The Complainant is John Lewis Plc. of London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Steven Masters of Surrey, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) was registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2013. On October 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 18, 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 November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on November 29, 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 has been operating since 1864 and is the largest department store retailer in the UK with 39 shops stocking more than 350,000 separate lines. It is the registered proprietor of a number of UK and Community trademarks for the name JOHN LEWIS in a range of classes including in relation to furniture and other home ware. These include UK trademark number 2007205 registered as of January 10, 1995 and Community trademark number 205385 registered on October 8, 1998.
The Complainant has used the JOHN LEWIS trademarks continuously since they were registered, for a range of products, and has advertised products bearing the trademarks both online through its websites and in a variety of publications. Through its use of the JOHN LEWIS mark over 149 years the Complainant has acquired goodwill and a significant reputation in the areas in which it specializes.
The Respondent registered the Domain Name on November 24, 2012. The website to which the Domain Name resolves purports to trade in high street branded ex-display and clearance goods, although when visited by the Complainant on October 9, 2013 the majority of the items were listed as “out of stock”. In correspondence with the Complainant the Respondent has stated that it sells various styles and brands of furniture including their own styles and that John Lewis is only one of the brands they promote. The Respondent has further stated that their main business is furniture sales but that John Lewis branded furniture accounts for the smallest part of their sales.
The content of the Respondent’s website makes extensive use of fonts and layout similar to that of the Complainant’s website and the home page of the Respondent’s website contains a video advertisement in which the Complainant claims the copyright.
In the correspondence with the Complainant, the Respondent said that it would be prepared to transfer ownership of the Domain Name to the Complainant for a payment of GBP 50,000 to GBP 80,000, on the basis that its website was receiving some 18-20,000 unique page views per month currently and rising by the week, as well as being placed at the top of many key search terms. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its JOHN LEWIS trademark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark 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
The Complainant has undoubted, uncontested rights in the JOHN LEWIS mark both by virtue of its United Kingdom and Community trademark registrations and as acquired through longstanding widespread use. The Domain Name differs from the Complainant’s trademark only by the addition of the word “deals”, ignoring the “.com” suffix for this purpose. The generic term “deals” does not detract from the distinctiveness of the JOHN LEWIS mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent can have no rights or legitimate interests in respect of the Domain Name. There is no question of the Respondent having been given permission to use the JOHN LEWIS name. The Respondent has apparently used the Domain Name for a website that purports to sell John Lewis branded goods but also a range of others, and makes extensive use of fonts and layout similar to that of the Complainant’s website. In its correspondence with the Complainant the Respondent has admitted that sales of John Lewis branded furniture amount to only a small proportion of its furniture sales. In the Panel’s view such activity could not give rise to any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint to put forward any case as to how it might have such rights or legitimate interests.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
It appears from the Complaint and from the correspondence between the Complainant and the Respondent that the website to which the Domain Name resolves has been used for what purports to be trade in a range of products, including furniture, and that a small proportion of those products (and of the furniture) is branded John Lewis. There is no doubt that the Respondent had the Complainant in mind when it registered the Domain Name. As is now well-established, a respondent using a domain name comprising a brand owner’s mark cannot demonstrate a bona fide offering of goods or justify the use of the mark as part of a domain name where it is offering the goods of a competitor of the brand owner at the website using the domain name, even if it is in fact offering the brand owner’s goods (see paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In a case such as this, where the brand owner is a substantial retailer selling a range of goods of many other brand owners, as well as goods sold under its own brand name, it is all the more difficult to justify the use of the trademark in a domain name.
The Panel is satisfied that the Respondent has used the Domain Name, comprising the Complainant’s very well-known trademark, to attract Internet users to the Respondent’s website, confusing Internet users into believing that the website was authorized by or otherwise associated with the Complainant for commercial gain. Furthermore, the Respondent’s offer in the course of correspondence to sell the Domain Name to the Complainant for between GBP 50,000 and GBP 80,000 suggests that it may well have registered the Domain Name with a view to selling it to the Complainant for a sum significantly in excess of its out of pocket expenses. The Panel notes that the Respondent emphasized in correspondence how many unique visits its website was attracting. The Panel considers that it is most likely that this was the result of the notoriety of the Complainant’s trademark, rather than anything related to legitimate activities of the Respondent.
Accordingly, the Panel finds that the Respondent registered and has used the Domain Name 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 Domain Name be transferred to the Complainant.
Ian Lowe
Sole Panelist
Date: December 12, 2013
Full & Egal Universal Law Academy