disclaimer is not immediately perceptible to the public as it is subsumed into the text of the website and it is not in close proximity to the place where the visitor would click to enter the Respondent’s main website. Further, the Respondent only added the disclaimer after receiving correspondence from the Complainant.
The surrounding facts must also be taken into account, in particular the past relationship of the parties. There is no objective and justifiable need for the Respondent to hold these domain names.
The website posted on these domain names clearly intends for users to use the link posted thereon and the logo to proceed to Respondent’s main website. Thus, those seeking the Complainant on the website would be diverted to the Respondent’s website.
As regards those periods when the domain names resolved to a “holding page”, it is well accepted in cases such as WIPO Case No. D2000-0003, that passive holding of a domain name can constitute bad faith. WIPO Case No. D2000-0021, confirms that if the domain name is used at any time following registration in bad faith, this is sufficient to establish bad faith use for the purposes of the UDRP.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are not identical to Complainant’s trademarks, and the question is therefore whether there is a confusing similarity between the disputed domain names and the Complainant’s trademarks.
Previous panel decisions under the UDRP have concluded that generic top level domain denominators such as “.com” and “.net” are irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
Complainant has shown that its trademark KINGSPAN has become well known. The trademark is non-generic and distinctive.
The disputed domain names all consist of Complainant’s mark KINGSPAN, with the addition of generic descriptive words in relation to raised access flooring, which is the fields of interest of the Complainant.
Complainant’s trademark is clearly the most distinctive part of the disputed domain names, and the addition of different combinations of the generic terms “floors/flooring”, “raised” and “access” which corresponds exactly to the type of products sold under the KINGSPAN trademark, is to be regarded as descriptive suffixes, which do not add anything significant to the trademark.
The Panel finds it likely that a majority of users of the Internet will assume that the domain names at issue are owned, controlled or endorsed by Complainant. The Panel thus finds that the disputed domain names are confusingly similar to Complainant’s trademark KINGSPAN.
B. Rights or Legitimate Interests
As Respondent is in default in the present case, it has not asserted any rights or legitimate interests in the contested domain name.
Due to the fact that it is generally difficult for complainant to prove the negative that respondent does not have any rights or legitimate interests, and that it on the other side would be easy for respondent to provide evidence of any such rights, previous panel decisions under the Policy have established that, in the event that respondent does not give a response under the proceedings, it is sufficient for complainant to make a prima facie showing that respondent lacks rights or legitimate interests in a domain name.
The Panel finds that there is no evidence that Respondent has been using the domain names at issue in connection with a bona fide offering of goods or services prior to the dispute.
The Panel has furthermore not been presented with any fact indicating that Respondent is commonly known by the name “Kingspan” or any name near such name.
Complainant’s has evidenced that Respondent is not authorised as an agent to carry out activities on behalf of the Complainant or its subsidiaries, and the Panel furthermore subscribes to the Complainant’s assertion that the fact that Respondent is a purchaser of the Complainant’s goods which it installs on occasion for customers of the Respondent, does not grant Respondent any rights in Complainant’s trademark.
With regard to the domain name <kingspanaccessfloors.net>, the Panel accepts the fact that the domain name has not been used for an extensive period of time as prima facie evidence of lack of rights or legitimate interests.
In light of the above, the Panel concludes that Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, and that it therefore has satisfied the condition set out in the Policy, paragraph 4(c).
C. Registered and Used in Bad Faith
The Panel finds it evidenced that Respondent registered the domain names at issue despite his awareness of Complainant’s rights in the mark “KINGSPAN”.
The fact that Respondent has registered not only one, but several domain names consisting of Complainant’s Trademark at various combinations of generic terms describing Complainant’s business, adds on to the impression that the domain names were registered and have been used in bad faith by Respondent.
The Panel furthermore finds that the documentation proffered by Complainant evidences that the domain names at issue were registered primarily for the purpose of selling them to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs.
It is also clear that Respondent, by registering the disputed domain names, prevents Complainant from reflecting its Mark in the corresponding domain names. The Panel subscribes to the Complainant’s assertion that it is irrelevant for this purpose that the Complainant has or can register other domain names incorporating its Marks.
Respondent is to be regarded as a competitor of Complainant, as it offers floor installation services, which are also offered by the Complainant, and most of the domain names at issue are pointing at Internet sites which offer services similar to those of the Complainant, and may divert traffic from Complainant’s website. Other domain names have been passively held by Respondent for a long time. These circumstances are further indications of bad faith registration and use.
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 names:
be transferred to the Complainant.
Peter G. Nitter
Dated: June 30, 2005