The Complainant is Mr. Price Group Limited of Durban, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Niche Marketing Inc., Carson Lim of Victoria, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On December 12, 2011, 1&1 Internet AG 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2012.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 24, 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
The Complainant is a South African clothing and homeware retailer which has used the mark MR PRICE since 1985 and MR PRICE HOME since 1988. It has registrations for these marks around the world.
The Respondent registered the Domain Name in January 2011 and it has been used to display sponsored hyperlinks to web sites of third parties including the Complainant's competitors. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant is a South African clothing and homeware retailer which has used the mark MR PRICE since 1985 and MR PRICE HOME since 1988. It has registrations for these marks around the world. It has 510 MR PRICE stores in Africa including 338 MR PRICE stores, 36 MR PRICE SPORT stores and 136 MR PRICE HOME stores. As such it has built up reputation and goodwill in its marks. It is celebrating its 25th anniversary this year.
The Complainant owns over 300 trade marks for or incorporating the MR PRICE and MR PRICE HOME marks in at least 34 countries and the European Community.
The Complainant has conducted business from “” for over a decade and owns which also points to its main site. It also has a tab on the web site at which it advertises its latest furniture ranges and owns .
The Domain Name wholly incorporates the Complainant's MR PRICE and MR PRICE HOME trade marks. The combination of the well known MR PRICE and MR PRICE HOME trade marks with the generic words "home" and "furniture" is not sufficient to distinguish the Domain Name from the Complainant's trade marks. The Domain Name is confusingly similar to the Complainant's MR PRICE and MR PRICE HOME trade marks.
The use of the MR PRICE and MR PRICE HOME trade marks would not be bona fide without the authorisation of the Complainant. The Complainant has not authorised the use of its trade marks by the Respondent. The Complainant established user and registered rights in its trade marks prior to the registration and use of the Domain Name. There is no evidence that the Respondent has ever been commonly known by the name MR PRICE or MR PRICE HOME or has any trade marks rights in the same. It has not used the marks in trade and so cannot have any user rights.
The Respondent used the Domain Name for a web site containing sponsored links to the Complainant's competitor's web sites and commercial websites of other third parties. This is not bona fide use.
The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent must have been aware of the existence of the Complainant's well known MR PRICE and MR PRICE HOME trade marks when the Domain Name was registered. They are not in common use as a trade or service mark in any industry anywhere in the world.
The first 100 hits on the Internet for the word MR PRICE are associated with the Complainant. This demonstrates that the MR PRICE mark is associated solely with the Complainant. There is no obvious reason why the Respondent chose to register a Domain Name that is almost identical with the Complainant's marks except to extort money from the Complainant.
The Respondent did not reply to the Complainant's cease and desist letter.
By using the Domain Name the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's trade marks as to the source or endorsement of the Respondent's web site or products or services on its site.
The Respondent has further registered the Domain Name to prevent the Complainant from reflecting its MR PRICE and MR PRICE HOME trade marks in a corresponding domain name which amounts to bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Apart from the “.com” suffix which is not taken into account for the purposes of the Policy, the Domain Name consist of the Complainant’s MR PRICE and MR PRICE HOME registered marks and the generic terms "home" and "furniture". The addition of the generic terms "home" and "furniture" does not serve to distinguish the Domain Name from the Complainant’s marks, but indeed compounds the likelihood of confusion between the Domain Name and the Complainant’s trade mark because the Complainant is in the home furniture business. The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trade marks MR PRICE and MR PRICE HOME and as such satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply to its favour) and does not appear to have any rights or legitimate interests in the Domain Name. The Complainant has indicated that it has not endorsed the Respondent in any way and the Respondent’s business has no obvious connection with the designation MR PRICE or MR PRICE HOME. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The references to home furniture on the web site linked to the Domain Name shows that the Respondent is aware of the Complainant and its business and by registering the Domain Name and using it for commercial purposes the Respondent is seeking to take advantage of the Complainant’s trade mark.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on [its] web site or location.” (Paragraph 4(b)(iv).
The Domain Name has been used to link to commercial sites competing with the Complainant’s business. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of its web site or products or services on its web site. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) 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 the Complainant.
Dawn Osborne
Sole Panelist
Dated: January 31, 2012
Full & Egal Universal Law Academy