WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wm Morrison Supermarkets Plc v. Gavin Marriott
Case No. D2012-0225
1. The Parties
The Complainant is Wm Morrison Supermarkets Plc of West Yorkshire, United Kingdom of Great Britain and Northern Ireland (“UK”) represented by Demys Limited, UK.
The Respondent is Gavin Marriott of South Yorkshire, UK.
2. The Domain Name and Registrar
The disputed domain name <morrisonsoffers.org> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2012. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on February 8, 2012, confirming that it had received a copy of the Complaint, that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name was registered to the Respondent on December 20, 2011, would expire on December 21, 2012, and would remain locked during this proceeding, and that the language of the registration agreement was English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2012. The courier confirmed delivery of the hard copy notification to the Respondent’s address stated in the Registrar’s WhoIs database. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2012.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 16, 2012. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant operates 455 large supermarkets in the UK with a turnover in excess of GBP16 billion under the name “Morrisons” and a logo containing a capital letter “M” in a yellow ellipse above the word “Morrisons”. The Complainant has a website at “www.morrisons.co.uk”. The Complainant has registered MORRISONS as a UK trademark and a Community trademark.
At the date of the Complaint, the Domain Name resolved to a web page headed with the words “morrisons offers / Save money at Morrisons with discount offers”, followed by the Complainant’s logo and a further heading “Morrisons Offers” together with images of supermarket trolleys and one of the Complainant’s supermarkets. The page then set out a series of links to websites of third parties, including a website of the Complainant’s competitor, Tesco.
The Complainant sent a cease and desist letter to the Respondent on December 22, 2012, but did not receive any reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its MORRISONS mark from which it differs only in the addition of the descriptive term “offers” and the generic top level domain suffix.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the Domain Name, pointing out that it has not licensed or consented to the Respondent’s use of the Domain Name and that there is nothing to suggest that the Respondent was commonly known by the name “Morrisons Offers” or has ever traded under this name. So far as the Complainant is aware, the Domain Name has only been used in connection with a website containing sponsored links to websites of third parties including the Complainant’s competitors. According to the Complainant, such use does not give rise to rights or legitimate interests and does not constitute legitimate non-commercial or fair use of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith with the intention of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark for commercial gain, thereby disrupting the Complainant’s business. According to the Complainant, paragraphs 4(b)(iii) and 4(b)(iv) of the UDRP apply.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark ““MORRISONS”. The Panel further finds that the Domain Name is confusingly similar to this mark. As the Complainant rightly points out, the Domain Name consists of the Complainant’s mark together with the descriptive word “offers” and the generic top level domain suffix. Many Internet users would assume that the Domain Name is for a website of the Complainant promoting its special offers. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has not used or made preparations to use the Domain Name for any bona fide offering of goods or services. The Respondent’s only use of the Domain Names has been for a web page containing sponsored links to other websites, including a website of one of the Complainant’s direct competitors. The Panel does not regard this as a bona fide offering of goods or services.
The Panel also finds that the Respondent is not commonly known by the Domain Name and that he is not making any legitimate non-commercial or fair use of them.
On the evidence before the Panel, there is no other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name. The Panel concludes that the Respondent has no right or legitimate interest in respect of the Domain Name and that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that, by its use of the Domain Name, the Respondent has intentionally attempted to attract Internet users to its web page by creating a likelihood of confusion with the Complainant’s trademark as to the source of this web page, for commercial gain in the form of click-through commissions on sponsored links provided on this page to websites of third parties, including at least one of the Complainant’s competitors.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the Domain Name in bad faith.
There is no material in the file which displaces this presumption. Accordingly the Panel finds that the Domain Name has been registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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 <morrisonsoffers.org> be transferred to the Complainant.
Dated: March 28, 2012