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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

J Sainsbury plc and Argos Limited v. Saida Khafif

Case No. D2017-0438

1. The Parties

The Complainants are J Sainsbury plc (the "First Complainant") of London, United Kingdom of Great Britain and Northern Ireland ("UK") and Argos Limited (the "Second Complainant") of Milton Keynes, UK, both represented by Addleshaw Goddard LLP, UK.

The Respondent is Saida Khafif of London, UK.

2. The Domain Names and Registrar

The disputed domain names <sainsburyargos.com>, <sainsburyargos.info>, <sainsburyargos.net>, <sainsburyargos.org>, <sainsburysargos.co>, <sainsburysargos.com>, <sainsburysargos.info>, <sainsburysargos.net> and <sainsburysargos.org> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 2, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 6, 2017, 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 verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2017.

The Center appointed David Stone as the sole panelist in this matter on April 12, 2017. 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 First Complainant is a public limited company that was incorporated in 1922. Together with its subsidiaries, it operates under the name "Sainsbury's" and is the UK's second largest supermarket chain retailer. It operates approximately 1,400 stores in two formats, namely Sainsbury's supermarkets and Sainsbury's Local convenience stores, and provides online shopping services at "www.sainsburys.co.uk".

The Second Complainant is a private limited company that was incorporated in 1972. It operates more than 800 stores in the UK and has an online presence at "www.argos.co.uk", which in 2016 was the second most visited retail website in the UK. It is part of the Home Retail Group, which is one of the UK's leading general merchandise retailers.

The First Complainant is the owner of the following European Union ("EU") and UK trade mark registrations:

- SAINSBURY'S: EU trade mark number 001027002, filed on December 23, 1998;

- SAINSBURY'S: EU trade mark number 001812957, filed on August 17, 2000;

- SAINSBURY'S: EU trade mark number 004627361, filed on September 9, 2005;

- SAINSBURY'S: EU trade mark number 015418478, filed on May 10, 2016;

- SAINSBURY'S: UK trade mark number 00001107277, filed on January 8, 1979;

- SAINSBURY'S: UK trade mark number 00001170808, filed on March 2, 1982;

- SAINSBURY'S: UK trade mark number 00002115613, filed on November 13, 1996;

- SAINSBURY'S: UK trade mark number 00002242778, filed on August 8, 2000;

- SAINSBURY'S: UK trade mark number 00002620356, filed on May 8, 2012.

The Second Complainant is the owner of the following EU and UK trade mark registrations:

- ARGOS: EU trade mark number 000450858, filed on January 28, 1997;

- ARGOS (device): EU trade mark number 008569261, filed on September 23, 2009;

- ARGOS: UK trade mark number 00002116587, filed on November 23, 1996;

- ARGOS (device): UK trade mark number 00002258652, filed on January 23, 2001.

Between January 2016 and September 2016, the First Complainant acquired the Home Retail Group, including the business of the Second Complainant. The offer made by the First Complainant, the agreement between the parties, and the successful conclusion of the acquisition, whereby the First Complainant became the parent company of the Second Complainant, were all widely reported in the UK media. The names "Sainsbury's" and "Argos" were prominently featured in these reports.

The Respondent registered the disputed domain names on and around February 5, 2016, shortly after the proposed acquisition had been announced in the media. At around the same time, the Respondent also registered two other domain names, namely <sainsburysargos.co.uk> and <sainsburysargos.uk>.

5. Parties' Contentions

A. Complainants

The Complainants contend that the disputed domain names are identical or confusingly similar to trade marks in which the Complainants have rights. The disputed domain names are combinations of the words "Sainsbury" or "Sainsburys" and "Argos". The Complainants submit that the omission of the apostrophe or the letter "s", or both, from "Sainsbury's", is insignificant, and that "Sainsbury" and "Sainsburys" should therefore be considered identical to "Sainsbury's". On that basis the disputed domain names are identical to the trade marks SAINSBURY'S and ARGOS in combination, and thus to trade marks in which the Complainants have rights.

The Complainants also state that they are household names with a significant market presence in the UK, and that they have substantial goodwill in the names "Sainsbury's" and "Argos" owing to their extensive, consistent and long-term use of those names in the UK.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names. To the best of the Complainants' knowledge, the Respondent has not satisfied any of the three criteria necessary to establish such rights, as set out in paragraph 4(c) of the Policy.

The Complainants contend that the Respondent registered the disputed domain names and is using them in bad faith. The disputed domain names were registered by the Respondent at a time when the proposed acquisition of the Home Retail Group by the First Complainant was being widely publicised. Owing to this publicity and the Complainants' significant market presence, the Respondent would have been aware of the Complainants' businesses. Since the disputed domain names were registered they have been parked, and resolve to websites containing advertising and links to sites unconnected with either of the Complainants. On receipt of a cease-and-desist letter from the Complainants, the Respondent's eventual response was only to confirm that no use was being made of the disputed domain names and to offer to sell them to the Complainants for an undefined amount. In light of the proposed acquisition, the Complainants conclude that the Respondent hoped in this way to obtain payment of a substantial amount.

The Complainants also submit that the registration of the disputed domain names and, at around the same time, the domain names <sainsburysargos.co.uk> and <sainsburysargos.uk> demonstrates a pattern of registration designed by the Respondent to prevent the Complainants from registering their trade marks in one or more domain names. The First Complainant has been able to register <sainsburys-argos.co.uk> and <sainsburys-argos.com>, but the disputed domain names are clearly unavailable at present.

Finally, the Complainants submit that the Respondent is using the disputed domain names to attract Internet traffic for commercial gain by creating a likelihood of confusion with the Complainants' trade marks. As stated above, the disputed domain names resolve to websites containing advertising links. The Complainants believe that the Respondent is obtaining payment each time one of these advertising links is followed, and that users who follow the links may be under the impression that the links are affiliated with or endorsed by the Complainants.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainants must prove in order to succeed:

(i) that the disputed domain names are identical or confusingly similar to trade marks or service marks in which the Complainants have rights;

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

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainants own EU and UK trade mark registrations comprising SAINSBURY'S and ARGOS. Although the disputed domain names do not incorporate the name "Sainsbury's" exactly, the words "Sainsbury" and "Sainsburys" are confusingly similar to it. The combination of one or other of these two words with "Argos", which is incorporated exactly in each of the disputed domain names, suffices to render each of the disputed domain names confusingly similar to the trade marks owned by the Complainants. See Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118.

Accordingly, the Panel finds that the Complainants have satisfied the condition in paragraph 4(a)(i) of the Policy, and that the disputed domain names are confusingly similar to trade marks in which the Complainants have rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, 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; or

(ii) as an individual, business or other organisation, 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

(ii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent, in its correspondence with the Complainants, expressly stated that the disputed domain names have not been used, although the Complainants contend that they are being used to generate advertising revenue. However, they are not being used in connection with a bona fide offering of goods or services. Furthermore, there is no indication that the Respondent has ever been commonly known by any of the disputed domain names, the important elements of which are instead closely linked with the Complainants in the minds of consumers. Finally, the use of the disputed domain names for advertising indicates that they are being used to divert consumers for commercial gain.

The above constitutes a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The burden of satisfying the criteria therefore shifts to the Respondent. In failing to respond in these proceedings the Respondent has failed to rebut this prima facie case or to raise any other evidence in support of the Respondent having rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that the Complainants have satisfied the condition in paragraph 4(a)(ii) of the Policy, and that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

First, the Respondent's offering the disputed domain names for sale at an undefined price despite lacking legitimate rights or interests can be taken by the Panel as evidence that the Respondent sought to sell the disputed domain names to the Complainants, or a competitor of the Complainants, for a profit. See EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036. In addition, registration by an unrelated third party of a domain name containing trade marks comprising the well-known names of businesses involved, prior to registration, in a widely publicised acquisition is suggestive of bad faith. See Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433; Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118. Given the sequence of events here, that is, the registration by the Respondent of the disputed domain names shortly after the public announcement of the acquisition of the business of the Second Complainant by the First Complainant, and the Respondent's subsequent offer to sell the disputed domain names to the Complainants, the Panel is satisfied that the registration was done in bad faith according to paragraph 4(b)(i).

Second, the registration of the nine similar disputed domain names along with <sainsburysargos.co.uk> and <sainsburysargos.uk> indicates a systematic attempt to prevent the Complainants from registering domain names comprising their trade mark-protected business names in combination, as the Complainants might be expected to do after the acquisition. The Panel is therefore satisfied that the registration was done in bad faith according to paragraph 4(b)(ii).

Third, as discussed in Section 5.B and as contended by the Complainants, the presence of advertising links on the websites to which the disputed domain names resolve is prima facie evidence that the Respondent is using the disputed domain names to divert Internet traffic for commercial gain. The Respondent has failed to address this contention. The Panel is therefore satisfied that the disputed domain names are being used in bad faith according to paragraph 4(b)(iv).

Accordingly, the Panel finds that the Complainants have satisfied the condition in paragraph 4(a)(iii) of the Policy, and that the disputed domain names have been registered and are being used 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 names <sainsburyargos.com>, <sainsburyargos.info>, <sainsburyargos.net>, <sainsburyargos.org>, <sainsburysargos.co>, <sainsburysargos.com>, <sainsburysargos.info>, <sainsburysargos.net> and <sainsburysargos.org> be transferred to the First Complainant.

David Stone
Sole Panelist
Date: April 24, 2017

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