The Complainant is Warwickshire Oil Storage Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Wright Hassall LLP, United Kingdom.
The Respondent is WWOSLTD of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2016. On July 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 25, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 19, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 30, 2016. 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.
On September 2, 2016, the Panel issued a Procedural Order in the following terms:
"The Complainant is asked to provide a supplemental statement of not more than 1500 words in length explaining more fully the allegation in paragraph 24 of the Complaint that it has common law or unregistered trademark rights which would support an action for passing off. It should do so having regard in particular to the statement in paragraph 23 of the Complaint that it does not court publicity and does not have a website of its own. If appropriate supporting evidence should be annexed to the supplemental statement.
The Panel orders the Complainant to provide such supplemental statement in response to the above request by September 10, 2016. If the Respondent, by this date, has indicated an intention to take part in this proceeding, the Panel may issue further procedural steps, as required. The Date for the Panel's decision is set to September 17, 2016."
On September 9, 2016 the Complainant provided a supplemental statement with accompanying evidence ("the Supplemental Statement"). 4. Factual Background
The Complainant was incorporated on May 8, 1961. The principal activity of the Complainant is the operation of petroleum product storage facilities at its terminal at Kingsbury, Warwickshire, United Kingdom. It has carried out this business since the mid-1960s. According to its last publically available financial statements the Complainant's annual turnover was GBP 5.8 million in the year ending December 31, 2014. The Complainant's terminal is one element of what is known as the Kingsbury Complex, which is the largest inland oil storage depot in the United Kingdom. The Complainant receives petroleum products by pipeline and rail which are then stored in tanks on-site before being loaded onto road tankers for distribution to customers.
The Complainant does not have any registered trademarks.
The Complainant does not operate any website.
On January 28, 2016, the Respondent registered the Disputed Domain Name.
The Disputed Domain Name is linked to a website which the evidence establishes masquerades as being that of the Complainant but which includes false contact details including email addresses and a telephone number which are not those of the Complainant. The evidence establishes that this website has been used to solicit applications for employment with the Complainant and that potential applicants are then charged fees in connection with seeking such employment. On one occasion such an applicant has arrived at the Complainant's premises expecting to be interviewed for potential employment. The Complainant has no knowledge at all of these arrangements or supposed employment opportunities.
The evidence establishes that there does not appear to be any legal entity in the United Kingdom with a name corresponding to that of the Respondent. The address and contact details it has provided are shown by the evidence to be false. 5. Parties' Contentions A. Complainant
The Complainant's case can be summarized as follows.
a) The Complaint says that it has common law rights in the acronym WOSL (which acronym is an abbreviation of its full name) and in a logo which is a stylized form of the WOSL acronym (together the "WOSL Marks"). It says it has traded under and by reference to the WOSL Marks for almost 50 years (in the case of the acronym) and 15 years (in the case of the logo). The Complaint also says that the law of passing off will apply to restrain use of a domain name which is an "instrument of fraud" and refers to the well-known English case of British Telecommunications Plc. and another v One In A Million Ltd and others (1991 WLR 903) and other cases which refer to that case.
b) The Disputed Domain Name is confusingly similar to the WOSL Marks as it incorporates in its entirety the letters WOSL which are the principal feature of the Complainant's WOSL Marks and by adding the letters "t" and "d" simply expands the last letter in the acronym – l – to "ltd" which is a standard abbreviation for the term "limited" which is what the "l" stands for in any case.
c) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
d) The Respondent uses the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, makes use of the Complainant's WOSL Marks to impersonate the Complainant and to fraudulently obtain money from persons who are deceived into believing they are likely to obtain employment with the Complainant. The fact that the Respondent has provided false contact details is further evidence of its bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has common law rights in the WOSL Marks for purposes of the Policy. The Complainant does not have a website and does not, so far as the Panel is aware generate any other advertising or publicity. The Complaint has provided relatively little specific information showing how it uses the WOSL Marks but says it has traded for 50 years in what is clearly a specialized industry and used the acronym WOSL continuously throughout that period. The only actual examples of such use that the Panel can see in the provided evidence is (1) use of the WOSL logo on a website which promotes safety procedures relating to the Kingsbury Complex and (2) use of the WOSL logo on a case study document produced by the Health And Safety Executive. Whilst further evidence of use would have been desirable the Panel will accept the Complainant's evidence that the WOSL Marks have been used regularly to identify the Complainant to its customers. The Complainant is carrying out a significant business with its most recent accounts showing a turnover of in excess of GBP 5 million per year. In those circumstances the Panel is satisfied that it has shown that it has established goodwill in the WOSL Marks which could, in appropriate circumstances, be protected by a common law action under English law for the tort of passing off. The material filed by the Complaint in its Supplemental Statement establishes that the threshold level of reputation required to support an action for passing off can be relatively low and/or limited in geographic scope and, on the evidence, the Panel is satisfied this threshold level is shown by the Complainant in relation to the WOSL Marks. This is particularly so given that the term WOSL does not form a recognizable word in English, and does not so far as the Panel is aware have any meaning other than in relation to the Complainant. The Panel also accepts the Complainant's arguments that the law of passing off will apply to restrain use of a domain name which is an "instrument of fraud" and refers to the well-known English case of British Telecommunications Plc. and another v One In A Million Ltd and others (1991 WLR 903) and other cases which refer to that case. As discussed below the Panel accepts that the Disputed Domain Name is an "instrument of fraud" of the type referred to in this case.
The Disputed Domain Name is confusingly similar to the WOSL Marks. The only substantive difference is the addition of the letters "t" and "d" which simply convert the last letter of the acronym – l – from a short form abbreviation for the word limited to "ltd" which is a slightly longer form abbreviation commonly used for the word limited. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's WOSL Marks. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the WOSL Marks. The Complainant has prior rights in the WOSL Marks which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
The evidence filed by the Complainant clearly establishes that the Respondent has used the Disputed Domain Name in connection with a website which impersonates the Complainant and which is being used as part of some form of dishonest and fraudulent scheme to obtain money from persons who believe they are being offered the potential opportunity to obtain employment with the Complainant. The Website concerned clearly is a deliberate attempt to impersonate the Complainant and contains copies of the WOSL Marks and other material (some of it copied from innocent third party websites) which overall clearly seeks to present the website as being that of the Complainant. Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location" (Policy paragraph 4(b) (iv)). In the present case the Panel concludes that the deliberate use of the Complainant's WOSL Mark is part of as scheme intended to attract persons seeking employment of the Complainant who may then be misled into providing payment for the opportunity of an interview. That falls squarely within the type of circumstances to which the Policy refers. As such the Panel has no hesitation in concluding that the Disputed Domain Name has been registered and is being used in bad faith. The evidence in this regard is particularly clear, including as to the actual attendance at the Complaint's premises of an individual who had been duped into travelling from Italy for an interview with the Complaint as a result of the scheme operated by the Respondent. It is well established that the establishment of a website which is associated with fraudulent activity provides compelling evidence of bad faith registration and use of the associated domain name – see for example Australia and New Zealand Banking Group Limited v. Bashar LtdWIPO Case No. D2007-0031, Grupo Financiero Inbursa, S.A. de C.V v. inbuirsaWIPO Case No. D2006-0614, Halifax Plc. v. Sontaja Sunducl,WIPO Case No. D2004-0237; CareerBuilder LLC v. Stephen Baker,WIPO Case No. D2005-0251, Finter Bank Zurich v. N/A, Charles Osabor,WIPO Case No. D2005-0871; and Banca Intesa S.p.A. v. Moshe Tal,WIPO Case No. D2006-0228.
The Panel is further reinforced in this view by the fact that the name of the Respondent appears to be fictitious and its contact details are clearly false – see for example Salomon Smith Barney Inc v. Salomon Internet ServicesWIPO Case No. D2000-0668 ("The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details…").
In addition the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Nick J. Gardner
Sole Panelist
Date: September 12, 2016
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