World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dyson Limited v. PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois, Domain Administrator)

Case No. D2012-0897

1. The Parties

The Complainant is Dyson Limited of Wiltshire, United Kingdom of Great Britain and Northern Ireland (the “UK” or “United Kingdom”), represented by Wragge & Co LLP of the United Kingdom.

The Respondent is PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois, Domain Administrator). The address of PPA Media Services is Santiago, Chile and the address of Fundacion Private Whois is Panama.

2. The Domain Name and Registrar

The disputed domain name <dysonball.com> (“Disputed Domain Name”) is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 27 and May 2, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Disputed Domain Name. On May 3, 2012, Internet.bs Corp. transmitted by email to the Center its verification response disclosing a different name and contact information regarding the registrant of the Disputed Domain Name. The Center sent an email communication to the Complainant on May 10, 2012 informing it of the different name and contact information and informing it of administrative deficiencies in the Complaint, and invited the Complainant to make the necessary amendments to the Complaint. In response to the Center’s invitation, the Complainant filed an amended Complaint on May 11, 2012.

The Center has verified that the amended Complaint satisfies 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 May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the parties on June 4, 2012 of the Respondent’s default.

The Center appointed Mr. Tan Tee Jim, S.C. as the sole panelist in this matter on June 28, 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 part of a group of companies which operate worldwide. It has been in the business of designing, manufacturing and selling domestic appliances such as vacuum cleaners and hand dryers for the past 19 years since its “DC01” vacuum cleaner was launched under the DYSON mark in 1993. The Complainant also licenses design and brand rights to the other companies in the group. It achieved a total turnover of GBP 184.3 million in 2009 and GBP 219.4 million in 2010.

The Complainant is the registered proprietor of a number of UK and the European Community trade mark registrations for DYSON and DYSON BALL, including

(1) UK trade mark number 2000035 for the mark DYSON in classes 3, 7, 9 and 11;

(2) Community trade mark number 000036855 for the mark DYSON in classes 3, 7, 9 and 11;

(3) UK trade mark number 2474525 for the mark DYSON BALL in classes 3 and 7; and

(4) Community trade mark number 006967848 for the mark DYSON BALL in classes 3 and 7.

Most of the trade mark registrations pre-date the Respondent’s registration of the Disputed Domain Name on April 15, 2008.

The “Dyson” name was first used in conjunction with the launch of the “DC01” vacuum cleaner in 1993. The “Dyson Ball” name was first used in conjunction with the launch of the “DC24” and “DC25” vacuum cleaners that featured a unique and characteristic ball. These vacuum cleaners proved to be a success, and subsequent vacuum cleaners (“DC38”, “DC39”, “DC40” and “DC41”) also featured the characteristic ball. The DYSON BALL vacuum cleaners make up approximately 40% of the total sales of the Complainant’s vacuum cleaners. The Complainant has adduced extracts from its website “www.dyson.co.uk’’ showing promotions of a number of its DYSON and DYSON BALL domestic appliances.

The Respondent is PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois, Domain Administrator). The Disputed Domain Name is registered with Internet.bs Corp.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(1) The Disputed Domain Name is identical or confusingly similar to the marks DYSON and DYSON BALL in which the Complainant has rights.

(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name because:

(a) the Respondent is not a licensee of the Complainant and has not been authorised to use the marks DYSON and DYSON BALL;

(b) the Respondent is not related to the Complainant in any way whatsoever;

(c) the Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name;

(d) the Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services;

(e) the Respondent is not known by the Disputed Domain Name; and

(f) the Respondent is not the registered proprietor of the words “Dyson” or “Dyson Ball” and has not used the words as part of a registered trade mark or service mark.

(3) The Respondent registered and is using the Disputed Domain Name in bad faith for the reasons set out in paragraphs (1) and (2) above and because:

(a) the Respondent has used the Disputed Domain Name that deliberately infringes the Complainant’s marks DYSON and DYSON BALL;

(b) the Respondent’s intentional use of the Disputed Domain Name is an attempt to attract Internet users to the Respondent’s website, thus creating a likelihood of confusion with the Complainant’s marks DYSON and DYSON BALL;

(c) the Respondent kept its identity secret from Internet users; and

(d) the Respondent was aware, or must have been aware, of the Complainant’s marks DYSON and DYSON BALL when it registered the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must prove each of the following three elements set out in paragraph 4(a) of the Policy:

(1) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(3) the Disputed Domain Name has been registered and is being used in bad faith.

The Complainant bears the burden of proving these elements.

If the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint. This is provided by paragraph 14(a) of the Rules.

A. Identical or Confusingly Similar

It is clear to the Panel that the Disputed Domain Name is identical or confusingly similar to the mark DYSON as well as identical with the mark DYSON BALL.

The Panel notes that the first element of the UDRP serves essentially as a standing requirement, typically involving a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2).

As regards the Complainant’s rights in the marks DYSON and DYSON BALL, the Complainant has provided sufficient evidence as regards the registrations of the marks DYSON and DYSON BALL in the UK and the European Community. However, evidence of extensive use of the marks DYSON and DYSON BALL is lacking. The Complainant has provided only print-outs of its website, despite claiming to have advertised extensively and widely in the United Kingdom and abroad. However, the Complainant has submitted its financial report dated December 2010 which shows that its total turnover for 2009 was GBP 184.3 million and GBP 219.4 million for 2010.

Paragraph 15 of the Rules states that the “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy…”. The panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 held that the appropriate standard for fact finding is the civil standard of a preponderance of the evidence (not the higher standard of “clear and convincing evidence” or “evidence beyond a reasonable doubt”). This Panel agrees with this standard. Accordingly, it is prepared to accept that there has been extensive use of the marks DYSON and DYSON BALL in respect of the domestic appliances.

The Panel is of the view that the marks DYSON and DYSON BALL are inherently distinctive of the Complainant’s domestic appliances. This distinctiveness is likely to be enhanced by the Complainant’s use of the marks DYSON and DYSON BALL in respect of its domestic appliances for the past 19 years.

It is evident to the Panel that the Disputed Domain Name is visually, orally and conceptually similar to the Complainant’s marks DYSON and DYSON BALL. The Disputed Domain Name incorporates the two marks used by the Complainant. There is evidence that the Respondent used the Disputed Domain Name in Google Ads advertisements promoting, amongst others, industrial floor, vacuum cleaners and vacuum systems. Such use is likely to cause confusion that the Disputed Domain Name and the advertisements belong to the Complainant or are in some way associated with the Complainant.

The Panel accordingly finds for the Complainant in relation to the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s right or legitimate interest in a domain name. Accordingly, the Respondent must show any of the following:

(1) the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(2) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The burden is on the Complainant to make out a prima facie case that the Respondent lacks rights or legitimate interests. The Panel finds the Complainant has made such a case.

In the present case, the Respondent did not file a Response. The Panel does not therefore have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Disputed Domain Name.

Numerous cases under the Policy have adopted the approach that if a respondent fails to respond to the complainant’s claims, it may be inferred that the reasonable claims of the complainant are true and that the respondent knows that its use of the offending domain name may be misleading: see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. In Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.”

In the present case, the Panel will make the same inference.

There is no evidence that the Respondent was or was commonly known by the name “Dyson” or the Disputed Domain Name prior to its registration of the Disputed Domain Name on April 15, 2008. Nor has it been apparently dealing in goods or services under or by reference to the marks DYSON and DYSON BALL. It is not related to the Complainant and has not received the latter’s consent to use the marks. The Respondent has not furnished any evidence to support any interest that it may have in using the marks DYSON and DYSON BALL for or in the Disputed Domain Name.

Indeed, the Respondent kept its identity secret by using a private registration. Its website (“www3.dysonball.com”) does not identify the Respondent. The website is a pay-per-click website and has no content other than to provide links to other websites that advertise products which are similar to the Complainant’s and/or compete with the Complainant. This, in the Panel’s view, does not constitute a bona fide offering of goods within the meaning of paragraph 4(c) of the Policy. It also constitutes illegitimate commercial use of the Disputed Domain Name to the Panel, in the circumstances.

Further, there is a strong inference that, by using the word “dysonball” which is virtually similar to the Complainant’s mark DYSON BALL for or in its website, the Respondent’s intent is or was to create the erroneous impression that the website and/or the products advertised therein belong to the Complainant or are in some way associated with the Complainant. It is also apparent that the Respondent’s intent is to misleadingly divert consumers to its website and/or the products advertised therein. This clearly constitutes unfair use of the Disputed Domain Name.

For the above reasons, the Panel is of the view that there has also been illegitimate commercial use of the Disputed Domain Name by the Respondent.

The Panel accordingly finds for the Complainant in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Disputed Domain Name in bad faith, namely:

(i) Circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) Circumstances showing that the Respondent has registered the Disputed 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 the Respondent has engaged in a pattern of such conduct; or

(iii) Circumstances showing that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) The Respondent has, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.

By failing to file a Response, the Respondent did not take the opportunity to invoke any circumstances which could demonstrate that it did not register and use the Disputed Domain Name in bad faith and to assist the Panel in this regard. This itself suggests that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. If the Respondent legitimately registered and/or used the Disputed Domain Name in good faith, there is no reason for it to fail to submit a response and challenge the Complainant’s contentions.

Numerous cases decided under the Policy indicate that a finding of bad faith may be made where the respondent “knew or should have known” of the registration and use of the trade mark prior to registering the domain name: see, e.g., Turkcell IIetisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038.

In the present case, the Complainant has a number of UK and Community trade mark registrations for the marks DYSON and DYSON BALL which pre-date the Respondent’s registration of the Disputed Domain Name on April 15, 2008. It has also provided documentary evidence showing its use of the marks DYSON and DYSON BALL for domestic appliances for several years as well as extracts from its website ‘’www.dyson.co.uk’’ showing promotions of a number of its DYSON and DYSON BALL domestic appliances. Hence, it is implausible that the Respondent was unaware of the marks and/or of the Complainant’s products prior to April 15, 2008. A simple Google or other search on the Internet by the Respondent would have revealed the Complainant’s registration and use of the marks DYSON and DYSON BALL for its domestic appliances.

In these circumstances, doubt can also be cast as to honesty or legitimacy of the Respondent’s choice of the Disputed Domain Name, especially as it bears or contains a word (namely, “dysonball”) that has no relation to the Respondent and is virtually similar to, if not identical with, the Complainant’s mark DYSON BALL. As indicated above, it may be inferred from the choice that the intent was or must have been to create a false impression of an association with the Complainant and/or its products. This inference is enhanced by the Respondent’s website which has no content at all other than to show or advertise vacuum cleaners and other products that are identical or similar to the Complainant’s. Such a website indicates a further intent to disrupt the Complainant’s business or to profit from the Disputed Domain Name by selling or transferring the Disputed Domain Name for valuable consideration.

On the whole, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. It therefore finds for the Complainant in relation to the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <dysonball.com> be transferred to the Complainant.

Tan Tee Jim, S.C.
Sole Panelist
Dated: July 12, 2012

 

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