WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Silver Cross (UK) Limited v. Research Inc.
Case No. D2006-1398
1. The Parties
The Complainant is Silver Cross (UK) Limited, Fleetwood, Lancashire, United Kingdom of Great Britain and Northern Ireland, represented by Hammonds, Leeds, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Research Inc., Beverly Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <silvercrossbaby.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2006. On November 3, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 9, 2006, Moniker Online Services, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 17, 2006. The Center verified that the Complaint together with the amendment to 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 November 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2006.
The Center appointed Ross Carson as the sole panelist in this matter on January 5, 2007. 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
Complainant is a wholly owned subsidiary of Silver Cross Holdings Limited. Silver Cross Holdings Limited is the owner of trademark registrations for SILVER CROSS and SILVER CROSS in stylized form in Australia, Canada, the Community, Denmark, France, Germany, Hong Kong, Ireland, Italy, Japan, New Zealand, Norway, Poland, Russia, Singapore, South Korea, Spain, Taiwan, Turkey, United Kingdom and the United States of America. The SILVER CROSS trademarks have been registered in the United Kingdom for over one hundred years in relation to baby carriages. More recently the goods include pushchairs, perambulators and car seats for babies as well as carry cots. Complainant is licensed by its parent company to use the SILVER CROSS trademarks in association with the goods for which the trademarks are registered. The SILVER CROSS trademarks have been owned and used by a number of entities over the more than one hundred years that the trademarks have been associated with baby prams and baby carriages. The trademark SILVER CROSS has become a widely known trademark associated with baby carriages in the UK and much of the English-speaking world.
5. Parties’ Contentions
A.1 Identical or Confusingly Similar
Complainant submits that it has rights in the trademark SILVERCROSS which is registered in many countries throughout the world in the name of Complainant’s parent company and exclusively licensed to Complainant. Complainant submits that the distinctive element of the domain name in dispute is identical to the registered trademarks for SILVERCROSS either in word or stylized format.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent registered the disputed domain name on March 4, 2006, long after the first registration of the SILVERCROSS trademarks on the principal register in the United States of America. Complainant further submits that Respondent has no legitimate commercial or private interest in the SILVERCROSS trademark. Respondent does not use SILVERCROSS as a trademark or trade name. In fact, Respondent’s website associated with the disputed domain names do not provide any services to the public, only links to distributors and the products offered by competitors of Complainant in the baby carriage and baby seat business.
A.3 Registered and Used in Bad Faith
Complainant submits that Respondent’s adoption and use of the disputed domain name is in bad faith, has continued with full knowledge of Complainant’s prior rights, and is a willful infringement of Complainant’s prior rights. Respondent is using the confusingly similar domain name in dispute for its own commercial gain, by diverting Internet browsers familiar with the SILVERCROSS trademark to its website featuring links to the websites of competitive baby carriage and baby seat distributors in direct competition with Complainant’s business in order to receive compensation for directing users to such completive websites. (Appendix 1, pages 98-100)
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which the Complainant has rights.
The Complainant has established that it’s parent company is registered as the owner of registrations for the trademark SILVERCROSS in both word and stylized form registered in relation to baby carriages, baby strollers, baby seats, etc., in many different countries throughout the world. The Complainant is the exclusive licensee of the SILVERCROSS registered trademarks. The trademark SILVERCROSS was first used in commerce in 1902.
The addition of the descriptive word “baby” to “silvercross” the distinct element of the domain name <silvercrossbaby.com> does not avoid a finding of confusing similarity between the domain name in dispute and the registered trademark SILVERCROSS. The distinctive element of the domain name in dispute and the registered trademark are identical. The slight difference between the domain name in dispute and the registered trademark SILVERCROSS is of no significance here for purposes of determining whether the domain name and trademark are confusingly similar. The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).
The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the registered trademarks for SILVERCROSS.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
There is no evidence before the Panel that the Respondent has used the trademark SILVERCROSS as a trademark or trade name in association with any goods or services offered by Respondent.
The Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use the SILVERCROSS trademark or any trademark confusingly similar thereto. The domain name in dispute is used by Respondent for a website that includes sponsored links promoting products offered by competitors of Complainant. The use of the domain name in dispute to promote competitors products is not a legitimate use of the domain name. The Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c) of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Having regard to: the longstanding use and registration of the trademark SILVERCROSS since 1902 by the Complainant, it’s parent company and their predecessors in title in association with baby carriages, baby strollers, etc.; the existing registration for SIVERCROSS on the principal register in the United States prior to registration of the domain name in dispute; and the reference to and links to competitive goods of competitors of Complainant on the webpage associated with the domain name in dispute, the panel finds that the Respondent was in all likelihood aware or should have been aware of Complainant’s trademark prior to the date of registration of the domain name in dispute. Media General Communications, Inc. v. Rarenames, WebReg., WIPO Case No. D2006-0964.
The Respondent used the domain name in dispute to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s websites. Royal Bank of Canada v. Chan, WIPO Case No. D2003-0031; Lilly ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729; Wilmington Trust Company v. Domaincar, WIPO Case No. D2006-0045; Caesars World, Inc. v. Digi Real Estate Foundation WIPO Case No. D2005-0425.
The Panel finds that Complainant has proven that Respondent registered and used the domain name in dispute in bad faith as setout in paragraph 4(b)(iv) of the Policy.
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 name <silvercrossbaby.com> be transferred to the Complainant.
Dated: January 19, 2007