The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Name Redacted 1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 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 December 24, 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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021. The Center appointed Dawn Osborne as the sole panelist in this matter on January 25, 2021. 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 retailer of trade tools, accessories, and hardware products in United Kingdom. The Complainant is the owner of the trade mark SCREWFIX registered, inter alia, as European Union Trade Mark (“EUTM”) No. 000646133 on February 28, 2000, in classes 6, 8 and 9. The Domain Name was registered on October 24, 2020 and has been used for a fraudulent email scheme using the Complainant’s logo, the name of one of the Complainant’s employees, and the Complainant’s email footer. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Domain Name registered in October 24, 2020 is confusingly similar to the Complainant’s trade mark adding only a hyphen, the descriptive designation “ltd” and the generic Top-Level Domain (“gTLD”) “.com” which does not prevent a finding of confusing similarity. The Respondent does not have rights or legitimate interests in the Domain Name. The Domain Name points to a site with a holding page saying that the Domain Name has been activated. The Domain Name has been used for fraudulent emails using the name of one of the employees of the Complainant and a copy of the Complainant’s email footer to attempt to obtain products from suppliers. A fraudulent purchase order was also supplied using the Complainant’s name and logo. This is registration and use in bad faith for criminal activity. False information, including the name of an employee of the Complainant and the registered office information of the Complainant, has been used by the Respondent for the WhoIs information for the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name consists of the Complainant’s SCREWFIX trade mark (which is registered inter alia, as EUTM number 000646133 on September 23, 1997 in classes 6, 8, and 9), a hyphen, the term “ltd”, and the gTLD “.com”. Previous panels have found confusing similarity when a respondent merely adds a descriptive term, a hyphen and a gTLD to a complainant’s trade mark. The Panel agrees that the addition of the term “ltd” (meaning limited in the context of a company), a hyphen, and a gTLD to the Complainant’s trade mark does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trade mark pursuant to the Policy. Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s SCREWFIX registered trade mark. As such the Panel holds that the paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has not authorised the use of its trade mark. The Respondent has not answered this Complaint and has provided false information to the WhoIs database falsely using the name of one of the Complainant’s employees and the Complainant’s address. The Respondent is not commonly known by the Domain Name. The Domain Name has been used in a fraudulent phishing attempt using the SCREWFIX mark, the name of one of the Complainant’s employees, the Complainant’s address, and the Complainant’s logo. The Respondent’s conduct is deceptive and confusing. As such it cannot amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4 of the UDRP contains a list of non-exclusive criteria which indicate registration and use in bad faith by a respondent including: “(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor.” Impersonating the Complainant by use of the Complainant’s trade mark in a fraudulent phishing attempt is disruptive and evinces intentional bad faith registration and use in opposition or competing with the Complainant’s interests. Further, providing false contact details to the WhoIs register is also indicative of bad faith. As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of paragraph 4(a) 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 Domain Name Dawn Osborne 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: January 28, 2021
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