The Complainant is Valpak Ltd of Stratford-upon-Avon, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 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 March 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 18, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on April 25, 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 is a private company incorporated with limited liability under company number 07688691 which carries on an environmental solutions business in Stratford-upon-Avon. It has supplied such solutions to over 4,000 customers since 1997 when the first packaging waste regulations came in the UK. Since then, the Complainant has offered solutions under other legislation and has expanded its services to cover wider areas of sustainability. Its wholly owned subsidiary, Valpak Recycling Limited, specializes in the management and recycling of waste.
The term "valpak" simpliciter or in combination with other words is registered in the name of the Complainant as trade marks for various classes of goods and services with the European Union and the United Kingdom Intellectual Property Offices. The oldest of those registrations is for the word mark VALPAK which was registered as a United Kingdom trade mark for services in classes 35, 36, and 41 under registration number UK00002015186 with effect from October 11, 1996.
"Valpak" forms part of the Complainant's corporate name. By virtue of its turnover of GBP 39.7 million in 2015, various promotional and marketing events that have been reported in the press, radio and television broadcasts, and its social media activities, consumers and the trade in the United Kingdom associate that word (at least in relation to environmental services) with the Complainant and none other, according to the Complainant.
The disputed domain name was registered on September 18, 2015. The Respondent has used the disputed domain name as a URL for a website that reproduced the Complainant's logo which has been registered together with the word "valpak" registered with the European Union Intellectual Property Office as an European Union trade mark for goods and services in classes 16, 35, 36, 39, 40 and 41 under registration number EU 002842904, registered on February 23, 2004. The site also reproduced without the Complainant's consent other works in which copyright subsisted and which copyrights belonged to the Complainant. Following complaints by the Complainant's legal advisors to the company that hosted that site, that website was removed.
The disputed domain name is now used as a URL for a pay-per-click site with links to the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name on the grounds that:
- The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
In respect of the first ground, the Complainant refers to its trade mark registrations (all of which predate the registration of the disputed domain name). It contends that the disputed domain name combines its trade mark with the word "recycling" which is the business of its wholly owned subsidiary and "ltd" which is an abbreviation of the word "limited" which forms part of that company's corporate name. It invites the Panel to conclude that the combination of the trade mark with a description of the Complainant's and its corporate status is likely to mislead consumers and thus, be confusingly similar to a trade mark in which the Complainant has rights.
As for the second ground, the Complainant submits that any use of the term "valpak" without its consent would infringe its trade marks and amount to passing off. None of the circumstances set out in paragraph 4(c) of the Policy applies. The use that the Respondent has made of the disputed domain name was obviously not in connection with a bona fide offering of goods and services. The Respondent is not, and never has been, known as "valpak". It is not making a legitimate noncommercial or fair use of the disputed domain name.
With regard to the third ground, the Complainant argues that the Respondent had constructive notice of its trade mark registrations as they would have come to light on a straightforward search but chose to disregard them. Moreover, he used the disputed domain name for an email address to offer jobs posing as the Complainant, and linked the disputed domain name to a website that was made up to resemble the Complainant's site. That alone ought to be enough to support a finding of registration and use in bad faith but the Respondent's conduct is compounded by the use of a site for a pay-per-click landing page that falls within the scope of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy which was incorporated verbatim into the Respondent's registration agreement provides:
"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present." A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The Complainant's argument that the combination of the Complainant's registered trade mark VALPAK (registered in the United Kingdom under registration number UK00002015186) with the word "recycling" and the abbreviation "ltd" in the disputed domain name is confusingly similar to that registered mark is accepted and adopted.
The disputed domain name incorporates the Complainant's mark in its entirety and the additional terms do not prevent a finding of confusing similarity.
Accordingly, the disputed domain name is confusingly similar to the Complainant's VALPAK mark. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
The Complainant has registered VALPAK simpliciter or in combination with other words or devices as European and British trade marks for goods and services in various classes and has a reputation and goodwill at least in the UK in relation to environmental services by reference to the VALPAK mark. It would be hard for any other entity to trade under that name. There is no evidence that the Respondent has ever been known by the VALPAK name and the use to which the disputed domain name was first put would be actionable.
The Respondent has used the disputed domain name to host a website that was nearly identical to the Complainant's website and the Complainant has provided evidence that the Respondent has set up and used an email address associated with the disputed domain name for fraudulent purposes, i.e., to send fake job offers.
Under these circumstances, it is hard to think of any ground that might entitle the Respondent to a right or legitimate interest in the disputed domain name. The evidence leads overwhelmingly to the conclusion that the Respondent had no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found to be present, shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii). The fourth of those circumstances is that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the Respondent's web site or location or of a product or service on that web site or location.
The Panel has already found the disputed domain name to be confusingly similar to the Complainant's trade mark and has inferred an intention to create a likelihood of confusion with the Complainant's mark from the use of the disputed domain name. The obvious consequence of such confusion is that Internet users would be attracted to the Respondent's website where at least some of those users would try some of the pay-per-click links for which the Respondent would derive commercial gain.
As explained above, the Respondent's impersonation of the Complainant using the disputed domain name evidences that the Respondent was aware of the Complainant and sought to take unfair advantage of the Complainant and its affiliates.
The Panel concludes 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.
Jane Lambert
Sole Panelist
Date: May 1, 2017
1 The Respondent appears to have used a name and contact details that resemble an affiliate of the Complainant. In light of this potential identity theft, the Panel has decided that no purpose is served by including the name of the registrant and has therefore redacted the Respondent's name from the caption and body of this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name including the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, but has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances in this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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