WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Mark John Willcox
Case No. D2015-0776
1. The Parties
The Complainant is Halfords Limited of Redditch, Worcestershire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by HGF Limited, United Kingdom.
The Respondent is Mark John Willcox of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <halfordsltd.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 April 30, 2015. On April 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 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 May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2015.
On June 1, 2015, the Complainant submitted a supplemental filing.
The Center appointed James McNeish Innes as the sole panelist in this matter on June 8, 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 Complaint concerns the disputed domain name <halfordsltd.com> registered by the Respondent. The Complainant's main corporate name is Halfords Limited and it has traded as such since 1904. In this period it has built up considerable goodwill with respect to its name and its trademark HALFORDS. It has demonstrated on the record that it is the registered proprietor of a number of United Kingdom and International Trade Mark registrations covering various European Union states for its trademark HALFORDS held in its name, Halfords Limited. All of the registrations date from before the date of the registration of the disputed domain name. The Respondent first registered the disputed domain name on March 25, 2015. The Complainant's main retail website is “www.halfords.com”.
5. Parties’ Contentions
The Complainant’s contentions include the following:
(a) The Complainant states that it has prior common law rights in the word HALFORDS and the stylized HALFORDS logo in various forms based on its use by the Halford Cycle Company and/or Halfords Limited (in various forms) in the United Kingdom since as early as 1904. The main corporate name is Halfords Limited, and the Complainant contends that as a result of its use of this word, it is the owner of subsisting common law rights in the word associated with its business. It also relies upon its registered marks referred to above.
(b) The Complainant contends that the disputed domain name <halfordsltd.com> is confusingly similar to its trademark rights. It contends that its trademark rights contain the word HALFORDS, which in essence forms the whole or the distinctive and dominant element of the Complainant’s name and prior trademark rights. The disputed domain name <halfordsltd.com> is also dominated by the word HALFORDS in combination with the non-distinctive and descriptive shortening of the word “Limited” in the form of the “ltd” suffix. The Complainant’s corporate name is Halfords Limited, which is shortened inherently by the public and suppliers to Halfords Ltd. It is well known that consumers only give marks fleeting attention and do not analyse marks in great detail, thus <halfordsltd.com> gives the same or a very similar overall impression to the Complainant’s earlier trademark rights in HALFORDS or variances of the trademark. The disputed domain name and trademarks would be pronounced in an identical or very similar way. Consumers, suppliers, or other operators within the market would undoubtedly make an economic and commercial connection between the earlier trademarks and the disputed domain name and will assume that the Respondent is in some way affiliated to the Complainant or is indeed the Complainant. Thus, the domain name is confusingly similar to the trademark HALFORDS in which the Complainant has rights.
(c) The Complainant further contends that Respondent is not an employee nor has he been authorized to use or register the disputed domain name by the Complainant. It states that, given that the Respondent’s name is Mark John Wilcox, it does not appear that the Respondent is known by the name of ‘“halfords” or “halfordsltd”. The Complainant is one of the leading retailers in the United Kingdom. The Respondent appears to be based at a “purported” address in the United Kingdom, and must have been aware of the Complainant. The Respondent has not made any legitimate non-commercial or fair use of the disputed domain name. When searching for the disputed domain, if “www” is placed before “halfordsltd.com” the disputed domain name reverts to a holding page of the Registrar. However, if the disputed domain name is searched for minus the “www.” prefix, i.e “halfordsltd.com” only is entered into the search bar, the domain name diverts directly to the Complainant’s website “www.halfords.com”. The submission concludes that the Respondent is obviously aware of the Complainant and its business and was so at the time of registering the disputed domain name<halfordsltd.com.>
(d) The Complainant contends that when the disputed domain name was registered by the Respondent, it was with intent to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Complainant’s name is Halfords Limited and it owns trademark rights to HALFORDS and HALFORDS LIMITED amongst other names.
(e) The Complainant contends that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant because the Respondent undoubtedly would have been aware of the Complainant’s activities in the market given the large amount of usage and reputation established by the Complainant before the date of registration of the disputed domain name. The Respondent has not made any legitimate non-commercial or fair use of the disputed domain name and it is contended that he is likely to be using the disputed domain name for fraudulent activities.
(f) The Complainant also contends that it appears that the registration details given for the disputed domain name <halfordsltd.com> are false. The address for the Respondent seems not to exist. The telephone number given for the Respondent is not in operation.
(g) The Respondent also appears to have registered <dixons-currys.com> and <sainsburys-grocery.com>. Both domain name registrations incorporate the names of well-known UK retailers and this is a ‘pattern’ of bad faith registrations by the Respondent. The Respondent would appear to have no legitimate interest in any of these domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
(b) That the respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two separate issues fall for consideration. Does the Complainant have rights in the marks and is the disputed domain name identical or confusingly similar to any such marks. On the record, the Complainant has established rights in its marks and registrations. It has also demonstrated continued commercial usage since 1904.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name <halfordsltd.com> is confusingly similar to the dominant name in the Complainant’s trademarks.
(b) The substantive part of the disputed domain name is identical to the name of the Complainant and its trademarks.
(c) The addition of the suffix “ltd” is a non-distinctive and non-descriptive shortening of the word “Limited” in the Complainant’s name.
The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(b) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(c) you [Respondent] are making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) circumstances indicating that you have registered or you have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 disputed domain name; or
(b) you have registered the disputed 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
(c) you have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the disputed 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.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its web sites by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <halfordsltd.com> be transferred to the Complainant.
James McNeish Innes
Date: June 17, 2015