WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B & Q plc v. Ricky Tang

Case No. D2012-1623

1. The Parties

The Complainant is B & Q plc of Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Sipara, Oxfordshire, United Kingdom.

The Respondent is Ricky Tang of Taipei, Taiwan, Province of China.

2. The Domain Name and Registrar

The disputed domain name <cookeandlewis.com> is registered with Go China Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2012. On August 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication on August 17, 2012 to the Complainant requesting for an amendment to the Complaint given the incurrent address details provided in the Complaint. The Complainant sent through an amended Complaint on August 21, 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 August 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2012.

The Center appointed Francine Tan as the sole panelist in this matter on October 1, 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 claims that it has used the COOKE & LEWIS trade mark in respect of high quality kitchens and bathrooms from as early as 2008 across the Complainant’s 330 stores in the United Kingdom and Ireland. Although no hardcopy evidence was submitted with the Complaint in support of its claim of use of the mark, it submitted evidence of its Community trade mark registrations for COOKE & LEWIS in International Classes 6, 7, 11, 19, 20, 21, and 27 under Registration Nos. 6872659 and 9943358, respectively.

The Complainant also states that its COOKE & LEWIS mark has been used from 2011 in other territories (through subsidiaries of the same group as the Complainant) including France, Poland, Russian Federation and Turkey. It states in the Complaint that it specializes in the sale and production of a wide variety of goods including do-it-yourself products, building materials, home improvement and gardening supplies, accessories for the home and home appliances. In 2009-2010, it reported total sales of GBP 4 billion. The Complainant’s turnover from 2003-2010 is set out in the Complaint to be as follows:

The COOKE & LEWIS mark is said to have been used extensively on the Internet, in newspapers, on television as well as other forms of media. The principal domain names used by the Complainant are at “www.div.cominavirooms/bathroorns/cooke-lewis-bathrooms”, “www.diy.com/nav/rooms/kitchens/cooke-lewis-kitchens”, and “www.cookeandlewis.co.uk”.

The disputed domain name was registered on March 8, 2012.

The Complainant states it tried on multiple occasions to contact the Respondent, but without success. The first contact was made by email on July 16, 2012 to the email address then shown on the WhoIs records, followed by reminders on July 26, 2012 and August 2, 2012. In the email communication of August 2, 2012, it was noted that the disputed domain name no longer resolved to a functioning website. A further email was sent to the Respondent on August 8, 2012 to the same email address as well as another email address which was by then listed as the contact email on the WhoIs records. No response was received from the Respondent.

On August 14, 2012, the day the Complaint was filed, the Respondent replied to ask whether a solution could be made to avoid UDRP proceedings, to which the Complainant responded to say that it would be willing to withdraw the Complaint if the Respondent transferred the disputed domain name to the Complainant. The Respondent claimed that the disputed domain name cost him USD 500. The Complainant offered to pay up to USD 25 to cover the usual cost of registration. This was not accepted by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complaint submits, firstly, that the disputed domain name is identical to a trade mark in which the Complainant has rights.

In this regard, it contends that the ampersand in the Complainant’s COOKE & LEWIS trade mark is outside the permissible ASCII character-set for domain names, excluding IDNs, “and” being commonly used as a replacement in ASCII domain names. The relevant part of the disputed domain name is phonetically identical to the Complainant’s COOKE & LEWIS trade mark and converting a symbol such as an ampersand to its corresponding word (“and”) does not obviate confusion. The Complainant’s registered trade mark COOKE & LEWIS becomes COOKE AND LEWIS when translated into permissible characters for domain names which is identical to the text of the contested domain name preceding the “.com” suffix.

Secondly, it is submitted that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Complainant has not granted the Respondent any license, permission, or authorization by which he could own or use any domain name registrations which are confusingly similar to any of the Complainant’s marks.

Further, whilst the disputed domain name has not since the filing of the Complaint resolved to a functioning website, it had previously pointed to a parking website and contained a succession of advertising links. The Complainant submits that although there is nothing per se illegitimate in using a domain parking service, the use of the disputed domain name which is virtually identical to the Complainant’s registered trade mark does not provide a legitimate interest therein under the Policy. Neither can the Respondent’s use of the disputed domain name to redirect traffic through links to unrelated third-party websites be considered a bona fide offering of goods or services for a noncommercial or fair use of the disputed domain name.

Thirdly, the Complaint contends that the disputed domain name has been registered and is being used in bad faith, and that:

(i) This is a clear case of typosquatting. The disputed domain name was, until the Respondent was put on notice by the Complainant, used to misdirect Internet users looking for the Complainant’s website and to redirect users to third-party websites that are not affiliated with the Complainant, including those of its competitors, leading to both confusion and tarnishing of the Complainant’s COOKE & LEWIS trade mark. As a consequence, Internet traffic is likely to have been driven away from the Complainant’s website and, instead, to competing sites, giving the Respondent financial gain. This constitutes bad faith under paragraph 4(b)(iv) of the Policy.

(ii) By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s 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. Until the website was taken down, it featured a prominent offer to sell the domain name: “The domain cookeandlewis.com is available for sale! Sales Price: 900 $ USD”.

(iii) In the absence of a good reason for choosing the disputed domain name, the selection of the Complainant’s registered trade mark for the purposes of taking advantage of the Complainant’s rights in the trade mark is an indication of the Respondent’s bad faith.

(iv) The Respondent has intentionally provided incorrect contact information to evade service. Neither of the postal addresses obtained from the two WhoIs reports gives a street number, and the name of the street furnished by the Respondent does not appear to be a valid street in Taiwan. The Complainant has therefore not been able to attempt postal service of its correspondence.

(v) There is no bona fide business or noncommercial fair use being made of the disputed domain name. The Respondent has no known legitimate prior interest in the disputed domain name, and has failed to take advantage of the opportunities to put forward such interest.

(v) The Respondent’s original failure to respond to communications from the Complainant gave no basis upon which to assess whether the Complainant should refrain from filing the Complaint. Further, when give the chance to transfer the disputed domain name, the Respondent attempted to obtain USD 500 in consideration for the transfer.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has rights in the COOKE & LEWIS trade mark. The Panel agrees that the absence of the ampersand in the disputed domain name does not detract from what is of essence, namely the fact that the disputed domain name otherwise contains the Complainant’s trade mark in its entirety, and is therefore identical to the Complainant’s mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In relation to the issue presented by paragraph 4(a)(ii) of the Policy, paragraph 4(c) thereof specifies three ways (which are non-exhaustive) in which a respondent may demonstrate his rights or legitimate interests in the disputed domain name:

“(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 legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In order to succeed in satisfying paragraph 4(a)(ii) of the Policy, the Complainant is only required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (see paragraph 2.1 of The WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Second Edition) (“the WIPO Overview 2.0”). Once a prima facie case is established, the burden of production shifts to the Respondent who then has to demonstrate his rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that the Complainant has ever licensed or permitted the Respondent to use the trade mark in any manner or in a domain name. Neither is there evidence that the Respondent has been known by the disputed domain name or that he has used it in connection with a bona fide offering of goods or services.

Whilst the disputed domain name currently is not in active use, the Respondent appeared to have used the disputed domain name initially for a parking website. As regards whether such use confers rights or legitimate interests in the disputed domain name, the Panel finds guidance from paragraph 2.6 of the WIPO Overview 2.0 which states as follows:

“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” […] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”

The disputed domain name in this case does not consist of a dictionary or common word(s) but possesses trade mark significance. On the face of it therefore, the choice of the combination of the words “Cooke” and “Lewis” with the inclusion of the word “and” seems deliberate and an attempt to “hijack” the Complainant’s trade mark and to mislead Internet users looking for the Complainant, through initial interest confusion.

In the circumstances, the Panel finds that the Respondent’s use of the disputed domain name to post a parking page does not of itself confer rights or legitimate interests in respect of the disputed domain name. That being said, the Respondent could have, if he had a legitimate basis to, file a Response in these proceedings or otherwise put forward his case and substantiate his claim to rights or legitimate interests in respect of the disputed domain name. He did not do so at any point, notwithstanding the opportunity to.

In the absence of a Response and on the facts presented, there is nothing to indicate that the Respondent would have been able to establish any of the circumstances set out in paragraph 4(c) of the Policy.

In the absence of any evidence which demonstrates the Respondent’s rights or legitimate interests in the disputed domain name, the Panel accordingly finds that the Complainant has established the second element of paragraph 4(a) of the UDRP.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 trademark 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 trademark 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 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 your website or location or of a product or service on your website or location.”

Having evaluated the evidence presented, the Panel finds it highly unlikely that the Respondent was unaware of the Complainant’s COOKE & LEWIS trade mark and that the choice of the disputed domain name was coincidental.

What is apparent is an absence of rights or legitimate interests in the disputed domain name, and of legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Panel finds that the Complainant has furnished sufficient evidence which support a finding in the Complainant’s favour as they fall within paragraph 4(b)(i) and (iv) of the Policy.

The Panel accordingly finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.

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 <cookeandlewis.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Dated: October 15, 2012