The Complainant is Rightmove Group Limited, United Kingdom, represented by Safenames Ltd., United Kingdom.
The Respondent is Chad Moston, Elite Media Group, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 November 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on November 30, 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 a listed public company that operates the United Kingdom’s largest real estate portal and property search function under the “Rightmove” name with a majority of all estate agents, letting agents and new home developers in the United Kingdom being members and around 900,000 residential properties being advertised by over 19,000 advertisers. The “Rightmove” portal is available to the public via its website at its main domain name
The disputed domain name was registered on December 19, 2019 and resolves to a website featuring pay-per-click (PPC) links to third party sites featuring houses for sale and rent.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered trade mark rights as noted above and that the disputed domain name wholly incorporates its RIGHTMOVE mark together with the addition of the geographical abbreviation “uk”. It says that the fact that its mark is in the disputed domain name suffices to demonstrate confusing similarity for the purposes of the Policy. It says that the addition of “uk” as an abbreviation for the United Kingdom, the jurisdiction where its head office is located, does not reduce but is only likely to create further confusion in the minds of Internet users.
The Complainant says that to the best of its knowledge, the Respondent has not registered any trade marks for the term “Rightmove”, and there is no evidence that the Respondent holds any unregistered rights to the term “Rightmove” or is commonly known by that name or mark. Moreover, says the Complainant, the Respondent has not received any licence from the Complainant to use a domain name which features the RIGHTMOVE trade mark and neither is it using the disputed domain name in relation to a bona fide offering of goods or services.
In using the disputed domain name to host a PPC advertising page, the Complainant says that the Respondent is attempting to generate monetary revenue by confusing and misleadingly diverting online users to the website at the disputed domain name. The Complainant notes that these links are by third party competitors of the Complainant and says that this does not constitute a legitimate noncommercial or fair use of the disputed domain name.
The Complainant notes that its RIGHTMOVE trade mark registration predates the creation date of the disputed domain name by at least 12 years and that in addition, the Complainant has accrued substantial goodwill and recognition since the Complainant’s establishment in 2000 as a joint venture by four prominent corporate agencies. It notes that searches for “rightmove” on popular Internet search engines such as Google list the Complainant’s brand services as the first result.
The Complainant submits that the Respondent has clearly registered the disputed domain name to target the Complainant’s brand intentionally. It says that it is inconceivable to believe that the Respondent has chosen to register the disputed domain name, which comprises the Complainant’s mark in its entirety with the addition of the geographical indication “uk”, for any arbitrary reason other than to target the Complainant’s trade mark.
The Complainant submits that the Respondent has listed the disputed domain name for sale on the domain aftermarket website Afternic for 899 USD. It submits that such a price is far beyond what would reasonably be expected to be within the Respondent’s out-of-pocket costs related to the disputed domain name and that although the offer for sale has not been made directly to the Complainant, the circumstances surrounding the registration and use of the disputed domain name indicate bad faith and suggest the Respondent is aware of the value of the disputed domain name as a trade mark and that the requirements of paragraph 4(b)(i) have been made out.
The Complainant also submits that the Respondent has engaged in a pattern of registering domain names in order to prevent trade mark holders from reflecting their mark in a corresponding domain name in terms of paragraph 4(b)(ii) of the Policy. It submits that the Respondent holds a domain portfolio of up to 6,481 active domain registration which comprise several third-party trade marks and has provided evidence of various domain names owned by the Respondent that incorporate well reputed trade marks and that are all listed for sale for much more than their out of pocket costs. It also notes previous UDRP cases in which the Respondent has been found to have registered and used third party trade marks in bad faith.
Further, the Complainant submits that given the obvious similarity of the disputed domain name with the Complainant’s RIGHTMOVE trade mark, the Respondent’s use of it for hosting PPC links constitutes a clear attempt to generate a commercial gain by creating a likelihood of confusion with the Complainant’s trade mark in terms of paragraph 4(b)(iv) of the Policy.
Finally, the Complainant submits that a trade mark infringement notice was sent to the Respondent via the Registrar’s online form on September 9, 2021. It says that the notice was sent in order to put the Respondent on notice of the Complainant’s trade marks and rights and with a view to resolving the matter amicably. In circumstances that it received no response it submits that this is further evidence of the Respondent’s bad faith conduct.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns United Kingdom trade mark registration UK00002432055 for RIGHTMOVE which was registered on July 27, 2007. The disputed domain name wholly incorporates the Complainant’s mark and is therefore confusingly similar to it. The addition of “uk” after “rightmove” but before the top level domain name element does not prevent a finding of confusing similarity.
Accordingly, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that to the best of its knowledge, the Respondent has not registered any trade marks for the term “Rightmove”, and there is no evidence that the Respondent holds any unregistered rights to the term “Rightmove” or is commonly known by that name or mark. The Complainant has also asserted that the Respondent has not received any licence from the Complainant to use a domain name which features the RIGHTMOVE trade mark and neither has it used or is it using the disputed domain name in relation to a bona fide offering of goods or services.
In regard to use, the Complainant has provided evidence that the disputed domain name resolves to a PPC advertising page which, according to the Complainant, features links to third party competitors. The Complainant has submitted that the Respondent is attempting to generate monetary revenue by confusing and misleadingly diverting online users to the website at the disputed domain name and that this does not amount to a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut this case. For these reasons and as set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered on December 19, 2019 many years after the registration in 2007 of the Complainant’s United Kingdom trade mark for RIGHTMOVE. It is apparent from the evidence submitted that the Complainant has accrued substantial goodwill and recognition in connection with its RIGHTMOVE mark since its business establishment and has grown to hold a pre-eminent position in the market based on the unchallenged assertion that more than 80% of estate agents, letting agents and new home developers in the United Kingdom are members and around 900,000 residential properties are advertised on its website at “www.rightmove.co.uk” by approximately 19,000 advertisers. In addition, the Complainant has provided evidence that searches for “rightmove” on popular Internet search engines such as Google list the Complainant’s brand services as the first result and that even in a six month period in 2021 it received more than 115 million hits. In these circumstances it seems extremely unlikely that the Respondent, although based in the United States, could have independently chosen to register the disputed domain name incorporating both the Complainant’s RIGHTMOVE trade mark and the geographical abbreviation “uk” and it seems most likely that the Respondent undertook the registration with knowledge and as discussed below with a view to targeting the goodwill and reputation attaching to the Complainant’s mark and own domain name at
Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a website or location or of a product or service on the website amounts to evidence of registration and use in bad faith. The disputed domain name resolves to a PPC advertising page featuring links to competitors or other industry players. This amounts in terms of paragraph 4(b)(iv) of the Policy to the Respondent seeking to use the disputed domain name to confuse and divert Internet users to the PPC advertising page most likely for its own commercial gain and is therefore evidence of registration and use of the disputed domain name in bad faith.
It appears to the Panel, as submitted by the Complainant, that the Respondent has engaged in a pattern of registering domain names in order to prevent trade mark holders from reflecting their mark in a corresponding domain name in terms of paragraph 4(b)(ii) of the Policy. In particular, the Complainant has provided evidence of various third-party domain names owned by the Respondent that incorporate well reputed trade marks or an obviously misspelt version of those marks and that are all listed for sale for much more than their out of pocket costs. It has also noted previous UDRP cases in which the Respondent has been found to have registered and used third party trade marks in bad faith, namely: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, NAF Case No. FA1781783; and MTD Products Inc v. Chad Moston / Elite Media Group, NAF Case No. FA1853989. In these circumstances the Panel finds that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such past conduct under paragraph 4(b)(ii) of the Policy, which is further evidence of the Respondent’s registration and use of the disputed domain name in bad faith.
Listing the disputed domain name for sale on the domain aftermarket website Afternic for 899 USD which is considerably beyond the Respondent’s likely out of pocket costs in registering the disputed domain name is consistent with the overall attempt that the Respondent seems to have made to target the Complainant’s mark and use the disputed domain name for its own commercial gain. Finally, the fact that the Respondent failed to respond to the Complainant’s infringement notice in September 2021 through the Registrar’s online form for the disputed domain name further reinforces the Panel’s view of the Respondent’s bad faith.
For all of these reasons, the Panel finds that the Respondent both registered and has used the disputed domain name in bad faith and that the Complaint also succeeds under this element 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
Alistair Payne
Sole Panelist
Date: December 9, 2021