Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
Respondent is Ponton Paul, Belgium. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2021, 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 Complainant on July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 11, 2021. 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 Respondent of the Complaint, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 5, 2021. The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 13, 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 According to the information provided in the Complaint, Complainant is a multi-channel retailer of trade tools, accessories, and hardware products. Complainant has over 1,200 Screwfix stores in 10 countries in Europe, Russia, and Turkey. Complainant employs over 8,000 employees in the United Kingdom. According to the evidence submitted, Complainant owns numerous registrations for the trademark SCREWFIX, including European Union Trademark Registration No. 000646133, registered on February 28, 2000. In addition, Complainant operates the website “www.screwfix.com” consisting of the SCREWFIX mark. The Domain Name was registered on May 12, 2021. The Domain Name resolves to a parking page with text stating that “This domain name has been activated”. The trademark registrations of Complainant were issued prior to the registration of the Domain Name. 5. Parties’ Contentions A. Complainant Complainant submits that the Domain Name is identical or at least highly similar to the SCREWFIX mark. According to Complainant, the Domain Name comprises the descriptive and non-distinctive term “b2b” and the word “Screwfix”. The term “b2b” refers to the practice of selling directly to business which is a commercial activity undertaken by Complainant. According to Complainant, Respondent has no rights or legitimate interests in the Domain Name. Complainant submits that the Domain Name directs the user to a host site with text stating that “This domain name has been activated”. Given that the Domain Name incorporates Complainant’s trademark in full, the Domain Name could never be used for a legitimate purpose by any party other than Complainant. Any such third-party use would inevitably confuse Internet users into believing it is registered to, operated or authorized by, or otherwise connected with Complainant. Complainant submits that Respondent registered and is using the Domain Name in bad faith and indeed for purposes of fraudulent activity. According to Complainant, it was alerted by another company that a person representing himself as the business to business (“B2B”) sales manager of Complainant used an email address associated with the Domain Name asking one of Complainant’s suppliers about ordering various products including copper pipe and car parts. These emails used Complainant’s actual email footer, which would have appeared to the unwary recipient to be a genuine email coming from Complainant. Fortunately, this supplier which received the email raised an enquiry with Complainant before responding. Complainant asserts that the aim of this scam is to convince the targeted supplier to deliver the ordered goods in the belief that payment will follow. Complainant adds that it experienced this type of similar fraudulent activity in the past (see Screwfix Direct Limited v. Name Redacted,WIPO Case No. D2020-3459). Although Complainant cannot know whether the same individual is behind all of these scams, the method of operation is exactly the same. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled: (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. The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark. Complainant has established that it is the owner of several trademark registrations for SCREWFIX. The Domain Name incorporates the trademark SCREWFIX in its entirety, with the addition of the term “b2b” and the hyphen between the term “b2b” and the mark. Many UDRP panels have found that a disputed domain name is confusingly similar where the relevant trademark is recognizable within the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top-Level Domain (“gTLD”) “.com” is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademarks of Complainant. Based on the undisputed submission and evidence provided by Complainant, the Domain Name directs the Internet user to a host site with text stating that “This domain name has been activated”. The Panel does not consider such use a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name. In addition, it appears likely that the website under the Domain Name is used for fraudulent purposes. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights. No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the status of the SCREWFIX mark and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant’s SCREWFIX mark. The Panel notes that the Domain Name directs to a website with text stating that “This domain name has been activated”. The Panel also notes the undisputed submission of Complainant supported by documentary evidence that the Domain Name is being used in a fraudulent scam in order to convince Complainant’s suppliers to deliver goods in the belief that payment will follow. The Panel finally notes that the address provided by Respondent in its registration (Edinburgh, Belgium) is obviously false as Edinburgh is located in Scotland and not in Belgium. In the circumstances of this case, Respondent registered and uses the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith in a similar manner to that provided under paragraph 4(b)(iv) of the Policy. The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied. 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, Dinant T. L. Oosterbaan
Sole Panelist
Date: August 18, 2021
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