WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Gowrings Mobility Group Limited v. Cyber Domain Services Pvt.Ltd. / PrivacyP Case No. D2010-0706 1. The Parties
Complainant is Gowrings Mobility Group Limited of Newbury, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
Respondent is Cyber Domain Services Pvt.Ltd of Mumbai Maharashtra, India / PrivacyP of Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2010. On May 5, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On May 7, 2010 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 10, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 11, 2010. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 8, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on June 18, 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, Gowrings Mobility Group Limited, is a United Kingdom “UK”based manufacturer and supplier of wheelchair passenger vehicles. Complainant designs, manufactures and markets a wide range of vehicles that are adapted for wheelchair use. Complainant's range of adapted vehicles now covers nine vehicle models and vehicles are sold primarily in the UK. Complainant operates a web site from from which web users can obtain information about Complainant and its products.
Complainant is the proprietor of the UK trade mark no. 2313751, in class 12, filed in October 22, 2002, for the trademark GOWRINGS MOBILITY CHAIRCAB.
Complainant also alleges common law rights on the trademark GOWRINGS MOBILITY, in light of its four decades of use of the distinctive mark and identifier GOWRINGS MOBILITY in connection with the conversion and sale of motor vehicles for wheelchair bound passengers.
Complainant's predecessor Gowrings Mobility Limited registered the domain name on June 4, 1998 and Complainant has thus had a presence on the Internet under the name GOWRINGS MOBILITY (at “www.”) since at least as early as October 2000. 5. Parties' Contentions A. Complainant
Complainant contends that it has registered and well-established unregistered rights in the term “gowrings mobility”.
Complainant contends that the disputed domain name is confusingly similar to its registered trade mark GOWRINGS MOBILITY CHAIRCAB in that it is identical except for the mark's additional word “chaircab” which relates to a particular product made by Complainant. Complainant argues that the removal of this word within the disputed domain name does nothing to distinguish it from Complainant's trade mark in that the remainder, GOWRINGS MOBILITY continues to reference, and is distinctive of, Complainant.
Complainant further alleges that it has well-established unregistered rights the term “gowrings mobility”, which is totally reproduced in the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in the respect of the disputed domain name.
Complainant asserts that the web site to which the Domain Name resolves displays a number of payper-click advertisements through which Respondent would earn a small commission each time a link is clicked by a web user. Complainant notes that a number of the advertisements relate to “handicap vans” [sic] and “wheelchair vehicles” which, as noted above, are significant areas of Complainant's business. Complainant concludes that, in light of the current use of the disputed domain name, it is reasonable to infer that Respondent intended to profit from confusion by using Complainant's company name in the disputed domain name to capture consumer attention and then display and profit from relevant advertising links displayed to an inadvertent visitor.
Complainant alleges that at no point during the disputed domain name's registration has Respondent been commonly known by the name “Gowrings Mobility”. Complainant further asserts that Respondent is not a licensee of Complainant and has not received any permission or consent from Complainant to use Complainant's
company name. Complainant alleges that Respondent is not named or commonly known as “Gowrings Mobility” and owns no trademarks or service marks incorporating the term “gowrings mobility”. Finally, Complainant alleges that there is nothing on Respondent's website to indicate that it is known or trades as “Gowrings Mobility”.
Complainant asserts that Respondent's use of the disputed domain name cannot be construed as non-commercial in any way. Complainant contends that the disputed domain name was designed to attract web users to Respondent's web site where it earned pay-per-click revenue and was therefore clearly put to a commercial use in terms of the Policy.
Complainant also asserts that Respondent's use of the disputed domain name cannot be construed as a fair use, given that Respondent sought, with intent for commercial gain, to misleadingly attract consumers to its web site by reflecting Complainant's company name in the disputed domain name.
Finally, Complainant contends that given the fame of its rights and the fact that GOWRINGS MOBILITY is exclusively referable to Complainant, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would not infringe Complainant's rights given the similarity of the disputed domain name to said rights.
Complainant asserts that Respondent registered and is using the Domain Name in bad faith for the following reasons:
Complainant contends that the association of the disputed domain name with pay-per-click advertising which relates to major areas of Complainant's business - that is, adapted vehicles - is an attempt to disrupt the business of a competitor in terms of the Policy. Complainant asserts that, while Respondent is clearly not a manufacturer of adapted vehicles, the diversion of web users who will be attempting to find Complainant's web site to Respondent's pay-per-click advertising is disrupting Complainant's business.
Complainant contends that even if the strict interpretation of “competitor” is used, Respondent in this case is acting as a competitor to Complainant by promoting the products and vehicles of other third party businesses. Complainant asserts that, while it is not possible for Complainant to place a precise figure upon the losses caused by Respondent as a consequence of the diversion of consumers seeking information relating to Complainants' products, Complainant avers that its business will inevitably have been disrupted by Respondent's registration of a Domain Name that reflects its name and by its use in association with advertising of Complainant's competitors' products.
Complainant alleges that Respondent has registered and has been using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent's web site by creating a likelihood of confusion with Complainant's marks 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.
Complainant contends that Respondent's attempted use of the disputed Domain Name in association with pay-per-click parking pages will have caused confusion in the minds of web users and that it is reasonable to infer that Respondent selected a domain name that is identical to Complainant's company name in an attempt to maximise the receivable revenue from pay-per-click advertising. Complainant avers that Respondent's attempted use of the disputed domain name to forward visitors to pay-per-click web sites is ample evidence of bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant's GOWRINGS MOBILITY CHAIRCAB registered trademark and identical to Complainant's GOWRINGS MOBILITY unregistered trademark. The Panel also finds that the disputed domain name is confusingly similar to Complainant's company name.
The disputed domain name differs from Complainant's registered GOWRINGS MOBILITY CHAIRCAB mark only in the subtraction of the expression “Chaircab”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant's registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090, March 10, 2008 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC.,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP Complaint was filed, the domain name provided, in part, pay-per-click advertisings and links to web sites that were in direct competition with Complainant.
Moreover, the disputed domain name, as of the date of this decision, still resolves to a page that displays pay-per-click ads and links to Complainant's competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards aka William Moore, FA132439 (National Arbitration Forum, December 31, 2002) (finding that the respondent's use of complainant's marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant's competitors, was not a bona fide offering of goods or services).
The Panel finds that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Complainant's allegations of bad faith are not contested. The evidence provided by Complainant confirm that it had long been using its GOWRINGS MOBILITY CHAIRCAB registered trademark and GOWRINGS MOBILITY unregistered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademarks is well-known. The Panel finds that Respondent must have been aware of Complainant's rights in the mark and, further that Respondent knowingly infringed Complainant's trademark when it registered the subject domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant's known trademark to attract users to Respondents' website where pay-per-click ads and links to competing websites are offered. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondents' website.
At the time the Complaint was filed and at the time of this Decision, the disputed domain name resolves to a page that offers visitors pay-per-clicks ads and links to sites of other companies, including Complainant's competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants' website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior UDRP decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds that Complainant has made out bad faith registration and use of the domain name by Respondent. 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.
Eduardo Machado
Sole Panelist
Dated: July 1, 2010
Full & Egal Universal Law Academy