The Complainant is Ideal Boilers Ltd of Hull, Yorkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Page White & Farrer, United Kingdom.
The Respondent is Patrick Russell of Kilkenny, Ireland, represented by Cruickshank Intellectual Property Attorneys, Ireland. 2. The Domain Names and Registrar
The disputed domain names , and are registered with IE Domain Registry Limited ("IEDR"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2016 via email and in hardcopy on March 15, 2016. On March 10, 2016, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On March 11, 2016, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceeding commenced on March 23, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was April 21, 2016. The Response was filed with the Center on April 21, 2016 via email and in hardcopy on April 22, 2016. On April 27, 2016, the Complainant sent an email communication to the Center.
The Center appointed Alistair Payne as the sole panelist in this matter on May 3, 2016. 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 long established United Kingdom based manufacturer of boilers under the IDEAL brand and distributes its product in Ireland through a local distributor. It owns various trade mark registrations in the European Union incorporating its IDEAL word mark and in Ireland owns a combined word and device mark incorporating its IDEAL mark under registration number 245400.
The Respondent operates a business in Ireland through his company RPG Facilities Limited as a gas pipe fitter and gas installer, including of gas appliances. This company has a registration for the business name "Ideal Boilers Support" under registration number 565469 dating from March 7, 2016. The Respondent registered the disputed domain names as follows, on April 10, 2015, on April 29, 2013 and also on April 29, 2013. 5. Parties' Contentions A. Complainant
The Complainant submits that it has used its mark in the United Kingdom for over 100 years and in Ireland for more than 30 years. It owns numerous trade mark registrations incorporating its IDEAL word mark in a number of countries including in the European Union and in the United Kingdom and Ireland. It says that in 2015 its turnover was GBP 290 million and that its products and use of its mark can be seen on its websites at "" and "". It also provides training courses and support for its installers.
In Ireland it says that it distributes its products to retail outlets through a distributor, Davies Limited and that its products are displayed in that company's showroom and on its website and it has provided copies of some of its advertising material for the Irish market. It submits that its products have been the number one selling boiler in Ireland for the last 3 years with annual turnover of GBP 5.9 million. It says that its annual advertising spend in Ireland is GBP 500,000.
The Complainant therefore submits that its word mark IDEAL is a protected identifier for the purposes of the Policy and that each of the disputed domain names incorporate the IDEAL word mark combined with the descriptive word "boiler" or "boilers" and are therefore confusingly similar to the Complainant's mark.
The Complainant notes that although the Respondent is identified in WhoIs information as a sole trader, he operates under the trading name RPG Facilities and acknowledges this on his website and also acknowledged it in correspondence. The Complainant says that it has never authorised the Respondent's use of its mark in the disputed domain names, that the Respondent has no association with the Complainant and that he has never attended one of the Complainant's authorised installer courses and has no rights or legitimate interests in the disputed domain names.
The Complainant notes that only one of the disputed domain names, namely resolves to a website and that the other two resolve to holding pages. The home page of the website, submits the Complainant, bears a logo containing "Ideal Boilers Support" and then states "Ideal Boilers Support Ireland/UK" and the statement "[I]deal boilers support services are expert's in boiler repairs & services for Ideal boilers" and then includes a photograph of one of the Complainant's boilers. The Complainant further notes that the "Ideal Boilers Support" logo also appears on the other webpages and on the "support" page states that "Ideal Boilers Support are working with Ideal boilers" when, says the Complainant, this is clearly not the case and it falsely implies that the Respondent is an accredited installer or service agent and has attended the Complainant's courses. It is apparent, says the Complainant, that the Respondent is using the disputed domain names in order to mislead customers and drive traffic to its website.
The Complainant also submits that the Respondent attempted to use its ownership of the disputed domain names as a lever to force the Complainant to enter into some kind of commercial arrangement with it. This was as a consequence of the Complainant seeking to purchase the disputed domain names and subsequently the Respondent looking to enter into a commercial arrangement with the Complainant which the Respondent thought would also settle the Complainant's likely potential objection to the Respondent's trade mark application for "". The Complainant notes that the Respondent subsequently refused its offer to buy the disputed domain name for GBP 6,500 on the basis that it was not nearly enough. The Complainant says that it is apparent that the Respondent registered the disputed domain names in full knowledge of its rights and in order to use them to force the Complainant into a business relationship from which he would make a substantial gain. The Complainant notes that the Respondent's conduct was similar in relation to the domain name and resulted in a finding of bad faith and in the transfer of that domain name to the United Kingdom based owner of the BAXI mark and boiler business in Baxi Heating UK Ltd. v. Patrick Russell,WIPO Case No. DIE2014-0005. The Complainant notes that the Respondent registered the domain name shortly before registering the disputed domain names.
The Complainant has further submitted, with its email of April 27, 2016, "a copy a DRS decision issued by Nominet on April 26, 2016", which the Panel need not consider in rendering the present decision under the IEDR Policy. B. Respondent
The Respondent says that "ideal" is a commonly used English word and denies that the Complainant owns trade mark rights in this term in Ireland although it admits that the Complainant owns a stylized device mark incorporating the word "ideal" that covers a restricted description of goods in class 11 but does not cover services such as training courses for installers. The Respondent submits that there is no evidence to support this latter type of use and notes that the Complainant's European trade mark registrations were made subsequent to registration of the disputed domain names.
The Respondent also submits that there is no evidence relating to the Complainant's revenues or goodwill specifically in Ireland and says that he is unaware of the training courses allegedly provided by the Complainant in Ireland and notes that there is nothing on the Complainant's Irish website to these courses. The Respondent notes that while the Complainant's business involves the sale of boiler and associated parts, the Respondent's business involves services in relation to the supply and maintenance of boilers. The Respondent says that it does not believe that the Complainant is the top selling boiler manufacturer in Ireland during the last 3 years and in any event two of the disputed domain names were registered in 2013.
The Respondent says that the disputed domain names contain its registered business name and that although it did not include the word "support" in these domain names because this would have been unwieldy, it is apparent when arriving at the website to which they resolve that the Respondent only provides support type services and does not sell the boilers themselves. As a result the Respondent submits that the disputed domain names are not confusingly similar to the Complainant's trade mark.
As far as rights or legitimate interests are concerned the Respondent submits that the IDEAL mark is in common use and that the Complainant has not demonstrated ownership of goodwill such as would support its claim to ownership in Ireland and the only registered mark that predates the disputed domain names is a stylized mark and not a word mark registration for IDEAL. In any event, says the Respondent, the Complainant's trade mark rights, if any, are restricted to the manufacture of boilers and parts for them while the Respondent has built up its business in servicing them and therefore operates in a distinctly different business area and is not trying to direct customers away from the Complainant.
The Respondent submits that he is in an entirely different business from the Complainant and that he has no interest in restricting his business to the maintenance and support of one type of boiler and therefore is not using the "Ideal" name to suggest any commercial relationship with the Complainant and he notes that the Respondent's name "RPG Facilities" is clearly marked on its website and that his business is independent and separately regulated and accordingly he says that his registration and use of the disputed domain names were not in bad faith.
The Respondent says that he was first approached by the Complainant to sell the disputed domain name and that his suggestion that the parties could work together could in no way be construed as forcing the Complainant into a business relationship. He says that he simply registered the disputed domain names and when the Complainant approached him investigated the possibility of a business relationship and on receiving no further correspondence then he sent one further letter to the Complainant.
Finally the Respondent says that the sole use of the disputed domain names has been to drive customers to its website, using the common laudatory term "ideal" and that the Complainant has not demonstrated goodwill in Ireland and that this term is used in common by various traders. In any event, says the Respondent, its business is different from the Complainant's and it does not sell the same products. 6. Discussion and Findings A. Identical or Confusingly Similar
The first element of the IEDR Policy requires that the Complainant demonstrates that it has rights in a "protected identifier" and that the disputed domain names are identical or "misleadingly similar" to it. A "protected identifier" is "a trade or service mark protected in the island of Ireland".
The Complainant has shown that it owns various trade marks registered in Ireland or in the United Kingdom which would be enforceable in their respective parts of the "island of Ireland". These include, in particular, UK mark number 2134121 for the word mark IDEAL dating from May 28, 1997 and a combined word and logo device mark registration in Ireland under number 245500 for a series of representations that feature the word mark IDEAL surrounded by a lozenge or square shaped device of contrasting shading. The dominant element of this latter mark is the word "ideal" and the overall impression given by the combined word and device mark is of the word "ideal". This trade mark was registered on May 6, 2011. Both marks are registered in class 11 for boilers amongst other things.
Contrary to the Respondent's submissions and regardless of whether the Respondent's activities would infringe these marks or not, both marks are trade marks protected in their respective parts of the island of Ireland. Accordingly, the Panel finds that the first part of the test under this element of the Policy is satisfied.
Each of the disputed domain names contains the words "ideal" and "boiler" (whether in singular or plural form) and the concept of each of the domain names even where they include other non-distinctive elements, such as hyphens, is of an "ideal" boiler in the sense of a boiler that is perfectly suited for its purpose.
The dominant element of each of the Complainant's marks is the word "ideal". Although neither mark contains the word "boiler", both marks are registered for boilers and as the Complainant has demonstrated are actually used by it in connection with its boiler products in the island of Ireland. Although the Respondent uses the disputed domain names not for the sale of, but rather for the support, repair and maintenance of boilers, this use is obviously closely associated with the Complainant's use of the IDEAL mark in connection with the sale of its boiler products. Although the Panel does not find that the disputed domain names are identical to either of these marks, it does find that conceptually they are each misleadingly similar to either of these registered trade marks.
Accordingly, the Panel finds that the Complaint succeeds under the first element of the IEDR Policy. B. Rights in Law or Legitimate Interests
The Complainant has provided evidence that it distributes its boilers under the IDEAL mark in the United Kingdom and in Ireland, that it promotes its products from websites at "" and "" and that it has a long established business in both jurisdictions. The precise extent of its reputation and position in the market is challenged by the Respondent, however there is sufficient evidence before the Panel to support a finding that the Complainant enjoys at the least a reasonable degree of repute in its IDEAL mark for its boiler products in the island of Ireland resulting from a quite substantial business built up over a long period of time.
The Complainant has submitted that it has never authorised the Respondent's use of its mark in the disputed domain names, that the Respondent has no association with the Complainant and that the Respondent has never attended one of the Complainant's authorised installer courses and therefore has no rights or legitimate interests in the disputed domain names.
The Complainant notes that although the Respondent is identified in WhoIs information as a sole trader, he operates under the trading name "RPG Facilities" and acknowledges this on his website and also acknowledged it in correspondence. Although the Respondent says that he trades under the RPG Facilities name, the Respondent is using one of the disputed domain names, namely , to resolve to a website that bears a logo containing "Ideal Boilers Support". This website states that "Ideal Boilers support Ireland/UK" and the statement "[I]deal boilers support services are expert's in boiler repairs & services for Ideal boilers" and then includes a photograph of one of the Complainant's boilers. The Panel notes that the "Ideal Boilers Support" logo also appears on the other webpages and the "support" page states that "Ideal Boilers Support are working with ideal boilers". The Complainant denies that this is the case and in fact the Respondent confirms that he is not aware of the Complainant offering courses for accredited installer or service agents in Ireland.
The Respondent's explanation for his use of the disputed domain names is that he owns a business name registration and offers support services for the Complainant's boilers. However, the Respondent also says that he trades under the name "RPG Facilities". He may well also own a business name registration for "Ideal" but this means nothing unless he can demonstrate a bona fide history of use of this trading name and there is nothing in the record to support such an assertion.
In these circumstances the Panel infers that the Respondent really trades under the "RPG Facilities" name and not the "Ideal" name. It appears to the Panel that he is using the disputed domain names in order to suggest to Internet users that he has some kind of relationship with the Complainant, or is authorised or affiliated with the Complainant in relation to the maintenance of its boilers, when this is not in fact the case. This is not bona fide or legitimate conduct and as a result the Panel finds that the Respondent has not rebutted the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain names. Therefore the Complaint also succeeds under the second element of the IEDR Policy. C. Registered or Used in Bad Faith
Under the IEDR Policy the Complainant must demonstrate that the Respondent has either registered or used the disputed domain names in bad faith.
It appears to the Panel that the Respondent registered all three of the disputed domain names in bad faith. The Panel notes that two of the disputed domain names were registered in 2013 and one was registered in 2015. By 2013 the Complainant had been selling its IDEAL boiler products in Ireland for a long time and had developed a substantial business as described above. The Respondent who has been in the business of supporting, repairing and maintaining boilers in Ireland since 2007 must therefore have been aware of the Complainant's products and business under the IDEAL mark. In addition, the Complainant's combined logo and word mark registration in Ireland (registration number 245500) long predates the registration of the disputed domain names.
Neither, as further noted under Part B above, has the Respondent made out a credible case as to why and how it trades under the "Ideal" name, rather than, or as well as, the "RPG Facilities" name. Nor has it explained why it chose not only to register the disputed domain names, but to use at least one of them to re-direct Internet users to a website on which it attempts to use a variety of devices in an apparent effort to suggest to Internet users that it is either authorised by, or affiliated with, or endorsed by the Complainant to support and maintain its IDEAL boiler products. Its assertion on its support page that "Ideal Boilers Support are working with ideal boilers" only reinforces the Panel's view of its activities in this regard.
Under paragraph 2.1.4 of the IEDR Policy using a domain name to intentionally attract Internet users to a website by creating confusion with a protected identifier may be considered as evidence of registration or use in bad faith. The Panel finds that the being the disputed domain name that resolves to the Respondent's website has been used by the Respondent in terms of this paragraph and has therefore been registered and used in bad faith.
While and resolve to a holding site, the Respondent' failure to provide evidence of his use of the IDEAL name as a trading name and of his choice of these domain names in light of his likely knowledge of the Complainant's use of the IDEAL mark and established business by the time of their registration points to their registration in bad faith.
The Respondent's attempt to seek to enter into a business arrangement with the Complainant following the Complainant's request to purchase the disputed domain names, although not determinative, serves to further reinforce the Panel's view of the Respondent's motives in relation to all three disputed domain names.
As a result the Panel finds that the Complaint succeeds under the third element of the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain names , and be transferred to the Complainant provided the Registrar is satisfied that the Complainant fulfils the eligibility criteria set out in IEDR Registration Policy for ownership of the disputed domain names. Alternatively, the Panel orders that the disputed domain names should be cancelled.
Alistair Payne
Sole Panelist
Dated: May 20, 2016
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