The Complainant is Halfords Limited of Redditch, Worcestershire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by HGF Limited, UK.
The Respondent is Frey Deans of London, UK. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 22, 2014, 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 August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 23, 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 a retailer based in the UK. It specializes in the sale of car maintenance products and consumables, car accessories, bicycles and bicycle accessories as well as camping, caravan and outdoor leisure equipment.
The Complainant is the owner of various UK and International trademark registrations for the mark HALFORDS in various classes, further details of which are given below.
The Domain Name was registered by the Respondent on July 1, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends, in summary, that the Respondent registered and has used the Domain Name as an instrument of fraud, namely, to impersonate the Complainant by way of emails to the Complainant’s suppliers seeking dishonestly to obtain credit accounts.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant submits evidence of nine UK and three International trademark registrations for the mark HALFORDS in both word and figurative form. The registrations include, for example, UK registered trademark number 1113259 for HALFORDS filed on April 26, 1979 in International Class 12 and International registration number 534962A for HALFORDS registered on February 17, 1989 in 20 International Classes and designating four European states.
The Complainant also claims unregistered trademark rights. It submits that it has traded in the UK under the name and mark HALFORDS since 1907 and quickly grew to over 100 shops. It was floated on the London Stock Exchange in 2004 as a FTSE top 250 company. As at the date of the Complaint, it operated over 460 stores and employed over 10,000 people in the UK and Ireland. Its turnover in its 2013 financial year was in excess of GBP 871 million and its advertising spend for 2013/14 was in excess of GBP 12 million. The Complainant states that, while its parent company is Halfords Group plc, the trading entity is Halfords Limited.
The Complainant submits that the Domain Name comprises the name “halfords” together with “ltd” which is a common abbreviation of the corporate designation “Limited”. As such it is identical or confusingly similar to the Complainant’s registered mark HALFORDS and unregistered trademark rights in the name “Halfords Limited”. In particular, the Complainant contends that consumers, suppliers and other commercial parties would undoubtedly assume that the Domain Name was operated by or affiliated with the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has never authorized the Respondent to register or use the Domain Name and that the Respondent has never commonly been known by the names “Halfords” or “Halfords Limited”. The Complainant also submits that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. The Complainant contends that Respondent has used the Domain Name for the purpose of an email address which it has used to impersonate the Complainant in an attempt to defraud the Complainant’s suppliers, which does not give rise to any rights or legitimate interests.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant exhibits an email dated July 3, 2014 which it states was received by one of its suppliers and was subsequently forwarded by that supplier to the Complainant. The email sender appears as:
“HALFORDS LIMITED [mailto:i[…]:]”
The subject line is:
“URGENT ORDER”
The text of the email reads:
“DEAR, MRS. MR
WE ARE LOOKING FOR THE FOLLOWING PRODUCT BELOW:
- 50 UNITS OF PUSHCHAIRS AND CAR SEATS
COULD YOU PLEASE SEND US THE QUOTATION INCLUDING THE SHIPMENT COST.
PS: PAYMENT TERMS ARE LC, BANK TRANSFER, MOSTLY CREDIT AGREEMENT LINE.
Best regards
MR. M[…] DAVIES
GROUP CHIEL [sic] EXECUTIVE
EMAIL: I[…]@HALFORDS-LIMITED.COM
TEL: […]”
The email concludes with a number of what appear to be standard paragraphs referring to Halfords Limited and Halfords Group plc, their respective company registration numbers and registered office addresses and the VAT registration number for Halfords Limited.
The Complainant states that M. Davies is the name of the Complainant’s Chief Executive and that the email is clearly an attempt to defraud the Complainant’s supplier by obtaining credit terms.
The Complainant states that it has suffered similar issues in relation to two other domain names, and , where fraudulent emails have also been sent to its suppliers. While the registrant identities are different, the Complainant suspects that all three domain names are in fact in common control. The Complainant has obtained a summary decision for transfer of the first of the above-mentioned names under the Nominet.UK Dispute Resolution Procedure and a complaint in respect of the second name is pending.
The Complainant submits that it is obvious from the Respondent’s use of the Domain Name that the Respondent was aware of it name “Halfords Limited” and HALFORDS mark when it registered the Domain Name.
The Complainant makes the following specific contentions for the purposes of paragraph 4(b) of the Policy:
(i) that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name;
(ii) that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of the Complainant by attempting to defraud its suppliers (the Complainant refers to Graybar Services, Inc v. Graybar Elec, Grayberinc Lawrenge WIPO Case No. D2009-1017 and submits that the fraudulent actions of the Respondent will inevitably reflect unfavorably on the Complainant); and
(iii) that the Respondent is intentionally attempting to attract for commercial gain Internet users to its online presence, namely its email address, by creating a likelihood of confusion with the Complainant’s mark.
The Complainant also submits that the Respondent provided false contact details in connection with the registration of the Domain Name. It states that, in particular, its postal address does not exist and that its telephone number is not in operation. The Complainant contends, in summary, that the whole of the Respondent’s modus operandi relating to the Domain Name is fraudulent and that the Domain Name was clearly registered and has been used in bad faith.
The Complainant requests a transfer of the Domain Name. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registrations for the trademark HALFORDS in the UK and elsewhere. It has also established to the satisfaction of the Panel that it has unregistered rights in the name “Halfords Limited” as a result of substantial trading under that name in the UK and Ireland for many years. The Panel finds that the term “ltd” is generally accepted to be an abbreviation for the corporate designation “Limited” and that the Domain Name would accordingly be assumed by a significant number of Internet users to refer to the Complainant.
The Complainant has therefore established that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has submitted that it never authorized the Respondent to use its names or marks “Halfords Limited” or HALFORDS, that the Respondent has never commonly been known by those names or marks and that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. While these contentions give rise to a prima facie case for the Respondent to answer, the Respondent has failed to reply to the Complaint and has not submitted any evidence of any relevant rights or legitimate interests on its part. Nor is any there any other evidence of any such rights or legitimate interests available to the Panel. On the contrary, it appears to the Panel that the Respondent has used the Domain Name for the purpose of a fraudulent venture, which clearly does not give rise to any relevant rights or legitimate interests for the purposes of the Policy.
Therefore, the Complainant has established that that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions, which the Respondent has not disputed, that the Respondent was aware of the Complainant’s name and marks when it registered the Domain Name and has used the Domain Name for the purposes of a fraudulent email communication with one of the Complainant’s suppliers which impersonated the Complainant and its Chief Executive. Plainly this constitutes registration and use of the Domain Name in bad faith. While evidence of bad faith is not limited to the circumstances set out in paragraph 4(b) of the Policy, the Panel accepts the Complainant’s submission that an email address may properly be regarded as an “online location” for the purposes of paragraph 4(b)(iv) of the Policy and that the Respondent’s misleading use of the Domain Name for the purposes of email falls within the conduct contemplated by that sub-paragraph.
Accordingly, the Complainant has shown that the Domain Name has been registered and is being used 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.
Steven A. Maier
Sole Panelist
Date: September 25, 2014
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