The Complainant is Secretary of State for the Department for Work and Pensions of London, United Kingdom of Great Britain and Northern Ireland, represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Oliver Dujmovic (707585) of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name, <directgov247.com> (the “Domain Name”), is registered with Ascio Technologies Inc. – Denmark (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2010. On June 25, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2010, the Registrar 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 July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 23, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 29, 2010. 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 the registered proprietor of, inter alia, United Kingdom of Great Britain and Northern Ireland (“UK”) trade mark registration No. 2347420 dated October 31, 2003 DIRECTGOV (in stylized form) for various goods and services in classes 9, 16, 35, 36, 38, 39, 40, 41, 42, 44 and 45.
The Complainant has operated a website connected to its domain name <direct.gov.uk> since April 2004, through which members of the public can access various UK government online services. The banner colour for the Complainant's website is orange.
The Domain Name was registered on March 11, 2010. As at the date of the Complaint it was connected to a website which described itself as “the first independent on-line Public sector community”. The site's slogan was “The Public Sector In One Place”. The predominant livery of the site was orange. From the screenshots exhibited to the Complaint, the site appears to have featured advertising links to sites offering a wide variety of goods and services. The Panel has been unable to access the site. It appears to have been taken down
The Complainant contends that the Domain Name is confusingly similar to the Complainant's DIRECTGOV registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Domain Name features the word/mark DIRECTGOV, the numeral ‘247' (no doubt intended to represent 24/7 or 24 hours per day 7 days per week) and the generic ‘.com' suffix.
It is now well-established that for the purposes of assessing identity/confusing similarity for this purpose, the domain suffix may be ignored. DIRECTGOV (albeit in stylized form) is the Complainant's registered trade mark. ‘247' will be meaningless to some and descriptive to others.
The Panel finds that the Domain Name is confusingly similar to the Complainant's registered trade mark
While it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in relation to matters, which will often be known only to the respondent. Accordingly, it is now well-established that for the purposes of paragraph 4(a)(ii) of the Policy, the Complainant's task is to establish a prima facie case, and it is then for the Respondent to answer that case.
The Complainant contends that the Respondent selected the Domain Name because of its similarity to the Complainant's trade mark and with a view to trading off the Complainant's trade mark.
The Complainant accepts that the Respondent has been trading under and by reference to the Domain Name, but contends that such a use, which he claims is bound to lead to confusion, cannot constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy.
The Complainant observes that neither of paragraphs 4(c)(ii) or (iii) of the Policy is applicable and states that he has no connection with the Respondent and has not given the Respondent any permission to use the trade mark.
The Panel accepts the Complainant's claim that the Complainant's trade mark is well-known among UK consumers seeking access to the UK government's online services. The Panel also agrees that on the face of it, the Respondent's choice of domain name is likely to have been motivated by a desire to align the website with the Complainant and thereby to attract Internet users to the Respondent's website. In coming to that conclusion, the Panel takes into account not just the nature of the Domain Name itself, but also the audience to which the Respondent's website is targeted (primarily public sector employees) and the orange livery (similar to the Complainant's livery) which the Respondent has adopted for his website.
The Panel finds that the Complainant has made out a prima facie case and that the Respondent has a case to answer.
The Respondent not having provided a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
As indicated above, the Complainant contends that the Respondent selected the Domain Name because of its confusing similarity to the Complainant's trade mark and with a view to trading off the Complainant's trade mark. The Complainant contends that Internet users will visit the Respondent's website, believing it (by virtue of the Domain Name) to be a website of or associated with the Complainant. Even if some will appreciate from the fact that it claims to be an independent website that it is not a government website, the nature of the website, its content and its livery are likely to lead a significant number to believe that at the very least the website is endorsed or authorized by the Complainant.
The Panel agrees. On the evidence before the Panel, which the Respondent has not seen fit to challenge, the Panel is of the view that the Respondent selected the Domain Name to attract Internet users to his website, a commercial website, hoping and anticipating that a significant proportion of those visitors to his site would believe that the website is a website of or authorized by the Complainant. The Panel sees no reason to doubt that the Respondent succeeded in his objective.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Name, <directgov247.com>, be transferred to the Complainant.
Dated: August 2, 2010