The Complainant is Wickes Limited of Northampton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Freeths LLP, United Kingdom.
The Respondent is P, Inc. of Cheyenne, Wyoming, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Sea Wasp, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2018. On May 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 3, 2018, 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 May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 5, 2018. 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 Wickes Limited, a company registered under the laws of England which supplies goods for general repair, maintenance and improvement projects needed by do-it-yourselfers and tradesmen.
The Complainant is the owner of numerous trade mark registrations for the trademark WICKES worldwide. Among others, the Complainant is the owner of the following trademark registrations:
- UK 00002026344 WICKES (word & Design) with a registration date of July 7, 1995,
- UK 00002001821 WICKES (word), filing date November 14, 1994,
- UK 00001221188 WICKES (word) registered on June, 21, 1984.
The Disputed Domain Name was registered on December 13, 1995.
The Disputed Domain Name resolves to a website with a holding page with various paid sponsored links using related keywords such as “Wickes Online”, “Garden DIY”, “Timber Suppliers”, etc. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows: Identical or Confusingly Similar
The Complainant argues that the Disputed Domain Name is confusingly similar to the WICKES trademark as it fully incorporates the latter, being the only difference the Top-Level Domain (“TLD”) “.com”.
In view of this, Internet users will be confused into believing that the Disputed Domain Name is registered to, or at least operated, authorized or endorsed by the Complainant. Rights or Legitimate Interests
The Complainant has not granted any licenses or other rights to the Respondent to use the trademark WICKES in the Disputed Domain Name or to register any domain name which incorporates the Complainant’s trademark.
Furthermore, the Respondent has not conducted any prior business under the name WICKES in connection with a bona fide offering of goods or services.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Registration and Use in Bad Faith
The Complainant submits that the registration of the Disputed Domain Name was registered in bad faith due to the fact that the Disputed Domain Name uses the Complainant’s WICKES trademark, in direct contravention of the Complainant’s trademark prior rights. Internet users will be confused into believing that the Disputed Domain Name has some form of association with the Complainant since the Disputed Domain Name fully incorporated the Complainant’s trademark.
As for the use, the Complainant estates that the Disputed Domain Name has been or is planning to be intentionally use to attract Internet users, for commercial gain, to the Respondent website, by creating a likelihood of confusion with the WICKES trademark, since users navigating to the Disputed Domain Name are greeted with a holding page with various paid sponsored links using related keywords such as “Wickes Online”, “Garden DIY”, “Timber Supplier”, among others, when users click the links they are directed to various third party websites instead of directing them to the legitimate domain name website of the Complainant at . Thereby, the Disputed Domain Name is being used to direct web traffic with the intention to generate profit for the Respondent by use of paid advertising links. As such the Disputed Domain Name is being used for the purpose of commercial gain to the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Domain Name is identical or confusingly similar to a trademark 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in WICKES as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s trademark WICKES. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s WICKES trademark in its entirety.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. 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 you of the dispute, your use of, 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. You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
III. You are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests by the Respondent. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name.
There is no evidence that the Respondent is commonly known by the Disputed Domain Name or any similar name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name is being used to attract Internet users for commercial gain, to the Respondent website or an affiliate website by creating a likelihood of confusion with the Complainant´s trademark.
The Complainant explains in its Complaint that when visiting the disputed domain name, users are greeted with a holding page with various paid sponsors links related to the Complainant’s main activities. The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent intentionally created this website to mislead users to third party websites instead of reaching the Complainant’s legitimate website. This shows that the Respondent could not ignore the Complainant’s trademark at the moment of registering the Disputed Domain Name.
Furthermore, the Respondent was well aware of the Complainant’s prior rights and business, since the Disputed Domain Name was registered on December 1995, while the Complainant had the registration of one of its trademarks since the year 1984.
Due to the above, it is obvious that the Respondent intentionally attracted, for commercial gain, Internet users to its website, by creating a likelihood of confusion, with the Complainant’s trademark as required by paragraph 4(b)(iv) of the Policy. The use by the Respondent of the Disputed Domain Name is obstructing the Complainant’s business and causing confusion to the general public, who could never reach the Complainant’s legitimate domain name, or the related website.
Therefore, taking all circumstances into account, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name, disturbing the business of the Complainant.
The third element of paragraph 4(a) of the Policy is, therefore, satisfied. 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.
Pablo A. Palazzi
Sole Panelist
Date: June 21, 2018
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