The Complainant is National Grid Electricity Transmission Plc, NGrid Intellectual Property Limited of London, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Squire Sanders (UK) LLP, UK.
The Respondent is Re-Tron Technologies of Ridgefield, New Jersey, United States of America (the “USA”), represented internally. 2. The Domain Names and Registrar
The disputed domain names , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 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.
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 May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013.
On June 10, 2013, Mr. Cattani, writing for the Respondent, requested a copy of the Complaint, which was provided by the Center on June 12, 2013. On June 17, 2013, the Respondent requested an extension to submit the Response, to which the Complainant objected on June 18, 2013.
The Response was filed with the Center on June 19, 2013.
The Center appointed John Swinson as the sole panelist in this matter on June 26, 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
The Complainant (which includes both National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited) forms an international electricity and gas group of companies. The Complainant owns and operates (via its subsidiaries) electricity and gas transmission networks in the UK and the USA (including ancillary services).
The Complainant holds numerous registrations and applications for the trademarks NATIONAL GRID (earliest registration in 2000), NATIONALGRID, with variations, (earliest registration in 2008) and NGRID (earliest registration in 2001) in the UK, the European Union and the USA. The Complainant provided evidence of these registrations and applications.
The Respondent, Re-Tron Technologies, is in the business of creating a clearing house of products and services related to renewable energy, under the primary name “MyGrid”. The “MyGrid” concept is to create an avenue for people to use renewable energy in a personal capacity.
The disputed domain names were registered as follows:
- on April 21, 2010;
- on May 12, 2010; and
- on November 2, 2010.
The disputed domain names all divert to the same Web page “www.”, which features an illustration of solar panels and a wind generator. There are inactive links such as “MyGridTube” and “MyGridLab”. The Web page states “Website Coming Soon!” 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows. Identical or Confusingly Similar
The Complainant alleges that the disputed domain name is confusingly similar to its NATIONAL GRID and NATIONALGRID trademarks. It incorporates the marks in their entirety, which the non-distinctive prefix “my”.
In relation to , notwithstanding the missing element “national”, the reference to “grid” in combination with “power” makes users believe that such disputed domain name and the Complainant’s trade marks have the same commercial origin. The word “power” is inherently related to the Complainant’s products and services.
In relation to the disputed domain name , notwithstanding the missing element “national”, the reference to “grid” in combination with “store” makes Internet users believe that this disputed domain name and the Complainant’s trademarks have the same commercial origin. “Store” is a descriptive element which does not play a significant role in the overall assessment of the disputed domain name. It serves to make Internet users think that the disputed domain name refers to an online store of a major utility where they can source the products and services offered by the Complainant. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not affiliated with Complainant, is not licensed to use the Complainant’s trade marks and is not commonly known by the disputed domain names.
The use of the disputed domain names as a parking page does not give the Respondent any rights or legitimate interests and should be considered unfair use resulting in misleading diversion. Registered and Used in Bad Faith
The Respondent is using the disputed domain names to attract Internet users to the Respondent’s website based on a likelihood of confusion with the Complainant’s trade marks. The Respondent does not provide any offerings on the websites at the disputed domain names. The images on the holding pages increase the likelihood of user confusion. The use of the prefix “my” is common to provide customers with a platform to enter into an account with the Complainant. By using “my”, the Respondent is implying that it offers this platform. B. Respondent
The Respondent’s contentions are as follows. Identical or Confusingly Similar
The words “national” and “grid” are non-distinctive, descriptive words of common usage. The combination of these words is not unique. “National Grid” is descriptive of any country’s electrical infrastructure.
The common word being used is “Grid”, which is a descriptive word for any number of objects (for example, the street layout in New York City). The primary word in the Complainant’s trademarks is “National” (describing a community of people living in a defined territory). The primary word in the Respondent’s domain names is “My” (describing an individual). These primary words are unlikely to be confused. Rights or Legitimate Interests
The “MyGrid” concept is a well-developed and unique business model bringing together a host of products and services in the area of renewable energy. 1 The Respondent is currently in the process of completing infrastructure to raise capital to fully roll out the business. Registered and Used in Bad Faith
The businesses of the Complainant and the Respondent are completely different. The entire “MyGrid” concept is to allow people to make personal use of renewable energy, reducing reliance on electrical infrastructure. Numerous separate Web sites will be used under the general “MyGrid” banner, each with its own target market.
The disputed domain names were not registered to be sold, rented, or otherwise transferred to the Complainant. The Respondent was unaware of the Complainant before receiving the Complaint. The disputed domain names were not registered to interfere with the Complainant’s use of its trade marks. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to the trade marks.
It is well established that a generic top-level domain (“gTLD”), such as “.com”, may be disregarded for the purposes of determining identity or confusing similarity under the Policy.
The test of confusing similarity under the Policy is confined to a comparison of a domain name and a trade mark alone, independent of the other marketing and use factors usually considered in trade mark infringement or unfair competition cases. Therefore, the content of the Respondent’s Web page is irrelevant to this issue (see Ducoco Alimentos S/A v. Domain Privacy LTD,WIPO Case No. D2012-1949 and UDRP cases cited therein).
Previous UDRP panels have held that the addition of the term “my” as prefix to a trade mark does not diffuse confusing similarity (see for example, PC2Call Limited v. Bernard Ferrie, NAF Claim No. FA 0112000103181 (which held that was confusingly similar to the trade mark PC2CALL). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s NATIONAL GRID and NATIONALGRID trademarks.
Regarding the other two disputed domain names, and , they incorporate only the “grid” element of the Complainant’s trade marks. Partial incorporation of a trade mark will not preclude a finding of confusing similarity (see for example, Goldmasters Precious Metals v. Gold Masters, NAF Claim No. FA0007000095246 where was held to be confusingly similar to the trade mark GOLDMASTERS PRECIOUS METALS; and The J. Paul Getty. Trust v. Domain 4 Sale & Company, NAF Claim No. FA0007000095262 where and were held to be confusingly similar to the trade marks THE GETTY and THE J. PAUL GETTY MUSUEM).
However, in this case, it is the combination of terms (i.e., “national” and “grid” or “n” and “grid”) that make the Complainant’s trade marks distinctive. The term “grid” (on its own) is a generic, non-distinctive term, which is not associated exclusively with the Complainant’s business. As such, the Panel is of the opinion that the use of the term “grid” in the disputed domain names and does not make those disputed domain names confusingly similar to the Complainant’s trade marks.
As the first element has not been shown in relation to the disputed domain names and , there is no need to consider the other elements in relation to these disputed domain names. The remaining discussion will be therefore in relation to the disputed domain name only. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name . The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- there is no evidence that the Respondent is commonly known by the disputed domain name ;
- there is no evidence that the Respondent has any connection with the Complainant’s trade marks; and
- the Complainant has not given the Respondent any permission to use its trade marks.
The Respondent seeks to overcome the Complainant’s prima facie case by showing that it is making bona fide use of this disputed domain name in connection with a business. The website that resolves from the disputed domain name is for “My Grid Store”. It states “Website Coming Soon!” and features an illustration of solar panels and a wind generator. It also contains inactive links such as “MyGridTube” and “MyGridLab”. There is no use of “MyNationalGrid” anywhere on this website. This website does not demonstrate use or proposed use of the disputed domain name .
The Panel has reviewed the Respondent’s evidence regarding the development of its business (which involves developing, promoting and marketing renewable energy products and solutions to reduce reliance on electrical infrastructure). The evidence provided included a comprehensive business proposal. The Respondent also provided sound reasons why its business is taking some time to launch (such as difficulties in raising capital due to factors within the solar industry). However, the proposal does not demonstrate use or proposed use of the disputed domain name . It lists the domain names that the Respondent has registered (including the other disputed domain names), but makes no mention of the disputed domain name or “MyNationalGrid”.
In light of the above, the Panel finds that the Complainant has satisfied the second element of the Policy in relation to the disputed domain name . C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) is particularly relevant here and provides that there is evidence of bad faith where a domain name is “used to intentionally attract, for commercial gain, internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.
The Complainant and its trade marks are well-known, particularly in the USA and the UK. It would be highly unlikely that the Respondent was unaware of the Complainant (and its trade marks) when it registered the disputed domain name .
The Panel finds that the Respondent, prior to its registration and use of the disputed domain name (which wholly incorporates the Complainant’s NATIONAL GRID and NATIONALGRID trademarks and which was registered approximately six months after the other disputed domain names) was aware of the Complainant, and was aware that the Complainant owned and operated electricity and gas transmission networks.
It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation to direct users to a Web page which, once active, could offer products and services in competition with the Complainant.
In light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith as defined in paragraph 4(b) 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 disputed domain name be transferred to the Complainant NGrid Intellectual Property Limited.
For the foregoing reasons, the Complaint in respect of the disputed domain names and is denied.
John Swinson
Sole Panelist
Date: July 11, 2013
1 . The Respondent provided evidence of a business proposal in relation to its products and services.
Full & Egal Universal Law Academy