WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roofoods Limited v. Jai Shan
Case No. D2017-1440
1. The Parties
The Complainant is Roofoods Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Jai Shan of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <deliverooeditions.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2017, 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 August 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2017.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 4, 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 is a technology-based company doing business on multiple continents that offers, among other things, food delivery, restaurant and business information services. It provides these services under the mark DELIVEROO and owns multiple trademark registrations for this word, including the European Union trade mark registration no 015750763 for DELIVEROO, which was registered on January 10, 2017. In early 2017, the Complainant began recruitment efforts for a new aspect of its services, which it calls DELIVEROO EDITIONS. On March 9, 2017, the Complainant filed an application to register the mark DELIVEROO EDITIONS and this mark was registered on June 2, 2017 with registration no UK00003217696. Just six days after the Complainant filed its application to register DELIVEROO EDITIONS, i.e., on March 15, 2017, the Respondent registered the disputed domain name. As of the time the Complainant filed the Complaint, the Respondent used the disputed domain name to point to a "coming soon" page. The Respondent has registered more than a thousand other domain names, many incorporating famous trademarks.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant's trademark DELIVEROO in its entirety. The additional word "editions" in this context does not distinguish the disputed domain name from the Complainant's mark.
Similarly, the addition of a generic Top-Level Domain ("gTLD") to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the gTLD ".com" is without legal significance since use of the gTLD is technically required to operate the disputed domain name. The suffix ".com" does not sufficiently distinguish the disputed domain name from the Complainant's trademark. See F. Hoffmann-La Roche AG v. Anoymous anonymous, WIPO Case No. D2009-1599.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of valid and subsisting trademark registrations for the mark DELIVEROO as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
"(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 this case, there are several indicators concerning the Respondent's lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or a product or service on [the respondent's] website or location."
The Complainant has provided evidence that when the Respondent registered the disputed domain name, the Complainant had already filed its United Kingdom trademark application for DELIVEROO EDITIONS – the very words comprising the disputed domain name, and that the Complainant had made public statements using those words in recruitment efforts for a new service.
In these circumstances, the Panel finds no basis on which the Respondent could have registered the disputed domain name except in bad faith. The use of the disputed domain name to demonstrate a "coming soon" message likewise has no imaginable good faith use, given that the Respondent has no authority from the Complainant concerning the mark. Moreover, the Registrant's registration of so many domain names using other entities' marks is an indicator of bad faith under the Policy – that pattern of conduct does not cast the Respondent in a favorable light for these purposes.
Accordingly, the Panel finds the Complainant has satisfied this third element 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 <deliverooeditions.com> be transferred to the Complainant.
Evan D. Brown
Date: September 18, 2017