WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Caba Oth
Case No. D2017-1676
1. The Parties
The Complainant is Halfords Limited of Redditch, Worcestershire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by HGF Limited, United Kingdom.
The Respondent is Caba Oth of Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <halfordsmobileexpert.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 August 30, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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 September 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2017. The Respondent submitted an informal communication on August 31, 2017 but did not submit any formal response. Accordingly, on September 25, 2017, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 2, 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 Halfords Limited, one of the leading retailers and independent auto repair and servicing companies in the United Kingdom.
The Complainant owns several trademark registrations for the trademark HALFORDS in United Kingdom, China and several other countries, including the UK Registration No. 739238 (registered on February 12, 1955) and the Chinese Trademark Registration No. 4202025 (registered on December 21, 2006), both in class 12. It also owns the following UK trademark applications in class 37:
- No. 3244435 for HALFORDS MOBILE EXPERT and
- No. 3244427 for MOBILE EXPERT.
Additionally, the Complainant has prior common law rights to the word HALFORDS or stylized variants of the mark based on use of HALFORD CYCLE COMPANY and HALFORDS since as early 1904. Furthermore, its company and corporate name is "Halfords Limited".
The Complainant is the owner of the domain name <halfords.com> which corresponds to its main retail website.
The disputed domain name was registered on July 20, 2017, and the website at the disputed domain name is currently inactive.
5. Parties' Contentions
The Complainant argues that the Respondent registered the disputed domain name on July 20, 2017, and it is confusingly similar to its trademark rights for HALFORDS, HALFORDS MOBILE EXPERT and MOBILE EXPERT.
According to the Complainant, the disputed domain name is likely to cause confusion among the Complainant's customers, suppliers or other operators, which would make an economic and commercial connection between the earlier trademarks and the disputed domain name and would assume that the Respondent is in some way affiliated to the Complainant or is indeed the Complainant.
The Complainant claims that the Respondent is not authorized to register and use the disputed domain name; the Respondent is not an employee of the Complainant and does not appear to be known by the name of "Halfords" or "Mobile Expert". Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant mentions that given the widespread use and registration of the trademark HALFORDS since the 1900s, the Respondent would have been aware of the Complainant's activities prior to the registration of the disputed domain name and that it has not made any legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent has registered over 900 domain names, many of which corresponding to recently filed trademark applications in different countries, which demonstrates its bad faith.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not send a formal response to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(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.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of trademark registrations for HALFORDS.
The disputed domain name comprises the Complainant's trademark HALFORDS in its entirety. The Complainant's HALFORDS trademark is clearly recognizable in the disputed domain name. The words "mobile expert" do not avoid a finding of confusing similarity.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Respondent has not submitted a formal response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant's trademarks or to register domain names containing the Complainant's trademarks.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, there is evidence that the Respondent clearly intended to make profit from the sale of the disputed domain name.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant's trademarks, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The trademark HALFORDS is registered by the Complainant in several jurisdictions, including the United Kingdom and China, and has been used since a long time. The trademark applications for HALFORDS MOBILE EXPERT and MOBILE EXPERT were filed by the Complainant in the United Kingdom on July 18, 2017, two days prior to the registration of the disputed domain name.
The disputed domain name is comprised by the Complainant's prior trademarks in their entirety and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant's HALFORDS mark is distinctive, well known, and has been in use since a long time. Thus, a domain name that comprises such a mark is itself evidence of the Respondent's bad faith.
There is also evidence in the Complaint that the Respondent has intentionally registered the domain name to make profit, by offering to sell it for USD 700 when received the Complainant's objection.
This Panel finds that the Respondent's attempt of taking undue advantage of the Complainant's trademarks as described in paragraph 4(b)(i) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used 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, <halfordsmobileexpert.com>, be transferred to the Complainant.
Mario Soerensen Garcia
Date: October 13, 2017