The Complainant is Dyson Limited of Wiltshire, United Kingdom of Great Britain and Northern Ireland, represented by Wragge & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Wilson Blues of Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 16, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 16, 2011, GoD, 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 September 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on October 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
The Complainant is part of a group of companies which operates worldwide and is engaged in the design, manufacture and sale of domestic appliances including vacuum cleaners, hand dryers and fans. The group as a whole trades in more than 50 countries with 80% of its products being sold outside the United Kingdom. The Complainant’s Directors Report and Financial Statements for the year ended December 31, 2009 was submitted in evidence and the Complainant pointed out it achieved a turnover in 2009 of GBP 184.3 million and a profit in 2009 of GBP 24.2 million.
A range of fans under the trade mark AIR MULTIPLIER (“AIR MULTIPLIER fans”) was launched by the Complainant on October 12, 2009. Since then, the Complainant has advertised the range through various media channels including newspapers, magazines and television channels. The Complainant claims to have sold over 500,000 AIR MULTIPLIER fans worldwide. It asserts that as a result of the extensive advertising and use, the trade mark AIR MULTIPLIER has come to denote a product originating from the Complainant. The global advertising expenditure of the Dyson group of companies which is attributable to AIR MULTIPLIER fans is claimed to be approximately GBP 25 million as at the time of the lodgment of the Complaint.
The Complainant submitted evidence of trademark registrations for AIR MULTIPLIER, namely Community trade mark No. 008689391, United States of America trade mark No. 3930474, and Japan trade mark No. 5357533. These predate the date the disputed domain name was registered (i.e. July 4, 2011).
The Complainant furnished extracts from the website to which the disputed domain name resolves and submitted that, whilst the impression given by the Respondent’s website is that at least some of the products being offered for sale are the Complainant’s products (the Complainant’s name and trade marks are used throughout the website), the Complainant believes such products to be counterfeit: the prices are not representative of the Complainant’s products, and the Complainant’s trade marks are not affixed to the products in the ordinary positions. Other products offered for sale on the website (e.g. heart-shaped fans) are not produced by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits, firstly, that the disputed domain name is identical to its trade mark AIR MULTIPLIER in which it has rights. It contends that the AIR MULTIPLIER trade mark denotes exclusively the business of the Complainant as a result of extensive advertising. Furthermore, the Complainant contends that it is well established that the first and second level suffixes in a domain name should be ignored for the purposes of assessing whether it is identical or similar to a complainant’s trade mark. Consequently, as the only difference between the disputed domain name and the Complainant’s AIR MULTIPLIER trade mark is the addition of a hyphen, the disputed domain name can be considered to be identical to the Complainant’s AIR MULTIPLIER trade mark.
The Complainant submits, secondly, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The absence of rights and legitimate interests is supported by the following facts:
(i) the Complainant has not licensed or otherwise permitted the Respondent to use its AIR MULTIPLIER trade mark or to register any domain name incorporating the said trade mark;
(ii) the Respondent has no relationship with the Complainant, nor permission from the latter to use any of its trade marks;
(iii) whilst the Respondent is using the disputed domain name in connection with the offering goods, the use has not been bona fide;
(iv) the Respondent is using the disputed domain name deliberately to seek to pass itself off as the Complainant or as authorized by the Complainant, so as to benefit from the Complainant’s substantial goodwill and reputation;
(v) the Respondent has not been commonly known by the disputed domain name; and
(vi) the Respondent has no trade mark or service mark rights in the words “air multiplier”, nor has it used “air multiplier” as part of a trade mark or service mark.
In relation to point (iii) above, the Complainant argues that even if some of the products being offered for sale are those of the Complainant, that in itself does not automatically include the right to use the Complainant’s trade mark as domain names, in the absence of a license agreement or other special circumstances. The Respondent need not use a domain name incorporating the trade mark AIR MULTIPLIER for it to carry on its business. The fact that the disputed domain name incorporating the trade mark AIR MULTIPLIER has deliberately been chosen in circumstances where this was not necessary suggests bad faith.
The Complainant submits, thirdly, that the Respondent has registered and is using the disputed domain name in bad faith. The bases are as follows:
1. The Respondent adopted the disputed domain name which is identical to the Complainant’s AIR MULTIPLIER trade mark registrations, which makes it inherently deceptive as to the source of the website;
2. the Respondent deliberately chose to mimic the Complainant’s trading style: (a) the look and feel of the Respondent’s website are very similar to that of the Complainant’s; (b) the use and presentation on the Respondent’s website of images of the Respondent’s products are very similar to the use and presentation of the images found on the Complainant’s website. This is evidence that the Respondent cannot have acted innocently and must have known of the Complainant’s trade mark AIR MULTIPLIER; and (c) the font chosen by the Respondent for the trade mark AIR MULTIPLIER is very similar to the specific font used by the Complainant;
3. a substantial number of the images on the Respondent’s website are artistic works owned by the Complainant;
4. fans offered for sale by the Respondent appear to be unauthorized copies of the Complainant’s products;
5. the Respondent has chosen to keep its identity anonymous: the website does not include any contact details, despite a “contact us” link on its website, and the Complainant’s WhoIs details appear to have been falsified (e.g. the street address is reflected as “China”); and
6. the incorporation of the AIR MULTIPLIER trade mark within the disputed domain name suggests that there is a connection between the Complainant and the Respondent which is not the case. The disputed domain name is therefore inherently deceptive, and it can be inferred that it was selected for the purpose of misleading and redirecting the Complainant’s customers to the Respondent’s website. The Respondent’s use of the disputed domain name is therefore disruptive of the Complainant’s business.
Further, the Complainant submits that the Respondent must have known of the Complainant’s rights in view of the reputation of the Complainant and its AIR MULTIPLIER trade mark. The only reasons why the Respondent registered the disputed domain name must have been for the primary purpose of disrupting the business of the Complainant (paragraph 4(b)(iii) of the Policy) and/or to use the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (paragraph 4(b)(iv) of the Policy). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has rights in the trade mark AIR MULTIPLIER. It also finds, in accordance with previous UDRP panel decisions, that for the purposes of paragraph 4(a) of the Policy, the disputed domain name is identical to the AIR MULTIPLIER trade mark. The hyphen and the gTLD “.org” in the disputed domain name are not distinctive elements and do not remove the identity with the Complainant’s trade mark.
The Panel therefore concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name, which the Respondent has failed to rebut. The Panel has considered paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) in coming to its finding that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
On the assertion made by the Complainant that the products offered by the Respondent on its website are not genuine products, the Panel is unable to make a conclusive finding in this regard as there is a lack of unequivocal and/or tangible evidence to this effect. Nevertheless, the Panel is of the view that the lack of clear evidence in this regard does not alter the fact that following the establishment of a prima facie case by the Complainant, the burden is then on the Respondent to show that it has a right or legitimate interest with respect to the disputed domain name. The Panel agrees with the Complainant’s argument that even if the goods offered for sale on the Respondent’s website were genuine, that does not automatically extend a right to the Respondent to use the Complainant’s trade mark, without consent, within the disputed domain name.
The Panel therefore concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, the owner of the trade mark, or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the Complainant, the owner of the trade mark, from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Panel is of the view that the content and “look and feel” of the Respondent’s website are such that it provides ample evidence from which one can infer that the Respondent was well aware of the Complainant, its AIR MULTIPLIER trade mark, and the products sold by the Complainant under the AIR MULTIPLIER trade mark. The Panel therefore does not have difficulty finding that the Respondent’s intention of registration and use of the disputed domain name was to “attract, for commercial gain, Internet users to its website […] by creating a likelihood of confusion with the Complainant’s [AIR MULTIPLIER] mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website”.
The Panel also draws a negative inference from the Respondent’s default in these proceedings. In the absence of contrary evidence from the Respondent to refute the Complainant’s assertions and evidence submitted, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Francine Tan
Sole Panelist
Dated: November 7, 2011
Full & Egal Universal Law Academy