The Complainant is Dimplex (UK) Limited, Grange Drive Southampton, United Kingdom of Great Britain and Northern Ireland, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondents are Domains by Proxy, Inc., Scottsdale, Arizona and Nigel Corry, Naples, Florida, both in the United States of America (“U.S.”).
The Disputed Domain Name <dimplexwholesale.com> is registered with GoDaddy.com, 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 GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 13, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2009 which added the Second Respondent to the proceedings but otherwise made no change to the language of the Complaint. The Center verified that the Complaint together with the amended 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”). Subsequent references to the “Complaint” are to the original Complaint as amended by the addition of the Second Respondent. The Panel observes that the replacement of the Second Respondent's details for those of the First Respondent in the registration record of the Disputed Domain Name occurred between the time that the Complaint was notified as imminent and the time that it was formally served. For the purposes of this decision, references to “the Respondent” are references to both named Respondents.
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 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 10, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 13, 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 US$3 billion. The Complainant is the owner of U.S. 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 March 29, 2008, the First Respondent registered the Disputed Domain Name. It initially resolved to the “www.fireplacegateway.com” website, which displayed links to direct competitors of the Complainant, such as Classic Flame, Vermont Castings, Phoenix and Paramount. After the Complainant communicated its wish to take a transfer of the Disputed Domain Name, it resolved to a pay-per-click website which also contained links to direct competitors of the Complainant.
On July 20, 2009 an email was sent to the Center and Complainant's legal advisor in these terms:
“As per our last conversation we have no interest in the domain dimplexwholesale.com, the domain is not used. I told you it was registered for a client and we were unable to contact them. We offered to transfer the domain to you for a nominal fee and you said you had no desire to proceed. So the situation as I see it is that we don't want the domain and neither do you so where do we go from here?”
That email was sent by way of reply to the Center's advice that these proceedings had formally commenced.
Based on the foregoing facts the Complainant contends that the Disputed Domain Name is confusingly similar to its registered word marks DIMPLEX, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name 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 Name incorporates the whole of that trademark and the additional characters comprise a plain English word which enhances rather than detracts 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 Name with a view to exploiting the Complainant's reputation and goodwill to promote his or its own commercial interests by using them to drive traffic to a commercial website. 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 Name to a GoDaddy pay-per-click website 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 non commercial use, even if the Respondent is not the recipient of income generated from use of the Disputed Domain Name. The Respondent is contractually responsible for the commercial revenue being earned by others from the Disputed Domain Name. 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 promoted. This is a clear demonstration of bad faith.
The Disputed Domain Name has been used in an attempt to intentionally attract, for commercial gain, Internet users to the Respondent's website 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 Complainant's pre-proceeding correspondence. However, as noted above, on July 20, 2009 the Respondent communicated with the Complainant's legal advisor and the Center in terms which indicated its consent to the Disputed Domain Name being assigned to the Complainant “for a nominal fee” the amount of which the Complainant and the Respondent were unable to agree upon. The Panel infers that this amount exceeded the cost to the Complainant of conducting this proceeding.
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 U.S. The Disputed Domain Name starts with the Complainant's trademark and follows it with the plain English word “wholesale”. The Complainant submitted that:
“confusion is enhanced by the addition of the word “wholesale”. The Complainant offers a wide range of residential, commercial and industrial electrical and heating products. The addition of the word suggests that the Disputed Domain Name resolves to a website 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 consistent with a complainant's business or products, the likelihood that the additional matter might distinguish the disputed domain name from the trademark is destroyed. At the very least such additional matter is not capable of preventing the Disputed Domain Name 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 word “wholesale” could easily be taken to be referring to the price at which Complainant's DIMPLEX brand electrical and fireplace products might be acquired either by end users or by resellers. The suffixed word thus compounds rather than disabuses 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 the Disputed Domain Name 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 name comprises a complainant's mark with descriptive text that does nothing to dispel 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.
Furthermore, by its email of July 20, 2009, the Respondent, or a person purporting to represent the Respondent, seems to have disavowed any interest in the Disputed Domain Name.
For the reasons advanced by Complainant, the Panel comfortably concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and so finds.
The Respondent registered the Disputed Domain Name 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 the choice of website to which the Disputed Domain Name was initially directed. He then simply monetises the Disputed Domain Name and directs Internet users to a website at which the Complainant's competitors' products are being promoted.
The Respondent is engaged in classic cybersquatting and evinces total bad faith in every aspect of his or its registration and use of the Disputed Domain Name. 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 name, <dimplexwholesale.com> be transferred to the Complainant.
Philip N. Argy
Dated: August 27, 2009