WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DSG Retail Limited v. Gustavo Winchester
Case No. D2014-2268
1. The Parties
The Complainant is DSG Retail Limited of Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Gustavo Winchester of Belo Horizonte, Brazil.
2. The Domain Name and Registrar
The disputed domain name <curryspcworld.com> is registered with !#No1Registrar, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2015, 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 Complainant on January 8, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint or amendment to the Complaint. The Complainant filed an amended Complaint on January 13, 2015.1
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 January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on February 18, 2015. 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 a retailer of electrical, computing, telecommunications products and services with over 500 retail stores in the United Kingdom (“UK”) and Ireland. The Complainant is the owner of UK registrations for the marks CURRYS, PC WORLD, and CURRYS PC WORLD, as well as a Community Trade Mark (“CTM”) registration for CURRYS. These registrations were obtained on various dates between 1996 and 2010, and have been used by the Complainant in connection with its retail operations. The Complainant also offers products and services online through its websites at “www.currys.co.uk” and “www.pcworld.co.uk”.
The Respondent registered the disputed domain name <curryspcworld.com> on August 15, 2014. The disputed domain name currently resolves to .a web page containing advertising links, including “Currys”, “Currys Electronics”, and “Currys PC World”, which lead to other websites or parts of the same website offering electronics, appliances, laptops and computers, and related products and services. The Respondent’s web page also indicates that the disputed domain name is for sale.
5. Parties’ Contentions
A. Complainant
The Complainant describes itself as a leading retailer of electrical, computing, telecommunication and other products and services. The Complainant asserts registration and common law rights in CURRYS, PC WORLD, and its “dual-brand” CURRYS PC WORLD mark, and explains that these brands are used in the UK and Ireland in connection with more than 500 retail stores, including more than 200 stores trading under the CURRYS PC WORLD mark. According to the Complainant, these brands generate annual sales of approximately £4 billion in the UK alone. The Complainant avers it has used CURRYS PC WORLD since 2008.
The Complainant submits that the disputed domain name is identical to the CURRYS PC WORLD mark, and confusingly similar to its CURRYS and PC WORLD marks. The Complainant asserts that the Respondent’s intention in registering the disputed domain name was to create a false impression of association with the Complainant to attract business and misleadingly divert the public from the Complainant. The Complainant asserts that the Respondent’s website makes extensive use of the Complainant’s marks.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name, observing that the Respondent has not been authorized to use the Complainant’s marks, has not been commonly known by the disputed domain name, and in not making a legitimate or noncommercial fair use of the disputed domain name The Complainant further submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but is instead operating a pay-per-click website with sponsored links to third party websites offering products competitive with those of the Complainant, which in some cases have been represented to be the Complainant’s products.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent must have been aware of the Complainant’s distinctive and widely used marks when registering the disputed domain name, and submits that the Respondent is using the disputed domain name to misleadingly divert consumers to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s marks. The Complainant further submits that the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its CURRYS PC WORLD mark in a corresponding domain name, that the Respondent has used a privacy protection service in an attempt to conceal his identity, and that the Respondent has refused to transfer the disputed domain name to the Complainant despite repeated demands made by the Complainant prior to the commencement of this administrative proceeding.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of a domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s CURRYS and PC WORLD marks and identical to the Complainant’s CURRYS PC WORLD mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. 2 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
In this instance, the disputed domain name incorporates each of the Complainant’s marks in their entirety and as such is either confusingly similar or identical to the Complainant’s marks as noted above. Although the generic Top-Level Domains (“gTLDs”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is identical or confusingly similar to the Complainant’s marks, which the Respondent is using with what appears to be a pay-per-click website containing advertising links to products and services the same or similar to those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. In the absence of any formal reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. Internet users could easily expect that disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that 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 indicating that the Respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. As earlier noted in this decision, the website to which the disputed domain name resolves features links to other sites offering products and services competitive with or related to those of the Complainant. The record thus reflects that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <curryspcworld.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 2, 2015
1 At the time the original Complaint was filed, the relevant WhoIs data identified the registrant as Communigal Communication Limited. The Registrar, in response to the Center’s request for registrar verification, disclosed the registrant of the disputed domain name to be Gustavo Winchester. The Complainant then filed an amended Complaint naming Gustavo Winchester as the Respondent. The Complainant concludes that the Communigal Communication Limited, the party initially identified as the Respondent, is a privacy protection service.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.2.