WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crown Brands Limited v. MR Ling Hsiao Wang, Reserved for Customers, MustNeed.com
Case No. D2015-0834
1. The Parties
The Complainant is Crown Brands Limited of Darwen, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is MR Ling Hsiao Wang, Reserved for Customers, MustNeed.com of Taipei, Taiwan Province of China.
2. The Domain Name and Registrar
The disputed domain name <crownpaints.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2015.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 17, 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 British paint manufacturer founded in 1777 is now one of the United Kingdom’s largest paint manufacturers, employing 1,250 people and operating 130 Crown Decorating Centres throughout the United Kingdom and Ireland.
The Complainant is the holder of the registered trademark CROWN and CROWN PAINTS in a number of countries and the Complainant further claims to hold unregistered or common law rights in the trademark CROWN PAINTS in the various countries in which it operates its business.
The Complainant operates a website at “www.crownpaints.co.uk”.
The disputed domain name was created on March 14, 2002 and it resolves to a website which displays pay-per-click advertisements.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered and unregistered rights in the terms “crown” and “crown paints”.
The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks in association with pay-per-click activities.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. In addition, the Complainant has found no evidence that the Respondent has been commonly known by the name “Crown” or “Crown Paints” prior to or after the registration of the disputed domain name.
The Complainant further asserts that the Respondent’s use of the disputed domain name cannot be construed as legitimate noncommercial or fair use, since the disputed domain name is used to generate revenue via pay-per-click advertising.
Given the fame and lengthy history of the Complainant’s marks, the Complainant asserts that it is inconceivable that the Respondent did not have the Complainant and its trademarks in mind when it registered the disputed domain name. The Complainant contends that it is well established under the Policy that in most circumstances the display of pay-per-click advertising in association with a domain name in which a complainant’s trademark is the dominant element is sufficient on its own for a finding of registration and use in bad faith, and that such circumstances are present in this case.
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 the 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:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <crownpaints.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark CROWN and to the registered and unregistered trademark CROWN PAINTS because it contains the marks in its entirety. The addition of the suffix “.com”, which is identical to the generic Top-Level Domain denomination “.com”, does not dispel a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted this and both the absence of a Respondent’s reply to the Complainant as cited above and the way that the Respondent has been and is using the disputed domain name does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the extent of use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent has been and is still using the disputed domain name actively for what appears to be a standardized parking page that contains pay-per-click advertisements. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site as mentioned in terms of Policy paragraph 4(b)(iv).
Noting that the disputed domain name incorporates a registered and reputed trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case.
For 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 <crownpaints.com> be transferred to the Complainant.
Date: July 8, 2015