WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maplin Electronics Limited v. Daisy Hon, Maplin Electronics Limited
Case No. D2015-0294
1. The Parties
The Complainant is Maplin Electronics Limited of Rotherham, South Yorkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is Daisy Hon, Maplin Electronics Limited of Rotherham, South Yorkshire, United Kingdom (see further discussion below as to the identity of the Respondent).
2. The Domain Name and Registrar
The domain name <maplinwholesale.com> (the “Disputed Domain Name) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 24, 2015, 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 March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 30, 2015. 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
The Complainant is a United Kingdom based company, offering electronic and related goods for sale both online and via retail stores. The Complainant is one of the United Kingdom’s largest specialist electronics suppliers and retailers It has over 200 retail stores in the United Kingdom. The Complainant has traded under the name MAPLIN since 1972.
The Complainant is the owner of various trademark registrations for the word MAPLIN or other terms including that word, for example Community Trade Mark 212076 for the word MAPLIN registered on January 19, 2001 in classes 6, 7, 8, 9, 11, 12, 14, 15, 16, 20, 28 and 42.
The Complainant also trades via a transactional website at “www.maplin.co.uk”.
On January 28, 2015 the Respondent registered the Disputed Domain Name.
The Disputed Domain Name is being used by the Respondent to promote itself as an online “Maplin Wholesale” store. The footer of the website associated with the Disputed Domain Name displays the Complainant’s company details, including its address, company registration and VAT numbers. The “About us” and other pages feature pictures of the Complainant’s shops which have been digitally manipulated so it appears the Disputed Domain Name is featured on the Complainant’s own signage. The website also prominently features the Complainant’s distinctive blue logo made up of the words “Maplin” and “The electronics specialist” with the additional word “wholesale” digitally added. The get up and look and feel of the website mirrors that of the Complainant’s website.
5. Parties’ Contentions
The Complainant’s case can be summarised as follows.
(a) The Disputed Domain Name is confusingly similar to the MAPLIN marks and the combination thereof with the generic term “wholesale” is insufficient to distinguish the Disputed Domain Name from the Complainant’s trademark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
(c) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, makes use of the Complainant’s MAPLIN mark in order to conduct a business which impersonates the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Issue: the Respondent’s identity and contact details
The identity of the Respondent is unclear. The contact details as verified by the Registrar are identical to those of the Complainant (as the Registrant Organisation) with the addition of a Registrant Name of “Daisy Hon”. As such these details are at least in part manifestly false. That does not, however, matter as the Panel is satisfied that proper notice of this proceeding was provided to whoever the Respondent really is in accordance with the Rules. In the present case, the postal address provided by the Respondent was that of the Complainant and as such communications sent to that address would obviously not be received by the Respondent. However the requisite material has also been served electronically to the email addresses provided by the Respondent. The Panel adopts the approach set out in paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. The Panel also agrees with the statement in WIPO Overview 2.0 on this issue that “Panels have also noted that: (i) there are limits to what can reasonably be done by parties and providers to identify an “underlying registrant” in the context of the UDRP, and if WhoIs information is not readily usable for communication purposes in such case the registrant must expect to bear any consequences; and (ii) in cases of ambiguity as to the identity of the proper respondent, what matters in terms of notification obligations under the UDRP Rules is not so much the name that may “formally” appear on the complaint, but that the latter has been duly notified to the reasonably available contact information of the “registrant”, whatever its identity.” Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to 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 the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various trademarks for the word “MAPLIN”.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondent, incorporates the MAPLIN trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition of the generic word “wholesale”. This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant’s MAPLIN trademark.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that may demonstrate a right or legitimate interest in a domain name:
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 organisation) 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MAPLIN trademark. The Complainant has prior rights in the MAPLIN trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
As described under section 4, the Disputed Domain Name is being used by the Respondent to promote itself as an online business under the name “Maplin Wholesale”. It appears to the Panel that products offered via that website by the Respondent are not those of the Complainant but general electronic products, such as tablets and smartphones. Use of the Complainant’s name in this manner is clearly misleading and does not amount to the making a bona fide offering of goods and services.
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances the confusingly similar nature of the Disputed Domain Name to the MAPLIN trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name, and the evidence as to how the Disputed Domain Name has been used by the Respondent leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products. The website operated by the Respondent at the Disputed Domain Name clearly comprises a deliberate attempt to impersonate the Complainant. As such it is a paradigm example of the conduct referred to in paragraph 4(b)(iv) of the Policy as evidence of bad faith namely “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 web site or location or of a product or service on your web site or location.”
Further, the Panel notes the Respondent has not filed a Response and hence have not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <maplinwholesale.com> be transferred to the Complainant.
Nick J. Gardner
Date: April 8, 2015