The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Piers Maurice, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 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 August 1, 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 August 6, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2021.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 20, 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 was founded in 1979 and is one of the United Kingdom’s largest retailer of trade tools, accessories and hardware products. The Complainant has over 1,200 stores in Europe and had revenues of almost GBP 1,7 billion in 2019 and some 8,000 employees.
The Complainant is the owner of the trademark SCREWFIX registered, inter alia, as European Union Trade Mark No. 000646133 on February 28, 2000, in classes 6, 8 and 9.
The disputed domain name was registered on June 8, 2021. The disputed domain name resolves to an inactive website and has been used to send fraudulent emails.
5. Parties’ Contentions A. ComplainantThe disputed domain name includes the Complainant’s trademark in its entirety combined with the word “orders”, which is a term not preventing the finding of confusing similarity.
The disputed domain name could not be used for any legitimate purpose by any other party than the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name has been used as an email address for fraudulent activity. On July 12, 2021, an individual representing himself as a buyer at the Complainant sent an email inviting the recipient to do business with the Complainant. The Complainant has an employee with the same name of the mentioned individual, but he was not the author or the sender of this email.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Furthermore, “where the relevant trademark is recognizable within the disputed 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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.
The disputed domain name is otherwise identical with the Complainant’s trademark, with the exception that the word “orders” is also included in the disputed domain name. The addition to the Complainant’s trademark SCREWFIX of the term “orders” and a hyphen, is insufficient to prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
This means that the disputed domain name is confusingly similar with the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The Complainant has credibly submitted that the Respondent is using the disputed domain name for fraudulent purposes i.e. to purport itself as a representative of the Complainant in order to deceive recipients sent from the email connected to the disputed domain name. This is not rightful or legitimate use of another’s trademark.
The Panel also finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.
Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, 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 [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Currently the disputed domain name does not resolve to an active website. However, the Panel notes that the disputed domain name has been used for fraudulent purposes, which the Panel finds is an active use in bad faith. Considering that the Panel has found that the Complainant’s trademark has been used and registered for more than 40 years, the Respondent has not provided any evidence of actual or contemplated good-faith use or indeed responded to the complaint in any way, there are no obvious good faith or legitimate uses to which the disputed domain name may be put, the disputed domain name has been used for fraudulent purposes, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
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
Tuukka Airaksinen
Sole Panelist
Date: October 4, 2021