WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sir Terence Conran, Conran Holdings Limited v. Fui Afeku
Case No. D2016-2199
1. The Parties
Complainants are Sir Terence Conran and Conran Holdings Limited, both of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
Respondent is Fui Afeku of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <theconran.shop> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On October 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 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 November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2016.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on November 30, 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
Sir Terence Conran (“First Complainant”) is a designer, entrepreneur and the founder of The Conran Shop and Conran Holdings Ltd (“Second Complainant”) is a company incorporated on July 15, 1993 and having its registered office in England (jointly referred to as “Complainants”).
Complainants have used the trademark CONRAN in trade since 1982.
According to WhoIs the Domain Name was registered on September 26, 2016. The Domain Name originally resolved to a website that provides pay-per-click links, but is now passive.
5. Parties’ Contentions
In 1952 First Complainant set up a furniture-making business in London, United Kingdom. Then in 1956 he started his design practice, initially as an ancillary business to the furniture-making group and over the next 35 years, it grew to be one of the largest design consultancies in Europe.
In 1964 First Complainant began his retailing career when he opened a chain of shops named ‘Habitat’ and then in 1973 First Complainant opened ‘The Conran Shop’ in London.
With minor exceptions, Second Complainant exclusively controls the use of the CONRAN family of trademarks owned by First Complainant, all in terms of a trademark licence agreement between First Complainant and Second Complainant (together with Conran Limited) dated May 18, 2011. In addition to the right to use the CONRAN trademarks and to sublicense them, the agreement also allows Second Complainant to engage in proceedings relating to these marks.
The Conran Shop offers a carefully chosen selection of contemporary furniture and home furnishings and has multiple stores worldwide, including shops in the United Kingdom, Paris and Japan.
Complainants maintain a large global portfolio of trademarks relating to their brands including:
CONRAN – Filed August 10, 2001 for the European Union and registered on August 20, 2004
CONRAN – Filed March 12, 1982 for the United Kingdom and entered in the register on July 28, 1995
The CONRAN SHOP – Filed December 22, 2005 for the United Kingdom and entered in the register on May 4, 2007
Complainants contend that the Domain Name is confusingly similar to their CONRAN marks and that it is either confusingly similar or identical to their THE CONRAN SHOP mark, depending on whether the .shop top level domain is taken into consideration.
Complainants submit that the Domain Name is confusingly similar and potentially identical to names or marks in which it has rights in terms of the Policy.
Complainants operate a transactional website at “www.conranshop.co.uk” and, as an example of their online popularity, Complainants note that their Twitter account has circa 25,800 followers and their Instagram account circa 21,300 followers.
Complainants’ agents wrote to Respondent on October 4, 2016 and received a response by email on October 5, 2016 in which Respondent noted:
I'm a publisher developing websites and other lifestyle content online and thought acquiring the domain would be an amazing start to bidding for a chance to manager [sic.] your website.
If that should be an issue with your company, I am happy to sell it to recover costs.
In a further email of October 10, 2016, Respondent elaborated on the sale cost:
We will be happy to write up a contract of lease but I'll estimate it to be around £299 per month for the first year or transferred to you completely at £6500 with research tips on optimising sales with online shops.
Complainant states that the Parties were unable to reach an amicable settlement.
Complainants contend that Respondent does not have any rights or legitimate interests in the Domain Name.
Complainants have found no evidence that Respondent has been commonly known by the name THE CONRAN SHOP or CONRAN prior to or after the registration of the Domain Name. Respondent is not a licensee of Complainants, either singly or jointly, and has not received any consent, permission or acquiescence from Complainants to use their marks in association with the registration of the Domain Name or, indeed, any domain name, service or product.
Complainants have found nothing to suggest that Respondent owns any trademarks that incorporate or are similar or identical to the mark THE CONRAN SHOP or CONRAN. Equally, Complainants have found no evidence that Respondent has ever traded as THE CONRAN SHOP or CONRAN.
Complainants contend that any offering of goods or services by Respondent under the terms CONRAN or THE CONRAN SHOP would likely lead to consumer confusion given the fame of Complainants’ marks and as such could not be bona fide. Complainants further contend that the Domain Name is wholly referable to Complainants and their commercial activities, such that no rights or legitimate interests therein could vest in Respondent.
Complainants point out that the Domain Name briefly displayed pay-per-click advertising but following Respondent‘s offer to sell the Domain Name to Complainants, the Domain Name was changed to being passively held. Complainants contend that none of these uses represent a bona fide offering of goods or services.
Complainants contend that given the pay-per-click advertising links capitalized on the value of Complainants’ marks the related advertising does not confer any legitimate interest on Respondent.
Complainants contend that Respondent use of the Domain Name to solicit Complainants for work or employment as outlined in his response email of October 5, 2016, could not be reasonably considered a bona fide use, and submit that the Domain Name was registered and is being used in bad faith.
Complainants contend that the purchase amount of GBP 6500suggested by Respondent for the sale of the Domain Name is far above any reasonable out-of-pocket costs relating to the registration of the Domain Name and suggests that it is indicative that Respondent’s primary aim was to benefit from the sale of the Domain Name to Complainants. It is noted that at no point in the correspondence between the Parties did Complainants make an unsolicited offer to purchase the Domain Name.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainants have established rights in their portfolio of trademarks which include both CONRAN and The CONRAN SHOP (“Complainants’ Trademarks”) both as used and registered in relation to, inter-alia, design services and furniture. Complainants contend that the Domain Name is confusingly similar to Complainants’ Trademarks.
There is merit in this contention. The Domain Name is either the same as or at least virtually the same as Complainants’ Trademarks or in the alternative confusingly similar thereto. It is therefore found that Complainants have rights in Complainants’ Trademark, that Complainants’ Trademark comprises a dominant and confusing part of the Domain Name, and that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Complainants assert, without contradiction by Respondent, that Respondent is using the Domain Name to profit commercially by attracting Internet users and providing pay-per-click links to other websites. Complainants assert that by doing so Respondent is seeking to unfairly capitalise on the value of Complainants’ marks.
Respondent is not affiliated with Complainants and has not been authorized by Complainants to use and register its trademarks or to seek the registration of any domain name incorporating Complainants’ Trademark.
The registration and use of Complainants’ Trademark preceded the registration of the Domain Name. The Domain Name makes an obvious and direct reference to Complainants’ Trademark and services supplied in the design and furniture business.
In the absence of any explanation from Respondent as to why and how Complainants’ Trademark, which is not directly descriptive of design services or furniture, found its way into the Domain Name and why Respondent might have a legitimate interest in the Domain Name, the Panel finds that Respondent’s conduct is not consistent with relevant rights or legitimate interests on Respondent’s part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and used the Domain Name in bad faith.
The Panel infers, in the absence of any submissions, explanation or evidence to the contrary, that Respondent knew or must have known of Complainants’ Trademark at the time it registered the Domain Name. Complainants’ Trademark has been in public use since approximately 1982 and Complainant has previously registered Complainants’ Trademark in a number of countries or regions. It is therefore reasonable to infer that Respondent knew or must have known of Complainants’ Trademark.
Given such earlier use and registration of Complainants’ Trademark along with Respondent’s failure to claim good faith use of the Domain Name, the Panel accepts Complainants’ argument that Respondent, by setting up a pay-per-click arrangement of some sort has taken unfair advantage of the reputation of Complainants’ Trademark. Further, Complainants have made out a prima facie case that Respondent has sought to sell them the Domain Name for an amount in excess of its face value.
This enables the Panel to conclude that the Domain Name was registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 <theconran.shop> be transferred to Second Complainant, Conran Holdings Limited.
Clive L. Elliott
Date: December 13, 2016