The Complainant is Portakabin Limited of Huntington, York, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DLA Piper UK LLP, United Kingdom.
The Respondent is James Richens of Sutton, Surrey, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with 123-Reg Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2017, 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 February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on March 27, 2017. 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 designs, manufactures, sells and leases portable toilet buildings. It has been doing so continuously under the PORTALOO trade mark since 1966.
The Complainant has many PORTALOO trade marks registered including the following;
UK trade mark number 1183850 for PORTALOO, registered on October 21, 1982 in class 6;
UK trade mark number 987946 for PORTALOO, registered on February 24, 1972 in class 11;
UK trade mark number 1159657 for PORTALOO, registered on August 18, 1981 in class 12;
UK trade mark number 971841 for PORTALOO, registered on March 3, 1971 in class 19;
UK trade mark number 1390104 for PORTALOO, registered on April 5, 1991 in class 37.
The disputed domain name was registered by the Respondent on November 9, 2016. The Panel has ascertained that, as at the date of this decision, the disputed domain name points to a landing page which contains links to goods and services such as “Cheep [sic] Car Hire”, “Hire Limousine” and “Limo Hire Sydney”. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has rights in the name PORTALOO. It provides information about many of its trade marks for PORTALOO. Details of a number of those trade marks are set out above. The Complainant also provides additional information about the extensive repute of the PORTALOO brand and the manner in which it is promoted, which includes a website at “/portaloo”.
The Complainant says that when comparing the disputed domain name with its PORTALOO trade mark, the generic Top-Level Domain (“gTLD”) suffix “.com” should be ignored as it is simply a technical requirement of registration. The Complainant says that the disputed domain name combines its PORTALOO trade mark with the surname of the Respondent and the purely descriptive word “hire”. It says that these additional words do not prevent the disputed domain name from being confusingly similar to its PORTALOO trade mark and that the trade mark is clearly recognizable within the disputed domain name as the distinctive and dominant part of it. The Complainant refers to a number of decisions of previous UDRP panels who have considered this issue and have held that a domain name comprising a combination of a personal name or a descriptive term with a well known trade mark does not serve to prevent such a domain name from being confusing similar to the trade mark. See, by way of example, FIL Limited v. , Domain Discreet Privacy Service / Igor Ivanov,WIPO Case No. D2014-0131() and J Limited v. Herethereandeverywhere, Inc.,WIPO Case No. D2011-1003 ().
The Complainant adds that Internet users will assume that the disputed domain name is in some way related to the Complainant because the word “hire” will be perceived as a reference to the services the Complainant provides for the hire of its Portaloo products.
For these reasons, the Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that the Respondent is not a licensee of the Complainant nor has he otherwise been permitted to register and use the disputed domain name by the Complainant. The Complainant says that it is not aware of any evidence that might support a claim by the Respondent to rights or legitimate interests in the disputed domain name. The Complainant says that it has accordingly made out a prima facie case that that the Respondent has no rights or legitimate interests in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith. It says that the Respondent’s use of the Complainant’s trade mark in the disputed domain name is intended to, and does in fact, impersonate the Complainant and/or create an impression of an association or affiliation with it, all of which is indicative of a bad faith registration under paragraph 4(b)(iv) of the Policy. The Complainant says that it is inconceivable that the Respondent would have been unaware of the Complainant’s business and its PORTLOO trade mark as at the date of registration of the disputed domain name. Moreover, the Complainant says that the Respondent’s registration of the disputed domain name creates confusion by deceiving and misdirecting Internet users looking for the Complainant. It says that this risk of confusion must have been known to and intended by the Respondent in his bad faith pursuit of financial gain.
The Complainant says that there cannot be an innocent explanation for the Respondent’s registration of the disputed domain name as it is only capable of use in respect of the hire of the Complainant’s PORTALOO toilets and there is no suggestion that the Respondent is in any way engaged in such activity. It says that the only known good faith user of a domain name incorporating the words “PORTALOO” and “hire” is the Complainant.
The Complainant asserts that mere registration of a domain name can be held to constitute bad faith use. It refers to the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in which passive holding of a domain name was found, in the circumstances of that case, to amount to bad faith use of it. Moreover it says that the disputed domain name was registered for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion between the disputed domain name and the Complainant’s trade mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trade mark PORTALOO; its many registered trade marks for PORTALOO satisfy this requirement.
Whether the disputed domain name is similar to the Complainant’s trade mark requires consideration of a number of factors. First, as the Complainant says, when assessing the degree of similarity between a disputed domain name and a complainant’s trade mark it is established practice to disregard the gTLD suffix, that is “.com” in the case of the disputed domain name. Second, the Complainant’s trade mark is incorporated in its entirety into the disputed domain name, is clearly distinguishable within it and is the dominant component of it. Third, the Complainant’s trade mark is sandwiched between two other words within the disputed domain name. The word which precedes the trade mark, “Richens”, has no known meaning in the English language and is likely to be perceived, correctly, as the name of a person. The word which follows the Complainant’s trade mark, namely “hire”, is, as the Complainant says, prone to be associated with one of the principal services associated with the Complainant. Finally, the disputed domain name in its entirety suggests that the Respondent has available the Complainant’s products for hire. For this reason, the additional words do not prevent the disputed domain name from being confusingly similar to the Complainant’s PORTALOO trade mark.
The decisions of other UDRP panels to which the Complainant has referred deal with circumstances in which either a descriptive term or a personal name has been used in conjunction with a third party trade mark in a domain name rather than to both added elements being used in combination. However, the same principles are applicable if both a descriptive term and a personal name are used within the disputed domain name.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). This says that the consensus view of panelists is that, “whilst the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel accepts the Complainant’s contentions that the Respondent is not a licensee of the Complainant nor is he otherwise permitted to register and use the disputed domain name by the Complainant, nor is the Complainant is aware of any evidence that might support a claim by the Respondent to rights or legitimate interests in the disputed domain name. There is no evidence that any of the circumstances set out at paragraph 4(c) of the Policy are likely to be applicable. Accordingly, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and, as a consequence, the burden of production shifts to the Respondent to seek to dispel this inference. As there has been no communication at all from the Respondent, it has not even attempted to rebut the Complainant’s assertions.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name includes the Complainant’s trade mark which is both relatively distinctive and is, on the basis of the Complainant’s evidence, well known in the United Kingdom where the Respondent is located. It is highly improbable that the Respondent registered it without an awareness of the Complainant’s business. The Respondent cannot have had any good faith reason for considering that he was entitled to register a domain name incorporating the Complainant’s trade mark as its central and most distinctive component.
The Complainant claims that the Respondent has not used the disputed domain name.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 the panel found that the passive holding of a domain name by the respondent amounted to bad faith registration and use. In reaching this finding, the panel took into account a number of factors, including the strength of the complainant’s trade mark and the failure by the respondent to provide any evidence of any actual or contemplated good faith use by it of the domain name. It reached the conclusion that it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate. Although not all the factors present in Telstra are evident in this case, the Panel reaches a similar conclusion, namely that there cannot have been any possible good faith reason for the Respondent’s registration of the disputed domain name and a passive holding of it amounts to bad faith registration and use.
For the sake of completeness, the Panel should add that it is usual (and helpful) for a complainant to include within its complaint either details of any website to which a disputed domain name points or, alternatively, to state that a disputed domain name does not point to any website. Whilst the Complaint asserted that the disputed domain name was not being used, the Panel wished to establish whether it pointed to a website. Paragraph 4.5 of WIPO Overview 2.0 considers whether a panel may perform independent research when reaching a decision and comments that “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name….”.
The Panel has accordingly visited the website to which resolves, and ascertained that, as at the date of this decision, the disputed domain name points to a landing page which contains links to goods and services such as “Cheep [sic] Car Hire”, “Hire Limousine” and “Limo Hire Sydney”. It is not clear whether this was the case as at the date that the Complaint was submitted.
It is well established however, that use of a disputed domain name including a third party’s well-known trade mark solely in order to point to a parking page comprising sponsored links (as in Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273, for example) will also generally be regarded as bad faith registration and use. As with passive holding of a disputed domain name under Telstra-type circumstances, a respondent’s actions or inactivity do not dispel a finding that use by the respondent is either nil or token and that it is not possible to conceive of an actual use that would not infringe the complainant’s trade mark rights.
For these reasons also, the Panel finds that the disputed domain name was 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 disputed domain name, , be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: April 10, 2017
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