WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zoopla Property Group Ltd. v. directNIC, LTD
Case No. D2013-1465
1. The Parties
The Complainant is Zoopla Property Group Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Sanderson & Co., United Kingdom.
The Respondent is directNIC, LTD of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <primelocationrentals.com> (the “Disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”). The Disputed Domain Name was registered on July 13, 2013.
3. Procedural History
The Complaint concerning the domain names <primelocationrentals.com> and <primelocation-rentals.com was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 19, 2013, the Center transmitted by email to the registrars a request for registrar verification in connection with the two domain names. On August 20 and 26, 2013, the registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the domain names which differed from the named Respondents and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 30, 2013, concerning the Disputed Domain Name <primelocationrentals.com> and withdrawing the domain name <primelocation-rentals.com> from the Complaint.
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 September 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2013.
The Center appointed Michael D. Cover as the sole panelist in this matter on September 30, 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.
4. Factual Background
The Complainant operates the PRIMELOCATION property service, which is at “www.primelocation.com”. This features properties for sale and rent in the United Kingdom and internationally and also provides advice and tips on property sale and rental. This service was launched in 2001 and, since then, the PRIMELOCATION trademarks have been used extensively in relation to these services.
The Complainant is the proprietor of various registered trademarks consisting of or including PRIMELOCATION, including as (European) Community Trade Marks. These have registration or priority dates going back to 2001. They include PRIMELOCATION.COM. The Complainant owns a considerable number of domain names which again consist of or include the mark PRIMELOCATION, the earliest having been registered in 1999.
The Respondent is listed in the WhoIs entry as directNIC, LTD of Georgetown, Grand Cayman. The Complainant states that the Disputed Domain Name was transferred to directNIC, LTD. following a complaint to the Registrar that the Disputed Domain Name was being used fraudulently.
5. Parties’ Contentions
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that the Disputed Domain Name and the Complainant’s trademarks predominantly comprise the word “Primelocation”. It submits that, besides its registered rights, it also has unregistered rights acquired by use. With regard to the Disputed Domain Name being confusingly similar to its rights, the Complainant states that the “.com” element is just a generic top level domain identifier and that this may be ignored when making the comparison. It goes on to say that the rest of the Disputed Domain Name is the descriptive word “rentals”, which describes services offered by the Complainant. The Complainant concludes by stating that the word “Primelocation” contained in the Disputed Domain Name is identical to its relevant trademark rights and the Disputed Domain Name is confusingly similar to its trademarks for PRIMELOCATION.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant notes that the Respondent is the transferee of the Disputed Domain Name and submits that the Respondent is not the true owner of the Dispute Domain Name. The Complainant states that the Respondent is not licensed to use the Complainant’s trademarks, is not in any way associated with the Complainant or any other of the Complainant’s group of companies. The Complainant notes that the Disputed Domain Name was registered on July 13, 2013, long after the Complainant first used and registered the trademark PRIMELOCATION.
The Complainant rehearses the possible ways that the Respondent might seek to demonstrate its rights or legitimate interests in the Disputed Domain Name, as set out in paragraph 4(c) of the Policy. The Complainant noted that any use of the Disputed Domain Name has been to resolve to cloned or fake websites, which offer services aimed closely to match the Complainant’s genuine site at “www.primelocation.com”. It refers to Annexes 2 and 3 to the Amended Complaint and states that the Complainant’s name was used at the bottom of the website to which the Disputed Domain Name resolved before the Complaint. The Complainant submits that this use cannot be considered as bona fide.
The Complainant notes that its investigations have failed to locate any registrations for PRIMELOCATION in the name of the Respondent or its predecessor and have also failed to find any evidence that the Respondent or its predecessor have been commonly known by the Disputed Domain Name. The Complainant also submits that such use as has taken place is neither legitimate nor noncommercial and is in fact commercial in nature and an infringement of its registered trademark rights.
The Disputed Domain Name was registered and is being used in bad faith
The Complainant points to Annexes 2 and 3 to the Amended Complaint, which show the website to which the Disputed Domain Name resolved before the Complaint. It says that the pages there exhibited linked to pages on the Complainant’s genuine website and show the Complainant’s mailing address on the contact page. The Complainant also refers to Annexes 7 and 8 to the Amended Complaint, which are strings of emails as sent to the individuals using the Disputed Domain Name. The Complainant says that there has been a deliberate attempt to create confusion and divert internet traffic. It concludes that the Disputed Domain Name was registered and is being used in bad faith.
For the above reasons, the Complainant requests the Panel to decide that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant is required to demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark PRIMELOCATION in which it has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in its trademark PRIMELOCATION. It has extensive registered trademarks consisting of or including that word and has also built up rights through use since it started using the trademark in 2001.
The Panel also accepts the submissions of the Complainant that the Disputed Domain Name is confusingly similar to the trademark PRIMELOCATION, in which the Complainant has rights. The dominant part of the Disputed Domain Name is the word “primelocation” and that trade mark of the Complainant has been incorporated into the Disputed Domain Name in its entirety. The addition of the dictionary word “rentals” does not detract from this. Indeed, if anything, in this case, the likelihood of confusion is increased, as the word “rentals” is used by the Complainant in relation to its business. It has been the consensus view of successive UDRP panels that the mere addition of a descriptive word, in this case “rentals”, or the suffix “.com” is insufficient to avoid a finding of confusing similarity.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not been licensed or authorised by the Complainant to us the Complainant’s trademark PRIMELOCATION.
The Respondent has not filed a response. Further, there is no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel finds that, on the evidence before it and on the balance of probabilities, such use that has taken place was not bona fide. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name. There is also no evidence to suggest that the Respondent has made legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the reputation of the trademark at issue. There is compelling evidence in the other direction, as demonstrated by the evidence of the Complainant.
C. Registered and Used in Bad Faith
The Panel notes the submissions of the Complainant with regard to the Disputed Domain Name having been registered and used in bad faith. The Panel accepts these submissions and finds, on the balance of probabilities on the evidence, that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract for commercial gain Internet users to the website to which the Disputed Domain Name resolved. This was by creating a likelihood of confusion with the Complainant’s trademark PRIMELOCATION as to the source, affiliation or endorsement of the website in question. This constitutes bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
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 <primelocationrentals.com> be transferred to the Complainant.
Michael D. Cover
Date: October 18, 2013