WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Darlington Building Society v. Cenal.com

Case No. D2007-1250

 

1. The Parties

The Complainant is Darlington Building Society, Darlington United Kingdom of Great Britain and Northern Ireland, represented by Addleshaw Goddard, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Cenal.com, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <darlingtonbuildingsociety.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2007. On August 24, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 24, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2007. 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 September 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2007.

The Center appointed Johan Sj÷beck as the sole panelist in this matter on October 3, 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

The Complainant is the owner of the registered trademark, DARLlNGTON, registered in the UK Trademarks Registry in class 36 for financial services and insurance services on 26 July 1996 with the number 2004831.

The domain name was created on September 4, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant is a UK Building Society which provides financial services across the UK. The Head Office of the Complainant is located in Darlington, but it operates many branches across northern England. The Complainant is the owner of the registered trademark DARLINGTON since 1996. Since approximately 1946 the Complainant has used and continues to use the mark DARLlNGTON BUILDING SOCIETY. The Complainant is therefore the owner of over 50 years of goodwill and reputation in the mark DARLlNGTON BUILDING SOCIETY within the UK. The Complainant’s reputation in the mark has been reinforced by the Complainant’s commitment to north east England as a supporter of numerous local charities and a supporter of sport and art in the region. Furthermore, the Complainant has won several community service awards in the region of north east England. The Complainant has operated its internet website at the URL “www.darlington.co.uk” since 1996.

The disputed domain name is identical to the trading name of the Complainant. The Respondent is neither the owner nor the licensee of any rights in the Complainant’s marks. The Respondent has not been commonly known by the disputed domain name and there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of services as a building society.

It is the opinion of the Complainant that the disputed domain name could not have been chosen for any reason other than its association with the Complainant’s trademarks. The Respondent knew, or ought to have known, of the Complainant’s rights in the trademarks at the time of registering the domain name on September 4, 2005.

On June 28, 2007, the Complainant wrote a letter to the Respondent requesting a transfer. The letter was received and signed for but the Respondent never replied.

The Respondent is using the disputed domain name to lure to its website unsuspecting internet users searching for information on the Complainant and/or its financial services offering. The Respondent is benefiting financially from its unlicensed use of the Complainant’s goodwill through its website which contains numerous sponsored pay per click links. The Respondent is using the disputed domain name to pass itself off as the Complainant and to infringe the Complainant’s rights in the trademarks. Although the Respondent includes a disclaimer on the website the Complainant submits that it is insufficient to prevent any confusion on the part of the public between the domain name and the trademarks.

The Respondent has a previous track record of registering domain names which infringe intellectual property rights of third parties and refers to the previous National Arbitration Forum decisions M. Shanken Communications, Inc v. Cenal.com c/o DNS Manager, FA0507000508512 and Insure & Go Insurance Services Limited v. Cenal.com c/o DNS Manager, FA050700520056.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s 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.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the UK registered trademark DARLINGTON. From the registration certificate of the trademark DARLINGTON it is clear that the proprietor is “Darllngton Building Society”. The disputed domain name <darlingtonbuildingsociety.com> contains the trademark DARLINGTON in its entirety with the addition of the words “building” and “society”. The ability for such generic words to distinguish the domain name from the trademark is limited, especially considering the fact that the above mentioned combination of words undoubtedly refers to the Complainant’s complete trading name “Darllngton Building Society” under which the Complainant has provided financial services since approximately 1946. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA.

Having the above in mind, it is the opinion of the Panel that the domain name <darlingtonbuildingsociety.com> is confusingly similar to the Complainant’s trademark DARLINGTON and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) before any notice to you of the dispute, your use of, 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

(b) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(c) 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.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark DARLINGTON in connection with the disputed domain name <darlingtonbuildingsociety.com> which is confusingly similar to the trademark.

The Respondent has not submitted any evidence of any preparations to use the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Neither has the Respondent submitted any evidence that it intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark DARLINGTON.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the domain name <darlingtonbuildingsociety.com> resolves, contains numerous sponsored commercial links leading to websites promoting and/or offering products and services of third parties. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and that does not represent a use of the domain name in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990.

Furthermore, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to rebut the Complainant’s prima facie showing of Respondent’s lack of rights or legitimate interests to the disputed domain name and failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant’s registered trademark DARLINGTON predates the registration of the disputed domain name <darlingtonbuildingsociety.com>. The registration date of the Complainant’s trademark is July 26, 1996 and the registration date of the disputed domain name is September 4, 2005. In the absence of contrary evidence, the Panel finds that the Respondent most likely knew of the Complainant’s trademark at the time it registered the disputed domain name, given the long term use, not only of the Complainant’s trademark DARLINGTON, but also of the trade name “Darllngton Building Society”. The circumstances in the case clearly indicate that the disputed domain name <darlingtonbuildingsociety.com> can only refer to the Complainant.

From the submitted evidence it is clear that the website, to which the disputed domain name resolves, contains numerous sponsored links, providing an opportunity for the Respondent to make money each time an internet user clicks on the advertisements displayed. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users may be an indication of use in bad faith according to previous decisions. See for example L┤OrÚal, Biotherm, Lanc˘me Parfums et BeautÚ & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

The circumstances in the case before the Panel indicate that the Respondent most likely was aware of the Complainant’s trademark DARLINGTON and that the disputed domain name <darlingtonbuildingsociety.com> has intentionally been used in an attempt to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the trademark DARLINGTON as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <darlingtonbuildingsociety.com> has been registered and used in bad faith.

 

7. Decision

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, <darlingtonbuildingsociety.com> be transferred to the Complainant.


Johan Sj÷beck
Sole Panelist

Dated: October 17, 2007