The Complainants are SEB of Selongey, France and Groupe SEB UK Limited of Windsor, Berkshire, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Wilson & Berthelot, France.
The Respondent is Dimasoft Limited of North Shields, Tyne and Wear, United Kingdom, represented by Muckle LLP, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “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 February 6, 2013. On February 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 6, 2013, 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. On February 11, 2013, the Complainant filed an amendment to the Complaint.
The Center verified that the Complaint together with the amendment to 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 amendment to the Complaint, and the proceedings commenced on February 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2013. On February 12, 2013, the Respondent sent an email communication to the Center. The Response was filed with the Center on March 4, 2013.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 8, 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. 4. Factual Background
Although the Response contains a “blanket” denial of everything the Complainant says (see below) the following facts do not appear to be seriously disputed.
The Complainants are SEB, a French company and Groupe SEB UK Limited, an English company. Both companies are subsidiaries of SEB SA, holding company of Groupe SEB, a French Company which through its various subsidiaries manufactures and sells on a worldwide basis a range of household electrical equipment including under the TEFAL and ACTIFRY trade marks. The ACTIFRY products manufactured by SEB are distributed in the UK by Groupe SEB UK Limited. For present purposes nothing turns on the separate identities of the Complainants and they are referred to below simply as the “Complainants”.
The ACTIFRY trade mark was first filed in France under the National Number 063427999 on May 5, 2006. In the United Kingdom, it is protected via the Community Trade Mark Registration number 5410493 filed on October 10, 2006. It is also registered in various other countries. The Complainants own a number of domain names including, in relation to the UK, and .
In 2007, the Complainants launched in the UK what they say is a new and technically innovative deep fryer, with its own recipe book, under the ACTIFRY trade mark. The first sale in the UK was made in June 2007 to a retailer called Lakeland. From June 2007 to August 2008 (the date of registration of the Domain Name), the sales to Lakeland totalled 14,160 items, for a net billing of GBP 1,086,149.60. Since then the sales have continuously progressed in the UK and other countries.
The Domain Name was created on August 29, 2008. The Respondent is Dimasoft Limited which is a company whose business activity is creating and hosting Internet websites for others.
The Respondent has maintained a website located at the Domain Name (the “Respondent’s Website”). This at the present time comprises a total of eight pages which include three recipe pages containing recipes for, respectively, fried onion rings, beer battered tipati and fried chicken. Every page bears a footer which states “Copyright 2013 Actifry. All Rights Reserved”. There do not appear to be any “click-through” links or advertising material within any of these pages. 5. Parties’ Contentions A. Complainant
The Complainants say the Domain Name is identical to its registered trade mark ACTIFRY. The Complainants say that the Respondent has no rights or legitimate interests in the Domain Name. They say the Domain Name was registered and used in bad faith. They say the word “Actifry” clearly references its products and the timing of the registration and the original content of the Respondent’s Website (see below) shows the Respondents chose the Domain Name because of its association with the Complainants. They say the content of the Respondent’s Website misleads the public into believing it is associated with the Complainants and reflect badly on the Complainants as it is of poor quality and prevents the Complainants publishing their own much more comprehensive material at a website located at the Domain Name which the public would naturally think was that of the Complainants.
The Complainants say, and provide evidence to support this, that prior to February 2010 the content of the Respondent’s Website comprised images of the Complainants’ Actifry deep fryer and other associated material. They say this content was copies of the Complainants’ own advertising or promotional material. In February 2010 the Complainants sent a “cease and desist” letter to the Respondent. Shortly after this the content of the Respondent’s Website changed to a single page which referred to an “Actifry” recipe book with a text that said this was “coming soon”. At some stage thereafter the content changed to the present content. B. Respondent
The Respondent admits the Domain Name is identical to the Complainants’ registered trade mark ACTIFRY.
The Response contains a blanket denial that “The Respondent denies all the allegations that the Complainant has made.”
The following specific points are then made in the Response:
- There is no likelihood of confusion by the public as judged through the eyes of a reasonably well informed consumer.
- The Respondent’s Website does not seek to take trade away from the Complainants as it is “simply a cooking discussion forum whereby members of the general public can review and post recipes, comment and join in discussions”. The Respondent says this is a “free speech forum”.
- The Respondent made bona fide preparations to use the Domain Name for a website devoted to cooking recipes before it had notice of any dispute.
- The Respondent’s business is to create websites for others and it has never previously had any dispute about any domain name it has registered.
- The Respondent says its use is fair and not for commercial gain.
- At the time the Domain Name was registered, the trade mark ACTIFRY had only been launched in the UK fairly recently and the public were not fully aware of the Complainants’ product. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(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
The Panel finds that the Complainants have rights in the trade mark ACTIFRY. The Respondent admits that the Domain Name is identical to the Complainants’ trade mark and the Panel so finds. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
“Actifry” is a brand that the Complainant sells its products under. It is a made up word which has no other obvious meaning save in relation to the Complainant or its products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the 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 trade mark or service mark at issue.
The Respondent asserts that (i) and (iii) above apply in the present circumstances. This assertion merits careful scrutiny. The Respondent is legally represented and the Panel assumes the Response has been carefully drafted and sets out all the points the Respondent wishes to make in support of its case. The points made in the Response have been summarised above. What is instructive is that a number of points of obvious relevance have not been addressed in the Response. These are as follows:
- No explanation is given as to how or why the Respondent chose “actifry” as the Domain Name. It is not a word which has any meaning in the English language nor is it an obvious word to coin for a website devoted to recipes for fried food. The website at the Domain Name contains the heading “Actifry - deliciously healthy fried food recipes for active people” which might be thought to suggest that the name, if derived independently, was chosen as a combination of “acti” (short for “active”) and “fry” but no such argument is advanced in the Response, which is silent on this important issue.
- No explanation is given as to why the Respondent wished to set up a website devoted to fried cooking, which has no connection at all with its business. The only supposed reason is that it was to provide a forum for discussion (as to which see the next point) though no explanation is given of why it was the Respondent wanted to do this.
- The Response says that the Respondent is “simply attempting to offer a free speech / discussion forum where the public can post, review and discuss recipes”. However no explanation is given as to how this is intended to operate in circumstances where a visit to the Respondent’s Website shows there is no mechanism available allowing visitors to post material or engage in any kind of discussion.
- The Response is silent as to whether the Respondent had heard of the Complainant’s ACTIFRY trade mark at the time it selected the Domain Name. It does however say that “At the time the domain name was registered, the trade mark Actifry had only been launched in the UK fairly recently and the public were not fully aware of this product”. This wording conspicuously fails to state whether or not the Respondent itself was aware of the ACTIFRY trade mark – but the obvious inference to be drawn from this silence is that the Respondent was aware of the ACTIFRY trade mark at the time the Domain Name was registered.
- No explanation is given as to the timing of the application for the Domain Name which was made about a year after the Complainant had launched its ACTIFRY brand in the UK, by which time the evidence shows it had generated significant sales in the UK under the ACTIFRY brand.
- No reference is made to the fact that each page of the website located at the Domain Name bears a footer which reads “Copyright 2013, Actifry. All Rights Reserved” when “Actifry” is clearly not the Respondent’s name.
- The Response does not mention that only three recipes for fried food appear on the website located at the Domain Name. The entire website comprises only eight short pages. No explanation is given as to why there is such limited content if the Respondent had been pursuing its stated aim, since 2008, of setting up a cooking related web site.
- Apart from the overall blanket denial contained in the Response of everything the Complainants say, no evidence is provided to challenge the Complainants’ evidence that the Respondent’s Website originally held copies of material illustrating the Complainants’ Actifry deep fryer product and which was proprietary to the Complainants, and that this was removed following the sending of a cease and desist letter, with the present content being published subsequently.
Furthermore the Panel notes that the Respondent has not availed itself of the opportunity to file any direct evidence in the form of a witness statement or other corroborating documents that could have dealt with these matters.
The Panel does not agree with the Respondent that the public would not be misled by the Domain Name or the Respondent’s Website. The evidence establishes that the Complainants’ ACTIFRY trade mark is used in relation to products which have achieved significant success and which is accordingly likely to be recognised by some members of the public. The word has no other meaning. Further any visitor to the Respondent’s Website would find it is devoted to an activity, the cooking of fried food, which is clearly closely connected to the Complainants’ product. There is nothing on the Respondent’s Website to indicate that it is unconnected with the Complainants. Furthermore the notice on each page carries the wording “Copyright Actifry. All Rights Reserved” which is likely to increase confusion on the part of any visitor given that “Actifry” is not the Respondent’s name but is the Complainants’ trade mark.
Taking all of these factors into account the Panel concludes that the Respondent’s case that it was engaged in an independent venture unconnected with the Complainants and their ACTIFRY trade mark lacks credibility. The Panel is mindful that care should be taken in reaching such a conclusion in the context of summary proceedings under the UDRP. However the Panel respectfully agrees with the three person panel who considered this issue in Share Our Gifts Foundation, Inc. v. Freedom Bands Inc., Fan Bandz Inc a/k/a fanbanz,WIPO Case No. D2004-1070 and who unanimously concluded as follows:
“While there will certainly be cases in which a Panel cannot determine credibility, it would serve neither the interests of the parties nor the integrity of the process to dismiss any case in which one of the parties submits evidence which creates a colorable issue of credibility, leaving the parties to expensive and prolonged court proceedings.
Moreover the Panel is directed by the Rules that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Rules, paragraph 10(d). Such a task implicitly includes the evaluation of the credibility of the evidence. Therefore, the Panel undertakes its duty to assess and to weigh the evidence submitted.”
The Panel concludes that the present case is one where the Complainants have raised by proper evidence a clear case that the Respondent selected the Domain Name precisely because of its connection with the Complainants and intended to use it for some purpose which took advantage of that connection. Once challenged by the Complainants the evidence strongly suggests that the Respondent then constructed as a smokescreen a website purportedly independent of the Complainants and supposedly directed to the promotion of recipes for fried food, an activity entirely unconnected with the Respondent’s business. The Panel concludes the Respondent’s case in this respect is not credible having regard in particular to the matters referred to above which the Respondent, although legally represented, has not addressed.
The Panel accordingly finds that the Respondent has failed to produce any credible evidence to establish any rights or legitimate interests in the Domain Name. The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the evidence as to the extent of the reputation the Complainants enjoys in the ACTIFRY trade mark, and the identical nature of the Domain Name to the ACTIFRY trade mark, and the lack of a credible explanation from the Respondent as to why the Respondent registered the Domain Name leads the Panel to conclude the registration and use was in bad faith. The Panel concludes that the Respondent selected the Domain Name because it was identical to the brand the Complainants had launched a year earlier in the United Kingdom and which was enjoying considerable success and was intended in some way to take advantage of the Complainants’ trade mark. The Panel concludes the Respondent has not produced any credible case as to a legitimate use it would have for that Domain Name which was unconnected with the Complainants and which would not take advantage of the Complainants’ trade mark. The use that the Respondent is making is to promote a website which would be likely to be thought by any visitor to be something to do with the Complainants, but which once explored would soon be found to have extremely limited content. That is likely to be damaging to the Complainants and their business and is use in bad faith. The Panel therefore finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 first Complainant, i.e. SEB.
Nick J. Gardner
Sole Panelist
Date: March 26, 2013
Full & Egal Universal Law Academy