WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Daniel Pinet
Case No. D2016-0348
1. The Parties
Complainant is Halfords Limited of Redditch, Worcestershire, the United Kingdom of Great Britain and Northern Ireland ("the United Kingdom"), represented by HGF Limited, United Kingdom.
Respondent is Daniel Pinet of Glasgow, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <halfords-autocente.com> 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 February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 29, 2016.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 5, 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
Complainant is one of the leading retailers and independent auto repair and servicing companies in the United Kingdom. Complainant employs over 12,000 people operating around 465 stores in the United Kingdom and Ireland. Complainant sells a wide range of goods relating to cycling, motor vehicle spare parts, motor accessories, camping and leisure products, tents, car audio systems and in-car entertainment, and mobility products under the HALFORDS trade mark, and provides servicing and associated goods and services under the trade marks HALFORDS AUTOCENTRES and HALFORDS AUTOCENTRE.
Complainant is the owner of the marks HALFORDS, HALFORDS AUTOCENTRE and HALFORDS AUTOCENTRES and variations thereof which it has used since as early as 1907 in the United Kingdom.
Complainant is the registered owner of the following United Kingdom trade mark registrations since 1955:
- No. 2535710 for HALFORDS AUTOCENTERS covering Classes 12 and 37;
- No. 3030101 for HALFORDS AUTOCENTRE (stylized) in Class 37;
- No. 2550153 for HALFORDS AUTOCENTRE in Classes 12 and 37;
- No. 739238 for HALFORDS covering Class 12;
- No. 884758 for HALFORDS covering Classes 1, 2, 3, 4, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 22, 24, 25, 27 and 28;
- No. 1113259 for HALFORDS covering Class 12;
- No. 1257422 for HALFORDS covering Classes 1, 3, 4, 5, 6, 7, 9, 12, 16, 17, 20, 25 and 26;
- No. 1281355 for HALFORDS covering Classes 36 and 37;
- No. 2230727 for HALFORDS covering Class 35;
- No. 2509709 for HALFORDS covering Classes 12, 35 and 37;
- No. 2262189 for HALFORDS (stylized) covering Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 27, 28, 30, 32, 34, 35, 36, 37, 39, 42 and 45;
Complainant is also the owner of several international trade mark registrations covering various European Union states and other countries for the mark HALFORDS.
All of Complainant's above trademark registrations were registered before December 18, 2015, the date of registration of the disputed domain name.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant's trade marks, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant owns several UK and International trade mark registrations for marks including the terms "halfords" and "autocentre". The disputed domain name incorporates Complainant's mark HALFORDS in its entirety. In addition, the word "autocente" is virtually identical to the words "autocentre" and "autocentres" that form part of several of Complainant's marks.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant's marks.
B. Rights or Legitimate Interests
Based on previous UDRP decisions, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP". See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Complainant's allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not an employee of Complainant, and Complainant has not authorized him to use or register the disputed domain name. Respondent's name, Daniel Pinet does not appear to have any relationship with the mark HALFORDS or HALFORDS AUTOCENTRES.
Until January 6, 2016 (the date upon which Complainant contacted Respondent regarding the disputed domain name), the disputed domain name resolved to a webpage that appears to be Complainant's website located at "www.halfordsautocentres.com". Thus, the record indicates Respondent's awareness of Complainant's website and the business identified by Complainant's marks.
When Complainant contacted Respondent regarding the disputed domain name, Respondent acknowledged Complainant's rights in the disputed domain name and agreed to transfer it to Complainant. However, despite numerous attempts to obtain the necessary authorization code to carry out the transfer of the disputed domain name and Respondent's express agreement to transfer it, Respondent has failed to cooperate to authorize the transfer.
In addition, the record indicates that Respondent may be connected to respondents in other UDRP proceedings involving Complainant's marks which involved the same Registrar and in which the disputed domain names (Halfords Limited v. Finn Danny, WIPO Case No. D2015-1627, <halfords-autocentre.com> and Halfords Limited v. Jamie Mike Eurl, WIPO Case No. D2015-1118, <halfords-autocentres.com>) had been used for fraudulent purposes.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. The record indicates that Respondent was aware of Complainant's rights in view of the disputed domain name resolving to Complainant's website. Moreover, the record indicates that Complainant has established strong goodwill and reputation in the UK market by virtue of its use of the marks HALFORDS and HALFORDS AUTOCENTRE and variations thereof since 1907. It is highly likely that Respondent was well aware of Complainant's rights at the time of registering the disputed domain name. In addition, as evidenced by Complainant, Respondent's address is in fact the address of the Alexander Thomson Hotel in Glasgow (with the same street address as used by respondent in prior UDRP proceeding involving the domain name <halfords-autocentre.com>, supra). Thus, it appears that Respondent is using a fictitious address for registration of the disputed domain name. Finally, despite agreeing to transfer the disputed domain name to Complainant, Respondent has failed to cooperate to effect the transfer.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith.
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, <halfords-autocente.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Date: April 25, 2016