WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Jamie Mike Eurl
Case No. D2015-1118
1. The Parties
The Complainant is Halfords Limited of Redditch, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by HGF Limited, United Kingdom.
The Respondent is Jamie Mike Eurl of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <halfords-autocentres.com> (the "Domain Name") is registered with Cronon AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 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 July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2015.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 6, 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 Halfords Limited, a retailer based in the UK that specializes in the sale of car maintenance products and consumables, car accessories and enhancements, bicycles, bicycle accessories as well as camping, caravan and outdoor leisure equipment.
The Complainant is the owner of various UK trade mark registrations for the marks HALFORDS AUTOCENTRES, HALFORDS AUTOCENTRE and HALFORDS, as well as three International trade mark registrations for HALFORDS in various classes. By way of example, the trade mark registrations include:
- UK trade mark registration no. 2535710 for HALFORDS AUTOCENTRES covering classes 12 and 37;
- UK trade mark registration no. 3030101 for HALFORDS AUTOCENTRE (stylised) in classes 37; and
- UK trade mark registration no. 2550153 for HALFORDS AUTOCENTRE in classes 12 and 37.
The Complainant submits that it has traded in the UK under the name and mark HALFORDS since as early as 1904 and under the sign and name HALFORDS AUTOCENTRES and HALFORDS AUTOCENTRE since 2010. The Complainant's main corporate name is "Halfords Limited" and one of its wholly owned subsidiaries is "Halfords Autocentres Limited". The Complainant's main retail website is "www.halfords.com" and the Halfords Autocentres business operates through the website "www.halfordsautocentres.com".
The Complainant was floated on the London Stock Exchange in 2004 as a Financial Times Stock Exchange top 250 company. As at the date of the Complaint, the Complainant employed over 12,000 people and operated in around 465 stores in the UK and Ireland. Its turnover in its 2014 financial year was in excess of GBP 939 million and its advertising spend for 2013/14 was in excess of GBP 12 million.
The Domain Name was registered by the Respondent on March 3, 2015. The Respondent did not respond to the Complaint. The website at the Domain Name is currently active.
The Complainant exhibits an email dated April 20, 2015 which was received by an Italian company, SIDAT SpA, and subsequently provided by that company to the Complainant. The email was sent from the Domain Name, using an email address reflecting the Respondent's name. In the email's signature line the Respondent purports to be the "Purchase Manager" of Halfords Autocentres Ltd. Mr. Eurl is not an employee of Halfords Autocentres Ltd and does not have any legitimate business connection with that company or with the Complainant. Following this email communication, goods were ordered by Mr. Eurl and not paid for. The Complainant understands that this matter has been reported to the UK National Fraud and Cyber Crime Reporting Centre by SIDAT SpA.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trade mark rights identified above, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name was registered and is being used in bad faith; specifically as an instrument of fraud. The Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 5(e) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of registrations for the trade marks HALFORDS AUTOCENTRES, HALFORDS AUTOCENTRE and HALFORDS in the UK and, in respect of the HALFORDS mark, that it also has international registrations.
The Domain Name comprises the entirety of each of the trade marks HALFORDS, HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES. In particular, the Panel finds that the Domain Name is almost identical to the mark HALFORDS AUTOCENTRES as the use of the hyphen in the Domain Name is too insignificant to provide a point of differentiation. It is the Panel's view that the Domain Name would be assumed by a significant number of Internet users to refer to the Complainant. Accordingly the (low) threshold test for paragraph 4(a)(i) of the Policy is satisfied, and, in the Panel's view, the Domain Name is identical or at least confusingly similar to the marks in which the Complainant has rights.
The Complainant has therefore established that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparation 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) the respondent has been commonly known by the domain name (even if it has acquired no trade mark or service mark rights); or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has submitted that the Respondent is not an employee of the Complainant and has not been authorized to use its name or trade marks. It also appears to the Panel that the Respondent has used the Domain Name to defraud potential suppliers of the Complainant.
Based on the Respondent's default and on the prima facie evidence provided in the Complaint, the Panel finds that the paragraph 4(c) circumstances are not present and the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of renting or selling or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark 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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location of a product or service on its website or location.
The Panel accepts the Complainant's submissions, which the Respondent has not disputed, that (i) the Respondent would have undoubtedly been aware of the Complainant's business activities and therefore name and trade marks when it registered the Domain Name and (ii) it has used the Domain Name for the purposes of fraudulent email communications with an Italian company, SIDAT SpA, impersonating the "Purchase Manager" of Halfords Autocentres Ltd, a company under the Complainant's control. Therefore, the Respondent is using the Domain Name in bad faith within the meaning of bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has proved that the Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <halfords-autocentres.com> be transferred to the Complainant.
Date: August 20, 2015