The Complainants are National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited (the “Complainant”) of London, United Kingdom of Great Britain and Northern Ireland, represented by Squire Sanders (UK) LLP, United Kingdom.
The Respondent is WHOIS Privacy Protection Service, Inc of Kirkland, Washington, United States of America / GEORGE WASHERE of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint April 8, 2014.
The Center verified that the Complaint together with the amended 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 April 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on May 15, 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
The Complainant is an international electricity and Gas Company, which is one of the largest investor, owned energy companies in the world. The 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. The Complainant’s principle operations also comprise the provision of liquefied natural gas facilities and property as well as electrical interconnectors.
The Complainant’s trademarks enjoy a significant reputation in the United Kingdom and the United States and are well-known amongst professionals of the utility industries as well as end consumers.
The Complainant is the owner of the trademarks NATIONALGRID and NATIONAL GRID, it is also the owner of numerous trademark registrations worldwide, a list of which was provided as Annex 4 to Complaint. The Complainant’s trademarks were registered as early as 1999.
The disputed domain name was registered on December 9, 2013. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s widely used trademarks NATIONAL GRID and NATIONAL GRID. The disputed domain name incorporates the Complainant’s marks in their entirety with the non-distinctive prefix letter “n”. Therefore, the overall impression is that the Complainants’ trademarks are the dominant part of the disputed domain name.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with the Complainant or licensed to use the Complainant’s trademarks. The Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the name through a bona fide offering goods or services.
The Complainant adds that the Respondent uses the disputed domain name to link to external websites including sponsored listings, which is not bona fide use. Instead, the practice to use the Complainants’ trademarks for the disputed domain name aimed at users mistyping the Complainants’ domain name must be considered as unfair use resulting in misleading diversion.
The Complainant also states that the disputed domain name was registered and is used in bad faith as it uses the Complainant’s trademarks to attract Internet users to the Respondent’s website based on a likelihood of confusion with its trademarks.
Finally, the Complainant state that the Respondent’s use of the disputed domain name is a deliberate use of the confusion created by the similarity of the disputed domain name to the Complainants’ trademarks. In addition, the Respondent cannot be unaware that the offer to sell the disputed domain name would be most valuable to the Complainant as they are most negatively affected by Respondent’s use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to its trademarks.
The Panel finds that the Complainant has established that it is the owner of the registered trademark NATIONAL GRID based on the evidence provided by the Complainant.
The disputed domain name consists of the Complainant’s trademark NATIONAL GRID plus the addition of the letter “n”. The Panel considers that the addition of another letter “n” at the beginning, does not add distinctiveness to the disputed domain name, but quite the contrary, simply creates further confusion with the Complaints trademarks and existing domain names. The addition of the letter “n” and “.com” does not remove the confusing similarity that exists between the disputed domain name and the trademark NATIONAL GRID.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the Complainant is normally deemed to have satisfied the second element required by the Policy.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the name through a bona fide offering of goods or services.
The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity during this current proceeding.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interest in the disputed domain name.
In the absence of a Response, this Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy, and has established a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, which has not been rebutted by the Respondent. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The Complainant is known as National Grid. It is the owner of the trademarks NATIONAL GRID and NATIONALGRID.
It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the registrant to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third-party rights.
After reviewing the copy of the printout of the website under the disputed domain name dated April 2, 2014, provided as Annex 5 to the Complaint, the Panel concludes that the Respondent must have had clear knowledge of the Complainant and its services given that all the links available on the website refer to services related to gas and electricity.
Consequently it is impossible for this Panel to conclude that the Respondent was acting in good faith when registering and using the disputed domain name, especially given that the disputed domain name is comprised of the widely-known trademark NATIONAL GRID owned by Complainant and refers to links related to gas and energy websites, similar to the services provided by Complainant.
The Panel considers that Respondent’s objective by registering the disputed domain name was to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Furthermore, the Panel after personally reviewing the website at the disputed domain name can confirm that it still offers links to related gas and energy websites, and furthermore has a banner indicating “domain sale, click here to buy now”.
Finally, the Panel considers that by registering a domain name corresponding to a widely-known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage. This behavior constitutes bad faith use and may prejudice the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
Rodrigo Velasco Santelices
Sole Panelist
Date: May 28, 2014
Full & Egal Universal Law Academy