World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A.

Case No. D2010-2111

1. The Parties

1.1 The Complainant is Premier Farnell Corp. of Independence, Ohio, United States of America and Chicago, Illinois, United States of America, represented by McGuireWoods LLP, United States of America.

1.2 The Respondent is BlueHost.com, Bluehost Inc / Newark del Peru S.A. of Provo, Utah, United States of America and Lima, Peru.

2. The Domain Name and Registrar

2.1 The disputed domain name <newarkperuonline.com> (the “Domain Name”) is registered with FastDomain, Inc (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2010. The Complainant identified BlueHost.com as the Respondent and it would appear that at that time BlueHost.com was identified as the registrant on the publically available WhoIs register. On December 8, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2010, the Registrar transmitted by email to the Center its verification response in which it identified “Newark del Peru S.A.” as the registrant. The Center sent an email communication to the Complainant on December 15, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant, if it so wished, to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 20, 2010 in which Newark del Peru S.A and Bluehost Inc. was added as an additional Respondent to the Complaint.

3.2 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”).

3.3 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 December 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2011.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 17, 2011. 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.

4. Factual Background

4.1 The Complainant is a Delaware corporation which appears to be based in Chicago, Illinois. It is a subsidiary of Premier Farnell plc and part of the Premier Farnell group of companies (“PF Group”), which is, inter alia, a multi-channel distributor of electronic components. PF Group conducts operations in 24 countries and is listed on the London Stock Exchange. Its profits for the year ended January 31, 2010 were GBP 53.5 million.

4.2 Another one of the companies in the PF Group is Newark Corporation. It has traded since 1934 under the “Newark” name.

4.3 The Complainant is the owner of United States Registered trade mark no 3,820,458, registered on July 20, 2010 in classes 16, 35, 40, 41 and 42 for the word mark NEWARK.

4.4 The Complainant has used the NEWARK mark in the United States and international commerce since at least 2007. Its registered trade mark claims dates of first use and first use in commerce of 2007. It has spent over USD 10 million promoting the NEWARK mark in respect of its products and has generated GBP 310 million revenue under that mark.

4.5 According to the WhoIs data for the Domain Name, it was first registered on November 22, 2008.

4.6 Little is known about Newark del Peru S.A, save that it would appear that it is an entity based in Lima, Peru.

4.7 In September 2010 the Complainant received an email from one of its vendors which attached a copy of an email using the Domain Name that the contact had received from “Newark del Peru”. In that email “Newark del Peru” appeared to seek a quotation on the provision of a part. The vendor’s email stated as follows:

“I’ve received this inquiry from ‘NEWARK DEL PERU’. I checked their webpage and they say they are a ‘Peruvian Company’ and I have not found any connection with NEWARK USA.”

4.8 In an email later that month the vendor stated:

“In any case I need Kathy to verify if this company in Peru is linked to Newark USA ...”

4.9 As at the date of the Complainant the Domain Name was being used for a website in the name of “Newark del Peru” offering for sale electronic components. The Domain Name continues to be used in this manner as at the date of this decision.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant refers to the business of the PF Group, its registered mark and the extent of its advertising and activities under the “Newark” name. It claims that the NEWARK mark had “become distinctive and famous pursuant to Section 43(2) of the Lanham Act”.

5.2 It maintains that the Domain Name simply combines its mark with the descriptive term “online” and the geographical term “Peru”, “neither of which distinguishes the [Domain Name] from the Newark Mark”.

5.3 On the issue of rights or legitimate interests, the Complainant claims that the Respondent is using the Domain Name to promote “nearly identical” services as those provided by it and contends that its use of the Domain Name “will create confusion in the marketplace regarding whether [the] Respondent’s goods and services are sponsored by, or affiliated with, [the] Complainant – which they are not.” It confirms that there is “no connection between [the] Complainant and [the] Respondent”.

5.4 The Complainant further contends that the Respondent is “intentionally attempting to attract for commercial gain Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s Newark Mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s web site or of the products and services on the Respondent’s web site”. The Complainant also refers to the email correspondence with its vendor in September 2010, which is said to demonstrate that “its representative became confused as to the source of the email and thought there was a relationship between Newark and [the] Respondent.”

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 In this case, the Complainant amended the Complaint to name two respondents. Whilst the Complainant was entitled to do this, for the reasons that are set out in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987), WIPO Case No. D2010-0894, the Panel is of the view that this was not strictly necessary.

6.5 It is in any event apparent that in both the Complaint as originally filed and as amended that whatever entity is the “formal respondent”, the Complainant has treated “Newark del Peru S.A.” (or at least the entity responsible for the website operating from the Domain Name at the relevant times) as the person or entity whose intentions are relevant for the purposes of assessing rights, legitimate interests and bad faith. The Panel accepts that this is a proper basis upon which it can proceed in this case1 and (save where it is apparent that the contrary is intended) all references in the rest of this Decision to the Respondent are to be understood accordingly. However, nothing in this Decision is intended to involve any determination as to who is the correct Respondent for any other purpose, including for the purposes of determining the Mutual Jurisdiction to which the Complainant has submitted for the purposes of paragraph 3(b)(xiii) of the Rules.

A. Identical or Confusingly Similar

6.6 The Panel accepts that the Domain Name can only be most sensibly understood as the terms “Newark” “peru” and “online” in combination with the “.com” TLD. “Newark” is a term in which the Complainant has registered trade mark rights. The addition of the geographical term “peru” and the descriptive term “online” do not significantly detract from the term “Newark” in the Domain Name. In the circumstances, the Panel finds that the Domain Name is “confusing similar” (as those words are understood under the Policy) to a trade mark in which the Complainant has rights2. The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.7 The Complainant’s contentions when it comes to the issue of rights or legitimate interests are extremely brief. Although slightly different words are used, in essence the Complainant case here is no different to its contentions so far as bad faith use are concerned; namely that the Respondent is using the Domain Name because of its associations with the Complainant’s mark and with a view to causing “confusion in the market place” as to whether the Respondent’s goods and services are connected with the Complainant.

6.8 It is customary in such cases for complainants to assert that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply and to claim that the burden of proof then shifts to the respondent to show that such rights or legitimate interests exists.

6.9 The Complainant has not done so in this case. However, in the view of the Panel it does not matter. To demand that the Complainant makes such assertions in the opinion of the Panel elevates form over substance. At least so far as legitimate interests are concerned, the key question is the manner in which a respondent is using and has used the domain name.

6.10 It has long been clear that to use a domain name that incorporates the mark of another in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark, even if that term is also more generally used for the name of the Respondent’s business, does generally not involve use in “connection with a bona fide offering of goods or services” within the scope of paragraph 4(c)(i) of the Policy (see, for example, Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169 and AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Mustafa Kaya and Aida Turizm Seyahat Acenteliği LTD. Şti, WIPO Case No. D2008-1130). This Panel would go further and say if a panel concludes that it is clear that this is the primary reason why a domain name is being used, that is of itself positive evidence that no right or legitimate interest exist. In the absence, of evidence or argument to the contrary that will usually be sufficient.

6.11 In the present case and for the reasons set out under the heading of bad faith below, the Panel has little difficulty in concluding that the Respondent is using the Domain Name unfairly to capitalise upon or otherwise take advantage of a similarity with the Complainant’s mark. There is no other evidence or material before the Panel that might suggest some other legitimate interest on the part of the Respondent in the “Newark” name. The Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.12 The Panel accepts the Complainant’s contention that the Respondent is intentionally using the similarity and potential confusion between the Domain Name and the Respondent’s NEWARK mark in order to attract Internet users to its website. There is no evidence before the Panel as to the extent of the reputation of the Complainant’s NEWARK mark in Peru. However, it is a term that has no obvious generic or descriptive association with the provision of electronic components. In the Panel’s view, the only sensible explanation for why the Respondent is using the Domain Name for a website that sells such products is to take advantage of that association with the Complainant. And if this is so, it also seems reasonably clear that it was with this purpose in mind that the Domain Name was initially registered.

6.13 Further it seems more likely than not to the Panel that the choice of the combination of the terms “Newark”, “online” and “peru” were deliberately chosen by the Respondent in order to suggest that any website operating from the Domain Name was the Complainant’s authorised “online” and Peruvian business. In that respect the email correspondence received by the Complainant from one of its vendors in September 2010 is broadly supportive of the Complainant’s claims that Internet users were likely to be confused by the use of the Domain Name (even though this particular vendor appears to have suspected that no legitimate connection existed from the start).

6.14 In the circumstances, the Panel accepts that the Complainant has shown that the Respondent is using the Domain Name in a manner that falls within the scope of paragraph 4(b)(iv) of the Policy and has successfully established that the Domain Name was registered and is being used in bad faith. It has therefore made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <newarkperuonline.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Dated: January 19, 2010


1 For an explanation as to why this is the case, see paragraphs 6.17 and 6.18 of the Rapidshare decision supra.

2 For a more detailed analysis of the assessment of confusing similarity where a domain name contains the mark of the Complainant in its entirety, see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.

 

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