The Complainant is Wates Group Services Ltd of Leatherhead, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is Vincent Maria Paulin of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 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 Complainant filed amendments to the Complaint on September 9, 2016 and September 20, 2016.
The Center verified that the Complaint together with the amendments to 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 September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 17, 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
The group of which the Complainant forms part is a well-known United Kingdom-based group of construction companies, whose principal trading name is “Wates”. The Complainant is a wholly owned subsidiary of Wates Group Ltd, the parent company of the group.1 For the purposes of this decision the Panel treats the Complainant and its parent company as one. Hereinafter, all references to the Complainant are references to both companies or the one or the other as appropriate.
The Complainant is the registered proprietor of inter alia European Union Trade Mark Registration No. 5968318 WATES (word) in classes 35, 36, 37, 39, 40 and 42 for a wide range of services including many construction-related services.2 The application was filed on May 25, 2007 and the trade mark was registered on July 17, 2008.
The Complainant’s main operating website is connected to its domain name, , which was registered prior to August 1996 (i.e., prior to the formation of the “.uk” domain name registry).3
The Domain Name was registered on February 10, 2016 and is connected to a parking page of the Registrar featuring sponsored listings to various contractor and construction websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark, a hyphen, a description of the Complainant’s area of business and the “.com” generic Top-Level Domain identifier.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
For completeness the Panel should mention that in this context the Complainant refers to its ownership of other domain names, several of which feature the words “wates” and “construction” in combination, and contends that the Domain Name is substantially identical to those domain names. However, there is no evidence before the Panel to suggest that those domain names are trade marks. Indeed, it appears that none of those domain names is in any active use, most (if not all of them) of them are parked at a registrar’s parking page.4 C. Rights or Legitimate Interests
The Complainant asserts that it has never granted the Respondent any permission to use its trade mark and frankly admits that it has no idea why the Respondent registered the Domain Name, unless it was to take unfair advantage in some way of the Complainant’s trade mark.
Given the fame of the Complainant’s trade mark in the field of construction in the United Kingdom5 and the fact that the Respondent is resident in the United Kingdom, the Panel accepts that the Respondent has a case to answer.
In the absence of any explanation from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name will inevitably lead to confusion and asserts that in selecting the Domain Name the Respondent is “posing” as the Respondent. While the Complainant acknowledges that it has no knowledge of the Respondent’s motives, it contends that the Respondent must have registered the Domain Name in bad faith on the basis, the Panel infers, that there is no legitimate use to which the Domain Name can be put. It is currently connected to a free parking page of the Registrar.
The Panel accepts that on the balance of probabilities (and in the absence of any explanation from the Respondent) the Respondent, a United Kingdom resident, registered the Domain Name with knowledge of the Complainant, one of the United Kingdom’s leading construction companies.
The fact that the Domain Name is connected to a parking page of the Registrar featuring sponsored links to building-related websites having no connection to the Complainant indicates to the Panel that the Respondent’s motive for selecting the Domain Name is unlikely to have been a bona fide motive. In the absence of an explanation from the Respondent the Panel finds that the Respondent registered the Domain Name in bad faith with a view to exploiting it unfairly in some way to his own advantage and/or to the disadvantage of the Complainant. The Domain Name clearly identifies the Complainant and no other.
To succeed in a complaint under the Policy a complainant must prove both bad faith registration and bad faith use of the domain name in issue. As indicated, the Domain Name is currently being used to connect to a parking page of the Registrar and that parking page is featuring sponsored links to building-related websites having no connection with the Complainant. Even if it is the case that any advertising revenue being derived from the Respondent’s website is being earned by the Registrar rather than the Respondent, there is a severe risk that by impersonating the Complainant (and the Panel finds it very likely that Internet users seeing the Domain Name will believe it to be a domain name of the Complainant), the links appearing on the website will take business away from the Complainant.
Moreover, in the view of the Panel, the Domain Name in the hands of the Respondent poses an abusive threat hanging over the head of the Complainant. The Registrar’s free parking page may well only be a temporary interim use pending some other abusive use that the Respondent has in mind. In the view of the Panel that threat itself constitutes a continuing use of the Domain Name in bad faith.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: October 18, 2016
1 This information was derived by the Panel from a company search freely and publicly available online at the United Kingdom companies’ registry.
2 The registration is held in the name of Wates Group Ltd.
3 The domain name registration is held in the name of Wates Group Ltd.
4 Moreover, those that the Panel has checked (e.g., ) are not held in the name of the Complainant, although the admin contact has an email address using the Complainant’s domain name.
5 Not a matter in respect of which the Complainant has adduced any evidence, but nonetheless a matter within the knowledge of the Panel.
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