WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Finn Danny
Case No. D2015-1627
1. The Parties
The Complainant is Halfords Limited of Redditch, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by HGF Limited, United Kingdom.
The Respondent is Finn Danny of Glasgow, United Kingdom.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <halfords-autocentre.com> (the “Domain Name”) is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2015. The Center transmitted its request for registrar verification to the Registrar on September 14, 2015. The Registrar replied on September 14, 2015, stating that it had not received a copy of the Complaint, that the Domain Name is registered with it, that the Respondent is the current registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration, that the date of expiry of the Domain Name is July 23, 2016, that the Domain Name has been placed and will remain in lock status during this proceeding, that the registration agreement is in English, and that the current registrant registered or acquired the Domain Name on July 23, 2015. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2015. The Complainant subsequently transmitted a supplemental submission to the Center and the Respondent on October 5, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was October 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 27, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Procedural Issues
In preparing the case file the Center noticed that it had not transmitted a part of Annex 5 (containing the Witness Statement of Mr. Ben Harris and the exhibits to this Statement) to the Complaint in its email notification of the Complaint to the Respondent, in that Exhibits BH7-BH13 were omitted. The Witness Statement itself and Exhibits BH1-BH6 to it were included in the email notification. The Witness Statement explains the nature and relevance of Exhibits BH7-BH13. The Respondent did not request copies of Exhibits BH7-BH13 and did not take any part in the proceeding. Accordingly, in the circumstances and having regard to paragraph 10 of the Rules, the Panel did not consider it necessary to issue a Panel Order to transmit these Exhibits to the Respondent.
The Complainant’s supplemental submission of October 5, 2015 contains evidence that was not available to the Complainant when it filed the Complaint. The Panel exercises its discretion to admit it under paragraphs 10 and 12 of the Rules. The Respondent has had sufficient time to respond to this submission and has not requested any additional time to do so. In the circumstances the Panel does not consider it necessary to extend further time.
5. Factual Background
The Complainant was established under the name “Halford Cycle Company” in 1907, taking over an established business with 9 shop outlets. By 1914 it had 100 outlets; in 1931 it opened its 200th outlet and in 1968 its 300th outlet. The business has advertised nationally in the United Kingdom since 1939 and expended over GBP 12 million on advertising in the financial year ended in 2014. It had a turnover in excess of GBP 1 billion in the financial year ended in 2015 and currently employs over 12,000 people operating around 465 stores in the United Kingdom and Ireland.
In 2010 the Complainant acquired a company providing car servicing and repairs under the name Nationwide Autocentres Limited. Following the acquisition the business was rebranded HALFORDS AUTOCENTRES and the subsidiary was renamed Halfords Autocentres Limited. In the financial year ended in 2014, Halfords Autocentres Limited had a turnover in excess of GBP 136 million and employed about 3000 people. It is Britain’s leading independent provider of car servicing and repair services.
The Complainant first registered HALFORDS as a trademark in the United Kingdom in 1955. It has also registered this mark internationally. It further registered HALFORDS AUTOCENTRES and HALFORDS AUTOCENTRE as trademarks in the United Kingdom in 2010.
The Complainant’s main retail website is at “www.halfords.com”. The Halfords Autocentres business has its website at “www.halfordsautocentres.com”.
The Domain Name was registered in the name of the Respondent on July 23, 2015. The registrant’s address given in the registration was that of the Glasgow Marriott Hotel. A person giving his name as Jamie Eurl subsequently used the Domain Name in an attempt to buy goods on credit from a third party by purporting to be an employee of the Complainant or its Halfords Autocentres subsidiary.
Previously a person using the same name, Jamie Eurl, had registered the domain name <Halfords‑autocentres.com> and used it to acquire goods from another third party by purporting to be an employee of the Complainant or its subsidiary. That domain name was held to have been registered and used in bad faith and was ordered to be transferred to the Complainant (see Halfords Limited v. Jamie Mike Eurl, WIPO Case No. D2015-1118).
6. Parties’ Contentions
The Complainant claims that it has registered and unregistered rights in the marks HALFORDS, HALFORDS AUTOCENTRES and HALFORDS AUTOCENTRE, referring to its registrations and substantial use and advertising under these marks summarized above. The Complainant contends that the Domain Name is identical or confusingly similar to these marks.
The Complainant submits that the Respondent has no rights or legitimates interests in respect of the Domain Name or any corresponding name.
The Complainant alleges that the Domain Name has been registered and used in bad faith, in particular to obtain goods fraudulently on credit by assisting the registrant or a person associated with the registrant to impersonate the Complainant.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
In accordance with paragraph 4(a) of the UDRP, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it 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. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the marks HALFORDS, HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES. Although the marks HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES are used in the business of the Complainant’s subsidiary, they are clearly associated with the Complainant’s well-established HALFORDS mark so that the Complainant shares the goodwill and unregistered rights in the marks HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES.
The Panel further finds that the Domain Name is identical or confusingly similar to each of these marks. It is virtually identical to the marks HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES. It differs from the HALFORDS mark only in the addition of the word “autocentre”, which is descriptive in relation to the Complainant’s subsidiary’s business, together with a hyphen and the generic Top Level Domain suffix “.com”. These elements are insufficient to avoid confusion. Indeed the evidence shows that a very similar domain name has in fact been used to mislead and defraud a third party by using fraudulent email communications (see Halfords Limited v. Jamie Mike Eurl, supra).
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Respondent has not used or made demonstrable preparation to use the Domain Name for any bona fide offering of goods or services. The Respondent is not commonly known by the Domain Name. Nor has the Respondent made any legitimate non-commercial or fair use of the Domain Name.
On the evidence, there appears to be no basis on which the Respondent could possibly claim any rights or legitimate interests in respect of the Domain Name or any corresponding name.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the basis of the evidence summarised above, which was not rebutted by the Respondent, that the Domain Name was registered and is being used to assist the Respondent or someone connected with the Respondent to defraud suppliers of goods by impersonating the Complainant or its subsidiary, thereby enabling that person to purchase goods on credit. The Panel infers that the Respondent or its associate would resell the goods and then disappear with the money thereby obtained.
This is liable to disrupt the business of the Complainant and/or its subsidiary by undermining its credit and goodwill. On any view the registration and use of the Domain Name for this purpose is in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith. All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to 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 Domain Name <halfords-autocentre.com> be transferred to the Complainant.
Date: November 8, 2015