WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Howden Joinery Limited v. Welmar, James Casey
Case No. D2015-0887
1. The Parties
The Complainant is Howden Joinery Limited of London, the United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, the United Kingdom.
The Respondent is Welmar, James Casey of Halifax, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <howdensbathrooms.com> (the "Disputed Domain Name") is registered with Webfusion Ltd trading as 123-reg (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2015. On May 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 28, 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. On May 29, 2015, the Center received an email communication from the Respondent, indicating that "hopefully this could be resolved quickly". On June 1, 2015, the Center sent an email communication to the Complainant inviting it to consider requesting a suspension of the proceedings to explore a settlement between the parties. The Parties did not reach a settlement despite several email communications on the matter.
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 June 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2015. The Respondent did not submit any formal response.
The Center appointed Michael D. Cover as the sole panelist in this matter on July 14, 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.
The Center notified the parties on August 5, 2015 of its decision to extend the time for the Decision of the Panel to August 14, 2015.
4. Factual Background
The Complaint is a company established in the United Kingdom, incorporated in 1953, which carries on business in the United Kingdom as a manufacturer and supplier of kitchen furniture, bathroom cabinets and associated joinery and appliances. The Complainant, which rebranded from MFI to HOWDENS in 1995, now has a turnover of in excess of £1 billion and operates out of nearly 60 depots throughout the United Kingdom. The Complainant employs around 7,000 staff and supplies millions of kitchen cabinets and 400,000 completed kitchens each year. All of the Complainant's business is conducted under the trade mark and trading name HOWDENS.
The Complainant supplies its products to the public via its network of trade professionals, who undertake the installations. One of the important ranges for the Complainant is GREENWICH.
The Complainant is the proprietor of registered trademarks in the United Kingdom and the European Union for HOWDENS, including the Community Mark No. 11463577 HOWDENS in Classes 6, 19, 20, 35, 42, with class 20 covering bathroom furniture, registered on June 10, 2013.
The Complainant is also the owner of the domain "www.howdens.com", which was registered in early 1999. The website associated with that domain became active in 2000 and the Complainant uses its website to advertise its products.
The Respondent is James Casey of Halifax, United Kingdom and is the named registrant of the Disputed Domain Name. Welmar is the named registrant organization for the Dispute Domain Name. The Disputed Domain Name was registered on November 13, 2014.
The lawyers for the Complainant sent a cease and desist letter to the Respondent in relation to the ".co.uk" equivalent to the Disputed Domain Name. No response was received to that letter.
5. Parties' Contentions
The Complainant submits that, as a result of the extensive use of the name and trade mark HOWDENS, the Complainant has acquired registered and unregistered rights in the name HOWDENS, having established substantial goodwill and reputation in that name. It also submits that, as a result of the registered trade"marks for HOWDENS that it owns, it also has registered rights that trade mark.
The Complainant also submits that the Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark. It says that the Disputed Domain Name only differs from the Complainant's trade mark by the addition of the non-distinctive element "bathrooms". It states that this addition does not eliminate the identity or the confusing similarity between the Complainant's trade mark and the Disputed Domain Name. The Complainant cites in support paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and various previous UDRP decisions. Lastly, in regard to this aspect, the Complainant notes that the addition of the descriptive element "bathrooms" actually increases the likelihood of confusion, in view of the Complainant being a company with a substantial reputation for bathrooms.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It submits that the Respondent has not and has never been commonly known by the Disputed Domain Name, whereas the Complainant has been trading by reference to its trademark HOWDENS since 1995. The Respondent also submits that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant notes that the Disputed Domain Name redirects to a live commercial website under the domain name <jembathroomoffers.co.uk> and that this business purports to offer bathroom furniture under the name of "Bathroom Discounts Greenwich". The Complaint also draws the Panel's attention to the fact the name GREENWICH is an important name of the Complainant that that is likely to mislead the public to think that buying goods authorized by or connected with the Complainant.
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. It also submits that it is inconceivable that the Respondent was unaware of the Complainant's trade mark, because the Complainant's use and registration of its trademark predates registration of the Disputed Domain Name and because of the substantial reputation and goodwill that has been built up in the business connected with that trademark over many years.
The Complainant notes that the Respondent's use of the well-known trademark HOWDENS in conjunction with the word "Bathrooms" is designed to confuse Internet users into thinking that the website to which the Disputed Domain Name is linked is that of the Complainant or associated with it. The Complainant notes that the Respondent's failure to respond in itself can be an indication of bad faith.
The Complainant requests that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's trademark HOWDENS in which it has rights. The Complainant has registered rights in its trademark and the Panel also finds on the evidence before it on the balance of probabilities that the Complainant has common law rights in its trademark.
Whilst the Disputed Domain Name incorporates the Complainant's trademark HOWDENS in its entirety, it is not identical. The Panel finds that the addition of the descriptive element "bathrooms" does not alter the fact that the Complainant's trademark is the dominant element of the Disputed Domain Name, and finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
The Panel therefore finds that the first of the three elements of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has demonstrated that the Respondent has not been authorized or licensed to use the Complainant's trademark HOWDENS.
There is no evidence to suggest that that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Dispute Domain Name in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is or has been making legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant's trademark. The evidence in fact points strongly in the other direction, with the Disputed Domain Name being used for a website which seeks to attract consumers by the use of the Disputed Domain Name, which is confusingly similar to the Complainant's well-known trademark HOWDENS and also the use of another name used by the Complainant in its business, GREENWICH.
C. Registered and Used in Bad Faith
The Panel also accepts that the Respondent has registered and is using the Disputed Domain Name in bad faith. The Complainant's trademark is well-known and it is a reasonable inference for the Panel to make that the Respondent was not unaware of the Complainant's trademark when registering the Disputed Domain Name. The Panel finds that, by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with Complainant's trademark HOWDENS as to the source, sponsorship or affiliation of that website, which apparently sells goods in competition with the Complainant.
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, <howdensbathrooms.com> be transferred to the Complainant.
Michael D. Cover
Date: August 14, 2015