The Complainant is Dimplex (UK) Limited of Southampton United Kingdom of Great Britain and Northern Ireland, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Matthew Shaulis of Brookings, Oregon, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2011. On June 6, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 9, 2011, Wild West Domains, 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” 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 June 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2011. No formal Response was filed however an email was received on July 11, 2011 from the Respondent stating the following:
“To Whom It May Concern:
As the webmaster of D, I find this process to be a huge waste of time. As soon as I received notification that the site in question was infringing on the trademarked name of Dimplex, I immediately took the site offline. I also gave my permission for any necessary transfer of the domain name. In response I was told to transfer it, which I have no clue how to do, and made Eric Macramella aware of...The response I was given, was to call my host. The domain registration expires on Aug 2, 2011...So in my opinion these proceedings are not necessary and extremely frivolous due to the fact that I will not be renewing this domain registration.
Sincerely,
Matthew Shaulis
Webmaster
D”
On July 13, 2011 the Center sent an email to the parties regarding a possible suspension of the proceedings. On July 15, 2011 the Complainant informed the Center that it wished to proceed with the case as it had encountered “great difficulty securing the cooperation of the Respondent”.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on August 4, 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
According to the Complaint (paragraphs 14-16), the Complainant (“Dimplex”) is a manufacturer in the field of electric heating, offering a wide range of residential, commercial and industrial products and, in particular, electric heating products, such as heaters, stoves, fireplaces, specialty fireplaces and heating products. In this regard, the Complainant alleges that it is the world’s leading manufacturer of such products. Its North American manufacturing and distribution headquarter is in Cambridge, Ontario, Canada with a United States distribution facility located in Indianapolis, Indiana. It is further stated that there are Dimplex offices around the world, including in Canada, United States of America, France, Spain, Italy and Germany and that there is a worldwide workforce of over 8,500 with sales in excess of USD 3.0 billion.
There is also a significant Internet presence, with a website at “” (Exhibit 1). This contains extensive information on Dimplex and its products.
The following facts also appear undisputed.
According to the Complaint (paragraphs 19 and following), on August 2, 2010 and without the permission of the Complainant, the Respondent registered the disputed domain name (Exhibit 3). At this point, information about ownership of the domain name was concealed. However, the disputed domain name resolved to a website displaying various DIMPLEX products for sale, as well as with sponsored links to websites selling the goods of direct competitors of the Complainant, including Classic Flame, Napoleon, Duraflame and Uniflame (Exhibit 4: printout of a copy of the “www.” website as of February 2, 2011)
The Complainant then wrote to the Respondent on February 11, 2011, asserting its rights to the word “Dimplex” and objecting to the misleading use of this word by the Respondent, and requiring the transfer of the domain name to it (Exhibit 5). In email correspondence dated February 11, 2011, the Respondent agreed to transfer the disputed domain name to the Complainant. The email correspondence was signed “Matthew Shaulis”. In its email, the Respondent indicated as follows: “I apologize for the inconvenience and will take the site down immediately. You have my permission to open the registration to be transferred to Dimplex if that is the required measure for this situation”.
Despite reminders, however, the Complainant alleges that the disputed domain name was never transferred to it, but it notes that, at some point between February 10 and March 23, 2011, the proxy service was disengaged revealing the Respondent as the owner of the disputed domain name (Exhibit 6, copy of the Registrant information dated March 23, 2011). Following this (date uncertain) (Exhibit 7, printout of copy of the current website),transfer of the disputed domain name has not occurred. Notwithstanding the email communication from the Respondent to the Center on July 11, 2011 (see above), it appears that no further steps have been taken to transfer the domain name and that the term of its registration has now come to an end (August 2, 2011). The Panel understands, however, that the disputed domain name is held in abeyance by the Wild West Domains, Inc. until the present proceeding is concluded. Further, the Complainant has indicated that it wishes the proceeding to continue. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the three principal requirements of paragraph 4(a) of the Policy have been made out.
As to paragraph 4(a)(i), the Complainant refers to its registered United States trade marks for the word DIMPLEX in respect of numerous goods and services, including various kinds of heaters (see printout in Exhibit 2). It then argues that the disputed domain name is confusingly similar, in that it incorporates the whole of the word “dimplex” and simply adds a descriptive suffix (”heater”), which increases, rather than diminishes, the risk of confusion. It refers in support to a number of previous UDRP panel decisions in which findings of confusing similarity have been made on similar facts: see, for example, Dimplex(UK) Limited v. Domains by Proxy, Inc. and Nigel Corry, Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759; Research In Motion Limited v. J,WIPO Case No. D2008-0758; Research In Motion Limited v. Domains by Proxy, Inc. and Kafiint,WIPO Case No. D2008-0164); Dimplex (UK) Limited v. Karen Duke,WIPO Case No. D2009-0935. It notes further that no regard is to be taken in the assessment of similarity of the “.org” suffix or the elimination of any spaces: see further Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services,WIPO Case No. D2008-0780).
As to paragraph 4(a)(ii), the Complainant argues that the use of a misleading name cannot be a bona fide use of the domain name and further that the linking of the website to the sites of competitors of the Complainant indicates that the Respondent has no rights or legitimate interests in the domain name. There is no indication that the Respondent has been carrying on business under the disputed domain name or that it has been making a fair, noncommercial use of it. Finally, there has been no permission or authorization sought for this use by the Respondent from the Complainant.
As to paragraph 4(a)(iii), the Complainant alleges that the Respondent has both registered and used the disputed domain name in bad faith, relying here on paragraph 4(b)(iii) and (iv). It argues that the Respondent has disrupted its business by posting links to the websites of competitors and has also sought to attract customers to its website for commercial gain by misleading them as to the connection of the Complainant with the website, for example, through some kind of sponsorship or other affiliation. It further alleges that the circumstances indicate that the Respondent must be taken to have had constructive knowledge of the Complainant’s trade marks at the time of registration of the disputed domain name, referring here to the notoriety of the Complainant’s trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions, apart from the email communication dated July 11, 2011, referred to above. The latter, however, does not meet any of the contentions in the Complaint concerning the application of the Policy, and, indeed, seems dismissive of any concerns on the part of the Complainant. Accordingly, the Panel intends to treat this as a proceeding where no formal Response has been received. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested. A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
As to the first of these requirements, the Complainant has shown that it has rights in a number of registered United States trade marks that consist of the word DIMPLEX and which cover a wide range o goods and services, including various kinds of heaters. While two of these are of relatively recent origin (registered in 2007 and 2009), the third in respect of electrical space heating appliances dates back to 1972, and all precede the registration of the disputed domain name by the Respondent.
As to the second of these requirements, there is no assertion by the Complainants that the disputed domain name is identical to its trade marks; rather, its argument is that there is confusing similarity. The Panel accepts this submission, in particular that such confusion is likely to arise because the disputed domain name begins with, and incorporates the whole of, the Complainant’s trade mark. This is the first thing that any customer will see when he or she encounters the disputed domain name. The Panel also accepts that the addition of the descriptive suffix “heaters” does little, if anything, to dispel the likelihood ofconfusing similarity arising; if anything, it increases this possibility on the basis that a customer will be led to think that this is the Complainant’s mark coupled with a direct reference to goods that it sells. The panel decisions cited by the Complainant are apposite here; likewise, the present Panel accepts that the addition of the “.org” suffix and the elimination of spaces in the domain name are to be disregarded in its assessment of confusing similarity.
The Panel therefore finds that the requirements under paragraph 4(a)(i) of the Policy are made out. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(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.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exists. In this regard, the matters referred to by the Complainant indicate that the Respondent is not making a legitimate use of the disputed domain name.
Thus, there is no evidence that the Respondent itself has been, or is, making a bona fide offering of its own goods or services under the disputed domain name: the only evidence before the Panel indicates that, for a period following registration, the Respondent’s disputed domain name resolved to a website displaying the Complainant’s own goods (various kinds of Dimplex heaters) as well as the products of various other competitors (Exhibit 4). This, then, indicates quite the opposite, namely that the Respondent was offering goods other than its own under the disputed domain name, and there is no other evidence pointing to a use of the disputed domain name in any other context by the Respondent in relation to its own goods or services or in its business. It is also clear that no license or authorization has been given by the Complainant to the Respondent to use the disputed domain name. Furthermore, there was no suggestion to be found in anything on the website to suggest that the Respondent’s use of the disputed domain name was simply by way of legitimate or fair comment (as, for example, in the case of a criticism site).
The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy are satisfied. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use.
In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint – the Panel is entitled to draw from such default such inferences, as it considers appropriate. So far as the email communication of July 11, 2011 is concerned, all that can be gleaned from this is that the Respondent was dismissive of the Complainant, while at the same time indicating that he did not intend to renew the registration. None of this speaks, one way or other, to the issue of bad faith arising at the time of registration or post-registration use.
In the present case, the circumstances referred to in paragraphs 4(b)(i) and (ii) are not present, and the Complainant presses its case only by reference to paragraphs 4(b)(iii) and (iv). As of the first of these, the use of the disputed domain name in relation to a website containing, among things, the products of competitors of the Complainant falls squarely within the circumstances outlined in paragraph 4(b)(iii) – this can have had no effect other than disrupting the Complainant’s business, and the Panel has no difficulty in inferring that this must have been not only the Respondent’s aim in establishing the website but in registering the disputed domain name in the first place. Indeed, in the absence of any explanation by the Respondent, it is difficult to conceive of any reasonable explanation behind the registration and use of the disputed domain name other than to cause disruption to the Complainant. As for paragraph 4(b)(iv), the likelihood of confusion to online users seems equally clear, given the incorporation of the Complainant’s trade mark in full and the addition of a descriptive suffix that referred directly to products sold by the Complainant.
As for the question of the Complainant’s knowledge and intention at the time of registration, enough has been said above to indicate that the Panel takes the view that it is highly likely that this was done in order to achieves the purposes of disruption and confusion which are apparent from the use actually made subsequently with respect to the related website. In other words, the registration was effected with the same purposes that underlaid the actual use that was made of the disputed domain name. It is therefore unnecessary for the Panel to make any specific finding as to any constructive knowledge of the Respondent that might have arisen by reason of the fact of the registration of the Complainants’ United States trade marks and the further fact that the Respondent is resident in that country. As a general matter, however, the Panel agrees that constructive knowledge can arise in such a case where the mark is on a national public register, the Respondent is within the same jurisdiction, and the mark is a well known one (as appears to be the case here).
Accordingly, the Panel finds that the requirements of registration and use of the disputed domain name in bad faith, as required under paragraph 4(a)(iii) of the Policy, have been made out. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Staniforth Ricketson
Sole Panelist
Dated: August 16, 2011
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