The Complainant is Dyson Limited, of United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Wragge & Co., of United Kingdom. .
The Respondent is Spares 247 Limited, United Kingdom.
The Disputed Domain Names <dyson24-7.com> and <dyson247.com> are registered with NetNames.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2009. On August 13, 2009, the Center transmitted by email to NetNames a request for registrar verification in connection with the Disputed Domain Names. On, August 14, 2009, 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” 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 August 18, 2009. At the Complainant's request the administrative proceeding was suspended from September 4, 2009 until September 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on October 1, 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 Complainant is a well known vacuum cleaner company based in the United Kingdom. It operates in more than 45 countries and owns a series of registered word marks for DYSON, including Community Trade mark 000036855 and United Kingdom Trade Mark 2195429, both of which predate the date of registration of the Disputed Domain Names by some ten years. The Complainant has operated a website under the “www.dyson.com” and “www.dyson.co.uk” websites since around 1998.
The Respondent is based in the United Kingdom and appears to sell spare parts for vacuum cleaners from websites at the Disputed Domain Names. It registered the Disputed Domain Names on March 12, 2009.
The Complainant submits that the Disputed Domain Names are identical or confusingly similar to its registered word marks DYSON. This is on the basis that the suffixes “247” and “24-7” can be ignored as commonly used or generic terms because they refer to continual trading hours and that the key distinguisher in the Disputed Domain Names is the word “Dyson”.
The Complainant says that the Respondent is not using its mark under license, has no permission to use its marks or relationship with the Complainant, has not been commonly known by the Disputed Domain Names, has not acquired any trade mark rights in the name or mark DYSON and is not making a bona fide use of the Disputed Domain Names. According to the Complainant, the fact that the Respondent deliberately chose the Disputed Domain Names when it could have operated its spare parts business under some of its other websites from different domain names is indicative of bad faith. Further, the Respondent is passing itself off as the Complainant in seeking from the goodwill and reputation attaching to the Complainant's DYSON trademark. As a result the Respondent has no rights or legitimate interests in the Disputed Domain Names.
In addition the Complainant says that the Disputed Domain Names were registered in bad faith because its trade marks were registered at least 10 years before the Respondent's registration of the Disputed Domain Names. Further, the Respondent is operating websites at the Disputed Domain Names which appear to imitate the distinctive look and feel of the Complainant's website in particular in terms of its style, use of colours, presentation and images and use of the Complainant's logo.
Although some of these elements were changed following the Complainant's communications the pages still bear considerable similarity and are indicative of the Respondent deliberately copying the Complainant's get-up in order to mislead consumers using search engines and browsing websites. The Complainant has received numerous consumer complaints from people who were confused by the Respondent's website into thinking that it belonged to or was authorised by the Complainant. Subsequent to further communication with the Respondent it inserted a disclaimer onto its website which according to the Complainant is not placed properly or worded sufficiently clearly to dispel consumer confusion.
The Respondent has demonstrated a pattern of conduct under Paragraph 4(b)(ii) of the Policy in that it has registered not only the Disputed Domain Names but also their equivalent in the “.uk” domain name space, namely <dyson247.co.uk> and <dyson24-7.co.uk>. all of which post date the Complainant's rights. In addition the Respondent has undertaken similar domain name registrations using the trade mark “flymo”. Due to the repute of the Complainant's name, marks and products the Complainant says that it is not possible that the Respondent did not know of the Complainant's rights and has rather registered the Disputed Domain Names to prevent the Complainant from reflecting its trade mark in a corresponding domain name in particular based on the Respondent's pattern of conduct or in the alternative primarily for disrupting the business of the Complainant under Paragraph 4(b)(iii) of the Policy or to intentionally attract consumers to its website with a view to confusing them in terms of Paragraph 4 (b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
The Complainant has demonstrated that it owns registered trade mark rights in its DYSON trade mark and the Panel accepts that the Complainant's trade mark has a very substantial reputation in the United Kingdom.
The Panel agrees with the Complainant's analysis that the key identifier in the Disputed Domain Names is the “Dyson” element and that both of the “247” or “24-7” elements in the Disputed Domain Names merely connote “24 hours a day” and are non-distinctive. Accordingly, they fall within the category of suffixes which can be ignored for the purposes of determining identicality or confusing similarity under this element of the Policy ( Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing / Burden Marketing, WIPO Case No. D2005-0313, and the Panel considers that the Disputed Domain Names are confusingly similar to the Complainant's DYSON trade mark.
The Complainant therefore succeeds in relation to the first element of the Policy.
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and it is then for the Respondent to rebut this case.
In this case the Complainant says that the Respondent is not using its mark under license, has no permission to use its marks or relationship with the Complainant, has not been commonly known by the Disputed Domain Names, has not acquired any trade mark rights in the name or mark DYSON, is not commonly known by that name or mark and is not making a bona fide use of the Disputed Domain Names. The Panel accepts the Complainant's contention that the Respondent's conduct in operating a website at the Disputed Domain Names which purposefully seeks to emulate the Complainant's website in order to confuse potential customers is not consistent with any argument that the Respondent may have legitimate interests in the Disputed Domain Name. Further the Respondent's conduct, as described further below, in registering similar domain names using other reputed trade marks is further evidence of having no legitimate interests. The Panel finds that the Complainant has made out its prima facie case under this element. The Respondent has not rebutted this case.
Although there are circumstances in which a reseller has been found to have legitimate interests by panels for example in the circumstances set out in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, the Panel finds that this case falls outside the Oki Data categories indicating that a reseller does have a legitimate interest. Quite apart from the fact that the Respondent has never been authorised by the Complainant to sell its spare parts or as a dealer, the Respondent appears to have made every effort to present itself as having some association with the Complainant in order to confuse potential customers.
Even after receiving various communications from the Complainant, the look and feel of the Respondent's website remains at the very least evocative of the Complainant's site and is still potentially confusing. Even if the Respondent did subsequently insert a statement in the Home Page text that “Dyson24-7 is part of the Spares 24-7 Group of Websites” this is inadequate in the Panel's view to dispel the potential confusion. Further, the Respondent has registered not only one but two domain names incorporating the Complainant's mark and appears to have undertaken similar conduct in relation to other trade marks.
This conduct is not consistent with that of a bona fide reseller who has a legitimate interest in its domain name in accordance with the Oki Data factors or generally under the Policy. Accordingly, the Panel finds that the Complainant succeeds in relation to this element of the Policy.
The Panel is persuaded by the Complainant's submission that the Respondent has used the Disputed Domain Names intentionally to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to the source or affiliation of its websites under Paragraph 4(b)(iv) of the Policy. For similar reasons as outlined under Section B above it appears to the Panel that the Respondent has set out to confuse customers into thinking that it has some association or affiliation or endorsement by the Complainant by closely copying the look and feel of the Complainant's website and not attempting to clearly differentiate its business from that of the Complainant.
Internet users seeing the Disputed Domain Names incorporating the Complainant's trade mark together with the connotation of 24 hour service may well be confused into thinking that the website to which the Disputed Domain Names resolve has some association with the Complainant which it does not. The “look” of the website as described above is at the least evocative of Complainant's and the DYSON mark is used most prominently on the website. Unless a customer looks carefully and properly interprets the statement of ownership as noted above, they are in the Panel's view likely to assume that the Respondent is authorised by the Complainant when this is simply not the case. In this way the Respondent is attempting to trade off an association with the Complainant which is not consistent with an argument that the Respondent is operating in good faith and as a bona fide reseller of the Complainant's spare parts.
This view is only reinforced by the Respondent's conduct in registering equivalent domain names incorporating other reputed trade marks and for similar purposes.
Accordingly the Complaint succeeds in relation to the third element of the Policy.
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 <dyson24-7.com> and <dyson247.com> be transferred to the Complainant.
Dated: October 15, 2009