The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Armel Abi, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 12, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center has also indicated to the Complainant that the language of the Registration Agreement was French, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceedings, a Complaint translated into French, or a request for English to be the language of proceedings. The Respondent was also given the opportunity to comment on the language of proceedings. The Complainant filed a request for English to be the language of proceedings and filed an amended Complaint on November 13, 2019. The Center verified that the Complaint together with the 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2019. The Center appointed Andrea Mondini as the sole panelist in this matter on December 11, 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 largest UK multi-channel retailer of trade tools, accessories and hardware products. It was founded in 1979 and was acquired in 1999 by Kingfisher Plc, an international home improvement retailer. Today, the Complainant has over 1,300 stores in 10 countries in Europe, the Russian Federation and Turkey and also operates the website at “www.screwfix.com” for online sales. The Complainant owns numerous registrations for the trademark SCREWFIX, including European Union Trade Mark Registration No. 646133 filed on September 23, 1997 and registered on February 28, 2000 in classes 6, 8 and 9. The disputed domain name was registered on September 15, 2019 and does not resolve to any active website. The disputed domain name has been used to send a fraudulent email in English with a fake Purchase Order purporting to come from the Complainant’s head buyer to one of the Complainant's suppliers. 5. Parties’ Contentions A. Complainant The Complainant in essence contends the following: The Complainant has over many years built up substantial goodwill and reputation in the SCREWFIX trademark. The disputed domain name includes the identical SCREWFIX trademark and the merely descriptive (and hence not distinctive) word “trade”. Therefore, the disputed domain name is to be considered identical or at least confusingly similar to the Complainant’s trademark. Given that the disputed domain name incorporates the Complainant’s trademark in full and without any other distinctive element, the disputed domain name could never be used for a legitimate purpose by any party other than the Complainant. The Respondent therefore has no rights or legitimate interests in the disputed domain name. The disputed domain name has been registered and used in bad faith: the Complainant provided evidence that shortly after the registration of the disputed domain name, an individual referring himself with a false name and purporting to be the head buyer of the Complainant sent an email (in English) to one of the Complainant’s actual suppliers in Poland to place a large order of goods seemingly on behalf of the Complainant. To make this order appear legitimate, that individual placed a fabricated purchase order using the email address “[...]@screwfix-trade.com” and the Complainant’s actual email footer information to create the impression that the order was legitimate. The aim of such a scam was to convince the targeted supplier of goods to deliver the goods, believing that payment by the Complainant would follow. Fortunately, in this case, the supplier was alert to the scam and informed the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (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. 6.1. Language of the Proceeding In the present case, French is the language of the Registration Agreement. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. The Complainant filed the Complaint in English and, on November 13, 2019, it submitted a request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding. Considering (i) that the Respondent did not submit a response or any request regarding the language of the proceeding, and (ii) that the Respondent sent the fraudulent email to the Polish supplier in English, the Panel determines that the language of the proceeding is English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has shown that it holds registrations for the trademark SCREWFIX. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates the identical trademark SCREWFIX. The addition of the descriptive word “trade” in the disputed domain name does not dispel confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Given that the disputed domain name incorporates the Complainant’s trademark in full and without any other distinctive element, the Complainant contends that the disputed domain name could never be used for a legitimate purpose by any party other than the Complainant. The Complainant has further shown that the disputed domain name has been registered and used with the intention of furthering a fraudulent scheme whereby an individual used a false name purporting to be an employee of the Complainant to place an order and convince the targeted supplier to deliver the goods, believing that payment by the Complainant as a trusted customer would follow. Clearly, there can be no right or legitimate interest in holding a domain name for fraud through impersonation (see Kingfisher Plc v. WhoisGuard, Korotoum Djaley,WIPO Case No. D2018-2497). In the absence of a response to rebut the Complainant’s prima facie case, and considering in particular these fraudulent activities, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As discussed above, and considering the nature of the disputed domain name being confusingly similar to the Complainant’s trademark, the Complainant has shown that the disputed domain name has been registered and used in bad faith for the purpose of furtherance of fraud activities through impersonation. The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 Andrea Mondini
Sole Panelist
Date: December 18, 2019
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