The Complainant is Fortnum & Mason PLC, United Kingdom (“UK”), represented by Boult Wade Tennant, United Kingdom.
The Respondent is Virgil Sofian, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2020, 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 2, 2020, 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 5, 2020. 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 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020. The Center appointed Antony Gold as the sole panelist in this matter on December 2, 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 has operated a large department store in London, United Kingdom since 1707 and has traded from that date onwards as FORTNUM & MASON. The Complainant’s operations have expanded beyond its initial department store into shops in a number of locations, both in the UK and in Hong Kong, China. In addition, the Complainant operates a transactional website at “www.fortnumandmason.com”, the domain name for which was registered by it in April 1997. The Complainant also uses the brand F&M including, in particular, on its hampers. The Complainant has registered a large number of trade marks to protect its trading styles. These include, by way of example only: - European Union Trade Mark, registration number 9036278, for FORTNUM & MASON, registered on October 28, 2010, in classes, 3, 16, 18, 20, 21, 24, 25, 28-35 inclusive and 43; - United Kingdom trade mark, registration number 2377904, for F&M registered on June 10, 2005, in classes 20, 29, 30, 35 and 39. The disputed domain name was registered on May 22, 2020. It resolves to a website branded “F&M” which purports to sell a variety of consumer-related products under the categories of “Home Accessories”, “Home and Garden”, “Technology” and “Televisions and Accessories”. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The Complainant refers to its portfolio of trade marks for FORTNUM & MASON, full details of one of these marks having been set out above. The disputed domain name contains the dominant and distinctive elements of the Complainant’s mark. All that is missing is the ampersand. Moreover, the ampersand is not capable of being part of a domain name and therefore its omission would not prevent the disputed domain name from being associated by consumers with the Complainant. The addition of an “s” at the end of the disputed domain name does not detract from the confusing similarity because the Complainant can be referred to as “Fortnum & Mason’s” when its brand is used in reference to its products. The disputed domain name is therefore likely to be regarded by Internet users as a means by which the Complainant might present its trade mark in a domain name. In addition, section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) confirms that it is relevant to consider website content if it appears prima facie that a respondent seeks to target a trade mark through its use of the domain name in issue. The content of the Respondent’s website establishes that it is targeting the Complainant. The Complainant says the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no indication that the Respondent has been known by the name FORTNUM MASONS. The Complainant has not given any permission, licence or other authorization to the Respondent to use the disputed domain name. The Respondent’s website does not comprise a bona fide offering of goods and services. The disputed domain name is being used to operate a website offering various products for sale, many of which are identical in type to products offered by the Complainant. As the disputed domain name is highly similar to the Complainant’s trade mark and its own website domain name, the Respondent is intentionally seeking to exploit consumer recognition of the Complainant to entice users to its website and to lead them to believe that its website is operated by, or is associated with, the Complainant. Moreover, the fact that the Respondent is using a highly similar version of the Complainant’s F&M mark is intended to reinforce a perceived association with the Complainant and further to mislead consumers. This cannot amount to a legitimate interest in the disputed domain name. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant is well-known worldwide and has established rights in FORTNUM & MASON for many decades. The Complainant’s mark is widely recognized, and it has a very well-known department store in the United Kingdom, with stores in other UK locations. The underlying Respondent has been shown to be an individual based in Birmingham, being in the same territory as the Complainant’s main presence. There is clear evidence of targeting of the Complainant and from this can be inferred intention on the part of the Respondent to do so. The replication of the Complainant’s F&M logo and the use to which the disputed domain name has been put shows that the Respondent must have had knowledge of the Complainant as at the date of registration of the disputed domain name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, or at least affiliation or endorsement, of the Respondent’s website. Internet users would be familiar with an element such as “&” being absent from a domain name and so they are likely to perceive the disputed domain name as belonging to the Complainant. Moreover, the Respondent is using the Complainant’s F&M trade mark on its website, which is readily associated with the Complainant and features on its hampers. The Respondent is intentionally trying to create a connection with the Complainant and is seeking entice consumers to its website through its use of the confusingly similar domain name and to mislead them into thinking that its website is operated by the Complainant. In addition, the Complainant has evidence from Internet users, who have visited the Respondent’s website under the impression that it was that of the Complainant, and who purchased goods, which did not arrive. This is highly indicative of some sort of fraud occurring. Furthermore, some goods advertised for sale on the Respondent’s website are marked down substantially from their market value, which is suspicious and provides further support for a claim of illegal activity on the part of the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 information provided by the Complainant in relation to its trade mark registrations for FORTNUM & MASON, including the mark in respect of which full details are provided above, establish its rights in this trade mark. For the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s FORTNUM & MASON trade mark in full, save for two differences. First, the ampersand is missing. This typographical symbol cannot be represented in the Domain Name System and so its omission is of little significance. Second, an “s” has been added at the end of the Complainant’s mark. This additional letter also has little effect on the comparison. As explained at section 1.7 of the WIPO Overview 3.0; “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Save for the omission of the ampersand, the disputed domain name includes the Complainant’s FORTNUM & MASON mark in its entirety and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. Whether the Respondent might be considered to be using the disputed domain name in connection with a bona fide offering of goods and services requires consideration of the use, which it is making of the disputed domain name. The Respondent’s website does not use the Complainant’s FORTNUM & MASON mark on its home page, but it does use the Complainant’s F&M trade mark and it purportedly offers for sale to prospective consumers categories of product which are substantially the same as some of those offered by the Complainant. Moreover, as the disputed domain name is confusingly similar to the Complainant’s mark, the fact that its FORTUM & MASON mark is absent from the home page of the Respondent’s website is not an omission to which consumers will necessarily attach any significance. The repute of the Complainant’s mark, coupled with the confusing similarity between its mark and the disputed domain name, means that many Internet users are likely to assume that the Respondent’s website is operated by, or with the authorization of, the Complainant. The Complainant has drawn attention to the fact that what appear to be commercially unrealistic discounts offered on a number of products are suggestive of the fact that the Respondent is not genuinely offering the products for sale and that this is indicative of fraudulent activity on its part. This may be correct although it is not, in fact, necessary for the Complainant to establish that the Respondent’s website is fraudulent. Irrespective of whether the products on the Respondent’s website are genuinely offered for sale, a website intended by the Respondent to create the erroneous impression among consumers that it is owned by, or operated with the authorization of, the Complainant does not comprise a bona fide offering of goods and services. The second and third circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character. Moreover, as explained at section 2.5 of the WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy this burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name and that the Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s registered trade mark rights were acquired many years prior to the Respondent’s registration of the disputed domain name. The extent of the Complainant’s repute in its mark, coupled with the confusing similarity between the disputed domain name and the Complainant’s mark and the use to which the Respondent has put the disputed domain name following registration is such that it is reasonable to infer, first, that the Respondent was aware of the Complainant’s mark as at the date of registration and, second, that the disputed domain name was registered for the purpose to which it has been put. As explained at section 3.1.4 of the WIPO Overview 3.0, “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. See also Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747; “[b]y virtue of its extensive use and advertising since the 1960s, the Complainant and its trade mark VALENTINO enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondents were aware of the Complainant and its trade mark when they registered the disputed domain names, given that they have reproduced the Complainant’s trade marks and have listed VALENTINO products for sale on their websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith”. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The registration and use to which the Respondent has put the disputed domain name falls within these circumstances in that it points to a website which many Internet users are likely to believe is operated by the Complainant or with its authority, for the reasons given above. The Respondent’s underlying motivation has evidently been to derive commercial advantage from its claimed association with the Complainant and this points clearly to bad faith registration and use; see, by way of example, the decision of the UDRP panel in Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001. Moreover, having regard to the repute of the Complainant’s mark and the confusing similarity between it the disputed domain name, there is no conceivable good faith use which the Respondent could make of the disputed domain name. Indeed, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. For these reasons, the Panel finds that the disputed domain name was both registered and is being used in bad faith. The Complainant’s additional submissions do not therefore require consideration. 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 Antony Gold
Sole Panelist
Date: December 15, 2020
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