WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DSG Retail Limited v. Richard Donnell

Case No. D2017-2293

1. The Parties

The Complainant is DSG Retail Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Fieldfisher LLP, United Kingdom.

The Respondent is Richard Donnell of Norton, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <currys.biz> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2017. On November 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2017.

The Center appointed David Taylor as the sole panelist in this matter on December 27, 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.

4. Factual Background

The Complainant is a retailer of consumer electronic products operating in the United Kingdom.

The Complainant has supplied evidence that it is the registered owner of several trade marks in CURRYS in connection with the advertisement and sale of electronic products such as computers, computer accessories, televisions and mobile phones, for instance:

- European Union Trade Mark Registration (word) No. 1480409, registered on March 27, 2001 (classes 7, 9 and 11);

- European Union Trade Mark Registration (figurative) No. 13008222, registered on November 11, 2014 (class 35); and

- United Kingdom Trade Mark Registration (word) No. 2247269 CURRYS, registered on June 1, 2001 (class 35).

The Complainant’s main website is available at “www.currys.co.uk” (the domain name <currys.co.uk> was registered on November 13, 1996).

The Respondent is an individual based in the United Kingdom. No further details about the Respondent are known.

The Domain Name was registered by the Respondent on October 26, 2017. It was resolving to a clone website of “www.ebuyer.com”, an online retailer of consumer electronic products also based in the United Kingdom that is in direct competition with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or highly similar to the Complainant’s trade marks, as it contains the Complainant’s CURRYS trade mark in its entirety.

The Complainant further states that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant has put forward evidence showing that the Respondent was using the Domain Name for the same purpose as the Complainant, namely the advertisement and sale of consumer electronic products such as computers, computer accessories, televisions and mobile phones. The Complainant argues that such use of the Domain Name is intended to divert customers away from the Complainant’s website by exploiting the Complainant’s trade mark rights and goodwill, which are associated with the Complainant in the relevant market. The Complainant further highlights that the website associated with the Domain Name is a direct clone of the website “www.ebuyer.com”, an online retailer of consumer electronic products based in England that is in direct competition with the Complainant.

Finally, the Complainant asserts that the Domain Name was registered and used in bad faith. In this regard, the Complainant points out that the Respondent’s business is, in all material respects, identical to that of the Complainant and thus the Respondent is a competitor of the Complainant. Therefore, the Complainant argues that the use of the Domain Name is primarily intended to disrupt the Complainant’s business.

The Complainant also argues that the Respondent’s use of the Domain Name is intended to capitalize on the distinctiveness and goodwill of the Complainant’s registered trade marks, in connection with retailing of consumer electronic products, by creating an association or commercial link between the Complainant and the Respondent in the mind of the relevant consumer. The Complainant argues that the sole purpose of this is to redirect customers away from the Complainant to the Respondent’s website, which is a direct clone of the website of one of the Complainant’s competitors. The Complainant further contends that by cloning the website “www.ebuyer.com”, the Respondent has sought to give his website the appearance of legitimacy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has supplied evidence that it has registered trade mark rights in CURRYS in connection with the advertisement and sale of electronic products. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s CURRYS trade mark in its entirety, without adornment. Prior panels deciding under the Policy have held that when a domain name wholly incorporates a complainant’s trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The “.biz” Top-Level Domain is generally disregarded under the identity or confusing similarity test as it is a functional element. See paragraph 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is identical to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out the following non‑exhaustive list of circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.

The Respondent’s use of the Domain Name, which consists of an exact match of the Complainant’s trade mark, to resolve to a clone website of one of the Complainant’s competitors cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is seeking to take advantage of the Complainant’s rights by diverting customers searching for the Complainant to the Respondent’s own website. Furthermore, there is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”) and GA Modefine S.A. andGiorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

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

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

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

(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 website or location or of a product or service on your web site or location.”

The Complainant has trade mark rights in the term CURRYS in connection with the advertisement and sale of electronic products. The Complainant’s trade mark rights also significantly predate the registration date of the Domain Name. Given the nature of the Domain Name, which consists of an exact match of the Complainant’s trade mark, in conjunction with the subsequent use of the Domain Name to resolve to a clone website of one of the Complainant’s competitors and the fact that both Parties are based in the United Kingdom, the Panel is convinced that, on balance, the Respondent had the Complainant in mind at the time of registration of the Domain Name. Therefore the Panel accepts the Complainant’s contention that the Respondent registered the Domain Name in bad faith, primarily for the purpose of disrupting the business of the Complainant, in accordance with paragraph 4(b)(iii) of the Policy.

The Panel further finds that the Respondent was using the Domain Name, which identically reproduces the Complainant’s trade mark, to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.

Finally, the Panel draws an adverse inference from the Respondent’s failure to take part in the present proceedings.

The Panel finds that the Domain Name was registered and used in bad faith.

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

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 Domain Name <currys.biz> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: January 10, 2018