WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DSG Retail Limited v. Mr. Adrian Timofticiuc
Case No. D2013-1900
1. The Parties
The Complainant is DSG Retail Limited of Hempstead, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Alex Beal, UK.
The Respondent is Mr. Adrian Timofticiuc of Vaslui, Romania.
2. The Domain Name and Registrar
The disputed domain name <knowhowinsurance.com> (the “disputed Domain Name”) 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 8, 2013. On November 8, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 8, 2013, the Registrar transmitted by e-mail 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2013.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on December 19, 2013 (the Panel). 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 DSG Retail Limited (“the Complainant”), a British company operating in the fields of retailers of electrical, computing, telecommunication, and of other products and services under the KNOWHOW brand. Furthermore, the Complainant is the holder of the trade mark registration in the UK for the work mark KNOWHOW.
The disputed Domain Name <knowhowinsurance.com> was registered on January 16, 2012.
5. Parties’ Contentions
The Complainant is a leading retailer of electrical, computing, telecommunication and other products and services under the KNOWHOW brand. These include: delivery and set up of IT products; financial services and service contracts; cloud backup and storage; technical support; retail and online movies.
The registration date of the Complainant’s domain name <knowhow.com> is June 22, 1995, <knowhow.co.uk> January 14, 1997, and <knowhowmovies.com> June 27, 2011.
The UK trade mark of KNOWHOW was registered on January 21, 2011, for goods in class 9, 35, 36, 37, 39, 40 and 42, under number UK00002557010.
The disputed Domain Name is identical or confusingly similar to the trade mark in which the Complainant has rights.
The Complainant offers its services from the website <knowhow.com> which has received over 20 million visitors from its launch. The Complainant is also the registered proprietor of <knowhow.co.uk> which links through to <knowhow.com>. In addition, the Complainant owns <knowhowmovies.com> which is a separate service offering under the KNOWHOW brand.
The Complainant has been offering services under the registered KNOWHOW brand from August 2010. A total of 61 services are available to customers. As a result of the Complainant’s activities it has built up substantial goodwill and gained a valuable reputation in the trade mark in relation to the products for which it is registered. The goodwill associated with the name KNOWHOW is the property of the Complainant and cannot pass to any third party without a formal assignation. No such assignation in favour of the Respondent has been taken place.
The disputed Domain Name contains a word that is identical to the name KNOWHOW in which the Complainant has common law rights and the Complainant has a registered trade mark. In fact, the Complainant is already offering insurance services under the KNOWHOW name. The additional generic word “insurance” fail to distinguish the disputed Domain Name and does not avoid confusion for customers.
The Respondent has no rights or legitimate interests in respect of the disputed Domain Name
The Complainant has offered insurance services under the KNOWHOW brand since 2010, both online and in its retail stores. It is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed Domain Name. The content displayed at the disputed Domain Name is primarily text which describes various types of insurance products, including laptop and computer insurances. Sponsored links are included as banner advertisements on the top of the webpage displayed at the disputed Domain Name. The Complainant reasonably suspects that the Respondent registered the disputed Domain Name and continues to hold it simply to generate clicks through revenue from the advertisements displayed on the website. The content, displayed at the disputed Domain Name, suggests that no new content has been added on the website since November 2012. The Complainant concludes that this lack of activity demonstrates that the Respondent is holding the disputed Domain Name as a blocking registration to prevent others, including the Complainant, from acquiring the disputed Domain Name.
The Respondent has never asked for, and has never been given any permission by the Complainant to register or use any domain name incorporating the Complainant’s trade mark. The Respondent has no registered interests in the trade mark KNOWHOW in the UK Intellectual Property Office register or in the WIPO worldwide register.
The disputed Domain Name was registered and is being used in bad faith
The Complainant wrote to the Respondent on August 15, 2013, in relation to the use of the disputed Domain Name, advising that the registration and use of the disputed Domain Name was infringing the Complainant’s registered trade mark of the name KNOWHOW and to ask for the disputed Domain Name to be transferred to the Complainant. No response was received to the letter, though it is clear that the Respondent received the letter.
Given the widespread use, reputation and notoriety of the KNOWHOW mark, the Respondent must have been aware that in registering the disputed Domain Name the Respondent was misappropriating the valuable intellectual property of the owner of the KNOWHOW trade mark. Given the noted letter above, the Respondent has been noticed of the Complainant’s rights, and yet had failed to take any material action to cease infringing such rights.
The Respondent’s registration of the disputed Domain Name has also prevented the Complainant from registering the disputed Domain Name which corresponds to the Complainant’s trade mark contrary to paragraph 4(b)(ii) of the Policy. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to websites located at the disputed Domain Name, by creating a likelihood of confusion with the Complainant’s trade mark in breach of paragraph 4(b)(iv) of the Policy. The Respondent will never be capable of using the disputed Domain Name for a legitimate purpose as the notoriety of KNOWHOW is such that members of the public will always associate it with the KNOWHOW trade mark.
The disputed Domain Name does not provide any contact details for its users, which has been construed as bad faith under the Rules. In fact, the only contact details provided on the disputed Domain Name, are the contact details of the Complainant. The website found at the disputed Domain Name does also display content directly copied from the Complainant’s website “www.knowhow.com”. The Complainant submits that this use with a significant amounts of the content reproduced is evidence of bad faith, as the Respondent is motivated to create confusion with the KNOWHOW trade mark with intent to attract users for commercial gain. It is clear parallels between this case and the complaint in the case The British Broadcasting Corp v. Jaime Renteria, WIPO Case No. D2000-0050 (March 23, 2000).
The Respondent uses other third party sites’ content, the source of which it does not credit. By way of an example, on the website of the disputed Domain Name a link is provided entitled “KNOWHOW Whatever happens laptop insurance”. When this link is clicked the user is presented with information which is taken directly from the Yahoo Answers website where details of the Complainant’s KNOWHOW computer insurance offering is provided. It is the Complainant’s view that linking to such content is clearly intended to provide some form of connection or association between the Complainant and the Respondent. The use of “WHATEVER HAPPENS” by the Respondent on the disputed Domain Name is a separate instance of trade mark infringement which the Complainant will address with the Respondent, however the Complainant considers that use of a second registered trade mark owned by the Complainant is further evidence of the Respondent‘s bad faith use of the disputed Domain Name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the holder of the UK registered trade mark KNOWHOW.
The Disputed Domain name consists of the word “knowhow” with the addition of the generic word “insurance” and the gTLD “.com”. According to well-established consensus among UDRP panels, the gTLD is not distinguishing.
The Panel finds that the Complainant’s KNOWHOW trade mark is the distinctive part of the disputed Domain Name, and the addition of the generic word “insurance” is not sufficient to avoid Internet users’ confusion in relation to the trade mark. The added word “insurance” is more likely to increase confusion to customers because of its close association with connections to the Complainant’s business.
Consequently, the Panel finds the disputed Domain Name to be confusingly similar to the trade mark in which the Complainant has rights. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., and The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission has been granted to the Respondent to register the disputed Domain Name. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests to the disputed Domain Name which entirely incorporates the Complainant’s trade mark.
Having considered the submissions of the Complainant, and the absence of a formal response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s KNOWHOW trade mark in the disputed Domain Name. Nor does the Panel find any other indications that the Respondent is making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed Domain Name.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The disputed Domain Name was registered approximately seventeen years after the registration date of the Complainant’s domain name <knowhow.com> and one year after the registration date of the UK trade mark KNOWHOW. Furthermore, the Respondent has combined the Complainant’s trade mark KNOWHOW with the word “insurance”, which is included in goods and service of class 36 and within the scope of the Complainant’s rights under the trade mark.
The Complainant’s formal notification was delivered to the Respondent on August 15, 2012. The Respondent has not rebutted the Complainant’s contentions. The word “knowhow” is distinctive and protectable in relation to, inter alia, insurance. It is not probable that the Respondent has selected the disputed Domain Name including the trade mark KNOWHOW without knowledge of the Complainant’s trade mark.
Having regarded the facts of this case, it is in the Panel’s view apparent that the disputed Domain Name was registered with knowledge of the Complainant’s trade mark rights and with the intention of attracting customers for commercial gain by creating a likelihood of confusion with that same mark as to the source, affiliation, or endorsement of the Respondent’s website. All in all, the Panel finds that the disputed Domain Name has been registered and used in bad faith. The third and final element of the Policy is fulfilled.
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 <knowhowinsurance.com> be transferred to the Complainant.
Date: January 3, 2014