The Complainant is Argos Limited of Milton Keynes, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Mr. Stephen Houghland of Merseyside, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On July 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. The Respondent did not submit any formal response. However, the Center received email communications from the Respondent on August 8, 2011 and September 2, 2011. The Center also received email communications from the Complainant which included correspondence with the Respondent.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 13, 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 is a well-known high street retailer in the United Kingdom (“UK”), which commenced business under the name “Argos” over 30 years ago. It is the registered proprietor of a number of “Argos” trademarks including UK registration number 2116587 dated November 23, 1996 (registered August 25, 2000) ARGOS (word) for various services in classes 36 and 39.
The Complainant operates its main retail website connected to its domain name, . It is also the proprietor of the domain name, , a domain name which it registered on March 5, 1999 and which it uses to direct Internet traffic to its main retail website.
The Domain Name was registered on February 8, 2011. As at July 14, 2011 it was connected to a Namesco parking page featuring links to a variety of sites including sites of the Complainant and some of its competitors (e.g. Littlewoods).
On February 10, 2011 the Respondent emailed the Complainant in the following terms: “Hi, I’ve just noticed that they have introduced the new domain ‘.co’. I have purchased just in case people get mixed up with your domain name .uk which is registered to you”.
On February 24, 2011 the Complainant responded, drawing attention to its trade mark rights and seeking transfer of the Domain Name.
On March 2, 2011 the Respondent emailed back stating that he registered the Domain Name in good faith. He says that it was freely available. He may use the Domain Name, but before doing so will check that he does nothing to infringe the Complainant’s trade mark rights. His email concludes: “The domain name may appear above the “www..uk” that Argos has registered to themselves due to the above domain name I have being shorter, if you would like the domain name I have above, I am open to offers.”
On June 15, 2011 the Respondent emailed the Complainant indicating that other companies had expressed an interest in purchasing the Domain Name (for what purpose he knew not) and that since the Complainant had not responded to his previous email he assumed it was not interested in the Domain Name and he could sell it on.
On June 20, 2011 the Complainant responded with a pre-action letter seeking undertakings including an undertaking to reimburse the Complainant its costs associated with the requested transfer.
On June 21, 2011 the Respondent replied reiterating that he purchased the Domain Name because it was freely available to purchase. He says that he purchased it in good faith. It cost him money and he is not using it. The Complainant did not purchase it. He (the Respondent) purchased it and could have sold it on to the highest bidder. Instead, he notified the Complainant. He says that he has been more than fair and invites the Complainant to reconsider.
On July 28, 2011 (date Complaint filed) the Complainant’s representatives wrote to the Respondent indicating that the Complaint would be withdrawn if the Respondent supplied by August 12, 2011 requested undertakings and a £2,000 contribution to the Complainant’s costs.
On July 29, 2011 the Respondent responds saying that he has been in touch with the Complainant regarding the Complainant’s requirements, but the Complainant has not been back to him.
On August 1, 2011 the Complainant’s representatives replied explaining that the situation had reached its present state because the Respondent had failed to accede to the Complainant’s demands as set out in the Complainant’s June 20, 2011 letter.
On August 2, 2011 the Respondent replies saying that he has offered to transfer the Domain Name, but he needs the Complainant’s co-operation in the way of IT support to complete the transfer. He requires the Complainant to cover the Complainant’s legal expenses.
On August 8, 2011 the Respondent emailed the Center re-iterating much of what he said in his email correspondence with the Complainant and adding that his intention had been to develop a directory website, which would not infringe the Complainant’s trade mark rights because the Complainant was involved in retail, not directories. He expresses the view that the Domain Name, which comprises two words is sufficient to distinguish the Domain Name from “Argos”, which is only one word.
On September 2, 2011 the Respondent emailed the Center in the following terms: “I have had conversation with Namesco and I am awaiting the other party response, as I have agree to give them the domain name, the lady I was speaking to from Namesco went on holiday last week, I have emailed her yesterday and just waiting a response from other party for further instructions.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its ARGOS registered trade mark (see section 4 above for details) and identical to its domain name, both of which were registered long before the date of registration of the Domain Name (February 8, 2011).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions, but the Panel is prepared to treat as his Response the various statements that he has made in his correspondence with the Complainant and its representatives and the Center as described in section 4 above. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark ARGOS, the word “direct”, which is a commonly used term to describe online trade, and the generic ‘.co’ suffix, which may be ignored for the purpose of assessing identity/confusing similarity under paragraph 4(a)(i) of the Policy. The addition of the word “direct” does nothing to distance the Domain Name from the Complainant and its registered trade mark. Quite the reverse. It highlights “Argos” as a retailer.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
It is not a matter of dispute between the parties that when the Respondent registered the Domain Name (a) he was aware of the Complainant as a high street retailer in the UK, (b) he had no previous association with either of the names “Argos” and “Argosdirect”, (c) it was the launching of the ‘.co’ domain name which alerted him to the possibility of registering the Domain Name, (d) he registered it because it was available to him for registration and (e) as confirmed by his email of February 10, 2011 (two days after registration of the Domain Name), he was aware of the potential for confusion with the Complainant’s trade mark .
The Respondent has provided no information to explain why the Domain Name was an appropriate domain name for him to select.
There is nothing before the Panel to suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith on several bases, namely that the Respondent intended to sell the Domain Name to the Complainant at a profit (paragraph 4(b)(i) of the Policy), that the Respondent intended to disrupt the Complainant’s business, that the Respondent intended to prevent the Complainant from reflecting its ARGOS mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy1) and that the Respondent intended to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the sources, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).
What were the Respondent’s intentions at that time? The Panel has nothing to go on save for the correspondence which is detailed in section 4 above and such use as has been made of the Domain Name.
The only use which seems to have been made of the Domain Name has been to connect it to a parking page of Namesco, who appears to be the Respondent’s ISP (annex 8 to the Complaint). That page features a number of links to other websites some of them being to the Complainant’s competitors. The Respondent makes no mention of that use. Indeed he asserts throughout that while he may use the Domain Name, he has not yet done so and will check before making any use of it that the use does not infringe the Complainant’s trade mark rights. It is conceivable that this may be a use of the Domain Name by Namesco, parking the name until the Respondent decides what he wants to do with it. The Panel does not know.
The first indication that the Respondent gives of his plans for the Domain Name is set out in his email to the Center on August 8, 2011, the first part of which reads as follows:
“I purchased the Domain Name from Namesco this year, the domain name was freely available for anybody to purchase from any domain seller, it was suggested to me in an email of available domain names. As it was available for some length of time, I thought I would purchase it and maybe have a go at making a directory, as I have recently been given some website software.
I checked to ensure that if I did make a directory website that I would not be breaching anybodies copyrights or trade marks, as I notice it looked similar to Argos, but Argos are “www.” which is one word not two.
I was advise that I would not be breaching anybodies copyright or trademarks if I set up a directory website as Argos is retail not a directory, I didn’t have chance at present to build the website due to being layed off from work, so I left it, but I did advise Argos of this that I had the domain as I didn’t want to go to all the trouble and hard work of creating a directory for them to be challenged by them which I don’t understamd the reasons why, as the domain name was freely available and I purchased it in good faith, if the domain name meant so much to them and all their efforts of instructing solicitors etc why didn’t they purchase it for the £10 approx like I did.”
The letter then goes on to relate the correspondence with the solicitors (described in section 4 above) and concludes with the statement that if Argos drops its demand for £2,000 costs, he will as a gesture of goodwill transfer the Domain Name.
It is to be noted, however, that this letter post-dates the filing of the Complaint.
The Respondent’s actions tell a rather different story.
First, by his email of February 10, 2011 (two days after he has registered the Domain Name) he informs the Complainant “Hi, I’ve just noticed that they have introduced the new domain ‘.co’. I have purchased just in case people get mixed up with your domain name .uk which is registered to you”. Quite what he means by “just in case” is not entirely clear to the Panel. Suffice it to say, he is fully aware of the scope for confusion.
Secondly, in his email of March 2, 2011 responding to the Complainant’s request that he transfer the Domain Name he says: “The domain name may appear above the “www..uk” that Argos has registered to themselves due to the above domain name I have being shorter, if you would like the domain name I have above, I am open to offers.”
On the basis that actions speak louder than words, the Panel takes the view on the evidence before it that the overwhelming probability is that the Respondent registered the Domain Name primarily with a view to selling it to the Complainant at a profit. As can be seen from the correspondence set out in section 4 above (some of which is quoted above), as that correspondence developed the Respondent drew the Complainant’s attention to the risk of confusion (February 10, 2011), drew the Complainant’s attention to the advantage to their having the Domain Name and he was open to offers (March 2, 2011), attempted to provoke the Complainant by saying that he had been receiving offers from other companies and there was no knowing how the Domain Name might be used if he were to sell it on (June 15, 2011). In the view of the Panel, the Respondent’s actions are the actions of a cybersquatter. At no stage has he given any reason why “Argos” or “argosdirect” was an appropriate name for him to use, save that the latter was available.
The fact that a domain name may be ‘available for registration’ is no indication (of itself) that the domain name may lawfully be registered by the registrant. The Respondent castigates the Complainant for having failed to register it, seemingly taking the view that it is the trade mark owner’s responsibility to protect itself against all incursions. However, there are a very large number of ccTLD domains and in relation to most trade marks there are a large number of variants (by dint of hyphens etc), which combine to make it practically impossible for a trade mark owner to protect itself against all possible permutations, even if it wished to do so.
More to the point, paragraph 2 of the Policy, to which the Respondent signed up when he registered the Domain Name, imposes a duty upon the registrant to “determine whether [his] domain name registration infringes or violates someone else’s rights”. As indicated above in the Respondent’s email to the Center dated August 8, 2011, the Respondent claims to have made checks and also claims to have received advice, but the checks were manifestly inadequate (the Respondent himself recognised the risk of confusion) and the advice that he received, namely that “Argos” is distinguishable from “Argosdirect” and that retail is necessarily distinguishable from directories, was defective.
Even if, as the Respondent asserts, the Respondent registered the Domain Name primarily to connect it to a directory site, it is more than likely that that use would have led to the confusion that the Respondent recognised as being a possibility. Accordingly, even on the Respondent’s case the Domain Name would have constituted an abusive registration within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. 7. Decision
For 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.
Tony Willoughby
Sole Panelist
Dated: September 16, 2011
1 In support of this contention the Complainant produces evidence to show that the Respondent is the registrant of other domain names featuring well-known trade marks of others.
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