WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tesco Stores Limited v. Mat Feakins
Case No. DCO2013-0017
1. The Parties
The Complainant is Tesco Stores Limited of Cheshunt, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mat Feakins of Monmouth, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Elevation Legal, Australia.
2. The Domain Name and Registrar
The disputed domain name <tes.co> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2013. On July 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response August 1, 2013. The Response was filed with the Center August 1, 2013.
On August 2, 2013, the Complainant sent an email communication to the Center inquiring in view of the content of the Response, if it would be set a deadline to file a reply. The Respondent replied to the Complainant’s email communication on the same day pointing out “[y]ou should be aware that there is no reply stage in the UDRP”. The Center subsequently acknowledged receipt of the email communications from the parties indicating that no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel, and it would be in the sole discretion of the Panel to determine whether to consider and/or admit any Supplemental Filing(s) in rendering its decision, and whether to order further procedural steps, if any. There were further email exchanges between the parties regarding whether the Complainant should be allowed to file a reply to the Response.
The Center appointed Jon Lang, Steven A. Maier and The Hon Neil Brown Q.C. as panelists in this matter on September 10, 2013. The Panel finds that it was properly constituted. Each member of 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. The due date for the Decision was September 24, 2013 which the Panel extended to October 8, 2013.
4. Preliminary Matters
In the course of establishing the Panel, the Center wrote to the Complainant’s representative on August 2, 2013 stating that as the Respondent had designated a three-member Administrative Panel, they should provide the names and contact details of three candidates, in order of preference, from which they (the Center) would endeavor to choose one. The Center asked that the list should be communicated to them by no later than August 9, 2013. Subsequently, the Respondent’s representative wrote to the Center (on August 9, 2013) stating that “Rule 6(d) is prescriptive – ‘shall submit.[their list of names] within five (5) calendar days’. You confirmed on the telephone that no list has yet been received from the Complainant. They are now out of time and have lost that option”. The Respondent’s representative maintained that the deadline for submission of the Complainant’s suggested candidates was August 7, 2013 and it appears that was acknowledged by the Center in its communication of August 13, 2013. Nevertheless, the Center made clear in that communication that “[i]n the interest of fairness and equality, the Center will take into account the Complainant’s list of nominees for Co-Panelist […]”. The Center went on to establish the Panel, (albeit none of the Complainant’s suggested candidates were appointed) with participation of the parties.
The Panel finds that no prejudice was caused to the Respondent arising out of the circumstances of the Panel appointment.
As to the correspondence referred to above concerning further filings, none took place and the Panel has relied solely on the Complaint and Response (and their respective appendices).
5. Factual Background
The Complainant states that it is the largest retailer of goods in the UK, and one of the largest retailers in the world. It is the owner of the Tesco brand which it has used for many years, developing a considerable reputation in the brand in the UK and around the world.
The Complainant is the owner of several trademark registrations in relation to a very wide range of goods and services, including UK registration No. 2385674 for TESCO (with a registration date of September 2, 2005).
The Respondent is the owner and manager of two businesses, Solar IQ (UK) who are Solar PV suppliers/installers, and Wyelec (UK) who are an electrical installation firm. He is the owner of the disputed domain name <tes.co> (hereafter the “Domain Name”), which he purchased in an open auction conducted by the “.co” registry. The Domain Name was registered, with the Respondent as Registrant, on September 2, 2010.
6. Parties’ Contentions
The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Domain Name is identical (or at least extremely similar) to the Complainant’s trademark rights and is identical or extremely similar to the mark as used by the Complainant.
A number of UDRP decisions support the proposition that the domain suffix can be used for comparison purposes if the inclusion of the suffix (in this case “.co”) lends to the overall similarity of the domain name with the complainant’s earlier rights.
There can be no doubt that this Domain Name was chosen with the Complainant’s brand in mind.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
There is nothing to indicate that the Respondent has been known by the Domain Name.
The Respondent is not making legitimate noncommercial or fair use of the Domain Name and reference is made to communications with the Complainant referred to below.
The Respondent appears to have no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith.
The Complainant believes that the Domain Name was acquired in bad faith within the meaning of the UDRP. It refers to an email exchange from which it says it is clear that the Respondent has registered the Domain Name for the purpose of selling it. The Complainant describes the Respondent’s comments in the email exchange as follows:
The Respondent indicates that the Domain Name is a valuable domain;
That sale of the Domain Name is being discussed with a number of parties;
The “tes” portion of the Domain Name is not similar to the Tesco brand;
That offers in six figures would be sensible.
The Complainant maintains that the whole Domain Name is identical to its Tesco brand.
It says further that in view of the huge reputation of the Tesco brand around the world, but particularly in the UK, it is impossible to imagine that a UK individual (as the Respondent is), has registered the Domain Name without the Complainant’s brand in mind.
The email exchange confirms that it is the intention of the Respondent to sell the Domain Name for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the Domain Name.
Screen shots of web pages relating to the Domain Name vary between what appears to be some form of click through sales site relating to Amazon, which has some “tes.co” branding on it, but does not appear to be any form of legitimate business, and a website that appears to be in the field of solar power, but which does not have any relationship to “tes.co” at all. The pattern of pointing the Domain Name at multiple web pages appears to confirm that the Respondent has no legitimate business relating to the Domain Name.
The Complainant submits that in view of the huge reputation of the Tesco brand, there is also a presumption that there is bad faith based on the other grounds (other than “selling” mentioned earlier) listed in paragraph 4(b) of the Policy (it being paragraph 4(b) which lists circumstances evidencing registration and use of a domain name in bad faith).
The Complainant suggests that there is a pattern of practice supporting an allegation that the Domain Name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name (i.e. a blocking registration), even though it does not know whether the Respondent has in fact done anything similar in the past.
Further, insofar as the Respondent is attempting to provide some form of retail service through the Domain Name, given that the Tesco brand is one of the largest retail brands in the world, it is impossible to imagine that the Domain Name was not registered primarily for the purpose of disrupting the business of the Complainant.
The Complainant goes on to say that even if the intention was not to disrupt the business of the Complainant, bearing in mind the flagrant infringement of the Complainant’s rights (through use of the Domain Name in providing any form of retail service), it is submitted that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Finally, the Complainant submits, it does not believe that there is any real business going on from the Domain Name, but insofar as there is, it is plain that the Respondent must have attempted to benefit through “making the domain name match the Complainant’s TESCO brand”.
The Respondent acknowledges that the Complainant is the proprietor of the TESCO trademarks annexed to the Complaint and that Tesco is a well-known brand in some countries, in particular the UK. However, the Respondent contests that the brand is global and considers that it is significantly less well-known in South America amongst other markets.
The Respondent notes that the Complainant has allowed to lapse its UK registered trademark for TESCO.COM (UK trademark No. 2238995) and presumes that this is because it realised that the “.com” generic Top Level Domain (gTLD) did not form an active part of the mark, since it did not indicate the source or origin of the goods and services provided and as such would be ignored for trademark purposes.
The Domain Name is neither identical nor confusingly similar to the trademarks relied upon in the Complaint (Primary argument – the gTLD should be ignored in determining identity or similarity).
The relevant part of the Domain Name is “tes”. “Tes” is plainly not identical to any of the TESCO trademarks.
While the first three letters of the TESCO mark are “tes”, the Respondent denies that the TESCO trademarks are confusingly similar to “tes”. “Tes” is neither visually nor aurally similar to TESCO trademarks, which has a distinct second syllable. “Tes” is a three letter acronym which has 65 possible meanings listed by the acronym section of “TheFreeDictionary.com”. The term “tes” is also widely registered as a second level domain name in most domain extensions, none of which appear to belong to the Complainant. Furthermore, it is registered as both company and trademarks in the UK and elsewhere, without disturbing the Complainant.
The Respondent refers to the domain name <tes.co.uk>, which contains the identical string of “tes.co”, the subject of this Complaint. <tes.co.uk> was registered at least 17 years ago without objection from the Complainant. It is registered to TSL Education Limited and operates an active website from that domain name, apparently without infringing any of the Complainant’s rights or giving rise to a claim to the domain name by the Complainant.
The Respondent notes that the Complainant does not allege that “tes” is confusingly similar to TESCO trademarks and contends that by not making that allegation, it is deemed to have admitted that “tes” and the TESCO trademarks are not confusingly similar. Moreover, the Respondent refers to an email sent on June 13, 2013 by the Complainant’s representative in which it is stated that “[…] we are not claiming rights specifically in relation to ‘tes’”.
Rather than challenge the validity of the “tes domain name”, the Complaint asserts that the country code Top Level Domain (ccTLD) “.co” (dot co) and second level domain name, “tes” should be combined together so that they are read as “tes.co”, thus requiring the Panel to combine the two separate levels of the Domain Name and ignore the “dot” that appears between them.
The Respondent maintains that this is not how Internet users look at and understand domain names and that if it was, then all previous UDRP cases would have to include the gTLD in their analysis of this part of the Policy. That notion was disposed of both before the Policy came into existence (in various courts) and then from the earliest UDRP decisions. Also, the Respondent notes, this is not how search engines analyse domain names – they separate the gTLD from the second level domain.
The Respondent disputes the Complainant’s contention that a number of UDRP decisions support their view that the domain suffix can be used for comparison purposes if the inclusion of the suffix lends to the overall similarity of the domain name with the complainant’s rights.
The Respondent says that the contrary is true, i.e. that the gTLD suffix should be ignored for comparison purposes, and that the overwhelming body of authority relies on analysing only the second level domain or their equivalent third level domain (where the gTLD is in two parts, such as “co.uk” or “com.au”). In other words, the Respondent says that the “.co” should be ignored and only the domain at the second level i.e. “tes”, compared against the Complainant’s marks.
The Response refers to a vast range of material that is said to support this view – past UDRP decisions, domain name law text books, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), court decisions and an ICANN report on the Policy.
The Respondent says that rolling two parts of a domain name into a single word is to be distinguished from the possible use of two conjunctive English words, separated by a dot as in project.me GmbH v. Alan Lin, WIPO Case No. DME2009-0008 (referred to below). The latter results in a recognisable phrase, since “.me” is (and was marketed on the basis of being) a distinct English word that has meaning. “Co” is a recognised generic abbreviation for Company/Commercial.
The Respondent goes on to refer to material demonstrating the success of the “.co” extension and which shows that Google treats it as a gTLD given that Internet users see it (and certain other extensions) as more generic than country targeted. The Respondent contrasts the Complainant’s approach, referring to it attempting to “roll” the TLD extension into the preceding domain level to manufacture a single word. The Respondent urges the Panel to reject “this novel and improper approach” and urges caution in the Panel’s approach, referring to the misplaced activism of some other UDRP panels.
The Domain Name is neither identical nor confusingly similar to the trademarks relied upon in the Complaint
(Secondary argument – the entire Domain Name (including the ccTLD) and the TESCO mark are not similar).
The Respondent denies similarity. The Domain Name is on two distinct levels – the ccTLD and the second level, “tes”. These two levels are separated by a dot, which is quite different from a hyphen within the same level of a domain name. As such, the Domain Name must be read and seen as “tes dot co”. This is not identical to the TESCO trademarks. Neither is it confusingly similar – it is both visually and phonetically distinct from the single word “Tesco”.
Rights or legitimate interests
Where a respondent can demonstrate any right or legitimate interest in respect of a domain name, the Complaint must fail. The Respondent contends that he has submitted legitimate reasons (summarised below) that separately and together give him rights and legitimate interests in the Domain Name.
The Domain Name was purchased by the Respondent in an open auction conducted by the “.co” registry. The price paid by the Respondent was USD 1,800, a typical price for a three letter acronym in this domain extension. The auction was for premium generic domains and followed a “sunrise” period, during which trademark holders could assert their priority right to a domain name. The Complainant made no such assertion of rights during the “sunrise” period. The auction was an open process and so the Complainant could have taken part.
Three letter domain names are intrinsically attractive and valuable, which is why the “.co” registry did not release them during the general “land rush” period, but rather sold them to the highest bidder at auction.
By purchasing the Domain Name for value at an open auction, the Registrant has acquired a right and legitimate interest. The Respondent relies on the analysis of the auDRP Policy in the case of Westralia Airports Corporation Pty Ltd and Package Computers Pty Ltd., LEADR auDRP 07/08.
Moreover, it is said that “tes” is an acronym that relates to the Respondent’s solar energy business – Solar IQ, to which the Domain Name now points. (The second definition of “tes” from the acronym dictionary is “Thermal Energy Storage” and is clearly associated to a solar power company. Furthermore, ESCo stands for Energy Service Company or Energy Savings Company).
The Respondent says that the Domain Name was purchased with the ultimate aim of using it in relation to his energy supply business – (the acronym standing for The Energy Supply / Service Company). It is said that this is entirely consistent with the widespread use of the acronym and the stated basis for the re-launch of the “.co” registry – to provide registrants with domain names ending in “.co” to represent the words Company/Commercial.
The Respondent refers to documents attached to his Response dated January 31, 2013 and February 5, 2013 evidencing a contract entered into with Catalyst Energy Solutions, which it is said shows the Respondent trading as “The Energy Service Company”. It is pointed out that the documents pre-date any notice of the Complaint and demonstrates the Respondent’s legitimate interest and rights in the Domain Name (being an acronym for “The Energy Service Company”).
As to the previous “white label site” (linked to “www.amazon.com”) for “The Entertainment Shopping Company”, it is said that this was a legitimate use of the Domain Name, by which the Respondent was entitled to experiment to see how successful a general retail site on a “.co” domain would be. The Respondent states that due to limited resources the site was not promoted and it was therefore not successful. The Respondent makes the point that if the arguments advanced by the Complainant had any merit, the site would have attracted traffic intended for them. That it did not has the coincidental effect of undermining their claim even further.
In conclusion, it is said that the Respondent has submitted legitimate reasons that separately and together give him rights and legitimate interests in the Domain Name and that accordingly, the Complaint must fail.
It is said that the Complaint contains no evidence whatsoever that the Domain Name was registered with the Complainant in mind. The Respondent denies that it was, suggesting instead that it was registered “for the TES acronym” in combination with the attractive “.co” ccTLD.
Accordingly, the Respondent denies that the Domain Name was registered for the reasons asserted in the Complaint, namely, primarily for the purpose of selling it to the Complainant or to its competitors. The Respondent says that there is no evidence to support this contention.
Furthermore, it is said that the Complaint misrepresents the nature of the email correspondence passing between its representative and the Respondent. The correspondence began with an unsolicited approach and offer to purchase the Domain Name. The Respondent did not initiate the communications and made plain from the outset that he wished to retain the Domain Name. The Respondent admits referring to his own company, Solar IQ as though it were a third party interested in the Domain Name. It is said however that this was done to highlight the value of the Domain Name in the energy supply industry and to indicate to the Complainant that he was unwilling to part with the Domain Name unless an extremely large offer was made for it – either by them or by an energy supply company (who would not be a competitor of the Complainant). The Respondent acknowledges that this strategy involved disingenuous information during the brief sales negotiation that the Complainant initiated, but says that this cannot equate to bad faith registration of the Domain Name. A sale was not something that the Respondent had in mind when registering the Domain Name and therefore the circumstances are not such as to satisfy the test the Complainant is required to meet when it advances this particular bad faith argument (i.e. registration primarily for the purpose of selling the Domain Name to the Complainant or to its competitors).
The Respondent says that the Complainant (in referring to the alternative provisions of the Policy demonstrating bad faith) is wrong to assert that there can be a “presumption that there is bad faith […]”. It is said that there is no such presumption and that it is for the Complainant to satisfy the burden of proof.
It is said that it is preposterous of the Complainant to suggest that the Respondent has engaged in a pattern of abusive registrations. The Respondent is a legitimate businessman with a successful track record. He has not been involved in any domain name or trademark disputes, much less satisfying the test for a pattern of abusive registrations.
The “temporary” use to which the Domain Name was put, prior to linking it to the Respondent’s solar energy business, did not give rise to any confusion nor is there a claim that it disrupted the business of the Complainant.
Finally, it is said that it is ludicrous to suggest that the Respondent could in any way have prevented the Complainant from reflecting its mark corresponding to the Domain Name – the Complainant has a large number of domain names that more than adequately reflect the TESCO trademarks, in particular <tesco.com> and <tesco.co.uk>. By the same analysis, the same would be true of the <tes.co.uk> domain name held for over 17 years by a third party and which contains exactly the same string (“tes.co”) that is complained of in this case. In reality, no such blocking has taken place in either case.
7. 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 trademark or service mark in which the 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.
A. Identical or Confusingly Similar
The Complainant says that the Domain Name is identical or extremely similar to the Complainant’s trademark rights. The Respondent disagrees on the basis that a) the relevant part of the Domain Name is “tes” and “tes” is plainly not identical to any of the TESCO trademarks or confusingly similar (being neither visually nor aurally similar to TESCO, which has a distinct second syllable); and b) even if one were to compare all levels of the Domain Name (the second level, “tes” and the ccTLD, “.co”), and the Complainant’s mark (which it is contended would be improper to do), given that the two levels are separated by a dot, the Domain Name must be read and seen as “tes dot co”. As such, the entire Domain Name is neither identical to the TESCO trademarks nor confusingly similar being both visually and phonetically distinct from the single word “Tesco”.
The first argument of the Respondent raises a fundamental issue: is it a requirement that the TLD extension be ignored when comparing a mark of a complainant with the domain name in issue for the purposes of the first limb of paragraph 4(a) of the Policy? The Panel is not persuaded that there is such a requirement.
There is no rule either within the Policy or that might affect its application, that precludes panels from taking into account TLDs. It is the case that most panels do not, because most of the analysis that takes place is at the second level. And that is because, simply, the TLD, being generic in nature, does not usually form part of the trademark to which a domain name is being compared. But that does not establish any kind of rule that precludes TLDs being taken into account.
The Respondent suggests that to take the TLD into account would be a novel and improper approach. The Panel rejects such an assertion. Indeed, the WIPO Overview 2.0 clearly contemplates the TLD being taken into account. There is nothing novel or improper in doing so. The WIPO Overview 2.0, designed to assist awareness of panel views on certain questions that commonly arise in proceedings under the UDRP, is based on some 20,000 UDRP cases the Center has administered through March 31, 2011. At paragraph 1.2, which deals with the test for identity or confusing similarity, it is said “[…] The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.” [emphasis added].
The WIPO Overview 2.0 lists past relevant decisions and the decision that appears to underpin the extract quoted above is project.me GmbH v. Alan Lin, supra, concerning the domain name <project.me>. In that decision, it was said (by a three member panel) that:
“When considering the issue of identicalness or similarity of a disputed domain name to the complainant's trademark, previous panel decisions under the UDRP for the ccTLD .me have ignored the TLD identifier – that is, they have undertaken the comparison using only that part of the domain name that precedes the “.me” suffix. An example is Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007 […]”.
“This Panel considers that the appropriate approach in this case to determining identicalness or similarity of the disputed .me domain name with the Complainant's trademark is to not ignore the ccTLD identifier “.me”. The reality is that, unlike most ccTLD identifiers, the TLD identifier “.me” can be seen to have a meaning beyond being the International Standards Organization (ISO) two-letter code for the country Montenegro – in particular, it has the additional meaning of being the common English objective pronoun for oneself […]”.
“In this Panel's opinion, to ignore the ccTLD identifier in all cases when considering identicalness or similarity of a .me domain name to a trademark is to ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel's view that a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”
This is not a one-off decision. For instance, in BookIt.com, Inc. v. PrivacyProtect.org / ICS INC., WIPO Case No. D2013-0775 concerning the domain name <extranetbookit.com> (and the trademark BOOKIT.COM), it was said that “[t]he Panel finds in this case the applicable TLD suffix should not be ignored as it is part of Complainant’s trademark, and the Panel finds it likely that Respondent has registered the disputed domain name in this exact manner as to try and incorporate Complainant’s trademark in full without actually incorporating the trademark in the domain name per se.”
And in Channel Television Limited v. Legacy Fund LLC / Protected Domain Services Customer ID: R-3108040, WIPO Case No. DTV2011-0008 concerning the domain name <channel.tv>, (another three member panel) it was said that “[t]he disputed domain name is therefore identical to the Complainant's unregistered trade mark ‘Channel TV’”. [emphasis added].
Moreover, in Koninklijke Philips Electronics N.V. v. Alan Horswill, WIPO Case No. DTV2002-0004, concerning the domain names <buyaphilips.tv> and <widescreenphilips.tv> it was said “[w]hilst it is recognized that the gtld, used for a domain name in combination with a mark of the Complainant, cannot be taken into consideration as an element which would exclude or diminish confusing similarity, in the present case the gtld ‘.tv’ even increases the confusing similarity, as users will generally not understand it as reference to Tuvalu, rather as the common abbreviation for ‘television’. […] The domain names <buyaphilips.tv> and <widescreenphilips.tv> are therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.”
There appears to be nothing novel, let alone improper about taking into account the TLD suffix.
However, the Respondent seeks to distinguish the project.me case from the present case as follows:
“Trying to roll two parts of a domain into a single word is distinguished from the possible use of two conjunctive English words, separated by a dot. This second approach, taken in the Project.me case, results in a recognizable phrase, since .me is (and was marketed on the basis of being) a distinct English word that has meaning. Co is a recognised generic abbreviation for Company/Commercial.”
The distinction is understood but its relevance is not accepted. The only consideration is whether, in registering the Domain Name with a particular TLD suffix, a respondent has sought to incorporate a complainant’s trademark in its entity by making use of that TLD suffix, such that it becomes a key part of the Domain Name. In the Panel’s view, if the TLD suffix is part of the Complainant’s trademark, whether forming part of one word, or a second and distinct word, it may be taken into account for comparison purposes.
Given the Panel’s view, it must now go on to consider the Respondent’s secondary argument, that even if one were to compare all levels of the Domain Name and the Complainant’s TESCO mark, given the dot between “tes” and “co”, the Domain Name must be read and seen as “tes dot co”, and is therefore neither identical nor confusingly similar to the TESCO mark, being both visually and phonetically distinct.
Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name. The general approach to confusing similarity is best summarized by reference to Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, where the Panel said: “[…] It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue.”
Thus, we have a “low threshold” test that involves a simple comparison of Domain Name with mark. The Panel has found that a TLD suffix may be included in a comparative review. The Panel’s view is that it should include the TLD suffix for comparison purposes in this case, given that the TLD suffix forms part of the trademark (TESCO) to which the Domain Name (<tes.co>) is being compared. There is indeed a dot between “tes” and “co” but nevertheless the Panel is of the view that the Domain Name is confusingly similar to the TESCO trademark. Indeed, the dot is the only element of the Domain Name that prevents it being identical to the TESCO trademark.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. As such, the burden shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests.
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is 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. A respondent can also demonstrate rights or legitimate interests by showing that it is using a domain name in connection with a bona fide offering of goods or services.
Here, the Respondent relies primarily on the following matters:
- the Domain Name was purchased in an open auction (run by the “.co” registry) in which the Complainant could have participated.
- the “tes” part of the Domain Name is also an acronym relating to the Respondent’s solar energy business, (Solar IQ) and the Domain Name was purchased with the “ultimate” aim of using it in that connection.
- there is evidence of trading as “The Energy Service Company”,.(the acronym “tes” standing for The Energy Supply/Service Company) which pre-dates any notice of the Complaint.
As to the Domain Name once pointing to what the Respondent describes as a “white label” site for the “The Entertainment Shopping Company”, which was linked to “www.amazon .com”, this it is said was a legitimate use of the Domain Name.
The first issue can be taken shortly. That there is a legitimate (as in lawful) purchase of a domain name does not give rise to rights or legitimate interests for the purposes of the Policy. If it did, complainants would almost always fail. There is no support for taking a contrary view where the domain name is acquired from a registry, or at an open auction, or acquired at, below or above market value. There is nothing particularly unusual about this – lawful acquisition of rights do not automatically prevent challenges to those rights in the purchaser’s hands. That is why indemnities and warranties are often taken in commercial transactions when rights are being transferred. Furthermore, the fact that the Complainant did not participate in the auction cannot now preclude it from raising a complaint. Again, the logical conclusion of such an argument would be that complainants would usually never succeed because at some point or other they would usually have had an opportunity to acquire the domain name in issue themselves.
Turning now to the use the Respondent has made of the Domain Name, much is made of the three letter acronym “tes”. And the Domain Name does indeed resolve to the Respondent’s energy related site, Solar IQ website. But that website does not feature the three letter acronym, or the phrase it stands for “The Energy Supply/Service Company”. Moreover, the CV of the Respondent does not refer either to “The Energy Supply Company” or “The Energy Service Company”. Yet, the Respondent says that “[t]he domain name was purchased by [him] with the ultimate aim of using it in relation to his energy supply business – the acronym standing for The Energy Supply/ Service Company”. But the only use appears to be to direct Internet users who type “www.tes.co” to his website.
Whilst the Respondent has focused heavily on the first three letters of the Domain Name being relevant to his energy company, in contrast, the earlier site to which the Domain Name pointed, described as “[…] the previous white label site (linked to Amazon.com) for The Entertainment Shopping Company […]” has been given little attention. The Respondent has quite obviously played down its significance, the website being described as an “experiment” (“[…] a legitimate use of the domain name, by which the Registrant was entitled to experiment to see how successful a general retail site on a .co domain would be”) and “temporary” (“[t]he temporary use that the domain name was put, prior to linking it to the Registrant’s solar energy business […]”). Moreover, by referring to his primary aim of using the Domain Name in connection with his energy business, the Respondent again seeks to diminish the significance of his initial use.
However, there are certain features of the original website that casts doubt on what appears to be the core theme of the Respondent’s case, reflected in his denial that “[…] the domain name was registered with the Complainant in mind, but rather for the TES acronym as already described above, in combination with the attractive .co generic Top Level Domain extension”. The Respondent did make use of the Domain Name in the heading of the website to which the Domain Name first pointed (unlike the position now) and that website contained what appears to be several links to products the Complainant itself sells, e.g. “TES.CO Toys and games”, “TES.CO Home Shopping” and “TES.CO DVD and Gaming”. Moreover, the original website displayed a logo consisting of four (4) thick blue vertical lines which is similar to a logo the Complainant used or uses as described below.
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”. On the basis of what the Respondent first did with the Domain Name, that appears to the Panel to be the case here.
In all the circumstances, this Panel is of the view that the Respondent has failed to establish rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. It states:
“[…] the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant suggests (in relation to paragraph 4(b) of the Policy) that there is or should be some form of “presumption” of bad faith given the reputation of the Tesco brand. There is no such presumption and the Complainant carries the burden of proof to show bad faith.
The Complainant appears to rely on all of the circumstances set out in paragraph 4(b) of the Policy, but focuses heavily on the circumstances set out in paragraph 4(b)(i) of the Policy to which further reference will be made below.
The Complainant contends that there is a pattern of practice supporting an allegation that the Domain Name was registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy). This sub-paragraph requires a “pattern of conduct”, an assertion that the Complainant appears to acknowledge cannot be sustained.
The Complainant also relies on paragraph 4(b)(iii) of the Policy (disruption of the business of a competitor) but it is difficult to find evidence that that was the Respondent’s primary purpose (although it may well have been an obvious side effect of using the Domain Name in the way that he originally did).
Finally, the Complainant contends the Respondent intentionally attempted to attract for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy). It is this allegation, together with what appears to be the Complainant’s primary allegation under paragraph 4(b)(i) of the Policy, that require closer scrutiny.
The Respondent says that the Domain Name “[…] was purchased by [him] with the ultimate aim of using it in relation to his energy supply business – the acronym standing for ‘The Energy Supply/ Service Company’”. The Respondent also denies that the Domain Name was registered with the Complainant in mind.
The Respondent’s resume states that the Respondent has been the owner and manager of Solar IQ (UK) (the website to which the Domain Name now points) since September 2009. The Domain Name was registered on September 2, 2010. It appears odd, to say the least, that the Respondent first decided to “experiment” with a retail site, advertising toys, games, DVD’s etc., when it is said that his ultimate aim was always i.e. even at the time of registration, to use the Domain Name in connection with his energy business, a business that actually existed at the time of registration of the Doman Name.
Moreover, it appears contrived for the Respondent to seek to justify (if that is what he tries to do) his original use of the Domain Name by reference to the name of the website to which it first pointed i.e. “The Entertainment Shopping Co.”. One can of course see how, at first blush, it might appear legitimate to use the name “tes.co” (and therefore the Domain Name) on the website. However, the Respondent was obviously aware of the Complainant. The products he advertised on the website were almost all products that the Complainant sells. Moreover, he used a logo on the website (four (4) thick blue vertical lines) which, (based on the Panel’s personal knowledge, but also readily verifiable from a Google image search for “Tesco”1), is very similar to that used by the Complainant on its carrier bags i.e. five (5) thick blue lines, which would in the view of the Panel be readily associated with the Complainant by a substantial section of the public, at least in the UK.
It seems clear to the Panel that the Respondent selected the Domain Name because it replicates in its entirety or, (if one takes into account the dot), to a substantial degree, the TESCO mark. By using it in the way that he did, i.e. to point to “The Entertainment Shopping Co.”, he was trying to create an appearance of association with the Complainant and/or to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the TESCO mark. Accordingly, for the purposes of the Policy, the Panel finds that there is bad faith registration and use under paragraph 4(b)(iv) of the Policy.
As to the allegation that the Domain Name was acquired “primarily for the purpose of selling, renting […]” (paragraph 4(b)(i) of the Policy), the Complainant relies on the email exchange referred to earlier. The Respondent says that the nature of the correspondence has been misrepresented, that it began with an unsolicited approach and offer to purchase, and that what followed was an attempt to talk up the price (albeit it is acknowledged that some of what was said to the Complainant was misinformation, but not such as to amount to bad faith). Moreover, it is said that “selling” was not something that the Respondent had in mind when registering the Domain Name.
The Panel is of the view that the Respondent registered the Domain Name with the Complainant’s well-known trademark in mind. The Panel notes the Respondent’s offer to sell the Domain Name to the Complainant and that he appears to suggest that a figure between GBP 100,000 and GBP 150,000 would be appropriate, which must of course be contrasted with the “market price” of USD 1,800 that the Respondent himself paid at auction. The Respondent admits to having made misleading statements during the course of the negotiation. Clearly the sum suggested is significantly in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. Further, given the nature of the Domain Name, the Panel finds it difficult to conceive of any party other than the Complainant who could make legitimate commercial use of it and who might be prepared to pay anything like the amount suggested in order to secure it. The Panel does not consider it essential for a finding under paragraph 4(b)(i) of the Policy that the Respondent approached the Complainant (and not vice versa), or that any offer to sell a domain name follows shortly after its registration.
As stated earlier, it is the Panel’s view that the Respondent registered the Domain Name with the Complainant’s mark in mind. It is likely to have been obvious to the Respondent that the Complainant would have an interest in securing a transfer of the Domain Name from him. Accordingly, the Panel infers that a potential sale to the Complainant was likely to have been in the contemplation of the Respondent at the time of registration of the Domain Name for the purposes of paragraph 4(b)(i) of the Policy.
In all the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith in the circumstances contemplated by paragraph 4(b)(iv) and/or paragraph 4(b)(i) 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 Domain Name, <tes.co>, be transferred to the Complainant.
Steven A. Maier
The Hon Neil Brown Q.C.
Date: October 4, 2013