WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The White Company (UK) Limited v. House of Logic Case No. D2008-1914 1. The Parties
The Complainant is The White Company (UK) Limited of Middlesex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Dechert, United Kingdom.
The Respondent is House of Logic of Rome, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 17, 2008, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on January 26, 2009.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 3, 2009. 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.
On February 26, 2009 the Panel issued an administrative Procedural Order requesting that the Complainant, no later than March 3, 2009, submit evidence of trademark rights held at the time at which the disputed domain name was registered or prior to such registration and of any evidence of fame of such mark at or around that time. At the same time, the Respondent was invited to provide a reply to any such submission no later than March 8, 2009. The Complainant submitted the requested evidence on March 3, 2009. The Respondent did not reply. 4. Factual Background
The Complainant has submitted evidence that the Complainant is the owner of several trademark registrations for THE WHITE COMPANY and THE LITTLE WHITE COMPANY in various countries. From the submitted evidence it is clear that the oldest of the Complainant's registered trademarks above were applied for in 2002.
The Respondent registered the disputed domain name on July 31, 2001. 5. Parties' Contentions A. Complainant
The Complainant is a limited company incorporated in England and Wales, United Kingdom. The Complainant was established in 1994 and was initially a mail order business supplying home accessories predominantly in the color white. In 2001, the Complainant opened its first retail store in Chelsea, London. Presently there are 18 retail stores in the United Kingdom, four concessions in the United Kingdom and two franchisee operated retail stores in Dubai in the United Arab Emirates. The Complainant also sells its products using the domain name . In the 2006/2007 financial year the Complainant had a global turnover exceeding GBP 61 million.
The disputed domain name was registered by the Respondent on July 31, 2001. The Complainant sent a letter to the Respondent on October 3, 2008, informing about the Complainant's trademark rights in the mark THE WHITE COMPANY and asking the Respondent to transfer the disputed domain name to the Complainant. The Respondent did not reply. On October 28, 2008, the Complainant sent a second letter to the Respondent, again asking the Respondent to transfer the disputed domain name to the Complainant. The Respondent did not reply. Both letters were returned to the Complainant undelivered. The Complainant did not receive any indication that the copies sent by email did not reach the Respondent.
The disputed domain name is identical to the Complainant's trademark with the omission of the article “the”. The Respondent is taking advantage of Internet users who inadvertently omit the article “the” when attempting to access the Complainant's website. Internet users may believe that the Complainant is connected with the Respondent.
The Complainant has not licensed or permitted the Respondent to use its trademark or to apply for a domain name incorporating any such mark. There is no evidence of the Respondent's use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name does not resolve to a website despite the fact that it has been registered since 2001. The Respondent has not previously been known by the disputed domain name. The Respondent must have been aware of the Complainant's rights in the trademark THE WHITE COMPANY at the time of the domain name registration. The Respondent has registered the disputed domain name primarily to disrupt the business of a competitor, namely the Complainant. Passive holding of a domain name can amount to bad faith according to previous cases. The fact that the Respondent has not replied to the Complainant's two cease and desist letters is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks THE WHITE COMPANY and THE LITTLE WHITE COMPANY.
Although the disputed domain name does not incorporate the Complainant's trademark THE WHITE COMPANY in its entirety, the disputed domain name contains the dominant parts of the Complainant's trademark, “white” and “company”. The difference between the disputed domain name and the Complainant's trademark is the absence of the article “the” in the disputed domain name. Having the overall impression between the disputed domain name and the Complainant's trademark in mind, it is the opinion of the Panel that the omission of the article “the” has a limited ability to distinguish the disputed domain name from the trademark THE WHITE COMPANY.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark THE WHITE COMPANY and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) before any notice to respondent of the dispute, 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; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) 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.
The Complainant has not licensed nor otherwise consented to the Respondent's use of the trademarks; the disputed domain name is confusingly similar to the Complainant's trademark THE WHITE COMPANY.
Although provided the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name. Furthermore, there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the respondent has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 respondent's web site or location or of a product or service on respondent's web site or location.
The Panel has noted that the Complainant's registered trademarks THE WHITE COMPANY and THE LITTLE WHITE COMPANY do not predate the registration of the disputed domain name . From the submitted evidence it is clear that the oldest of the Complainant's registered trademarks were applied for in 2002 and that the Respondent registered the disputed domain name on July 31, 2001, i.e., before the Complainant applied for the trademark registrations above.
However, the Complainant started trading in 1994 as a mail order business under the mark THE WHITE COMPANY and opened its first store in Chelsea, London, in 2001. The Complainant has submitted evidence of extensive use of the mark THE WHITE COMPANY between the years 1996 and 2001, i.e. before the disputed domain name was registered by the Respondent. According to the submitted evidence in the case, the Complainant's turnover under the mark THE WHITE COMPANY was GBP1,313,537 in 1996, GBP2,176,089 in 1997,GBP3,136,066 in 1998, GBP4,198,418 in 1999, GBP6,050,195 in 2000 and GBP9,438,584 in 2001. Thus, having the submitted material in mind the Panel finds that the Complainant, for the purposes of the Policy, has provided evidence that the Complainant owned rights to the trademark THE WHITE COMPANY at the time of the registration of the disputed domain name .
Considering that the disputed domain name is confusingly similar to the Complainant's trademark THE WHITE COMPANY, used by the Complainant for a considerable time before the Respondent's domain name registration and that there are no circumstances in the case before the Panel indicating that the Respondent has been or is the owner of any trademark rights or any other right or legitimate interest similar to the disputed domain name, the Panel finds that the disputed domain name evidently was registered with the Complainant's trademark in mind. It has been noted that the Respondent did not reply to any of the Complainant's letters or emails. Furthermore, the Respondent did not reply either to the Center's invitation to provide a Response to the Complaint nor to the Center's invitation to provide a reply to the Panel's Procedural Order. Thus, there is no evidence in the case that refutes the Complainant's submissions.
According to the submitted material, the disputed domain name has not been actively resolving to any website and the Respondent's use is therefore limited to passive holding. As recognized in numerous previous decisions, passive holding of a domain name may be regarded as bad faith use in the sense described in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Furthermore, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2 it has been declared that the lack of active use of the domain name does not as such prevent a finding of bad faith. Examples of circumstances that can indicate bad faith include Complainant having a well-known trademark, lack of response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. In light of the particular circumstances in the case, the Panel concludes that the Respondent's passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith by the Respondent.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a) (iii) of the Policy and that the domain name has been registered and used 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.
Johan Sjöbeck
Sole Panelist
Dated: March 10, 2009
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