WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

WRc plc v. W&R Corp.

Case No. D2007-1284

 

1. The Parties

The Complainant is WRc plc, United Kingdom of Great Britain and Northern Ireland, represented by SEQ Legal LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is W&R Corp., Singapore.

 

2. The Domain Name and Registrar

The disputed domain name <wrcgroup.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2007. On September 3, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 4, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2007.

The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on October 9, 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.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

 

4. Factual Background

The Complainant began life in 1927 as the Water Pollution Research Laboratory (WPRL), which formed a part of the UK civil service and was tasked with providing research and advice on sewage treatment. In 1974 WPRL was amalgamated with two other public organisations: the Water Research Association (in existence since 1953) and a part of the Water Resources Board (in existence since 1963). The resulting body was called the Water Research Centre. In 1989, as part of the general move to privatise the UK water industry, the Water Research Centre was privatised and renamed WRc plc. Today WRc plc is based in Swindon in the UK and employs approximately 200 staff.

The Complainant's group includes the following subsidiaries: WRc-NSF Limited and WRc Waste Research Limited. The group has offices in the UK, Belgium and Italy and provides services to clients world-wide. The group also had, until recently, offices in the USA, Hungary and Malaysia.

The Complainant's group's turnover for 2004/2005 was 12.400 million (extracts from the annual report provided as Annex 5 of the complaint) and for 2005/2006 14.007 million. The Complainant's group's aggregate marketing spend was 333,000 in 2004/2005, 257,000 in 2005/2006 and 202,000 for 2006/2007.

The Complainant is the registered proprietor of a number of WRc figurative/logo trademark registrations, such as UK trademark Nos. 1,278,237 for services in class 41 (registered September 26, 1990), 1,278,238 for services in class 42 (registered August 22, 1990), 1,545,704 for services in Class 42 (registered January 24, 1996), 1,452,962 for goods in classes 9, 11 and 16 (registered March 24, 1993), 2,402,802 for goods and services in classes 9, 16 and 42 (registered July 14, 2006); as well as similar registrations in the USA, Germany, Benelux, Spain and a few other countries (copies from the Official trademark databases provided as Annex 4).

The Complainant is also the holder of a number of domain name registrations for “wrcgroup” under such TLDs as .biz, .co.uk, .info, .net, .org and .org.uk.

A WHOIS Search reveals that the disputed domain name was first created on May 7, 1997.

No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below by the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant informs that the disputed domain name was originally registered in May 1997 by WRc Inc., Complainant’s by then US subsidiary. WRc Inc. agreed to transfer the domain name to the Complainant, but as a result of the subsequent dissolution of WRc Inc., the transfer failed. In 2007 the Complainant asked the successor company to WRc Inc. to let the registration lapse, intending to re-apply for the domain name after the 3 month grace period, but when the Complainant attempted to do this it discovered that the domain name had been registered in the name of the Respondent (copies of correspondence and other documents related to the said events provided as Annex 11 of the Complaint).

The Respondent has used the domain name to publish a “for sale” web page, which says: “This domain is for sale – Limited offer USD 3,850 – (This price is strictly non-negotiable.” (Printout of the web page provided as Annex 9 of the Complaint). The Complainant wrote to the Respondent on August 1, 2007 expressing an interest in the domain name and received a response from the Respondent (using the email address seven.seas@nifty.com).

The Complainant claims to have unregistered trademark rights to WRC GROUP, by virtue of extensive use, as Complainant regularly uses the WRC GROUP trademark to collectively describe itself and its associated companies. Further, the Complainant's former US subsidiary (WRc Inc.) used the disputed domain name. The Complainant concludes that the domain name is identical to the WRC GROUP mark and confusingly similar to the registered WRC mark.

The Respondent has no rights or legitimate interests in respect of the domain name. Respondent is called “w&r corp.”, but - according to the Complainant - there is strong evidence to suggest that this company does not exist. A search of a comprehensive database of Singaporean companies has not revealed any company called “w&r corp” and further searches in Internet search engines have not revealed the existence of any such company. The domain name is not used for a company web site, and the email address used by the Respondent appears to be linked to a number of apparently spurious corporations, which have apparently been invented for the sole purpose of making claims against the Respondent under the Policy more difficult (Annex 10 of the Complaint).

The Complainant states that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent. There are circumstances indicating that the domain name was registered primarily for the purpose of selling the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. Complainant also argues that the domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and that the fact that the Respondent's apparent links (via the email address seven.seas@nifty.com) to a number of different companies - some or all of which may have been invented simply for the purposes of domain name registrations - is strongly indicative of bad faith. It is also clear that the Respondent has taken some trouble to hide its or his or her identity.

The Complainant requests the Administrative Panel to issue a decision that the disputed domain name be transferred to the Complainant.

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 the owner of several trademark registrations for WRC (figurative) in the UK, USA, Germany, Benelux, Spain and other countries. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption). Although it is not clear when Respondent became the holder of the disputed domain name, it is clear that Complainant’s trademark rights predates the domain name registration.

The relevant part of the domain name is <wrcgroup>. The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from Complainant’s mark.

The Complainant also claims unregistered trademark rights to WRC GROUP. As stated in Jeanette Winterson v. Mark Hogarth ( WIPO Case No. D2000-0235) and other cases, the Policy is not limited to registered trademarks – also unregistered marks are sufficient for the purposes of paragraph 4(a)(i) of the Policy. The question is therefore whether Complainant has established unregistered (common law) trademark rights to the WRC GROUP. The Complainant has provided a printout from it’s website to support the statement that Complainant is the owner of the unregistered mark WRC GROUP “by virtue of extensive use”. There is no other documentation to prove this alleged unregistered trademark right. On the contrary, on page 9 of the Complaint, the Complainant states that “…because in the context of an international business the word GROUP is highly descriptive…”.

The Panel agrees with the latter statement. The mere addition of generic terms to a mark is insufficient to distinguish Respondent’s domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

The Panel concludes that the Complainant has registered trademark rights to WRC, that the disputed domain name is confusingly similar to WRC, and that the Complainant has in these proceedings failed to prove unregistered trademark rights to WRC GROUP.

B. Rights or Legitimate Interests

The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark WRC.

By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.

The Respondent’s alleged company name is W&R Corp. A company with such name could well, after the necessary translitteration, have legitimate interest in a domain name <wrc>, <wrccorp>, <wrc-corp> or similar. There is however no evidence that W&R Corp – if it exists – is a part of a “W&R” company group, thereby creating a possible legitimate interest in a domain name <wrcgroup>. The Respondent has provided no explanation for the addition of the word “group” in its domain name.

Further, the fact that the domain name is not used for any kind of a company web site, but points to a site with the only message that the same is for sale indicates that, before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

There are several circumstances in this case, indicating that the domain name was both registered and is used in bad faith.

Although the Complainant has not succeeded in these proceedings in establishing unregistered trademark rights to WRC GROUP, Complainant holds a number of domain name registrations for <wrcgroup> under various TLD’s. The disputed domain name was previously in the hands of the Complainant's former US subsidiary, and the Complainant uses WRC GROUP to collectively describe itself and its associated companies on the <wrcgroup.org> website. The Panel concludes, in the absence of any Response from the Respondent, that Respondent registered the disputed domain name with the Complainant in mind.

According to the Complainant, the Respondent’s company does not exist and Respondent has taken some trouble to hide its identity. The Complainant argues that the Respondent has created a number of other “fake” company names in order to make claims against the Respondent under the Policy more difficult. The Respondent has not contested these allegations. The evidences provided by the Complainant in this respect are convincing.

In addition, the web site under <wrcgroup.com> states that the domain name is for sale for USD 3,850. In the e-mail correspondence of August 2007 between the Complainant and the Respondent, the Respondent points out that “…my price USD 3850 is not negotiable…” and that “Price is getting higher. It could be double/triple soon.” This clearly indicates that the Respondent registered the domain name primarily for the purpose of selling them to the Complainant (or to a competitor) for a valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. The only demonstrable “use” of the domain name is, in fact, use as an asset that can be offered to the Complainant for a large amount of money. Such use is within the scope of paragraph 4(b) of the Policy, indicating use in bad faith.

Accordingly, the domain name is 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, <wrcgroup.com> be transferred to the Complainant.


P-E H Petter Rindforth
Sole Panelist

Dated: October 22, 2007