WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb
Case No. D2017-0209
1. The Parties
The Complainant is Alfred Dunhill, Inc. of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Abdullah Altubayieb of Dhahran, Saudi Arabia, represented by TKD Solicitors, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <richarddunhill.com> 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 February 2, 2017. On February 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
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 February 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2017. On March 9, 2017, the Respondent asked for a 21‑day extension of the deadline to file a Response. The Center extended the due date for the Response to March 24, 2017. The Response was filed with the Center on March 24, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 29, 2017. 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 Complainant, dating back over a century and now a division of Richemont, currently manufactures and sells a variety of products internationally, such as luxury leather goods, writing implements, fragrances, timepieces and clothing, including notably shemaghs (traditional head coverings commonly found in the Middle East). The Complainant's prominence has included product placement in James Bond films and sponsorships such as the Alfred Dunhill Links Golf Championships.
The Complainant, in the name of Alfred Dunhill Ltd., holds trademarks including the following:
DUNHILL LONDON, United States Patent and Trademark Office ("USPTO"), principal register, registered June 2, 2009, registration number 3629424, classes 3, 9, 14, 16, 18, 25, 34;
DUNHILL, USPTO, principal register, registered March 11, 2008, registration number 3395072, classes 9, 14, 16, 18, 25, 34;
DUNHILL, United Kingdom Intellectual Property Office ("UKIPO"), registered July 13, 1978, registration number 1098660, class 25;
DUNHILL, UKIPO, registered March 29, 1976, registration number 1060897, class 25.
The Complainant also operates a website and online store through its own domain name <dunhill.com>.
The Respondent is the operator of the website to which the disputed domain name resolves, which presently depicts shemaghs. According to the WhoIs, the disputed domain name was registered on April 27, 2016. The Respondent's registration of the company name "Richard Dunhill London Limited" is currently under challenge by the Complainant before the United Kingdom Company Names Tribunal in a defended case.
Since the disputed domain name appears to be under the control of a single entity, and in the Respondent's words "both parties in this dispute are companies...", it will be appropriate to refer to the Respondent impersonally and in the singular.
5. Parties' Contentions
The Complainant's contentions are summarised below.
The Complainant contends that it has rights under the Policy in the trademarks DUNHILL and DUNHILL LONDON and that the disputed domain name is identical or confusingly similar to its trademarks. The Complainant's trademarks are notorious. The generic Top-Level Domain ("gTLD") ".com" may be disregarded in the determination of confusing similarity. The prefix "richard" has been incorporated by the Respondent in order to enhance the association of the disputed domain name with the Complainant, because Richard Dunhill is the name of the grandson of Alfred Dunhill (the founder of the Complainant) and because the Complainant is a source of shemaghs.
The Complainant contends that the Respondent has not been granted any license, permission, or authorisation to create the disputed domain name incorporating its trademarks and has no rights or legitimate interests in respect of the disputed domain name. The Respondent's use of the disputed domain name has not been bona fide, but intended for the purpose of selling goods, particularly shemaghs, in competition with the Complainant. The Respondent has never been commonly known by a name that is a trademark of the Complainant. The disputed domain name is not in use for any noncommercial or fair purpose. The Respondent's identity has been hidden behind a privacy service.
The Complainant further contends that the disputed domain namewas registered and is being used in bad faith. The Complainant says the disputed domain name was registered by the Respondent with either actual or constructive knowledge of the Complainant's trademarks, which should be sufficient to establish opportunistic bad faith registration under the Policy. A preliminary trademark search by the Respondent would have revealed the Complainant's trademarks, and the Complainant's website "www.dunhill.com" would have been found.
The Complainant contends that the Respondent's conduct in offering products similar to those sold under the Complainant's trademark through the disputed domain name should lead to a finding of registration and use in bad faith in the terms of paragraph 4(b)(iv) of the Policy.
The Complainant has cited a number of previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent denies the Complaint. The Respondent's extensive contentions are summarised below.
The Respondent contends that this proceeding should be terminated or suspended pending the outcome of a dispute filed with the United Kingdom Company Names Tribunal by the Complainant on January 12, 2017, to be defended by the Respondent. The dispute is a challenge to the Respondent's registered company name, "Richard Dunhill London Limited".
The Respondent, without prejudice to the above submission, denies that the disputed domain name is identical or confusingly similar to the Complainant's trademark. The Respondent does not use the word DUNHILL standing alone but with the preceding word "richard". The word "richard" is distinctive and distinguishing, and is unlike the addition of ordinary descriptive words.
The Respondent appends and cites in its support the judgment of the European Court of Justice in Barbara Becker v. Harman International Industries Inc., Case C-51/09, in particular paragraphs 38 and 39. The Respondent says the surname "Dunhill" is common according to the website "www.ancestry.com", which refers to "30,470 Historical Documents with Dunhill on Ancestry". "Dunhill" is an Irish village, the name of a record label, and the surname of famous English composer Thomas Dunhill.
The Respondent denies any connection between the disputed domain name and the Complainant or any of the family of Alfred Dunhill. There is no evidence that the name "Richard Dunhill" is used by the Complainant in such a way as to establish unregistered trademark rights under the Policy. There is no evidence of actual confusion caused by the Respondent's use of the disputed domain name.
The Respondent claims to have rights or legitimate interests in respect of the disputed domain name and says the Complainant's mere assertions to the contrary do not amount to a prima facie case.
The Respondent says that, in terms of paragraph 4(c)(i) of the Policy, the disputed domain name has been used in connection with a bona fide offering of goods or services, namely shemaghs.
The Respondent says that in terms of paragraph 4(c)(ii) of the Policy, the Respondent is commonly known by the disputed domain name, with the suffix "London Limited". The Respondent cites inter alia the judgment in the English Court of Appeal case of Reed Executive Plc and Another v Reed Business Information Ltd,  E.T.M.R. 56, and certain previous decisions under the Policy, on circumstances in which a person or company may use their own name even when there is actual confusion with a registered trademark, and says that in any case, there is no confusion here.
The Respondent says that as far as it is aware, the Complainant does not market shemaghs, whereas the website of the disputed domain name relates to shemaghs.
The Respondent contends that the disputed domain name was not registered and is not being used in bad faith. The Respondent has not intentionally attempted to attract Internet users by confusion with the Complainant's trademarks for commercial gain. The Respondent has not registered the disputed domain name to disrupt the business of a competitor, and it is denied that the Complainant and the Respondent are competitors. The disputed domain name is not a blocking registration against the Complainant and the Respondent has not engaged in a pattern of such conduct. The disputed domain name was not registered for profitable sale.
The Respondent says there is nothing wrong with its use of a privacy service and there has been no attempt to evade these proceedings (or proceedings in the Company Names Tribunal).
The Respondent contends that the Complainant has engaged in attempted Reverse Domain Name Hijacking.
The Respondent has referred the Panel to a number of previous decisions under the Policy and legal judgments that it considers should support its position.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent has requested that this proceeding be terminated or suspended on the grounds that the Complainant has filed a challenge before the United Kingdom Company Names Tribunal objecting to the Respondent's registered company name, and that under the Policy, an issue to be determined is whether the Respondent is entitled to use "Richard Dunhill", being part of its own company name, in the disputed domain name.
Paragraph 18(a) of the Rules, Effect of Court Proceedings, gives the Panel the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision in these circumstances.
According to the Respondent, a decision from the Company Names Tribunal in this case should take 6 to 12 months. According the Company Names Tribunal website, it strives to "issue 75% of our decisions within 15 months of the counter-statement being filed".
Paragraph 10(c) of the Rules mandates that the Panel "shall ensure that the administrative proceeding takes place with due expedition".
The Company Names Tribunal and the Policy deal with different matters. The role of the Company Names Tribunal is to deal with complaints made under sections 69(1)(a) and (b) of the United Kingdom Companies Act, 2006. The Policy does not concern itself with the validity of disputed company names per se, but with complaints alleging abusive registration of a domain name in the terms of paragraph 4(a) of the Policy. With due respect for the Company Names Tribunal, the Panel, in the particular circumstances of this case, foresees no impediment to reaching a decision independently of the validity or otherwise of the Respondent's company name, and will proceed accordingly. Nothing in this Decision purports to pre-empt any eventual Decision of the respected Company Names Tribunal.
B. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant has the rights required by the Policy in the trademarks DUNHILL and DUNHILL LONDON.
The disputed domain name is <richarddunhill.com>, of which the gTLD designation ".com" may in this case be disregarded in the determination of confusing similarity. What remains is "richarddunhill", which incorporates the entirety of the Complainant's trademark DUNHILL and the more distinctive part DUNHILL of the Complainant's trademark DUNHILL LONDON.
For the determination of confusing similarity under paragraph 4(a)(i) of the Policy, the threshold is conventionally modest, requiring an objective assessment of whether, for example, the trademark is clearly recognisable in the disputed domain name, even in the presence of additional words or strings. The Panel finds the disputed domain name to be read easily as two words, namely "richard dunhill", in which the Complainant's trademark DUNHILL is prominently visible. Solely for the purpose of this proceeding under the Policy, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademarks and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated that the Respondent does not have any rights or legitimate interests in the disputed domain name and has not been granted any right to use the Complainant's trademarks.
Since the Respondent may have information of which the Complainant was unaware, paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie assertions under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
In terms of paragraph 4(c)(i) of the Policy the Respondent states that it "is in fact carrying on a legitimate business relating to the sale of Shemaghs from the website linked to the disputed domain name. Accordingly, there is a bona fide business in operation". The Respondent has not sought to support this assertion with any evidence or even a printout of the website. The Complainant, however, has produced screen captures of two pages of the website to which the disputed domain name resolved at the time. The home page shows a photograph of a shemagh and box both marked "Richard Dunhill London", with a smaller photograph of shemagh material. The second page, "products", shows only two diminutive and slightly different pictures of a shemagh and box, without explanation. No sales facility is evident. Among aspects of the website that serve to undermine its genuineness are two textual references in which the word shemagh is erroneously spelled as "shamagh". On balance, the Panel finds the website of the disputed domain name (of which the Respondent has produced no evidence), while clearly commercial in nature, to be somewhat unprofessional or superficial and to create the impression of being a perfunctory placeholder. In any event it falls far short of projecting any convincing use or preparations for use for a bona fide supply of goods or services.
In terms of paragraph 4(c)(ii) of the Policy the Respondent claims to be "commonly known by the disputed domain name (without the '.com') in conjunction with the descriptive suffix LONDON LIMITED". No evidence has been produced in support of this assertion of common knowledge. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at paragraph 4.5, expresses the consensus that panels may make limited enquiries into matters of public record. Readily accessible United Kingdom Companies House online records show that "Richard Dunhill London Limited" was incorporated on April 26, 2016, being the day before the registration of the disputed domain name. The mere registration of a company name, without more, cannot reasonably be equated with the creation of almost immediate common knowledge. The Panel has not been presented with any evidence or in any way persuaded that, within the meaning of paragraph 4(c)(ii) of the Policy, the Respondent as an individual or business was "commonly known" by the disputed domain name at the time of its registration.
The website of the disputed domain name is clearly of a commercial nature and paragraph 4(c)(iii) of the Policy is found not to apply.
Irrespective of the validity or otherwise of the Respondent's company name, the Panel finds on the evidence and on the balance of probabilities that the Complainant has succeeded in proving, and the Respondent has failed to rebut, that the Respondent does not have rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent. Paragraph 4(b)(iv) of the Policy is pertinent in this case:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
A comparison of the Respondent's website to which the disputed domain name has resolved, and the Complainant's websites, is revealing. The appearance of the Respondent's website has been detailed above. The Complainant has produced evidence in the form of screen captures of some of the Complainant's own website pages, directed to different countries. These variously offer for sale, in a variety of designs, pocket squares with an "AD" (superimposed) monogram, neckties (shown on DUNHILL-branded shirts) and jackets, with some items priced. Customer service, shopping bag and shipping facilities are indicated. Depicted on the website "www.dunhill.com/sa", which the Panel takes to pertain to Saudi Arabia (notably the domicile given by the Respondent), is a folded shemagh on a page branded DUNHILL LONDON.
The Complainant has also appended three photographs of shemaghs, described as "specific products sold by Complainant", one being folded and embroidered or printed with DUNHILL LONDON, the others worn by models as male head dress, with in the foregrounds a shemagh and box both branded DUNHILL LONDON.
On the totality of the evidence, the Panel finds it more probable than not that the intention of the Respondent has been to attract visitors to the website of the disputed domain name by incorporating the Complainant's trademark DUNHILL, in the expectation that a proportion of potential visitors will be confused into believing it to be a website belonging to or endorsed by the Complainant. Enhanced confusion is further found to be likely on arrival at the Respondent's website since it displays goods similar to the Complainant's shemaghs in a similar red and white colour scheme, display style and packaging, being marked on the Respondent's website "Richard Dunhill London" whereas the Complainant's website pages and promotional material are all prominently branded "DUNHILL LONDON". The Panel finds it probable that a proportion of visitors to the Respondent's website will believe the goods displayed there to be those of the Complainant. The Respondent's website projects clearly a commercial intent. Thus the Panel, on the balance of probabilities, finds the disputed domain name to be in use by the Respondent with intent to attract Internet users for commercial gain by confusion with the Complainant's trademarks, constituting use in bad faith in the terms of paragraph 4(b)(iv) of the Policy, and to have been registered for the same bad faith purpose.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(iii) of the Policy.
The use of a privacy service for the registration of a domain name may be for a registrant's own legitimate reasons. In this instance there is no indication that the Respondent intended to avoid service of the Complaint.
The Complainant having succeeded, the Respondent's claim of Reverse Domain Name Hijacking is not relevant.
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, <richarddunhill.com>, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: April 12, 2017