WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TESCO Personal Finance plc t/a TESCO Bank v. Protected Domain Services Customer ID: NCR-1078639
Case No. D2011-0084
1. The Parties
The Complainant is TESCO Personal Finance plc t/a TESCO Bank of Edinburgh, United Kingdom of Great Britain and Northern Ireland, represented by Brodies LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Protected Domain Services - Customer ID: NCR-1078639 of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <TESCObank.org> is registered with GoDaddy.com, Inc. (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2011. On January 17, 2011, the Center transmitted by email to GoDaddy.com’s Disputes Administrator a request for registrar verification in connection with the disputed Domain Name. On January 17, 2011, 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 January 19, 2011, providing the registrant and contact information disclosed by GoDaddy.com, Inc, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2011.
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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. On February 8, 2011, the Center received an e-mail communication from a person claiming to be the owner of the disputed Domain Name and requesting more information about the proceedings. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 17, 2011.
The Center appointed Hugues G. Richard as the sole panelist in this matter on February 28, 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
The Complainant is a financial institution licensed in the United Kinggdom of Great Britain and Northern Ireland as a bank by the Financial Services Authority under the Financial Services and Markets Act 2000 and a trade mark licensee of TESCO Stores Limited, head of an international retail group operating in 14 countries.
The Complainant is the licensee of a large number of trade mark registrations owned by TESCO Stores Limited comprising the word TESCO including United Kingdom registration no. 2258927 dated July 06, 2001 (filed January 23, 2001) TESCO (word mark).
The Complainant is also the licensee of trade mark registrations owned by TESCO Stores Limited including United Kingdom registration no. 2058853 dated March 24, 2000 (filed March 04, 1996) TESCO (logo mark) as well as United Kingdom registration no. 2533462 dated April 02, 2010 (filed December 02, 2009) TESCO Bank mark.
All of the above registrations are for, inter-alia, class 36, financial services.
TESCO Stores Limited's website is at “www.TESCO.com”.
TESCO Stores Limited has authorized the Complainant to commence and prosecute these proceedings.
The Domain Name was registered on August 21, 2009 and is connected to a parking page that, until January 24, 2011, states that the Domain Name does not exist.
On June 08, 2010, the Complainant wrote to Protected Domain Services, Customer ID: NCR – 1059461 drawing attention to the Complainant’s rights and its concerns regarding what it perceived to be the deceptive nature of the use being made of the Domain Name and demanding voluntary transfer of the Domain Name. The Complainant received no reply to that letter.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the TESCO word trade mark and the TESCO logo trade mark which it uses under license.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect to the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that this is a clear case of cybersquatting and that the registration is an abusive registration within the meaning of sub-paragraphs 4(b) (ii) of the Policy.
The Respondent did not reply in timely fashion within the deadline set forth by the Center.
In an email dated February 8, 2011, a person claiming to e the owner of the disputed Domain Name stated that the Domain Name means “TES Cooperative Bank” and is for future use. Furthermore, in the same email, the alleged owner of the disputed Domain Name stated that no prior notice (apparently referring to the Notification of Complaint which was sent January 24, 2011)1 was forwarded on to the Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, 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; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s submission that the registration of the Domain Name <tescobank.org> is confusingly similar both to the trade mark registration of the TESCO word mark and the TESCO logo mark (numbers 2258927 and 2058853) is particularly true when considering the fact that the addition of the word “Bank” simply suggests financial services and links clearly to class 36 in which these marks are registered. The Domain Name is also confusingly similar to the trade mark TESCO Bank (filed December 02, 2009) employed in financial services by the Complainant in anticipation of the filing.
The Complainant has established that it has rights as a licensee in the TESCO marks through registrations with the Intellectual Property Office (the “IPO” hereafter) and continuous use of the marks in commerce since TESCO Stores Limited was formed in or around 1996, predating the registration of the Domain Name.
The Respondent’s domain name atESCObank.org> consists mainly of the TESCO mark and it has been recognized that the addition of a generic term as the word “Bank” to a trade mark does not prevent a finding of confusing similarity. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259. (A registrant that simply adds numerals or generic terms to the complainant’s trade mark does not avoid a finding that domain name to be confusingly similar to a trade mark in which the complainant has rights). Furthermore, the addition of the word “Bank” also suggests a connection between the Domain Name and the TESCO mark which could be confusing to members of the public.
Accordingly, the Panel finds that Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 741828, August 18, 2006 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant alleges that the TESCO marks have been used in connection with financial and banking services for more than 10 years prior to the registration of the Domain Name, thus establishing a significant market reputation in that area (the TESCO trademark is registered under number 2058853 in the United Kingdom and filed on March 4, 1996 in relation with banking services under class 36).
The TESCO” mark and the word “Bank” is the Complainant’s trading name and comprises 3 clear marks licensed to the Complainant (TESCO word mark, registration number 2258927, TESCO logo mark where the colors red and blue are claimed as an element of the mark, trade mark registration number 2058853, and TESCO BANK trade mark registration number 2533462).
Furthermore, there is no evidence to suggest to the Panel that the Respondent uses the Domain Name for legitimate noncommercial use as it has simply been parked, thus preventing the Complainant from registering the Domain Name.
Accordingly, the Panel finds that Complainant has established Policy 4(a)(ii).
C. Registered and Used in Bad Faith
It is less clear whether the Complainant has proved the third element in paragraph 4(a)(iii) of the Policy, namely that the Domain Name “has been registered and is being used in bad faith” by the Respondent. The use of the conjunction “and” in the provision requires the Complainant to prove use in bad faith as well as registration in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In light of the facts established by the Complainant, the Panel finds that the Respondent does not conduct any legitimate commercial or noncommercial business in the United Kingdom. The Panel further finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made. Given the Complainant’s numerous trade mark registrations for, and its wide reputation in, the trade mark TESCO, it is not possible for the Panel to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of the registration. Furthermore, the Domain Name registration post-dates the majority of the Complainant’s relevant trade marks and the license of those trade marks to the Complainant, although the Complainant did not openly start trading as TESCO Bank until December 2009, it was clear in the market that this was the Complainant’s intention from an earlier stage.
The alleged owner of the disputed Domain Name has stated in previous correspondence with the Center that the Domain Name was to be of future use under TES Cooperative Bank, but has failed to provide any other proof on the matter and his failure to respond leads the Panel to conclude that the Domain Name <tescobank.org> has been registered in bad faith.
The additional requirement that the Complainant must prove is the use of the Domain Name in bad faith by the Respondent. The Domain Name <tescobank.org> does not resolve to a web site or other on-line presence and there is no evidence of any clear intention to use the Domain Name. There is no evidence of advertising, promotion or display to the public of the Domain Name. Finally, there is no evidence that the Respondent has offered to transfer, sell or rent the Domain Name to the Complainant. In short, there is no positive action being undertaken by the Respondent regarding the Domain Name.
The Panel also concludes, in the circumstances of this particular Complaint, that the passive holding of the Domain Name by the Respondent amounts to its acting in bad faith.
(i) The Complainant’s trade mark has a globally strong reputation and has been used in the United Kingdom and 13 other countries worldwide;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name;
(iii) The Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name.
In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the Domain Name in this particular case satisfies the paragraph 4(a)(iii) of the Policy that the Domain Name “is being used in bad faith” by the Respondent.
The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. Accordingly, the Panel requires that the Domain Name <tescobank.org> be transferred to the Complainant.
Hugues G. Richard
Dated: March 23, 2011