WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hultafors Group AB v. my domain limited
Case No. D2014-0597
1. The Parties
Complainant is Hultafors Group AB of Bollebygd, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
Respondent is my domain limited of Walsall, West Midlands, United Kingdom of Great Britain and Northern Ireland ("UK").
2. The Domain Name and Registrar
The disputed domain name <snickers.clothing> is registered with Mesh Digital Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 16, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 21, 2014. 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
Complainant is the owner of registrations for the word and device/design trademark SNICKERS, including at the European Union Office for Harmonization in the Internal Market (OHIM), registration number 003740719, registration dated October 11, 2013, in international classes 8 and 9, covering, inter alia, tool holders, tool belts and various types of protective clothing; at the UK Intellectual Property Office (UKIPO), registration number UK 00001143815, registration dated November 12, 1980, in IC 25, covering articles of industrial clothing, and; at the Swedish Patent and Registration Office (PRV), registration number 187870, registration dated August 26, 1983, in ICs 8 and 18, covering, inter alia, holders for work tools and leather and imitations of leather. The word and device mark consists of the word "Snickers" in white lettering with slightly stylized font superimposed on a black oblong background within a white oblong border.
Complainant develops and sells under the SNICKERS trademark a variety of different clothes and equipment especially designed for the construction industry. It has been in business more than 30 years, and is represented in more than 20 countries. Complainant operates a commercial website at <snickersworkwear.com>, and at <snickersworkwear.co.uk>, where the SNICKERS trademark is displayed.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered to Respondent on February 7, 2014, which is also shown as the creation date of the disputed domain name on a WhoIs database printout from "www.whois.donuts.co". According to Complainant, Respondent is transferee of ownership of the disputed domain name. According to UK corporate records provided by Complainant the organizer/founding director of Respondent is Karl Brough. Complainant indicates that Karl Brough transferred the disputed domain name to Respondent subsequent to receipt of a cease-and-desist and transfer demand sent to him by Complainant on March 10, 2014. However, Complainant has not provided direct evidence regarding the transfer of registration ownership from the alleged initial registrant, Karl Brough, to the enterprise with which he is associated as founding director, i.e.,Respondent "my domain limited".
The disputed domain name redirects to the website "www.123-reg-unavailable.co.uk/", which states that the website is unavailable, and provides a contact link for support. That link is associated with a UK domain name registrar. Complainant does not allege or provide evidence of active use of the disputed domain name in connection with an operational website.
Complainant transmitted a cease-and-desist and transfer demand to Karl Brough regarding the disputed domain name on March 10, 2014. Complainant received the following email reply from Karl Brough dated March 10, 2014:
Thank you for your correspondence dated 10 March 2014 at 14.40 hrs.
Mydomain ltd are as its name suggests a limited company.
The domain is registered to this limited company, we are resellers of domain names.
The domain in question is for sale and we would gladly sell it to your client.
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it owns rights in the trademark SNICKERS, as evidenced by registration and by use in commerce. Complainant contends that the disputed domain name is identical or confusingly similar to its trademark. Complainant argues (in the alternative) that the disputed domain name is identical to its trademark excluding the Top-Level Domain, and is confusingly similar to its trademark if the Top-Level Domain ".clothing" is considered relevant to the assessment. Complainant indicates that its trademark is specifically used to sell and promote clothing, and is registered in IC 25 which is clothing.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not have rights in the SNICKERS trademark, nor has it been authorized by Complainant to use its trademark; (2) Respondent is neither using nor has any intention to use the disputed domain name as evidenced by its offer for sale, and; (3) Respondent has not been known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant contends that Respondent registered the disputed domain name in bad faith, acquiring the disputed domain name well after Complainant began using its trademark, and several months subsequent to Complainant initiating use of its website "www.snickersworkwear.com". Complainant alleges that Respondent was well-aware of its trademark when it registered the disputed domain name, including because Complainant owns registration of the SNICKERS trademark in the United Kingdom, and is operating a website at "www.snickersworkwear.co.uk".
Complainant argues that although Respondent is not using the disputed domain name in connection with an active website, that precedent under the Policy allows for a finding of bad faith use in the absence of active use (i.e. passive holding). In addition, here Respondent's owner-in-fact (i.e. Karl Brough) offered to sell the disputed domain name to Complainant prior to transferring it to Respondent (i.e. my limited domain).
Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration and in the Complaint. The express courier delivery service engaged by the Center reported that Respondent had moved from the address listed in its registration for the disputed domain name, and that the telephone number provided by Respondent was incorrect. There was no indication of any difficulty in transmission by the Center to the email address listed for Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the word and device trademark SNICKERS in the United Kingdom and the European Union. The word portion of that trademark is predominant, with the device consisting of a dark oval background. Respondent has not challenged Complainant's ownership of rights in the trademark. The Panel determines that Complainant owns rights in the trademark SNICKERS in the United Kingdom and the European Union.
The disputed domain name, <snickers.clothing>, identically uses Complainant's trademark as the second-level domain. Complainant has referred to a previous decision under the Policy, Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>), as presenting facts similar to those in this proceeding and suggesting that the result should guide this proceeding. The panelist in that proceeding indicated that, given the advent of multiple new generic Top-Level Domains (gTLDs) "panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of assessment of identity or similarity in a given case, and indeed there is nothing in the wording of the Policy that would preclude such an approach". The panel in WIPO Case No. D2014-0206 decided that it was not necessary to consider the new generic Top-Level Domain (new gTLD) in that case because there is a relatively low threshold for a finding of confusing similarity under paragraph 4(a)(i) of the Policy. The panelist in that case had no doubt that the complainant had satisfied that element of the Policy.
This Panel is inclined to consider the new gTLD in the assessment of confusing similarity in the circumstances of this proceeding. The Panel takes administrative notice that the term "Snickers" also identifies one of the best-selling and best-known candy bars in the world.1 Complainant owns concurrent rights in the SNICKERS trademark for use in connection with its promotion and sale of clothing and related items. Complainant, however, uses a domain name, <snickersworkwear.com>, that distinguishes its offerings from those of the candy bar maker. In the totality of circumstances, the Panel considers that confusing similarity between Complainant's trademark and the disputed domain name is heightened when the new gTLD is included in the assessment, that is, by comparing Complainant's SNICKERS trademark to <snickers.clothing>. The new gTLD ".clothing" is directly and closely associated with Complainant's principal product line. The Panel does not suggest that it would have come to a contrary conclusion had it not included the new gTLD in its assessment. At the same time, the Panel does not consider it necessary to refuse attention to new gTLDs in assessing identity or confusing similarity.
The Panel determines that Complainant has rights in the trademark SNICKERS, and that the disputed domain name <snickers.clothing> is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"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 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." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in Section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not affirmatively provided any ground on which it might establish rights or legitimate interests in the disputed domain name. The disputed domain name does not consist of a generic term for which a legitimate interest might in some circumstances be presumed.
There is no evidence on the record of this proceeding of any use or preparations by Respondent to use the disputed domain name in connection with an active website.
Registration of the disputed domain name standing alone does not establish rights or legitimate interests.
Respondent has not rebutted Complainant's prima facie showing.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." Among those circumstances are: "(i) circumstances indicating that [respondent has] registered or [respondent has] 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent's] documented out-of-pocket costs directly related to the domain name."
In response to a cease and desist and transfer demand from Complainant, Karl Brough offered to sell the disputed domain name to Complainant. According to Complainant, Karl Brough was the named registrant of the disputed domain name at the time this offer was made, and he subsequently transferred the disputed domain name to Respondent. Respondent has not disputed this, although Complainant did not provide direct evidence of the transfer. Complainant has provided concrete evidence in the form of corporate records from the United Kingdom that Karl Brough is the founding director of Respondent. Under these circumstances, the Panel considers that Karl Brough's offer to sell the disputed domain name to Complainant was made on behalf of Respondent, whether that offer was made as the owner of the registration of the disputed domain name (as the initial or creation registrant), or as founding director of Respondent (a related party transferee). The fact of the related party transfer, if it was in fact made, does not affect attribution of the conduct to Respondent as present owner of the disputed domain name. A transfer of registration between related parties generally does not affect the interests of the owner of registration in the same manner as might a transfer to an independent third-party. (See, e.g., Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609).
The Panel determines that Respondent registered the disputed domain name for purposes of offering it for sale to Complainant, and did offer it for sale to Complainant. As such, Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
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 <snickers.clothing> be transferred to Complainant.
Frederick M. Abbott
Date: May 26, 2014
1 See "Snickers" entry in Wikipedia, "http://en.wikipedia.org/wiki/Snickers", Panel visit of May 25, 2014.