The Complainant is Connect Distribution Services, Ltd. of Birmingham, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Registrant is Exparetise Limited of Tullamore, County Offaly, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”) through Register 365. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014 via email and on January 28, 2014 by courier. On January 20, 2014, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On January 21, 2014, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Complainant submitted an amended Complaint on January 24, 2014 by email and on February 5, 2014 by courier.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint and the amended Complaint, and the proceedings commenced on February 6, 2014. In accordance with the Rules, paragraph 5.1, the due date for Response was March 6, 2014. The Response was filed on March 6, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on March 11, 2014. 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 has been retailing spare parts and accessories for home appliances to consumers since 2007 under the name “buyspares”.
The Complainant owns a figurative Community Trade Mark No. 8775157 for the stylised word “buyspares” plus device filed December 22, 2009, in class 35.
According to IEDR, “[t]he domain was first applied for on October 2nd, 2012, and it was registered on November 23rd, 2012.”
On June 17, 2013, the Complainant emailed the Registrant seeking transfer of the disputed domain name. The Registrant replied on July 1, 2013, claiming that the disputed domain name was entirely generic and descriptive and that it was being properly used in relation to the Registrant’s business of supplying spare parts. The Complainant responded on July 3, 2013, invoking its registered trade mark and offering GBP 250 for the disputed domain name. The Registrant declined this as well as a later offer of EUR 1,000. 5. Parties’ Contentions A. Complainant Identical or Misleadingly Similar
The Complainant contends that, although based in the UK, it has been supplying spare parts to customers in Ireland since prior to 2010. The Complainant also trades under the brand “buyspares” in various other countries including France, Germany and Austria. The term “buyspares” is used in all of its domain names. In addition to use of “buyspares” as a trading name, the Complainant also offers a range of “buyspares”-branded products.
The Complainant’s customers have a strong affinity with its brand. The Complainant sells thousands of products to Ireland each year and customers regularly make repeat orders. Rights in Law or Legitimate Interests
To the best of the Complainant’s knowledge, the Registrant has no registered trade mark or intellectual property rights in the term “buyspares”.
The term “buyspares” is not integral to the Registrant’s branding and does not accurately reflect its brand name or the nature of its specific business.
Although, like the Complainant, the Registrant operates in the home appliance spares market, the disputed domain name does not make it clear that the spares on offer are strictly for appliances. The term “spares” is generic and can imply parts for anything – for example cars. If its intent is to inform potential customers what it is offering, it should use a domain name containing the word “appliances”, which would not imply any link to the existing and well-established “buyspares” brand. Registered or Used in Bad Faith
The disputed domain name is an attempt by the Registrant to mislead the Complainant’s existing customers intending to return to the Complainant’s website into transacting on the Registrant’s website by inducing customers to believe, wrongly, that the Registrant is part of the Complainant’s “buyspares” family of websites.
The use of the disputed domain name is a clear attempt by the Registrant to strengthen its business proposition by making an implied association with the Complainant’s brand. As the term “buyspares” is not integral to the Registrant’s branding, it is clear that use of the disputed domain name is designed to benefit from the Registrant being perceived as associated with the Complainant’s established appliance spares operation and to benefit from its service reputation.
This implied association is potentially damaging to the long-term health of the “buyspares” brand as the Complainant has no control over the purchase experience of the Registrant’s customers or on the impact this may have on the Complainant’s trading reputation in Ireland. B. Registrant Identical or Misleadingly Similar
The Registrant contends that the term “Buy Spares” is an entirely descriptive and generic term which exactly matches the Registrant’s line of business. The Complainant’s trade mark is a green and black logo. The Registrant would never use a logo which was similar to the Complainant’s logo. Rights in Law or Legitimate Interests
The Registrant is a wholly Irish owned family business incorporated in Ireland, unlike the Complainant. Its family has been wholesaling spares exclusively in Ireland since the early 1980s and has garnered a vast and loyal customer base in Ireland.
The use of two very simple English words together is reasonable to help the Registrant’s Irish customer base find it. The spelling of the Registrant’s company name can lead to errors and so the Registrant prefers this easy-to-remember generic domain name that makes sense to those wanting to buy spares from the Registrant.
The term “Buy Spares” is entirely generic and descriptive in nature and should be open to anyone to use. This is especially true for any company such as the Registrant from which customers can “buy spares”.
The Registrant registered the disputed domain name in 2012 and has used it since. This was long before the Complainant contacted the Registrant to suggest that it wanted to use the disputed domain name. It was also long before the Complainant entered the Irish market. The Complainant has not built up any goodwill or reputation in Ireland under this name despite its claim to have supplied under this name in Ireland since 2010. The Complainant only recently set up a website in Ireland, following its registration of in August 2013. The Complainant only registered for VAT in Ireland in November 2013.
There cannot be any confusion as the Registrant has been using the disputed domain name since 2012. There is more of a risk of misleading customers with a UK company using a “.ie” address, than there is with the Registrant using this simple descriptive domain name as it already has for a couple of years. The Complainant’s use of the disputed domain name would confuse Irish customers into thinking they are dealing with an Irish company.
The Complainant suggests that the disputed domain name does not make it clear the spares offered by the Registrant are strictly for appliances. However, the disputed domain name ties in very well with how the Registrant’s business has operated for years. Also, the Complainant is also in the home appliance spares market. The Complainant does not itself supply, for example, car spares and so, following the Complainant’s logic, it too should endeavour to include “appliances” within its own domain name. In any case, this generic, plain English term “Buy Spares” explains perfectly what the Registrant does. In fact the Registrant supplies spares outside domestic appliances to sectors such as the farming sector and even some car accessories. Registered or Used in Bad Faith
The Registrant registered and used the disputed domain name before it became aware that the Complainant wanted it. The Registrant does not seek to profit from the sale of the disputed domain name.
The website under the disputed domain name makes no reference to any other company. It makes to clear to customers that they are dealing with the Registrant in in Tullamore, Ireland. The Registrant uses its own logo, which in no way reflects that of the Complainant.
The Registrant does not seek to strengthen its business by an implied association with the Complainant. The Registrant’s brand is much more of a household name in Ireland than that of the Complainant. The Registrant already supplies the vast majority of this relatively small market. The Complainant would have much more to gain being associated with the Registrant in Ireland than the other way around. 6. Discussion and Findings
The Panel notes that the Policy is similar in many respects to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and therefore, to the extent applicable to the Policy, the Panel considers it appropriate to refer to authorities concerning the UDRP including the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant has invoked a figurative Community Trade Mark which has effect in the island of Ireland.
Paragraph 1.11 of WIPO Overview 2.0 states:
“…as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark.”
The Complainant’s figurative trade mark is dominated by the textual component “buyspares”; the design element is minimal.
Accordingly, the Panel concludes that, disregarding the country-code Top-Level Domain (ccTLD) suffix “.ie”, the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights. B. Rights in Law or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited,WIPO Case No. DIE2006-0001.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.
The factor in paragraph 3.1.1 of the Policy provides:
“Where the Registrant can demonstrate that, before being put on notice of the Complainant’s interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.
The Registrant effectively relies on this provision, arguing that, since before notice of the Complainant’s interest in the disputed domain name, it has used the disputed domain name purely for its generic and/or descriptive qualities and not by reference to the Complainant. The Complainant claims otherwise.
Given that this issue overlaps with registration or use in bad faith, the third condition in paragraph 1.1 of the Policy, and in view of the Panel’s finding under the third condition below, it is unnecessary to discuss the second condition in detail. C. Registered or Used in Bad Faith
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The gist of the Complainant’s case is that the Registrant registered and has used the disputed domain name to mislead the Complainant’s customers into thinking that the Registrant’s website is part of the Complainant’s “family” of websites. The Complainant claims that it has been supplying spare parts to customers in Ireland since before 2010.
The Registrant says that it selected the disputed domain name as a simple descriptive alternative to its trading name “Exparetise”, which was difficult for customers to spell. The Registrant adds that the disputed domain name is an obvious term to use because the Registrant is a company from which customers can “buy spares”. The Registrant says it is well established in Ireland, where it has operated exclusively since the early 1980s, and that it would have had nothing to gain by seeking to associate itself with the Complainant, a comparative newcomer to Ireland.
The Panel infers that the Registrant was likely to have been aware of the Complainant’s business when it registered the disputed domain name, as the Registrant has not stated otherwise. This is one factor for the Panel to weigh up but, given the highly descriptive nature of the disputed domain name, it is far from conclusive.
In determining the likelihood that the Registrant registered the disputed domain name to target the Complainant, rather than for its descriptive qualities, the Panel must consider all of the circumstances including the nature and scale of the Complainant’s business generally and its extent in Ireland in particular.
The difficulty for the Complainant is that it has produced virtually no evidence at all in support of its assertions and, in particular, there is nothing as to the period or extent of its trading activity in Ireland – or anywhere else for that matter. The Registrant points out that the only information as to the Complainant’s involvement with Ireland is the Complainant’s registration of the domain name in August 2013, which is comparatively recent and after the Registrant’s registration of the disputed domain name in November 2012.
If there had been evidence that, by the date of registration of the disputed domain name, the Complainant was trading extensively in Ireland, as it appears to claim, the Panel might (but would not necessarily) have concluded from the fact of the Registrant’s selection of the disputed domain name reflecting the Complainant’s name that it was likely to have been motivated by the Complainant’s name rather than the descriptive qualities of the disputed domain name. But no such evidence has been provided.
The Complainant also seeks to cast doubt on the Registrant’s bona fides by pointing out that the disputed domain name does not accurately reflect the Registrant’s business, which allegedly offers only spares for appliances, rather than parts “for anything” – such as cars. The Registrant says that this is irrelevant as, amongst other things, the Complainant too uses its own similar name principally for appliance spares and, in any case, the Registrant does indeed supply spares for some products aside from domestic appliances. There is no evidence before the Panel as to the precise nature of the spares supplied by either party. Nonetheless, even if the Registrant’s business is confined to the supply of spares for domestic appliances, in the circumstances of this case the Panel would not draw any adverse inference from the mere fact of the Registrant’s registration and use of a domain name comprising a descriptive term which is broader than its actual business. It is not in dispute that the Registrant’s business involves inviting customers to “buy spares” of some nature.
There is insufficient evidence before the Panel that the Registrant has sought to copy any aspect of the Complainant’s website or that it otherwise set out to deliberately to target the Complainant in some obvious way.
Accordingly, for all the reasons explained above, the Panel considers that the Complainant has failed to establish that the disputed domain name was registered or used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied and the registration of the disputed domain name is confirmed in accordance with paragraph 5.1. of the Policy.
Adam Taylor
Sole Panelist
Dated: April 1, 2014
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