WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shensmith Group Ltd v. Maureen Tarmey

Case No. D2012-1086

1. The Parties

The Complainant is Shensmith Group Ltd of Lichfield, United Kingdom of Great Britain and Northern Ireland (“U.K.”), internally represented.

The Respondent is Maureen Tarmey of Birmingham Warwickshire, U.K., represented by Barker Brettell LLP, U.K.

2. The Domain Name and Registrar

The disputed domain name <skirtingboardsdirect.com> (the Domain Name) is registered with Total Web Solutions Limited trading as TotalRegistrations (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2012, 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 May 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2012. The Response was filed with the Center on June 14, 2012. On June 15, 2012 the Complainant filed a supplemental statement dealing with certain points raised by the Response and on June 20, 2012 the Respondent also filed a supplemental statement.

The Center appointed Jon Lang as the sole panelist in this matter on June 20, 2012. 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.

On June 25, 2012 the Panel made a Procedural Order requesting that the Parties provide further information on two issues to which reference will be made below. In response, each Party provided further information. The Panel takes into account all submissions of each party.

4. Factual Background

The Domain Name was registered on January 16, 2009. The parties had some form of relationship prior to registration of the Domain Name but its precise nature is very much in dispute.

Prior to registration of the Domain Name, the Complainant had registered a similar domain name <skirtingboards.com> in August 2006.

The Complainant is the proprietor of U.K. figurative trade marks “SkirtingBoardsDirect”, number 2538215 with a filing date of February 5, 2010 and “SkirtingBoards.com”, number 2527834 with a filing date of October 2, 2009.

In January 2009, having recently registered the Domain Name, the Respondent set up a 301 redirect from “www.skirtingboards.com” to “www.skirtingboardsdirect.com” (the Respondent’s submission). Once discovered by the Complainant, there was a flurry of activity, including an exchange of solicitors letters in August 2009.

5. Parties’ Contentions

The Parties have made extensive submissions. The Panel will endeavor to summarise them so far as relevant to the issues that must be decided in this proceeding.

A. The Complainant

The Complainant registered the domain name <skirtingboards.com> in August 2006, built a website in 2007, and at some point in 2008 approached the Respondent to be a supplier of products, with profits to be split between the Parties. The relationship was based on a “verbal MOU”. Many of the website expenses were paid from the Respondent’s account and the contact details on the website were those of the Respondent, who was given login and hosting details.

The website content (at <skirtingboards.com>) had been created by the Complainant and the basic template was purchased and invoiced to “www.skirtingboards.com”.

The website to which the domain name <skirtingboards.com> resolved carried the strap line “SkirtingBoardsDirect”.

In January 2009, having recently registered the Domain Name, the Respondent “hijacked” the website and redirected Internet users to the website through the Domain Name.

The Respondent used <skirtingboards.com> (the domain name registered in the name of the Complainant) in the meta data of the website now under the control of the Respondent and to which the Domain Name now pointed, and referred to <skirtingboards.com> on its (the Respondent’s) blog.

The business and brand <skirtingboards.com> (and the common law mark “Skirting Boards Direct”) are, and always were, the sole property of Daniel Smith, Shu Shen (Daniel Smith’s wife), and associated companies (including, presumably, the Complainant).

The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Complainant holds an identical registered trade mark (SkirtingBoardsDirect) and it matters not that registration of the mark post-dated registration of the Domain Name.

The Complainant also has a registered trade mark containing the words “SkirtingBoards.com” to which the Domain Name is confusingly similar.

The Complainant also contends that it has common law rights in “SkirtingBoardsDirect” having used those words in a header on the website at “www.skirtingboards.com” and that customers referred to the Complainant as “skirting boards direct” from an early stage. The Complainant says that it adopted and supported that branding around the start of 2008.

The Respondent has no rights or legitimate interests in respect of the Domain Name

The Domain Name was registered for the purpose of misleading and diverting Internet users for direct financial and commercial gain with consequent loss and disruption to the Complainant’s legitimate business. This cannot be considered a legitimate interest in the Domain Name. Furthermore the Respondent’s website sought to confuse customers into believing they were buying from the Complainant.

The Respondent was not known as “skirting boards direct” prior to registration of the Domain Name, rather the Complainant had been commonly known by that form of words. This initially came about by chance as the website at <skirtingboards.com> featured a two line header which read “Skirting Boards Direct from the manufacturer”. The branding stuck in customers’ minds and was actively adopted by the Complainant and subsequently registered as a trade mark.

Given the Respondent is infringing the Complainant’s marks through registration of the Domain Name (and website), the Respondent cannot be considered to have a legitimate interest in the Domain Name.

The Respondent’s registration cannot be bona fide if the Domain Name was registered in bad faith.

The Domain Name was registered and is being used in bad faith

The Domain Name was registered for the specific purpose of hijacking the Complainant’s website and diverting customers from “www.skirtingboards.com” to “www.skirtingboardsdirect.com” for commercial gain. This misled and caused confusion to the Complainant’s customers, disrupted the Complainant’s business and sought to trade off the established goodwill of the Complainant’s marks.

The Respondent has and continues to infringe the trade marks of the Complainant.

As a supplier to the Complainant, and with complete access to the Complainant’s customer records, the Respondent registered the Domain Name in order to divert customers and cut the Complainant out of its business. This cannot be considered anything other than a bad faith registration.

The Complainant seeks to explain the delay in bringing his Complaint in various ways.

B. Respondent

The Domain Name is not identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

A sign will only be considered identical with a trade mark where it reproduces, without modification, all elements of the trade mark. Here however, the trade marks of the Complainant contain figurative elements which have not been reproduced in the Domain Name.

The Respondent does not contest the Complainant’s trade mark registrations but rather the extent to which they can be used to prevent the Respondent’s use of purely descriptive words “skirting board” and “skirting boards direct”.

Moreover, the Domain Name was registered before the Complainant’s trade marks were filed.

As to common law rights, the Respondent says that the Complainant has not provided any evidence of use of the name “Skirting Boards Direct” and has not demonstrated the necessary goodwill to support a common law claim.

Rights or legitimate interests in respect of the Domain Name

The Respondent contends that prior to registration of the Domain Name, it had been trading through the website at “www.skirtingboards.com” which was registered on behalf of the Respondent by the Complainant, and paid for by the Respondent, as evidenced by a credit card statement of the Respondent showing payment for the Domain Name to “Fasthosts Internet”. The website to which the domain name <skirtingboards.com> pointed was “operational by February/March 2007”. On the website the text “SkirtingBoardsDirect” was used and the Respondent had become known by its customers as “skirtingboardsdirect”. Payments for operation and maintenance of the website were made by the Respondent. The address for the website was that of T & T Floors Limited, a company to which the Respondent is connected.

The Respondent contends that in early 2009, she became aware that the Complainant had “hijacked” the domain name <skirtingboards.com> by registering it in the name of Daniel Smith rather than that of the Respondent. The Respondent goes on to say that the Complainant “then proceeded to take over the website at ‘www.skirtingboards.com’” and says that “finding they were no longer able to use the domain ‘www.skirtingboards.com’.” the Respondent was left with no option other than to register another domain name and went “for the next best option” i.e., the Domain Name. Given the Respondent’s use of the words “SkirtingBoardsDirect” on the website, the Domain Name was an obvious choice for the Respondent, particularly as it was descriptive of the products sold by the Respondent.

As far as the redirection is concerned, the Respondent “set up a 301 redirect from ‘www.skirtingboards.com’” to ‘www.skirtingboardsdirect.com’ to ensure they still had an operational website in case the Complainant decided to change the domain system of ‘www.skirtingboards.com’ without notice, which they did.”

The Respondent refers to a witness statement from a Mr. Clegg who is a director of Absolute Design which designed the website at “www.skirtingboards.com” who says that in June 2008, Mr. Daniel Smith (of the Complainant) “asked him to set up a web store for a client of his Mr. […] Tarmey t/A T & T Flooring.” Mr. Clegg says that he invoiced Mr. Tarmey for “the design and hosting of the website” and that, after being contacted by Mr. Tarmey in January 2009, to say he was now in dispute with Mr. Smith over the ownership of the domain name <skirtingboards.com>, he also dealt with the eventual registration of the Domain Name and redirection to the website controlled by the Respondent “in case Mr. Smith decided to change the DNS of ‘www.skirtingboards.com’ without notice”.

Bad faith registration and use

The Domain Name was registered before the Complainant’s trade marks were filed.

Because the Respondent could not have contemplated the Complainant’s yet to be established rights, both registered and unregistered, at the time of registration of the Domain Name, such registration could not have been in bad faith.

Moreover, the Domain Name is directly descriptive of the Respondent’s goods.

The registered rights of the Complainant are for the distinctive figurative element not the words “skirtingboardsdirect” or “skirtingboards” and it could not be contemplated that anyone could obtain rights to prevent a third party using those forms of words.

The Respondent was left with no choice following the Complainant’s “hijack” of the domain name <skirtingboards.com> but to register the Domain Name comprising the form of words used on the website at ‘’www.skirtingboards.com”. The redirect from “www.skirtingboards.com” to “www.skirtingboardsdirect.com” by the Respondent was to ensure it still had an operational site. In short, the Respondent contends that it had genuine and legitimate reasons to choose the Domain Name.

The Respondent did not hijack the website at “www.skirtingboards.com”. The Respondent employed D. Smith of the Respondent to, inter alia, design, build and develop the website at “www.skirtingboards.com” and pursuant to such employment the design of the website remained with the Respondent. Thus the Respondent was entitled to use those designs on the new website at “www.skirtingboardsdirect.com”.

The Respondent suggests that the Complainant has acknowledged the employment relationship and argues that it would be nonsensical to pay for a website and its maintenance if the Respondent did not intend to own it.

There is no trade mark infringement for the reasons described earlier.

The Respondent notes that the Complainant has been aware of the website at the Domain Name since registration and that failure to take action erodes its arguments in relation to legitimate interest and registration in bad faith.

Finally, the Respondent alleges reverse domain name hijacking against the Complainant.

The Complainant’s Supplemental statement

The website at “www.skirtingboards.com” was running and intact at the point of the unauthorised redirection by the Respondent. It was upon the Complainant’s discovery of the redirection that action was taken by the Complainant inter alia to rebuild a site at <skirtingboards.com>.

The Complainant refers to an email sent by the Complainant to the Respondent on February 2, 2009, requesting that an “MOU contract be finalized within 7 days”, a request that the Respondent ignored.

The Complainant says that it was responsible for payment for the domain name <skirtingboards.com> not the Respondent and refers to an email in support.

The Complainant, (in the guise of D. Smith), says that he was never an employee of the Respondent and there is no evidence of such a relationship.

The Respondent’s Supplemental statement

No comment is made by the Respondent on the MOU other than that there is nothing to suggest it has anything to do with this dispute (although it is also said that it is indicative of some relationship between the Parties).

The contention that it was the Respondent that paid for the domain name <skirtingboards.com> was again made and a number of other assertions were repeated.

The Procedural Order of the Panel made on June 25, 2012

Given the direct conflict in submissions as to the relationship between the Parties, including the registration (and payment) of the domain name <skirtingboards.com> the Panel requested that further information be submitted by June 29, 2012. Each Party duly submitted further material.

The Respondent exhibited various statements from her and third parties dealing with Mr. Smith’s relationship with the Respondent and registration of the domain name <skirtingboards.com> supporting the Respondent’s contentions. Importantly, it was stated again that the domain name <skirtingboards.com> was paid for by Mrs. Tarmey.

The Complainant also dealt with his relationship with the Respondent, stating again that there was no employment relationship whatsoever and says that “at the time skirtingboards.com was registered, the only relationships which existed or had previously existed were as flooring suppliers to one another (although I don’t believe the [R]espondent ever made any purchases from the [C]omplainant)”. A letter from Mr. Smiths’s accountant has been attached to the Complainant’s further statement, which appears to support the Complainant’s contentions concerning his relationship with the Respondent.

As to registration and payment for the domain name <skirtingboards.com> the Complainant says that credits used to register that domain name were purchased by D. Smith with a card ending in 1874. In support an email from Fasthosts to D. Smith was attached to the Complainant’s further statement.

Mr. Smith has produced evidence of an HSBC statement for a MasterCard ending 1874.

The Complainant also makes a number of other assertions to which the Panel need not refer.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.

Throughout the various submissions, references are made to entities and individuals other than those identified in these proceedings (as recorded in the case file) as the Complainant and the Respondent. The Panel has taken a liberal view and has not sought to make or detract from any finding because, for instance, Mr. D. Smith who features prominently in these proceedings is not the Complainant, or that assertions made on behalf of the Respondent concerning, for instance, the employment of Mr. Smith concern someone other than the Registrant, i.e., T & T Floors Ltd.

To ensure that each party is treated fairly, the Panel has accepted all submissions made by or on behalf of the Parties and, by way of Procedural Order made on June 25, 2012, afforded to each Party an opportunity to make further submissions in relation to matters of fact that appeared relevant but on which there were diametrically opposed assertions.

The Panel has decided this Complaint on the basis of the statements and documents submitted and in accordance with the Policy and principles of law that appear applicable.

A. Identical or Confusingly Similar

Most of the Respondent’s submissions concern ”rights”. The Respondent says, in relation to the Complainant’s registered trade marks, that there can be no rights in the purely descriptive words of the marks, but only the distinctive figurative elements. As far as unregistered rights are concerned, the Respondent says that the Complainant has not satisfied the various requirements to acquire rights.

The Respondent also says that the Domain Name was registered before the Complainant’s trade marks.

Rights in the textual element of the figurative registered trade marks

The essence of the Respondent’s submissions is that if the Complainant could not register the textual element of the marks without the figurative element, i.e., how can it be that the Complainant can now seek to assert rights in the textual non-protectable elements for the purposes of the Policy?

By way of answer, the Panel can do no better than to quote from the judgment of Jacob LJ in the case of Phones4u Ltd v. phones4u.co.uk [2006] EWCA Civ.244), an English Court of Appeal case, in particular paragraphs 78 to 80, which appear to be deal with the issue:

“Finally, suppose the ‘limitation’ is merely a superfluous additional description of the mark; that the registered mark is the logo registered in the colours shown without any limitation of rights. Can one say, because the mark is a logo, moreover, in colour, that the mere words ‘phone4u.co.uk’ cannot infringe? One can heighten the point by asking whether the words ‘Phones 4u’ simpliciter would infringe?

If one were starting trade mark law all over again there would be something to be said for this. If you need to put words in a device to get them registered you ought not to be allowed later (unless there is later acquired distinctiveness) to say the words alone infringe. Putting it another way if you needed a device to get registered only the same or a confusingly similar device should infringe. Here, for instance, when the device was registered the Office clearly regarded the mere words as insufficiently distinctive – even the words in the black and white logo were so regarded. Yet now the mark is registered it is said it covers just that which the Office would not register.

But one is not starting trade mark law now. One has to go by the existing legislation. Once a mark has got on the register, the rights given are those conferred by Art.5 as enacted in s.10 of the UK Act. The only question here is that posed by Art.5(1)(b) – confusing similarity. That involves an overall (‘global’) comparison of the registered mark with the alleged infringement. If one undertakes that here, a clear, prominent and memorable part of the registered mark is the words as such. It seems inevitable that taking those words as such (or a trivial variant such as phone4u) will cause confusion. So those words would have infringed but for the limitation.”

Later registration of registered trade marks

Section 1.4 of the Second Edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) makes clear that “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP[.]”

In the circumstances, the Panel is satisfied that the Complainant has rights for the purposes of the Policy based on the Complainant’s registered rights. In these circumstances, at least so far the first element is concerned, it is unnecessary to consider the Complainant’s assertion of unregistered rights. It is therefore necessary to go on to consider whether the Doman Name is identical or confusingly similar to the Complainant’s marks.

Is the Doman Name identical or confusingly similar to a trade mark of the Complainant?

The Domain Name incorporates the Complainant’s mark “SkirtingBoardsDirect” in its entirety and is therefore identical. It is also similar to the Complainant’s mark “SkirtingBoards.com” but there is no need to explore whether confusing similarity exists in view of the finding in relation to the mark “SkirtingBoardsDirect”. Of course, the Panel may disregard the suffix “.com” for the purposes of comparison.

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations in the Complaint as summarized above, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests.

For the purposes of paragraph 4(a) of the Policy a Respondent can show it has rights or legitimate interests in a domain name in various ways. The Policy sets out a non-exhaustive list of circumstances which, “if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate […] rights or legitimate interests to the domain name”. These include that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights”.

The Respondent’s submissions appear to be based on rights or interests associated with the domain name <skirtingboards.com> and the website to which it pointed prior to registration of the Domain Name and redirection. The Respondent contends that the domain name <skirtingboards.com> was registered on behalf of the Respondent by the Complainant as evidenced by a bank statement of the Respondent showing that Mrs. Tarmey had paid for it. On the website to which that domain name pointed, the text “skirtingboardsdirect” was used and the Respondent says that they had become known by its customers as “skirtingboardsdirect”. Furthermore, the Respondent says that payments for operation and maintenance of the website were made by the Respondent, and the Respondent makes a number of other points designed to illustrate their rights in the domain name <skirtingboards.com>. The Respondent then goes on to say that the Complainant “hijacked” the domain name “www.skirtingboards.com” by registering it in Mr. Smith’s name rather than that of the Respondent and that, upon discovering that they were no longer able to use that domain name went “for the next best option” i.e., the Domain Name. Conversely, the Complainant says that the Domain Name was registered for the specific purpose of hijacking the Complainant’s website and diverting customers from <skirtingboards.com> to <skirtingboardsdirect.com>. Both parties claim rights in the original website and the domain name <skirtingboards.com> and in many ways their various assertions are mirror images of one another.

Much material has been submitted concerning the relationship between Mr. D. Smith of the Complainant and the Respondent/T & T Floors Ltd, and in relation to payment for registration of the domain name <skirtingboards.com>. These issues are of some relevance.

The relationship between the parties and payment for the domain name <skirtingboards.com>

There are certain features of the Respondent’s evidence that appear inconsistent and vague. For instance, the witness statement from Mr. Clegg submitted on behalf of the Respondent, states that in June 2008, Mr. Smith (of the Complainant) “asked him to set up a web store for a client of his Mr. T[.] Tarmey t/A T & T Flooring.” Mr. Clegg says that he invoiced Mr. Tarmey for “the design and hosting of the website[.]” Yet the Respondent herself says that the website to which the domain name <skirtingboards.com> pointed was “operational by February/March 2007”, i.e., much earlier.

The Respondent says that Mr. Smith was an employee. The Complainant denies this. The Complainant asserts that the relationship, at least so far as the website is concerned, was based on a “verbal MOU” and there is reference to an email sent by the Complainant to the Respondent on February 2, 2009, requesting that an “MOU contract be finalized within 7 days”. The Respondent says in her response that there is nothing to suggest that the MOU has anything to do with this dispute without explaining what it does have to do with. The Respondent also says that the MOU is indicative of some relationship between the parties but again fails to elucidate. The Panel find it odd that the Respondent should decide not to deal with an issue that clearly may have some relevance, particularly as it is acknowledged that an MOU is indicative of a relationship and, importantly, most probably indicative of a relationship other than the one the Respondent contends for i.e., that of employee/employer.

The Panel is not convinced that there was an employee/employer relationship. The Panel finds that there was some form of trading relationship between the Parties, which had not yet been formalized.

As to payment for the domain name <skirtingboards.com>, the Panel finds the evidence of the Complainant convincing, i.e., that it was Mr. Smith that paid for it. There appears to be compelling evidence on the point. It is accepted however that other expenses in relation to the website were paid for by the Respondent.

Finally, the Panel considers it appropriate to comment on the catalyst for the dispute. Again reference is made to the witness statement of Mr. Clegg submitted on behalf of the Respondent. He says that after being contacted by Mr. Tarmey in January 2009, to say he was now in dispute with Mr. Smith over the ownership of the domain name <skirtingboards.com>, he dealt with the eventual registration of the Domain Name and redirection to the website controlled by the Respondent “in case Mr. Smith decided to change the DNS of ‘www.skirtingboards.com’ without notice”. So at the time of redirection, it appears from Mr. Clegg’s statement that the Complainant had taken no precipitous action. Yet the Respondent says that “finding they were no longer able to use the domain ‘www.skirtingboards.com’”, she was left with no option other than to register the Domain Name. It seems to the Panel that it was the Complainant trying to formalise the arrangements between the parties in late 2008/early 2009, as described in a letter from the Complainant’s solicitors to the Respondent’s solicitors in August 2009 (exhibited to the Complainant), which triggered the action of the Respondent who was not, at the time of the redirection, prevented from doing anything. This is indeed the Complainant’s case – that the website at “www.skirtingboards.com” was running and intact at the point of the unauthorised redirection by the Respondent (and that it was upon the Complainant’s discovery of the redirection that action was taken by the Complainant inter alia to rebuild a site at <skirtingboards.com>). In fact it appears that the Complainant was blissfully unaware that there was a dispute in January 2009 (when Mr. Tarmey told Mr. Clegg that there was a dispute) and the Respondents were taking the steps they were, given the Complainant’s e-mail of February 2, 2009 referred to earlier, requesting that an “MOU contract be finalised within 7 days”.

The burden of proof is on the Respondent to demonstrate it has rights or legitimate interests in the Domain Name. The Respondent has argued, strenuously, that Mr. Smith was no more than an employee of the Respondent and therefore anything he did belonged or should belong to the Respondent and that therefore the Respondent clearly has rights in the Domain Name arising from the original website. But the Panel does not accept this argument.

The Panel accepts the contentions of the Complainant in relation to ownership of <skirtingboards.com> and development of the website to which it pointed. That is not to say of course that rights to the domain name <skirtingboards.com> and the corresponding website could not have arisen in favour of the Respondent (alongside those of the Complainant), depending on the nature of the relationship between the Parties. And those rights, such as they were, might have been sufficient to establish rights or legitimate interests in the Domain Name. Often rights are shared between trading partners. But the Respondent has argued, in essence, that pursuant to the employer/employee relationship, she owns everything and the Complainant owns nothing, an argument that the Panel does not accept, particularly given the MOU which the Respondent has not denied but has failed to explain.

It is for the Respondent to produce credible evidence in support of her rights or legitimate interests in the Domain Name, rather than for the Panel to try and guess what rights might arise in circumstances not advanced by the Respondent (namely that a trading relationship of sorts, at least in so far as the website was concerned, did exist between the Parties).

In all the circumstances the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Dealing first with Section 3.1 of WIPO Overview 2.0, namely the question, “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired”, it is clear that the consensus view is that “…although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

This case is outside the norm and it is perfectly possible for the Respondent, given the findings above, to have been aware of the Complainant’s rights, or at least had them in contemplation, in relation to the website and the marketing strap line “skirtingboardsdirect” used on it. The precise status of those rights at the point of registration of the Domain Name is not dispositive here. It is perfectly possible for descriptive words to at some point acquire distinctiveness and, in the Panel’s view, it could not be said that the Complainants rights, such as they were at that point, could not have been contemplated. Indeed, the WIPO Overview 2.0 states that “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”

A complainant may demonstrate bad faith registration and use in various ways. The Policy describes some circumstances, which if found by the Panel to be present, shall be evidence of the registration and use a domain name in bad faith. Included in the non-exhaustive list of circumstances evidencing bad faith registration and use are:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Complainant says that in January 2009, having recently registered the Domain Name, the Respondent “hijacked” the website and redirected Internet users to an identical website at the Domain Name. The Respondent says she was left with no choice following the Complainant’s “hijack” of the domain name <skirtingboards.com> but to register the Domain Name comprising the form of words used on the website at “www.skirtingboards.com”. It is common ground that the Respondent redirected traffic from “www.skirtingboards.com” to “www.skirtingboardsdirect.com”.

As stated above, it seems to the Panel that it was the Complainant trying to formalise the arrangements between the parties in late 2008/early 2009, which triggered the action of the Respondent who was not, at the time of redirection, prevented from doing anything in relation to the website. There seems to have been no discussion about the redirection between the Parties. It was a step taken, it is said by the Respondent, as a defensive measure. But it was a step taken without regard to the Complainant’s interests. An integral part of the redirection was of course the Domain Name and given the circumstances, the Panel finds that the Domain Name was registered by the Respondent to attract, for commercial gain, Internet users to the web site which the Respondent now controlled. Inevitably, there will be a likelihood of confusion with the Complainant’s mark (as to the source, sponsorship, affiliation, or endorsement of the web site) and, as such, there appears to be evidence of bad faith registration and use for the purposes of the Policy. Moreover, it seems that the primary purpose of the registration was to effect the redirection, a step that inevitably would cause disruption to the business of the Complainant. For this reason too, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

7. Decision

For the foregoing reasons, (the Panel being of the view that the delay of the Complainant should not be treated as a bar on obtaining a remedy in the circumstances of this case, particularly as the Respondent was well aware of the dispute following registration of the Domain Name), in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <skirtingboardsdirect.com> be transferred to the Complainant. Accordingly, the Panel dismisses the Respondent’s claim of Reverse Domain Name Hijacking.

Jon Lang
Sole Panelist
Dated: July 10, 2012