WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. PrivacyProtect.org, Domain Admin / Kim Bum

Case No. D2013-0926

1. The Parties

Complainants are National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Squire Sanders (UK) LLP, United Kingdom.

Respondent is PrivacyProtect.org, Domain Admin of Queensland, Australia / Kim Bum LLC of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <webmailnationalgrid.com> is registered with Media Elite Holdings Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2013, 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 Complainants on May 29, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint in this regard on May 30, 2013. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on May 31, 2013.

The Center verified that the Complaint together with the amended Complaint and 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(a) and 4(a), the Center formally notified Respondent of the Complaint, along with the amended Complaint and the amendment to the Complaint, and the proceedings commenced on May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2013.

The Center appointed Ross Carson as the sole panelist in this matter on June 27, 2013. 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

Complainants form part of the National Grid Group of Companies (“the Group”), one of the largest privately owned utilities worldwide. National Grid Electricity Transmission Plc is an operative company within the Group, while NGrid Intellectual Property Limited is the Group’s Intellectual Property holding company.

Complainants form an international electricity and gas group of companies, which is one of the largest investor owned energy companies in the world. Complainants own and, via their subsidiaries, operate electricity and gas transmission networks in the United Kingdom and in the Northeastern parts of the United States of America. Complainants’ subsidiaries also provide installation, maintenance and meter reading services to gas and electricity suppliers in the regulated and unregulated markets. Complainants’ principle operations also comprise the provision of liquefied natural gas facilities and property as well as electrical interconnectors.

Complainants are owners of various trademark registrations and applications for the trademarks NATIONALGRID in the United Kingdom, European Union (Community trademarks), Canada and the United States (and in other jurisdictions) for a wide range of goods and services related to the operation of a major utility company.

Complainants own the United States Trademark Registration No. 4099285 NATIONALGRID registered on February 14, 2012 in relation to goods and services in International Classification 4, 9, 16 and 35 to 40 and 42. The registration shows a first use date of March 31, 1990 and a first use in commerce date of May 17, 2000 in relation to goods and services in each of the above noted classes

Complainants also own the United States Trademark Registration No. 2659972 NATIONAL GRID registered on December 10, 2002 in relation to goods and services in International Classification 37. The registration shows a first use date of May 31, 1990 and a first use in commerce date of April 27, 2000 in relation to goods and services in the above noted class.

Complainants also own the United States Trademark Registration No. 4247767 NATIONALGRID THE POWER OF ACTION (design plus words) registered on November 27, 2012 in relation to goods and services in International Classification 4, 9, 11, 16 and 35 to 42. The registration shows a first use date of July 26, 2005 and a first use in commerce date of July 26, 2005 in relation to goods and services in each of the above noted classes.

Complainants’ trademarks enjoy a significant reputation in the United Kingdom and the north eastern United States and are well-known amongst professionals of the utility industries as well as end consumers.

Complainants own numerous domain names incorporating its trademarks NATIONALGRID and “nationalgrid” which have been registered and used for many years.

The disputed domain name <webmailnationalgrid.com> was created on October 30, 2012.

The disputed domain name resolves to a webpage incorporating links to subjects such as: Email Server, Safety Training, Email Hosting, Fire Safety, National Grid, Forex Trading, Singles, Dating, Business Email and Chat. The live links resolve to advertising web pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainants state that they are the owner of numerous trademark registrations for the trademarks NATIONAL GRID and NATIONALGRID in the United Kingdom, European Union (Community trademarks), Canada and the United States (and in other jurisdictions) for a wide range of goods and services related to the operation of a major utility company as set out in Section 4 immediately above.

Complainants submit that the disputed domain name <webmailnationalgrid.com> is confusingly similar to Complainants’ widely used trademarks NATIONAL GRID and NATIONALGRID. The disputed domain name incorporates Complainants’ trademarks in their entirety with the non-distinctive prefix “webmail”, which is an email client implemented as a web application accessed via a web browser. Therefore, the overall impression is that Complainants’ trademarks are the dominant part of the disputed domain name.

No Rights or Legitimate Interests in Respect of the Disputed Domain Name

Complainants submit that Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with Complainants or licensed to use Complainants’ trademarks. Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the name through a bona fide offering goods or services. Respondent uses the disputed domain name to link to external websites including sponsored listings, which is not bona fide use. Instead, Respondent employs Complainants’ trademarks in the disputed domain name aimed at Internet users who falsely believing it refers to the webmail services of Complainants, which must be considered as unfair use resulting in misleading diversion.

Complainants further submit that since they have made out a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden of proof shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain name.

Registration in Bad Faith

Complainants state that the disputed domain name was registered in bad faith because it is inconceivable that Respondent was unaware of Complainants’ rights in their trademarks NATIONALGRID and NATIONAL GRID at the time of registration of the disputed domain name on October 30, 2012. As seen in Section 4 above, Complainants have used the trademark NATIONAL GRID and NATIONALGRID since 1990 in association with the provision of the goods and services provide by their utility company. The disputed domain name was created on October 30, 2012 over two decades after Complainants commenced using their registered trademark NATIONALGRID. Respondent does not provide any goods or services in the utility operating sector.

Use in Bad Faith

Complainants state that paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith.

Complainants state that they rely principally on paragraph 4(b)(iv) of the Policy. Complainants state that the disputed domain name was registered and is used in bad faith as it uses Complainants’ trademarks to attract Internet users to the website associated with the disputed domain name based on a likelihood of confusion with Complainants’ registered trademarks.

Complainants further submit that links to competitor’s websites generate click through revenue. Given Complainants’ prior and substantial use of their trademarks, Respondent has both actual and constructive notice of Complainants’ trademarks which shows the disputed domain name was intentionally registered to profit unfairly from the goodwill of Complainants’ trademarks.

Complainants further state that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants or to a competitor of Complainants for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.

In summary, Respondent’s use of the disputed domain name is a deliberate use of the confusion created by the similarity of the disputed domain name to Complainants’ trademarks. In addition, Respondent cannot be unaware that the offer to sell the disputed domain name would be most valuable to Complainants as they are most negatively affected by Respondent’s use of the disputed domain name. The offer to sell is therefore likely primarily targeted at Complainants.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

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

(ii) 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 fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainants. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainants’ evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainants must establish rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to the trademark in which Complainants have rights.

The disputed domain name <webmailnationalgrid.com> is comprised of the descriptive term “webmail”, Complainants’ trademarks NATIONAL GRID and NATIONALGRID and the generic Top-Level Domain (gTLD) extension,“.com”.

Respondent’s use of the descriptive term “webmail” before Complainants trademarks’ NATIONAL GRID and NATIONALGRID is not sufficient to avoid a finding of confusing similarity. See Anadarko Petroleum Corporation v. ICS INC./Contact Privacy, Inc., WIPO Case No. D2012-1740 where the panel found that use of the descriptive term “webmail” before complainant’s trademark ANADARKO was not sufficient to avoid confusion.

The inclusion of the gTLD descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark).

The Panel finds that Complainants have established rights in the trademarks NATIONAL GRID and NATIONALGRID and the disputed domain name <webmailnationalgrid.com> is confusingly similar to Complainants’ registered trademarks NATIONAL GRID and NATIONALGRID.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name <webmailnationalgrid.com>.

Respondent is not affiliated with Complainants and has never been authorized by Complainants to use Complainants’ trademarks NATIONAL GRID and NATIONALGRID.

Complainants have been using their NATIONALGRID trademark since at least 1990 to promote their goods associated with the operation of a utility and providing utility services. Respondent appears to have registered or acquired the disputed domain names over twenty years later.

There is no evidence that Respondent has ever been known by or used the trademark NATIONAL GRID or NATIONALGRID in association with its own goods or services. Respondent has used the disputed domain name in association with a website that resolves to a webpage incorporating links to subjects such as: Email Server, Safety Training, Email Hosting, Fire Safety, National Grid, Forex Trading, Singles, Dating, Business Email and Chat. The live links resolve to advertising pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent.

UDRP panels have 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 holder of the mark”. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.

The Panel finds that Complainants have made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name or domain names. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainants have proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainants must prove that the disputed domain name has been registered and is being used in bad faith.

Registered in Bad Faith

Complainants own various registrations for the trademark NATIONAL GRID and NATIONALGRID in the United Kingdom, European Union (Community trademarks), Canada and the United States (and in other jurisdictions). for a wide range of goods and services related to the operation of a major utility company. Complainants’ trademark registrations include, inter alia, the three United States Trademark Registrations for NATIONAL GRID and NATIONALGRID referred to in greater detail in Section 4 above. Complainants have used their trademark NATIONAL GRID and NATIONALGRID since 1990 in the United Kingdom and the United States in association with the provision of the goods and services provided by their utility company.

The disputed domain name was registered on October 30, 2012 over two decades after Complainants commenced using their registered trademark NATIONALGRID. Respondent does not provide any goods or services in the utility company sector.

In many recent UDRP decisions Respondent has been found to be a cybersquatter by registering domain names confusingly similar to registered trademarks, which resolve to general advertising websites for pay-per-click income. See LEGO Juris A/S v. PrivacyProtect.org / Kim Bum, WIPO Case No. D2013-0402; Allied Barton Security Services LLC v. PrivacyProtect.org / Kim Bum, WIPO Case No. D2013-0377; Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org / Kim Bum, WIPO Case No. D2013-0181; LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462; LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-2025; LEGO Juris A/S v. PrivacyProtect.org / Kim Bum - Kim Bum LLC, WIPO Case No. D2012-1980. Previous UDRP panels have found that previous findings of cybersquatting in similar fact situations is evidence of bad faith.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith.

Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to a respondent’ website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

Respondent uses the disputed domain name <webmailnationalgrid.com> to resolves to a webpage incorporating links to subjects such as: Email Server, Safety Training, Email Hosting, Fire Safety, National Grid, Forex Trading, Singles, Dating, Business Email and Chat. The live links resolve to advertising web pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent. Respondent’s use of the disputed domain name which is confusingly similar to Complainants’ registered trademarks NATIONAL GRID and NATIONALGRID enables Respondent to draw Internet users to the website associated with the disputed domain name for profit by misleading Internet users associating the disputed domain name with Complainants. Respondent is receiving click-through profits from the links associated with the parked pages.

The Panel finds that Complainants have proven on a balance of probabilities that Respondent is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainants satisfy the requirement 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 <webmailnationalgrid.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Date: July 8, 2013