WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halfords Limited v. Steven Michael
Case No. D2017-0974
1. The Parties
The Complainant is Halfords Limited of Worcestershire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by HGF Limited, United Kingdom.
The Respondent is Steven Michael of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <halfords-limited.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2017. On May 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on June 21, 2017. 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 the registered owner of marks for HALFORDS, including various United Kingdom trade mark registrations(e.g., United Kingdom trade mark Registration No. 739238 HALFORDS, registered on February 12, 1955), as well as European Union trade mark registrations and International trade mark registrations for that mark. The Complainant also claims prior common law rights in that mark.
The Complainant operates a retail website at “www.halfords.com”. The Complainant’s main corporate name is Halfords Limited. Through its retail website and stores, the Complainant sells various products broadly connected with camping, motoring and cycles, predominantly in the United Kingdom.
The disputed domain name was registered on September 15, 2016. There is no evidence that the disputed domain name has been used in connection with an active website. The disputed domain name reverts to a simple parking page for “one.com”.
In a “witness statement”, the Complainant’s solicitor, avers to a number of facts and attaches various evidence. Among other things, these include that:
- The Complainant was originally founded as a local hardware store in Birmingham, United Kingdom, in 1892, under the name “Rushbrooke & Co”. The name of the company was changed in 1907 to “Halford Cycle Company”, and this name was chosen because the then street on which its most significant store was located was Halford Street.
- In 1955, the Complainant first registered its HALFORDS trade mark, and that mark has been used by the Complainant ever since across the United Kingdom.
- At the time of the registration of the disputed domain name, the Complainant sold a very wide range of goods relating to cycling, motor vehicle spare parts, motor accessories, camping and leisure products, tents, car audio systems and in-car entertainment, and mobility products under the HALFORDS trade mark.
- As of April 1, 2016, the Complainant employed over 11,000 people operating around 462 stores in the United Kingdom.
- The Complainant became aware of the Respondent’s registration of the disputed domain name in March 2017, when emails apparently emanating from the Respondent and implying that he was a sales manager of Halfords Limited were received by the Complainant.
- The Complainant’s solicitor wrote to the Respondent in March 2017 requesting transfer of the disputed domain name, but received no reply.
- The Complainant’s solicitor says that she believes the Respondent “is the same person or is at least linked to a number of domains which were used for fraud against by [sic] company in 2014. In 2014, my company filed domain name complaints in relation to the domain name registrations Halfords-ltd.com (D2014-1445), halfordslimited.co.uk and halfords-limited.co.uk, all of which were successful, which were registered under the same conditions as the HALFORDS-LIMITED domain name, all the registrants had South East London addresses which cannot be a co-incidence [sic]. It seems that the purported registrants have just adapted their modus operandi to further conceal their true identity.”
- The address given for the Respondent is the address of a bar in Catford, London and the telephone number given for the Respondent rings through to an answering forwarding service. A representative of the Complainant did receive a call back the next day from a person who claimed to have received a missed call from that number, but refused to confirm they were the owner of the disputed domain name. The solicitor states that “I find it hard to believe that this is a valid contact address and telephone number for the Registrant and thus I believe that the Registrant details for HALFORDS−LIMITED.COM are false.”
To support the assertions in this statement, various exhibits are attached, including publications about the Complainant, examples of the use of the Complainant’s trade mark, extracts from the Complainant’s annual report, the email from the Respondent (mentioned above), the letter sent to the Complainant by the Respondent, and examples of emails to the Complainants suppliers “from the [...]@halfords-ltd.com, [...]@halfordslimited.co.uk and [...]@halford-importexport.co.uk all used for fraud.”
The Complainant has been a successful complainant in a series of previous decisions under the Policy. These include for example, Halfords Limited v. Frey Deans, supra; Halfords Limited v. Mark John Willcox, WIPO Case No. D2015-1416; Halfords Limited v. Jamie Mike Eurl, WIPO Case No. D2015-1118; Halfords Limited v. Daniel Pinet, WIPO Case No. D2016-0348. The previous Panels accepted certain foundational evidence relating to at least the nature of the Complainant’s business, and its registered and common law trade mark rights.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its HALFORDS mark. The word “Halfords” forms the whole or the distinctive and dominant element of the Complainant’s trade mark. The disputed domain name gives the same or a very similar overall impression of the Complainant’s mark and variants of it.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not an employee of the Complainant nor has he been authorized to use or register the disputed domain name. Given that the Respondent’s name is purported to be Steven Michael, it does not appear that the Respondent is known by the name “Halfords” or “Halfords Limited”. The Respondent would undoubtedly have been aware of the Complainant, as his address is given as London, United Kingdom. Neither has the Respondent made a legitimate or fair use of the disputed domain name.
The Complainant says that it appears that the Respondent is using the disputed domain name to defraud suppliers of the Complainant by using the disputed domain name to send emails to possible suppliers of the Complainant.
The Complainant, finally, says that the disputed domain name was registered and is being used in bad faith. The Respondent’s registration of the disputed domain name was with an intent to prevent the Complainant from reflecting its trademarks, particularly for HALFORDS, in a corresponding domain name. The Complainant contents that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant because the Respondent would undoubtedly would have been aware of the Complainant’s activities in the market before registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions or make any other communication in connection with this case.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) provides that the Complainant must firstly demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. There are two aspects of this claim.
One is for the Complainant to demonstrate that it has rights in a mark. The Complainant has done this by showing evidence of its registered rights for HALFORDS. The Complainant’s rights in this mark have also been previously recognized in cases under the Policy cited above.
The second element of paragraph 4(a)(i) is for the Complainant to show that the disputed domain name is identical or confusingly similar to its mark. The disputed domain name in this case is plainly not identical to the Complainant’s mark. So the question is whether it is confusingly similar.
The test of confusing similarity under the Policy is based on a simple comparison of the disputed domain name with the Complainant's trademark: see, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. In undertaking that comparison, the “.com” component of the disputed domain name is to be disregarded as a standard registration requirement of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Disregarding that element, the relevant comparison then is between the Complainant’s HALFORDS mark and the “halfords-limited” element of the disputed domain name.
It is self-evident that this element of the disputed domain name entirely incorporates the Complainant’s HALFORDS mark. The entire incorporation of a complainant’s mark is often sufficient for a finding of confusing similarity. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The disputed domain name also adds a hyphen and the term “limited”. Previous cases involving similar additions to the Complainant’s mark have not found these additions to avoid a finding of confusing similarity. The use of a hyphen is insignificant: see Halfords Limited v. Jamie Mike Eurl, supra. Neither does the addition of a common term associated with the Complainant’s corporate structure diminish the confusing similarity with the Complainant’s HALFORD marks: see Halfords Limited v. Mark John Willcox, supra. In this case, the Panel finds that the addition of the term “limited” is an obvious reference to the corporate status of the Complainant. As such, the addition of this term only has the potential to reinforce potential confusion with the Complainant’s mark.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the HALFORDS trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As outlined in section 2.1 of the WIPO Overview 3.0, “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant in this case has made out a prima facie case by its arguments and the evidence outlined above. In the face of this, the Respondent has not submitted any Response or otherwise communicated in connection with this case. There is otherwise no evidence in the case file that the Respondent might have rights or legitimate interests and, for the reasons set out further below in relation to bad faith, the evidence which is available suggests strongly that the Respondent has no such rights.
Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trade mark owned by (usually) the complainant. See e.g., Veikkaus Oy v. David Webb, WIPO Case No. D2016-0373.
The Complainant argues that Respondent registered the disputed domain name primarily for the purpose of disrupting its business and perpetrating fraud using an email address associated with the disputed domain name. This is not a type of bad faith illustrated by any of the circumstances set out in paragraph 4(b)(i) – (iv) of the Policy. (Paragraph 4(b)(iii) refers to disruption of the business of “a competitor”, however there is no evidence that the Respondent is, in fact, a competitor of the Complainant in this case). Nevertheless, the circumstances of bad faith in paragraph 4(b) of the Policy are stated to be “without limitation” to other circumstances of bad faith which might be found by a panel.
In this case, the Panel considers that the evidence points strongly to a finding that the disputed domain name was both registered and used in bad faith. The Complainant’s trade mark appears to be relatively well-known in the United Kingdom and the Respondent has his address in that same jurisdiction. The Respondent has registered a domain name that is confusingly similar to the Complainant’s mark, and added a dictionary term (“limited”) that appears obviously associated with the Complainant as it is related to the Complainant’s corporate structure. In addition, the Respondent registered the disputed domain name in 2016, many years after the Complainant’s registration of its mark and conduct of its business.
The Complainant avers that the disputed domain name has been used in connection with fraudulent emails sent to its suppliers. While there is no direct evidence of the Respondent’s motivation in this connection, there seems little doubt that the registration of the disputed domain name was done with awareness of the Complainant’s mark, and to disrupt the Complainant’s business by causing confusion.
The circumstances of this case also conform to a pattern displayed in previous cases involving the Complainant’s mark. Largely on this basis, the Complainant alleges that the registration of the disputed domain name is part of a pattern of similar fraudulent conduct against the Complainant. The Panel considers this to be a credible claim, considering the circumstances of this case, previous cases brought by the Complainant, and the lack of any communication to the contrary from the Respondent.
There is no evidence of any good faith use of the disputed domain name in this case. Neither can the Panel think of any good reason why, on the facts of this case, the Respondent might have registered it. If there is a good reason, the Panel would expect the Respondent to have come forward with it.
For all these reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith for the purpose 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 <halfords-limited.com> be transferred to the Complainant.
James A. Barker
Date: July 23, 2017