WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dick Smith Electronics Pty Limited v. Marcus Salas
Case No. D2011-0486
1. The Parties
The Complainant is Dick Smith Electronics Pty Limited of Sydney, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Marcus Salas of Campbell, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thedicksmithelectronics.com> (the “Domain Name”) is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 16, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On March 17, 2011, Melbourne IT Ltd. 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 March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2011.
The Center appointed Ian Lowe as the sole panelist in this matter on May 2, 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 an Australian company and a retailer of various goods and services across Australia and New Zealand. Since 1968, the Complainant and its predecessor in title have continuously used the name DICK SMITH ELECTRONICS as their corporate and business name and as a trade mark. The Complainant is the registered proprietor of Australian trade mark number 625910 DICK SMITH ELECTRONICS and device in Class 42 registered as of March 25, 1994 and other Australian trade marks comprising DICK SMITH ELECTRONICS and DICK SMITH. The Complainant has operated the website at “www.dicksmithelectronics.com” since at least March 2000.
The Domain Name was registered on January 14, 2011. At the date of the Complaint, the Domain Name did not resolve to a valid website. As at January 28, 2011, prior to a cease and desist letter being issued on behalf of the Complainant, the Domain Name resolved to a website containing text and images from the Complainant’s website, including photographs of the Complainant’s stores and the Complainant’s tagline “Talk to the Techxperts”.
5. Parties’ Contentions
A summary of the submissions on behalf of the Complainant is as follows:
1. The Complainant and its predecessor in title have carried on business in Australia under the name “Dick Smith Electronics” since 1968. The Complainant has conducted extensive advertising of its products and services on television and through other media. It presently has approximately 335 stores in Australia and 72 in New Zealand and had total sales of AUD 1.53 billion in the year ending June 2010. As a result of its trading activity, the Complainant has built up significant goodwill in the name DICK SMITH ELECTRONICS.
2. The Domain Name is confusingly similar to the trade mark DICK SMITH ELECTRONICS in which the Complainant has both registered and unregistered rights since the Domain Name is identical save for the addition of the word “the”.
3. The Respondent, Marcus Salas, has no rights or legitimate interests in respect of the Domain Name. He is not known by the Domain Name and has not acquired any rights or interests in the DICK SMITH ELECTRONICS mark. The Complainant has not licensed or otherwise permitted the Respondent or any person to use its DICK SMITH ELECTRONICS trade mark, whether as a domain name or otherwise.
4. The website to which the Domain Name resolved claimed to be owned by “The Dick Smith Electronics Limited” but the Complainant can find no record of any such company.
5. The Domain Name is not being used in connection with a bona fide offering of goods or services. The use by the Respondent on the website of text and images taken from the Complainant’s website appeared to be a blatant attempt to pass off the Respondent’s website as being linked to the Complainant’s business. Such websites are often set up for the purposes of “phishing” in an attempt to acquire the credit card details of the users of the website.
6. For all the reasons set out above the Complainant submits that it is self-evident that the Domain Name was registered and is being used in bad faith. The Respondent was clearly aware of the Complainant’s business and reputation and was intentionally attempting to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 Domain Name comprises the Complainant’s registered trade mark DICK SMITH ELECTRONICS together only with the definite article “the”. The “.com” domain suffix may be ignored for the purpose of determining identity or confusing similarity with the Complainant’s mark.
The Panel accordingly finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
As the Second Edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.
Here, as the Complainant has pointed out, there is nothing to suggest that the Respondent has any such rights or legitimate interests. The Respondent used the Domain Name for a website that incorporated text and images from the Complainant’s website and made other references that can only have been intended to imply an association with the Complainant that did not exist. The Respondent has chosen not to respond to the Complaint or put forward any evidence of rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complaint exhibits copies of pages from the website at the Domain Name as at January 28, 2011. These purport to offer for sale a wide range of electronic products including cameras and computers, apparently on behalf of “The Dicksmith Electronics Limited”. On the Complainant’s case, however, it incorporates photographs of the Complainant’s stores and includes not only text and images taken from the Complainant’s website but also the mark DICK SMITH in the identical style to that used by the Complainant. The text includes notes presumably taken from the Complainant’s website on the difficulties of making deliveries during the floods in the states of New South Wales, Queensland and Victoria in Australia – even though the Respondent is based in the United States of America.
The Panel accepts the Complainant’s assertions that the Respondent has not been authorized by the Complainant to use the Dick Smith or Dick Smith Electronics names. Following the Complainant sending a cease and desist letter, the Domain Name no longer resolves to an active website. In all the circumstances, the Panel is satisfied that the Respondent registered and has used the Domain Name for the purpose of attracting users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the “source, sponsorship, affiliation or endorsement” of the website or of a product or service on the website.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith in terms of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <thedicksmithelectronics.com> be transferred to the Complainant.
Dated: May 16, 2011