WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B & Q Plc. v. Georgina Varmuza
Case No. D2014-0745
1. The Parties
The Complainant is B & Q Plc., of Eastleigh, Hampshire, United Kingdom of Great Britain and Northern Ireland (UK), represented by Sipara, UK.
The Respondent is Georgina Varmuza of Great Milton, UK.
2. The Domain Name and Registrar
The disputed domain name <bandqhandymen.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2014. On May 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, the Registrar 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 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 May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 3, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 12, 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
According to the Complainant, it is a part of the Kingfisher group, the third largest home improvement retailer in the world. The Complainant specialises in the sale of products such as do it yourself products, building materials, home improvement and gardening supplies, household goods and appliances. The B&Q brand has been used since 1969 and there are now over 330 stores in the UK and lreland, with others in China. The scale of the Complainant's business over the past 10 years has been an annual turnover of between £3.6 billion and £4.1 billion. Advertising in the 2010-2011 year was on the scale of £160 million.
The Complainant holds a substantial number of registered trademarks internationally, of which the following are representative:
B&Q, Community Trademark (CTM), Office for Harmonization in the Internal Market (OHIM), registered November 21, 2001, registration number 1037324, classes 9, 35, 36, 37, 38, 39, 40, 41, 42;
B&Q, CTM, OHIM, registered April 12, 2002, registration number 1993450, classes 31, 35;
B&Q, United Kingdom Patent Office Trade Marks Registry, registered May 24, 1991, registration number 1327953, classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 26, 27, 28, 31, 32.
The Complainant uses principally the domain names <bandq.com> and <diy.com>; the first redirects to the second.
Nothing of substance is known about the Respondent except for the contact details provided for the purpose of registration of the disputed domain name, which appears to have been registered on November 3, 2010. A person named Xan Varmuza, stating he is the son of the Respondent, has claimed to be the effective owner of the disputed domain name.
5. Parties' Contentions
The Complainant's contentions include the following.
The Complainant contends that it has rights in the registered trademarks listed in section 4 above and has produced copies of registration documents from the relevant online sources. The Complainant has produced a list of 101 B&Q trademarks that it owns, registered in various countries.
The Complainant contends that the disputed domain name is confusingly similar to the trademark B&Q and that the top level directory component ".com" of the disputed domain name may be disregarded. The Complainant says the disputed domain name has the ampersand symbol ("&") of the trademark replaced with "and" because the ampersand is not a permitted character in a domain name in the present context. The component "handymen" in the disputed domain name is descriptive of the Complainant's business and its incorporation into the disputed domain name does not distinguish it from the Complainant's trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states it has never authorised the Respondent to register or to use a domain name confusingly similar to the Complainant's trademark. The Complainant says that, despite the Respondent's bare claim to the contrary, there is no evidence the Respondent has made preparations to use the disputed domain name in connection with a business or in connection with a bona fide offering of goods or services.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent has registered the disputed domain name for the primary purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. In exchanges of correspondence, the Respondent sent an email dated March 24, 2013, asking for a payment of £500 for the disputed domain name. The Respondent offered that the payment would be split equally between two named charities and either the Complainant or the Respondent could send the donations directly to the charities. The Complainant declined the offer.
The Complainant contends that a claim by the Respondent to be planning to work in cooperation with and for the benefit of the Complainant is without substance. In emails between the Complainant and the Respondent, and according to the Complainant's notes dated January 21, 2013 of a conversation with the Respondent, the Respondent made references to an intention to work with the Complainant. The Complainant records that it has not contemplated any such arrangements with the Respondent. The Respondent would require a trademark licence agreement with the Complainant, or otherwise would be likely to infringe the Complainant's trademark.
Further in respect of bad faith, the Complainant contends that the disputed domain name constitutes a blocking registration. The disputed domain name is in use to direct intended customers of the Complainant to the Respondent's website by confusion and for the commercial purpose of offering them links to the Complainant's competitors. The Respondent should be held responsible for the content of the website in the event that advertising links are generated automatically by a service.
The Complainant contends that the Respondent was aware of the Complainant and that the Complainant's representative, in a conversation on or about January 21, 2013, confirmed this to be so.
The Complainant has cited certain previous decisions under the Policy that it wishes the Panel to consider as possible precedent.
The Complainant requests the transfer to itself 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 states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identity of the Respondent
Through its registration of the disputed domain name, the Respondent is bound by the terms of the Tucows Registration Agreement (the "Agreement"). Paragraph 14 of the Agreement states in part:
"The person named as administrative contact at the time the controlling user name and password are secured shall be the owner of the domain name."
The WhoIs information made available by the Registrar records Georgina Varmuza, by name and organization, as being the holder and administrative contact of the disputed domain name registration. According to paragraph 1 of the Rules, the Respondent is "the holder of a domain-name registration against which a complaint is initiated", i.e., Georgina Varmuza.
Correspondence sent to the Respondent's address of record was received and was replied to by Xan Varmuza. In an email to the Complainant dated January 21, 2013, Xan Varmuza stated that he owned the disputed domain name, having purchased it some years previously on the account of his mother, Gina Varmuza.
Paragraph 18 of the Agreement states in part:
"As part of the registration process, you are required to provide us certain information and to update us promptly as such information changes such that our records are current, complete and accurate. You are obliged to provide us the following information:
i) Your name and postal address (or, if different, that of the domain name holder);
ii) The domain name being registered
iii) The name, postal address, e-mail address, and voice and fax (if available) telephone numbers of the administrative contact for the domain name."
Xan Varmuza's name does not appear in the WhoIs information and the Panel finds no reason to depart from the rule that Georgina Varmuza is the holder of the disputed domain name registration and is the Respondent in this case. Xan Varmuza initiated all relevant correspondence and is deemed by the Panel to be the Respondent's representative. By convention, correspondence with the Respondent's representative will be referred to as being with the Respondent.
B. Identical or Confusingly Similar
The Panel is satisfied on the evidence presented that the Complainant has rights in the registered trademark B&Q.
The disputed domain name is <bandqhandymen.com>. The generic Top Level Domain (gTLD) ".com" is normally disregarded in the consideration of confusing similarity under the Policy. Without the gTLD, the disputed domain name comprises "bandq" and "handymen". Since it is not possible for a ".com" domain name to incorporate the ampersand symbol that means "and", and font case is of no consequence, the component "bandq" is as close an approximation to the Complainant's registered B&Q trademark as may be constructed from the alphanumeric characters permitted. The disputed domain name incorporates a convincing representation of the Complainant's trademark prominently and to that extent is found to be confusingly similar to the trademark.
The Complainant's business, on the evidence, may reasonably be viewed as having a strong presence in the do-it-yourself or home handyman (or handyperson) field of endeavour. The word "handymen" appended to the element "bandq" in the disputed domain name is found not to be distinguishing from the Complainant's trademark but on the contrary is found to enhance the potential for association of the disputed domain name with the Complainant's trademark and its business.
The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that it has never authorised the Respondent to register or to use a domain name confusingly similar to the Complainant's trademark and the Respondent cannot have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(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."
The above circumstances are without limitation and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction of the Panel.
On January 2, 2013, the Complainant emailed the Respondent and asked whether the disputed domain name was in use for any project involving the Complainant. Notes made by the Complainant on January 21, 2013 of a telephone conversation with the Respondent, not contested by the Respondent, record that the Respondent spoke of an idea for a website concerning handymen and a notion of working with the Complainant as a partner. The Respondent recalled having spoken to someone at the Complainant's company 15 or 18 months earlier.
The Respondent has offered no realistic claim or evidence in support of having made any significant preparations to use the disputed domain name in connection with a business or in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has ever been commonly known by the disputed domain name. There is no evidence of any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant has the onus of proving under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 trademark 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 trademark 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 on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The history of the disputed domain name shows it to have been registered by the Respondent on November 3, 2010. Evidence of its usage since then is a screenshot made on October 19, 2012, of a parking page stating that the website cannot be found but offering some links connected with handymen, home improvement and do-it-yourself. In overview, the Internet presence of the disputed domain name is in keeping with a recognisably common pattern in that it features another's trademark without permission, has been parked in a dormant state, but has apparently been signed up to a service that places remunerative pay-per-click advertising links.
The Panel finds on the balance of probabilities that the Respondent has registered and held the disputed domain name for eventual commercial gain, and that because its exploitation has extended no further than a monetized parking page, the expectation of a possible sale to the Complainant or a competitor of the Complainant for profit has a higher probability than any alternative. The wording of paragraph 4(b)(i) of the Policy does not preclude a finding of bad faith where a party other than the Respondent could be the beneficiary in the event that a domain name is sold for profit. In an email dated March 24, 2013, the Respondent offered to sell the disputed domain name for £500, with the money to be split between two named charities. The Respondent was the one making the offer for sale and nothing suggested that the charities were parties to the arrangement. In the absence of evidence to the contrary, the amount of £500 is taken to be in excess of out of pocket costs directly related to the disputed domain name. The Panel finds the Respondent has registered and used the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i) and 4(a)(iii) of the Policy.
The Complainant has not produced evidence to the effect that the Respondent has engaged in a pattern of making blocking registrations such as would be required to support a finding under paragraph 4(b)(ii) of the Policy.
The Respondent is responsible for the content of the website to which the disputed domain name resolves, including advertising links placed there by a service provider. Whilst the operation of a pay-per-click business for profit may be entirely legitimate, with the website owner receiving commissions for referrals to other websites, the operation is devoid of legitimacy if viewers are attracted by intentionally created confusion between the disputed domain name and a trademark being used without permission. The Panel finds that the Respondent has attempted to attract Internet visitors for commercial gain by confusion with the Complainant's trademark, constituting further bad faith registration and use in the terms of paragraph 4(b)(iv) 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 <bandqhandymen.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 18, 2014