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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wickes Finance Limited and Wickes Building Supplies Limited v. Host Master

Case No. D2020-3220

1. The Parties

The Complainants are Wickes Finance Limited, United Kingdom, and Wickes Building Supplies Limited, United Kingdom, represented by Freeths LLP, United Kingdom (“UK”).

The Respondent is Host Master, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <wickesbuildingsupplies.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 7, 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 amendment to the Complaint on December 8, 2020.

The Center verified that the Complaint together with the amendment to 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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on January 8, 2021. 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 Complainants operate approximately 230 UK stores, which sell a wide variety of home improvement equipment, tools, products, and materials.

The Complainants are the owner (Wickes Finance Limited) and licensee (Wickes Building Supplies Limited) of numerous trademark registrations for the trademark WICKES (the “Mark”). Wickes Limited v. Privacy.co.com, Inc., WIPO Case No. D2018-0962 (transferring <wickes.com>); Wickes Limited v. Martin Rodrigue, WIPO Case No. D2016-1529 (transferring <wickes-groups.com>).

Among others, the Complainant Wickes Limited owns the following trademark registrations:

- UK trademark registration no. 00002026344 WICKES (word & Design) with a registration date of July 7, 1995
- UK trademark registration no 00002001821 WICKES (word), registered on November 24, 1994
- UK trademark registration no 00001221188 WICKES (word) registered on June 21, 1984

The Complainants’ own the domain name <wickes.co.uk> which resolves to a website promoting the Complainants’ products and services.

The Respondent registered the disputed domain name on October 29, 2020.

5. Parties’ Contentions

A. Complainants

The Complainants assert the disputed domain name is confusingly similar to the Complainants’ Mark because the disputed domain name is composed entirely of the Complainants’ Mark plus dictionary terms utilized as suffixes. The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent has never conducted any bona fide commercial business or activity utilizing the disputed domain name. The Complainants further assert that the disputed domain name was registered and used in bad faith as a part of an email solicitation scheme designed to defraud the Complainants’ suppliers.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainants must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainants’ Mark.

The disputed domain name is composed of the Complainants’ Mark plus the two common dictionary words “building” and “supplies.” The appendage of dictionary terms does not dispel confusing similarity when attached to a widely recognized trademark. WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”) section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”). See also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323 (transferring <andersonhotellondon.org>); Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service Inc. / Name Redacted, WIPO Case No. D2017-0782 (transferring <phillipmorrisonusa.com>).

Moreover, “incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696. The composition of the disputed domain name, clearly containing the Mark, leads the Panel to find that the disputed domain name is confusingly similar to the Complainants’ trademark.

The Complainants have met their burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainants have specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. The Respondent has used the disputed domain name to trick the Complainants’ suppliers into fraudulent sales.

Additionally, because the disputed domain name contains the Complainants’ Mark, with the appendage of two common dictionary terms related to the Complainants’ business, an inference arises that the disputed domain name was registered to suggest sponsorship or endorsement by the Complainants. WIPO Overview 3.0, section 2.5.1.

Accordingly, the Complainants have made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to come forward with relevant evidence to show rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.1.

The Complainants have met their burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain was registered and used in bad faith.

The Complainants’ Annexes demonstrate that the Respondent utilized email addresses associated with the disputed domain name to trick the Complainants’ suppliers into fraudulent sales. The Respondent’s scheme and conduct demonstrates that the disputed domain name was registered and used in bad faith. L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International Inc. v. Isaac Isaac, WIPO Case No. D2011-1275; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Accenture Global Services Limited v. Patel Holdings, WIPO Case No. D2016-0367; Gerber Technology LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Nazareth Barsoumian, WIPO Case No. DCO2020-0035.

The Complainants have met their burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <wickesbuildingsupplies.com> be transferred to the Complainants.

William F. Hamilton
Sole Panelist
Date: January 12, 2021

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