1.1 The Complainant is Kingfisher Plc. of the United Kingdom, represented by Bird & Bird LLP, United Kingdom.
1.2 The Respondent is WhoisGuard, Protected, WhoisGuard, Inc. of Panama, Panama / Korotoum Djaley of London, United Kingdom. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2018 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 9, 2018.
3.2 The Center verified that the Complaint and amended 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2018.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 28, 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
4.1 The Complainant is a company incorporated and registered as a public limited company in England. It is a home improvement retailer operating in a number of countries, selling a variety of home improvement products through its affiliated companies. Most notably, in Europe, the Complainant is the owner of the “B&Q,” “Screwfix,” “Castorama” and “Brico Depot” chains of stores.
4.2 The Complainant is the owner of various registered trade marks that incorporate or comprise the term “Kingfisher”. These include:
(i) European Union Trade Mark number 001539139 for the word mark KINGFISHER registered on December 19, 2002 in classes 35, 36, 41 and 42; and
(ii) United Kingdom Trade Mark (“UKTM”) number 00002261399 for the word mark KINGFISHER registered on January 30, 2004 in class 16;
4.3 The Complainant is also the owner of the domain name from which it operates a website promoting the Complainant’s business.
4.4 The Domain Name was registered on October 1, 2018. The contact details provided by the Registrar for the Respondent purport to identify an individual based in London. However, whether that is the real name of the entity or person behind the registration is questionable.
4.5 Since registration the Domain Name has been used to send a number of fraudulent emails purporting to come from a “Mr. R. Smith” of the Complainant. In those emails, which also include the Complainant’s registered number, registered address and a figurative version of its trade mark, the sender invites potential suppliers to provide him with details of the recipient’s products with a view to their purchase.
4.6 At all material times the Domain Name has also been used to redirect Internet users to the Complainant’s genuine website. This continues as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to its business and refers to the two registered trade marks identified earlier in this decision. It contends that the Domain Name comprises the terms “kingfisher” and “plc” and that as the term “plc” is “entirely non-distinctive”, it thereby follows that the Domain Name and the trade mark are identical.
5.2 So far as rights and legitimate interests are concerned, the Complainant contents that the Domain Name cannot be used legitimately by any person other than the Complainant.
5.3 So far as bad faith registration and use are concerned, the Complainant refers to the sending of fraudulent emails in the name of “Mr. R. Smith” that has already been described in the factual background section of this decision.
5.4 In this respect the Complainant claims that the way the Respondent’s fraud operates is to acquire goods without advance payment from those that respond to his email who will supply them in the mistaken belief that they have been purchased by, and will be subsequently paid for by, the Complainant.
5.5 In support of that claim the Complainant refers (in addition to the content of the email itself) to another case where the domain name was used in a similar manner by someone using the name “Andy Smith”. That domain name was then subsequently recovered by the Complainant in Nominet proceedings (see Kingfisher Plc v Andy Smith DRS 19763). The Complainant further contends that it is likely that the “Mr. Smith” in the Nominet case is the same person as the “Mr. Smith” in the present case. B. Respondent
5.6 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent the Panel from determining the dispute based upon the complaint, notwithstanding the failure of any person to lodge a Response.
6.2 To succeed in these proceedings the complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant has demonstrated registered trade mark rights in the term “Kingfisher”. The Panel accepts that the most sensible reading of the Domain Name is as the terms “Kingfisher”, “plc” and the “.net” generic Top-Level-Domain (“gTLD”). Given this, the trade mark is clearly recognisable in the Domain Name. It follows that the Domain Name is “confusingly similar” (as that term is understood under the Policy) to a trade mark in which the Complainant has rights.
6.5 For the reasons that it rehearsed previously in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh,WIPO Case No. D2014-1398, the Panel considers this to be a case of confusing similarity, rather than identity, between the trade mark and the Domain Name. But whichever is the case makes no practical difference. Either way the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.7 The Panel accepts that the Domain Name has been registered and used with the intention of furthering a fraudulent scheme whereby the registrant has sought to impersonate an individual who is either an employee and/or a member of the management of the Complainant. The Panel also accepts that it is more likely that not that the fraud has involved trying to persuade potential suppliers of the Complainant to supply goods to the Respondent in the belief that they are supplying goods to the Complainant. This is the most, if not the only, sensible reading of at least one email sent from an email address using the Domain Name. It is a conclusion that is also bolstered by the fact that the Domain Name is also being used to redirect Internet users to the Complainant’s genuine website.
6.8 Whether this is the same “Mr. Smith” who the Complainant claims was engaged in similar activity using the domain name, is less clear. The Complainant contentions here may well be correct, but the decision in the Nominet domain name case was a summary one and there is insufficient material before the Panel for it to make a finding to this effect. But whether or not these are the same or different fraudsters does not make a difference to the outcome of this case.
6.9 There is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Further, the registration and use of a domain name for such a purposes involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308). Indeed, it is difficult to conceive of a more clear-cut example of bad faith registration and use of a domain name, even if such activity does not obviously fall within the scope of any of the non-exhaustive list examples of circumstances indicating bad faith registration and use set out in paragraph 4(b) of the Policy.
6.10 Further and in any event, the redirection of Internet users undertaken by the Respondent does fall within the scope of paragraph 4(b)(iv) of the Policy.
6.11 In the circumstances, the Panel has no hesitation in finding that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: January 8, 2019
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