WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Screwfix Direct Limited v. Dave William
Case No. D2021-3637
1. The Parties
The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Dave William, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <screwfix-group.com> is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2021, 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 November 11, 2021 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 November 15, 2021.
The Registrar’s Registration Agreement for the disputed domain name is French. The Complaint was filed in English. The Center sent an email communication to the Complainant on November 3, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Center also invited the Respondent to submit comments. The Complainant filed a request for English to be the language of proceedings on November 5, 2021. The Respondent did not comment on the language of the proceedings.
The Center verified that the Complaint together with the amended Complaints 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 in English and French, and the proceedings commenced on November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. The Center received two email communications from a third party on December 17 and 18, 2021 regarding the physical address used in the WhoIs of the disputed domain name. The Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel appointment process on December 7, 2021.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 22, 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 Complainant is a British company founded in 1979, and is one of the United Kingdom’s largest multi‑channel retailers of trade tools, accessories, and hardware, operating over 1,200 stores in Europe, Russia, and Turkey. The Complainant’s revenue in 2019 was almost GBP 1.7 billion.
Details of registrations of the Complainant’s SCREWFIX trademark have been supplied to the Panel. These include European Union Trade Mark number 000646133, registered on September 21, 1997.
The disputed domain name was registered on August 25, 2021, and resolves to a website which directs to a parking page of the Registrar, with text stating that the “domain name has been registered with Gandi.net”.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its SCREWFIX trademark, containing its SCREWFIX trademark in its entirety, together only with descriptive or non-distinctive material.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has provided the Panel with evidence that, shortly after registration of the disputed domain name, emails, each containing the disputed domain name in its footer, were sent to a number of suppliers of goods of the type normally ordered by the Complainant, impersonating the Complainant and requesting catalogues or expressing an interest in ordering quantities of such goods.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith, in connection with the email correspondence referred to above.
The Respondent did not reply to the Complainant’s contentions. However, on December 17 and 18, 2021, the Center received third party communications indicating that the Respondent appears to have used the physical contact details of the third party without authorization, during the registration of the disputed domain name, and that the third party has no relationship to the Respondent or the present dispute.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. Preliminary Matter – Language of the Proceedings
The language of the Registration Agreement in this case is French. The Complainant requested that the language of the proceedings should be English, and advanced arguments in support of this request, noting in particular that the Respondent has engaged in a fraudulent email scheme associated with the disputed domain name using the English language. Despite the Center’s communications in English and French regarding the language of the proceeding and the Notification of the Complaint, the Respondent has not commented on the language of the proceeding or otherwise participated in the present case. The Panel would have accepted a response in either French or English, but none was received.
Rule 11(a) states: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement”, but makes this “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant’s evidence of a fraudulent scheme in English suggests the Respondent most likely understands the English language. The Panel finds that the Respondent would not be disadvantaged by the language of the proceedings being English, and also that procedural efficiency supports English. The Panel, accordingly, using the Panel’s discretion under Rule 11 of the UDRP, decides that the language of the proceedings in this case should be English.
B. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top‑Level Domain (“gTLD”) may generally be disregarded when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and so finds it may be disregarded here.
The Complainant’s SCREWFIX trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the SCREWFIX mark, and the added term “-group” does not prevent a finding of confusing similarity, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name at issue.
C. Rights or Legitimate Interests
The fraudulent email correspondence referred to above, impersonating the Complainant, could quite easily have resulted in goods being supplied to the Respondent, without pre-payment, given the obvious financial stability and trading reputation of the Complainant, to the Respondent’s benefit. Such fraudulent use of the disputed domain name can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Furthermore, the Respondent did not take the opportunity accorded by the Policy to advance a claim to any rights or legitimate interests in the disputed domain name, and it is clear that the Respondent’s interests in connection with the disputed domain name are far from legitimate.
The Panel accordingly finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name.
D. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can support, in appropriate circumstances, a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident from the evidence supplied, that the Complainant’s SCREWFIX trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds.
The email correspondence referred to above, using the disputed domain name, is a clear example of use of a domain name in bad faith, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <screwfix-group.com>, be transferred to the Complainant.
George R F Souter
Date: January 5, 2022