The Complainant is Countrywide Estate Agents of Chelmsford, Essex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by DWF LLP, United Kingdom.
The Respondent is Super Privacy Service Ltd c/o Dynadot of San Mateo, California, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2018. On December 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 5, 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 December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on January 7, 2019. 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 one of the United Kingdom’s leading estate agencies owning and operating a network of around 850 interlinked branches throughout the United Kingdom trading under a number of well-known brands, including in Scotland the names or marks “Slater Hogg & Howison” and “Slater Hogg”, “Slater Hogg & Howison Conveyancing”. The Complainant, or its predecessors in title, have traded under these marks since 1975 and since 2005 the Complainant has provided a complete home buying service under this mark, including conveyancing services. A fully owned subsidiary of the Complainant, Bureau Properties Limited, is owner of United Kingdom trade mark registration 00002145329 for SLATER HOGG & HOWISON filed on 18 September 1997 and the Complainant is the exclusive licensee of this mark.
From August 2005 until September 2018 the Complainant’s parent company Countrywide Plc owned the Disputed Domain Name and licensed it to the Complainant. The Complainant used the Disputed Domain Name to re-direct to its main website until the Complainant inadvertently permitted the Disputed Domain Name to lapse on September 21, 2018. The Complainant has also operated a conveyancing website at “”.
The Disputed Domain Name was registered on October 27, 2018 and has been re-directed to a website displaying pornographic material. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns common law trade mark rights in the marks SLATER HOGG & HOWISON and SLATER HOGG and SLATER HOGG & HOWISON CONVEYANCING as a result of very substantial use in the United Kingdom, which is protectable under the law of passing off. It notes that it trades through 25 branches in Scotland and through its website at . The Complainant submits that it has won over 200 awards for its estate agency services (including in Scotland under the “Slater Hogg” name), achieving high accolades from both industry peers and its customers. Most recently in 2018 at the prestigious ESTAS (Estate Agency) awards, it won the Gold award for the best large agency group. In 2011, “Slater Hogg & Howison” was named the “Best Estate Agency in Scotland” at the Estate Agency of the Year Awards. During the period 2016 to October 2018, the Complainant has under the “Slater Hogg” name provided estate agency and letting services to over 15,000 customers. Its turnover during that period was approximately GBP 26 million, with approximately GBP 1.2 million having been spent on marketing, advertising, and promotion under the SLATER HOGG mark.
Further, the Complainant notes that its fully owned subsidiary, Bureau Properties Limited, is owner of United Kingdom trade mark registration 00002145329 for SLATER HOGG & HOWISON filed on September 18, 1997 and that the Complainant is the exclusive licensee of this mark. The trade mark owner has submitted a letter by way of evidence of this license and confirmation that it authorizes the Complainant to accept a transfer of the Disputed Domain Name in the event that this Complaint is successful.
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to its SLATER HOGG & HOWISON and SLATER HOGG common law marks and is confusingly similar to its UK trade mark registration.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It says that the fact that the Disputed Domain Name resolves to a pornographic website demonstrates that the Respondent is not making a bona fide use of the Disputed Domain Name. It says further that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that it is making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. In addition it says that the email offering the Disputed Domain Name for sale, that it received from the Respondent within days of the inadvertent lapse of the Disputed Domain Name and of the date of subsequent registration by the Respondent suggests that the Respondent sought to take advantage of the lapse of the Disputed Domain Name and sought to sell it to the Complainant or to one of its competitors at a premium. The Complainant notes that there is also no evidence that the Respondent has registered the Disputed Domain Name for a legitimate noncommercial or fair purpose and the fact that it is registered by a privacy service is indicative of the Respondent seeking to conceal its identity in circumstances that it is using the Disputed Domain Name for illegitimate purposes.
The Complainant submits that in these circumstances there is evidence to support its case that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling it to the Complainant or to one of its competitors at a profit. This says the Complainant is indicative of the bad faith registration and use of the Disputed Domain Name by the Respondent. The Complainant says that after the Respondent’s offer to sell it to the Complainant, the subsequent use of the Disputed Domain Name for a pornographic website and an email from the Respondent stating that offers were being taken for the sale of Disputed Domain Name, were all calculated to put pressure on the Complainant to acquire the Disputed Domain Name. According to the Complainant, the Respondent’s failure to respond to its cease and desist letter is further evidence of its bad faith.
In addition, the Complainant submits that the fact that the Respondent has used the Disputed Domain Name to resolve to a pornographic website is in and of itself evidence of the registration and use of the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the exclusive licensee of a United Kingdom trade mark registration for SLATER HOGG & HOWISON. The registration is owned and licensed by a fully owned subsidiary of the Complainant. The Complainant has also provided evidence that it has traded for many years under the name, style or mark SLATER HOGG & HOWISON or SLATER HOGG and, as a result of its activities, has developed a substantial goodwill and reputation in the marketplace in connection with these names or marks and its real estate agency and conveyancing services businesses, such that the Panel has no doubt that the Complainant would be able to protect its name under the law of passing-off.
The Disputed Domain Name wholly incorporates the SLATER HOGG name or mark together with the common English word “conveyancing” but with no other distinguishing element. The Panel is of the view that “Slater Hogg” is obviously an abbreviation of “Slater Hogg & Howison” and the Disputed Domain Name is confusingly similar either to SLATER HOGG or to SLATER HOGG & HOWISON.
As a result, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It says that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that it is making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant submits that the fact that the Disputed Domain Name resolves to a pornographic website demonstrates that the Respondent is not making a bona fide use of the Disputed Domain Name. In addition it says that the Respondent’s registration of the Disputed Domain Name and the email offering the Disputed Domain Name for sale, that it received from the Respondent within days of the Complainant inadvertently allowing the Disputed Domain Name to lapse, suggests that the Respondent has set out to make a profit off the lapse of the Disputed Domain Name by selling it at a premium to the Complainant or to one of its competitors.
The Complainant has also noted that there is no evidence that the Respondent has registered the Disputed Domain Name for a legitimate noncommercial or fair purpose and the fact that it is registered by a privacy service is indicative of the Respondent seeking to conceal its identity in circumstances that it is using the Disputed Domain Name for illegitimate purposes.
The Panel finds that the Complainant has made out a prima facie case under this head of the Policy. As the Respondent has failed to rebut this case and taking into consideration the Respondent’s apparent use of the Disputed Domain Name to resolve to a pornographic site and its attempts to extract what would no doubt have been a healthy premium price from the Complainant in exchange for the lapsed Disputed Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b)(i) of the Policy there is evidence of registration and use in bad faith where there are circumstances indicating that a party has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
The Panel finds that the required circumstances under paragraph 4(b)(i) of the Policy are made out in this case. Following the inadvertent lapse of the Complainant’s registration of the Disputed Domain Name it is apparent that the Respondent registered it and then proceeded to offer it back to the Complainant for sale in order to make a profit. The Respondent added to the pressure by suggesting to the Complainant that it was offering the Disputed Domain Name to other parties and by facilitating that the Disputed Domain Name resolved to a pornographic website, presumably with a view to damaging or tarnishing the Complainant’s reputation. This is a classic case of registration and use of a domain name in bad faith and is precisely the kind of conduct that the Policy sets out to proscribe. That the Respondent registered the Disputed Domain Name using a privacy service presumably to try and hide its identity and failed to respond to the Complainant’s cease and desist letter, only serves to reinforce the Panel’s view of its bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith and the Complaint also succeeds under this element 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 Disputed Domain Name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: January 21, 2019
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