The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Andy Ssott, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2021, 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 July 26, 2021, 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 July 30, 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 the Respondent of the Complaint, and the proceedings commenced on August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.
The Center appointed Dr. Clive N.A. Trotman as the sole panellist in this matter on September 21, 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 BackgroundThe Complainant, founded in 1979, is a subsidiary of Kingfisher Plc, an international home improvement retailer. The Complainant supplies trade tools, accessories, and hardware products through over 1,200 stores in Europe, Russia, and Turkey, and through the website “www.screwfix.com”. The Complainant’s annual revenue was about GBP 1.7 billion recently and it employs over 8,000 employees in the United Kingdom. The Complainant has won a number of awards in the sphere of do-it-yourself and gardening retailing.
The Complainant is the owner of numerous trademarks, of which the following are representative:
SCREWFIX, word mark, European Union Trademark (“EUTM”), filed on September 23, 1997, registered on February 28, 2000, registration number 000646133, in classes 6, 8, and 9;
SCREWFIX, word mark, EUTM, filed on May 22, 2001, registered on May 2, 2003, registration number 002231876, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 35, and 37;
SCREWFIX, word mark, EUTM, filed on July 11, 2016, registered on January 27, 2017, registration number 015632987, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 35, and 37.
Little is known about the background of the Respondent except for the contact details provided to the Registrar for the purpose of registration of the disputed domain name on May 22, 2021. The disputed domain name has resolved to a page headed with the name of the host, STRATO, with a statement in six European languages to the effect that there is no website available. The disputed domain name has, however, been used by the Respondent for the purpose of an email address.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The term “admin” preceding the Complainant’s trademark in the disputed domain name is descriptive and nondistinctive.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Because it incorporates the entirety of the Complainant’s trademark and would confuse Internet visitors into believing it to be endorsed by the Complainant, the disputed domain name cannot be used by the Respondent for any legitimate purpose.
The Complainant says the disputed domain name was registered and is being used in bad faith.
The Complainant alleges that the disputed domain name is being used for a criminal activity. On May 27, 2021, an email letter was received by another company (“Company A”) from an email address derived from the disputed domain name, with a footer that was a copy of the Complainant’s actual email footer but with the changed email address, thus appearing to come from the Complainant. The email stated that the sender was the Complainant’s “B2B Sales Manager”, with a personal name that was a transposed version of the name of one of the Complainant’s actual employees, and enquired in general terms about Company A being able to supply a wide-ranging list of items including metals and components, vehicle components, expensive tools, and other materials. Company A was suspicious and notified the Complainant.
The Complainant has also received information and documentation from another company (“Company B”) stating that the same disputed domain name had been used in correspondence following a telephoned order in the Complainant’s name for goods to the value of about GBP 64,000 (the original invoice shows a similar number of EUR), which were shipped by Company B to a physical address different from the Complainant’s. The Respondent’s intention has been to divert and take delivery of goods without paying for them.
The Complainant has cited previous decisions in its favour under the Policy in which its trademark has been incorporated into other domain names differently from the present case, by apparently different respondents, but has been used to attempt what the Complainant describes as frauds of the same modus operandi.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Procedural MattersParagraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
B. Identical or Confusingly SimilarThe disputed domain name
Accordingly, the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe Complainant has stated summarily that the Respondent does not have any rights or legitimate interests in respect of the dispute domain name, which incorporates the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 Respondent has not responded formally and has not asserted any rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. There is no evidence the disputed domain name has been or could be used by the Respondent for any legitimate commercial or noncommercial purpose that would not infringe the Complainant’s rights, or that the Respondent has ever been commonly known by the disputed domain name. Rather, the disputed domain name has been used in furtherance of multiple email schemes impersonating the Complainant and such activity can never confer rights or legitimate interests upon the Respondent.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 website or location or of a product or service on your website or location”.
The disputed domain name does not resolve to an active website but has been used as the basis of email addresses by the Respondent.
According to the documentary evidence, Company A received an email from the disputed domain name enquiring about the supply by Company A of goods that might reasonably be in the nature of the Complainant’s requirements. The email purportedly came from a named individual, being a transposed arrangement of the name of one of the Complainant’s employees, enquiring about “Copper pipe, rod, wires, Brass Fitting Air conditioning, Car Tyre, Car parts and Batteries and others Fixing parts, Power Tools and Welding equipment and materials”. The email had not been sent by the Complainant but came from the email address of the disputed domain name.
According to documentary evidence sent to the Complainant by Company B, a similar deception had been perpetrated on Company B by means of a telephoned order followed by correspondence from an email address at the disputed domain name, resulting in the shipment of some tens of thousands of GBP worth of goods to a spurious physical address that was not the Complainant’s.
On the evidence, and on the balance of probabilities, the Panel finds that the Respondent has used the disputed domain name to deceive Internet users by confusion with the Complainant as to the true ownership and affiliation of the Respondent’s online location, being its email address, for the purpose of commercial gain, comprising use in bad faith under paragraph 4(b)(iv) of the Policy. On the evidence and on the balance of probabilities, the disputed domain name is found by the Panel to have been registered for the bad faith purpose for which it has been used. Additionally the Respondent is found to have registered the disputed domain name for the purpose of disrupting the business of a competitor, i.e., the Complainant, within the meaning of paragraph 4(b)(iii) of the Policy.
Registration and use of the disputed domain name in bad faith are found in the terms of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Dr. Clive N. A. Trotman
Sole Panelist
Date: September 30, 2021