The Complainant is Masternaut SA, Masternaut UK Limited of Yorkshire, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Insignia IP Services Ltd, U.K.
The Respondent is Blue Tree Services Ltd of Suffolk, U.K. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2011, the Registrar 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 December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed David Perkins as the sole panelist in this matter on January 12, 2012. 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 4.A The Complainants
4.A.1 The Complainants are Masternaut SA and Masternaught UK Ltd (“MUK”).
Masternaut SA
4.A.2 Masternaut SA, according to the Complaint, is Europe’s leading mobile resource management provider. The Company specialises in Vehicle & Asset Tracking, Mobile Workforce Applications and Microsoft Dynamics CRM and ERP Software.
4.A.3 Masternaut SA is the proprietor of Community Trademark registration No. 003994969 for the word mark MASTERNAUT in Classes 9, 12, 35, 37 to 39, 42 and 45. The application was filed on January 3, 2006 and registered on December 2, 2011.
4.A.4 Masternaut SA is also the proprietor of the domain name , which was registered on October 3, 2001.
MUK
4.A.5 Since at least April 2004 MUK has been the distributor and licensee of Masternaut SA for the United Kingdom. As evidence of its reputation, the Complaint provides brief particulars of the awards and accolades achieved by MUK.
4.A.6 MUK is the proprietor of the domain name , which was registered on January 18, 2005. 4.B The Respondents
4.B.1 In the absence of a Response, the following information relating to the Respondents is derived from the Complaint.
Blue Tree Services Ltd
4.B.2 The Company was incorporated on July 20, 2005. It is the registrant of the disputed domain name , which was registered on December 4, 2009.
4.B.3 The disputed domain name resolved to the website of Blue Tree Services at which it was offering GPS tracking services, namely personal trackers, asset tracker, phone tracker, vehicle tracker and lone worker tracking. The principal activity of the company is stated to be “software and electronic hardware used for tracking vehicles and people” (Directors’ Report for the 12 months to July 31, 2010).
Michael Smuts
4.B.4 Mr. Smuts is described as a co-founder of Blue Tree Services Ltd and the holder of 27% of the registered shares of that company (Directors’ Report for the 12 months to 31 July 2010 and Annual Return dated 20 July 2010).
4.B.5 Mr. Smuts is the administrative and technical contact for the disputed domain name.
4.C The correspondence between the Complainants and the Respondents
4.C.1 On July 21, 2011 counsel for the Complainants addressed a cease and desist letter to Blue Tree Services Ltd. That letter was sent the same day by email to Mr. Smuts. By email also dated June 21, 2011 Mr. Smuts responded in the following terms:
“It appears that the domain name has had a forwarder placed on it. This should not have happened and I have made a request to the hosting company to remove it.”
4.C.2 By email dated July 6, 2011 a Ms. Neil, a Director of Blue Tree Services Ltd, stated that the disputed domain name was dormant and went on to say:
“We have not intended and do not intend, to use this domain name, however we can’t change the fact that we own it. This is as far as we will go in this matter unless directed by the Court.”
4.C.3 By email dated August 15, 2011 Ms Neil characterised the Complainants’ demand for transfer of the disputed domain name as “A civil version of demanding money with menaces”. She then went
“We will be happy to sell the domain name to your client should they feel this is an important issue for them.” 5. Parties’ Contentions 5.A Complainants
5.A.1 Identical or Confusingly Similar
The Complainants assert that the disputed domain name and the MASTERNAUT trademark “are clearly very closely similar …”.
5.A.2 Rights or Legitimate Interests
The Complainants rely on the close similarity of the disputed domain name and their registered Community Trademark MASTERNAUT, coupled with the assertion that since at least February 2011 the disputed domain name had resolved to a website where the GPS tracking services of Blue Tree Services Ltd were being promoted and offered. This, the Complainants say, was clearly calculated to confuse their potential customers and to damage their business by diverting customers to that website. That, the Complainants say, amounted to using the disputed domain name as an instrument of fraud. The Complainants also refer to the correspondence summarised in paragraph 4C above and to the fact that Blue Tree Services Ltd has, notwithstanding that correspondence, indicated its intention to renew the registration of the disputed domain due on the due date for renewal of December 4, 2011.
5.A.3 Registered and Used in Bad Faith
The Complainants rely upon the submissions made under paragraph 5.A.2 above. 5.B Respondents
As noted, no Response has been received from the Respondents. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. 6.A Identical or Confusingly Similar
6.A.1 Masternaut SA is the proprietor of the Community Trademark MASTERNAUT registered with effect from January 3, 2006 and registrant of the domain name registered on October 3, 2001. MUK is the registrant of the domain name registered on January 18, 2005.
6.A.2 The disputed domain name, which was registered on December 4, 2009 is phonetically identical to the MASTERNAUT trademark. Further, the addition to that trademark of the letters “GH” to give the spelling MASTERNAUGHT does not avoid the close similarity of the disputed domain name with the MASTERNAUT trademark.
6.A.3 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. 6.B Rights or Legitimate Interests
6.B.1 Neither of the Respondents are licensed or otherwise authorised to use the MASTERNAUT trademark.
6.B.2 On the evidence summarised in paragraph 5.A.2 above, it is clear that the Respondent, Blue Tree Services Ltd, has used the disputed domain name for commercial gain to misleadingly divert consumers to its website, where it offered the same goods and services - namely, GPS tracking - as those offered by the Complainants under the MASTERNAUT trademark.
6.B.3 It is also to be noted that the Respondents by their conduct in response to the cease and desist letter of June 21, 2011 implicitly acknowledged their lack of rights to or legitimate interests in the disputed domain name.
6.B.4 Accordingly, the Respondents can have no rights to and legitimate interests in the disputed domain name and the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy. 6.C Registered and Used in Bad Faith
6.C.1 It is clear from the evidence submitted in the Complaint that the Complainant, Masternaut SA, is a leading producer of GPS equipment which has been sold in the United Kingdom since at least 2004 by its Distributor, MUK. Given the use to which the disputed domain name has been put and the prior rights to and use by the Complainants of its MASTERNAUT trademark, the Panel concludes that the disputed domain name was registered in bad faith.
6.C.2 It is equally clear to the Panel that, by using the disputed domain name - which is confusingly similar to the MASTERNAUT trademark of Masternaut SA - to offer precisely the same goods as those made and sold by the Complainants, Blue Tree Services Ltd has attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainants’ business and the MASTERNAUT trademark. Such use is bad faith use of the type identified in paragraph 4(b)(iv) of the Policy.
6.C.3 Although it appears from the correspondence summarised in paragraph 4.C above that the disputed domain name no longer resolves to the Blue Tree Services Ltd website, given the competing business of that Company one cannot conceive of any plausible use of the disputed domain name by the Respondents that would not be legitimate, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Indeed, the Respondents’ action in discontinuing use of the disputed domain name to link to the Blue Tree Services website after receipt of the Complainants’ cease and desist letter is further evidence of their recognition of the bad faith registration and use of that domain name. 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, Masternaut SA.
David Perkins
Sole Panelist
Dated: January 25, 2012
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