WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Argos Limited v. CSC

Case No. D2011-0676

1. The Parties

The Complainant is Argos Limited, Milton Keynes, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom Great Britain and Northern Ireland (the “United Kingdom”).

The Respondent is CSC, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <argos-computers.com>, <argos-fragrances.com> and <argos-sports.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 21, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 22, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming:

(a) it was the registrar for each of the disputed domain names;

(b) the Respondent is the registrant of each of the disputed domain names;

(d) English is the language of the registration agreement for each disputed domain name; and

(e) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to each of the disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2011.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 3, 2011. 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 based in the United Kingdom. It has operated in the United Kingdom for over 35 years and in the Republic of Ireland for over 15 years.

Amongst other things, it sells sports and leisure equipment, toys, DIY products, jewellery, furniture, consumer electronics, including computers and related technology and fragrances.

It conducts its retail activities exclusively under and by reference to the mark ARGOS. According to the Complaint, it has done so for the past 35 years.

The Complainant operates some 730 stores throughout the United Kingdom and the Republic of Ireland. Over 36 million copies of its promotional catalogue are distributed every year. It operates a website at “www.argos.co.uk” which receives hundreds of millions of hits a year. Its annual turnover for the financial year till February 2010 exceeded GBP 4.3 billion. Its annual marketing expenditure exceeded GBP 45 million.

It has a number of trademark registrations for the word “argos” including UK Trademark No. 2116587 which was filed in November 1996 and registered on 25 August 2000 and CTM No. 2057263 and CTM No. 450858.

It is not entirely clear from the record when the disputed domain names were registered by the Respondent. In its communication to the Center, the Registrar gave dates for two of the disputed domain names in November 2007 and in September 2009.

From details stored by the Wayback Machine at “www.archive.org”, it would appear that the disputed domain name, <argos-sports.com>, resolved to a website being operated by an Argos Sports (UK) Limited between December 2007 and August 2008. Argos Sports (UK) Limited was not related to the Complainant. In 2009, the Complainant brought proceedings against Argos Sports (UK) Limited in the English High Court for trademark infringement and passing off. Injunctions were obtained by the Complainant against Argos Sports (UK) Limited. Since that date, the domain name has not resolved to an active website. Instead, it resolves to a page headed "Argos Sports (UK) Limited > Shop Unavailable”, "Our shop is currently unavailable please check back soon".

The other two disputed domain names do not resolve to a webpage.

It is not clear from the record whether any of the disputed domain names were the subject of the proceedings in the English High Court or, if so, how it is that they were not transferred to the Complainant.

5. Discussion and Findings

The Center sought to serve the Complaint on the Respondent by email and courier. The email delivery failed and the courier was unable to deliver the Complaint to the physical address provided. The email address and physical address for courier delivery used by the Center, however, were the addresses confirmed as correct and current by the Registrar. Accordingly, the Panel finds that the Center has made all reasonable efforts to serve the Complaint on the Respondent and the Respondent has been given a fair opportunity, in the circumstances, to present its case: paragraph 10(b) of the Rules.

As the Respondent has failed to submit a response, the Panel is directed to proceed to a decision on the Complaint: paragraph 14(a) of the Rules.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any Rules or principles of law deemed applicable.

Accordingly, the Complainant must establish in accordance with paragraph 4(a) of the Policy that:

(i) The domain names are 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 names; and

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

A. Identical or Confusingly Similar

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proved ownership of the registered trademarks for ARGOS referred to above. The Complainant also contends that it has common law rights in the trademark as well. On the basis of the evidence referred to above, the Panel accepts that the Complainant does also have common law rights in ARGOS as a trademark, at least in the United Kingdom and the Republic of Ireland.

The disputed domain names are not identical to the Complainant's trademarks. Therefore, the question is whether the disputed domain names are confusingly similar to the Complainant's trademarks.

On this part of the inquiry, what is required is simply a comparison of the disputed domain names themselves to the Complainant's proven trademarks: see for example Disney Enterprises Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as geographical location of the registrations and impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.

On this question, the addition of the gTLD to the disputed domain names can be disregarded as simply a functional requirement of the domain name system.

Apart from the gTLD, each disputed domain name differs from the Complainant's trademarks by the addition of a hyphen and a descriptive term: "computers", "fragrances" or "sports".

Typically, the addition of these types of descriptive terms to a domain name (with or without a hyphen) which includes the whole of the Complainant's trademark will be found to be confusingly similar to the Complainant's trademark: Las Vegas Sands, LLC v. Full Spiral - NSW, WIPO Case No. D2006-981. In this case, the particular descriptive terms are products which the applicant deals in under its trademark and, accordingly, the likelihood of confusion is only increased.

Accordingly, the Complainant has established the first requirement under the Policy.

B. Rights or Legitimate Interests

The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

A respondent may have rights or legitimate interests in a disputed domain name in the circumstances set out in paragraph 4(c) of the Policy:

(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 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 circumstances set out in paragraph 4(c) of the Policy are examples only and are not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown.

Moreover, while paragraph 4(c) of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing the requirement falls on the Complainant. In view of the difficulty inherent in proving a negative, and because the relevant information is often in the possession of the Respondent only, however, it will be sufficient for the Complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, second edition (WIPO Overview 2.0), paragraph 2.1.

In this case, the Complainant states that it has not licensed or otherwise authorised the Respondent to register the disputed domain names or to use the trademark ARGOS. Nor is the Respondent otherwise connected in any way with the Complainant. Further, none of the disputed domain names is derived from the Respondent's own name. There is also no evidence that the Respondent has ever been known by a name which includes ARGOS or has ever conducted business operations under or by reference to that name.

These circumstances are usually sufficient to raise a prima facie case under the Policy. In addition, the Panel bears in mind that at least one of the disputed domain names, <argos-sports.com>, was initially used, and possibly registered by, an independent third party which the Complainant successfully sued for trademark infringement.

The Respondent has not submitted any Response seeking to defend or justify its registration of any of the disputed domain names or the Complainant's contention that the Respondent has no rights or legitimate interests in the disputed domain names.

In these circumstances, therefore, the Respondent has not rebutted the prima facie case raised against it by the Complainant.

Accordingly, the Complainant has made out the second requirement under the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate under the Policy is that the disputed domain names have been registered and are begin used in bad faith.

The Complainant invokes each of the grounds specified in paragraph 4(b)(i) and (iii) of the Policy to support its allegations that the disputed domain names were registered and are being used in bad faith.

It is not clear from the information supplied by the Registrar when the disputed domain name, <argos-sports.com>, was registered in the Respondent's name. The WhoIs record shows that the domain name was created on January 9, 2004. The evidence from the Wayback Machine referred to in section 4 above indicates that the disputed domain name was being used by Argos Sports (UK) Limited in the period 2007 and 2008. At the time the Complaint was lodged, this disputed domain name resolved to the webpage also described in section 4 above which, amongst other things, had the name of Argos Sports (UK) Limited in the title of the page and further states "our shop is currently unavailable, please check back soon". Further, the Complainant contends that this disputed domain name was transferred to the Respondent in 2009 in the course of the Complainant's trademark infringement proceedings against Argos Sports (UK) Limited.

As the Respondent has not filed a Response, none of these matters are disputed by the Respondent.

In these circumstances, the Panel infers that the disputed domain name, <argos-sports.com>, was registered by the Respondent in bad faith.

The Complainant further contends that the disputed domain name, <argos-sports.com>, is being used in bad faith because the Complainant is a widely known retailer and consumers who arrive at the webpage described above will mistakenly believe that the Complainant's online retail store is not operating to the detriment to the Complainant's goodwill and potentially leading to lost sales as users are diverted away from the Complainant's business.

The Panel notes that passive holding of domain names can constitute use in bad faith under the Policy: Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That conclusion applies even more forcefully in the case of quasi - passive use of this kind which has the potential to be misleading in the way the Complainant contends. Accordingly, the Panel finds that the disputed domain name, <argos-sports.com>, has been both registered and is being used in bad faith.

While the other two disputed domain names <argos-computers.com> and <argos-fragrances.com> do not resolve to any kind of web page, it is plain that the Respondent has registered all three disputed domain names as part of a plan or scheme to exploit the word “argos”. However, the word “argos” has significance in relation to the types of activities specified - computers, fragrances or sports - only as a result of the Complainant's use and reputation in the term “argos”. Accordingly, the Panel finds that the Respondent has registered and used all three disputed domain names in bad faith.

The Panel is reinforced in this conclusion by the failure of the attempted delivery of the email messages and courier to the Respondent's contact details although the Registrar has confirmed that the addresses in question are accurate. The inability to effect delivery to these addresses, although the Registrar has confirmed their correctness, indicates that false address details have been provided which, as in the Nuclear Marshmallows case, supra, is another indication of registration and use in bad faith.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <argos-computers.com>, <argos-fragrances.com> and <argos-sports.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Dated June 17, 2011