Complainant is H Samuel Limited of Golden Square, London, United Kingdom of Great Britain and Northern Ireland, represented by Herbert Smith, United Kingdom.
Respondents are PrivacyProtect.org of Moergestel, Netherlands and Venkateshwara Distributor Private Limited of Mumbai Maharashtra, India.
The disputed domain name <hsamuels.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2009. On July 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On July 21, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing the registrant for the Domain Name and their contact information that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 23, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 28, 2009. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on July 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2009. Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 21, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 27, 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.
Complainant owns seven United Kingdom trademarks and two European Community trademarks for the mark H SAMUEL alone or with other words. The nine trademarks were registered prior to Respondents' registration of the Domain Name in June 2002. The trademarks include, by way of example, the Community trademark E158659 for H SAMUEL registered in 1996 for, among other things, jewelry, leather goods and the maintenance and repair of jewelry (the “H SAMUEL mark”).
Complainant's business includes the operation of a large chain of retail stores throughout the United Kingdom trading under the H SAMUEL mark. The genesis of the H SAMUEL mark is from the founder of the business, Harriet Samuels, who opened the first H SAMUEL store in 1890 in Preston, England. Since 2005 Complainant has also operated an online store via its website at “www.hsamuel.co.uk”. Complainant had sales of 250.3 million pounds in 2008/2009. These sales represent a market share of approximately 5% of the total United Kingdom jewelry market. Complainant regularly advertises under the H SAMUEL mark including in catalogs displayed in stores, mailed directly to targeted customers and distributed in newspapers.
On February 25, 2008, Complainant's counsel sent a demand letter to Moniker Privacy Services (“Moniker”), a privacy service provider, by courier at the address indicated on the WHOIS database for the Domain Name and by email to the following addresses: “email@example.com”, “firstname.lastname@example.org” and “email@example.com”. The letter included a request to transfer the Domain Name to Complainant's parent company. Counsel sent the letter to Moniker because, at that time, a WHOIS search of the Domain Name revealed Moniker as the registrant and the actual owner of the Domain Name could not be identified. Complainant received no response to the letter or emails.
On or before May 27, 2009, ownership of the Domain Name was transferred to Private Whois Escrow Domains Private Limited, then on or before June 22, 2009, ownership of the Domain Name was transferred to Respondent, PrivacyProtect.org.
The Domain Name is identical or confusingly similar to the H SAMUELS Mark. Respondents have no rights or legitimate interests in the Domain Name. Respondents registered and are using the Domain Name in bad faith.
Respondents did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant, through its long-standing use of, and registrations covering, the H SAMUEL mark, has rights in the mark.
The Panel concludes that the Domain Name, <hsamuels.com>, is confusingly similar to Complainant's H SAMUEL mark. The Domain Name incorporates the mark in its entirety adding only (i) an “s” and (ii) the generic top-level domain suffix of “.com”. The addition of the gTLD “.com” is without legal significance because use of a gTLD is required of domain name registrants and “.com” does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602. Furthermore, the addition of an “s” is insufficient to avoid confusing similarity with a mark. See Scholastic Inc. v. Applied Software Solutions Inc., WIPO Case No. D2000-1629.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondents have no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondents to use its H SAMUEL mark in any manner including as a domain name; (2) Respondents have not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel finds Respondents' use of the Domain Name is an infringing one); (3) Respondents have not been and are not commonly known by the Domain Name; and (4) Respondents are not making a legitimate noncommercial or fair use of the Domain name. In fact the evidence shows the following (a) from at least February 2008, the registrant of the Domain Name, whose identity was concealed through Moniker's privacy service, caused the Domain Name to be directed to a webpage entitled “hsamuels.com” which displayed advertisements, and a search service, for products including jewelry and watches; and (b) from at least June 22, 2009, Respondents caused the Domain Name to be directed to a webpage entitled “Hsamuels.com – find something interesting” and displaying jewelry-related click-through links (e.g., “Gold Jewelery” (sic) and “Diamond Rings”) to webpages containing jewelry-related “sponsored listings”; advertisements for jewelry products and websites of Complainant's competitors. Those uses of the Domain Name are commercial uses intended to capture customers of Complainant who had intended to reach Complainant's website at “www.hsamuel.co.uk”, but mistyped the address and used the .com suffix instead only to be redirected to advertisements for competitors of Complainant with a view to generating advertising revenue from such redirection.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon Respondents to rebut Complainant's evidence. In this case, because Respondents have failed to file a Response, the Panel finds that Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
The Panel finds Respondents registered the Domain Name in bad faith. That Respondents chose to use a known jeweler's trademark H SAMUEL for its Domain Name, adding only the letter “s” at the end (hsamuels.com) to host a website with links to other jewelers satisfies the Panel that Respondents likely knew of Complainant and the H SAMUEL mark when it registered the Domain Name. Moreover, the fact that Respondents use “H Samuels Jeweler Uk” on the website associated with the Domain Name as a link (Complainant's principal place of business is in the United Kingdom) is further evidence Respondents likely knew of Complainant and the H SAMUEL mark when registering the Domain Name. To have proceeded with registration and use knowing of Complainant's rights in the H SAMUEL mark demonstrates Respondents' bad faith. See, Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D200-0269.
Under paragraph 4(b) (iv) of the Policy, the Panel may find that a domain name was registered and used in bad faith where the respondent has used it in an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on it.
As shown in the printouts of Respondents' website submitted by Complainant, the website contains many sponsored links to websites of jewelers who compete with Complainant (e.g., Gordon's, Whitehall, Osterman). Respondent thus appears to be trying to generate income by being paid with every click made by Internet users – attracted to Respondents' website after mistyping Complainant's mark– on the sponsored links. The Panel is satisfied that by using the Domain Name as described, Respondents are attempting to attract for commercial gain Internet users to websites via “sponsored links”, by creating a likelihood of confusion with Complainant's H SAMUEL mark as to the source, sponsorship, affiliation, or endorsement of the websites or location or of a product or service on Respondents' website or location. See DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc., WIPO Case No. D2007-1424).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <hsamuels.com> be transferred to Complainant.
Harrie R. Samaras
Dated: September 7, 2009