WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intu IP Limited v. Whois Privacy Services Pty Limited / Khalil Semhat
Case No. D2014-1064
1. The Parties
Complainant is Intu IP Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing, United Kingdom.
Respondent is Khalil Semhat of Tripoli, Lebanon.
2. The Domain Name and Registrar
The disputed domain name <intumerryhill.com> is registered with Fabulous.com Pty Ltd (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 20, 2014. On June 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2014, the Registrar transmitted by email to the Center its verification response disclosing the registrant and providing contact information and other details of the registration. The response disclosed a registrant and contact information that differed from that in the Complaint. The Center sent two email communications to the Complainant on June 24, 2014, one identifying the discrepancy between the Registrar information and that in the complaint, inviting the Complainant to submit an amendment to the Complaint, the other a notice of deficiency in the Complaint. The Complainant filed an amended Complaint on June 25, 2014.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 July 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 6, 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 part of a group of related companies. Complainant Intu IP Limited owns a United Kingdom trademark registration and a Community trademark for the mark INTU for shopping centers and retail services. Its affiliated company, Intu Shopping Centres plc, operates shopping centers in the United Kingdom and conducts e-commerce activitites at its website “www.intu.co.uk.” On March 20, 2014, Complainant’s ultimate parent company publicly announced its acquisition of an interest in the Merry Hill shopping center, which it or one of its subsidiaries will begin managing under the “Intu” brand.
The disputed domain name was registered on March 20, 2014. Previously, the domain name resolved to a page that offered the domain name “for sale for $ 1,6501 ”; currently, it does not resolve to an active website.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant Intu IP Limited owns a United Kingdom trademark registration for the mark INTU for a wide array of goods and services, including “shopping malls, shopping arcades, shopping centres and retail parks”, as well as related retail services. The registration was issued in December 2012. It also owns a Community trademark registration for INTU for concierge services related to shopping centers, among other things, which was registered in March 2013.
Intu Shopping Centres plc and Complainant Intu Properties plc claim common law rights in the INTU mark, which they have used extensively since 2012. The companies’ “total marketing spend in the UK for the calendar year 2013 was approximately £11 million. The value of the PR activity for that same year was in excess of £4 million.”
The main “intu” website contains a link to a page for each of the companies’ shopping centers, including a page at “www.intu.co.uk/merryhill,” which operates as an e-commerce site.
The <intumerryhill.com> disputed domain name is closely similar to Complainant’s registered and unregistered marks. The term “Intu” is the dominant and most distinctive element of the domain name, folllowed by “merryhill”, which is the name of the shopping centre in which it recenly acquired an interest.
2. Rights or Legitimate Interests
There is no evidence that Respondent has used or made demonstrable preparations to use the disputed domain name, or a corresponding name, in connection with a bona fide offering of goods or services.
Respondent is not and has never been known by the domain name. The words in the domain name are associated exclusively with Complainant and its affiliated companies and Respondent has no trademark or service mark rights in the domain name.
Respondent is not making legitimate non-commercial or fair use of the domain name.
There is at least a prima facie case that Repondent lacks rights or interests in the domain name, such that the burden is on Respondent to establish its rights or legitimate interests.
3. Registered and Used in Bad Faith
Complainants believe that Respondent registered the disputed domain name primarily for the sole purpose of selling, renting, or transferring it to them or one of their competitors. Prior to filing the Complaint, the domain name resolved to a page that states: “The Domain Name that you clicked on/visited to arrive at this page is for sale for $1,450 subject to below terms […].”
In addition, the domain name was registered on the same day that the acquisition of the Merry Hill shopping center was announced, evidencing that the registration was abusive.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
1. Multiple Complainants
The Complaint identifies three parties as “Complainants”: Intu IP Limited, Intu Shopping Centres plc and Intu Properties plc. The Complaint requests that the disputed domain name be transferred to Complainant Intu IP Limited.
Neither the Policy nor the Rules provide for multiple complainants. However, the Panel shares the consensus view that a related company, such as a subsidiary or parent to the owner of a trademark, may be considered to have rights in the trademark for purposes of a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8.
The Complaint indicates that Intu Shopping Centres plc and Intu Properties plc use the INTU mark, while the trademark registrations are owned by Intu IP Limited. The precise relationship of the parties is not detailed (i.e., the Complaint alleges only that Intu Properties plc is the “ultimate parent” of the other entities). It is implicit in the fact the Complaint has been brought by all three entites as co-complainants that the trademark owner authorizes the action of the others.
The Panel also shares the consensus view that, as a general rule, in order for a single complaint to be brought on behalf of multiple complainants, the complaint should be accompanied by a request for consolidation that establishes that the relevant criteria have been met. See WIPO Overview 2.0, Question 4.16. Those criteria include, among others: the complainants have a common grievance against the respondent; the respondent’s conduct affects complainants’ individual rights in a similar fashion; and equity or procedural efficiency warrants consolidation. No such request was made here. In light of the absence of any request and the fact that the Complaint seeks to have the domain name transferred to the same entity that owns the cited trademark registrations, the Panel does not accept the designation of Intu Shopping Centres plc, and Intu Properties plc as co-complainants.
2. Identity of Respondent
The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3.2
Under this view, the original complaint correctly named as Respondent the entity identified in the WhoIs record. It was only after this proceeding was filed and had been initiated that the Registrar identified Khalil Semhat as the registrant.
In any event, Complainant amended the Complaint to identify Khalil Semhat as Respondent3 . The Panel accepts that amendment. As Khalil Semhat appears to be responsible for, or the beneficial holder of, the disputed domain name, it refers to only him as “Respondent.”
B. Substantive Matters
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove, as to the disputed domain name, that: (i) it is identical or confusingly similar to a mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect to it; and (iii) it has been registered and is being used in bad faith. The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not submitted a Response, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
1. Identical or Confusingly Similar
Complainant has established its rights in the mark INTU by virtue of the evidence of its United Kingdom and Community trademark registrations.4
The disputed domain name is not identical to Complainant’s mark. Instead, it consists of the mark INTU followed by the term “merryhill,” followed by the generic top-level domain.
As a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name includes the mark in its entirety at the beginning. Addition of the term “merryhill” after the mark serves a descriptive function that, in the Panel’s view, does nothing to distinguish the domain name from Complainant’s INTU mark. Indeed, because it has a geographic connotation, “merryhill” seems to reinforce the term “Intu” as the dominant portion of the domain name, thus reinforcing its trademark function.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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 Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c)(i) and (iii) of the Policy: It does not appear that Respondent is commonly known by the domain name – Respondent appears to be an individual named Khalil Semhat. Nor does it appear that use of the domain name is noncommercial or otherwise a fair use – the website to which the domain name resolves offers to sell the domain name. Respondent does not appear to be using the domain name in connection with a bona fide offering of any kind. As noted above, the domain names is confusingly similar to Complainant’s INTU mark and is used with a site that offers the domain name for sale. Under these circumstances, the Panel concludes that Complainant has made a prima facie showing as to the examples in paragraph 4(c)(i) of the Policy.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in the INTU mark predate the registration of the disputed domain name. The Panel concludes that registration of the domain name on the same day as the public announcement of the acquistion of the Merry Hill shopping center by Complainant’s affiliate was not serendipitous. The timing of the registration, along with the fact that the domain name is being offered for sale for an amount that likely exceeds any out-of-pocket costs suggests that the domain name was registered primarily for that reason.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the domain name in bad faith.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <intumerryhill.com> be transferred to Complainant Intu IP Limited.
Debra J. Stanek
Date: August 20, 2014
1 The currency is not specified.
2 This is consistent with the paragraph 3(a) of the Rules, which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules Similarly paragraph 4 of the Rules is entitled “Notification” of Complaint and does not refer to “initiation” of the proceeding.
3 In the Panel’s view, there is no reason to recommend that a complainant amend the complaint under these circumstances unless the changed information results in new, substantive allegations — something more than simply substituting the name and contact information of a respondent. Where the amendment does nothing more than replace a name and contact information, with no other substantive changes, it is difficult to see any benefit to doing so. In the Panel’s view, such a recommendation simply delays the proceedings, imposes additional costs on a complainant, and results in duplicative filings and a more cumbersome record.
4 The Complaint also asserted that Intu Shopping Centres plc and Intu Properties plc have common law rights in the mark INTU. These allegations are largely unsupported by any meaningful documentary evidence. See WIPO Overview 2.0, paragraph 1.7 (rights in unregistered mark may be showns by evidence of length of use, amount of sales, nature and extent of advertising, consumer surveys, and media recognition of mark). Instead, the Complaint includes vague allegations relating to “total marketing spend” and “value of PR activity” certified only by outside counsel without any basis to indicate that the information is based on his personal knowledge.