WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dixons B.V. v. Jose Castrellon
Case No. D2014-1045
1. The Parties
The Complainant is Dixons B.V. of Almere, The Netherlands (the "Complainant"), represented by Novagraaf Nederland B.V.
The Respondent is Jose Castrellon of Sky IP, Inc. of Panama City, Panama (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name <dixxons.com> (the "Domain Name") is registered with 1API GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2014, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the Respondent's 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2014. In accordance with paragraph 5(a) of the Rules, the due date for the Respondent's response was July 17, 2014. The Respondent did not submit any response. Accordingly, on July 18, 2014, the Center notified the parties of the Respondent's default.
The Center appointed D. Brian King as the sole panelist in this matter on July 29, 2014. The Panel finds that it was properly constituted. The sole panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is a retailer and distributor of electronic consumer goods. It is the registered owner of a number of trademarks embodying the word "dixons" and granted in Belgium, the Netherlands, and Luxembourg (Annexes 6 and 12 to the Complaint). The Complainant has a long history of providing consumer electronics to customers in the Benelux region (Complaint, paragraph 12.1.2).
The Domain Name was registered by the Respondent on May 29, 2014. The Panel has no further information about the business activities of the Respondent.
A screenshot dated June 17, 2014 of the webpage underlying the Domain Name appears to show the advertising and sale of electronics, such as mobile telephones and video game consoles (Annex 11 to the Complaint). What appears to be a second screenshot, dated July 18, 2014 (also included in the case file), shows that the webpage was no longer accessible, and the following error message appears: "The requested URL could not be retrieved." The Panel has no details regarding when the change was made, but notes that it visited the webpage during deliberations and found that it was unchanged since the July 18 screenshot.
5. Parties' Contentions
The grounds set out in the Complaint can be summarized as follows.
The Complainant claims that the Domain Name is identical or confusingly similar to the Complainant's trademarks. Specifically, the Complainant argues that the Domain Name is phonetically identical to its registered trademarks, as well as visually confusingly similar. The only difference between the Complainant's trademarks embodying the word "dixons" and the Domain Name is the additional letter "x", which the Complainant contends is a negligible difference. Relying on previous decisions rendered under the Policy, it argues that a mere addition to or misspelling of a trademark does not create a new or different mark. Such insignificant modifications to trademarks, the Complainant says, are commonly referred to as "typosquatting" or "typo-piracy"; they are confusingly similar by their nature and wrongfully take advantage of errors made by users in typing domain names into their web browser's location bar.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It argues that the circumstances identified in paragraph 4(c) of the Policy as indicative of a respondent's rights or legitimate interests do not exist here, because (a) the Respondent owns no trademark rights to "dixxons", and (b) the Complainant did not give permission or license the use of its trademarks to the Respondent. The Complainant denies that it has any commercial or other relationship with the Respondent. It further argues that the Respondent has no legitimate, noncommercial use for the Domain Name, and that it is probable that the Respondent was aware of the Complainant's trademark rights at the time it registered the Domain Name.
Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant says that the Domain Name is being used to promote and sell consumer electronics—products identical to the goods sold by the Complainant. It argues that the Domain Name would have been deliberately chosen because of its similarity to the Complainant's trademarks, which, given the goodwill associated with the trademarks, allows the Respondent to attract users interested in purchasing consumer electronics. The deception is compounded, contends the Complainant, by the visual appearance of the underlying webpage, which uses features of the Complainant's former branding (Annexes 10-12 of the Complaint). Further, the Complainant argues that the Respondent's webpage is rendered more deceptive still because it contains the Complainant's address and Chamber of Commerce number—as a result, a visitor is incorrectly led to believe that it is dealing with the Complainant.
The Complainant requests that the Panel order the transfer of the Domain Name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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.
Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has provided evidence demonstrating that it has rights in numerous trademarks using the word "dixons" (see Annexes 6 and 12 to the Complaint). The Domain Name uses the same word ("dixons"), but with an additional "x", in what is simply a misspelling of the Complainant's mark. As noted by the Complainant, previous panels constituted under the Policy have held that a domain name that is identical to another's mark but for a minor misspelling will typically satisfy the "confusingly similar" requirement of the Policy (see Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164; Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161). Furthermore, in this case, the Domain Name is phonetically identical to the Complainant's registered trademarks.
On these grounds, the Panel concludes that the Domain Name is confusingly similar to the Complainant's trademarks. Accordingly, the first element of the test under paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
Many prior panels have found that complainants only need to establish a prima facie case in relation to the second element of the test under paragraph 4 of the Policy (see Mahindra & Mahindra Limited v. RV ABC Consulting Inc., Roy Smith, WIPO Case No. D2010-1576; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once a prima facie showing is made, the burden of proof shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.
The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Complainant has owned registered trademarks using the word DIXONS since at least 1993 (Annex 12 of the Complaint). The Respondent registered the Domain Name only in 2014, and its webpage was, at least as of June 2014, used for the sale of consumer electronics, which is the Complainant's business sector. As explained further in Section C below, the Respondent's webpage drew on features of the Complainant's trademarks and branding. The webpage was also in the Dutch language, and the contact details at the bottom of the webpage were to an address in the Netherlands—in fact, the Complainant's own address. The clear inference is that the Respondent had actual knowledge of the Complainant's trademarks and sought to trade off of the Complainant's goodwill. That is the antithesis of rights or legitimate interests in a mark.
Further, in the absence of any contrary evidence, the Panel accepts the Complainant's representations that (a) it did not give the Respondent permission or a license to use the DIXONS trademarks (or any variation thereof), and (b) there is no commercial or other relationship between the Complainant and the Respondent. Moreover, there is no indication that the Respondent was ever commonly known by the name "dixxons" in any country.
The Respondent has not participated in these proceedings, and has therefore not availed himself of the opportunity to adduce evidence of any rights or legitimate interests in the Domain Name. This is presumably because he had nothing useful to say in that regard. The Panel finds without difficulty that the Complainant has satisfied the requirements of the second element of the test under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Past panels have found that "typosquatting" itself constitutes bad faith (See e.g. Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; Briefing.com Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970). The Panel finds the present case to be a clear-cut instance of "typosquatting." The only difference between the Complainant's trademarks and the Domain Name is an additional letter that already exists in the trademarks—"x". The Respondent's decision to use the Domain Name in a way that mimicked the Complainant's business and branding suggests that the Respondent had actual knowledge of the existence of the Complainant at the time that he registered the Domain Name. The Panel has no hesitation in finding that the Domain Name was registered in bad faith.
Nor has the Domain Name been used in good faith, but, instead, abusively. The banner appearing at the top of the June 17 screenshot of the Respondent's webpage clearly appropriates the Complainant's trademarks. The banner is red, with the word "Dixxons" appearing in white. The presentation of the word "Dixxons" uses almost identical typography to one of the Complainant's trademarks. The banner itself, furthermore, is almost identical to the branding previously used by the Complainant at its stores (pictures of the Complainant's branding are included at Annex 10 of the Complaint). Moreover, the underlying webpage shows images of various electronics, accompanied by prices, suggesting the sale of the same types of goods as those sold by the Complainant. Given the patent similarities between the webpage and the Complainant's trademarks, and the apparent attempt to sell the same types of goods sold by the Complainant, the Panel finds that the Respondent intentionally created a likelihood of confusion for its own commercial gain. Bad faith use has thus been established.
The webpage underlying the Domain Name appears at present to be defunct. The apparent (and perhaps temporary) removal of the webpage does not change the above analysis. The Respondent has registered and actively used the Domain Name in bad faith, and absent the granting of relief to the Complainant, nothing would prevent the Respondent from doing so again. Further, the present circumstances constitute, at best, "passive holding" of the Domain Name. Many panels have held that the "passive holding" of a domain name can constitute bad faith in light of the overall circumstances of the case. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the overall circumstances, as described above, show that the bad faith element is met, even if it were only "passive holding" that were at issue.
On these grounds, the Panel finds that the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 Domain Name, <dixxons.com>, be transferred to the Complainant.
D. Brian King
Date: August 12, 2014