WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Building Supplies R’Us Limited v. Global Graphics Associates Limited
Case No. D2008-0509
1. The Parties
The Complainant is Building Supplies R’Us Limited, Worcester, United Kingdom of Great Britain and Northern Ireland, represented by Coblentz, Patch, Duffy & Bass, LLP, of Birmingham, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Global Graphics Associates Limited, of Kenilworth, Warwickshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <buildingsuppliesrus.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2008. On April 3, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows 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 together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2008.
The Center appointed David Perkins as the sole panelist in this matter on May 20, 2008. 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
4.A. The Complainant
Mr. Kelly’s registration of the disputed domain name
4.A.1 On December 6, 2006, Mr. Frank Kelly registered the disputed domain name. He did so in anticipation of establishing the Complainant, which was in fact incorporated on December 18, 2006. The Complainant’s case is that the domain name was held by Mr. Kelly on trust for the Complainant and, accordingly, the Complainant became the beneficial owner of the domain name. Mr. Kelly is the founder of the Complainant.
4.A.2 On the same date (December 6, 2006) Mr. Kelly also registered the domain name <buildingsuppliesrus.co.uk>, which – as will be explained below – is the domain name currently used by the Complainant for its website.
The business of the Complainant
4.A.3 The Complainant commenced trading under the name and mark “Building Supplies R’ Us” in late March 2007. It operates an e commerce building supplies website aimed at the building trade and general public. It takes nationwide orders from customers and supplies building materials through a network of independent builder’s merchants throughout the United Kingdom. In addition to heavy duty building products, the Complainant’s range now includes specialist building products, tools, plumbing products, kitchen furniture, specialist clothing and footwear.
4.A.4 In the period from launch in late March 2007 to the end of February 2008, the Complainant achieved sales of £1.4 Million. It has 135 distributors located throughout the United Kingdom and has signed up 1490 trade accounts for both business and domestic customers.
The “Building Supplies R’Us” trademark
4.A.5 The Complainant asserts common law trade mark rights in the name and mark “Building Supplies R’Us”, In addition to the disputed domain name and the <buildingsuppliesrus.co.uk> domain name registered by Mr. Kelly on December 6, 2006, its website can also be accessed through the additional domain names of which the Complainant is the registrant. They are <buildingsuppliesrus.net/ .org / .info / ,biz / .org.uk / .me.uk/ and / tv.>
4.A.6 In terms of launching, advertising and promoting the “Building Supplies R’Us” business the Complainant spent £34,000.00 during the period March to June 2007 in placing advertisements and press releases in printed journals and newspapers. During the period April and May 2007 the Complainant also ran national radio and television advertising campaigns throughout the United Kingdom at a cost in excess of £340,000.00.
4.A.7 The “Building Supplies R’Us” business has been advertised in 14 different trade publications and by press release information to 208 local and national trade journals and consumer newspapers.
4.A.8 The Complainant also promotes and uses the “Building Supplies R’Us” trademark on its corporate vehicles and merchandise including builder’s coats, hats and mugs that have been branded with that trademark and provided to prospective customers.
4.A.9 The Complainant asserts that in the short period – just over 12 months – since it began trading, its “Building Supplies R’Us” name and mark has become synonymous with its business of the online supply of building and related products across the United Kingdom.
SEL Limited and its relationship with the Complainant
4.A.10 In January 2007 the Complainant retained SEL Limited [“SEL”] to construct the Complainant’s website, to host that website and to register additional domain names in Mr. Kelly’s name on behalf of the Complainant. Those domain names included the seven (7) buildingsuppliesrus TLDs listed in paragraph 4.A.5. above.
4.A.11 The Complaint asserts that it was unaware that SEL had sub-contracted construction of the “Building Supplies R’Us” website to the Respondent. The reference to this is contained in the extract from the Respondent’s website set out in paragraph 4.B.4 below.
4.A.12 The Respondent claims in that extract at its website that SEL is its “long standing partner”.
4.A.13 In May 2007 the Complainant requested SEL to arrange for the disputed domain name to direct to the “www.buildingsuppliesrus.co.uk” website.
4.A.14 The Complainant explains that a dispute has arisen between it and SEL arising from construction of the website and the manner in which it has been promoted and hosted.
4.B The Respondent
4.B.1 In the absence of a Response, all that is known about the Respondent is contained in the Complaint and certain of the documents annexed to the Complaint.
4.B.2 The business of the Respondent is described on its website in the following terms:
“We specialise in web design, web development, ecommerce solutions, hosting, web marketing, search engine optimization, microsite development and content management systems. Our substantial portfolio covers clients from all sectors including Blue Chip, construction, retail, B2B, professional services, charities and public section.”
4.B.3 The Respondent was founded in 1999 by two brothers, Michael and Philip Deeley.
4.B.4 An extract from the Respondent’s website at “www.globalgraphics.co.uk” states:
“Building Supplies R’Us
Globalgraphis are proud to have developed this unique web site in conjunction with our long standing partners, SEL Limited. This is the first website of its kind to offer a national wide delivery service of building products anywhere in the United Kingdom. This is a completely bespoke e-commerce solution with multiple payment gateways. The functionality of the site also allows for partner access rights and up to the second real time information of delivery status of your goods. A roaring success.”
4.B.5 On a date – as yet unknown to the Complainant – the disputed domain name was transferred to the Respondent. The Complainant says that this was without the consent of Mr. Kelly or itself. However, the Complainant believes that because the address provided for the administrative contact of the disputed domain name was the Respondent’s email address, the Respondent was in a position to manage the disputed domain name.
4.B.6 The Complainant says that its first knowledge of the transfer of the disputed domain name occurred in January 2008 when a customer of the Complainant drew the Complainant’s notice to the fact that the disputed domain name directed Internet users, not to the Complainant’s website at “www.buildingsuppliesrus.co.uk” but to the website of Wickes Building Supplies Limited. Wicks has over 100 stores throughout the United Kingdom specializing in the supply of building supplies. Wickes is one of the Complainant’s largest competitors.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 The Complainant says that the disputed domain name is identical to its common law trademark “Building Supplies R’Us”.
Rights or Legitimate Interests
5.A.2 As to rights or legitimate interests in the disputed domain name, the Complainant says that it has not licensed or otherwise authorized the Respondent to use the “Building Supplies R’Us” trademark. Nor was there, the Complainant says, any bona fide use by the Respondent before notice of the dispute of the disputed domain name. The Respondent website is at “www.globalgraphics.com” and for the reasons set out in paragraph 4.B above the Respondent’s use of the disputed domain name in January 2008 to direct to one of the Complainant’ biggest competitors (Wickes) was certainly not a bona fide use.
5.A.3 Nor, for the same reasons, can it be said that such use by the Respondent of the disputed domain name is a legitimate non commercial or fair use, without intent for commercial gain to misleadingly divert consumers. Plainly, the Complainant says, an Internet user would expect the disputed domain name, which incorporates totally its “Building Supplies R’Us” trademark, to direct to its own website, not that of a major competitor. The Complainant exhibits the email of January 28, 2008 which put it on notice of this use of the disputed domain name by the Respondent. In material part, that email reads:
“… tried to go to your site via buildingsuppliesrus.com and got taken to Wickes instead – you can’t be any good if you can’t even get your own domain names sorted!”
5.A.4 Finally, the Complainant says there is no evidence that the Respondent has been commonly known by the domain name. As noted in paragraph 5.A.2 above, the Respondent’s homepage is at <www.globalgraphics.co.uk>.
Registered and Used in Bad Faith
5.A.5 The Complainant asserts that circumstances within paragraph 4(b)(ii) and (iv) of the Policy are present in this case.
5.A.6 The Complainant asserts that the Respondent must clearly have transferred the disputed domain name into its own name as registrant in bad faith. Neither Mr. Kelly nor the Complainant authorized or consented to such transfer. As explained in paragraph 4.A.13 above, the Complainant’s instruction to SEL, the Respondent’s so-called “long-standing partner”, in May 2007 was to direct the disputed domain name to its homepage at “www.buildingsuppliesruse.co.uk”, not to enable the Respondent wrongly to obtain a transfer of that domain name into its own name. This falls directly within paragraph 4(b)(ii) of the Policy.
5.A.7 The use of the disputed domain name described in paragraph 4.B.6 above, is the Complainant says, clearly intended to create a likelihood of confusion with is “Building Supplies R’Us” trademark. The January 2008 email from one of its customers merely serves to illustrate this: see, paragraph 5.A.3 above.
5.A.8 The Complainant explains that it did not request transfer of the disputed domain name before filing this Complaint out of a concern that the Respondent might take retaliatory action by transferring the domain name to another party, perhaps even to Wickes or to another of the Complainant’s competitors.
5.A.9 The Complainant says that it can only conclude in the circumstances – namely, its present dispute with SEL and the long standing partnership between the Respondent and SEL – that the Respondent’s actions in obtaining the disputed domain name and using it to redirect to Wickes are being motivated out of malice.
5.A.10 The Respondent has represented and warranted in its Registration Agreement that its registration of the disputed domain name will not infringe the rights of any third party, that such registration is not for an unlawful purpose and that it will not knowingly use the domain name in violation of applicable laws. Here, the Respondent plainly knew about the Complainant’s trademark rights and that use of the disputed domain name to redirect to Wickes would cause confusion. The Complainant points to the extract from the Respondent’s website quoted in paragraph 4.B.4 above.
As already noted, no Response has been filed.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 Although the Complainant had only traded for just over 12 months under the “Building Supplies R’Us” name and mark by the date this Complaint was filed, on the evidence presented of the use of that name and mark since late March 2007 and the advertising and promotion of the “Building Supplies R’Us” name and mark in the Press, on the radio and on television, the Panel is satisfied that it has established common law trademark rights in that mark.
6.6 The disputed domain name is identical to that mark. Indeed, it was first registered by Mr. Kelly on behalf of the Complainant Company which was incorporated less than two (2) weeks later.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 For the reasons put forward by the Complainant – see, paragraphs 5.A.2 and 5.A.4 above – the Complainant has established that none of the circumstances set out in paragraph 4(c) of the Policy apply in this case. There is no need to amplify on what is said in those paragraphs. Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 For the reasons put forward by the Complainant – see, paragraph 5.A.5 to 5.A.10 above – the Complaint has demonstrated that circumstances falling within paragraphs 4(b)(ii), (iii) and (iv) of the Policy are present in this case. Accordingly, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy. The fact that the Respondent has failed to file a Response is a further indication of its bad faith in this matter.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buildingsuppliesrus.com> be transferred to the Complainant.
Dated: May 27, 2008