WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Just Eat Holding Limited v. Michael Evans
Case No. D2019-0024
1. The Parties
The Complainant is Just Eat Holding Limited of London, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Michael Evans of Thornton-Cleveleys, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <just-eat.scot> (the “Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2019. On January 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 9, 2019.
The Center verified that the Complaint together with the amended 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”).
The Center received various email communications from the Respondent between January 8, 2019 and January 25, 2019. In one of its communications, the Respondent indicated it is willing to settle the dispute. The Center sent a possible settlement email to the Parties on January 15, 2019 inviting the Complainant to submit a suspension request in the event that the Parties wished to explore settlement options. On January 16, 2019, the Complainant informed the Center that it did not wish to suspend the proceedings.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. The Respondent did not submit a formal response. Accordingly, on February 5, 2019, the Center notified the Parties that it will proceed to panel appointment.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 8, 2019. 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 and its related companies operate an online marketplace for food ordering and delivery. It provides an online platform for consumers to search for restaurants and takeaway restaurants in their local area, browse menus, place orders and arrange for delivery. The business also provides business-to-business services to takeaway restaurants themselves. The Complainant has filed extensive evidence as to the success and size of its business – by way of example by 2018, it had over 93,000 restaurant partners worldwide, 24 million active customers, and was operating in over 13 countries. For the year ended December 2015, its total revenue was GBP 247.6 million. It has received numerous awards and extensive press publicity.
The Complainant owns a number of registered trademarks for the words JUST EAT including for example UK trademark 00003110595 filed on May 27, 2015 and International trademark 888441 registered on April 6, 2006 (the “JUST EAT Trademarks”). It appears to the Panel that most, if not all of these are for figurative depictions of the words. It also owns over 70 top-level “JUST EAT” domain names, including for different jurisdictions (country code Top-Level Domains or ccTLDs) and for various delegated string generic
Top-Level Domains (“gTLDs”), including <justeat.scot>.
The Respondent registered the Disputed Domain Name on February 10, 2015. It presently resolves to an automatically generated parking page. It has in the past resolved to various other pages including a “coming soon” webpage promising an “adult porn page” featuring “the hottest Scottish girls”.
5. Parties’ Contentions
The Complainant’s case is in summary as follows.
The Disputed Domain Name is identical or confusingly similar to its JUST EAT Trademarks.
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant relies on what it says was an approach received from one “Mickey Andrews” which the Complainant says is the Respondent on February 24, 2015, shortly after the Respondent registered the Disputed Domain Name. The e-mail reads as follows:
“You guys seemed to forget to register www.just-eat.cok
You did registet www.justeat.scot tho Mainly people type just-eat
And as you should know scotland government has just announced there .scot meaning boom for .scot
So let’s start if you want www.just-eat.scot Fast and easy
Deal with me direct as I will not deal with csc global”
Accordingly it says the Respondent registered the Disputed Domain Name with the primary purpose of selling it to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs.
The Complainant also alleges the Respondent has targeted other businesses in the same way. It relies upon an email that was mistakenly sent to the Complainant on March 11, 2015 regarding the registration of “aviva.scot” from Mickey Andrews. It reads “I own the web domian www.aviva.scot with over 4 thousand scottish friends and own various independant groups with over 50 thousand people I can reach to... So no reply www.aviva.scot will be going live”.
It says the Respondent clearly has a history of registering domain names, which have value to the rights holder of a particular brand and that the Respondent has an obvious policy of trading on the value of marks for which he has registered domain names in bad faith.
The Panel will in its discretion treat the Respondent’s e-mail communication of January 25, 2019 as his Response. It reads as follows (all misspellings were present in the original):
“Just eat plc had the change to buy the domain when it first got released?
All businesses got offered the first opportunity before released to the public,
I bought the domain to use for good cause for people with diabetes [redacted by the Panel as contains sensitive personal data]
Iv offered a agreement and just eat plc accepted and then went back on there word!
For the panel that judges this
Please be aware of just eat plc and there bullying and there practice how they work!
Letting any businesses with poor ratings use there practice! Which In one incident a young girl passed away and still have not done anything to correct there website to keep people safe!
Just eat plc use there website in bad faith by breaking laws to gain more profit!
I would not like my website http://www.just-eat.scot associated with such a company with poor standards
I bought the domain and want to use my domain in good causes Best regards”
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has registered trademarks in respect of the words JUST EAT. It does not matter that these may be for figurative depictions of these words given the words are the predominant feature of the trademarks. See in this regard WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.10:
“How are trademark registrations with design elements or disclaimed text treated in assessing identity or confusing similarity?
Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element.
On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity”.
The Panel considers the Disputed Domain Name to be confusingly similar to these trademarks given the trivial difference of the inclusion of a hyphen. It is also well established that the Top-Level Domain in this case “.scot”, does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s JUST EAT Trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the JUST EAT Trademarks. The Complainant has prior rights in the JUST EAT Trademarks, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel does not accept the Respondent’s case that he registered the Disputed Domain Name for use with a website concerning eating habits and/or diabetes. There is no credible evidence of any such use or any demonstrable preparations for such use. Further, that argument is clearly inconsistent with the Panel’s findings as to the Respondent’s real motives for the registration, discussed below in relation to bad faith.
The Panel accordingly finds that the Respondent has failed to produce any credible evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that evidence of the registration and use of a domain name in bad faith is established by (amongst other factors):
“(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”.
The Panel has no doubt that was the case here. The Complainant has an extensive reputation in the JUST EAT Trademarks. It registered <justeat.scot> as a domain name in 2014. In February 2015 the Respondent registered the Disputed Domain Name. Two weeks after the Respondent had done so the Complainant received the e-mal described above offering to sell it the Disputed Domain Name for GBP 20,000, a sum manifestly in excess of the Respondent’s documented out-of-pocket costs. The Panel agrees with the Complainant that it is to be inferred that the sender of the e-mail was the Respondent or someone acting on his behalf. The further e-mail sent to the Complainant by mistake and dealing with <aviva.scot> shows the Respondent has a propensity for this type of behaviour. These e-mails show that the Respondent’s conduct falls squarely within paragraph 4(b)(i) of the Policy.
For completeness the Panel would add that there is no evidence to support the Respondent’s claim that he had reached any sort of concluded agreement with the Complainant. His further comments complaining more generally about the Complainant are unsupported by any evidence and the Panel discounts them.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <just-eat.scot> be transferred to the Complainant.
Nick J. Gardner
Date: February 19, 2019