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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LCD Enterprises Ltd. and Oxford Diecast Ltd. and Oxford Diecast (HK) Limited v. Whois Protection / Guowei Hai Gui

Case No. D2013-1260

1. The Parties

The Complainants are LCD Enterprises Ltd. and Oxford Diecast Ltd. of Swansea, United Kingdom of Great Britain and Northern Ireland (“UK”) and Oxford Diecast (HK) Limited of Hong Kong, China, represented internally.

The Respondent is Whois Protection of Pardubice, Czech Republic / Guowei Hai Gui of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <oxforddiecast.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2013, the Registrar 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 the Complainants on July 22, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 25, 2013.

On July 22, 2013, the Center sent an email communication to the parties in both Czech and English regarding the language of the proceeding. On July 26, 2013, the Complainants requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 July 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2013.

The Center appointed Ladislav Jakl as the sole panelist in this matter on August 26, 2013. 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 Complainants manufacture and sell scale diecast toy vehicles which are supplied to countries worldwide. The products are sold in packing carrying the “Oxford” name and logos and the website “www.oxforddiecast.co.uk” (Annex W to the Complaint). The Complainants own the following trademark registrations;

OXFORD Community trademark No. 005913751 of April 18, 2011;

OXFORD COLLECTABLES UK trademark No. 2381674 of January 7, 2005, and;

OXFORD COLLECTABLES US trademark No. 3458456 of July 1, 2008.

The Complainants submits to be known as “OxfordDiecast” through the company name Oxford Diecast Ltd.

The disputed domain name <oxforddiecast.com> was registered on October 11, 2009.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain name is identical or confusingly similar to its trademarks and its website “www.oxforddiecast.co.uk” through which they have offered for sale diecast toy vehicles since at least 2001.

As to the rights or legitimate interests in respect of the disputed domain name, the Complainants contend that the Respondent is not using the disputed domain name legitimately as it points to a directory website which features links to the Complainant and third-party links to websites directly competing with the Complainant. The Complainants further contend that they have never authorized or licensed the Respondent to use its trademarks within the disputed domain name. The Complainant contend that the Respondent is not commonly known under the disputed domain name and that the Respondent’s attempt to sell the disputed domain name in online auction illustrates its lack of rights and legitimate interests in the disputed domain name.

Furthermore, the Complainants argue that the disputed domain name was also registered and is being used in bad faith, as the Complainants have established since 1993 a worldwide reputation as a manufacturer of diecast vehicles with distributors across the world (Annex U to the Complaint). The disputed domain name was registered purely for the purpose of selling it to the Complainants or to a competitor and therefore the Respondent´s apparent willingness to sell it evidences its bad faith. The Complainants argue that the Respondent could not reasonably engage in a legitimate activity due to the Complainant’s international renown. The Complainants conclude that above mentioned facts evidence Respondent´s bad faith registration and use of the disputed domain name under paragraph 4(c)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Czech. On July 22, 2013, the Center sent an email communication to the parties in both Czech and English regarding the language of the proceeding. On July 26, 2013, the Complainants asserted that the evidence for requesting English be the language of the proceeding was provided in its amended Complaint filed with the Center on July 25, 2013, and confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings is English.

In accordance with paragraph 4(a) of the Policy, the Complainants must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainants.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain name incorporates the dominant part “Oxford” of the Complainants’ trademarks in its entirety and that the addition of the generic term “diecast” does not sufficiently distinguish the disputed domain name from the Complainants’ trademarks (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694) and the Complainants’ registration and use of their trademarks do predate the Respondent‘s registration of the disputed domain name. As well the inclusion of the generic top-level domain (gTLD) suffix “.com” does not avoid confusing similarity of the disputed domain name with the Complainants’ trademarks (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310). For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainants’ trademarks, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

The Panel finds that the Respondent before any notice of the dispute, had not used, or had not made demonstrable preparations to use, the disputed domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent does not appear to have been commonly known by the disputed domain name. The Panel accepts the argument of the Complainants that they have never authorized or licensed the Respondent to use the term “oxford diecast” within the disputed domain name and therefore the Respondent is not able to establish rights or legitimate interests in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terrain Inc. v. Geocaching Zero, WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). Moreover, as the disputed domain name points to a directory website which features links to the Complainants and third-party links to websites directly competing with the Complainants and that the disputed domain name in question clearly alludes to the Complainants, the Panel finds that it is more likely than not that the Respondent knew of the Complainants and intended to free ride on the Complainants’ trademarks and on the goodwill the Complainants have established (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784). For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainants must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both:

“(i) circumstances indicating that you [the Respondent] 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 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 your web site or location or of a product or service on your web site or location.”

The Panel finds that it is necessary to accept the argument of the Complainants that the disputed domain name is being used in bad faith, as the Complainants have established since 1993 a worldwide reputation as a manufacturer of diecast vehicles with distributors across the world (Annex U to the Complaint). The Panel also finds that the disputed domain name was registered purely for the purpose of selling it to the Complainants or to a competitor and therefore the Respondent´s apparent willingness to sell it is evidence of bad faith use and registration. The Complainants have submitted evidence, unchallenged by the Respondent, that the Respondent knew or must have known of the Complainants’ trademarks at the time it registered the disputed domain name. Due to the fact that the disputed domain name directs Internet users to a web page relating to the Complainants’ business sector, the Respondent cannot have ignored the Complainants’ business reputation at the time of registration of the disputed domain name. The Panel finds that the disputed domain name is also being used in bad faith, as the Respondent intentionally attempts for commercial purpose to attract Internet users to the Respondent‘s website by creating a likelihood of confusion with the Complainant‘s well-known marks as to the source, affiliation and endorsement of Respondent‘s website of the products or services posted on the Respondent´s website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049). The Respondent, by using the disputed domain name, is intentionally misleading the consumers by making them believe that the websites behind those links are associated or recommended by the Complainants and that, as a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the Complainants’ trademarks fame. For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <oxforddiecast.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: September 8, 2013

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