WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Grid Plc v. John Rochwell
Case No. D2018-0660
1. The Parties
The Complainant is National Grid Plc of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Eversheds Sutherland (International) LLP, United Kingdom.
The Respondent is John Rochwell of Tenterden, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <national-griduk.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2018, 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 April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on May 2, 2018. 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 the ultimate parent company of a group of companies (the “Group”) which originally started operating in the United Kingdom in 1989, when the company then named “The National Grid Company plc” (now National Grid Electricity Transmission plc) was incorporated. The Complainant operates as a large international electricity and gas utility company providing essential utilities services to customers in the United Kingdom and United States of America.
On September 9, 1996, a company within the Group, National Grid USA Service Company, Inc., registered the domain name <nationalgrid.com>. The Group has also protected the NATIONAL GRID brand in many jurisdictions throughout the world, including in the United Kingdom, European Union, and United States of America, through a large portfolio of trade mark registrations encompassing the words “National Grid”. See e.g. United Kingdom trade mark registration no. 2199408 (for NATIONAL GRID), registered on November 24, 2000.
These trade marks and the National Grid name are used extensively throughout all levels of the National Grid business operated by the Complainant. As a result of the Complainant’s extensive use of NATIONAL GRID in the United Kingdom and overseas, the Complainant has built up significant goodwill and reputation in the NATIONAL GRID mark.
The domain name <national-griduk.com> (the “Domain Name”) was registered on October 12, 2017.
5. Parties’ Contentions
The following is brief summary of the main contentions of the Complainant.
The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
Save for the geographical “uk” indicator (which does not affect the perception of the Domain Name), the Domain Name is identical to the name in which the Complainant has rights, namely NATIONAL GRID. It is quite usual for large companies to create various declensions of their domain names by adding one or more generic words to their primary trade mark so as to identify the websites of each of their divisions for Internet users. In the present case, the term “uk” is commonly used in global or multinational businesses to denote a United Kingdom division. The NATIONAL GRID trade mark constitutes the dominant and principal component of the Domain Name and the addition of a geographical, descriptive term such as “uk” does nothing to detract from that contention.
The registration and use of the Domain Name is designed to lead the Internet user to the conclusion that the Domain Name has a connection with the Complainant.
The Respondent has no rights or legitimate interests in respect of the Domain Name:
The Respondent is not connected to or authorised by the Complainant in any way and it has no rights or legitimate interests in the name National Grid.
National Grid is not a common or ordinary name – it is a name solely associated with the Complainant. The Respondent could not therefore assert that the Domain Name is merely a generic or common name.
The Respondent is seeking to create confusion by implying a false connection with the Complainant, which is misleading and such conduct undermines any attempt to claim rights or legitimate interests in the Domain Name.
As to the circumstances set out in the Policy which may indicate that a respondent has rights or legitimate interests in a domain name, the Complainant contends as follows.
Use of the Domain Name in connection with a bona fide offering of goods and services:
There is no evidence that the Domain Name is being used in connection with a bona fide offering of goods or services. The Domain Name earlier reverted to the Complainant’s main website at “www.nationalgrid.com”, despite the lack of any formal or informal connection between the Respondent and the Complainant. Presently, the Domain Name resolves to an error message. Even when the Domain Name reverted to the Complainant’s website, this was not in connection with a bona fide offering of goods or services, but (as explained further below) rather lent legitimacy to the Respondent’s objectionable and fraudulent activities.
The Respondent is commonly known by the Domain Name:
The Respondent is not known by the mark NATIONAL GRID and is not connected to the Complainant. The business name National Grid refers solely to the Complainant.
Use of the Domain Name for legitimate noncommercial or fair purposes:
The Respondent is not using the Domain Name for a legitimate noncommercial or fair purpose. The sole purpose of the Domain Name appears to be to imply a legitimate connection between the Respondent and the Complainant when this is not the case.
The Respondent registered the Domain Name to take advantage of the Complainant’s rights and reputation in NATIONAL GRID and it can only be assumed that the Respondent did so to derive a commercial benefit.
The Domain Name was registered and is being used in bad faith:
Registered in bad faith:
At the time the Respondent registered the Domain Name, the Complainant had extensive rights in the trade mark NATIONAL GRID.
The Respondent is not known by the name National Grid and there can be no fair or legitimate reason for the Respondent’s registration. It is clear that the Respondent intentionally targeted the Complainant.
Moreover, the Complainant is aware that the Respondent is using the Domain Name to perpetuate fraud against third party suppliers by way of attempting to obtain goods by deception (as described further below) and it must be assumed that that was the purpose of the registration.
The Respondent can only have registered the Domain Name in bad faith, to attempt to take advantage of the Complainant’s rights in the NATIONAL GRID trade mark and to trade off the rights, goodwill and reputation which the Complainant has built in NATIONAL GRID, thereby causing detriment to the Complainant. In addition, there is a serious risk of both tarnishment and dilution to the reputation the Complainant has built up in its NATIONAL GRID trade mark.
Bad faith use of the Disputed Domain Name:
The Respondent has embarked upon a series of fraudulent activities using the Domain Name. One of a number of examples is as follows: an email was sent from a “S[…] R[…]” using the domain name “s[…].r[…]@national-griduk.com” to Mr A[…] C[…] of Microsoft, purporting to be interested in ordering 100 “surface pro” products and 56 “surface laptop” products. Although details of National Grid locations were listed in the email, the email requests that ordered items are delivered to an “IT Unit/warehouse”. The email contains a National Grid disclaimer footer and alleges that S[…] R[…] is the Procurement Manager for the Complainant or one of its Group companies. Mr C[…] was suspicious of the email and forwarded it on to the Complainant. A copy of the email has been exhibited to the Complaint (in which other examples of the Respondent’s fraudulent activity are listed). The email is a complete fabrication.
The Respondent is clearly seeking to obtain computer products by deception (and financial services – a fictitious application for a store card was also purportedly made by a member of the Complainant’s staff) from innocent third party suppliers by associating itself with the Complainant.
The Respondent is seeking to create the impression that it has a genuine relationship with the Complainant to mislead and deceive suppliers.
The Respondent is carrying out a sophisticated and widespread fraud and is using the Domain Name to perpetuate that fraud. Further instances of fraudulent activity are being discovered almost daily. The Complainant is taking various steps in connection with this fraudulent activity including notifying the FBI, the National Cyber Security Centre, the National Fraud Intelligence Bureau, etc.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trade mark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the NATIONAL GRID trade mark.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the NATIONAL GRID trade mark, albeit with a hyphen separating the words “national” and “grid”, with the geographical indicator “uk” following the word “grid”. As the NATIONAL GRID trade mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison of the trade mark and the domain name to determine whether the mark is recognizable within the disputed domain name. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between trade mark and domain name.
The NATIONAL GRID trade mark is clearly recognizable within the Domain Name. It is a well-known mark and the dominant element of the Domain Name. The only issue therefore is whether the hyphen separating the words “national” and “grid”, and the geographical indicator “uk” following the word “grid”, renders the Domain Name something other than confusingly similar to the Complainant’s NATIONAL GRID trade mark. Clearly it does not and hence the Panel finds that the Domain Name is confusingly similar to the NATIONAL GRID trade mark for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. A non-exhaustive list of examples of circumstances which might evidence rights or legitimate interests in a domain name is listed in paragraph 4(c) of the Policy. Thus, for instance, a respondent might show that it has been commonly known by the domain name or that it is making legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, however, the Respondent is not known by the Domain Name, and given the use to which the Domain Name appears to have been put, the Panel would not of course accept that there is any legitimate noncommercial or fair use. Moreover and for the sake of completeness, legitimate noncommercial or fair use in the example provided in paragraph 4(c) of the Policy requires such use to be without intent to mislead. However, it appears to be the case that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
A respondent can also show rights or legitimate interests by showing that it is using a domain name in connection with a bona fide offering of goods or services. Needless to say, use of a domain name to commit fraud could not amount to a bona fide “offering” or anything else for that matter.
There is no evidence before this Panel to suggest that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the very serious allegations that have been made. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have been supported by the brief analysis set out above. Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding.
C. Registered and Used in Bad Faith
A non-exhaustive list of examples of circumstances which evidence registration and use of the Domain Name in bad faith is set out in paragraph 4(b) of the Policy. Because it is a non-exhaustive list, a Panel need not analyze the issue of bad faith by reference to the examples provided. In an extreme case such as this, there is simply no need to do so. Evidence in support of the unchallenged instances of fraud contained in the Complaint has been provided by the Complainant. The purpose behind the registration appears to have been to commit illicit acts and the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name <national-griduk.com>be transferred to the Complainant.
Date: May 14, 2018