The Complainant is PRC Hi-Fi & Video Limited, United Kingdom, represented by Rational IP Limited, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2020, the Registrar transmitted by email to the Center its verification response: (a) confirming it is the Registrar for the disputed domain name; (b) confirming the disputed domain name is registered in the name of the Respondent and the contact details are correct; (c) indicating the language of the registration agreement is English; and (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. The Center verified that the 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 17, 2020. 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 conducts a business relating to the sale of hi-fi entertainment goods, electronic goods, and related accessories. The products it sells are leading electronics brands including Samsung, LG, and Sony. The Complainant’s business was established in East London in the mid-1970s. Its operations have expanded since then. Amongst other things, it has a large showroom in Ilford, East London, which has been operating from the late 1980s. It appears, however, that the Complainant supplies products only to the market in the United Kingdom. According to the Complaint, the Complainant adopted the business name or trading style “PRC Direct” in the early 1980s and has been using it ever since. It has also been promoting and selling its products via its website “prcdirect.co.uk” since it registered that domain name in 1999. In the financial years since 2014/2015, the Complainant’s turnover has exceeded GBP 5 million each year. It has submitted evidence showing it has annual advertising and promotional expenditure in these years in excess of GBP 200,000. The Complainant’s website at “prcdirect.co.uk” has had between almost 480,000 and 590,000 new visitors each year between 2017 and 2019. The Complainant’s services have been mentioned in journals including What HiFI, Eurogamer, and Good Housekeeping. In addition to promotion through magazines, leaflet drops, billboards and the like, the Complainant has also sponsored the International Indian Film Academy Awards in 2007 and the Prideview Cricketers Cup in 2019 (which the Complainant describes as the commercial property industry’s biggest cricket tournament). The Complainant also promotes its services and offerings through accounts with Facebook (since 2010) and Twitter (since 2009) using “prcdirect”. The Complainant has a pending European Union Trademark Application No. 018238757 for PRCDIRECT in respect of retail and wholesale services for electrical goods, home appliances, and hi-fi entertainment systems in International Class 35, as well as related installation and repair services in International Class 37. The Respondent registered the disputed domain name on October 23, 2019. It resolves to a website apparently offering for sale products of the kind offered for sale by the Complainant. A notable feature of the website is that it features, quite prominently, the “PRCdirect” logo in a format and appearance which closely resembles that used by the Complainant, including a closely corresponding blue colour. The Respondent also started a Facebook page under the account “prcdirect-mall” in November 2019. The Complainant says it has received a number of complaints from customers who have attempted to buy products through the Respondent’s website including complaints about non-delivery of product or delivery of the wrong product. For example, one complaint states it received a scarf instead of a TV. Other complaints (often in quite abusive terms) state they have placed orders and paid money, but never received any goods at all. It appears from complaints submitted to the Complainant that the Respondent’s website, or Facebook account, was offering for sale televisions ordinarily priced at over GBP 400 for under GBP 100. Prior to filing the Complaint, the Complainant attempted to contact the Respondent through the latter’s Facebook page and the website, without success. 5. Discussion and Findings No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his 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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. As the Complainant acknowledges, its pending trademark application does not by itself qualify as rights in a trademark under the Policy. The Complainant instead relies on the rights at common law deriving from its use and reputation in “PRCdirect”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. Having regard to the length and extent of use and marketing spend outlined in section 4 above, the Panel considers that the Complainant has adequately demonstrated that it has acquired a sufficient reputation in “PRCdirect” in the United Kingdom for the purposes of the Policy. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. The disputed domain name, therefore, consists of the Complainant’s trademark and the term “-mall”. “Mall” is an ordinary English word and, in the context of retailing, is often used to denote a shopping centre or outlet. As this requirement under the Policy is essentially a standing requirement, the addition of a term of this nature does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. 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 disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. While it may be that the Respondent as a form of privacy proxy service is not in fact the registrant, it has not identified anyone else for whom it holds the disputed domain name and no other person has been prepared to reveal itself as the holder. Furthermore, the Respondent (or whomever it is holding the disputed domain name for) is using the confusingly similar disputed domain name in connection with (on the view most favourable to the Respondent) goods in competition with the Complainant or, if a number of the complaints received by the Complainant are correct, as an outright scam. It is also noteworthy that the default currency used on the website, even for a browser from Australia (as in the Panel’s case), is pounds sterling. In either case, such use does not qualify as an offering of goods or services in good faith under the Policy. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. 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 use of the “PRCdirect” trademark on the Respondent’s website in a format very closely resembling that used by the Complainant allows an inference to be drawn that the Respondent was fully aware of the Complainant when the Respondent adopted the disputed domain name many years after the Complainant began using it. The Panel draws that inference all the more confidently as the Respondent’s website defaults to using British pounds as the currency prices are advertised on the website, even when accessed from the Panel’s location. (Other currencies options are also offered.) In these circumstances, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith. The adoption and presentation of the Complainant’s trademark in a form which so closely resembles the form used by the Complainant shows a clear intention to target the Complainant. Offering goods and services for sale by reference to that trademark in competition with the Complainant in circumstances where the Respondent does not have a right or legitimate interest to use the disputed domain name evidences use in bad faith. That conclusion is reinforced by the complaints received by the Complainant from consumers indicating that the website appears to be operating as a scam. Accordingly, the Complainant has established all three requirements under the Policy. 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, Warwick A. Rothnie
Sole Panelist
Date: August 3, 2020
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