WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kingfisher Plc v. Whois Agent (874487973), Whois Privacy Protection Service, Inc. / Henri Solere
Case No. D2020-2150
1. The Parties
The Complainant is Kingfisher Plc, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Whois Agent (874487973), Whois Privacy Protection Service, Inc., United States of America (“United States”) / Henri Solere, United Kingdom (“UK”).
2. The Domain Name and Registrar
The disputed domain name <kingfisher-uk.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2020, 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 August 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 19, 2020.
The Center verified that the Complaint together with the amended 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 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 21, 2020. 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 public limited company registered in the UK. It is an international retailer of home improvement products, trading under brands including B&Q, Screwfix and Tradepoint.
The Complainant is the owner of various registrations for the trademark KINGFISHER, including UK trademark number 2261399 for the word mark KINGFISHER, registered on January 30, 2004, in International Class 16.
The disputed domain name was registered on May 18, 2020.
According to evidence submitted by the Complainant, the disputed domain name originally resolved to the Complainant’s own website, but was blocked following a complaint made by the Complainant. The Complainant also provides evidence that the disputed domain name has been used for the purpose of an email scam, as described further below.
5. Parties’ Contentions
The Complainant states that it operates 1,360 stores in nine countries across Europe, employs over 77,000 staff and had revenues of almost GBP 11.5 billion in its 2019/20 financial year. It submits that it has achieved significant reputation and goodwill in the KINGFISHER mark and provides evidence of industry recognition of its trading activities.
The Complainant submits that the disputed domain name is identical or confusingly similar to its KINGFISHER trademark. It contends that the disputed domain name comprises that trademark together with the term “UK”, which is a descriptive term referring to the Complainant’s primary market.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It submits that, since the disputed domain name incorporates the Complainant’s trademark in full and without any distinctive element, there is no lawful use to which it could be put by any party other than the Complainant.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant provides evidence that the Respondent has used an email address related to the disputed domain name to impersonate one of the Complainant’s employees and to place fraudulent orders for goods on credit with a supplier. The Complainant states that the Respondent was successful in defrauding one supplier into providing goods, for which it never received payment, and then attempted to repeat the exercise with the same and other suppliers. The Complainant submits evidence of fake purchase orders and other documentation used by the Respondent for the purposes of the email scam.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark KINGFISHER. The disputed domain name comprises that mark together with a hyphen and the term “UK”, which additions are not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Based on the Complainant’s submissions, the Panel finds there to be prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s trademark KINGFISHER is distinctive and widely known in connection with the Complainant’s products and services. The Panel also accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent has used the disputed domain name for the purpose of fraudulent emails sent to suppliers, impersonating an employee of the Complainant and attempting fraudulently to obtain goods without payment. Such use of the disputed domain name clearly constitutes use in bad faith. The Panel infers that the disputed domain name was registered with this purpose in mind, and therefore concludes that 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 <kingfisher-uk.com> be transferred to the Complainant.
Steven A. Maier
Date: September 30, 2020