The Complainant is The White Company (UK) Limited of Greenford, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Dechert LLC, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Moshgul Begum of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 28, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On February 2, 2011, 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 February 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2011. The Respondent did not submit any response but did communicate with the Center on a number of occasions.
The Center appointed Dawn Osborne as the sole panelist in this matter on March 8, 2011. 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, established in 1994, sells home accessories and owns United Kingdom (hereinafter “U.K.”) and Community Trade Mark registrations for THE WHITE COMPANY.
The Domain Name was registered on 20 July 2010. The Respondent has said the Domain Name is to be used for a web directory and suggested that the Complainant make a reasonable offer for the name. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant was established in 1994 and was initially a mail order business providing home accessories predominantly in white. Its first retail store was opened in Chelsea in 2001. It now operates 25 retail stores with two outlets in the U.K. It has a website at “www.m” and “www.them”. In the 2008/2009 financial year the Complainant had a turnover in excess of 80 Million pounds.
The Complainant owns many trade mark registrations including U.K. and CTM registrations for THE WHITE COMPANY.
The Domain Name is confusingly similar to the Complainant’s trade mark, the only difference being the absence of the word “the”. For the purposes of the UDRP, the top level domain “.co” is to be disregarded. The exclusion of “the” is not significant as the Complainant is known by THE WHITE COMPANY and WHITE COMPANY and both versions appear in the Complainant’s domain names.
The Complainant has not authorised the Respondent to use its trademark.
The Domain Name currently hosts a directory site which contains links to third party websites related to the words THE WHITE COMPANY, but there is no evidence of bona fide offering of goods or services.
The Respondent is not known by the Domain Name and has no trade mark rights in the WHITE COMPANY name. It is not clear that there is any connection between the Domain Name and the Respondent’s business or why the Respondent chose this name.
The Domain Name was registered a considerable period after the Complainant first started using its trade mark. The Complainant is a household name in the U.K., where the Respondent resides.
The Respondent does not have any rights or legitimate interests in the Domain Name.
The Domain Name was registered and has been used in bad faith.
Complainant sent a letter to the Respondent on September 2, 2010 setting out its trade mark rights and requesting transfer of the Domain Name before initiating this proceeding. The Respondent replied saying it was going to use the name for a web directory and suggested that the Complainant make a reasonable offer for the Domain Name. The Complainant contends that the primary purpose of registering the Domain Name was to obtain valuable consideration from the Complainant for the Domain Name in excess of out-of-pocket costs.
The Respondent has registered the Domain Name to disrupt the business of the Complainant by diverting customers from the Complainant to the website connected to the Domain Name.
Since the Domain Name is identical to the Complainant’s website address save for the final “m”, the Domain Name could easily be entered in error by users intending to access the Complainant’s site.
The Respondent is intentionally attempting to attract for commercial gain Internet Users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. Customers are likely to be confused. B. Respondent
The Respondent did not provide a formal response, but in e-mails to the Centre, said that the “.co” extension related to Colombia and the Complainant could do nothing in Colombia about this; that the Complainant’s mark was THE WHITE COMPANY not WHITE COMPANY; and that he could use the name for different goods and services and invited payment for the Domain Name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(1) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(3) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Apart from the “.co” suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s registered mark with the non distinct part of the trade mark, i.e., “the”, omitted. The omission of the word “the” does not serve to distinguish the Domain Name from the Complainant’s mark. The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark for the purposes of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a formal Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply to its favour) and does not appear to have any rights or legitimate interests in the Domain Name. The Complainant has indicated that it has not endorsed the Respondent in any way, and the Respondent’s business has no obvious connection with the designation “White Company”. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including “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 [its] documented out-of-pocket costs directly related to the domain name;” (paragraph 4(b)(i)) and “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on [its] website or location.” (paragraph 4(b)(iv)).
The use by the Respondent of the Domain Name for a “web directory” with links to third party sites selling goods for the home shows that the Respondent is aware of the Complainant and its field of activity and by registering the name and using it for commercial purposes, the Respondent is seeking to take advantage of the Complainant’s trade mark.
The Domain Names have been used to link to sites competing with the Complainant. Accordingly, it appears that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its website. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
Additionally, it appears that the Domain Names were also offered for sale by the Respondent to the Complainant. As such the Panel, therefore, finds that bad faith has also been demonstrated under section 4(b)(i) of the Policy.
Having established that the Respondent’s activities fall squarely within two express provisions of the Policy covering bad faith, there is no need to further consider the Complainant’s submissions on disruption of business. 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: March 11, 2011
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