The Complainant is Screwfix Direct Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Raymond Nnamani, Côte d'Ivoire.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on September 29, 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 is Screwfix Direct Limited, founded in 1979, the United Kingdom's largest multi-channel retailer of trade tools, accessories, and hardware products.
The Complainant has over 1,200 Screwfix stores in 10 countries in Europe (including around 700 stores in the United Kingdom), Russian Federation, and Turkey. The Complainant also operates “www.screwfix.com” (the “Complainant’s Website”) for online sales.
The Complainant has over many years built up enormous goodwill and reputation in the Screwfix brand, both amongst its staff and its customers. In 2015, the Complainant was named the “Gallup Great Workplace Award” winner for its outstanding workplace culture. Also, the Complainant was awarded “Supply Chain Team of the Year” at the 2015 Retail Week Supply Chain Awards and ”Best DIY & Gardening Retailer” at the Verdict’s Satisfaction Awards. In March 2016, the Complainant won the “Multi-channel Retailer of the Year” and “Employer of the Year” at The Retail Week Awards. More recently in March 2018, the Complainant was awarded Retail Week’s “Best Retailer” and “Digital Pioneer”, followed by a Mark of Excellence for “Best place to Work” in 2019.
The Complainant is the owner of the trade mark SCREWFIX registered in various jurisdictions, inter alia: the European Union Trade Mark (“EUTM”) number 000646133 for the word mark SCREWFIX registered on February 28, 2000 in classes 6, 8, and 9; the EUTM number 002231876 for the word mark SCREWFIX registered on May 02, 2003 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; and the EUTM number 015632987 for the word mark SCREWFIX registered on January 27, 2017 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.
The Respondent is Raymond Nnamani, of Côte d'Ivoire, and registered the disputed domain name on April 10, 2021.
The disputed domain name currently resolves to a pay-per-click (“PPC”) page indicating that the site is under construction.
5. Parties’ Contentions A. ComplainantBy the Complaint, the Complainant contends:
- The disputed domain name must be considered identical to (or at very least highly similar to) the Complainant’s trade marks as it comprises of (i) the word “Screwfix” and (ii) the words “trade” and “house” which may also be read as “tradehouse”, which are both an entirely descriptive (and hence non-distinctive) reference to the commercial practice of “trading” goods, such as that undertaken by the Complainant.
- The Respondent therefore has no legitimate business or rights in respect of the disputed domain name, as it incorporates the Complainant’s trade mark in full and without any other distinctive element and as such it could never be used for a legitimate purpose by any party other than the Complainant. Any third-party use would inevitably confuse visitors into believing it is registered to be operated or authorised by, or otherwise connected with the Complainant (and, as explained below, this was clearly the Respondent’s intention).
- Moreover, shortly after the date of registration of the disputed domain name, the Complainant was alerted to multiple reports of fraudulent activity which utilised two email addresses associated with the disputed domain name. To make these emails appear legitimate to the supplier, the Respondent used the email address together with the Complainant’s actual email footer information, which would have appeared to an unwary recipient to be a genuine email coming from the Complainant. For completeness, the Complainant has employees that were impersonated by the Respondent, but neither of them were the authors or senders of any of these emails.
- This suggests and documents that a number of different target suppliers may be blind copied to each email. The aim of this scam is to convince the targeted supplier to deliver the ordered goods to location where they supposedly can be collected in the belief that payment will follow (because the Complainant is, after all, a significant and well resourced company). That payment is never made however, and it is often only at this point that the supplier realises they have been scammed and alerts the Complainant of what has happened.
The Complainant has experienced this type of fraudulent activity in the past and considers that the disputed domain name was registered and used in bad faith.
B. RespondentAlthough properly notified, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established its rights in the SCREWFIX trade mark.
The disputed domain name consists of the Complainant’s SCREWFIX trade mark (which is registered inter alia, as EUTM number 000646133 on February 28, 2000 in classes 6, 8, and 9) and (ii) the words “trade” and “house” which may also be read as “tradehouse”.
Previous UDRP panels have found confusing similarity when a respondent adds additional terms, and a gTLD to a complainant’s trade mark. The Panel agrees that the addition of the terms “trade” and “house”, and a gTLD to the Complainant’s trade mark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark pursuant to the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s SCREWFIX registered trade mark.
As such the Panel holds that the first element of the paragraph 4(a) of the Policy is therefore, established.
B. Rights or Legitimate InterestsAccording to UDRP practice (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 2.1) in order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes a prima facie showing, the burden of production of evidence shifts to the Respondent, with the burden of proof always remaining on the Complainant.
In these proceedings, this Panel considers that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.
The disputed domain name incorporates the Complainant’s trade mark in full with the addition of the term “tradehouse” which implies a connection with the Complainant. Any resulting third-party use, including the use by the Respondent, would inevitably confuse visitors into believing it is registered to be operated or authorised by, or otherwise connected with the Complainant. This Panel finds that the Respondent also fails to show any intention of noncommercial or fair use of the disputed domain name and consequently any legitimate business or rights in respect of the disputed domain name.
It is the opinion of this Panel that the Complainant has sufficiently demonstrated, without the same being rebutted, that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of the paragraph 4(a) of the Policy is therefore, established.
C. Registered and Used in Bad FaithThis Panel notes that the disputed domain name resolves to a Registrar’s parked page comprising PPC links, indicating that the site is under construction.
Moreover, the Panel agrees with the Complainant that the holder of the disputed domain name had been involved in fraudulent activity, as it results from the reports of fraudulent activity which utilised two email addresses associated with the disputed domain name, and from the impersonation of the Complainant’s employees, to deceive the Complainant suppliers.
This scam, as documented by the Complainant, represent an impersonation of the Complainant by use of its trade mark in a fraudulent attempt, which is disruptive for the business of the Complainant under the Policy. Such behaviour is in the opinion of this Panel a clear indication of bad faith registration and use of the disputed domain name.
Considering the above, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is also established.
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. Beatrice Onica Jarka
Sole Panelist
Date: October 13, 2021