WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBOS Plc v. Whois Protection
Case No. D2007-1605
1. The Parties
The Complainant is HBOS Plc, Halifax, West Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Mehboob Vadiya, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Whois Protection, West Bay, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2007. On October 31, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On October 31, 2007, R Services Corp 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”), 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 November 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2007.
The Center appointed Ian Blackshaw as the sole panelist in this matter on December 12, 2007. 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 a well-known group of banking companies. The Complainant was incorporated on May 3, 2001, following the merger of Halifax Plc and Bank of Scotland. The Complainant trades under a variety of names and has acquired various UK trademarks comprising the word “Halifax” primarily relating to financial and insurance services within class 36. The Complainant also carries on business in and has trademarks for a variety of other goods and services.
The Complainant's UK trademarks include trademark numbers 1289571 in the name of HALIFAX and 1289572 in the name of THE HALIFAX both registered on October 1, 1986. Details of both these trademark registrations have been provided to the Panel. However, the trademarks have been in use since 1928.
In 1991, the Complainant launched a new subsidiary called Halifax International (Jersey) Limited. A website was launched in 1998 under the domain name . Since 2003, visitors to this website have been redirected to “www. ”.
The Respondent registered the disputed domain name on January 3, 2003. The Respondent operates a click-through website that provides links to third party websites including financial services providers' sites. Screenshots of the website have been provided to the Panel.
5. Parties' Contentions
A. Complainant
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant has established registered and unregistered rights in the above mentioned trademarks and has a well known subsidiary trading under the name Halifax International. The domain name is identical or confusingly similar to its HALIFAX and THE HALIFAX trademarks and gives rise to a legal action for ”passing off”.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) the Complainant has had continued use of the Halifax International name since 1991; (2) the Respondent registered the domain name at least 17 years after the Complainant adopted and began using the HALIFAX and THE HALIFAX trademarks; (3) The Complainant has become commonly associated with the word “Halifax” in the area of financial services and the Respondent has not been commonly known by the domain name; (4) the Respondent is not authorized to use the HALIFAX or THE HALIFAX trademarks; (5) the Respondent's use of the domain name to mislead users and divert consumers to third party commercial websites is not a bona fide offering of goods or services; and (6) the Respondent cannot present a fair use or non commercial use of the domain name.
The domain name was registered and is being used in bad faith
The Complainant submits that the Respondent registered the domain name in and continues to use it bad faith. In particular, the Respondent's conduct falls within the evidence of bad faith cited in paragraph 4(b)(iv) in that (1) by using the domain name the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark; and (2) the Respondent is diverting users in a misleading manner.
In addition, the Respondent's website is not offering any goods or services in the name of the Respondent or an associated business. The Complainant has made substantial use of the mark HALIFAX for over 79 years and has invested considerable sums in advertising and marketing in order to enhance the reputation and goodwill in the brand. The Respondent sought to benefit from this well-known brand by creating a false association between the disputed domain name and the Complainant, both in terms of the HALIFAX and the HALIFAX INTERNATIONAL brands. The website hosted at the disputed domain name contains a large number of click-through links to third party websites. Some of these click-through websites are operating in broadly the same field as that of the Complainant offering competing goods and services.
The Respondent is using the disputed domain name in a way that confuses people or businesses into believing that the domain name is registered to, operated by, or otherwise connected with the Complainant, with a view to attracting, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark by using the trade mark HALIFAX and name of the established business “Halifax International”. The disputed domain name is identical to the Complainant's brands and aims to take unfair advantage of the Complainant's Rights. Internet users seeking the Complainant's official “Halifax International” website are likely to assume that the disputed domain name is associated with the Complainant. This confusion is a result of the Respondent's deliberate attempt to mislead users by using a well known brand of considerable goodwill and reputation as its domain name. The Respondent's purpose in causing the confusion is to generate profits by causing users to enter its website and “click-through” to other websites, thus generating revenues. The very purpose of “click-through” websites is to have as many people use the website to click-through to other sites, and by associating the disputed domain name with a well known brand this increases the likelihood of users clicking-through the Respondent's website.
The Complainant relies on the cases of The Ford Foundation v. Chen Bao Shui,WIPO Case No. D2007-0862; Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2007-1193; and St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd,WIPO Case No. D2007-0705. These cases involved similar ”click-through” sites as the one operated by the Respondent and were found to be registered and used in bad faith.
B. Respondent
The Respondent, having been duly notified of the Complaint, did not reply to the Complainant's contentions nor take any other part in the present proceedings.
6. Discussion and Findings
To qualify for cancellation or transfer of the domain name at issue, the complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the panel shall decide the 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.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous WIPO UDRP cases in which the respondent failed to file a response, the panels' decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also K�stritzer Schwarzbierbrauerei v. Macros-Telekom Corp,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel Garc�a Quintas,WIPO Case No. D2000-0140. The panel must decide whether the Complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant's mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant's trademark HALIFAX and the Complainant's business name Halifax International. The disputed domain name is confusingly similar to the Complainant's HALIFAX trademark. Furthermore, the difference between the domain name and the trademark, in the absence of any explanation to the contrary by the Respondent is calculated to mislead and cause confusion to anyone surfing the Internet seeking information about the Complainant, its products, services, and constitutes cybersquatting.
In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark HALIFAX, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and also extensive prior use in commerce for many years.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant's widely known trademark HALIFAX and its business name Halifax International and the professional services sold under those brand names, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not have - or, indeed, claimed to have- any such rights or interests. Apart from that, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design,WIPO Case No. D2006-0977.
Further, Respondent apparently has not been authorized or licensed by the Complainant to use the Complainant's trademark HALIFAX or business name Halifax International in the disputed domain name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant's trademark and business name inevitably leads to the diversion of the Complainant's consumers to the Respondent's website (see further on this point below) and the consequential tarnishing of the Complainant's trademark and business name. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant's business and its trademark HALIFAX and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark through extensive advertising and marketing, as well as commercial use over many years, evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that contains no original content but only links to other websites offering products, many of which compete with those of the Complainant. See QVC, Inc. and ER Marks, Inc. v. ActiveI,WIPO Case No. D2005-1303, in which it was held that “[t]he use of a domain name that merely offers links to other websites is not a bona fide offering of good and services pursuant to paragraph 49(c)(i).”
Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
Based on the evidence provided in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is trading on the Complainant's valuable goodwill established in its widely known trademark HALIFAX and also its business name Halifax International. Furthermore, the fact that the Respondent's website contains links to other websites associated with competitors of the Complainant suggests that the Respondent must have been aware of the Complainant's trademark and, as such, amounts to bad faith on the part of the Respondent. See TAG HEUER v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2005-0133.
Again, by registering and using the disputed domain name incorporating the Complainant's widely known trademark HALIFAX, the Respondent misleads Internet users and consumers into thinking that the Respondent and Respondent's activities are, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the widely known registered trademark of the Complainant and also is almost identical to the Complainant's registered domain name , which was registered by the Complainant several years before the Respondent registered the disputed domain name, are further factors supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. For a domain name can only be used in good faith by the owner of the respective right or by a licensee, neither of which is the position in the present case.
The Panel, for the reasons and in line with the previous WIPO UDRP cases cited above by the Complainant, agrees with the Complainant's contention that the use by the Respondent of the disputed domain name as a ‘click-through site' as the one operated by the Respondent constitutes registration and use of the disputed domain name in bad faith.
Likewise, the failure by the Respondent to reply to the Complainant's Complaint or otherwise take any part in these proceedings, in the view of the Panel, also serves as indicia of bad faith on the part of the Respondent.
Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant
Ian Blackshaw
Sole Panelist
Date: December 19, 2007
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