The Complainant is The White Company (UK) Limited of Greenford, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLP, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Webideas Limited of Ware, Herts, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (“ the Disputed Domain Name “) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On the same day, GoD, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2010.
The Center appointed Michael D. Cover as the sole panelist in this matter on December 22, 2010. 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
The Complainant is The White Company (UK) Limited, which is the owner of the goodwill, reputation and trade mark rights in the trade mark THE WHITE COMPANY. The Complainant has registered its trade mark THE WHITE COMPANY in its home country of the United Kingdom and also in Europe and throughout the World.
The Complainant was established in 1994 and was initially a mail order business supplying home accessories predominantly in white. Since 1994, the Complainant’s business has grown extensively and is now operated through 32 stores and concessions in the United Kingdom and 14 franchisee-operated stores in Dubai in the United Arab Emirates. It has a fully-transactional website at “www.m”. In the 2008/9 financial year, the Complainant had a turnover in excess of GBP 80 million and it has built up substantial goodwill and reputation in the business carried out under the trade mark THE WHITE COMPANY.
All that is known about the Respondent is that its contact details are in Ware, Herts, United Kingdom. The Disputed Domain Name hosts a directory site, which contains links to third party websites which are related to the words “the white company”, including the website of the Complainant, “www.m”.
The Complainant entered into correspondence with the Respondent about the Disputed Domain Name, writing to the Respondent on September 2, 2010, requesting transfer of the Disputed Domain Name. It appears that no response was received. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has registered trade mark and unregistered rights in the trade mark THE WHITE COMPANY and that the Disputed Domain Name is identical with its trade mark in which it has extensive rights. It states that, for the purposes of assessing whether the Disputed Domain Name is identical / confusingly similar to the trade mark THE WHITE COMPANY, the top level domain aspect of the Disputed Domain Name is to be disregarded.
It also submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trade mark THE WHITE COMPANY or to register a domain name incorporating that trade mark. Quite to the contrary, states the Complainant. The Complainant has sent a letter to the Respondent requiring the Respondent to cease and desist using the Disputed Domain Name and to transfer the Disputed Domain Name.
The Respondent has not previously been known by the Disputed Domain Name and the Complainant is not aware that the Respondent has any trade mark rights in words comprising the Disputed Domain Name. The Disputed Domain Name was registered on July 20, 2010, which is many years after the establishment of the Complainant and the registration of its trade marks. As the Respondent is situated in the United Kingdom and the Complainant is a household name there, the Complainant maintains that the Respondent must have been aware of the Complainant’s rights at the time that the Disputed Domain Name was registered.
With regard to the Disputed Domain Name having been registered and being used in bad faith, the Complainant submits that the Respondent has registered the Disputed Domain Name primarily to disrupt its business as a competitor, that there was no conceivable legitimate use to which the Disputed Domain Name could have been put and that, contrary to paragraph 4(b)(iv), the Respondent has, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark. It points to the directory site, already referred to in this Decision and that it is reasonable to assume that the Respondent will generate revenue if Internet users click on any of the links on the directory site at the Disputed Domain Name.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel agrees with the submissions of the Complainant that the Disputed Domain Name is identical to the trade mark THE WHITE COMPANY in which the Complainant has extensive registered and unregistered rights. It has long been established that the addition of a top level domain, such as, in this case, “.co”, does not affect the issue where the other words are identical. The top level domain is properly to be ignored, see for example The Chartered Institute of Management Accountants v. Ashok Bhatia,WIPO Case No. D2005-0578 (). B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint and therefore has not sought to take advantage of the opportunity to demonstrate its rights to and legitimate interests in the Disputed Domain Name. In any event, there is no evidence that the Respondent has legitimately used the Disputed Domain Name or is commonly known by the Disputed Domain Name. The Panel accepts that the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trade mark THE WHITE COMPANY and that such use as has taken place is not legitimate in that it is in bad faith.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
In this Panel’s opinion, it is highly unlikely, that an entity based in the Home Counties of England in the United Kingdom could be unaware of the Complainant and its business and its trade mark THE WHITE COMPANY. Be that as it may, the fact that the Disputed Domain Name is used intentionally to divert for commercial gain Internet users to the Respondent’s website through the directory site at the Disputed Domain Name by creating a likelihood of confusion is clear evidence that the Disputed Domain Name has been registered and is being used in bad faith. The Panel accepts the Complainant’s submissions in that regard and finds that the Disputed Domain Name has been registered and is being used in bad faith. 7. Decision
For all 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 be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Dated: January 5, 2011
Full & Egal Universal Law Academy