WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NT International plc v. Kamaran Malik

Case No. D2020-0123

1. The Parties

The Complainant is NT International plc, United Kingdom, represented by Barker Brettell LLP, United Kingdom.

The Respondent is Kamaran Malik, United Kingdom, self-represented.

2. The Domain Name and Registrar

The disputed domain name <marksmantools.com> is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2020, 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 January 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received informal email communications from the Respondent on January 22, 2020, and January 23, 2020. The Complainant filed an amendment to the Complaint on January 27, 2020.

The Center verified that the Complaint together with the amendment to 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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent submitted three informal email communications to the Center on January 28, 2020; two additional informal email communications on January 31, 2020; and a further informal email communication on February 11, 2020. The Respondent did not submit a formal Response. On February 19, 2020, the Center informed the Parties that it would proceed to Panel Appointment.

The Center appointed Jane Seager as the sole panelist in this matter on February 28, 2020. 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 operates a business of importation, exportation and distribution throughout the United Kingdom of various products including tools, kitchenware, electronics, garden-ware, plastic-ware, stationary and automobile accessories.

For use in connection with the Complainant’s tool-sales business, the Complainant has registered the following trademarks:

- United Kingdom Trademark Registration No. UK00002231666, MARKSMAN, registered on November 10, 2000; and

- United Kingdom Trademark Registration No. UK00002627266, MARKSMAN QUALITY TOOLS (and design), registered on July 5, 2013.

The Complainant is also the registrant of the domain name <marksman-tools.com>, which it registered on April 23, 2008, and uses in connection with a website displaying the Complainant’s contact information. The Complainant’s main commercial website is available at “www.ntinternational.com”.

According to the publicly-available WhoIs record for the disputed domain name, and as confirmed by the Registrar, the disputed domain name was registered in the name of the Respondent on May 22, 2017.

The disputed domain name resolves to a parking page displaying Pay-Per-Click (“PPC”) links to various products, including tools, marksmanship classes, car hire, real estate, and telecommunications services (the “Respondent’s website”).

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on the trademarks MARKSMAN and MARKSMAN QUALITY TOOLS. The Complainant contends that the disputed domain name incorporates the Complainant’s MARKSMAN trademark as a whole, and makes use of the dominant and distinctive elements of the MARKSMAN QUALITY TOOLS trademark. The Complainant submits that the disputed domain name is confusingly similar to its trademarks.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further submits that the Respondent is not commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name was registered for the purpose of selling the disputed domain name to the Complainant. The Complainant further contends that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Complainant notes that the disputed domain name is used in connection with a page displaying PPC links, and that the use of PPC links is not legitimate where such services seek to unfairly capitalize upon or otherwise take advantage of a similarity with a third-party trademark. The Complainant submits that the disputed domain name has been used to take illegitimate advantage of confusion with the Complainant’s trademarks. The Complainant observes that the PPC links, which overwhelmingly relate to tools, may have been selected by the disputed domain name’s service provider; however, prior UDRP panels have determined that registrants are nevertheless deemed to be responsible for such use of a domain name.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent submitted several informal communications. The Respondent alleges that the Complainant contacted the Respondent via text message on January 24, 2020, offering to purchase the disputed domain name for GBP 1,500. The Respondent denies having registered the disputed domain name in bad faith. The Respondent claims that the disputed domain name was in fact registered on July 7, 2005, by the Respondent’s father, and was used by him to sell hand tools until he stopped using the disputed domain name in 2011, and that it was transferred to the Respondent in 2017. The Respondent notes that the Complainant registered its domain name <marksman-tools.com> in 2008, and argues that it is filing the present Complaint because it has determined that the disputed domain name suits it better for its business. The Respondent asserts that it has paid for and has been using the disputed domain name in good faith since 2005.

6. Discussion and Findings

In order to prevail, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

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

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

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

Paragraph 10(b) of the Rules requires that the Panel ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

As a preliminary matter, the Panel notes that the total evidence in support of the Complainant’s case consists of a copy of the WhoIs record for the disputed domain name, the Registration Agreement applicable to the disputed domain name, and records of the Complainant’s trademarks from the United Kingdom Intellectual Property Office. The Complainant has not submitted any evidence of its own business activities or of the Respondent’s alleged use of the disputed domain name.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8 states:

“Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (‘www.archive.org’) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”

By submitting a Complaint lacking any evidence of the Complainant’s business activities, its reputation, or of the Respondent’s alleged use of the disputed domain name, the Complainant has based its case on conclusory allegations unsupported in evidence. By doing so, the Complainant has run the risk of falling short of making its case under the second and third elements of the Policy. See in this regard, WIPO Overview 3.0, section 3.1. In coming to its decision, the Panel has taken all informal communications from the Respondent into account, and has also undertaken limited research into factual matters of public record in order to verify the claims made by both Parties, in accordance with the powers granted to it under the Rules, as noted above.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the MARKSMAN and MARKSMAN QUALITY TOOLS (and design) trademarks, the registration details of which are provided in the factual-background section above.

The disputed domain name incorporates the Complainant’s MARKSMAN trademark in its entirety as its leading element, followed by the descriptive word “tools”. The Panel finds that such an addition does not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain name; see WIPO Overview 3.0, section 1.8. Similarly, the disputed domain name also comprises the textual elements of the Complainant’s MARKSMAN QUALITY TOOLS (and design) trademark, simply omitting the word “quality”. The Panel finds that the dominant elements of the Complainant’s MARKSMAN QUALITY TOOLS trademark are present in the disputed domain name so as to render the disputed domain name confusingly similar to the Complainant’s trademark; see WIPO Overview 3.0, section 1.7.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant alleges that the PPC links on the Respondent’s website seek to capitalize on the similarity between the disputed domain name and the Complainant’s trademarks.

The Respondent on the other hand asserts rights or legitimate interests in the disputed domain name on account of the disputed domain name being used in the past by his father to sell hand tools. In support of this, the Respondent has provided historic WhoIs records dating back to 2007 that would tend to support his claims that the disputed domain name was registered by his father in 2005. These WhoIs records are accompanied by a limited set of historic screen captures showing that in 2007, the disputed domain name resolved to a registrar parking page, and that in 2017, the disputed domain name resolved to a parking page displaying PPC links, similar to the web page to which the disputed domain name resolves at the time of this decision.

The Panel has reviewed the web page to which the disputed domain name presently resolves, the historic screen captures submitted by the Respondent, and has conducted its own search for evidence of use of the disputed domain name at the Internet Archive.

Notwithstanding the Registrar’s confirmation that the disputed domain name was registered in the name of the Respondent on May 22, 2017, the Respondent has provided evidence indicating that the disputed domain name was registered in 2005 by an individual related to the Respondent. Even if the Panel were to find that the Respondent had a beneficial interest in the disputed domain name extending back to 2005, there is no evidence to show that the disputed domain name has been used in connection with a tools-sales business, as claimed by the Respondent. Rather, it appears that the disputed domain name has simply been parked, more recently with PPC links. As noted above, many of the links displayed on the Respondent’s website relate to tools, i.e., those products offered under the Complainant’s trademarks, leading to the inference that the disputed domain name was registered in order to capitalize on the goodwill associated with the Complainant’s trademarks. On the basis of the available evidence, the Panel finds that the Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy so as to confer any rights or legitimate interests in the disputed domain name onto the Respondent.

The Panel further finds that the Respondent is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s MARKSMAN trademark was registered on November 10, 2000, some five years prior to the first registration of the disputed domain name. The Panel has reviewed the Complainant’s website at “www.ntinternational.com”, which includes a blog post from 1995 detailing the launch of its Marksman Tools brand. The Panel further notes that both the Complainant and the Respondent are based in the same city in the United Kingdom, and that the term “tools” in the disputed domain name directly corresponds to the goods for which the Complainant’s MARKSMAN trademark was registered. The Respondent has at no point denied knowledge of the Complainant or its trademarks. From this, the Panel infers that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name, and registered it in order to take advantage of the goodwill associated with the Complainant’s trademark, in bad faith.

The available evidence indicates that the only use that the Respondent has made of the disputed domain name is to park it with PPC links. Many of the links on the Respondent’s website relate to tools, i.e., the goods offered under the Complainant’s MARKSMAN trademark. Further noting the high degree of similarity between the disputed domain name and the Complainant’s domain name <marksman-tools.com>, it is highly probable that Internet users seeking the Complainant online may find themselves at the Respondent’s website. The Respondent likely derives PPC revenue resulting from Internet-user confusion with the Complainant’s trademark. Accordingly, the Panel finds that by using the disputed domain name in such a manner, 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 the Respondent’s website and the goods and services advertised on the Respondent’s website, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

For completeness, the Panel notes that neither the Complainant’s claims that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, nor the Respondent’s claims that the Complainant attempted to purchase the disputed domain name for GBP 1,500 are supported in evidence, and have therefore not formed a basis for the Panel’s findings.

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 <marksmantools.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: March 13, 2020