WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Grid Electricity Transmission PLC and Ngrid Intellectual Property Limited v. National Grid Systems Ltd.
Case No. D2015-1924
1. The Parties
The Complainant is National Grid Electricity Transmission PLC and Ngrid Intellectual Property Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Squire Patton Boggs (UK) LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is National Grid Systems Ltd. of London, United Kingdom of Great Britain and Northern Ireland (UK).
2. The Domain Name and Registrar
The disputed domain name <nationalgridsystems.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 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.
4. Factual Background
The Domain Name was registered in August 2015.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
The Complainant forms an international electricity and gas group of energy companies and is the owner of various trade mark registrations dating back first in time to 2000 for the mark NATIONAL GRID, including in the UK where the Respondent is based, for a wide range of goods and services related to the operation of a major utility company.
The Domain Name, registered in August 2015 is confusingly similar to the Complainant's trade mark NATIONAL GRID incorporating it in its entirety with the non-distinctive suffix "systems".
The Respondent has no rights or legitimate interests in the Domain Name as it is not affiliated with the Complainant or licensed to use the Complainant's trade mark. The Respondent is not commonly known by the Domain Name nor has it acquired any trade mark rights in the name through a bona fide offering of goods and services. The Respondent uses the Domain Name to link to external sites including sponsored listings which is not bona fide use. This is unfair use leading to misleading diversion.
The Domain Name was registered and is used in bad faith as it uses the Complainant's trade mark to attract Internet users to the Respondent's web site for click through revenue based on a likelihood of confusion with the Complainant's trade mark.
The sponsored listings page also contains the question "would you like to buy this domain?"
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or confusing similarity
The Complainant has, inter alia, a UK trade mark registration for NATIONAL GRID for its services dating back to 2000. The Domain Name is confusingly similar to the Complainant's NATIONAL GRID trade mark consisting of the Complainant's registered trademark and the term "systems", being a descriptive term which may be seen as related to the business in which the Complainant is engaged. The distinctive part of the Domain Name is the NATIONAL GRID name. The addition of the nondistinctive text "systems" does nothing to prevent the confusing similarity of the Domain Name with the Complainant's trade mark. The generic Top-Level Domain " .com" is typically disregarded in assessing confusing similarity under this first requirement of paragraph 4(a) of the Policy. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response. It does not have any consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services given the confusing use, as discussed below, and has not produced any evidence to show it is commonly known by the Domain Name. Nor is it making noncommercial fair use of it given the use for commercial sponsored listings. In the circumstances of this case, and in view of the Panel's discussion below, the Panel finds that the second element of paragraph 4(a) of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location."
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant's trade mark with only generic terms added. The site has been used for advertisement links to third party websites not connected to the Complainant, both of a competing and non-competing nature. In the absence of a Response from the Respondent, considering the well-established nature of the Complainant and the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of paragraph 4(a) of the Policy and in light of this finding there is no need to consider additional grounds of bad faith argued by 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 <nationalgridsystems.com> be transferred to the Second Complainant Ngrid Intellectual Property Limited.
Date: December 21, 2015