WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Home Retail Group v. Home Retail Group / Rafique Holding
Case No. D2012-2335
1. The Parties
The Complainant is Home Retail Group Plc of Milton Keynes, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Home Retail Group / Rafique Holding, both of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <homeretailgroups.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, 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 November 29, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 30, 2012.
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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 11, 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.
On December 4, 2012, the Complainant filed a Supplemental Filing. The said filing noted that the Complaint was originally brought against “Home Retail Group” (being both the name of the Complainant and the name of the legal registrant of the disputed domain name as disclosed in the Complainant’s original WhoIs search result) however that new information produced by the Registrar had identified the registrant as “Rafique Holding”. The Complainant therefore asserted that the proper Respondent was the latter entity rather than “Home Retail Group”.
Paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides that panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. In the present case, having reviewed the Complainant’s Supplemental Filing, the Panel determined that it was unnecessary to admit this. The Panel has listed the Respondent in this case as “Home Retail Group / Rafique Holding”. The retention of the original registrant name, here “Home Retail Group”, is usual practice in cases under the Policy where, following registrar verification, there has been a change of registrant name in the WhoIs record. The purpose of this practice is to ensure that if an order for transfer or cancellation of the disputed domain name is made by the Panel it may be effectively executed by the concerned registrar.
4. Factual Background
The Complainant is a leading home and general merchandise retailer in the United Kingdom of Great Britain and Northern Ireland (“UK”). In its last financial year, the Complainant engaged in 193 million customer transactions and had sales of almost GBP 5.5 billion. The Complainant holds a 10% share of the UK general merchandise market and has more than 50,000 employees. The Complainant trades through three of the UK's most recognizable retail brands, namely “Argos”, “Homebase” and “Habitat” and has a network of over 1,000 stores across the UK and Ireland. The Complainant sources products and services from suppliers all over the world and maintains a dedicated direct sourcing arm in Hong Kong, China.
Since 2006, the Complainant has conducted its business under and by reference to the mark HOME RETAIL GROUP. The Complainant maintains a website at “www.homeretailgroup.com” through which it provides corporate information and other such data expected of a publically traded company. The Complainant is the owner of a number of registered trade marks for the device and word mark HOME RETAIL GROUP including European Community Trade Mark number 005307962, registered on August 23, 2007; UK Trade Mark number 2433822, registered on September 28, 2007; and Chinese Trade Mark number 5601197, registered on April 21, 2011. The figurative element of the Complainant’s trade mark consists of a partly open box device. The words “home retail group” appear on the leading face of this box.
The disputed domain name was created on October 2, 2012. On October 5, 2012, the WhoIs record for the disputed domain name showed a registrant name of “Home Retail Group” and an administrative contact name of “T. Duddy”. Mr. T. Duddy is the Complainant’s Chief Executive. The registrant address listed on the said WhoIs record was the Complainant’s business address with the addition of the word “London”. Neither the Complainant nor Mr. Duddy authorized an application for, or applied for, the registration of the disputed domain name, nor did either of them authorize the sending of, or send, any emails from any email address associated with the disputed domain name.
Until taken down by the Registrar at the request of the Complainant’s legal representatives, the website associated with the disputed domain name reproduced the Complainant’s figurative trade mark. From about October 4, 2012, emails were issued to various third parties from an address associated with the disputed domain name. The said emails claimed to be from the Complainant’s said Chief Executive. The said emails were part of an allegedly fraudulent scheme which appears to have had as its object one or more of the following activities: identity theft, “phishing” for personal information, the deployment of computer viruses and advance fee fraud. A substantial amount of evidence was provided by the Complainant regarding the nature of the alleged fraud however the Panel has determined that it would not be appropriate to describe the circumstances and method in detail in this Decision so as to avoid wider dissemination of the modus operandi of the person or persons controlling the disputed domain name.
By November 29, 2012, the WhoIs for the disputed domain name showed that the registrant name had been changed to “Rafique Holding” while the administrative contact name had been amended to “Rahman, Rafique”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the addition of the letter “s” at the end of the word “group” in the disputed domain name is the only difference between the disputed domain name and the Complainant's own domain name and the Complainant's registered trade marks as noted in the Factual Background section above.
The Complainant asserts that the fact that the disputed domain name was used in connection with a fraudulent scheme demonstrates that the Respondent has no rights or legitimate interests in it. The Complainant notes that the emails described in the Factual Background section above were sent with the intention of misleading the recipient into believing that they were genuine emails containing genuine requests for information from the Complainant's Chief Executive, when they were not. The Complainant adds that the only plausible explanation for such activity is that the owners and operators of the disputed domain name, are conducting a phishing exercise and intend using information obtained by this means for fraudulent and unlawful purposes.
The Complainant submits that the Respondent has self-evidently registered the disputed domain name in order to impersonate the Complainant and to deliberately mislead members of the public. The Complainant points out that in order to maximize the likelihood of confusion on the part of consumers, the website associated with the disputed domain name reproduced the Complainant’s trade mark including both words and box device. The Complainant asserts that the use of the disputed domain name in connection with a fraudulent scheme is a clear indicator of registration and use in bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has demonstrated to the satisfaction of the Panel that the Complainant has rights in the trade mark HOME RETAIL GROUP. To the extent that the registered trade marks cited by the Complainant are figurative in nature, the Panel is satisfied that the dominant textual component of the trade mark is clearly distinguishable from the figurative element of the box-style logo and that the latter may be disregarded for the purposes of assessing identity or similarity (see the WIPO Overview 2.0, paragraph 1.11). In these circumstances, the only differences between the Complainant’s trade mark and the disputed domain name are the spaces in the Complainant’s trade mark and the addition of the letter “s” at the end of the disputed domain name, bearing in mind that the top level domain “.com” is disregarded as is customary in cases under the Policy on the basis that this is required for technical reasons only and is wholly generic in nature. The spaces in the Complainant’s trade mark may also be disregarded for the purposes of comparison as such spaces cannot be reproduced in a domain name for technical reasons. This leaves the addition of the letter “s” in the disputed domain name. In the Panel’s view this extra letter does nothing to distinguish the disputed domain name from the Complainant’s trade mark and indeed it may be considered to heighten the potential for confusion, given that it confers an appearance on the disputed domain name of being a plural form of the Complainant’s trade mark.
In all of the above circumstances, the Panel determines that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights and that accordingly the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trade mark 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 trade mark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant describes, in considerable detail, the nature of the alleged fraudulent purpose to which the disputed domain name has been put. The Complainant asserts that the registration and use of the disputed domain name in connection with such a purpose cannot confer any rights or legitimate interests upon the Respondent. The Complainant’s submissions are accompanied by substantial supportive evidence including copy emails sent from addresses associated with the disputed domain name and the responses which these elicited from various recipients. In the Panel’s opinion, the Complainant’s submissions and accompanying evidence are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production therefore falls upon the Respondent to bring forward evidence of any such rights or legitimate interests.
The Respondent has not made any response to the Complainant’s contentions and furthermore, given the extent of the detail provided by the Complainant as to the use of the disputed domain name for allegedly fraudulent purposes, the Panel cannot conceive of any possible rights or legitimate interests in the disputed domain name which the Respondent could have claimed. The record does not show any use of the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use thereof. Nor does the record indicate that the Respondent has been commonly known by the disputed domain name, or authorised to use the Complainant’s trade mark.
For these reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you 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 trade mark 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 trade mark 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 online 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 Complainant asserts that the Respondent has used the disputed domain name for an allegedly fraudulent scheme, including identity theft and “phishing” activities. The Complainant submits that the scheme is designed to induce third parties to believe that emails sent from an address associated with the disputed domain name, and the corresponding website, originate from the Complainant. As noted above, the Complainant has provided extensive evidence including multiple examples of the said emails showing that these were issued in the name of the Complainant and its Chief Executive. The Complainant has also produced replies to the said emails obtained from various third party recipients which indicate to the Panel that many of such recipients believed that they were communicating with the Complainant when they were not.
The examples of bad faith registration and use listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from in which bad faith may be found. The record in the present case demonstrates to the Panel's satisfaction that the Respondent intentionally targeted both the Complainant and its trade mark to provide apparent credibility to a range of communications with third parties using the disputed domain name which had various fraudulent schemes as their ultimate object. The Panel is satisfied that this conduct of the Respondent constitutes registration and use in bad faith of the disputed domain name.
In all of these circumstances the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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, <homeretailgroups.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Date: January 25, 2013