WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BetterBathrooms (UK) Limited v. David Johnson, PWDS / Better Bathrooms (Merseyside) Limited

Case No. D2017-1209

1. The Parties

The Complainant is BetterBathrooms (UK) Limited of Wigan, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Brabners LLP, United Kingdom.

The Respondent is David Johnson, PWDS / Better Bathrooms (Merseyside) Limited of Liverpool, United Kingdom, represented by David Watson, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <betterbathroomsltd.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. On July 12, 2017, the Respondent requested an automatic extension to file a Response, in accordance with the Rules, paragraph 5(b). On the same date, the Center notified the parties that the due date for Response was extended to August 4, 2017. The Response was filed with the Center on August 4, 2017.

The Center appointed Steven A. Maier as the sole panelist in this matter on August 15, 2017. 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.

While the relevant WhoIs record lists the registrant of the disputed domain name as David Johnson, PWDS, the Complainant has named the Respondent as Better Bathrooms (Merseyside) Limited and the Respondent has not disputed that that party is the appropriate Respondent in this proceeding, having named Better Bathrooms (Merseyside) Limited as Respondent in its Response. The Panel therefore determines that the Respondent is Better Bathrooms (Merseyside) Limited.

4. Factual Background

The Complainant is a company incorporated in England and Wales on December 5, 2003. It is primarily a retailer of bathroom products.

The Complainant is the owner of various registrations for trademarks comprising or including BETTERBATHROOMS, including the following:

- United Kingdom trademark number 2564105 for BETTERBATHROOMS registered on February 11, 2011 in Class 35 with a filing date of November 11, 2010;

- United Kingdom trademark number 2650558 for BETTERBATHROOMS.COM registered on December 20, 2013 in numerous classes with a filing date of January 30, 2013;

- Various United Kingdom and European Union trademarks for figurative marks including BETTER BATHROOMS registered between 2013 and 2016.

The Respondent is a company incorporated in England and Wales on February 23, 2009. It is primarily a provider of bathroom installation services.

The Respondent registered the disputed domain name on November 13, 2009; it resolves to a website which offers bathroom installation services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is one of the UK’s leading bathroom retailers and that it also offers design and installation services. It states that it has used the BETTERBATHROOMS brand and mark since 2003, initially online at “www.betterbathrooms.com” and through physical stores since 2005. It states that it operates 11 large showrooms in the UK, employs 400 people nationwide and has “sizeable” turnover, although it does not provide figures. The Complainant refers to various industry awards and accolades and exhibits evidence of press coverage which mention its above website going back to 2006.

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant refers to its registered trademark BETTERBATHROOMS and claims also to have obtained unregistered rights in that mark. The Complainant submits that the disputed domain name is identical to its trademark save for the inclusion of the additional term “ltd” which is non-distinctive and does not distinguish the disputed domain name from the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it is not affiliated with the Respondent and did not license or permit the Respondent to register the disputed domain name, incorporating its BETTERBATHROOMS trademark. It also contends that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Complainant states that, soon after registration, “the disputed domain name resolved to an active Internet site advertising various bathroom design and installation services”, but denies that this amounts to bona fide use of the disputed domain name. The Complainant submits that any domain name that includes the term “betterbathrooms” is bound to mislead consumers, that the Complainant cannot envisage any third party having rights in the disputed domain name without the Complainant’s consent, and that there cannot be bona fide use of a domain name which “intentionally trades on the goodwill of another”.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends in particular that the Respondent registered the disputed domain name in November 2009 incorporating a mark which was identical to the Complainant’s existing BETTERBATHROOMS mark. The Complainant states that the Respondent is not known as “Better Bathrooms Ltd” and that its adoption of the disputed domain name is “maliciously designed” to cause confusion. The Complainant submits in particular that the Respondent is using the disputed domain name to divert Internet traffic away from the Complainant’s website to an “unauthorised, unlawful and inferior” website which offers goods and services that compete with those of the Complainant. The Complainant accuses the Respondent of both trademark infringement and passing off.

The Complainant contends for the purposes of the Policy that the Respondent registered the disputed domain name primarily as a blocking registration against a name in which the Complainant has rights, for the purpose of disrupting the Complainant’s business, and/or misleadingly to attract Internet users to its website for commercial gain.

The Complainant exhibits correspondence between the parties from January 2016 and states that the Respondent has continued to use the disputed domain name even after it became aware of the Complainant’s objection.

The Complainant seeks the transfer of the disputed domain name.

B. Respondent

The Respondent submits that it and the Complainant are in different businesses because the Complainant is a retailer and the Respondent is an installer. The Respondent states that the parties are not direct competitors and that the Complainant as a larger and more prominent entity is engaging in “corporate bullying”.

The Respondent states it has itself traded under the name “Better Bathrooms” since 2003 and had established significant goodwill in that name prior to its registration of the disputed domain name. The Respondent exhibits a promotional letter to prospective customers under the heading “Better Bathrooms” with the subject-line “Bathroom Installation” together with information described as “metadata” which appears to show that the document was created on November 2, 2003. The Respondent exhibits a further promotional letter dated May 31, 2011 headed “WWW.BetterBathroomsLtd.com” and “Better Bathrooms (Merseyside) Limited”.

The Respondent states that it registered the disputed domain name in 2009 in order to leverage its own independent goodwill in the name “Better Bathrooms” and to provide a platform to promote its services. The Respondent denies having adversely affected the Complainant or its services and repeats that it is engaged in a different field of activity from the Complainant. It states that it would have no wish to be associated with the Complainant in any event. The Respondent states that it has an established reputation as a trusted installer and exhibits an accreditation from the Guild of Master Craftsmen dated from 2008. It also exhibits several unaudited financial statements from 2007, 2008 and 2009 and evidence that it has work scheduled for several months in advance. The Respondent denies having infringed the Complainant’s trademark and states that the Panel has no jurisdiction to make such a finding in any event.

The Respondent specifically denies having registered the disputed domain name primarily as a blocking registration, in order to disrupt the Complainant’s business or in order misleadingly to divert the Complainant’s customers to its website. It reiterates that it registered and has used the disputed domain name in connection with its own legitimate rights and interests and that there is no basis for the Complainant’s claim. The Respondent urges a finding that this administrative proceeding was brought in bad faith on the basis that the Complainant has misleadingly portrayed the parties as competitors and has made selective disclosures of correspondence.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the mark BETTERBATHROOMS. The disputed domain name comprises the term “betterbathrooms” in its entirety together with the additional term “ltd”, designating a limited company. The Panel finds that this additional term is not effective to distinguish the disputed domain name from the trademark BETTERBATHROOMS and concludes therefore that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Respondent’s evidence that it (or its predecessor) has traded as a bathroom installer under the name “Better Bathrooms” since 2003. The Panel also notes that, while the Respondent was incorporated in February 2009 and registered the disputed domain name later that year, it does not appear to have received any objection from the Complainant until some seven years later, in 2016. On the Complainant’s own submissions, the Respondent has used the disputed domain name consistently in connection with the Respondent’s business since soon after the date of registration of the name.

In the view of the Panel, on the evidence available, the Respondent registered and has used the disputed domain name for the purposes of its own legitimate business and not with any intention of taking unfair advantage of the Complainant’s goodwill. In particular, on the evidence before it, the Panel rejects the Complainant’s arguments that the disputed domain name is necessarily misleading and that no other party could legitimately have registered a domain name which includes the term “betterbathrooms” subsequent to the Complainant having started to use that term. The name and mark BETTERBATHROOMS lacks inherent distinctiveness and there is no basis in the record upon which to infer that the Respondent registered the disputed domain name with the Complainant’s trademark in mind and in order to target the goodwill in that trademark.

While the Complainant alleges trademark infringement and passing off on the part of the Respondent, it has obtained no finding of any court to that effect and any such contentions are beyond the scope of the Policy, which must be applied exclusively upon its own terms.

The Complainant has therefore failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

While the Panel’s finding above is sufficient to dispose of this proceeding, the Panel also rejects the Complainant’s contentions that the disputed domain name has been registered and is being used in bad faith. On the available evidence, the Respondent registered and has used the disputed domain name for the purposes of its bona fide bathroom installation business which has traded under the name “Better Bathrooms” since 2003. The Panel thereby cannot accept the Complainant’s contention that the addition of the term “ltd” to the disputed domain name was “maliciously designed” to refer to the Complainant: both parties’ corporate names include the terms “Better Bathrooms” and “Limited” but with different terms in brackets in between those terms.

The Panel concludes in the circumstances that there is no evidence upon which to find or infer that the Respondent registered the disputed domain name in order to disrupt the Complainant’s business, in order misleadingly to divert the Complainant’s customers to the Respondent’s website, or otherwise in bad faith.

7. Reverse Domain Name Hijacking

While the Panel is of the view that this administrative proceeding was misconceived in terms of the Policy (and merely notes the Complainant’s allegations of trademark infringement and passing off), it declines to find for the purposes of paragraph 15(e) of the Rules that the Complaint was brought in bad faith.

8. Decision

For the foregoing reasons, the Complaint is denied.

Steven A. Maier
Sole Panelist
Date: August 22, 2017