WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B & Q plc. v. Domains By Proxy LLC, domainsbyproxy.com / G Jutla, DBM
Case No. D2016-0416
1. The Parties
The Complainant is B & Q Plc of Hampshire, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Sipara, UK.
The Respondents are Domains By Proxy LLC, domainsbyproxy.com of Scottsdale, Arizona, United States of America / G Jutla, DBM of West Midlands, UK.
2. The Domain Names and Registrar
The disputed domain names <bandqbricks.com> and <bandqbricks.net> (the "Domain Names") are registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2016, naming Domains By Proxy LLC, domainsbyproxy.com as the Respondent. The Center transmitted its request for registrar verification to the Registrar on March 1, 2016. The Registrar replied on March 2, 2016, confirming that the Domain Names are registered with it, but stating that the Respondent named in the Complaint (Domains By Proxy LLC) was not the registrant. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Names, which identified the registrant as G Jutla, DBM of West Midlands, UK. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies to the Domain Names, that the Domain Names would remain locked during this proceeding subject to expiry, and that the language of the registration agreement is English. The Registrar stated that both Domain Names were registered to the current registrant since at least March 1, 2016; that the Domain Name <bandqbricks.com> would expire on October 9, 2017; and that that the Domain Name <bandqbricks.net> would expire on October 14, 2016.
The Center forwarded to the Complainant the information provided by the Registrar regarding the identity of the registrant of the Domain Names and invited the Complainant to submit an amended Complaint. The Complainant submitted an amended Complaint to the Center on March 8, 2016, naming G Jutla, DBM as the Respondent. In this decision the term "the Respondent" will accordingly be used to refer to G Jutla, DBM, the underlying registrant, even though the privacy service is also identified as a respondent to ensure that full effect is given to the decision.
The Center verified that the amended 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 proceeding commenced on March 11, 2016. The courier recorded successful delivery of the Written Notice at the Respondent's address as stated in the WhoIs record.
In accordance with paragraph 5 of the Rules, the due date for Response was March 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2016.
The Center appointed Jonathan Turner as the sole panelist in this matter on April 13, 2016. 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 finds that the amended 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. Factual Background
The Complainant's business was commenced in 1969 and now operates more than 330 stores in the UK and Ireland under the name "B&Q", selling bricks and other building materials, home improvement and gardening supplies, household goods, appliances and accessories, in particular for use by consumers in "do it yourself" ("DIY") work without engaging professional craftsmen. It is the largest retailer of DIY products in the UK; its annual sales have exceeded GBP 3.5 billion in each year since 2003-4.
The Complainant has advertised extensively under the mark B&Q, which was registered back in 1991, on the Internet, in newspapers, on television and in other media, spending GBP 160 million on advertising in 2010‑2011. The Complainant operates a website at "www.diy.com" and holds the domain name <bandq.com> which is directed to this website. The website has about 1.2 million unique visitors each year and over 8 million page impressions.
The Complainant is the proprietor of registrations of the mark B&Q for a wide range of goods in numerous jurisdictions including the UK.
The Complainant previously made a complaint under the Dispute Resolution Service ("DRS") operated by Nominet (the registry for the ".uk" country code Top-Level Domain) against Darlaston Builders Merchants Limited ("DBM Ltd") of Darlaston, West Midlands, UK, in respect of the domain name <bandqbricks.co.uk>. This domain name was directed to a website for DBM Ltd's business at "www.brickexpress.com". The Nominet Expert found that <bandqbricks.co.uk> was an abusive registration in the hands of DBM Ltd and ordered that it be transferred to the Complainant.
DBM Ltd's sole director, A. Jutla, has the same surname as the registrant of the Domain Names, G Jutla, according to the Registrar's WhoIs database. In addition, DBM Ltd's street address and postcode are the same as those of the registrant of the Domain Names in the Registrar's WhoIs database. Furthermore, the first line of the address of the registrant of the Domain Names is given as "DBM" and the registrant's email address is given as "dbmdiy@[...]". The technical and administrative contacts for the Domain Names are also G Jutla with the same street and email addresses. The domain name <dbmdiy.com> is registered with G Jutla as the registrant name and DBM Ltd as the registrant organization and is directed to a website promoting the business of DBM Ltd.
Before filing the Nominet complaint, the Complainant's representatives sent a cease and desist letter to DBM Ltd. Someone working for DBM Ltd contacted the Complainant's representatives by telephone on October 12, 2015. He asserted that the domain name <bandqbricks.co.uk> would be seen as "band" followed by "q" and "bricks". He asked what the Complainant was willing to pay for it. He also informed the Complainant's representatives that DBM Ltd had registered the Domain Name <bandqbricks.com> and that if the Complainant wanted the domain name they would have to make an offer. The Domain Name <bandqbricks.com> was also directed to DBM Ltd's website at "www.brickexpress.com".
In a subsequent letter to the Complainant's representatives on October 14, 2015, DBM Ltd claimed a legitimate interest in the domain names <bandqbricks.co.uk> and <bandqbricks.com> on the ground that they contain the word "bricks", denied that they were being used in bad faith, and stated that if the Complainant would like to purchase these domain names, "any reasonable offer will be considered, other than the original registration fee".
After the Complainant's Nominet DRS complaint in respect of the domain name <bandqbricks.co.uk> was upheld, the Complainant's representatives wrote a further cease and desist letter to DBM Ltd on December 17, 2015, in respect of the Domain Names, <bandqbricks.com> and <bandqbricks.net>. Both Domain Names were directed to DBM Ltd's website at "www.brickexpress.com". During a subsequent telephone conversation a person working for DBM Ltd acknowledged that it was "naughty" of DBM Ltd to have directed the Domain Names to a website promoting its business. The Domain Names were redirected the same day to web pages with no content other than "Hello Tom :)". Tom is the first name of the Complainant's representative. Subsequently they were redirected to parking pages containing links to third party websites marketing building and gardening materials.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to its registered mark B&Q. It draws attention to the scale on which it has used the mark. It points out that "and" is equivalent to "&", which is an impermissible character in domain names, and that "bricks" is descriptive of products associated with the Complainant.
The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the Domain Names. It states that it has not granted the Respondent any license, permission or authorization to use the Domain Names or any other domain names similar to its marks. It notes that the Respondent's original use of the Domain Names was to redirect traffic to DBM Ltd's website at "www.brickexpress.com" and that there is no evidence of any intent to use them for any stand-alone purpose. The Complainant also refers to the current use of the Domain Names for parking pages, which it contends cannot be regarded as a bona fide offering of goods or services or as legitimate noncommercial or fair use.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. It submits that by using the Domain Names, DBM Ltd has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of DBM Ltd's website or a product or service promoted on it. The Complainant points out the admission by someone working for DBM Ltd that this was "naughty" behaviour.
The Complainant also refers to the current direction of the Domain Names to parking pages containing links to competitors of the Complainant and alleges that the Respondent is profiting from the diversion of traffic from the Complainant's website to competing websites.
Finally, the Complainant mentions the Respondent's attempts to sell the Domain Names for more than the cost of registration.
The Complainant requests a decision that the Domain Names be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Names are 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 Names; and (iii) that the Domain Names have been registered and are 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 rights in the mark B&Q.
The Panel is also satisfied that the Domain Names are confusingly similar to this mark. The word "and" is equivalent to "&" and "bricks" is a generic term for a staple item which is likely to be associated with the Complainant as a supplier of products used in building and home improvement. In view of the reputation of the mark B&Q in the UK and Ireland resulting from the very extensive scale of its use and promotion by the Complainant, the Domain Names are likely to be read by many Internet users as referring to the Complainant, rather than "band" followed by the letter "q" as suggested on behalf of DBM Ltd.
The first requirement of the UDRP is met.
B. Rights or Legitimate Interests
The Panel finds on the evidence that the Respondent has not been authorized by the Complainant to use the Domain Names or any other names similar to its B&Q mark.
The Panel does not regard the direction of the Domain Names to the website of DBM Ltd at "www.brickexpress.com" or subsequently to a parking page containing links to competitors of the Complainant as constituting a bona fide offering of goods or services. On the contrary, this constitutes use in bad faith to divert Internet users seeking the Complainant's website to websites of other businesses through confusion of the Domain Names with the Complainant's B&Q mark.
Nor was this legitimate noncommercial or fair use; on the contrary, it was unfair, commercial use profiting or enabling others to profit from the Complainant's goodwill by exploiting confusion with the Complainant's mark.
It is also evident that the Respondent is not commonly known by the Domain Names.
None of the examples of circumstances which are to be regarded as demonstrating rights or legitimate interests under paragraph 4(c) of the UDRP applies and the Panel is satisfied that there are no other grounds for regarding the Respondent as having any rights or legitimate interests in the Domain Names.
The second requirement of the UDRP is met.
C. Registered and Used in Bad Faith
The Panel is satisfied by the matters set out in section 4 above that the Respondent is closely associated with the company DBM Ltd and that whatever is for the commercial gain of DBM Ltd is also for the commercial gain of the Respondent.
The Panel further finds in the circumstances summarized in section 4 above that by using the Domain Names the Respondent has intentionally attempted to attract Internet users to DBM Ltd's website at "www.brickexpress.com" by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website and of the goods promoted on it, for commercial gain, in the form of sales of bricks by DBM Ltd. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Names in bad faith.
This presumption is not displaced by any other circumstances and it is reinforced by the offers made by personnel of DBM Ltd to sell the Domain Names for a price exceeding the costs of registering them and by the redirection of the Domain Names to parking pages containing links to websites of competitors of the Complainant.
The Panel concludes that the Domain Names were registered and are being used in bad faith. All three requirements of the UDRP are met and it is appropriate to direct that the Domain Names 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 Names, <bandqbricks.com> and <bandqbricks.net>, be transferred to the Complainant.
Date: April 27, 2016