The Complainants are National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited both of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Squire Sanders (UK) LLP, United Kingdom.
The Respondent is Mia Clark of Kingston Upon Hull, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013. On September 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name, with reminders on October 3, 7 and 9, 2013. On October 9, 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 October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 5, 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 Complainants form part of the National Grid Group of Companies, a large privately owned utility based in the United Kingdom. The first named Complainant is an operating company within that group and the second named Complainant is the Intellectual Property holding company. For present purposes the Complainants can be treated as one.
The Complainants are the proprietors of a large number of trade mark registrations of or including the name “National Grid”. Many of the registrations are figurative marks, but for present purposes it is sufficient to mention just one registration, namely United Kingdom registration No. 00002393930 dated June 9, 2005 (registered June 1, 2007) NATIONAL GRID (words) for a wide variety of goods and services in classes 1, 4, 6, 7, 8, 9, 16, 17, 35, 36, 37, 38, 39, 40 and 42 held in the name of the second-named Complainant.
The Domain Name was registered on June 14, 2013 and is connected to a parking page of the Registrar featuring links to pages advertising the services of the Registrar. 5. Parties’ Contentions A. Complainants
The Complainants contend that the Domain Name is confusingly similar to the Complainants’ NATIONAL GRID trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. For their bad faith claim the Complainants cite all the examples set out in paragraph 4(b) of the Policy, but rely primarily upon paragraph 4(b)(iv) of the Policy.
The Complainants seek transfer of the Domain Name to NGrid Intellectual Property Limited, the second named Complainant. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical 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. B. Identical or Confusingly Similar
The Domain Name comprises the Complainants’ NATIONAL GRID trade mark (albeit without the space), a hyphen followed by the word “group” and the generic “.com” top level domain identifier.
In assessing identity and confusing similarity under this element of the Policy panels will generally ignore the top level domain identifier as it rarely detracts from any distinctiveness of a complainant’s trade mark present at the second level of the domain name.
Absent the generic “.com” top level domain identifier, the Domain Name, by the use of the Complainants’ trade mark and the word “group”, effectively identifies the group of companies of which the Complainants are a part.
The Panel finds that the Domain Name is confusingly similar to the Complainants’ NATIONAL GRID trade mark. C. Rights or Legitimate Interests
As indicated, the Domain Name identifies the group of companies of which the Complainants are a part. On the evidence before the Panel, which the Respondent has not challenged, the Domain Name can only refer to the Complainants’ group, the National Grid group of companies.
What possible right or legitimate interest could the Respondent have in respect to that name? The Domain Name is not in active use (merely connected to a parking page of the Registrar), the name “National Grid group” is not the Respondent’s name and the unchallenged evidence of the Complainants is that the Respondent is unconnected with the National Grid group and that they have not given the Respondent any permission to use their name or trade mark.
The Complainants have made out a strong prima facie case. The Respondent has a case to answer. However, the Respondent has not seen fit to provide an explanation and in the absence of any explanation or any obvious reason why the Respondent might be said to have any relevant rights or legitimate interests the Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
In the United Kingdom where all parties to this dispute reside the Complainants’ name and trade mark is well-known. The Panel finds it inconceivable that the Respondent could have arrived at her choice of the Domain Name without having had the Complainants firmly in mind.
In light of that finding and the Panel’s earlier findings that the Domain Name is confusingly similar to the Complainants’ trade mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name combined with the absence of any explanation from the Respondent, it is not difficult for the Panel to conclude on the balance of probabilities that the Domain Name was registered in bad faith. The Domain Name precisely identifies the group of companies of which the Complainants are members and the Panel believes it probable that Internet users visiting any website to which the Domain Name is connected will assume from the very nature of the Domain Name that the website will be a website of or associated with the Complainants. The fact that on arriving at the site it may be plain to the visitor that the website is not a website of or associated with the Complainants is of no import. The Respondent will have attracted the visitor to her site by way of a deceit. That, in the eyes of the Panel, is an abuse. Moreover, if the Respondent had a good faith reason for registering the Domain Name, one might have expected the Respondent to produce it to the Panel.
However, under paragraph 4(a)(iii) of the Policy the Complainant has to prove not only that the Domain Name was registered in bad faith, but also that it is being used in bad faith.
As can be seen from section 4 above, the Respondent is making no active use of the Domain Name, which merely resolves to a static page featuring links to pages promoting the services of the Registrar. Given that the Respondent appears to be making no active use of the Domain Name (whether commercial or noncommercial) and has not made any contact with the Complainants with a view to selling it to them, it is not obvious to the Panel that any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy is applicable. How can it be said therefore that the Respondent is using the Domain Name in bad faith?
The Panel starts from the proposition that nobody registers a domain name for no purpose and the Panel has already found that the surrounding circumstances are such that the Respondent’s purpose was abusive. In other words, the Respondent has a plan to use it. In the particular circumstances of this case where the Domain Name so precisely identifies the Complainants and the group of companies of which they are members, the Panel finds that the Domain Name in the hands of the Respondent constitutes an abusive threat hanging over the Complainants’ heads and, in that sense, is a continuing abusive use. 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 NGrid Intellectual Property Limited, the second named Complainant.
Tony Willoughby
Sole Panelist
Date: November 10, 2013
Full & Egal Universal Law Academy