The Complainant is Rullion Limited of Altrincham, Cheshire, United Kingdom of Great Britain and Northern Ireland, represented by Eversheds, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Michael Brown of Oslo, Norway. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2012. On December 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2012, 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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 16, 2013. 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.
On January 17, 2013, the Complainant requested to include an additional domain name to the Complaint and filed an amended Complaint. Complainant had previously informed the Center by email of January 11, 2013 that, after the filing of this proceeding, it came to the attention of the Complainant that a further “recent domain name registration” was made by the same Respondent, which was said to resolve to a web page to which the first disputed domain name used to resolve. The Complainant sought the Center’s advice as to whether the new domain name registration could be added for adjudication to the case. On January 11, 2013, the Center replied that the Rules do not explicitly provide for a Complaint to be amended, after the commencement of proceedings, to include additional domain names. Accordingly, the Center informed the Complainant that it is for the Panel to determine whether it will accept any request to include additional domain names to the Complaint. 4. Factual Background
The Complainant is a recruitment agency which operates in the United Kingdom. The Complainant’s group is divided into five sub-divisions, all of which trade by reference to the Complainant’s RULLION brand. The Complainant shows to be the holder of following registered trademarks:
- RULLION RULLION RULLION (stylized word), registered on August 24, 2001 with the UKIPO under number 2264232 in Class 35;
- RULLION (stylized word), registered on March 09, 2012 with the UKIPO under number 2603174 in Class 35.
The Complainant trades through its principal website, accessible through .
The disputed domain name was registered on September 21, 2012. The Respondent linked the disputed domain name to a virtually identical copy of the Complainant’s website at “www.”. On November 14, 2012 the Complainant’s legal representatives sent cease and desist letters to the Respondent and to the Respondent’s domain host. 5. Parties’ Contentions A. Complainant
The Complainant considers the disputed domain name to be confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate non-commercial use, as the Respondent was making fraudulent use of the disputed domain name. Also, the Respondent has not been commonly known by the disputed domain name, according to the Complainant.
Finally, the Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary issue
The first issue, of a procedural nature, is the Complainant’s application to amend the Complaint to add an additional domain name registered by the Respondent after this administrative proceeding had commenced. The Complainant applied to amend its Complaint on January 11, 2013 to include , allegedly registered by the Respondent on November 23, 2012. On January 17, 2013, the Complainant filed an amended Complaint. The application from the Complainant to amend its Complaint was received after registrar verification, notification of the Respondent, and commencement of the proceeding, and after the expiration of the due date for the Response.
As the Center informed the Complainant, the Rules do not provide for a complaint to be amended after the commencement of the proceeding to include additional domain names. The discretion to permit or deny the addition of additional domain names after filing of a complaint is usually based upon one or more of the various provisions in paragraph 10 of the Rules with respect to the general powers and obligations of the panel to “conduct the administrative proceeding in such manner as it considers appropriate”, to ensure “that each Party is given a fair opportunity to present its case”, to ensure “that the administrative proceeding takes place with due expedition”, and to “decide a request by a Party to consolidate multiple domain name disputes”. The Rules 10(a), (b), (c) and (e). See, e.g., Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547 (“The decision of a Panel as to whether to allow the amendment of a Complaint to add further domain names must be made in accordance with paragraph 10 of the [Rules]”).
Some UDRP panelists have permitted an unsolicited amendment of the Complaint to add claims for transfer of additional domain names, depending upon the circumstances of the case, and in particular upon the timing of the request for leave to amend. In Société Air France v. Spiral Matrix,WIPO Case No. D2005-1337, the panel permitted such an amendment when the complainant's request to add an additional domain name to the proceeding was made before appointment of the panel and transmission of the case file for review and decision. Other UDPR panelists denied the amendment of the complaint to add claims for transfer of additional domain names. For example, in Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a Creative Genius Domain Name Sales,WIPO Case No. D2001-0729, the panel denied an amendment to add a domain name because “it would cause substantial delay in the final resolution of this dispute.” The single panelist in that case noted that the Center would have to submit new registrar verifications and allow the respondent 20 days to respond to the amendment to the complaint, and expressed concern about procedural difficulties and prejudice to the respondent's right under the Rules to choose a three member panel with respect to resolution of the dispute over the additional domain name. The panelist suggested, however, that “[h]ad this request been made shortly after the filing of the initial complaint, then the amendment likely would have been acceptable, as it would have caused neither prejudice nor delay.” Id.
In the Panel’s view, accepting the request to add an additional domain name at a late stage in the proceedings would cause substantial delay in the proceedings and, more importantly, would prejudice to the Respondent's right under the Rules to choose a three member panel with respect to resolution of the dispute over the additional domain name. The fact that a respondent may not have replied to the contentions in relation to a first domain name does not imply that the respondent has automatically waived its right to respond in relation to an additional domain name. Furthermore, as indicated in Société Air France v. Kristin Hirsch, Hirsch Company,WIPO Case No. D2008-1213, filing an amendment in a late stage of the case would be no faster or more efficient for the complainant than filing a complaint in a new case, as the Center in either event would be required to recommence the case and repeat for the new domain name all the procedural steps outlined above already taken for the initial domain name claim. Repeating this process could take several weeks of additional work and duplicative costs for the Center without any provision for additional administrative fees.
In the instant case, the request to add an additional domain name was not made soon after the filing of the Complaint, but only after the expiration of the due date for the Response. As the request involved a domain name that was, according to the Complainant, registered 10 days prior to the filing of the Complaint, the request could have been included in the initial Complaint or, in any event, prior to the expiration of the due date for the Response.
For these reasons, the Panel denies the Complainant's request to amend the Complaint in the instant case to add an additional claim for relief with respect to a second domain name and will proceed to the merits of the case with respect to the disputed domain name. It remains, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.
With regard to the merits of the case, paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant is the holder of the RULLION trademark, which it is using for several decades, it is clearly established that there is a trademark in which the Complainant has rights.
The Panel considers the RULLION trademark to be identical to the disputed domain name. Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The consensus among UDRP panelists is that a complainant need only make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. As discussed below, the Complainant has adduced evidence sufficient to support a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights in the distinctive part of the disputed domain name (“RULLION”). The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant, and there are no indications of any connection between the Complainant and the Respondent. The Panel concludes that the Respondent is not “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” Policy, paragraph 4(c)(iii). The Respondent has registered the disputed domain name that is identical to the Complainant's brand name and has linked it to a website (“the Website”) containing a virtually exact copy of the content of Complainant’s website content accessible through . This can only be interpreted as a deliberate effort by the Respondent to make the Website look “genuine”. This may lead members of the public to believe that the disputed domain name is genuine and any emails and other communications associated with it originate from the Complainant, are legitimate and can be trusted. Such use of the disputed domain name is clearly not in accordance with honest and fair practices and does not indicate that any interest the Respondent has in the disputed domain name is legitimate. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.
In the instant case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the disputed domain name. This is shown by the fact that the disputed domain name is entirely composed of the RULLION trademark in its entirety and that the website that used to be linked to the disputed domain name is a virtually exact copy of the Complainant’s website. Hence, it is apparent that the Respondent had the Complainant in mind when registering the disputed domain name (see Flybe Group PLC v Robb Dobin, ,WIPO Case No. D2011-1537).
Furthermore, it is inconceivable that the Respondent linked the disputed domain name to a virtually exact copy of the Complainant’s website for any other reason apart from intentionally attempting to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location. The fact that the disputed domain name is subsequently not resolving or that it was subsequently linked to a parked page is of no relevance.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 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.
Flip Jan Claude Petillion
Sole Panelist
Date: January 30, 2013
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