Complainant is Wickes Limited of Northampton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Freeths LLP, United Kingdom.
Respondent is Martin Rodrigue of Montmorency, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and confirming that German is the language of the registration agreement. On August 2, 2016, Complainant submitted a request that English be the language of the proceeding. No submission in this regard was made by Respondent.
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 Respondent of the Complaint in both English and German, and the proceedings commenced on August 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2016.
The Center appointed Stephanie G. Hartung 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. 4. Factual Background
Complainant is a company registered under the laws of the United Kingdom which supplies goods for general repair, maintenance and improvement projects by do-it-yourselfers and tradesmen.
Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the designation “Wickes”, inter alia, in France where Respondent is domiciled:
- Word mark WICKES, European Intellectual Property Office (“EUIPO”), Registration No. 012457321, Registration Date: June 12, 2014, Status: Active;
- Word mark WICKES, World International Property Office (WIPO), Registration No. 1266442, Registration Date: November 17, 2014, Status: Active.
Moreover, Complainant has evidenced to be the registered owner of the domain name which redirects to Complainant’s official website at “www.” promoting Complainant’s business and related products and services.
The disputed domain name was created on June 27, 2016. By the time of the rendering of this Decision, it does not redirect to any valid content on the Internet.
Complainant requests that the disputed domain name be transferred to Complainant and that English be the language of proceedings. 5. Parties’ Contentions A. Complainant
Complainant contends that it has more than 200 United Kingdom based stores and that it spends an estimated GBP 24 million every year on advertising, including national campaigns in traditional media (including television) and online. As such, the WICKES trademark has consequently increased its reputation and is today recognized particularly in the United Kingdom and in the European Union.
Complainant submits that the disputed domain name is at least confusingly similar to the WICKES trademark as it fully incorporates the latter, with the mere addition of the word “groups” which even enhances confusion as it suggests that the disputed domain name is connected to Complainant’s group of companies.
Complainant further claims that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant’s rights in the WICKES trademark predate the registration of the disputed domain name, (2) Complainant has not licensed or otherwise authorized Respondent to use the WICKES trademark and (3) Respondent has not conducted any prior business under the WICKES trademark in connection with a bona fide offering of goods or services.
Finally, Complainant asserts that the disputed domain name was registered and is being used by Respondent in bad faith since (1) one week before the filing of this Complaint, the disputed domain name hosted a website which was an exact replica of Complainant’s legitimate website at “www.”, (2) Complainant has evidenced fraud being committed in January 2016 and using the similar domain name to email Complainant’s suppliers, which is why Complainant presumes that Respondent acquired the disputed domain name with the same intention to fraudulently represent that the disputed domain name is associated with Complainant and, finally, (3) the disputed domain name incorporates the WICKES trademark alongside the word “groups” creating confusion as to the source of the disputed domain name and utilizing it to pick up the traffic from those Internet users attempting to view a domain name which is in fact associated with Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint. Language of Proceedings
For the following reasons, the Panel decides that English be the language of proceedings:
As a general principle, paragraph 11(a) of the Rules provides that the language of proceedings shall be the language of the registration agreement, unless otherwise agreed by the parties or subject to the Panel’s authority.
Despite of the Registrar’s confirmation of July 28, 2016 that the language of the registration agreement is German, this Panel , in accordance with a consensus view among UDRP panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3), finds (1) that there is reason to believe that Respondent can well understand the English language as the website to which the disputed domain name temporarily redirected apparently was set up in English (additionally, the disputed domain name includes the English term “groups”) and (2) Respondent has been given a fair chance to object to Complainant’s request that English be the language of the proceeding as on July 29, 2016 the Center transmitted an email to the parties in both English and German regarding the question of the language of the proceeding on which Respondent did not comment.
Against this background, the Panel takes the view that it would constitute an unfair disadvantage to Complainant would it be forced to translate the Complaint into German and/or to find a need that this proceeding be led in total in the German. language.
Having said so, the Panel comes to the following decision: A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the WICKES trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the WICKES trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 2.0, paragraph 1.9) that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “groups” (which can even be understood to refer to Complainant’s group of companies) is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s WICKES trademark therein.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Complainant contends that one week before the filing of this Complaint, the disputed domain name redirected to a website at “www.” which was an exact replica of Complainant’s website at “www.”. The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of the WICKES trademark throughout the United Kingdom and the European Union – obviously alluded to Complainant’s WICKES trademark and business instead of any genuine business of Respondent.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not reply to Complainant’s allegations as they were set forth in the Complaint duly notified to Respondent by the Center on August 8, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s WICKES trademark, to a website at “www.” constituting an exact replica of Complainant’s website at “www.”, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website at “www.”, by creating a likelihood of confusion with Complainant’s WICKES trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent apparently provided false WhoIs contact information, since the delivery of the notification of the Complaint sent to Respondent via DHL on August 8, 2016 failed due to an apparent invalid postal address and phone number. This fact at least throws a light at Respondent’s behavior which supports the conclusion of a registration and making use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 6, 2016
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