The Complainant is Brigade Electronics Plc of Kent, United Kingdom, represented by Bromhead Johnson, United Kingdom.
The Respondent is Vision Techniques PLC of Lancashire, United Kingdom.
The disputed domain name <reverseinsafety.com> (the “Domain Name”) is registered with Total Registrations.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 10, 2009, and in hard copy on February 27, 2009. On February 11, 2009, the Center transmitted by email to Total Registrations a request for registrar verification in connection with the Domain Name. On February 13, 2009, Total Registrations 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” or “UDRP”), 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 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2009.
The Center appointed Mr. Antony Gold as the sole panelist in this matter on April 8, 2009. The Panel finds that it was properly constituted. The panelist 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 Domain Name was created on July 26, 2000. The Complainant and the Respondent would appear to be competitors in that both of them sell, amongst other matters, vehicle reversing safety aids. The Domain Name re-directs to what appears to be the Respondent's website at “www.vision-techniques.com”. There is no information provided in the Complaint about the communications, if any, which the parties have had about the Domain Name prior to the institution of these proceedings.
The Complainant says it has traded under the brand name REVERSE IN SAFETY since 1979/80, and that the brand is used in connection with reversing alarms for motor vehicles. It is the registrant of <reverseinsafety.co.uk> which was registered on October 1, 1999.
The Complainant is also the proprietor of Madrid Protocol Trade Mark Registration No. 870,313 filed on September 22, 2004 which, as from December 5, 2006, is in force in the United States of America as United States Trade Mark Registration No. 3,180,200.
The Complainant says that it has used the mark REVERSE IN SAFETY in the United Kingdom since 1979. It says that, in the United Kingdom, such use gives it unregistered trade mark rights. In support of this assertion, it has provided both a declaration made by a director of the Complainant which outlines the use of the trade mark between 1979 and 2003 and an extract from a well-known book on English trade mark law, namely Kerly's Law of Trade Marks and Trade Names.
The Complainant asserts that the Respondent has never commonly been known by the Domain Name and that it has not acquired any registered or unregistered rights in “REVERSE IN SAFETY”. It says that the Respondent does not use the words “REVERSE IN SAFETY” as a trade mark and that it uses the Domain Name simply to point to its own website.
The Complainant says that the Respondent has been aware of its business since before the date of registration of the Domain Name. It points out that its domain name <reverseinsafety.co.uk> was registered before the registration of the Domain Name.
The Complainant also asserts that the Respondent is a competitor of the Complainant and that the Respondent has been aware of the fact that the Complainant trades under the mark REVERSE IN SAFETY. It refers in this respect to another domain name dispute it has had with the Respondent.
The Complainant says that the Respondent is using the Domain Name in order deliberately to divert traffic intended for the Complainant's website so as to increase the Respondent's sales and damage those of the Complainant. It asserts also that the Respondent's use of the Domain Name creates a likelihood of confusion between the products of the parties and seeks to undermine the Complainant's unregistered and registered trade mark rights.
The Respondent has chosen not to file a Response. In accordance with Paragraph 5 (e) and Paragraph 14 of the Rules and in the absence of exceptional circumstances (none being present here) the Panel is required to decide the dispute on the basis of the Complaint and may draw such inferences from the Respondent's default as it considers appropriate.
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
The Panel is satisfied that the Complainant has both registered and unregistered rights in REVERSE IN SAFETY. Evidence of registered rights comes from the United States trade mark for REVERSE IN SAFETY. Evidence of unregistered rights is found in the statement of the Complainant's director which sets out details of the Complaint's use of REVERSE IN SAFETY in relation to reversing alarms for motor vehicles between 1979/80 and 2003, coupled with the extract from Kerly's Law of Trade Marks.
It should be said that the Complainant's evidence is not entirely satisfactory. The United States trade mark is of, at best, peripheral evidence in the light of the fact that the declaration from Complainant's director suggests that the Complainant trades wholly or primarily in the United Kingdom. Moreover, the declaration is almost 5 years old, it has not been prepared for the specific purpose of this Complaint and it deals with matters only up to 2003. Finally, the declaration seems to have been prepared in connection with an unsuccessful application by the Complainant to persuade the United Kingdom Trade Mark Registry that REVERSE IN SAFETY was a sufficiently distinctive term to be registered as a trade mark. However, the Panel accepts, on balance, that the Complainant has, at least, unregistered trade mark rights in REVERSE IN SAFETY.
The Panel is also satisfied that the Domain Name is identical or confusingly similar to the name in which the Complainant has rights, that is REVERSE IN SAFETY. It is usual to disregard the “.com” suffix for the purpose of making such a comparison and, for technical reasons the Domain Name System does not permit the use of spaces between the words which comprise a domain name. Taking these factors into account, the Domain Name and the mark in which the Complainant has rights are at least similar and are arguably identical.
There is no evidence of any type to suggest that the Respondent has any rights or interest in respect of the Domain Name. The pages from the Respondent's website to which the Domain Name resolves and which have been appended to the Complaint suggest that the Respondent trades as Vision Techniques. There is nothing to suggest that it has ever used the name “REVERSE IN SAFETY” or any similar trading style in the course of its business. In the absence of any indications to the contrary, the Panel accepts the Complainant's assertion that the Respondent has no rights or interests in the Domain Name.
For this element of a Complaint to be met, a Complainant is required to show both that the Domain Name was registered in bad faith and that it has been used in bad faith.
So far as registration is concerned, the evidence available suggests that, at the time of registration of the Domain Name in July 2000, the Complainant had already acquired unregistered rights in REVERSE IN SAFETY and was trading under that name and that it had registered the domain name <reverseinsafety.co.uk>.
The evidence does not give any pointers as to why it has taken almost 9 years for the Complainant to pursue this matter and the Panel sees this as somewhat unusual in the light of the Complainant's assertions that the parties are competitors and the registration of the Domain Name has caused loss of business to the Complainant. Nonetheless, there is no evidence to suggest that the Complainant's assertions are incorrect and the Panel accepts them.
The Panel also accepts the Complainant's assertion that the use of the Domain Name by the Respondent to ensure that web users who type in the Domain Name are automatically taken to the Respondent's web site constitutes bad faith use of the Domain Name. There can, as the Complainant points out, be no reason for such use other than to ensure that web users looking for the Complainant are directed to the Respondent instead and such use is likely to cause loss and damage to the Complainant.
In these circumstances, the Panel accepts that the Domain Name has been registered and is being used in bad faith by the Respondent.
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 <reverseinsafety.com> be transferred to the Complainant.
Dated: April 22, 2009