WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B & Q plc v. Milan Kovac
Case No. D2011-1420
1. The Parties
The Complainant is B & Q plc of Eastleigh, Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Milan Kovac of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <wwwbandq.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2011, the Registrar 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 August 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 29, 2011, the Center transmitted by email to the parties in both Slovak and English regarding the language of proceedings. On September 1, 2011, the Complainant requested an extension to the submission due dates for both the amendment to the Complaint and the language of proceedings. The Center granted the extension request and notified the new due dates to the parties on September 1, 2011. The Complainant filed an amended Complaint on September 5, 2011. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 September 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 5, 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.
As a preliminary matter, the Panel considers the proper language of the proceeding. The Complaint was submitted in English. On August 29, 2011 the Center informed the Complainant that the language of the registration agreement in respect of the disputed domain name is Slovak. According to paragraph 11(a) of the Rules, in limited circumstances the Panel may accept the language of the complaint when it is different from the language of the registration agreement. The Complainant submits that English should be treated as the language of the proceedings for the following reasons. First, the website corresponding with the disputed domain name is in English. Moreover, the links from that site are all to English language websites.1 Secondly, the Respondent has been named in previous UDRP proceedings as a respondent and in those cases English has been adopted as the language of the proceedings in spite of another language of the registration agreement.2 Finally, the Complainant reasons that strict adherence to the Rules would result in delay and unjustified cost to the Complainant in circumstances where the Respondent has shown no interest in representing itself.
The Panel accepts the good sense of those representations in this case and so determines that the language of the proceedings shall be English.
4. Factual Background
The facts relevant to the findings and decision in this case are that:
The Complainant is a British company which sells a wide variety of building materials, home improvement and gardening supplies, as well as accessories for the home including household goods and appliances.
The website at the principal domain name used by the Complainant is “www.bandq.com”.
There has been no commercial or other relationship between the parties.
The disputed domain name was registered on December 16, 2009.
At the time the Complaint was filed, a website corresponding with the disputed domain name promoted through a link farm the goods and services of other “DIY” and building material suppliers.
5. Parties’ Contentions
The Complainant asserts trade mark rights in B & Q and alleges that the disputed domain name is either identical or confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy3. The Panel finds that the Complainant has trade mark rights in B & Q acquired through registration4. Redundant to paragraph 4(a)(i) of the Policy, but of relevance to bad faith, the Panel also makes the finding that the Complainant has common law trade mark rights in B & Q.5
The remaining question is whether the disputed domain name <wwwbandq.com> is confusingly similar to the Complainant’s trade mark. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.6 In addition, it is recognized that the letters "www" have no distinguishing capacity in the context of domain names and may only have the effect of focusing particular attention on the term(s) succeeding them.
Subtraction of these non-distinctive integers leaves only the Complainant’s trade mark which has been entirely assumed, save for the fact that use of the ampersand character is outside the permissible ASCII character-set for domain names. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests7.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The publicly available WhoIs information does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not.
The Respondent has not provided any evidence that it used the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Panel finds that a negative inference arises from the evidence provided by the Complainant of a website corresponding with the disputed domain name, which is essentially a link farm to other building suppliers and DIY specialists, some, such as Wicks, being direct competitors of the Complainant in the UK market.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint. By failing to do so, it has also failed to discharge the onus of production which fells to it to show that it has rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy in that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to a web site or on-line location, by creating the requisite likelihood of confusion with the Complainant’s trade mark.
The Complaint has accordingly established the third and final element 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 disputed domain name, <wwwbandq.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: October 10, 2011
1 See Kingspan Group plc v. Dyk Dylina/Kingspaninsulation.com Privacy--Protect.org, WIPO Case No. D2011-0570, which held that “taking into account the contents of the web site at the disputed domain name, the Panel finds, in accordance with paragraph 11 of the Rules, that it is appropriate in this case that the language of the proceeding be English.”
2 See Barclays bank Plc v. BARCLAYSCAPITALCAREERS.COM Privacy--Protect.org / Milan Kovac, WIPO Case No. D2011-1015 which held that “this Panel is convinced that the Respondents are clearly able to understand English language, and their choosing Slovak as the language of the Registration Agreement aimed at making any domain name recovery efforts against them difficult and disproportionately costly.”
3 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
4 The Complainant has a portfolio of registered trade marks for B & Q including, by way of one example only, UK registration number 1327953.
5 The Complainant has used the B & Q name since 1969. It currently has 330 stores in the UK and Ireland. In 2009-10, it reported total sales of £4.0 billion. Its advertising spend in 2010-11 is approximately £160 million. Its website www.bandq.com receives more than 1.2 million unique visitors per year.
6 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
7 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.