WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compass Group Holdings PLC v. Rene Bailly

Case No. D2014-1095

1. The Parties

The Complainant is Compass Group Holdings Plc of Chertsey, United Kingdom of Great Britain and Northern Ireland (“UK”) represented by Safenames Limited, UK.

The Respondent is Rene Bailly of London UK.

2. The Domain Name and Registrar

The disputed domain name <group-compass.com> is registered with Gandi SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2014. On June 24, 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 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 Uniformed 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 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 July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2014.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 30, 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 Centre to ensure compliance with the Rules, paragraph 7.

4. Factual Background

There being no Response filed by the Respondent, the Panel proceeds to determine the Complaint on the basis of the evidence submitted in the Complaint by the Complainant which it finds to be true.

The Complainant was incorporated in the UK on January 16, 1987 but is able to trace its heritage back to 1941 when Jack Bateman founded factory canteens to feed British workers supporting the war effort. Today, the Complainant is a world leading food and support services provider with annual revenues of GBP 17.6 billion as of September 30, 2013. The Complainant’s holding company, Compass Group PLC, has been listed on the London Stock Exchange since 1998.

The Complainant operates across the core sectors of business and industry, healthcare, education, defence, offshore and remote and support, leisure and hospitality with a broad client portfolio. The Complainant’s operations span approximately 50,000 client locations including workplaces, famous sports and leisure venues, schools, universities, hospitals, oil rigs and remote locations. The Complainant employs more than 500,000 people (including 60,000 employees in the UK) who serve 4 billion meals a year. The Complainant takes pride in its corporate social responsibility and every 5 pence from its sale of their EATFAIRretail range goes towards Fairtrade projects. The Complainant has also raised over GBP 1.3 million for Cancer Research and all of their local products come from within 50 miles of where they are served.

The Complainant is the proprietor of inter alia the service mark and trademarks COMPASS and COMPASS GROUP. Copies of the Registrations are annexed to the Complaint. However, included in the body of the Complaint are a number of the trademarks of which the Complainant seeks to rely upon as sole proprietor. Full details of the Registrations are set out at Annex 3 to the Complaint.

Trademark

Registration No.

Classe(es)

Registration Date

Country of TM

COMPASS

00001326803

42

1992-03-06

UK

FIGURATIVE

00001509693

43; 44

1993-08-06

UK

COMPASS

000209197

30; 32; 42

2001-06-01

CTM

FIGURATIVE

000210922

30; 32; 42

1999-01-26

CTM

COMPASS

001630938

16; 30; 32; 33; 35; 37; 39; 40; 42

2003-0-05

CTM

COMPASS GROUP

2747011

43

2003-08-05

US

COMPASS GROUP

Current basis:

1A

35; 37

Filing date

2013-07-30

US

COMPASS GROUP

2014461

42

1996-11-05

US

COMPASS GROUP

2061949

42

1996-11-13

US

There is no doubt that the Complainant actively trades under the names COMPASS and COMPASS GROUP and uses the trademarks set out above in relation to the operation and advertisement of its COMPASS and COMPASS GROUP business operations and e-commerce services. In particular, the marks COMPASS and COMPASS GROUP form a clear and visible part of the Complainant’s online material on its e-commerce websites.

The Complainant’s primary websites “www.compass-group.com” and “www.compass-group.co.uk” also reflect the trademarks COMPASS and COMPASS GROUP. These were both registered on July 31, 1997. By this date, as a result of the use of the trading names, COMPASS and COMPASS GROUP, the Complainant had acquired a substantial trading reputation in those marks through long use.

The Complainant in early 2014 discovered evidence of an “imitation website”, created by the Respondent, details of which are set out at Annex 4 to the Complaint. Accordingly, the Complainant wrote to the Respondent on May 30, 2014 a demand letter pointing out that it had discovered that the disputed domain name resolved to the Respondent’s website and which displayed the Complainant’s registered trademark COMPASS GROUP. The Complainant requested that the Respondent immediately stop usage of the Complainant’s trademarks, remove any reference to the Complainant’s trademarks from any kind of material and undertake never to use the Complainant’s trademarks in the future. It appears that there was no response to that demand letter. As a result, the Complainant brought the present Complaint.

5. Parties Contentions

A. Complainant

The Complainant contends:

1. That it owns registered rights in the UK and elsewhere in the trademarks COMPASS and COMPASS GROUP, and that there is a confusing similarity between the disputed domain name and those trademarks;

2. That the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence to suggest that the Respondent has registered the disputed domain name as a trademark or has any acquired common law trademark rights in the disputed domain name. There is no evidence that the Respondent has been authorised or licensed to use the Complainant’s trademarks. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as evidenced by the Respondent’s lookalike website. Rather, as evidenced by emails sent from the disputed domain name in which the Respondent masquerades as various members of the Complainant’s executive staff, the Respondent uses the disputed domain name to harvest sensitive financial information from unsuspecting Internet users (a type of Internet fraud known as “phishing”);

3. That the disputed domain name is registered and is being used in bad faith by the Respondent. This is evidenced by the imitation website, the Respondent’s phishing expeditions using the disputed domain name, and the failure of the Respondent to respond to the demand letter dated May 30, 2014. Further, the registration of the disputed domain name was undertaken to take unfair advantage of the Complainant’s exclusive rights in its distinctive trademarks COMPASS and COMPASS GROUP so as to prevent the Complainant from reflecting its marks in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established that it has both registered and unregistered rights at common law in inter alia the marks COMPASS and COMPASS GROUP. The disputed domain name consists of the words “group” and “compass” separated by a hyphen. This is a typographical (re)arrangement of the Complainant’s marks COMPASS and COMPASS GROUP. The Panel therefore finds that, despite the insertion of a hyphen between “group” and “compass”, the disputed domain name is confusingly similar to the marks COMPASS and COMPASS GROUP in which the Complainant has rights.

Accordingly, the Panel finds for the Complainant in respect of this element.

B. Rights or Legitimate Interests

The Panel is satisfied that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent has ever been or is currently known by the disputed domain name in any capacity. The Complainant points out that it has not authorised or licensed the Respondent to use its trademarks.

The Complainant also submits that the mark COMPASS GROUP is a lexical invention. The Panel agrees and finds that there is no conceivable bona fide reason for the use of this distinctive mark, or a variation of this mark, in a domain name by a third party without prior consent.

The Complainant also submits the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name by misleadingly diverting Internet users and tarnishing the trademark. It draws the Panel’s attention to the fact that the Respondent was using the disputed domain name to resolve to a lookalike website utilising the Complainant’s figurative and word marks as well as replicating images and literature which the Complainant uses on its own website.

The Complainant annexes to the Complaint a string of emails sent by the Respondent imitating members of the Complainant’s executive staff and asking the recipient to provide credit information or other sensitive information by way of “phishing”. It submits that the Respondent utilises fake information as indicated by the use of the email address which can be found on the imitation website contact page in order to give the impression that the customer accessing the imitation website was being approached by a legitimate business and that this equated to “criminally fraudulent” activity.

It follows that the offering of goods and services on the Respondent’s website is not bona fide. Given the evidence the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it succeeds in proving this element.

C. Registered and Used in Bad Faith

The Complainant submits that the Respondent registered and used the disputed domain name in a “syntactically unusual juxtaposition” and in a form which is not a generic term and could not be utilised for the inherent genericness of the combination. The Respondent’s use could not have been done without awareness of the Complainant’s marks and extensive and prolonged use of the marks. Moreover when the alleged infringement was put to the Respondent in the Complainant’s May 30, 2014 letter, no response was received from the Respondent nor was there any indication that the letter had failed to reach the Respondent.

Given this evidence, the Panel finds that the use made of the Complainant’s trademarks is evidence that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s COMPASS and COMPASS GROUP marks as to the source, sponsorship, affiliation, or endorsement of its website. This is evidence of bad faith registration and use.

The Panel accepts this evidence and also finds, in accordance with the Complainant's submissions, that the Respondent’s attempt to “bait” Internet users is not only a fraudulent act but is also an attempt at drawing customers away from the Complainant’s legitimate website. In doing so, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business or activities of the Complainant by intentionally creating an association between the Complainant and the Respondent and applying the Complainant’s trademarks in a corresponding domain name.

It follows that the Complainant has succeeded in showing bad faith registration and use.

7. Decision

For the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <group-compass.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panellist
Date: August 8, 2014