The Complainant is Dimplex (UK) Limited of Grange Drive Southampton, United Kingdom of Great Britain and Northern Ireland, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Karen Duke of Richmond, Virginia, United States of America.
The Disputed Domain Names are <dimplexelectric.com> and <dimplexelectricfire.com> and both are registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2009. On July 13, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Disputed Domain Names. On July 13, 2009, Wild West Domains, 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, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
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 July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 7, 2009. 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 following salient facts, taken from the Complaint, remain uncontested.
The Glen Dimplex Group and its group of companies (“Dimplex”) is a worldwide leader in the field of electric heating, offering a wide range of residential, commercial and industrial products. Dimplex employs over 8,500 people worldwide with sales in excess of USD3 billion. The Complainant is the owner of United States and other trade-mark registrations for the word “DIMPLEX”. The earliest of the filing dates for those marks, based on the exhibits submitted to the Panel, is April 13, 1971.
On January 16, 2008, the Respondent registered the Disputed Domain Names. They initially resolved to the Registrar's pay-per-click website, which displayed links to direct competitors of the Complainant, such as Classic Flame, Vermont Castings, Phoenix and Napoleon.
On December 16, 2008, the Complainant issued a cease and desist letter to the Respondent requiring the transfer of the Disputed Domain Names. No response was received to the Complainant's letter. On January 26, 2009, the Complainant issued a follow-up letter. No response was received to this letter either, but the Disputed Domain Names subsequently resolved to the Respondent's website at “www.gascoals.net”. That website is an online store called Victorian Fireplace Shop and it promotes the sale of fireplaces, mantels and accessories made by direct competitors of the Complainant, such as Bolero, Windsor, Burley and Kona.
Based on the foregoing facts the Complainant contends that the Disputed Domain Names are confusingly similar to its registered word marks DIMPLEX, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and that each of the Disputed Domain Names was registered and is being used in bad faith. The Complainant bears the onus of making good each of these contentions to the Panel's satisfaction on the balance of probabilities.
In support of these grounds, the Complainant's submissions can be summarised in the following way:
The Complainant has rights in its registered trademark DIMPLEX. The Disputed Domain Names incorporate the whole of that trademark and the additional characters comprise plain English words which enhance rather than detract from the likelihood of confusion caused by the use of the whole trademark.
The Complainant has not authorised the Respondent to use its trademark in any way shape or form, and the Respondent is not making a bona fide or fair use of the trademark in connection with a supply of goods or services. On the contrary, the Respondent registered the Disputed Domain Names with a view to exploiting the Complainant's reputation and goodwill to promote her own commercial interests by using them to drive traffic to a commercial website located at “www.gascoals.net”. Under no circumstances can this intentionally obstructive behaviour be considered bona fide in nature and completely undermines a claim of legitimate interest. Resolving the Disputed Domain Names to pay-per-click websites also undermines a claim of legitimate interest.
The Complainant, relying on paragraph 4(b) of the Policy, and especially subparagraph (iv), says that the use of parking pages is not a legitimate noncommercial use, even if the Respondent is not the recipient of income generated from use of the Disputed Domain Names. The Respondent is contractually responsible for the commercial revenue being earned by others from the Disputed Domain Names. The Respondent is plainly diverting Internet users looking for the Complainant or its products to a website at which the Complainant's competitors' products are offered. This is a clear demonstration of bad faith.
The Disputed Domain Names have been used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement.
The Respondent did not file a Response nor otherwise contest the allegations made in the Complaint as well as in the Complainant's pre-proceeding correspondence.
It is trite that the Complainant has the onus of proving that all of the grounds set out in paragraph 4(a) of the Policy are made out.
The Panel is satisfied from the evidence that the Complainant is the proprietor of the registered trademark DIMPLEX in a number of different countries, including the United States. The Disputed Domain Names start with the Complainant's trademark and follow it with the plain English words “electric” and “electric fire” respectively. The Complainant submitted that:
“Confusion is enhanced by the addition of the word “electric” and “electricfire”. The Complainant offers a wide range of residential, commercial and industrial electrical and heating products. The addition of these terms therefore suggests that the disputed domain names resolve to websites operated by, or otherwise connected to, the Complainant, which is not the case.”
In this Panel's view, not only must a complainant establish similarity between the disputed domain name and its trade marks, but it must also establish that, on a direct (objective) comparison between the two, people seeing the disputed domain name will likely be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves.
The nature of the complainant's business may well be relevant when looking at the effect of characters in the disputed domain name that prefix or suffix the characters that comprise or resemble the trademark element. That is because the exercise is essentially an objective one which looks for the likelihood of confusion as to trade source on the face of the disputed domain name in light of the complainant's trademark. Where, as here, the additional characters are descriptive or redolent of the complainant's products or services, the likelihood that the additional matter might distinguish the Disputed Domain Names from the trademark is destroyed. At the very least such additional matter is not capable of preventing the Disputed Domain Names from being confusingly similar to the trademark which they embed. As noted in SAP AG v. Reffael Caspi, WIPO Case No. D2009-0060, generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).
The descriptive language added here, namely, “electric” and “electricfire” not only does not prevent the likelihood of confusion in this case; it increases the likelihood that the Disputed Domain Names will be taken to be referring to the Complainant's DIMPLEX brand electrical and fireplace products. The suffixed words thus compound rather than disabuse the initial interest confusion generated by use of the Complainant's trademark. Given the widespread reputation of the Complainant's trademark and business throughout the world, the Panel formally finds that each of the Disputed Domain Names is confusingly similar to the Complainant's trademark DIMPLEX.
The trademark DIMPLEX is not an English word. For almost the entire decade since the Policy commenced, panels have taken the view that to embody such a trademark in a domain name without permission from the owner of the trademark creates a strong prima facie case that a respondent has to meet. As this Panel has previously noted in numerous decisions, the lack of a response to a complaint involving famous trademarks makes it difficult for a panel not to find in a complainant's favour on this element of the Policy. Where, as here, the Disputed Domain Names comprise a complainant's mark with descriptive text that corroborates rather than dispels the apparent association, the legitimacy of a respondent's interests is correspondingly more difficult to demonstrate and, in this Panel's view, virtually impossible to demonstrate without filing a Response.
For the reasons advanced by the Complainant, the Panel comfortably concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and so finds.
The Respondent registered the Disputed Domain Names some 34 years after the Complainant first applied for its DIMPLEX trademark. The Complainant's trademark is a household word in many countries. The Respondent demonstrates awareness of the Complainant's mark and products by her choice of suffixes that are redolent of the Complainant's products. She then simply monetises the Disputed Domain Names and, after the Complainant threatens to institute proceedings, rubs salt into the wound by directing Internet users to websites at which the Complainant's competitors' products are being promoted and offered.
The Respondent is engaged in classic cybersquatting and evinces total bad faith in every aspect of her registration and use of the Disputed Domain Names. The Panel finds paragraph 4(a)(iii) of the Policy made out.
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 names, <dimplexelectric.com> and <dimplexelectricfire.com> be transferred to the Complainant.
Philip N. Argy
Dated: August 21, 2009