WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Eaton Williams Group Limited, Eaton Williams Exports Limited v. Hotcakes Imports Ltd Case No. D2009-0286 1. The Parties
The Complainants are Eaton Williams Group Limited and Eaton Williams Exports Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Bromhead Johnson, United Kingdom.
The Respondent is Hotcakes Imports Ltd of Essex, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2009. On March 5, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 5, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 16, 2009. The Center verified that the Complaint together with the amendment to 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 March 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2009.
The Center appointed David Perkins as the sole panelist in this matter on April 17, 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. 4. Factual Background 4.A. The Complainants
4.A.1 The Complainants are Eaton Williams Group Limited (“Eaton Williams”) and its wholly owned subsidiary, Eaton Williams Exports Limited (“Eaton Williams Exports”).
4.A.2 Eaton Williams and Eaton Williams Exports make air conditioning equipment which has been sold under the trademark QUALITAIR since at least 1993.
4.A.3 Eaton Williams Exports is the proprietor of the following registered trademarks:
Country Reg. No. Mark Class(es) Dates of Application and Registration
United Kingdom
1,083,430
QUALITAIR
11
Filed: September 10, 1977
Registered:
European Union
Community Trademark
000191122
QUALITAIR
11
Filed: April 1, 1996
Registered: September 10, 1998
4.B The Respondent
4.B.1 In the absence of a Response, the information relating to the Respondent is taken from the Complaint and the documents exhibited to it.
4.B.2 From information provided by the UK Companies Registry, the Respondent was incorporated on November 22, 2006 with an address in London and was dissolved on December 18, 2007.
4.B.3 The disputed domain name was created by the Respondent on March 20, 2007. The present address of the Registrant is different from that listed in the records of the UK Companies Registry and is given as Rainham, Essex.
4.B.4 The disputed domain name resolves to a website which offers for sale air conditioning units under the QUALITAIR brand. The website invites contact to Qualitair at the same postal address, Rainham, Essex as that given for the Respondent as the registrant of the disputed domain name. The website states that Qualitair is “an authorised dealer of Qualitair Air conditioning portable units”. 5. Parties' Contentions 5.A. The Complainant Identical or Confusingly Similar
5.A.1 Eaton Williams Exports is the proprietor of the registered QUALITAIR trademarks described in paragraph 4.A.3 above.
5.A.2 The Complainants say that the disputed domain incorporates the QUALITAIR trademark in its entirety with the generic suffix “4u”. Such use, the Complainants say, amounts to infringement of the registered QUALITAIR trademarks and also amounts to passing-off under English law.
5.A.3 In the circumstances, the Complainants say that the disputed domain name is confusingly similar to the QUALITAIR trademark. Rights or legitimate Interests
5.A.4 The Complainants say that the air conditioning units offered as Qualitair products on the website to which the disputed domain name resolves are not units manufactured or supplied by them. Accordingly, the Respondent is passing-off such units as and for the products made and/or supplied by the Complainants. Accordingly, the Complainants say that the Respondent has no rights or legitimate interest in the disputed domain name. Registered and Used in bad Faith
5.A.5 The Complainants point to the disputed domain name being created in March 2007 almost 30 years after the filing date of the QUALITAIR United Kingdom trademark and the fact that that trademark had already been in use by the Complainants since 1993. Accordingly, the Complainants submit that the disputed domain name was registered in bad faith.
5.A.6 The Complainants say that, since the disputed domain name is being used in infringement of their rights in the QUALITAIR trademark, it is also being used in bad faith. 5.B. The Respondent
As stated, no Response has been filed. 6. Discussion and Findings
6.1 Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 Eaton Williams Exports is the owner of the registered QUALITAIR trademarks and, accordingly, has rights in those trademarks.
6.6 The QUALITAIR trademark is the dominant element of the disputed domain name. The suffix “4u” is a popular abbreviation of the generic expression “for you”. The Panel has no hesitation in holding that the disputed domain name is confusingly similar to the Complainants' QUALITAIR trademark. Rights or Legitimate Interests
6.7 In the absence of a Response, there is no evidence that the Respondent could demonstrate any of the facts set out in paragraph 4(c) of the Policy.
6.8 Although the Complainants do not state that they have neither licensed nor otherwise authorised the Respondent to use the QUALITAIR trademark, nor that the Respondent is not (as it claims see, paragraph 4.B.4 above) an authorised Eaton Williams dealer for QUALITAIR air conditioning units, this can be inferred from the Complaint. Such inference arises from the Complainants' assertion that the Respondent is passing-off the air conditioning units offered at the website to which the disputed domain name resolves as Qualitair products, when they are neither manufactured nor supplied by the Complainants. The essence of the tort of passing-off is a misrepresentation made by a trader in the course of trade to prospective customers, which is calculated to injure the business or goodwill of another and which causes actual damage to the business or goodwill of a trader by whom the action for passing-off is brought [Reckitt & Colman Products Ltd v. Borden [1990] R.P.C. 341 (H.L.)].
6.9 In the circumstances, the Complaint meets the requirement of paragraph (4)(ii) of the Policy. Registered and Used in Bad Faith
6.10 The Complainants say that they have been selling air conditioning units under the QUALITAIR trademark since 1993 and have goodwill in such use of that mark sufficient to find a cause of action in passing-off. Accordingly, the trademark and its use in relation to air conditioning units was well established by March 2007 when the disputed domain name was created, such that the domain name was registered in bad faith. Given the use to which the disputed domain name has been put by the Respondent, it is clear that the Respondent was well aware of the prior existence of the QUALITAIR mark and its use as the brand name for the Complainants' air conditioning units.
6.11 Because the QUALITAIR air conditioning units being offered at the website to which the disputed domain name resolves are neither manufactured nor supplied by the Complainants, plainly they are being misrepresented as and for genuine QUALITAIR products offered by “an authorised dealer” and such is bad faith use of the domain name.
6.12 Accordingly, the Complaint meets the dual requirements of paragraph 4(a)(iii) of the Policy. Other Comments
6.13 Although the Panel has no hesitation in finding in favour of the Complainants in this administrative proceeding, it should be noted that the onus is on the Complainant to make out its case in the Complaint since the opportunity to make a supplementary submission is in the sole discretion of the Panel (Rule 12) and is the exception rather than the rule in cases brought under the Policy. Consequently, it is prudent when framing a Complaint to address why the Respondent is unable to demonstrate any of the circumstances set out in paragraph 4(c) of the Policy and also to identify the ground(s) under paragraph 4(b) of the Policy which the Complainant is advancing in support of its case under paragraph 4(a)(iii) of the Policy.
In the present case, the Complaint is rather minimal in terms of the way in which, typically, a Complainant will put its case. These comments are not intended as a criticism of this Complaint, but rather as a reminder to Complainants and their advisers that in terms of satisfying the requirements of paragraph 4(a) of the Policy, the Complainant's case will be judged solely upon the material contained in the Complaint, hence the need to ensure that adequate information is presented in it. 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, Eaton Williams.
David Perkins
Sole Panelist
Dated: May 1, 2009
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