WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Argos Limited v. PrivacyProtect.org/ "Maxi Argos"/ Monica Kenah
Case No. D2011-2072
1. The Parties
The Complainant is Argos Limited of Milton Keynes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is PrivacyProtect.org,of Nobby Beach, Australia, "Maxi Argos", and Monica Kenah, of Lawrenceville, New Jersey, United States of America, the latter represented pro se.
2. The Domain Name and Registrar
The disputed domain name <maxiargos.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2011. On November 24, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Complainant filed an amended Complaint on November 25, 2011. The Center verified that the Complaint 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 November 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2011. A response was sent to the Center on December 1, 2011 from the Respondent Monica Kenah, further communications from the Respondent Monica were submitted to the Center via email on December 13, 2011 and December 21, 2011.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January 12, 2012. 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 high street and online retailer, who has been trading in the United Kingdom and Ireland. The Complainant is owner of a number of ARGOS trademarks, including:
- European Community word mark 450858 ARGOS which was filed in 1997 and registered in 1999;
- European Community word mark 2057263 ARGOS which was filed in 2001 and registered in 2006; and
- United Kingdom word mark 2116587 ARGOS which was filed in 1996 and registered in 2000 (the “trademarks”).
The disputed domain name was registered on November 9, 2011.
5. Parties’ Contentions
The Complainant operates about 750 stores in the United Kingdom and Ireland, and is part of the largest non-food retail chain in the United Kingdom. 33 million of the Complainant’s promotional catalogues are printed and distributed every year. Since 2000, the Complainant’s has been operating a website at <www.argos.co.uk> which receives hundreds of million hits per year and through which it trades extensively with the public. The Complainant’s annual turnover for the financial year ending in February 2011 exceeded GBP 1.4 billion, and the Complainant has an annual marketing spend which exceeds GBP 45 million. For the past 35 years the Complainant has exclusively conducted its retail activities under the mark ARGOS, and has a significant market share in, amongst other things, sport and leisure equipment, toys, do-it-yourself products, jewelry, furniture and consumer electronics. As a result of this, the Complainant acquired significant and substantial goodwill in the trademarks in the United Kingdom and Ireland.
If the trademarks are used with a non-distinctive prefix such as “maxi”, members of the public in the United Kingdom and Ireland are highly likely to infer a connection with the Complainant. They may particularly believe that the prefix “maxi” is used in a descriptive sense, for example to denote the sale by the Complainant of a more extensive, or higher value, range of goods than those available on the Complainant’s regular website. Accordingly, the disputed domain name is confusingly similar to the Complainant’s trading name and the trademarks.
The website under the disputed domain name falsely claims that it is operated by the Complainant, and uses the Complainant’s word and figurative trademarks, including the trademarks, and the Complainant’s strap line. The website under the disputed domain name also falsely claims that it is operated by the Complainant’s parent company, Home Retail Group plc. Specifically, the website contains the flowing text:
“MaxiArgos Limited is a member of the Home Retail Group which includes MaxiArgos Business Solutions Limited, Home Retail Group Personal Finance Limited, Home Retail Group Card Services Limited, Home Retail Group Insurance Services Limited, Homebase Limited and their associated companies from time to time. A list is available on request from the Company Secretary, Home Retail Group plc, […]”.
All mentioned companies are affiliates of the Home Retail Group plc, except for “MaxiArgos Limited” and “MaxiArgos Business Solutions Limited”, neither of which is the registered name of a United Kingdom company. Further, significant extracts from the Complainant’s website have been reproduced on the website under the disputed domain name, including the general terms and conditions which are almost identical to those of the Complainant.
The Complainant sent a cease and desist email to the Respondent, to which it did not reply. When a Complainant’s representative called a Respondent’s representative, the latter falsely claimed that the Respondent was part of the Complainant’s parent company and was intended to especially target international customers. The Complainant has also contacted its customers who have ordered goods on the website under the disputed domain name and paid for the purchase, but never received the goods they ordered, suggesting that the Respondent’s use of the disputed domain name is fraudulent.
According to the Complainant it follows from all this that the Respondent has not been using the disputed domain name in connection with bona fide offering of goods and services. On the contrary, the Complainant believes that Respondent’s clear indentation to impersonate the Complainant by adopting the Trademarks has been demonstrated by these events.
Consequently, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant claims that it is self-evident that the Respondent has registered the disputed domain name to impersonate the Complainant, and to induce internet users to purchase goods, which resemble the ranges and/or types of goods supplied by the Complainant, from the website under the disputed domain name in the mistaken belief that they are entering into a transaction with the Complainant. To the Complainant’s knowledge none of the goods purportedly purchased though the website of the Respondent have been supplied. Consequently, the Respondent is intentionally seeking to attract, for commercial gain, Internet users to its website, to which the disputed domain name resolves, by falsely claiming to be part of the Complainant’s group of companies, apparently with a view to inducing those Internet users to enter their credit card details. This is evidence of the Respondent’s registration and use of the disputed domain name in bad faith.
The Respondent did not submit a response in this case.
In emails of on December 13, 2011 and December 21, 2011 to the Center, an individual named Monica Kenah, who is the holder of the disputed domain name according to the public WhoIs, claimed that she never registered the disputed domain name, that she has never used or owned the email address confirmed by the concerned registrar and that she has been the victim of an identity theft for which he has notified “the authorities” and the Federal Trade Commission, and that she has filed a complaint with the concerned registrar.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is owner of the trademarks which are undisputedly part of the disputed domain name. In the disputed domain name the trademarks are only preceded by the descriptive word “maxi”, which prefix rather reinforces the element “Argos” in the disputed domain name and certainly does not take away the similarity between the disputed domain name and the trademarks. The Panel is of the opinion that the disputed domain name actually confused consumers into believing that the website under the disputed domain name (and therefore the disputed domain name itself) originates from the Complainant, and, what is even more striking, was actually designed to create such confusion.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Complainant has convincingly demonstrated that the disputed domain name is used for phishing, and the Respondent does not rebut any of the allegations brought forward by the Complainant, the Panel finds that the Respondent does not have any right or legitimate interests in respect of the disputed domain name.
Consequently, the Panel finds that the second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy, the circumstances that the Respondent, when registering and using the disputed domain name has “intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s web site or location or of a product or service on the holder’s web site or location” shall be evidence of the registration and use of the disputed domain name in bad faith.
The Panel is persuaded on the record (which the Respondent has not rebutted) that the required evidence of the registration and use of the disputed domain name in bad faith as meant in paragraph 4(b)(iv) of the Policy was made available by the Complainant and convincingly demonstrated that the purpose of the website, to which resolves the disputed domain name resolves, was for phishing purposes, as it was designed to mislead Internet users into believing that they were dealing with the Complainant or one of its group companies, and had the objective of obtaining credit card details of such Internet users under false pretenses.
Therefore, the Panel finds that the third element of paragraph 4(a) of the Policy has also been met.
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 <maxiargos.com> be transferred to the Complainant.
Dated: January 14, 2012