The Complainant is Sharp Electronics (U.K.) Limited of Uxbridge, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Ward Hadaway Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. John Mills of North Walsham, Norfolk, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names , and (the “Disputed Domain Names“) are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Names. On November 24, 2010, 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.
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 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2010.
The Center appointed Michael D. Cover as the sole panelist in this matter on January 6, 2011. 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 wholly-owned subsidiary of the Sharp Corporation (Sharp Kabushiki Kaisha ) and is the licensee within the United Kingdom of all the trademarks owned by Sharp Corporation and other companies within the Sharp group.
The Complainant has been trading under the SHARP trademarks since its incorporation in 1969. The Complainant is a manufacturer and retailer of electrical goods in the United Kingdom and worldwide. It has a licence to use certain of the SHARP trademarks of the Sharp Corporation and other companies within the Sharp group. The Complainant itself has registered the trademark SHARPSOFT in the United Kingdom and the trademarks SHARPEPOS and SHARPPOS as (European) Community trademarks, in each case in Class 9 for a wide range of electrical goods.
For the Complainant, the manufacture and sale of Electronic Point of Sale (EPOS) and Point of Sale (POS) equipment forms a significant part of the Complainant’s business.
The Respondent is a director of PanaEpos Limited. That company is stated in the Complaint as having the same registered office address as the address of the Complainant but in fact, although the registered office address of the company is in the same village, North Walsham, it is different.
The Disputed Domain Names were registered by the Respondent on August 9, 2007.
The Respondent has not responded but from the Complaint it can be stated that the Respondent acted until recently as a reseller of the Complainant’s products for the last ten years. The Complainant always dealt with the Respondent through his company, PanaEpos Limited. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has considerable goodwill and reputation in the SHARP trademarks and has unregistered rights in the trademarks SHARPEPOS and SHARPPOS and that the Disputed Domain Names are identical or confusingly similar to those trademarks. Each of the Disputed Domain Names incorporates the entirety of the SHARP registered trademarks held by Sharp Corporation and licensed to the Complainant. It cites the decision in Oki Data Americas Inc v. ASD, Inc,WIPO Case No. D2001-0903, in support of the proposition that a domain name wholly incorporating the Complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy, despite the addition of other words to such marks.
The Complainant also avers that the term “Epos“, incorporated as a suffix in each of the Disputed Domain Names, is merely a descriptive term, being an acronym of “Electronic Point of Sale“. The Complainant points to the similarity between the website operated by the Complainant and the Complainant’s distinctive trade livery (being a red and white colour scheme). The Complainant accordingly submits that the Disputed Domain Names are identical or confusingly similar to the SHARP registered trademarks of Sharp Corporation and the Complainant’s unregistered rights in the trademarks SHARPEPOS and SHARPPOS and that a reasonable Internet user would be confused as to the ownership of the website at “www.” and would assume that each of the Disputed Domain Names is operated by the Complainant or one of their group companies.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant states that there is no evidence to suggest that the Respondent has at any time used the Disputed Domain Names in connection with a bona fide offering of goods or services, has not been commonly known by the Disputed Domain Names and has not made any legitimate noncommercial or fair use of the Disputed Domain Names. In fact, the Complainant submits, the terms of the now terminated reseller agreement between the Complainant and the Respondent’s company, PanaEpos Limited were such that all intellectual property rights relating to the goods or services supplied under the reseller agreement were retained by the Complainant and that the Disputed Domain Names were registered by the Respondent without any authority at any point.
The websites at the Disputed Domain Names and redirect to the website at , which features various mention of products sold under the SHARP trademarks in which the Complainant has rights. The Complainant recognizes that the Respondent is providing an offering of goods and services from the website at the Disputed Domain Name but that this fails to disclose even the former reseller relationship with the Complainant. It was stated at “www. “ Sharp-Epos a division of PanaEpos Limited. The Respondent’s use of the SHARP trademarks is a dishonest use which takes unfair advantage of or is detrimental to the distinctive character of the SHARP registered trademarks of which the Complainant is the licencee.
The Complainant submits that the Disputed Domain Names were registered and are being used in bad faith. There were exchanges between the Complainant and the Respondent during 2009 and 2010, during which the Respondent suggested that the Complainant should purchase the Disputed Domain Names for £105,000, being three times the annual income of the site at “www.”. The Complainant submits that this shows that Respondent had registered the Disputed Domain Names primarily for the purpose of selling the Disputed Domain Names to the Complainant for valuable consideration.
The Complainant further states that the Respondent has registered the Disputed Domain Names as part of pattern of conduct with certain “.” domains to prevent the Complainant from registering incorporating the Complainant’s registered and unregistered marks. It says that the Respondent’s position as a reseller of the Complainant ensured that the Respondent was fully aware of the registered and unregistered rights of the Complainant.
The Complainant requests that the Disputed Domain Names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts the Complainant’s submissions that the Disputed Domain Names are identical or confusingly similar to the SHARP trademarks in which the Complainant has rights. Those trademarks are in two categories. The SHARP trademarks of Sharp Corporation is the first. The Complainant is the licensee of these and this is sufficient to give it rights. The addition of the descriptive term “epos“ makes no difference, as has been held by many Panels. However, in this case, the Complainant is itself the proprietor of the (European) Community Trademark SHARPEPOS which is even closer to the Disputed Domain Names and is absolutely identical apart from the hyphen between the word “Sharp“ and the word “Epos“. B. Rights or Legitimate Interests
The Panel also accepts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has not been commonly known by the Disputed Domain Names and is not making legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the reputation of the SHARP trademarks and the SHARPEPOS trademark. The websites at the Disputed Domain Names and redirect to the website at , which features various mention of products sold under the SHARP trademarks in which the Complainant has rights, as well as products of the Complainant’s competitor. The Respondent was a reseller of the Complainant’s products. The Complainant has made assertions in detail how the use of the disputed domain names does not constitute a bona fide offering of goods or services as it does not satisfy the criteria for resellers, as set out in the case of Oki Data Americas, supra. The Panel agrees with the Complainant’s submissions that the Complainant has not, contractually or otherwise, authorized the Respondent to use the SHARP trademarks and the Panel finds on the current record that such use cannot in the circumstances of this case constitute a bona fide offering of goods or services. C. Registered and Used in Bad Faith
The Disputed Domain Names have been offered to the Complainant by the Respondent for sale. The price was £105,000 or three times the annual revenue apparently generated by the websites at the three Disputed Domain Names and far in excess of any out-of-pocket costs directly related to the Disputed Domain Names.
Such revenue also confirms that the Respondent has, by using the Disputed Domain Names, attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SHARP and SHARPEPOS trademarks in which the Complainant has rights. The Panel accepts that the Respondent’s previous role as a reseller of the Complainant means that it is currently and was at the time of registration of the Disputed Domain Names aware of the SHARP and SHARPEPOS trademarks in which the Complainant has rights.
Accordingly, the Panel finds, on balance, that the Disputed Domain Names have been registered and are being 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 Disputed Domain Names , and be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Dated: January 10, 2011
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