The Complainant is Which? Limited, United Kingdom, represented by Wedlake Bell LLP, United Kingdom.
The Respondent is Leon Thomas, 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 December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 23, 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 amendment to the Complaint on December 23, 2020. The Center verified that the Complaint, together with the amendment to the 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2021. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 26, 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 limited liability company incorporated in the United Kingdom, originally established in 1957 as a body known as “The Consumers Association”, and subsequently incorporated to become the trading arm of that body. The Complainant has published “WHICH? Magazine” from 1957 onwards, to provide information for consumers about a wide range of products and services. The Complainant also engages in online activities in the United Kingdom, providing a suite of Internet offerings to the public in a combination of freely available and subscription-only services. The Complainant’s publishing and consumer lobbying activities, which it carries out under the WHICH? mark, are very well-known in the United Kingdom. The Complainant is the owner of a variety of registered trademarks for the WHICH mark (with and without a question mark added) including, for example, United Kingdom registered trademark no. 2432015 for the word mark WHICH, registered on December 28, 2007, in international classes 16, 35, 41, and 42. The Complainant makes prominent use of the colors white and red in representations of the WHICH? mark, as may be seen for example, in United Kingdom registered trademark no. 3134582 for the word and device mark WHICH?, where the device element consists of the word “Which” in white lettering on a red background followed by a black question mark, registered on March 25, 2016, in international classes 9, 16, 35, 36, 38, 39, 41, 42, 43, 44, and 45. The disputed domain name was registered on February 24, 2020. Little is known regarding the Respondent, other than the fact that it appears to have connections to the United Kingdom, based on its use of two different United Kingdom contact addresses on the website associated with the disputed domain name and on the relative WhoIs record respectively. The Respondent has not participated in this administrative proceeding. The Complainant’s screenshots of the website associated with the disputed domain name show that the site, which appears to have been taken down since the Complaint was filed, was dedicated to the promotion of financial services products. Many of the pages use a red banner with the words “Which Bonds” superimposed in white, in a similar style and typeface to that used by the Complainant. Said site provided contact details for the Respondent which the Complainant has investigated. Its investigations suggest that the contact details are likely to be false. The Respondent is not known at the address given on the website associated with the disputed domain name. The Complainant has ascertained this via correspondence with the managing agent responsible for the relevant building. The Complainant has also established that the telephone number given by the Respondent on said website is the number of a third party financial services provider which asserts that it has no relationship with the Respondent. Said provider indicated in correspondence with the Complainant that it would make a complaint to the hosting company associated with said website and would also report the matter to its regulator, the United Kingdom Financial Conduct Authority. The Financial Conduct Authority has since published a warning notice dated June 8, 2020, advising the public that the firm associated with said website is believed to have been providing financial services or products in the United Kingdom without the requisite authority. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The disputed domain name has incorporated the Complainant’s mark and coupled it with a generic or descriptive term as is commonly done by the Complainant. The Complainant’s mark is at the beginning of the disputed domain name, thereby drawing attention to that component. The disputed domain name is therefore confusingly similar to the Complainant’s marks. It is well established that the top level suffix “.com” does not affect a domain name for the purposes of determining whether it is identical or confusingly similar to a trademark. Many previous decisions have found a domain name to be confusingly similar to a registered trademark where that name consists of the trademark coupled with an additional term. The Complainant provides advisory and information services relating to financial products. The word “bonds” in the disputed domain name is relevant to the Complainant’s services. An Internet user will believe that the Complainant is providing advice and information about investment bonds via the disputed domain name. The Respondent has used the same color branding and stylization as the Complainant. The Complainant was notified of the website at the disputed domain name by a journalist and another Internet user. These individuals considered that consumers might be confused into thinking that said website was associated with the Complainant. Rights and legitimate interests The Complainant’s rights in its marks were acquired long before the disputed domain name was registered and the Respondent cannot have acquired prior rights. The Respondent has no connection with the Complainant or any company licensed by the Complainant. The Respondent has no permission to use the Complainant’s marks. The Respondent seeks to take advantage of the reputation of such marks as demonstrated by its selection of a confusingly similar domain name and its use of the same color scheme and typeface. The Respondent has not made noncommercial or fair use of the disputed domain name. The Respondent will have known that the mark WHICH followed by a descriptive or generic term has acquired a secondary meaning and become distinctive as denoting the Complainant. The Respondent intentionally selected this term to strengthen the association between with the Complainant and its goods and services. Such use is not a bona fide offering of goods or services. Registered and used in bad faith The Complainant has been using its marks since 1957 and by the date of registration of the disputed domain name the Complainant’s business must have been well-known to the Respondent, which is based in the United Kingdom. The Respondent registered the disputed domain name to prevent the Complainant from reflecting its marks in a corresponding domain name. The overwhelming inference to be drawn from the deliberate attempt by the Respondent to conjure up a similar look and feel on the website associated with the disputed domain name to that of the Complainant is that the Respondent intended to benefit from the power of attraction and reputation established by the Complainant under the WHICH mark. The Respondent used the disputed domain name to offer enquiry and marketing services in connection with financial products. Such use is in the course of trade and targets the United Kingdom market. The Respondent’s website made reference to the United Kingdom regulator for financial services firms and markets, and its contact details related to a central London address and telephone number, thus all referencing the Complainant’s home market rather than a market in which the Complainant has no rights. The content of the Respondent’s website was created in bad faith and used the telephone number of a third party to suggest that its services were from an official and recognized body. The landlord for the property at the Respondent’s quoted address has confirmed that it does not have such a tenant at that address. The Respondent has included a prestigious London address on the Respondent’s website in an attempt to convey nonexistent legitimacy to its operation. The United Kingdom Financial Conduct Authority has issued a related warning notice, inferring that such site could be operated by scammers. The Complainant was alerted to said website by “Twitter” users practicing in the field of consumer protection and bonds advice, noting that it was a scam website offering 12 per cent returns on non-specific, unregulated, and high risk investments. Even if users arrive on a website associated with the disputed domain name and realize there is no connection to the Complainant, they will already have been deceived into accessing this in the first place, on the basis of the Complainant’s goodwill and reputation. The Complainant has attempted to contact the Respondent by telephone and email but has received no response to its communications. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed in the Complaint, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied in respect of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a 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. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has rights in its family of WHICH registered trademarks, including the marks described in the factual background section above. The evidence also shows that the Complainant has made substantial use of this mark, on its own and in combination with a large variety of other terms, over many years in the United Kingdom, such that it has acquired a secondary meaning associated with the Complainant, its publishing and lobbying activities (see as example, United Kingdom registered trademark no. 2455333 for the word mark WHICH? ONLINE, registered on January 11, 2008). Comparing the WHICH mark to the disputed domain name, it is evident that the Complainant’s mark is fully recognizable in the second level, followed by a dash or hyphen used as a separator and the word “bonds”. It is generally accepted in cases under the Policy that where a mark is recognizable in a domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element (see the discussion in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Accordingly, the Panel finds that the Complainant’s said mark is confusingly similar to the disputed domain name. The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made out, the burden of production shifts to the respondent to bring forward appropriate allegations and/or evidence demonstrating its rights or legitimate interests in the domain name concerned. In the present case, the Complainant submits that it has longstanding prior rights in the WHICH mark, the Respondent has no connection with such mark and no permission from the Complainant to use it, the Respondent has not made noncommercial or fair use of the disputed domain name, and has moreover deliberately adopted a similar style to that of the Complainant on the associated website. The Panel is satisfied that these submissions establish the requisite prima facie case. The Respondent has not filed any Response. It has neither provided any submissions, nor put forward any evidence, which might demonstrate its rights or legitimate interests in the disputed domain name. Nevertheless, the Panel must give consideration to the fact that despite being a very well-known trademark in the United Kingdom, the Complainant’s WHICH mark also represents a dictionary word in ordinary English usage. This issue was considered in an earlier case under the Policy, namely Which? Limited v. Michael K-Addo and Which?Media Group,WIPO Case No. D2012-2210. The panel in that case observed: “While it is without doubt the case that the Complainant’s “Which?” trademark is a household name in the UK, it is also true that nobody can acquire a monopoly in the UK of the word “which” in all forms and across all fields of commercial endeavour. Accordingly, the term “which estate agency” is potentially capable of legitimate use by third parties unconnected with the Complainant. Under UK law it is well-established that if a brand owner chooses to adopt a trademark comprising a descriptive term, he is likely to have to accept that there will be scope for confusing use of that term by third parties about which he cannot complain. [...] Here, under the Policy, much turns on the Respondent’s motivation [...].” The Panel notes that exactly the same could be said of the term “which bonds” in the present case. The Panel therefore asks itself whether the facts and circumstances of this case shed any light on the Respondent’s motivation for selecting “which bonds” to form the second level of the disputed domain name. In other words, is the Respondent intentionally making reference to the Complainant’s mark, i.e., WHICH bonds, or simply adopting the ordinary English phrase “which bonds”? The Panel is satisfied from the evidence before it that the Respondent is intentionally referencing the Complainant’s mark within the disputed domain name. In the first place, the Complainant’s screenshots of the website associated with the disputed domain name show a marked similarity to the Complainant’s logo (and in some cases, figurative trademark) in terms of both stylization and color scheme. Secondly, the Respondent’s website is evidently seeking to provide some form of information concerning the characteristics, quality, and prices of financial services offered to the public. This is a line of business in which the Complainant is highly active and prominent in the United Kingdom, and which it provides under a range of associated marks such as WHICH? MONEY and WHICH? MONEY COMPARE, each a United Kingdom registered trademark, nos. 2445087 and 3067182 respectively. In these circumstances, the offering of services on the Respondent’s website which intentionally reference the Complainant’s mark could not be considered to be a bona fide offering of goods or services under the Policy. Thirdly, the fact that the Respondent appears to have taken steps to conceal its identity and has remained silent in connection with the administrative proceeding suggests that it was well aware that its adoption of the term “which bonds” would place it into conflict with the Complainant’s marks and that, in anticipation of this, it has attempted to impede or frustrate action being taken against it in order to maximize the period over which its website might remain live. Such activity cannot confer rights or legitimate interests upon the Respondent. In all of the above circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. No Response is available which might have put forward an alternative explanation demonstrating rights and legitimate interests and no reasonable justification is apparent to the Panel from the present record. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. The Panel is satisfied in the present case that the use to which the disputed domain name has been put demonstrates an awareness of the Complainant’s rights in the WHICH mark and an intent to target the same. The Complainant commonly uses said mark in connection with the particular subject matter on which it seeks to publish impartial consumer advice, such as the WHICH? MONEY and WHICH? MONEY COMPARE trademarks noted in the preceding section. It is inherently implausible that a putative provider of information relating to financial services in the United Kingdom, whether regulated or not, would be unaware of the Complainant’s activities in this field and of the likelihood for confusion arising between the disputed domain name and the Complainant’s marks in that context. What is more, the Respondent appears to have deliberately exacerbated the potential for confusion still further by adopting a similar color scheme and typeface to that of the Complainant on the associated website. The Panel is satisfied that this cannot have occurred by chance, despite the fact that “which” is a dictionary word and that “which bonds” could be used as part of an ordinary English phrase. That the disputed domain name and associated website has had the desired effect of creating an apparent link with the Complainant is evident in the communications which the Complainant has received from industry figures on the “Twitter” network, who initially brought matters to its attention. It cannot be overlooked on this topic that the Respondent has also taken steps to conceal its identity. The evidence indicates that it has adopted the telephone number of a legitimate, regulated, financial services business in order to add credibility to its activities, and has provided a false address on the associated website. Furthermore, the Respondent’s use of the disputed domain name ultimately prompted the relevant regulator to issue an alert notice to United Kingdom consumers warning that the associated website is believed to have been offering its services without the necessary authorization. All of these matters taken together point in the direction of a finding of bad faith. The Respondent has faced multiple allegations of bad faith conduct along the lines set out above, and it is significant that in the face of these it has failed to put forward any explanation for its conduct which might be supportive of the notion that the disputed domain name was registered and used in good faith. The Respondent neither replied to the Complainant’s initial correspondence nor filed any Response in these proceedings. In the absence of such an explanation, the Panel cannot conceive of any reasonable or likely good faith motivation for the registration and use of the disputed domain name. Accordingly, the Panel finds on the balance of probabilities that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. This constitutes registration and use in bad faith in terms of paragraph 4(b)(iv) of the Policy, and the Panel therefore finds that the Complainant has satisfied the requirements of 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 Andrew D. S. Lothian
Sole Panelist
Date: February 9, 2021
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