WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company
Case No. D2016-0036
1. The Parties
The Complainants are National Grid Electricity Transmission Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and NGrid Intellectual Property Limited of London, United Kingdom represented by Squire Patton Boggs (UK) LLP, United Kingdom.
The Respondent is Tulip Trading Company of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <nationalgridbenifitservices.com> (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2016, 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 proceedings commenced on January 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2016.
The Center appointed William P. Knight as the sole panelist in this matter on February 8, 2016. 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 Complainants are members of a group of companies that supply gas and electricity in the United Kingdom and the northeast of the United States of America (“United States”) and related goods and services using the trade mark NATIONAL GRID. The trade mark NATIONAL GRID has achieved registrations as a trade mark in its own right, not in the form of a graphic or logo, in the United States and the United Kingdom, dating back to 1999.
Originally protected by a privacy service, the Respondent was identified as a company domiciled in the Caribbean nation of Saint Kitts and Nevis.
The Domain Name was registered on November 20, 2015.
At the time of the decision, the Domain Name resolved to a “parking page” featuring links to third-party websites.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainants assert, inter alia, as follows:
(i) that the Domain Name is confusingly similar to the Complainants’ registered trade marks;
(ii) that the Respondent has neither conceivable rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name have been registered and is being used in bad faith.
In support of (i), the Complainants rely upon the registered trade marks in the name of one of them, some of which are for the words “national grid” on their own, with no stylization or logo. The Complainants say that these trade marks enjoy a significant reputation in the United Kingdom and the United States and are well-known amongst professionals of the utility industries as well as end-consumers in the United Kingdom and the United States.
The Complainants say that the words “national grid” in the Domain Name renders the Domain Name confusingly similar to these registered trade marks because the additional words “benifit” or “services” are non-distinctive. They say that the Complainants’ trade marks create a dominant effect in the Domain Name.
In support of (ii), the Complainants rely upon the fact that neither the Respondent’s name nor the nature of its use of the Domain Name indicates any connection at all between the Domain Name and the Respondent, leaving it to the Respondent to justify its selection of the Domain Name.
In support of (iii), the Complainants state that the Respondent’s use of the Domain Name is a deliberate use of the confusion created by the similarity of the Domain Name to the Complainants’ trade marks. They state, without any supporting evidence, that “an offer to sell the disputed domain names would be most valuable to the Complainants as they are most negatively affected by Respondent’s use of the disputed domain names” and therefore speculate that the Domain Name was registered for the purpose of selling them to the Complainants or to a competitor of the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond to explain the registration and use of the Domain Name.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.
A. Identical or Confusingly Similar
It is clear that at least one of the Complainants is the owner of the NATIONAL GRID trade mark in the United Kingdom and in the United States in respect of various goods and services concerned with the supply and distribution of electricity and gas.
The Panel is also satisfied that the Domain Name is confusingly similar to the NATIONAL GRID trade mark in that the dominant component of the Domain Name is the words “national grid” and the addition of the suffix “benifitservices”, notwithstanding the mis-spelling of “benefit”, does not render it distinctive nor create the impression of a different name or mark and, indeed, adds to the confusing similarity, suggesting that it is concerned with employment benefits of employees of one or the other of the Complainants or of related companies.
The Panel finds that the Domain Name is confusingly similar to the Complainants’ trade mark NATIONAL GRID and, accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Domain Name was registered on November 20, 2015, long after at least one of the Complainants had established trade mark rights in NATIONAL GRID. .The Complainants have indicated that the Respondent is not affiliated with the Complainants in any way, is not licensed to use the Complainants’ mark, is not commonly known by the Domain Names and is not using them for a bona fide offering of goods or services. In following, the facts that the Respondent’s name and its use of the Domain Name shows no connection of any kind with the words “national grid” are sufficient to put the onus on it to explain its choice.
The Respondent was entitled, and had every opportunity, to demonstrate some right or legitimate interest with respect to the Domain Name, and paragraph 4(c) of the Policy gives good examples of how the Respondent could have done so. The Respondent has given no such explanation and cannot be in a better position in this regard by failing to reply giving some explanation for its choice.
As made clear by paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) use of a domain name to post parking and landing pages or pay-per-click (“PPC”) links does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services.”
In the absence of any response from the Respondent, the Panel concludes that the Complainants have discharged the burden of establishing that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has therefore been satisfied.
C. Registered or Used in Bad Faith
The Complainants have not provided anything other than speculation as to the reasons for the Respondent’s registration and use of the Domain Name. It is one thing to establish that the Respondent has no rights or legitimate interests in the Domain Name but it is quite another to establish that the Domain Name was registered and is being used in bad faith, even in the sense required by the Policy. Why would a resident of St Kitts and Nevis have heard of the Complainants and their trade marks when they have no presence, at least so far as the evidence reveals, in any Caribbean nation or indeed anywhere outside the United Kingdom and the northeast of the United States?
Under paragraph 4(b) of the Policy, there is a non-exhaustive list of circumstances by establishing any of which the Complainants may demonstrate that the Domain Name was registered and is being used in bad faith at the time of the Complaint. They are:
(i) circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to one of the Complainants 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 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it 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 mark of one of the Complainants as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel notes that the Complainants have provided no direct evidence to satisfy any of the above four criteria. The Complainants merely provide speculation and their arguments regarding harm to them arising from use or sale of the Domain Name are unconvincing. The Panel is therefore left to weigh the evidence unassisted by the Complaint and to have regard to any other matters that it may in order to reach a proper decision in this matter.
Given the paucity of the Complaint, the Panel has performed independent research to reach this decision. Paragraph 4.5 of the WIPO Overview 2.0 states that the consensus view is that a Panel “may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases.”
The Panel has visited the websites associated with the Domain Name and notes that the Domain Name resolves to a website hosting PPC links. In this case, even if the Respondent did not intend to sell the Domain Name, it seems likely that he acquired it with the intention of deriving a commercial benefit of some kind. A parking page such as that used by the Respondent in conjunction with the Domain Name is a single page sponsored links to third-party websites with no email or other website content. When an Internet user enters the site and uses any of the links provided, this generates PPC revenue while diverting the user to other websites. So, if anything else may indicate that the Respondent chose the Domain Name knowing of its connection to the Complainants in the expectation that Internet users may be attracted to them, this conduct would meet the bad faith requirements in paragraph 4(b)(iv) of the Policy. This would be the case even if the use of the Domain Name allowed a service provider to derive commercial advantage by providing links to offerings of goods and services in return for free registration or parking. See paragraph 3.2 of the WIPO Overview 2.0 and the decisions there cited.
The Panel considers that it is obvious in a case such as this for the Complainants to inquire as to whether this Respondent has a history of registering domain names that are derived from well-known trade marks of third parties to whom it has no connection. In the line with paragraph 4.5 of the WIPO Overview 2.0, the Panel is of the view that such an enquiry does not require an administrative order. In this case, there are three earlier decisions by UDRP panels in which the Respondent is named and an adverse decision made, involving its registration of domain names using the well-known marks of entities as diverse as the soccer club AS Roma, Sanofi and Accenture, the last showing the interesting “typosquatting” variant “accenrure”.
In these circumstances, therefore:
(a) notwithstanding the Complainants’ lack of any significant presence within the Caribbean , it is accepted by the Panel that it is probable that the Respondent registered the Domain Name in circumstances where it was aware of the pre-existing rights of the Complainants;
(b) the Domain Name is confusing similar to the Complainants’ trade mark and the only subsequent use of the Domain Name has been as a PPC parking page;
(c) if the Respondent had any intention to make some legitimate use of the Domain Name, it has had ample opportunity either to do so or otherwise to explain its conduct, but has done neither.
The Panel concludes that the Respondent registered and is using the Domain Name in bad faith, in the sense required by the Policy.
The Complainants have requested the Panel appointed direct that the Domain Name be transferred to NGrid Intellectual Property Limited on behalf of both Complainants.
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 <nationalgridbenifitservices.com> be transferred to NGrid Intellectual Property Limited.
William P. Knight
Date: February 12, 2016