World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Grid Electricity Transmission Plc v. Undisclosed customer 0129436546 / ICS Inc.

Case No. D2012-0352

1. The Parties

Complainant is National Grid Electricity Transmission Plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Squire Sanders (UK) LLP, UK.

Respondent is Undisclosed customer 0129436546 of Toronto, Ontario / ICS Inc. of Gran Cayman, Cayman Islands, Overseas Territory of the UK.

2. The Domain Name and Registrar

The disputed domain name <nationalgridonline.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 22, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, Tucows 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 Complainant on February 29, 2012 providing the registrant and contact information disclosed by Tucows Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 5, 2012.

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 March 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2012.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 30, 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 disputed domain name <nationalgridonline.com> is registered to Tuscows Inc. The record was last updated on November 23, 2011. The record expires on November 16, 2012.

Complainant has the following trademark applications and registrations:

NATIONAL GRID, registration number 2659972, filed in the United States of America (“USA”) on September 13, 1999

NATIONAL GRID, registration number 2613097, filed in USA on September 13, 1999

NATIONAL GRID, registration number 2688942, filed in USA on September 13, 1999

NATIONAL GRID, registration number 2551591, filed in USA on September 13, 1999

NATIONAL GRID, registration number 2742466, filed in USA on September 13, 1999

NATIONALGRID and design, registration number 4099287, filed in USA on May 8, 2008

NATIONALGRID, registration number 4099285, filed in USA on May 8, 2008

NATIONALGRID and design, application number 77/469567, filed in USA on May 8, 2008

NATIONALGRID and design, application number 1285391, filed in Canada on September 1, 2006

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name <nationalgridonline.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has rights in the mark NATIONAL GRID and NATIONALGRID in the USA, Canada, and other jurisdictions. These marks are used for a wide range of goods and services related to the operation of a an international electricity and gas group of companies owning and operating, through subsidiaries, well-known electricity and gas transmission networks in the UK and the USA.

Complainant alleges that Respondent is neither affiliated with Complainant nor licensed to use Complainants trademarks.

Complainant alleges that Respondent is using Complainant’s trademark for illegal solicitation and to gain an illicit profit from the sale based on the likelihood of confusion with Complainant’s trademark which allows Respondent to collect “click through revenue.” The disputed domain name includes a link offering to sell the disputed domain name showing that it was registered primarily to induce purchase by Complainant or a competitor. Complainant alleges that therefore Respondent’s use of the disputed domain name is in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <nationalgridonline.com> is confusingly similar to Complainant’s trademarks NATIONAL GRID and NATIONALGRID. Addition of the non-distinctive term “online” does not sufficiently distinguish the disputed domain name from Complainant’s registered trademarks so as to avoid confusion.

B. Rights or Legitimate Interests

Complainant has presented evidence of its rights in the trademarks NATIONAL GRID and NATIONALGRID, referencing nine separate applications or registrations in the USA and Canada.

Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademarks. Based on the case record the Panel finds that Respondent does not have a right to use Complainant’s trademarks and has no rights or legitimate interests in the disputed domain name for purposes of the Policy.

C. Registered and Used in Bad Faith

Complainant’s allegations that Respondent is using Complainant’s trademark for illegal solicitation and to gain an illicit profit from the sale of the disputed domain name based on the likelihood of confusion with Complainant’s trademark which allows Respondent to collect “click through revenue” are supported by additional evidence presented to the Panel including screen shots of the disputed domain name.

Complainant submitted to the Panel a screen shot of the disputed domain name which shows how Respondent is using the disputed domain name for online payment for Complainant and using the link to Complainant for illegal solicitation. The Panel finds that this is a deliberate use of the confusion created by the similarity of the disputed domain name to Complainant’s trademarks. In addition, Respondent cannot be unaware that the offer to sell the disputed domain name would be most valuable to Complainant as it is most negatively affected by Respondent’s use of the disputed domain name. The Panel finds that the offer to sell is therefore likely primarily targeted at Complainant.

Based on the foregoing, the Panel finds that the use of the disputed domain name is in bad faith.

7. Decision

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 <nationalgridonline.com> be transferred to the Complainant.

Maxim H. Waldbaum
Sole Panelist
Dated: April 16, 2012

 

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