WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Screwfix Direct Limited v. Brian Perry

Case No. DAU2010-0019

1. The Parties

The Complainant is Screwfix Direct Limited of Yeovil Somerset, the United Kingdom of Great Britain and Northern Ireland, represented by Davies Collison Cave Law Pty Ltd Australia.

The Respondent is Brian Perry of New South Wales, Australia, represented by Gibsons Solicitors Pty Ltd Australia.

2. The Domain Name and Registrar

The disputed domain name <screwfixdirect.com.au> is registered with Domain Directors Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to Domain Directors Pty Ltd a request for registrar verification in connection with the disputed domain name. On November 1, 2010, Domain Directors Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 27, 2010 and November 8, 2010, the Center received the further submissions from the Complainant respectively. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 November 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2010. The Response was filed with the Center on November 26, 2010.

The Center appointed John Swinson as the sole panelist in this matter on December 1, 2010. 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 United Kingdom corporation involved in the promotion and sale of a wide range of trade tools, hardware products and accessories and appliances. The Complainant owns a number of trademarks, including United Kingdom Trademark Registration No. 2068635 for the word mark SCREWFIX DIRECT (filed April 12, 1996).

The Respondent is an individual based in New South Wales, Australia. As well as offering screws and fixings for sale via the Internet, he also operates under the business name “Dynamic Gift” in respect of “wholesale gift supplies” and is in partnership with others under the business name “SXE” for “retail sexual leisure products”.

The disputed domain name was registered on October 16, 2008. The disputed domain name previously resolved to a website that sold screws and fittings. After correspondence from the Complainant, the site has been taken down and the disputed domain name now resolves to a blank website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The Complainant is a United Kingdom corporation involved in the promotion and sale of a wide range of trade tools, hardware products and accessories and appliances. It is the largest business of its kind in the United Kingdom with an annual turn-over of more than £475 million. The Complainant operates its business through 149 branches and online via the websites “www.screwfixdirect.com” and “www.screwfixdirect.co.uk”. The Complainant’s websites receive, on average, approximately 600,000 hits per week, including approximately 850 for users based in Australia.

The Complainant first became aware of the Respondent’s website in mid August 2010. At this time, the Complainant’s legal representative sent a letter of demand to the Respondent, demanding transfer of the disputed domain name to the Complainant. After this letter, various other conversations took place, where the Respondent stated the following (among other things):

- he was familiar with the Complainant and had previously contacted an area manager of the Complainant with the view to setting up a “Screwfix” business in Australia;

- he had not sold any products from his website and that he had directed all inquiries received to the Complainant (and told such people he was not affiliated with the Complainant);

- that as the Complainant did not intend to use its “Screwfix” mark in Australia and that it is a generic word, he intended to use the disputed domain name to sell screws and fixings online.

The Complainant spends approximately £25 million annually promoting its goods and services by reference to its name and trademarks. It has developed an extensive reputation (that extends to Australia) and common law rights in its name and its trademarks dating back to at least 1997 and has registration rights dating back to 1996. The Complainant owns 16 United Kingdom and 3 European Community trademarks, consisting of, or including the word “Screwfix”, including the following word marks:

- United Kingdom Trademark Registration No. 2068635 filed April 12, 1996 (SCREWFIX DIRECT);

- United Kingdom Trademark Registration No. E1729110, filed June 28, 2000 (SCREWFIX DIRECT);

- United Kingdom Trademark Registration No. E646133, filed September 23, 1997 (SCREWFIX); and

- United Kingdom Trademark Registration No. E2231876, filed May 22, 2001 (SCREWFIX).

The Complainant is also the owner of Australian Trademark Application No. 1381302, filed September 2, 2010 (SCREWFIX work mark).

The relevant part of the disputed domain name (ignoring the “.com” suffix) wholly incorporates the Complainant’s name and trademark SCREWFIX DIRECT. It is substantially identical to and confusingly similar to the Complainant’s trademarks. It is well established that the addition of generic or country code top level domain name (i.e. “.com” or “.com.au”) can be ignored (see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or permitted the Respondent to use its name or any of its trademarks, nor has it licensed, acquiesced or otherwise permitted the Respondent to apply for or use any domain name that incorporates its name or trademark. The Complainant does not have any other arrangement with the Respondent.

The Respondent has not, before any notice to him of the subject matter of the dispute, made bona fide use or demonstrable preparations to use the disputed domain name in connection with an offering of goods or services. It is clear that the Respondent was aware of the Complainant’s name, trademarks and reputation when he registered the disputed domain name, and that his registration and use of the disputed domain name was either for the purpose of trading off the reputation of the Complainant or to use as a negotiating ploy in an attempt to become an Australian distributor of the Complainant.

The content of the Respondent’s website and advertisements on third party websites is at odds with the Respondent’s assertions that he has “not traded in any screws, fixings or related products”. It is clear that the Respondent adopted and is using the disputed domain name in full knowledge of the Complainant’s rights and with the intent to profit. Such use is not a bona fide use within the meaning of the Policy.

It is also clear from the Respondent’s admissions and the former content of his website, that the Respondent is not 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 Complainant’s trademarks.

The Respondent has registered and is using the disputed domain name in bad faith.

The inconsistencies in the Respondent’s statements make it difficult to ascertain whether the Respondent’s motivation in registering the disputed domain name was to trade off the Complainant’s reputation and goodwill to attract consumers to his website for commercial gain, or to “sell” the disputed domain name to the Complainant or its competitor. The Respondent has admitted that he registered the disputed domain name for the purpose of putting a “proposal” to the Complainant and is an admission that he did so, primarily for the purpose of “selling, renting or otherwise transferring” the disputed domain name to the Complainant.

The Respondent has used the disputed domain name for the purpose of attracting Internet users to its website by creating confusion with the Complainant’s well-known mark. The aim of the Respondent’s website is to divert Internet traffic intended for the Complainant to the Respondent’s website which contains sponsored links. Such conduct is disruptive of the Complainant’s business and also amounts to bad faith registration and use of a domain name in accordance with the Policy (see Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

B. Respondent

The Respondent denies that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has provided no evidence to prove that it has common law rights in the names “Screwfix” or “Screwfix Direct” in Australia. Under the Policy a “name … in which the complainant has rights” refers to “the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority”. The Complainant has not provided any evidence to establish these rights, and while the Policy does not identify the time at which a complainant must have rights, it is implicit that the Complainant should have such rights when the Complaint is first filed (Lance John Picton v. KK Factory Seconds Online/Dean James Mackin, WIPO Case No. DAU2007-0005).

The Complainant has failed to provide any evidence to substantiate the claim that it receives approximately 850 hits each week, or that those hits resulted from direct marketing and promotional activities in Australia and were not the result of the Complainant’s website merely being accessible from anywhere in the world. The Complainant has failed to provide any evidence of advertising or promotional activities conducted in Australia such as to demonstrate a reputation at common law in Australia. The Complainant has also failed to provide any evidence of sales of its goods in Australia. The fact that some consumers visit the Complainant’s website does not establish that the Complainant has rights in the names “Screwfix” or “Screwfix Direct”.

The Complainant has failed to discharge its onus to demonstrate sufficient reputation in Australia to found common law rights, which would provide a basis for superior entitlement to the disputed domain name than the Respondent’s claim.

The Respondent has made bona fide demonstrable preparations to use the disputed domain name in connection with an offering of goods by entering into a contract to purchase a warehouse for storage of screws and fixtures on August 17, 2010 and by making enquiries with various screw suppliers for purchase of screws for the Respondent’s business at various times in 2009. Although the evidence is not extensive, the Respondent has clearly demonstrated that he made preparations to use the disputed domain name in relation to the sale of screws and fixtures prior to August 20, 2010 (Blurb Inc v. Rethink IT Pty Ltd, WIPO Case No. DAU2009-0008).

The Respondent’s intention has always been to fill the gap in the market via establishing an online retail business for screws and fixtures. The name “Screwfix Direct” was chosen by the Respondent because he believed that the name accurately summarised the core product offering of the business. The Respondent considers the name “Screwfix Direct” to be a generic term and the Complainant is therefore required to make a strong showing of the absence of the Respondent’s legitimate interest to succeed (Jupitermedia Corporation and Australia.Internet.com Pty Ltd v. Spotpress Pty Ltd trading as Internet Printing, WIPO Case No. DAU2003-0005).

The Respondent was aware of the Complainant’s business when the disputed domain name was registered; however this does not, by itself, show that the Respondent has no rights or legitimate interests in the disputed domain name (TrueLocal Inc, Geosign Technologies Inc and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003). There is no evidence that there was an attempt to trade off the Complainant’s reputation. As soon as the Respondent became aware of the allegations, the Respondent added a disclaimer to its website. Finally the Respondent denies that any sales have taken place under the disputed domain name.

The Complainant has failed to discharge its onus to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name. Alternatively the Respondent has discharged his burden and demonstrated that he does have rights or legitimate interests in the disputed domain name.

The Respondent denies that the disputed domain name has been registered or subsequently used in bad faith. The Respondent denies that the disputed domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant (or another person). Although no proposal was ever discussed at length between the parties, the Respondent’s intention was to be an exclusive distributor of the Complainant in Australia. There is no reason to infer that such an arrangement would necessitate the sale of the disputed domain name.

The Respondent has always intended to use the disputed domain name for the online sales of screws and fixtures in Australia. The Respondent approached the Complainant for a distributorship agreement within a couple of months of registering the disputed domain name. After the proposal was rejected, the Respondent’s plans to establish the business were put on hold and the Respondent considered other avenues in which to establish the business.

The Complainant has failed to discharge its onus to demonstrate that the Respondent has registered or has subsequently used the disputed domain name in bad faith.

6. Discussion and Findings

To succeed, a complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a name¹, trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name²; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

The onus of proving these elements is on the complainant.

A. Identical or Confusingly Similar

The Respondent contends that the Complainant has not provided evidence of common law rights in the name SCREWFIX DIRECT and has therefore failed to satisfy the first element under the Policy. However this contention ignores existing registered trademark rights provided by the Complainant. The Complainant provided evidence of its Australian Trademark Application after filing its initial Complaint (see also Lance John Picton v. KK Factory Seconds Online/Dean James Mackin, WIPO Case No. DAU2007-0005). In this case the panel did not conclusively determine whether such rights should be considered. Due to this Panel’s findings below, it is also unnecessary here to make a final determination on whether the Complainant’s Australian Trademark Application should be considered.

It is well established that the requirement under paragraph 4(a)(i) of the Policy is not limited to Australian trademarks (see 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin, WIPO Case No. DAU2010-0016, Mass Nutrition Inc and Todd Rosenfeld v. Mass Nutrition Pty Ltd now known as Tweed Holding Pty Ltd, Luke McNally, WIPO Case No. DAU2010-0002). In 1SaleADay, supra, the panel noted that “considerations such as the priorities in time of competing claims to a trademark or the ‘location’ of the goodwill attaching to a trademark do not fall for consideration under paragraph 4(a)(i) of the Policy”.

The Complainant is the owner of a number registered United Kingdom and Community trademarks for the word mark SCREWFIX DIRECT. These trademarks have been registered for many years. The Panel considers these trademark rights are sufficient for the purpose of the Policy (see Mass Nutrition supra). The disputed domain name reproduces the Complainant’s trademark in its entirety and contains no other distinguishing features. It is well established that the “.com.au” suffix can be ignored for this purpose.

The Panel therefore finds that the disputed domain name is clearly identical to a registered trademark in which the Complainant has rights.

Accordingly, the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name and it is then to the respondent to rebut this prima facie case.

From the evidence before the Panel, it does not appear that the Respondent has any trademark rights in the name “Screwfix Direct” or “Screwfix”. The Complainant has stated that it has not authorised the Respondent to use its SCREWFIX DIRECT trademarks or the disputed domain name and that it does not have a business relationship with the Respondent (this does not appear to be contested by the Respondent). The Panel understands that there are two possibly relevant Australian business name registrations one for “Screwfix” and another for “Screwfix Direct” that may belong to the Respondent. However, as the Respondent has not provided evidence of these rights, the Panel is unable to consider them.

The Complainant contends that the Respondent has not, before any notice to him of the subject matter of the dispute, made bona fide use or demonstrable preparations to use the disputed domain name in connection with an offering of goods or services.

The Respondent provided two examples to show his bona fide use of the disputed domain name (before any notice of the dispute). The Respondent provided examples of emails that are supposedly responses to enquiries the Respondent made in relation to the sale of screws and fixtures. The Panel notes that many of these emails appear to be introductions by manufacturers to the Respondent and do not appear to be the result of an enquiry made on his behalf. However, the Panel acknowledges that at least some of the emails show responses to enquiries made by the Respondent relating to screws and fixtures. The Respondent has also claimed that he has purchased a warehouse for the purpose of storage of the screws and fixtures. The Panel notes that the letter provided does show that a conveyance was to take place, however this does not show that the warehouse was to be used for the storage of the screws and fixtures. However, the Panel is prepared to give the Respondent the benefit of the doubt in relation to this evidence. The Panel also finds that the Respondent has used the website by offering screws and fittings for sale. Despite the Respondent’s contention that he has not sold any screws or fittings, the Panel finds that the Respondent still used the website to offer screws and fittings for sale (and that such offerings were not on behalf of the Complainant). The Panel also notes that the Complainant contends that the Respondent has provided sponsored links on its website (this contention was not disputed by the Respondent); this is also use of the disputed domain name. The Panel therefore finds that the Respondent has used or made demonstrable preparations to use the disputed domain name. However, the Respondent must show that such preparations and use were bona fide (TrueLocal Inc, Geosign Technologies Inc and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003).

The Complainant contends that the Respondent has adopted and is using the disputed domain name with full knowledge of the Complainant’s rights with the intent to profit and that use of the disputed domain name in this way is an attempt to derive benefit from the domain name and the Complainant’s trademarks and goodwill. The Complainant contends that such use is not bona fide use within the meaning of the Policy.

The Respondent has provided varying and inconsistent reasons as to his intention behind registering the disputed domain name, including:

- that he wanted to set up an online business for screws and fixtures (having seen a gap in the market) and that the name was specifically chosen it was a generic term that “accurately summarises the core product offering of the business”; and

- that he registered the disputed domain name after discussions with the Complainant (in relation to a distributorship agreement) as he wanted to “to show his commitment”.

There are also inconsistencies as to whether the disputed domain name was registered before or after discussions with the Complainant. From the evidence provided (including an email from the Respondent stating that the disputed domain name was purchased after discussions with the Complainant), the Panel believes that it is more likely the disputed domain name was registered after his purported discussions with the Complainant. However, regardless of the sequence of events, the Respondent has admitted to having knowledge of the Complainant before registration of the disputed domain name and has shown a clear intention to enter into a relationship with the Complainant.

The Panel acknowledges that in some instances knowledge of a complainant alone may not, on its own show that a respondent has no rights or legitimate interests (TrueLocal Inc, Geosign Technologies Inc and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003); however the Panel does not find this to be the case here. As determined above, the Respondent has registered the disputed domain name after his discussions with the Complainant (and with clear knowledge of the Complainant’s reputation and business). This leads to the conclusion that the disputed domain name was registered with the intention of deriving a benefit from the domain name and the Complainant’s trademarks and goodwill, without first obtaining the consent of the Complainant to do so (see 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin, WIPO Case No. DAU2010-0016).

Furthermore, the facts in this case are different from those in TrueLocal supra. Here the Respondent only provided slight evidence of use or demonstrable preparations to use the disputed domain name and has provided no external evidence to show how he came up with the disputed domain name on his own (compare TrueLocal, supra). Also in contrast to TrueLocal, supra, in this case the Complainant has strong trademark rights particularly due to longstanding trademark registrations and significant volume and value of sales under its trademarks. It is likely that, given the type of goods sold by the Complainant, Australian consumers would purchase them from time to time. Based on the evidence provided, the Panel finds that the Respondent registered the disputed domain name to take advantage of the Complainant’s, reputation, goodwill and rights in the name “Screwfix Direct”. Such use is not a bona fide use within the meaning of paragraph 4(c)(i) of the Policy.

Finally, the Panel notes that in cases such as TrueLocal, supra, the generic nature of the disputed domain name is relevant. In these instances, where a respondent uses a generic word to describe its business, without intending to take advantage of the complainant’s rights, then it has a legitimate interest (TrueLocal, supra). The Panel notes that the words “screw”, “fix” and “direct” are all generic words in isolation, but does not believe that the combination of the words “Screwfix Direct” is generic (despite assertions to the contrary from the Respondent). The Panel also considers that in this case, “fix” is an abbreviation for “fixture”. The Panel notes that the Respondent has not provided any external evidence to show the generic nature of the disputed domain name apart from a statement that “it summarised the cored product offering of the business”. If the Respondent really chose the disputed domain name due to its generic nature, it is unclear why the Respondent would have chosen the abbreviation for fixture and even more unclear why he would have chosen the exact combination of words as the Complainant. Even if the contrary view is taken (that the disputed domain name is generic), the Panel would still find that the Respondent registered the disputed domain name to take advantage of the Complainant’s rights in the name “Screwfix Direct” and therefore cannot rely on this exception.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which the Panel finds has not been rebutted by the Respondent.

Accordingly, the second element has been met.

C. Registered or Subsequently Used in Bad Faith

Under this element, the Complainant must show that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith.

The Complainant contends that the Respondent’s motivation in registering the disputed domain name was to trade off the Complainant’s reputation and goodwill to attract consumers to his website for commercial gain or to “sell” the disputed domain name to the Complainant or its competitor (or to use it for some other financial benefit for the Respondent).

As discussed above, the Respondent provided inconsistent explanations as to his intention in registering the dispute domain name. As determined above, based on all of the evidence, the Panel found that the Respondent registered the disputed domain name to take advantage of the Complainant’s reputation, goodwill and rights in the name “Screwfix Direct” (without first obtaining their consent). Such intention amounts to registration of the disputed domain name in bad faith (see 1SaleADay, supra).

The Panel notes the Complainant also argues that the Respondent registered the disputed domain name to sell it to the Complainant or a competitor. While the Panel notes that later offers of sale have been made, it does not find any evidence that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant or one of its competitors.

In determining whether the disputed domain name was used in bad faith, the Panel understands the Respondent’s website is now blank, but will consider the content that appeared on the website before it was taken down (see also Telcel, C.A. v. jerm and Jhonattan Ramirez, WIPO Case No. D2002-0309 and Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021 where it was found that a sufficiently proven one-time bad faith use is satisfactory).

The Complainant argues that the Respondent has used the disputed domain name for the purpose of attracting Internet users to its website (which also contains sponsored links) by creating confusion with the Complainant’s well known mark. The Panel finds that the Complainant is widely known, such that Internet users searching for the Complainant or its goods or services are likely to recognise the term in the disputed domain name as being associated with the Complainant (see also Vivo S.A. and Portelcom Participacoes S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925). The Respondent contends that he has not actually sold any screws. The Panel finds this is irrelevant as the Policy refers to an “attempt” to attract commercial gain (there is no requirement for actual commercial gain) (see also Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127). As set out above, the Panel also notes that the allegation that the Respondent has provided sponsored links on its website was not disputed by the Respondent. Revenue received by the Respondent from such links is enough to show a commercial gain. The Panel therefore finds that the Respondent has used the disputed domain name for the purpose of attracting Internet users, for commercial gain, to its website by creating confusion with the Complainant’s widely known marks as to the source, sponsorship or affiliation of that website (see paragraph 4(b)(iv) of the Policy).

In the Panel’s view, the Complainant has sufficiently established that the Respondent has registered and subsequently used the disputed domain name in bad faith.

Accordingly, the third element has been met.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <screwfixdirect.com.au> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 16, 2010

¹ For the purposes of this Policy, auDA has determined that a “name … in which the complainant has rights” refers to (a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or (b) the complainant’s personal name.

² For the purposes of this Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.