Complainants are National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited (hereinafter collectively referred to as “Complainant”) of Strand, London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Squire Sanders (UK) LLP, United Kingdom.
Respondent is Linecom of Kyungjoo-shi, Gyongsangbuk-Do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On December 3, 2013, the Center transmitted an email to the Parties in both Korean and English languages regarding the language of the proceedings. On December 5, 2013, Complainant requested that English be the language of the proceedings. Respondent did not submit any comment on the language of the proceedings.
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 Respondent of the Complaint in both Korean and English, and the proceedings commenced on December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 30, 2013.
The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on February 21, 2014. 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
Complainant forms an international electricity and gas group of companies, which is one of the largest investor-owned energy companies in the world. Complainant owns and, via its subsidiaries, operates electricity and gas transmission networks in the United Kingdom and in the northeastern parts of the United States of America.
Complainant is owner of various trademark registrations and applications for the mark NATIONAL GRID in the United Kingdom, European Union (Community trademarks), and the United States and in many other jurisdictions. Complainant owns, inter alia, the following trademarks:
In the United Kingdom
Trademark: NATIONAL GRID
Registration number: 00002199408
Registration date: November 24, 2000
Classes of goods/services: 9, 35, 36, 37, 38, 39 and 40
In European Union (Community trademarks)
Trademark: NATIONAL GRID
Registration number: 004807624
Registration date: January 16, 2009
Classes of goods/services: 1, 4, 6, 7, 8, 9, 16, 17, 35, 36, 37, 38, 39, 40 and 42
In the United States
Trademark: NATIONAL GRID
Registration number: 2,659,972
Registration date: December 10, 2002
Class of goods/services: 37
The disputed domain name was created on May 6, 2012. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the registered trademark NATIONAL GRID in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by Respondent.
Complainant requests the transfer of the disputed domain name to NGrid Intellectual Property Limited1. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(i) the domain name registered by a respondent 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.
In view of Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the complaint); see also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. Language of Proceedings
The Registrar has informed the Center that the language of the Registration Agreement was Korean. On December 3, 2013, the Center issued both in English and Korean the Language of Proceedings Notification.
On December 5, 2013, Complainant submitted a request that English be the language of the proceedings on the ground that it appears from the website under the disputed domain name that Respondent has the ability to understand English. Respondent did not object to Complainant’s request. The Panel also considers that Complainant is not able to communicate in Korean, and therefore, if Complainant were to submit the Complaint in Korean, the administrative proceeding would be unduly delayed, and Complainant would have to incur substantial expenses for translation.
In consideration of all above circumstances and in the interest of fairness to both Parties, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language of the proceedings in this case shall be English. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001. B. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the NATIONAL GRID mark, the use and registration of which predate Respondent’s registration of the disputed domain name.
The Panel notes that the disputed domain name includes the generic and descriptive word “saves”. The Panel finds that such term does not alleviate confusion similarity. As such, the Panel agrees with Complainant’s contentions and finds that the disputed domain name is confusingly similar to Complainant’s mark NATIONAL GRID especially in that it incorporates Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel also finds that the “.com” is a descriptive suffix commonly used as a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager,WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.” See also Montblanc-Simplo G.m.b.H. v. Whois Privacy Protection Service MuuMuuDomain/Ryota Shirahama,WIPO Case No. D2013-1581.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark. C. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), and then the burden shifts to Respondent to demonstrate it does have rights or legitimate interests. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Complainant contends that Respondent is not affiliated with Complainant or licensed to use Complainant’s NATIONAL GRID marks. The Panel agrees with Complainant that this supports that Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 (finding absence of license permitting to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
Complainant further contends that Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the disputed domain name through a bona fide offering goods or services by pointing out the fact that Respondent uses the disputed domain name to post a parking page on which the disputed domain name is offered for sale. Annex 5 to the Complaint. Complainant also notes that Respondent has been party to forty (40) UDRP cases administered by the Center and was ordered, in most cases, to transfer the domain names.
The Panel finds that on the available record, it has been established that Respondent has not been commonly known by the disputed domain name, and thus the Panel does not recognize that Respondent has rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v.h,WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to Policy, paragraph 4(c) (ii) in the domain name where there was no evidence that respondent was commonly known by the domain name); see also Alstom v.Yulei,WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there was no indication that respondent was commonly known by the domain name and/or was using the domain name in connection with a bona fide offering of goods or services).
According to Complainant, Respondent has yet to post any content at the resolving website whatsoever since registering the disputed domain name. Complainant argues that Respondent’s inactive holding of the disputed domain name comprising of Complainant’s well-known trademark does not confer any legitimate interests on Respondent. The Panel agrees, finding that Respondent’s failure to make an active use of the disputed domain name following its registration of the disputed domain name shows that Respondent has not made a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii). See George Weston Bakeries Inc. v. Charles McBroom, NAF Claim No. FA 0933276 (finding that the respondent had no rights or legitimate interests in a domain name under either Policy, paragraph 4(c)(i) or Policy, paragraph 4(c)(iii) where it failed to make any active use of the domain name).
Under the circumstances that Respondent did not reply and that Complainant has proven a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, the Panel finds that the second element of the Policy, paragraph 4(a) has been established. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; see also Accor v. Eren Atesmen, WIPO Case No. D2009-0701. D. Registered and Used in Bad Faith
Complainant contends that given its prior and substantial use of the trademark, Respondent has both actual and constructive notice of its mark, which shows the disputed domain name was intentionally registered to profit unfairly from the goodwill of Complainant’s mark.
The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith.See Sears Brands, LLC v. Airhart, NAF Claim No. FA 1350469 (stating that constructive notice generally will not suffice for a finding of bad faith).
The Panel observes that Complainant forms an international electricity and gas group of companies, which is one of the largest investor-owned energy companies in the world. The Panel also observes that Complainant owns and, via its subsidiaries, operates electricity and gas transmission networks in the United Kingdom and in the northeastern parts of the United States. In view of the reputation of Complainant’s mark, the Panel infers that Respondent could not have been unaware of Complainant’s mark at the time of its registering the disputed domain name and concludes that Respondent had actual knowledge of Complainant’s mark and thus registered the disputed domain names in bad faith under Policy, paragraph 4(a)(iii).
Complainant avers that Respondent has registered the disputed domain name but has not put it to any material use, merely having it parked and offering it for sale. It further asserts that Respondent is holding the disputed domain name passively and with the sole purpose of selling the disputed domain name. Complainant is contending that previous UDRP panels held that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the disputed domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the disputed domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
(i) Complainant’s NATIONAL GRID trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United Kingdom and in other countries,
(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name, and
(iii) Respondent has incorporated the suffix “saves”, which is a promotional message to customers in respect of energy and gas services which are Complainant’s major business thereby intentionally implying a commercial connection to Complainant.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name satisfies the requirements of Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant also contends that Respondent has been party to 40 (forty) UDRP cases administered by the Center and was ordered, in most cases, to transfer the domain names. Previous UDRP panels have found that evidence of a respondent’s pattern of bad faith conduct in other UDRP cases demonstrates bad faith registration and use under Policy, paragraph 4(b)(ii) in the current case. See Westcoast Contempo Fashions Limited v. Manila Industries, Inc.,NAF Claim No.FA 0814312 (finding bad faith registration and use pursuant to Policy, paragraph 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of the domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent also registered and is using the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(ii) because Respondent has a history of registering domain names that have been ordered to be transferred in other UDPR proceedings.
The Panel concludes that Respondent registered and is using the disputed 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 disputed domain name be transferred to NGrid Intellectual Property Limited as requested by Complainant.
Ho-Hyun Nahm, Esq.
Sole Panelist
Date: February 23, 2014
1 NGrid Intellectual Property Limited is the intellectual property holding company of National Grid Electricity Transmission Plc.
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