WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

B & Q plc v.PPA Media Services, Ryan G Foo / Fundacion Private WHOIS/Domain Administrator

Case No. D2013-1012

1. The Parties

The Complainant is B & Q plc of Eastleigh, Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Sipara, United Kingdom.

The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile / Fundacion Private WHOIS/Domain Administrator of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <bandqdiy.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2013. On June 7 and 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 19, 2013.

The Center verified that the Complaint together with the amended 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 June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2013.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on July 23, 2013. 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.

The language of the proceeding is English.

4. Factual Background

According to the relevant Whois information, the disputed domain name was registered on July 19, 2004 in the name of Fundacion Private Whois/Domain Administrator, who appears to be a provider of proxy and privacy domain name registration services, based in Panama. Upon the Center’s request, the Registrar disclosed that the actual Registrant for the disputed domain name is PPA Media Services, Ryan G Foo of Santiago, Chile.

The Complainant is the owner of the trademark B & Q, which is registered in many countries around the world, including in Chile, where the actual Registrant of the disputed domain name is located, for different classes. As far as it appears from Annex 3 to the Complaint, at least some of these trademarks predate the date of registration of the disputed domain name.

The Complainant is also the registrant of, and operates, the following domain names: <bandq.com> and <diy.com> (both registered since 1997);<bq.co.uk> (registered in 2011); and <bandq.co.uk> (registered in 2006, following a domain name dispute decision for “.uk” domain names (see DRS 04478 for <bandq.co.uk>)).

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are the following:

- the Complainant is part of the Kingfisher group, Europe’s leading home improvement retailer, and one of the largest retailer in the world serving 3 million customers per week. The Complainant carries a wide range of goods relating to home improvement including fitted kitchen and bathroom supply and installation, tiles, and other DIY ("do it yourself") materials;

- the Complainant has used the B & Q mark since as early as 1969 and has expanded from one store to over 350 stores in the United Kingdom and Ireland, with more than 30,000 employees;

- the Complainant is the proprietor of numerous registered trademarks for B & Q in the United Kingdom and therefore enforceable under English law. By way of example, B & Q is registered in the United Kingdom in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 26, 27, 28, 31 and 32 under number 1327953, and in classes 35 and 37 under number 2322887;

- the Complainant specialises in the sale and production of a wide variety of goods including do-it-yourself products, building materials, home improvement, gardening supplies, as well as offering fitted kitchen installation services to its customers. The B & Q brand has grown quickly from its formation and is now by some distance the largest DIY retailer in the United Kingdom. The Complainant reports that according to a YouGov survey conducted in 2010, 59% of participants said they had bought DIY products from the Complainant in the previous 12 months;

- the Complainant’s turnover for the financial year ending January 2012 was GBP3.8 billion, and has been consistently within the range of GBP 3.8 billion - GBP4.1 billion for the past ten years. The Complainant’s combined advertising spend in 2010-2011 was approximately GBP160 million up from GBP90 million in 2010, and it has consistently invested tens of millions a year on advertising and promoting its business. In 2010 the Complainant sponsored the Birmingham Garden Show. In 2012, marketing, advertising and sponsorship achievements included:

- Joining forces with The Scout Association to improve their DIY skills and sponsoring Scout Community Week

- Supporting UK Youth and BBC Children in Need as B&Q’s nominated charities - Winning the Queen’s Award for Enterprise for Sustainable Development 2012 - Winner of the Retail Week Award for responsible retailer 2012 - Winner of a Gallup Great Workplace Award in 2012;

- since 2009 the Complainant has spent GBP5 million per year in sponsoring Channel 4's property shows including Property Ladder, Grand Designs and Location, Location, Location shown on More4 and Channel 4. The Complainant has its own celebrity ambassadors Kirstie Allsop, George Clarke and Alan Titchmarsh promoting its stores and products through television advertisements, online question and answer sessions and Youtube videos;

- the Complainant has used its B & Q mark extensively on the Internet, in newspapers, on television as well as other forms of media. The principal domain names used by the Complainant are <bq.co.uk>, <bandq.com>, <bandq.co.uk> and <diy.com>. According to “www.sitetrail.com”, the Complainant’s “www.diy.com” website has approximately 1.4 million unique visitors per year, and over 103 million page impressions per year. In the Complainant’s view, a large percentage of those consumers are likely to have searched for “B & Q” initially on an online search engine or through direct navigation by guessing the domain name. The Complainant also has a strong social media presence through its Twitter account with 18,000 followers (see https://twitter.com/BandQ), Youtube with 3,000 subscribers and 2.25 million video views (see http://www.youtube.com/user/bandq) and Facebook with 60,000 “likes” (see https://www.facebook.com/bandq?v=wall&rf=115466378466741);

- following all the aforementioned investments the B&Q brand has acquired very substantial reputation and goodwill;

Further details concerning the Complainant’s business, marketing spend, advertising, its reputation and use of the B & Q mark over many years can be found at Annex 4 to the Complaint, together with examples of the Complainant's use of the trade mark B & Q.

The Complainant was found to have rights in the trademark B & Q, as translated into the domain name <wwwbandq.com> in B & Q plc v Milan Kovac, WIPO Case No. D2011-1420.

In DRS 04478 for the domain name <bandq.co.uk>, it was found that the Complainant has rights for the purpose of the DRS Policy in the term “bandq” “specifically in relation to domain names and Internet services, and because of its use of domain name bandq.com, bandq.biz, bandq.info, bandq.net, bandq.org, bandq.plc.uk, bandq.com.sg, bandq.com.tw, and bandq.com.vn and its previous registration of the name bandq.co.uk” (the domain name <bandq.co.uk> is now registered to and used by the Complainant).

The Complainant states in its Complaint that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights nor legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith by Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark B & Q.

As a matter of fact, the disputed domain name <bandqdiy.com> consists of the Complainant’s mark B & Q, where the ampersand “&” has been replaced by its equivalent “and”, followed by the descriprive abbreviation “diy”, which stands for “do-it-yourself”, and reflects the Complainant’s activity, that is the sale of a wide range of goods relating to home improvement including fitted kitchen and bathroom supply and installation, tiles, and other DIY ("do it yourself") materials. Moreover, for the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.

It is well established that confusing similarity is increased when, like in the instant case, a domain name consists of the complainant’s trademark followed by a word describing the complainant's business.

Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to demonstrate rights or legitimate interests in the disputed domain name.

Under Paragraph 4(c) of the Policy, a respondent has a right or legitimate interest in a disputed domain name where:

(i) Before any notice to the respondent of the dispute, the respondent has made use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the case at issue, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, it does not appear:

- that before any notice to the Respondent of the dispute, the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, as it appears from Annex 5 to the Complaint, the home page associated with the disputed domain name contains links to competitors of the Complainant, including providers of tiling, bathroom, and construction services. The use of the disputed domain name to access a home page that contains several links to the Complainant’s competitors, most probably pay-per-click links, does not provide a legitimate interest in that domain name under the Policy (see among others, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267);

- that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The presence of links on the websites for the disputed domain name suggests that the Respondent has been using the disputed domain names for commercial gain, with the intent of misleadingly diverting consumers to its and its advertisers' websites.

- that the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name. As a matter of fact, at first, the Complainant was only aware of the fact that the disputed domain name was registered in the name of Fundacion Private Whois/Domain Administrator, a provider of proxy and privacy domain name registration services. It is only after having filed the Complaint, that the Complainant became aware that the true identity of the Registrant was PPA Media Services, Ryan G Foo. Neither the proxy holder, nor the actual Registrant appear to be commonly known by the disputed domain name.

In the light of the foregoing, and absent any Respondent’s contrary allegation, the Panel is satisfied that also the second requirement under paragraph 4(c) of the Policy is met.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii), to succeed in a dispute procedure, the Complainant must prove that the disputed domain was registered and has being used in bad faith.

According to Paragraphs 4(b)(i)-(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s web site or location or of a product or service on the respondent’s web site or location.

The circumstances are not exclusive, and bad faith may be found alternatively.

Registration in bad faith.

The Complainant has provided evidence of the knowledge and reputation that the Complainant’s trademark has acquired throughout the years, and in particular since its first use as early as 1969. The Complainant has also proved that part of its activity is performed through the Internet and in particular through several websites accessible worldwide. The Respondent was therefore in all likelihood aware of the Complainant’s trademark when it first registered, using a proxy holder, the disputed domain name. This is even more so if one considers that the disputed domain name consists of the Complainant’s trademark, which is a fanciful term, to which an abbreviation designating the Complainant’s field of activity has been added, namely “diy” (do-it-yourself).

Moreover, it is worth noting that the Respondent disguised its true identity behind a privacy shield until the Complainant was filed, and that it provided false contact details at the time of the registration of the <bandqdiy.com> disputed domain name. Both the e-mail and postal addresses proved wrong. Providing false contact details at the time of the registration of a domain name is a further evidence of registration in bad faith (see Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 where “false and misleading” contact information led to a finding of bad faith in registration and use; Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849; Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates,WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce a.k.a. Telmex Management Services, Inc.,WIPO Case No. D2002-0155; and, Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362.

The Panel is therefore satisfied that the first requirement under paragraph 4(a)(iii) of the Policy (registration in bad faith) is met.

Use in bad faith

By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. The inclusion of pay-per-click advertisements for home improvement products and services on the website associated with the disputed domain name creates a likelihood of confusion with the Complainant's activities.

It is highly likely that the disputed domain name generates revenue from click-through referrals. Whether this revenue accrues directly to the Respondent or to the Registrar, or to both is immaterial (see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912), as it is highly likely to have been registered “in the hope and expectation” of attracting traffic from “Internet users searching for information about the business activities of the trademark owner” (see Owens Corning v. NA, WIPO Case D2007-1143).

Finally, the Panel notes that while the use of a proxy or privacy registration service is not in itself an indication of bad faith, the manner in which it has been used can constitute a factor indicating bad faith [See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.9]. In this case, the Complainant has twice applied to Fundacion Private WHOIS to reveal the identity of the underlying Registrant, but no response has ever been received. In this way, in this Panel’s view, there has been concealment of the true party in interest (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

The Panel is therefore satisfied that also the second requirement under Paragraph 4(a)(iii) of the Policy (use in bad faith) is met.

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 disputed domain name <bandqdiy.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: August 4, 2013