WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Which? Limited v. Julian Saavedra Case No. D2010-0539 1. The Parties
The Complainant is Which? Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Wedlake Bell, United Kingdom.
The Respondent is Julian Saavedra of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name, , is registered with 1API GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 9, 2010. On April 9, 2010, the Center transmitted by email to 1API a request for registrar verification in connection with the disputed domain name. On April 13, 2010, 1API transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing contact details, and providing other details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 26, 2010. 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
Complainant has, for more than 50 years, published a consumer magazine entitled WHICH?, to provide information to consumers within the United Kingdom (“U.K.”) about a variety of goods and services. Complainant owns U.K. trademark registrations for the marks WHICH, WHICH?, and other marks including the term “which” (in some cases followed by a question mark) along with a generic term and, in many cases, a question mark, for a variety of related goods and services.
The domain name was registered in May 5, 2009. Subsequent to October 2009 the registration was transferred to Respondent. The domain name is used for a website that offers for sale manuals for vehicles: automobiles, motorcycles, trucks, and boats. 5. Parties' Contentions A. Complainant (1) The domain name is identical or confusingly similar to Complainant's marks.
Complainant was established in 1957 as “The Consumers' Association,” which began publishing the consumer magazine WHICH?. The magazine provides advice to consumers in the U.K on a range of goods and services. Complainant's magazine currently has a total circulation of almost 500,000.
Since that time, Complainant has launched other publications, including Which? Car (originally Motoring Which?), Holiday Which? Gardening Which?, Which? Money and others. In 1996, Complainant launched WHICH? Online, at “” and “”, one of the most visited websites in the U.K.
Complainant has registered its “which” marks in the U.K. and European Community, including registrations for:
WHICH and WHICH?, registered in 2007 and 2008, respectively for a broad category of print and online publications, WHICH MAGAZINE, registered in 2008 for periodicals, as well as the names of its other publications:
WHICH? CAR
WHICH? MONEY
WHICH? HOLIDAY
WHICH? GARDENING
WHICH? COMPUTING
WHICH? DIGITAL STORE
WHICH MAGAZINE
WHICH BEST BUY
Complainant submits that the domain name is confusingly similar to the mark WHICH and to its other “WHICH” marks because consumers are accustomed to seeing the trademark WHICH or WHICH? used with generic terms. (2) Respondent has no rights to or legitimate interests in respect of the domain name.
Complainant's registration of the majority of its “WHICH” marks predates the May 2009 registration of the domain name. Respondent could not acquire any rights in the name “which manuals” or “” that would have priority over Complainant's rights.
Respondent has no connection with Complainant or any company licensed by Complainant. Complainant further submits that Respondent is not commonly known by the domain name.
Respondent does not have and never had any rights to use any of Complainant's marks anywhere in the world. Complainant has not authorized Respondent to use the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name, which is used to offer for sale in the U.K. manuals for a variety of vehicles. (3) Respondent has registered and is using the domain name in bad faith.
Many of Complainant's trademark registrations predate Respondent's registration and use of the domain name. By the time the domain name was registered, Complainant's business was well known to Respondent – as evidenced by the content of Respondent's website and extensive use of the word “which” and a question mark on the website.
Complainant sent a cease and desist letter concerning the website in October 2009. At that time, the identity of the registrant was subject to a privacy service offered by the registrar. The following month, November 2009, the registration record was modified to identify an individual in Panama. Subsequently, the registration was transferred to Respondent, also with an address in Panama, and the identical email address.
The efforts to shield the registrant's identity, combined with the transfer of the domain name, should give rise to an inference of bad faith. If Respondent genuinely intended to register and use the disputed domain name in connection with a bona fide offering of goods and services, he would have no reason to hide his identity or contact details.
Further, Respondent is using the domain name to sell manuals for automobiles, motorcycles, trucks, and boats. Respondent's prices are displayed in pounds sterling, making it clear that he is attempting to exploit Complainant's marks and reputation in its home market. Screen shots of Respondent's website show that it prominently displays the name “Which Manuals” with the word “which” in dark gray text and the word “manuals” in red text, emphasizing “which.” To the left of the name is a question mark within an oval shape.
Respondent's use of a question mark is trademark infringement and passing off. It creates a likelihood of confusion with Complainant's marks and incorrectly suggests that Respondent's website is associated with Complainant. In fact, Complainant has received complaints about orders placed with Respondent.
Complainant submits that Respondent is using the domain name to intentionally attract visitors to his website for commercial gain, by creating a likelihood of confusion with Complainant's mark.
Respondent is aware of Complainant, not only due to the similarities between Respondent's website and Complainant's marks, but also because in February 2010, Complainant was contacted by someone purporting to be associated with the website inquiring about the possibility of a joint marketing venture involving the website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent's default as it considers appropriate. See Rules, Paragraph 14(b).
The primary consequence of Respondent's failure to respond is that it has not responded to Complainant's arguments regarding confusing similarity or offered any of the types of evidence set forth in Paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith. A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant has established rights in the mark WHICH, as well as its other “WHICH” marks, including WHICH MAGAZINE and WHICH CAR, by virtue of its U.K. trademark registrations.
Complainant does not argue that the domain name is identical to one of its marks, but appears instead to argue that it is confusingly similar:
Over many years, consumers have become used to seeing the trade mark WHICH? (with or without a question mark) used in conjunction with generic terms such as “holiday”, “computing” and “car”. So signs such as “Which Manuals” and will inevitably create a strong likelihood of association with the Complainant in the minds of Internet users.
Whether or not the domain name is confusingly similar to Complainant's mark presents a close question. The Panel is of the view that the test for confusing similarity is determined by the degree of resemblance between the mark at issue and the alphanumeric string making up the disputed domain name as to appearance, sound, and meaning. Thus, factors such as the distinctiveness of Complainant's mark and how well-known the mark is among consumers, relevant in a traditional trademark infringement action, are not part of this analysis. The domain name does bear some resemblance to Complainant's “WHICH” marks in appearance, pronunciation, and connotation. A domain name is likely to be deemed confusingly similar to a mark if it incorporates a mark or a variation of a mark, however, such a finding is not automatic.
However, here, the mark at issue is ordinary English word, capable of being used for its ordinary meaning. Accordingly, Respondent might have been able to advance compelling arguments that that Complainant's trademark rights are limited to the combination of “which” and other terms that more closely resemble those contained in Complainant's other marks. By virtue of its default, Respondent has not advanced any argument.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's WHICH and WHICH? marks. The disputed domain name includes each of those marks in their entirety1 followed by the generic term “manuals.”
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant's mark. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Panel finds that Complainant has made a prima facie showing as to this element2.
Complainant has provided evidence of its long-standing use of “WHICH” marks in the U.K., along with numerous trademark registrations, many of which long predate the original registration of the domain name. Further Complainant points to the fact that the contact email for the prior registrant, to whom Complainant sent a cease and desist letter, is identical to that of the Respondent, making it likely, in the Panel's view, that Respondent was aware of Complainant's objections at the time it acquired the domain name.
There is no reason to believe that Respondent is or could be known by the domain name.
It does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name. The domain name is used for commercial purposes to sell vehicle manuals.
Accordingly, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name C. Registered and Used in Bad Faith
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant has shown that its rights in most of its “WHICH” marks are long standing, predating the registration and use of the domain name by many years. Many of its marks also feature a question mark. Based on the printouts of pages from the “www.” website, it appears that Respondent was well aware of Complainant's “WHICH” marks: As it appears on the site, the name “which manuals” uses different colors for each of the two terms in a manner that differentiates each from the name as a whole; further, the site prominently includes a question mark that is a feature of many of Complainant's marks.
Under these circumstances, combined with the adverse inferences drawn by Respondent's failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: June 9, 2010
1 The presence or absence of a space between “which” and “manuals” and the use of the top-level domain is irrelevant for these purposes.
2 As with the first element, by virtue of its default, Respondent has not presented any argument or evidence on this element, which might have included an argument that the domain name is comprised of ordinary English words that alone -- and in combination -- are capable of generic meanings that apply to its offerings.
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