WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Superdrug Stores plc v. James Walters of Superdrug Com
Case No. D2001-0274
1. The Parties
The Complainant is Superdrug Stores plc a Public Limited Company incorporated in the United Kingdom, under No. 807043, whose registered address is 118 Beddington Lane, Croydon, Surrey, CR0 4TB, U.K. It is represented by Dawn Osborne of Willoughby and Partners Solicitors of The Isis Building, Thames Quay, 193 Marsh Wall, London E14 9SG, U.K.
The Respondent is James Walters of Superdrug Com whose contact address is P O Box 583, Skellingthorpe, Lincoln LN6 5RJ, U.K.
2. The Domain Name and Registrar
The domain names, which are the subject of this Complaint, are and which were registered on or about October 12, 2000.
The Registrar of both domain names is CORE Internet Council of Registrars ("CORE") of the World Trade Center II, 29 Route de Pres-bois, CH-1215, Geneva, Switzerland.
The Respondent�s administrative, technical and zone contact is GET FREE DOMAINS FROM ----- www.uk2. net -----(COCO-9310) of Prestons Road, London Docklands, E14 9SB, U.K.
3. Procedural History
On February 21, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on February 22, 2001, and was acknowledged by the Center on February 23, 2001.
The Center sent a Request for Registrar Verification to CORE on February 23, 2001, by email. CORE responded, in a letter dated �January 28, 2001, (but this must surely be a misprint for February 28, 2001), and confirmed: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the disputed domain names , (3) that the Respondent, Superdrug Com (template COCO-772258), was the current registrant of the disputed domain names, (4) that the Respondent�s contact details were correct, (5) that the Policy applied in relation to the domain names, and (6) that the current status of the domain names was �active ()�.
On March 1, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, and e-mail, as well as to its administrative technical, and zone contact. Copies were also sent to the Complainant by e-mail. Two e-mails to the postmaster at the two disputed domain names were reported as being undeliverable, as was the hard copy, which the courier returned to WIPO on March 12, 2001, with the comment "UK recipient moved". However the e-mail to the Respondent himself appears to have been delivered.
The Center sent a Notification of Respondent�s Default to the Respondent on March 22, 2001. Once again the two e-mails to the postmaster at the two disputed domain names were undeliverable, but there is no evidence that the e-mail to the Respondent himself was not received.
The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of April 18, 2001, to the Respondent and the Complainant on April 5, 2001, via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel, the Respondent and the Complainant on April 5, 2001. The Panel received hard copies of this material on April 6, 2001.
It is the responsibility of the Respondent to provide and maintain accurate contact details, but in this case the Panel is satisfied that the procedural requirements have been complied with.
4. Factual Background
Activities of the Complainant
The following information was asserted as fact by the Complainant and remains uncontested.
The Complainant is a wholly owned subsidiary of Kingfisher plc and was purchased by Kingfisher plc (then Woolworth Holdings plc) in March 1987. The Complainant�s sister retailing companies in the United Kingdom include names, which are well known in the UK such as B&Q, Comet and Woolworths.
The Complainant was founded in 1966, by the Goldstein family who developed the business from just one store in Putney to over 340 when they sold the business to Kingsfisher plc in 1987. A major expansion program was accelerated by the acquisition in 1988, of the Tip Top and Share Drug chains. In November 1989, the Medicare chain was acquired, increasing the Complainant�s store base to over 650 across the United Kingdom, i.e. more than double in only two years.
The Complainant�s chain of stores is well-known in the U K, and currently consists of over 700 stores in High Streets and shopping mall locations throughout the UK employing approximately 12,000 people and serving over 4,500,000 customers each week. The Complainant is one of the market leaders in the "High Street" for health and beauty products offering its customers an average of over 6,000 product lines. In addition, the Complainant has diversified into other product areas including in-store perfumeries and pharmacies; newspapers and magazines; vitamins and non-prescriptive medicinal products; baby toiletries; food and accessories; drinks and snacks; hair accessories; and photographic processing and film accessories.
Substantial sums have been spent by the Complainant in the advertising and promotion of the SUPERDRUG trademark. Advertising spending for the last five years is as follows:
95/96 - �8,346,000
96/97 - �8,924,000
97/98 - �6,508,000
98/99 - �8,206,000
99/00 - �8,931,000
Examples of advertisements placed in daily newspapers and magazines, and extracts from the Complainant�s website illustrating the Complainant�s use of the mark SUPERDRUG in relation to goods and services for which the Complainant�s marks are registered, were attached to the Complaint,.
The Complainant�s annual turnover figures for the last five years are summarized in the following table:
Year
Turnover ��000
2000
843,429
1999
798,622
1998
749,467
1997
684,773
1996
653,849
The Complainant has a valuable reputation and extensive goodwill in the SUPERDRUG mark as a result of substantial use over many years, and the name SUPERDRUG is one of the United Kingdom�s most renowned marks for denoting High Street health and beauty products.
The Complainants� trademarks
The Complainant is the proprietor of trade mark registrations in the UK for the marks: SUPERDRUG (word mark), SUPERDRUG (word / image), SUPERDRUG SENSATIONS (word mark), SUPERDRUG BODY BRIGHTENER, SUPERDRUG PURITE (word mark, series of marks), SUPERDRUG SPLASHOUT (word mark), SUPERDRUG LAVENDER DREAM (word mark), SUPERDRUG FOOD ZONE (word mark), SUPERDRUG THE WAY (word mark), SPIRIT OF SUPERDRUG (word mark), SUPERDRUG SNAP SHOP (word mark), SUPERDRUG NATURAL SELECTION (word mark), SUPERDRUG ULTRAFRESH (word mark), SUPERDRUG ULTRACARE (word mark), SUPERDRUG HEALTHY SELECTIONS (word mark), SUPERDRUG OPTIMUM (series of word/image marks).
The Complainant is also the proprietor of applications in the UK for the following marks:
(a) SUPERDRUG THE REAL BEAUTY IS THE PRICE,
THE REAL BEAUTY IS THE PRICE (word mark)
(b) SUPERDRUG JUICE BAR (word mark)
(c) SUPERDRUG FRUIT BURST (word mark)
(d) SUPERDRUG SHOWER BURST, SHOWER BURST (word mark)
Copies of all these trademarks were attached to the Complaint.
The Complainant also claims to be the proprietor of one or more European Community trademark registrations for SUPERDRUG, but although copies were said to be attached to the Complaint, they were not.
The Complainant is also the registrant of over 45 domain names, which include their mark SUPERDRUG, a list and details of which were attached to the Complaint.
The Complainant�s SUPERDRUG trademark has become well known in the UK by virtue of its extensive use and registration by the Complainant.
Activities of the Respondent
In the absence of any communication, nothing is known for certain about any commercial activities of the Respondent, but see below for his activities in the field of domain names.
5. The Parties� Contentions
A. Complainant
The Complainant contends that the Respondent registered the disputed Domain Names and on October 12, 2000, and this is confirmed by the CORE response to the Center�s Request for Registrar Verification.
The Complainant has also discovered that the Respondent registered the domain names , , and in the UK ccTLD all on October 12, 2000, which is the same date as the registration of the Domain Names that are the subject of this Complaint. Printouts of these UK code domain names were attached to the Complaint. However apparently as a result of the inflexibility of the WHOIS databases operated by CORE and Nominet UK, the Complainant was unable to obtain and produce a comprehensive list of domain names which are registered in the name of the Respondent and which might relate to the Complainant.
The two disputed domain names, and , incorporate the whole of the Complainant�s name and trade mark SUPERDRUG and as such are confusingly similar to the Complainant�s mark. The addition of the non-distinctive word �direct� does not change matters.
The Respondent is not authorized to use, in anyway whatsoever, any of the Complainant�s trade marks, including the actual SUPERDRUG mark and other marks containing the SUPERDRUG name. The Complainant believes that the Respondent has no rights or legitimate interest in respect of the and Domain Names as they do not hold any registered trade marks which are identical or similar to the Domain Names in the United Kingdom nor do they appear to have any common law rights in the Domain Names.
The Respondent is resident in the United Kingdom, and so he knew or should have known of the Complainant�s trade marks and business at the time of registration of the disputed Domain Names given the widespread use and renown of the Complainant�s SUPERDRUG mark. Furthermore, it is extremely likely that the Complainant intended to capitalize commercially on the SUPERDRUG mark by registering the disputed Domain Names.
Although the Respondent is currently maintaining an active registration for the disputed domain names and has done so since October 12, 2000, he has not and does not currently have a website hosted at either of the Domain Names, save for a frame at the top indicating the Respondent�s Internet Service Provider "UK2.NET". Nor has the Respondent utilized the Domain Names for any other purpose whatsoever. The Complainant therefore contends that the Respondent is currently holding the Domain Names hostage either for the purpose of:
a) selling, renting or otherwise transferring the Domain names to the Complainant for valuable consideration far in excess of the Respondent�s out of pocket expenses; and/or
b) driving customers to the Respondent�s website with the intent of deriving commercial gain from the unauthorized apparent sponsorship of, affiliation with an endorsement by the Complainant; and/or
c) preventing the Complainant from using the Domain Names.
The SUPERDRUG name and trademark has a strong reputation and is well known in the UK. The Respondent can make no good faith use of the Domain Names, and "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant�s rights under trademark law." See Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows .
Further, or in the alternative, the Complainant submits that the Domain Names were chosen intentionally in order to attempt to create a likelihood of confusion with the Complainant�s marks as to the source, sponsorship, affiliation, or endorsement of the Registrant�s intended website.
The Respondent, "James Walters" is stated in the WHOIS search to work for an organization called . However, it is in fact the Complainant who is the owner of the domain name . As such, the Respondent is falsely claiming that it is an organization called in an attempt to give its registration of the Domain Names some respectability. Indeed, as persons consulting the WHOIS register are likely to believe that the Respondent is associated with the Complainant, mere registration of this name amounts to passing off and bad faith use of the domain name as decided by the UK Court of Appeal in the case of Marks & Spencer and Others v One In A Million & Others [1999] FSR1.
The Complainant also alleges that the Respondent has engaged in a pattern of cybersquatting but has sought to hide this by concealing his identity. The name "James Walters" and the usage of �Superdrug com� in the Registrant details has been adopted only in order to conceal the true identity of the Respondent. The Complainant alleges that the Respondent has, in the past, adopted a number of other aliases, which can be proved to be clearly linked to the Respondent, either by e-mail address, names, or postal addresses, and which he uses to register domain names. The Complainant contends all of these aliases and the Respondent are in fact one and the same individual.
Clear and detailed evidence to this effect, which was included in the Complaint, and which is apparently derived largely from J, the website through which CSL GmbH, the registration offering member of CORE, provides its services, was filed as part of the Complaint.
A number of WHOIS printouts from J, being COCO records, were attached as part of the Complaint all of them relating to the Respondent. COCO is short for COre-COntact-handle, and each record printed out represents another domain name registered by the Respondent. Unfortunately, due to the inflexibility of the WHOIS database at J it is impossible to see what domain name these relate to and just how many are registered by the Respondent.
However, even with this difficulty in using the WHOIS database to obtain information, the Complainant has listed an impressive number of aliases together with evidence of their connection to the Respondent, namely:
Arcane Publishing
Craig Communications
Craig Cottrell
D Perkins
D Wheatley
Dave Wheatley
DFS Furniture
Doris Dogherty
Dorothy Perkin
Drew Miles
f i s
Fred Scot
Fred Ward
James Kent
James Walters
Jason Jones
Le Windsor
Marcus Spencer
Marcus Spencer trading
Stuart Watson
In addition, the Complainant maintains that the following domain names, all of which feature well known marks, have all been registered by one or more of the Respondent�s aliases:
Domain Name Registrant
Arcane Publishing/
Craig Cottrell
Arcane Publishing/
Craig Cottrell
Drew Miles
James Kent
Drew Miles
Fred Scot
Drew Miles
Fred Scot
Dorothy Perkin
Dorothy Perkin
Arcane Publishing/
Craig Cottrell
Arcane Publishing/
Craig Cottrell
Arcane Publishing/
Craig Cottrell
Dave Wheatley
Dave Wheatley
Arcane Publishing/
Craig Cottrell
Marcus Spencer Trading/
Marcus Spencer
Marcus Spencer Trading
Marcus Spencer Trading/
Marcus Spencer
Marcus Spencer Trading
Marcus Spencer Trading/
Marcus Spencer
Marcus Spencer Trading
James Kent
Arcane Publishing/
Craig Cottrell
James Kent
Arcane Publishing/
Craig Cottrell
D Perkins
D Perkins
David Wheatley
David Wheatley
David Wheatley
James Kent
James Kent
Doris Dogherty
Doris Dogherty
Stuart Watson
Stuart Watson
Stuart Watson
David Wheatley
Further, or in the alternative, the Complainant submits that the two disputed domain names were registered by the Respondent in order to prevent the Complainant, the owner of trade marks incorporating the word SUPERDRUG from reflecting this mark in corresponding Domain Names, and that the Respondent has habitually engaged in such activity. There is clear evidence that the Respondent, in order to disguise his activities, has engaged in a pattern of cybersquatting conduct albeit under different aliases. Furthermore, the Respondent has registered many other well-known marks as domain names.
Under English Law by virtue of the decision of the Court of Appeal of the Supreme Court of England and Wales in the case referred to above of Marks & Spencer & Others v One and a Million and Others, the practice of third parties registering well known marks as domain names, irrespective of whether a site under that domain name is active or not, is an infringement of trade mark rights and passing off.
The Complainant believes that there is no evidence that the Registrant has been commonly known by the Domain Names and that the Respondent has no prospect of successfully arguing it is making a legitimate non commercial or fair use of the Domain Names.
In the circumstances, the Complainant concludes that the Respondent�s primary purpose in registering the disputed Domain Names was to sell, rent or otherwise transfer the domain name registration to it or to one of its competitors for value consideration in excess of the out of pocket costs directly relating to the registration of the Domain Names.
B. Respondent
The Respondent did not respond to the Complaint, or to the very serious allegations made therein.
6. Discussion and Findings
Since the Respondent has not submitted a response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with the following paragraph of the Notification of Complaint:
"6. Default. If your Response is not sent by the above date (i.e. February 4, 2000), you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint." Which the Panel will now do.
* * * *
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There is no doubt that the Complainant has both registration and Common Law rights in the trademark SUPERDRUG. This is not identical to the disputed domain names but, in the Panel�s view, it is confusingly similar.
There have been other Decisions in which a complaint was upheld when the Respondent merely added a descriptive term to an otherwise distinctive or well-known trademark. See, for example, Cases D2000-0265 Sporoptic Pouilloux S A v, William H Wilson , D2000-0275 Caterpillar Inc. v. Roam the Planet Ltd , and Guerlain S A v. HI Investments . There are even two cases involving the addition, as in this case, of the word �direct�. See Case D2000-1207 Fortnum & Mason PLC v. Corporate Business Sales Limited , and D2000-1113 Woolworths plc v David Anderson (woolworthsdirect,com).
In the opinion of the Panel, the disputed domain names are little more than a slavish copy of the Complainant�s name and trademark and, as a consequence, the Panel finds that the disputed domain names are confusingly similar to the Complainant�s trademarks, and that paragraph 4(a)(i) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name.
In connection with this paragraph, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain names.
By its default, the Respondent has done nothing to contest the allegations of the Complainant that he lacks any rights or legitimate interests in the disputed domain names. The Panel can only assume therefore that the Respondent�s main motive in registering the disputed domain names was his actual or likely knowledge of the name and trademark SUPERDRUG, which has been widely promoted.
Paragraph 4(c) of the Policy sets out several ways in which a Respondent can establish rights or legitimate interests in the domain names at issue. The Respondent can, for example, show that before he received any notice of a dispute, he had made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services. However the disputed domain names are inactive and the Respondent has made no "demonstrable preparations" beyond the mere registration of them.
The Respondent has produced no evidence that he has been commonly known as �Superdrug�, and he has made no legitimate noncommercial or fair use of the disputed domain names since he first registered it.
Since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith.
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain names in bad faith. The Panel must perforce draw such inferences as it can from this inaction, and from the Complainant�s uncontested allegations. Even so, the burden of proof is on the Complainant.
The Policy was designed to frustrate the activities of cybersquatters, and the Panel concludes, on the evidence before it, that there is overwhelming evidence that the Respondent is a cybersquatter. The Complainant has been extremely diligent in identifying no less than 20 aliases used by the Respondent to register a total of 39 domain names which consist of famous or well-known names and trade marks. There may be more such registrations. There may be more such aliases. Indeed the Respondent�s actual name � �James Walters� � may be just another alias.
With regard to �bad faith�, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel will consider each of them in turn.
4(b)(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 trade mark 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 Complainant made no approach to the Respondent prior to the complaint having been filed, so it cannot be said that any offer to sell the domain names at a profit was made by the Respondent, but the inference that this was the Respondent�s intention can clearly be made from his other activities. In any case, it has been held that deliberately concealing one�s identity is evidence of bad faith. See, for example, the Telstra Case referred to above, and Case D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas and C.
A passive holding of a domain name is not in itself sufficient evidence of bad faith. However, as noted by the Panelist in British Sky Broadcasting Limited v Domain Reservations (Case D2000-0507), "It is well known that following decisions such as the One In A Million decision of the English High Court in November 1997 and other similar decisions in other jurisdictions (the import of which was communicated worldwide and rapidly to interested parties via the Internet) domain name holders holding domain names of unique value to trade mark owners were liable to make themselves vulnerable to civil proceedings by making the first approach to the intended purchaser."
4(b)(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
Again one could infer that it was the intention of the Respondent to prevent the Complainant from using its name, but here the evidence is rather stronger for the Respondent has registered the domain names and in the UK ccTLD. Proof of this has been filed as an Annex to the Complaint. In any case there is ample evidence that the Respondent, under one or other assumed name or alias has engaged in a pattern of registering domain names that are similar to famous or well-known trademarks.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
Since nothing is known of the Respondent�s business, other than his cybersquating, there is nothing to suggest that he is in competition with the Complainant, but again the inference can be drawn from the Respondent� activities that disruption or enticement
was very much in his mind when he registered the disputed domain names.
He must have known of the Complainant�s name and trade mark and, applying the test in the Telstra case referred to above, "[T]he trademark [SUPERDRUG] is one of the best known trademarks in [the United Kingdom], and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact ��[B]y virtue of the widespread use and reputation of the trademark [SUPERDRUG], members of the public in [the United Kingdom] would believe that the entity owning the domain name [ and ] was the Complainant or in some way associated with the Complainant". See also the decision in case D2000-0137 Expedia, Inc. v. European Travel Network.
* * * *
Taking all of the above four points into consideration, the Panel has had little difficulty in concluding that the disputed domain names were registered in bad faith.
However, it should be noted that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The Telstra case, referred to above, was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The question that must always be asked in these circumstances is: what are those �certain circumstances�?
Telstra is perhaps the most cited of all UDRP decisions to be handed down to date, it and its rationale have been followed by numerous subsequent panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behavior" (see paragraph 7.11).
In the present case, there is a great deal of positive evidence that the Respondent�s activities are frowned on under the Policy, for example: his non-response to the Complaint, his widespread use of aliases to register domain names consisting of famous or well-known trade marks, and his registration of three very similar domain names in the UK ccTLD.
These proceedings were binding on the Respondent. Nevertheless he failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that he had been duly notified by the Center. In particular, Respondent has not denied that he is using the domain name in bad faith.
The Panel therefore concludes that the Respondent has registered and used the domain name in bad faith.
7. Decision
The Panel decides that the domain names registered by the Respondent are similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of either of the domain names, and that the domain names were registered and are being used in bad faith.
Accordingly, the Panel requires that the registration of the domain names and be transferred to the Complainant.
David H Tatham
Sole Panelist
Dated: April 23, 2001
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