The Complainant is Folkestone Harbour Limited Partnership of Ashford, United Kingdom, represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Domain Sales - (/market/listing) *Offers above $500 will be considered c/o Dynadot of San Mateo, California, United States of America (“United States”). 2. The Domain Name and Registrar
The 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 11, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2018, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name was registered on June 28, 2018 at “T18:51.0Z” (i.e.,6:51pm GMT);
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
but disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 8, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 6, 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 a limited partnership registered in England and Wales. It has been registered since March 15, 2007. It is engaged in the business of acquiring, developing and managing property in the port town of Folkestone in Kent, United Kingdom.
The Complainant is the owner of a trademark registered in the United Kingdom, No. UK00003321127 for FOLKELIFE in respect of a wide range of goods and services in International Classes 9, 14, 16, 18, 21, 25, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45. The trademark was entered on the register on October 12, 2018 following an application filed by the Complainant on June 28, 2018. The United Kingdom Intellectual Property Office (“UKIPO”) automated response system emailed to the Complainant notification that the application had been received on June 28, 2018 by 1:25pm GMT and confirmation of the payment of the filing fee on June 28, 2018 at 2:11pm GMT.
The disputed domain name was registered on June 28, 2018 at 6:51pm. A corresponding domain name, was registered shortly after this at 19:51, on the same day, (it is not clear if this is GMT or British Summer Time).
As entered in the WhoIs record confirmed by the Registrar, the Respondent’s “name” is recorded as Domain Sales - (/market/listing) *Offers above $500 will be considered c/o Dynadot. Following registration, the disputed domain name resolved to a web page which listed the disputed domain name for sale at USD 2,988. The domain name resolved to a web page which listed that domain name as for sale at the price of GBP 895. The Complainant says it has brought a complaint against this “parallel” domain name under the appropriate procedures. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his, her or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 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 proven ownership of the trademark registered in the United Kingdom, Trademark No. UK00003321127, for FOLKELIFE.
The disputed domain name differs from the Complainant’s trademark only by the omission of the “.com” generic Top-Level-Domain (“gTLD”). As it is a functional component of the domain naming system, it is permissible to disregard that omission in the circumstances of this case. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The disputed domain name, therefore, is identical to the Complainant’s trademark.
Accordingly, the Complainant has established the first requirement under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the Complainant’s trademark or use that trademark in a domain name. The Complainant states further that the Respondent is not affiliated with it in any way. The disputed domain name is plainly not derived from the Respondent’s name. On the basis of trademark searches conducted by the Complainant, it does not appear that the Respondent or anyone else holds trademark registrations, or applications, for “Folkelife” recorded on the Registers at WIPO or in the United States of America, the European Union, the United Kingdom or China.
As the disputed domain name is being offered for sale at a significant price, it is not being used in a noncommercial sense.
As its trademark is a coined term, the Complainant contends that there is no possible legitimate use which the Respondent could put the disputed domain name to.
More convincingly, the Complainant points to the close proximity of the registration of the disputed domain name and the corresponding domain name within, at most, an hour of each other. This was only a few hours after details of the Complainant’s application to register its trademark in the United Kingdom appeared on UKIPO’s online database.
The Complainant contends the close proximity of these registrations to each other having regard to the distinctive nature of the Complainant’s trademark as a coined term and the similarity of the webpages to which the two domain names resolved (albeit soliciting different prices) indicates that the same person, or persons co-operating with each other, registered both domain names following notification of the trademark application on UKIPO’s register to take unfair advantage of the trademark significance of the term “Folkelife”.
The Respondent has not sought to challenge that contention.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The reasons leading to the finding that the Respondent has no rights or legitimate interests in the disputed domain name also lead to the finding that the Respondent registered the disputed domain name to take advantage of the Complainant’s trademark and so was in bad faith as defined under 4(b)(i) of the Policy. In particular, as discussed in Section 5B above, the disputed domain name (based on what appears to be a coined and distinctive term) was registered only a few hours after details of the Complainant’s application to register its trademark in the UK.
In circumstances where the Respondent does not have rights or legitimate interests in the disputed domain name, the offering of the disputed domain name for sale at a price very much higher than the “standard” price for registering a domain name satisfies the requirement of use in bad faith.
Accordingly, the Complainant has established the third requirement as well. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: February 23, 2019
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