WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maplin Electronics Limited v. ME New Enterprise, Mayni Efrem
Case No. DCO2010-0016
1. The Parties
The Complainant is Maplin Electronics Limited of Manvers, Rotherham, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is ME New Enterprise, Mayni Efrem of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <maplin.co> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 7, 2010, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On September 7, 2010, eNom transmitted by email to the Center its verification response, confirming that:
(a) the disputed domain name is registered with it;
(b) the disputed domain name is registered to ME New Enterprise, Mayni Efrem;
(c) the Respondent’s contact details as identified in the Complaint are the details currently held by eNom; and
(d) English is the language of the Registration Agreement used for the disputed domain name.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. The Respondent sent an email communication on September 28, 2010 in reply to the Complaint, but a formal Response has not been filed.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 6, 2010. 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 alleges that it was founded in 1972. Since that date, it has grown to be one of the United Kingdom’s (the “UK”) largest specialist electronics suppliers and retailers, having over 170 retail outlets across the UK and with sales revenues in 2008 in excess of GBP 200 million. It also retails its products both within the UK and internationally from a website via the domain names <maplin.co.uk> and <maplin.com>. The Complainant states that its website receives visits from “a myriad of countries including the Asian sub-continent and the Far East.” The majority of the first 10 listings for the word “maplin” on the localized version of Google for India are to the Complainant’s website.
The Complainant has registered a number of trademarks for MAPLIN including UK Trademark No. 1515988, Community Trade Mark (“CTM”) No. 000212076 and United States (“US”) Trademark No. 3614282. Each of these trademarks is registered for a wide range of goods and services in International classes 6, 7, 8, 9, 11, 12, 14, 16, 20, 28 and, in the case of the CTM mark 15 and 42 and the UK mark 42 (but not 14). The Complainant’s UK Trademark was registered on March 11, 1994, the CTM on January 19, 2001 and the US Trademark on May 5, 2009.
The disputed domain name was registered on July 20 or 21 in 2010, along with a number of other domain names. As demonstrated by Annex 10 to the Complaint, the disputed domain name resolved to a generic “pay-per-click” type search engine which listed “search” categories for “Fabric Stores”, “Electronics Store”, “Electronics Project”, “Medical Electronics”, “Electronics Buyer”, “Personal Electronics”, “Buy Electronics”, “Discount Electronics”, “Electronics School”, “Automotive Electronics”, and “Electronic Components Distributors”.
5. Discussion and Findings
The sponsoring organisation for the “.co” TLD, .CO Internet S.A.S., has adopted the Policy for disputes relating to domain names in the “.co” TLD. This is given effect by clause 4 of the eNom Registration Agreement Additional Registry Requirements for “.co” domain names agreed between eNom and the Respondent.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
The Panel will consider each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
In the email of September 28, 2010, the Respondent contends that the term “maplin” is generic, being a proper noun which refers to a wide variety of different things. However, the Complainant has proved ownership of at least the UK, CTM and US trademarks for MAPLIN referred to above. As the Complainant notes, it is sufficient to prove ownership of trademark rights at this stage of the inquiry; it is not necessary to prove that the trademark rights are registered or otherwise subsist in the country where the Respondent has specified his (or its) address. See e.g. Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358. Domain names operate to provide the Internet address, universal resource locators or URLs, of files on the Internet which can be accessed from virtually anywhere in the world. Thus, the Policy is concerned to lay down norms applicable globally. The locations of the Complainant’s trademark rights and the Respondent’s relevant activities are not relevant, therefore, at this stage of the inquiry although they may be relevant under the later stages of the inquiry.
The disputed domain name differs to the Complainant’s trademark only by the addition of the TLD “.co”.
The addition of the TLD, however, can be disregarded for the purposes of this inquiry as it is a functional requirement of the domain name system. See for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s proved trademark rights and the Complainant has successfully established this requirement.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
A respondent may have rights or legitimate interests for the purposes of the Policy in the circumstances set in paragraph 4(c) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are examples only and not an exhaustive enumeration of the ways in which rights or legitimate interests can be shown. They do provide, however, a guide to what is contemplated as permissible under the Policy.
The Complainant states that it has not licensed the Respondent to register or use the trademark MAPLIN. Nor is the Respondent otherwise associated with the Complainant. As is plain from a comparison of the disputed domain name with the Respondent’s name, or names, the disputed domain name is not obviously derived from the Respondent’s name. The only evidence of use of the disputed domain name is as the URL for the pay-per-click website already described. This does not qualify as “legitimate noncommercial or fair use” for the purposes of paragraph 4(c)(iii). As the Respondent contends, however, such use may fall within the terms of paragraph 4(c)(i).
As discussed below, the Complainant contends that the Respondent’s use is not in connection with a bona fide offering of goods or services. The Respondent quite correctly points out that domain parking and pay-per-click advertising businesses may in certain circumstances, be regarded as legitimate business activities. The Respondent contends further that the disputed domain name is not seeking to leverage off “the supposed products or services that the Complainant’s business offers.”
The Respondent also contends that “maplin” is a generic term. It has identified at least 11 websites which use “maplin”, but which are not associated with the Complainant. They include a “www.wikia.com” listing for an “Archie Maplin”, a “Maplin Sands Lighthouse”, a “Maplin Manor” in South Africa, “HMS Maplin”, a rockband, a “Maplin Mechanical Services” which repairs air conditioners, and various other usages.
Most of the “links” on the website to which the disputed domain name formerly resolved as shown in the annexes to the Complaint, however, were targeted at electronics products and services. These include “Electronics Store”, “Electronics Buyer”, “Personal Electronics”, “Buy Electronics”, “Discount Electronics” amongst others. None of the references relied on by the Respondent, however, has anything to do with the retailing or wholesaling of electronics products. On this evidence, the word “maplin” has significance for electronics goods and services only because of its association with the Complainant’s business.
The use of the Complainant’s trademark to generate pay-per-click advertising revenues by directing Internet browsers to websites other than the Complainant’s websites is not a bona fide offering of goods and services within the terms of the Policy. Further, the Panel notes that the Respondent’s website appears to be targeted at users of the Internet generally, from wherever in the world they may be located.
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
In this connection, the Complainant contends that the Respondent’s website is designed to generate pay-per-click revenues from the sale and promotion of electronics goods and services and so to trade on the significance of the Complainant’s trademarks. In addition, the Complainant points out that concurrently with his (or its) registration of the disputed domain name, the Respondent also registered a number of other domain names of other trademark owners which appear to target these third-party marks. This includes:
Respondent’s contemporaneous registration
<macon.co> with links primarily related to news
<macon.com> is the URL for an online newspaper for Macon in Georgia, US
<meez.co> with links primarily related to computer games
<meez.com> a 3D experience website for game playing and creation of avatars
<misco.co> with links primarily associated with computer peripherals and personal computers
<misco.co.uk> the UK site of a global IT dealer in computers and computer peripherals
<ncesc.co> with links relating to recruitment services, employment and careers advisory services
<ncesc.com> the website of the Employment Security Commission of North Carolina, US
<runehq.co> links primarily related to online gaming
<runehq.com> a website for the Internet game RuneScape
<startribune.co> links primarily related to news
<startribune.com> a newspaper serving Minneapolis, US
The Respondent Mayni Efrem contends that he “simply had never heard of” the Complainant when he registered the disputed domain name and “[w]e had no intent of leveraging their trademark, because we had never heard of them.” This bold denial, however, is not supported by the objective circumstances. The predominant emphasis on the Respondent’s website to electronics products such as “Electronics Store”, “Electronics Buyer”, “Personal Electronics”, “Buy Electronics”, “Discount Electronics” amongst others is not explained by the other “generic” uses relied on by the Respondent. The word “maplin” has significance for “electronics” only because of its association with the Complainant and its business. It is not a term that one would naturally “hit on” for use in connection with electronics products, apart from its association with the Complainant.
Further, in the Panel’s view, the contemporaneous registration of a number of domain names in the “.co” TLD so closely resembling established businesses with “.com” or “.co.uk” domain registrations indicates clearly that the Respondent knew very well what he (or it) was doing when he (or it) registered the domain names. While it is clear that a business may legitimately register under the Policy a “generic” domain name and use it to generate pay-per-click revenues, that is not this case.
The Respondent also contends that the Complainant is the author of its own demise by failing to register its trademark in the “.co” TLD during the four month sunrise period. According to the Respondent, this means either that the Complainant chose not to register the domain name or was not awarded it for some reason. Having failed to register the domain name, the Respondent accuses the Complainant now of engaging in reverse domain name hijacking.
There is a logical flaw in the Respondent’s reasoning as there is at least a third possible reason why the Complainant did not register its trademark in the “.co” TLD – it could have been unaware of the sunrise period. Given the number of gTLDs and ccTLDs that is certainly not implausible.
More fundamentally, however, the Policy does not impose an obligation to register their trademarks as domain names on trademark owners; nor does it penalize failure to do so by permanently releasing the domain name to any other comer. Rather, the Policy prohibits people from registering someone else’s trademark as a domain name to take advantage of it for its trademark significance.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maplin.co> be transferred to the Complainant.
Warwick A. Rothnie
Dated: October 18, 2010