WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Solaglas Limited v Tony Emerton
Case No. D2008-0309
1. The Parties
The Complainant is Solaglas Limited of Coventry, United Kingdom of Great Britain and Northern Ireland, represented by Wragge & Co. of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Tony Emerton of Coventry, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <solaglas.com> is registered with NetNames.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On March 10, 2008, the Center transmitted by email to NetNames a request for registrar verification in connection with the domain name at issue. On March 12, 2008, NetNames 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 March 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2008.
The Center appointed Ian Lowe as the sole panelist in this matter on April 11, 2008. 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 a processor, distributor, installer and repairer of glass and glass systems in the United Kingdom of Great Britain and Northern Ireland. It is a wholly owned subsidiary of Compagnie de Saint-Gobain, which is a producer, processor and distributor of materials. The Complainant is the registered proprietor of a number of UK trade marks for the word SOLAGLAS including UK trade mark no. 1065500 SOLAGLAS registered in Class 21 as of 9 July 1976 and UK trade mark no. 1315683 SOLAGLAS registered in Classes 7, 17, 37 and 42 as of 14 July 1987.
The Domain Name was registered on 28 July 2004.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows.
The Domain Name is identical to the Complainant’s registered trade marks for SOLAGLAS, ignoring the first and second level suffixes.
The Complainant argues that the Respondent has no rights or legitimate interest in the Domain Name for the following reasons:
a) The Complainant has not licensed or otherwise permitted the Respondent to use any of its SOLAGLAS trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.
b) There is no relationship between the Complainant and Respondent that would give rise to any such license or permission. The Respondent was an employee of Solaglas Limited between 21 July 1997 and 9 December 2003. The Domain Name was not registered until 28 July 2004.
c) The word “solaglas” is an invented word and as such is not one the Respondent would have legitimately chosen unless he intended to create the impression of an association with the Complainant.
d) The Respondent has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services.
e) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Complaint contends that the Respondent seeks to unfairly disrupt the Complainant’s business as <solaglas.com> is the natural choice of Internet users seeking information about the Complainant’s business. It is to be inferred that the Respondent intends to capture such users and to mislead and misdirect them to another online location.
f) In September 2005 the Domain Name was used to point to “www.skyblue1987.homestead.com” which identified a number of the Complainant’s competitors. It later pointed to “www.bored.com” and at the time of the Complaint it pointed to “www.newsvote.bbc.co.uk”. By adopting a Domain Name which is identical to the Complainant’s registered trade marks for SOLAGLAS, and pointing to third party websites, the Respondent intends to tarnish the trade mark at issue.
The Complainant submits that the Domain Name has been registered and is being used in bad faith for the reasons given above and because of the following facts and matters.
a) The Respondent has used, and continues to use, the Domain Name as a platform to disseminate negative news about the Complainant’s business, and to focus on other aspects of the management and activities of the Complainant and affiliated companies within the Saint-Gobain group. The Respondent’s use of the Domain Name does not constitute fair use, nor is the Domain Name an appropriate vehicle to exercise the Respondent’s right to freedom of speech and expression.
b) Being an ex-employee of Solaglas Limited, the Respondent knowingly chose the Domain Name which is identical to the Domain Name registered by the Complainant in the “.co.uk” domain space. The trade mark SOLAGLAS is one of the best known trade marks in the glass manufacturing sector and it is inconceivable that the Respondent would not be aware of this fact. It therefore seems that the Respondent’s current goal includes preventing the Complainant from reflecting its trade mark in the Domain Name.
c) The Domain Name is inherently deceptive. The Respondent has used the Domain Name to point to at least three different websites since his registration. The content of the websites has varied – “www.skyblue1987.homestead.com” and “www.newsvote.bbc.co.uk” published news on the Complainant’s business, whereas “www.bored.com” has no connection with the Complainant’s business.
d) Members of the public in the United Kingdom of Great Britain and Northern Ireland would believe that the person owning the Domain Name was the Complainant or in some way associated with the Complainant. Any realistic use of the Domain Name must misrepresent an association with the Complainant and its goodwill, resulting in passing off, and trade mark infringement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of a number of trade mark registrations in respect of the mark SOLAGLAS (the “Mark”) and of the widespread use of the Mark in relation to glass products and services. The Panel finds that the Complainant has clearly established rights in the Mark.
The Domain Name comprises the whole of the Mark. Accordingly, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. The Domain Name was registered after the Mark had been registered and become well established in the glass products and services industry, and after the Respondent was an employee of the Complainant. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In view of the Respondent’s (uncontested) previous employment by the Complainant, there can be little doubt that the Respondent was aware of the Complainant and its SOLAGLAS mark at the time the Domain Name was registered. It must also have been apparent to the Respondent that his registration of the Domain Name would have the effect of preventing the Complainant from registering its SOLAGLAS mark in a corresponding “.com” domain name.
The Respondent has used the Domain Name to provide links to various websites, including a website which identifies many of the Complainant’s competitors and a website which makes the user aware of information which discredits the Complainant’s business. In the absence of any explanation from the Respondent to counter the evidence and justify his registration of the Domain Name, the Panel accepts the Complainant’s contention that the Respondent is using the Domain Name to point to third party websites in an attempt to tarnish the trade mark at issue. The fact that the Respondent does not himself appear to be making any active use of the Domain Name (in the sense of posting his own active website) does not displace the Panel’s finding in this regard; on the contrary see eg. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In view of the distinctiveness of the Mark and the nature of the limited use of the Domain Name, the Panel finds that the Respondent had no apparent legitimate or good faith reason for registering the Domain Name.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.
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 <solaglas.com> be transferred to the Complainant.
Dated: April 25, 2008