Complainant is Autogrill Retail UK Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by A.A.Thornton & Co, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”).
Respondent is Hongjun Technology Ltd. / John Li of Mahe, Seychelles. 2. The Domain Name and Registrar
The disputed domain name (the”Domain Name”) is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2011. On that same day, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On July 14, 2011, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 25, 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
Complainant owns the following marks: United Kingdom Trademark Registration No. 2,535,949 (issued August 27, 2010) for WORLD DUTY FREE (“the WORLD DUTY FREE Mark” or “the Mark”); and Community Trademark Registration No. 8,756,413 (issued August 24, 2010) for WORLD DUTY FREE WDF and design. Complainant owns gTLD’s incorporating the WORLD DUTY FREE Mark that direct Internet users to its website, including , , , and .
WORLD DUTY FREE has been the United Kingdom’s leading duty free brand since it was founded in 1997. Complainant offers over 17,000 products in its WORLD DUTY FREE branded stores that are located in all major United Kingdom airports including the fourth busiest airport in the world, Heathrow, which has a store in each of its terminals.
Respondent registered the Domain Name on December 13, 2010. The website with which the Domain Name is associated (Respondent’s website), has been offering for sale various goods including shoes, handbags, perfumes and cigarettes at duty free prices. On the homepage, it also uses an image of Complainant’s WORLD DUTY FREE store at Heathrow airport in Terminal 5. 5. Parties’ Contentions A. Complainant
The Domain Name consists of the trademark WORLD DUTY FREE in which Complainant owns rights by virtue of its United Kingdom and Community trademark registrations. Both registrations pre-date the date on which Respondent registered the Domain Name. The Domain Name and Complainant’s Mark (WORLD DUTY FREE) are almost identical. Adding the hyphen to Complainant’s Mark is not sufficient to prevent the Domain Name from being confusingly similar to the Mark.
Complainant also has a Community trademark registration for the mark WORLD DUTY FREE that incorporates a figurative element. The word element is the dominant and distinctive part of this registration and so the figurative element does not need to be considered in assessing confusing similarity. Thus, the Community trademark registration is identical or at least confusingly similar to the Domain Name.
Respondent has no rights or legitimate interests in the Domain Name. Complainant sent Respondent an email notice of its trademark rights on May 13, 2011 in relation to the Domain Name. Respondent failed to respond to the notice. By virtue of its trademark registrations for the WORLD DUTY FREE Mark (alone and with a figurative element), Complainant holds exclusive rights to the mark WORLD DUTY FREE. The Mark is not a commonly used term and is recognized by the public as Complainant’s trademark (a search using the Google search engine shows that out of the first 50 results, 43 refer to Complainant’s brand). Respondent’s registration of the Domain Name is primarily an attempt to catch Internet users searching for goods using Complainant’s trademark. Respondent’s website appears to offer for sale various goods including shoes, handbags, perfumes and cigarettes at duty free prices. It also uses an image of Complainant’s WORLD DUTY FREE store at Heathrow Terminal 5 on the homepage. Using that photo is an attempt to benefit from the investment Complainant has made in the brand and the reputation built up with the public. Using this image is itself a clear indication Respondent is acting in bad faith. Respondent does not have a relationship with or permission from Complainant to use the WORLD DUTY FREE Mark or images of its store. There is no evidence that Respondent is commonly known by the name WORLD DUTY FREE. It seems clear from the content of the website that Respondent is using the Domain Name with the intent to misleadingly divert consumers by creating an impression that the website belongs or is associated with Complainant.
Respondent registered and is using the Domain Name in bad faith. Respondent registered the Domain Name in December 2010 at which time Respondent would clearly have been aware of Complainant’s Mark as it was first used in 1997. Using an image of Complainant’s WORLD DUTY FREE store at Heathrow Terminal 5 on Respondent’s website shows that Respondent was and is aware of Complainant’s Mark and services and that he is using the Domain Name in bad faith. By adding a hyphen to Complainant’s mark, Respondent was attempting to register a domain name that was as similar as possible to Complainant’s Mark to take advantage of customers looking for Complainant’s website and to prevent Complainant from reflecting its trademark in a corresponding domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) Respondent’s 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) Respondent’s Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights.
The Panel finds that Complainant satisfies this element by virtue of its United Kingdom registration for the WORLD DUTY FREE Mark. As stated in the discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), the consensus view is: “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”.
The Panel further finds that the Domain Name is confusingly similar if not identical to Complainant’s WORLD DUTY FREE Mark. Respondent has taken the Mark in its entirety and merely added a hyphen between the words “world” and “duty”, combined the words “duty” and “free” into one word and added ”.com”. The addition of the generic top-level domain (gTLD) ".com" is not a distinguishing element insofar as use of a gTLD is required, necessary and functional to indicate use of a name on the Internet. Similarly, adding a hyphen and combining the words “duty” and “free” do not distinguish the Domain Name from the Mark. The omission of a space between words and the addition of a hyphen are considered typosquatting because the Domain Name is likely to create confusion due to its visual similarity with the WORLD DUTY FREE Mark. See, e.g., Harrods Limited v. Mike Anderson Consultants,WIPO Case No. D2003-0813; VeriSign Inc. v. Bing Glu / G Design,WIPO Case No. D2007-0421.
The Panel therefore finds that Complainant satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its Mark for any purpose including in the Domain Name. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261) this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See the discussion following Question 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?”); Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is 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.
Respondent has provided no evidence to carry its burden, for example, that he was commonly known by the Domain Name or that before any notice of the dispute, Respondent used or prepared to use the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services. Rather, a review of Respondent’s website reveals that he has been using the Domain Name to promote an online business that he touts on the website as “The largest Duty Free providing quick shopping at very low prices and easy to order.” Respondent has been offering for sale the kinds of goods that Complainant offers on its website and in its airport terminal stores (e.g., fragrances, sun care, tobacco) while using a photograph of one of Complainant’s stores in the Heathrow airport at terminal 5. By using a confusingly similar Domain Name in this manner, the Panel is left to conclude from the evidence of record that Respondent’s purpose is not a legitimate noncommercial or fair use of the Domain Name but, rather, to capitalize on the goodwill associated with Complainant’s Mark to misleadingly divert consumers to Respondent’s website.
The Panel therefore finds that Complainant satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name by Respondent in bad faith:
“(i) circumstances indicating that you 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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.”
Complainant claims that its rights extend back to 1997, but there is insufficient evidence in the record to support such a claim. Notwithstanding that, there is evidence in the record that persuades the Panel Respondent knew of Complainant’s rights in the Mark when he registered the Domain Name. As an initial matter, Complainant’s United Kingdom Trademark Registration No. 2,535,949 for WORLD DUTY FREE and its Community Trademark Registration No. 8,756,413 for WORLD DUTY FREE WDF and design both pre-date Respondents’ registration date for the Domain Name. Furthermore, Respondent adopted Complainant’s registered Mark in its entirety with insignificant changes to use on a competitive website. And by using a photo of one of Complainant’s airport stores on Respondent’s website (to sell competitive duty free goods), Respondent would have had to be aware of Complainant and Complainant’s rights in the WORLD DUTY FREE Mark (which mark was also caught in the photo).
The Panel is also persuaded that Respondent has been using the Mark in bad faith. The undisputed facts show that Respondent has been using a domain name that is confusingly similar, if not identical, to Complainant’s Mark and that Respondent has no legitimate interest in the Domain Name other than using it to attract Internet users to its website, which sells duty free goods in competition with Complainant. Using the photograph of Complainant’s business is further evidence of Respondent’s intentional behavior ( see paragraph 4(b)(iv) of the Policy: “to attract, for commercial gain, Internet users to your [Respondent’s] website …, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent’s] website … or of a product or service on your website …”). Furthermore, Respondent’s failure to comply with or even respond to Complainant’s correspondence in May 2010 (alleging infringing activity and requesting Respondent cease it) is further evidence of Respondent’s bad faith use.
The Panel therefore finds that Complainant satisfied paragraph 4(a)(iii) of the Policy. 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 Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Dated: September 5, 2011
Full & Egal Universal Law Academy