The Complainant is The Solar Centre Ltd of St Albans, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, United Kingdom.
The Respondent is Festive Lights of Lancashire United Kingdom of Great Britain and Northern Ireland, represented by Appleyard Lees, United Kingdom.
The disputed domain name <solarpowercentre.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 19, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 19, 2012, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. The Response was filed with the Center on August 10, 2012. The Complainant filed a Supplemental Filing on August 11, 2012.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 24, 2012. 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides the following consensus view on the topic of Supplemental Filings:
“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
Having reviewed the Complainant’s Supplemental Filing, the Panel determined that this should be admitted on the basis that it sought to address new matters raised by the Response which could not reasonably have been in the Complainant’s contemplation when it filed the Complaint. The Panel resolved to allow the Respondent an opportunity to comment upon the said Supplemental Filing conforming to the said consensus view and therefore issued Procedural Order No. 1 on August 31, 2012 allowing the Respondent to submit, on its discretion, a response strictly relating to matters arising from the Complainant’s Supplemental Filing by September 7, 2012 and extending the due date for the Decision to September 21, 2012. The Respondent filed a Supplemental Filing on September 3, 2012.
The Complainant is a company incorporated in the United Kingdom on March 20, 2006. The Complainant carries on business as an online retailer of solar lighting products under the names “Solar Centre” and “The Solar Centre” having changed its name to “The Solar Centre Limited” on April 20, 2006. The Complainant is the owner of United Kingdom registered trade mark no. 2518314 for the device and word mark SOLARCENTRE filed on June 11, 2009 and registered on October 2, 2009 in respect of solar energy operating apparatus in class 9. The device element of the said trade mark is a circular design, one half of which is grey and the other half green, together with the word “solar” in a stylized form in the same grey colour as that used within the said design, together with the word “centre” in a slightly bolder typeface and in the same green colour as that used within the said design.
The Complainant’s website is to be found at the address “www.thesolarcentre.co.uk”. The relative domain name was registered on February 23, 2006. The Complainant also uses the domain name <solarcentre.co.uk>, also registered on February 23, 2006, to forward traffic to its said website. The Complainant uses its said device and word mark on its website.
According to statistics from Google Analytics, there were 16,683 visits to the Complainant’s said website during 2007, generating 65,797 page views in total. 14,096 of these visits were from unique visitors. During 2008, such visits increased to 137,465, generating 683,805 page views, 113,762 of which visitors were unique. The Google Analytics graph for 2008 shows approximately 60,000 of such visits had occurred by the month of June 2008. In 2011, the total visitors to the Complainant’s said website had risen to 308,840, generating almost 1.5 million page views, of which 242,433 visits were from unique visitors.
The Complainant’s said website and one of its products were featured in The Times newspaper on December 29, 2007 and the Complainant or one or more of its products also featured in a United Kingdom national television programme on television channel BBC One, entitled The One Show, on April 8, 2008. Since July 2008, the Complainant has continued to be the subject of national media recognition for its products on a frequent basis. Between March 2006 and March 2009 the Complainant generated £294,068 of turnover in total. By the Complainant’s financial year ended March 2011 the Complainant’s total turnover had risen to £615,293.
The Complainant’s products have been stocked by major online and offline stores including “www.firebox.com” (May 2008); Maplin Electronics (February 2009); QVC (2010); “www.amazon.co.uk” (2010) and John Lewis (2011). The Complainant has also supplied its products to public bodies such as councils, the Ministry of Defence and the Royal Horticultural Society. The Complainant has exhibited at various trade shows and exhibitions since June 2008.
The Respondent is a company incorporated in the United Kingdom engaged in the sale of indoor and outdoor festive lighting and is a competitor of the Complainant. The Respondent operates an online sales website at “www.festive-lights.com” together with the website associated with the disputed domain name, “www.solarpowercentre.com”.
On June 11, 2008 the Respondent registered the domain names <solarlights4fun.com> (currently parked on a registrar parking page) and <solarlights4fun.co.uk> (currently not in use). A third party lighting business, trading under the name “Lights4fun” since 2005, is one of the Parties’ competitors.
The Respondent registered the disputed domain name on June 23, 2008. The Respondent uses the disputed domain name to sell solar powered lighting in competition with the Complainant. As at May 1, 2009, the website associated with the disputed domain name included a logo or device consisting of the words “solarpowercentre” in lower case with “solar” and “centre” coloured in black and “power” coloured in green, and a semi-circular design, coloured in green, to the right of the name. The words “part of the Festival Lights Group” appeared in a smaller font underneath, coloured in light grey.
In about October 2008 the Respondent investigated the prospect of filing a patent for a solar panel with its patent attorneys. On or about October 31, 2008, the Respondent’s patent attorneys wrote to Mr. Higginson of the Respondent referring to a recent meeting and confirming that while some features of the Respondent’s concept might be patentable, it was unlikely that broad protection would be available.
Both the Complainant and the Respondent have used the same Chinese supplier for certain solar light products. The Respondent established the earlier relationship with the said supplier in about November 2007. In May 2009, the Complainant wrote to the said supplier by email referring to the Respondent and noting that the Respondent was selling the said supplier’s product range independently of the Complainant. In the said email, the Complainant referred to the fact that the Complainant had approached the Respondent by telephone initially and thereafter followed up with emails and samples “last year” [i.e. 2008].
In about December 2009, the Respondent contacted the said Chinese supplier about making an order. The said Chinese supplier invited the Respondent to deal with the Complainant. The Parties then engaged in email correspondence during which the Respondent declined to order from the Complainant and described the Complainant as “our main online competition”.
In April 2011 the Parties corresponded regarding the alleged presence of the Complainant’s copyright image on the Respondent’s principal website at “www.festive-lights.com”. The Respondent removed the image concerned but did not acknowledge any infringement of copyright or any other liability to the Complainant.
The Respondent removed the “www.solarpowercentre.com” website from the Internet on April 14, 2011 due to a hacking incident. The Respondent relaunched its said website in about May 2012 with a redesigned logo showing a sun/circle graphic to the left of the name “SolarPowerCentre” and with a change of colour such that the words “Solar” and “Centre” appeared in light green and the word “Power” in dark green. The words “part of the Festival Lights Group” had been replaced by the words “your online eco store” under the logo.
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant relies on its registered trade mark for “solarcentre” and cites the terms of paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which addresses the issue of figurative marks. In line with the approach outlined in the WIPO Overview 2.0, the Complainant asserts that the said trade mark is dominated by the words “solarcentre” and that the design element is subsidiary.
The Complainant also relies upon common law rights in the names SOLAR CENTRE and THE SOLAR CENTRE and asserts that, by virtue of extensive trading and marketing activities, it has acquired substantial reputation and goodwill in those names such that they are recognised by the public as distinctive of the Complainant’s business. The Complainant states that it is arguable whether SOLAR CENTRE is descriptive when used only for solar lighting however argues that it is established under the Policy that names with a descriptive element can generate common law rights where there is evidence of significant use. The Complainant cites various UDRP panel decisions in support of this proposition.
The Complainant asserts that there is nobody else within the Complainant’s industry, solar lighting, using the term “Solar Centre”. The Complainant notes that two existing solar panel, not solar lighting, companies have started using variations of the Complainant’s name but with a geographical focus. The Complainant states that it proposes to take action against those companies. The Complainant asserts that the Respondent set out to attract business intended for the Complainant and that such activity by the Respondent presupposes that the Complainant’s business was known and identified by its name.
The Complainant submits that the disputed domain name wholly incorporates the trade mark SOLAR CENTRE (excluding the insignificant word “THE” in the case of THE SOLAR CENTRE) and differs only by insertion of the generic word “power”. The Complainant asserts that this term fails to dispel the connection between the disputed domain name and the Complainant’s trade mark, citing paragraph 1.9 of the WIPO Overview 2.0. The Complainant submits that its trade mark remains the distinct and dominant feature of the disputed domain name and that they are conceptually identical because in this context, “solar” is clearly referable to “solar power”. The Complainant notes that both versions of the Respondent’s logo involve highlighting the terms “solar” and “centre” in a different colour to “power”.
The Complainant asserts that it has never authorised or licensed the Respondent to use its trade mark and submits that the Respondent has used the disputed domain name and the Complainant’s trade mark to disrupt a competitor and/or to attract, confuse and profit from Internet users seeking the Complainant who are searching for the Complainant’s business in search engines, web browsers and otherwise on the Internet. The Complainant notes that such use of the disputed domain name could not be said to be bona fide and cannot generate rights or legitimate interests. The Complainant also submits that the Respondent is seeking commercial gain.
The Complainant submits that the Respondent intended, inter alia, to prevent the Complainant from reflecting its trade mark in the disputed domain name, which corresponds to that trade mark. The Complainant asserts that the Respondent was aware of the Complainant and its business when it registered the disputed domain name. The Complainant states that the disputed domain name is identical to the Complainant’s trade mark other than adding the obvious generic word “power” after “solar”.
The Complainant asserts that the Respondent has engaged in a pattern of targeting competitors in that it registered two domain names directly referable to the name of another online lighting business competitor at around the same time as it registered the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name to disrupt a competitor and asserts that the Respondent is its direct competitor as it supplied solar lighting and has admitted the same in correspondence.
The Complainant asserts that the Respondent was well aware of, and set out to target the Complainant, when registering and using the disputed domain name and that this is part of a pattern of misconduct by the Respondent. The Complainant states that there can be no doubt that use of the disputed domain name is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant. In support of these submissions, the Complainant makes the following statements:
1. that in March/April 2008, before the registration of the disputed domain name, Luke Sanders, a director of the Complainant, approached the Respondent with a view to supplying the Respondent with solar fairy lights and solar security lights. The Respondent expressed interest and the Complainant sent samples by post but nothing further was heard from the Respondent. The Complainant states that it no longer has evidence of these communications but notes that it referred to the said approach in a 2009 email to its Chinese supplier.
2. that, in correspondence between the Parties’ agents, the Respondent’s agent did not deny the approach or that the Respondent was aware of the Complainant before it registered the disputed domain name; that the Parties are direct competitors and it is inconceivable that the Respondent was unaware of the Complainant which, by 2008, was well-known as a major online retailer of solar lighting products and which had exhibited at trade shows and achieved national press coverage;
3. that the name “Solar Power Centre” is a far from an obvious term to use for solar lighting and it was clearly selected to target the Complainant, separate to the Respondent’s main website at festive-lights.com;
4. that the Complainant registered a domain name referable to another third party lighting company at around the same time as it registered the disputed domain name;
5. that both versions of the Respondent’s logo have highlighted the words “solar” and “centre” in the same colour and distinguished those terms from the word “power”;
6. that the Respondent’s logo is similar to, and clearly based on, the Complainant’s logo; that very similar fonts have been used in both versions of the Respondent’s logo;
7. that the Respondent’s home page consists largely of a series of boxes with rounded corners like the Complainant’s site; furthermore, the Respondent has copied the “Works in Winter” tag from the Complainant’s site;
8. that the Respondent has copied a diagram from the Complainant’s site and used it on its packaging; and
9. that the Respondent has produced a lighting product whose appearance is copied from a Complainant product and the Respondent even admittedly used a photo of the Complainant’s own product copied from the Complainant’s site to promote the Respondent’s copycat product.
The Complainant submits that the likelihood of confusion is enhanced by the Respondent’s prominent use of “Solar Power Centre” on the home page of its site as well as the use of a similar logo and the items lifted from the Complainant’s site set out above.
The Complainant cites Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058 in support of its proposition that a claim that a mark is generic or descriptive of a Complainant’s business does not legitimise a Respondent’s leading of Internet users to a site in direct competition with a complainant where that respondent has prior knowledge of the Complainant’s goodwill and reputation in its trading name.
The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s registered or alleged common law trade mark; that the Respondent has rights or legitimate interests in the disputed domain name; and that the disputed domain name was not registered, nor is it being used, in bad faith.
The Respondent submits that is unlikely that a trade mark registration for SOLAR CENTRE in plain text for the goods used under the trade mark is inherently registrable in the absence of figurative elements, citing section 3 of the UK Trade Mark Act 1994 which sets out the absolute grounds for refusal of registration and which states that trade marks which are devoid of any distinctive character shall not be registered. The Respondent states that the mark relied upon by the Complainant is likely to have been considered sufficiently distinctive as a result of its stylization and the Respondent concludes that the mark's scope of protection is likely to be narrow and that small differences are sufficient to avoid a finding of confusing similarity.
The Respondent submits that the disputed domain name is descriptive, under reference to the “www.wikipedia.com” definition of “solar power”. The Respondent refers to an online dictionary to demonstrate that the word “centre” can mean “a place at which some specified activity is concentrated; a shopping centre”. The Respondent asserts that it will be extremely difficult for any undertaking to acquire goodwill or reputation in relation to such a descriptive term and that Respondent does not believe that the Complainant has evidenced goodwill or reputation or significant use so that the relevant public associates the words SOLAR CENTRE as exclusively an indication of origin of the Complainant.
The Respondent notes that other companies in the United Kingdom use SOLAR CENTRE or variants thereof in connection with the sale of solar products and asserts that the fact that the Complainant proposes to take action against third party use of similar signs is irrelevant. The Respondent states that it would be unfair to allow the Complainant a monopoly right over such descriptive terms.
The Respondent denies that the Complainant had established unregistered rights in its mark prior to or post the registration of the disputed domain name. The Respondent quotes from the decision of the English courts in the case of Reckitt & Coleman Products Limited v Borden Inc, [1990] RPC 341 as to the requirements of the law of passing off. The Respondent states that the Complainant has not demonstrated evidence of use from 2006 to February 2008 and submits that to the extent the Panel may consider that the Complainant has acquired goodwill, such goodwill relates to retail services rather than the Complainant’s own branded solar goods.
The Respondent notes that the evidence of use of the Complainant’s trade mark all post dates the registration of the disputed domain name apart from the example relating to “www.firebox.com” in respect of which the Complainant has provided no supportive evidence. The Respondent notes that no evidence has been produced showing the Complainant’s attendance at exhibitions prior to the registration of the disputed domain name.
The Respondent notes that only two of the Complainant’s national press articles pre-date the registration of the disputed domain name and that the articles do not relate to “Solar Centre” branded goods in which the Complainant claims to have established goodwill. The Respondent asserts that the number of visitors to a website does not demonstrate goodwill and that the number provided for 2008 is partly after the disputed domain name was registered and should therefore be disregarded.
The Respondent notes that normal practice is to provide turnover figures per year yet the Complainant has provided a composite figure for the years 2006 to 2009. The Respondent notes that it cannot ascertain from this the level of turnover of the Complainant prior to the registration of the disputed domain name and assumes this was insignificant on account of the grouping of turnover into a four year period.
The Respondent states that the Complainant has demonstrated limited use of its unregistered mark prior to the registration of the disputed domain name and notes that limited use does not amount to goodwill, reputation or evidence of unregistered rights. The Respondent asserts that there is no risk that Internet users will believe that there is a connection between the disputed domain name and the Complainant.
The Respondent states that it wished to have a specific domain name for the sale of solar powered products and was exploring the possibility of securing a patent for a solar panel in October 2008. The Respondent notes that it was engaged with ordering solar powered products and samples from China for sale in the UK since at least 2007. The Respondent notes that the Parties' Chinese supplier confirms that they were doing business with the Respondent before the Complainant.
The Respondent states that it was engaged in ordering and selling solar powered products before and after the registration of the disputed domain name and notes that the Respondent decided that it wanted a separate domain for the sale of solar powered goods. The Respondent asserts that it is therefore using the domain in connection with a bona fide offering of goods. The Respondent submits that the disputed domain name is descriptive and that the Respondent did not believe at the time of registration that it did not have a legitimate right to use such a descriptor in the context of solar powered goods.
The Respondent notes that it does not claim to have been authorized or licensed to use the Complainant’s trade marks as the Respondent is not using the Complainant’s trade mark.
The Respondent denies that it has used the disputed domain name and the Complainant’s trade mark to disrupt a competitor or attract or confuse Internet users and submits that the Complainant has not provided any evidence to substantiate this claim. The Respondent states that when the disputed domain was registered and until 2011, the website associated therewith contained the trade mark SOLAR POWER CENTRE (logo) plus the words "Part of the Festive Lights Group" which contradicts the Complainant’s claim that the Respondent was attempting to confuse Internet users.
The Respondent denies copying aspects of the Complainant’s business and makes the following additional statements:
1. The Respondent denies that it copied the strap line “works in winter” from the Complainant and notes that this is descriptive and is used by other undertakings in the marketplace. The Respondent produces an extract from a competitor’s website, “www.lights4fun.co.uk” which shows the use of the same descriptor. The Respondent notes that the Complainant has not demonstrated that it has the exclusive right to use this description to the exclusion of others. The Respondent states that, based on a preliminary look on the Internet, the strap line is not unique to the Complainant.
2. The Respondent denies that it has copied the Complainant’s practice regarding describing the number of LED bulbs in products as part of the model name and provides examples of competitors employing the same practice. The Respondent states that the use of the number of LED lights within a product name is descriptive as it conveys a direct meaning to the consumer regarding how bright the product will be. The Respondent provides evidence that a Chinese distributor used by the Complainant and the Respondent uses the number of LED lights to describe a product.
3. The Respondent denies that it copied one of the Complainant’s images. The Respondent states that the image had been supplied to the Respondent by a third party for use on the Respondent’s website. The Respondent states that once informed that this was an image protected by copyright, the Respondent took immediate steps to remove the image without any admission of liability.
4. The Respondent denies that its packaging includes diagrams created by the Complainant. The Respondent states that it created its own diagrams for its products.
5. The Respondent denies that it has infringed or has passed off on the alleged goodwill of the Complainant and notes that such allegations have been strongly refuted by the Respondent’s legal representatives.
6. The Respondent states that it had to take the disputed domain name offline due to hacking and had to close the website to protect “www.festive-lights.com”. The Respondent denies that the removal of the said website was due to alleged copyright infringement and produces relative email correspondence with its IT support. The Respondent notes that the hacking problem was significant and took a long time to resolve. The Respondent asserts that the disputed domain name was updated to look more like the “festive-lights” domain.
7. The Respondent states that it registered <solarlights4fun.com> and <solarlights4fun.co.uk> as at the time it had a genuine intention to use these domain names. The Respondent states that it is not preventing the competitor Lights4fun from exploiting their own trading name and notes that the competitor concerned has not claimed that these domains are “abusive registrations”.
8. The Respondent states that there are earlier decisions which have considered whether a respondent has engaged in registering a number of domain names to show a pattern of abusive bad faith conduct. The Respondent notes that according to Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643, “The alleged “pattern of conduct” must be viewed with a high degree of scrutiny... However, a single egregious example does not establish a pattern of conduct”.
The Respondent states that before it received any notice of the dispute, it has used the disputed domain name in connection with a bona fide offering of goods, noting that it has used the disputed domain name for five years and that it did not apply to register the disputed domain name as a trade mark in light of its wholly descriptive meaning. The Respondent states that it is making legitimate and fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trade mark.
The Respondent states that it cannot be considered to have acted in bad faith as at the time the disputed domain name was registered the Complainant had not filed an application for their trade mark and could not have contemplated the Complainant’s then unregistered trade mark. The Respondent notes that there are many earlier decisions under the Policy which support the view that where a registered trade mark does not exist at the time the disputed domain name was registered the registered trade mark cannot serve as the basis for a claim under the Policy, since it is impossible for the domain name to have been registered in bad faith. The Respondent denies that at the time when the disputed domain name was registered the Complainant had acquired unregistered rights in its trade mark THE SOLAR CENTRE or SOLAR CENTRE. The Respondent repeats its earlier submissions regarding the Complainant’s acquisition of such rights.
The Respondent denies that it registered the disputed domain name to prevent the Complainant from reflecting its trade mark therein. The Respondent distinguishes the disputed domain name from the Complainant’s trade mark and notes that the words “solar”, “power” and “centre” are all generic words used to describe the offering for sale of solar powered goods, which the Respondent was selling. The Respondent denies that it entered into any pattern of conduct and notes that the Complainant has located one example where the Respondent is alleged to have targeted a competitor, namely “Lights4fun”. The Respondent submits that the fact that it is a competitor of the Respondent does not demonstrate bad faith. The Respondent states that the disputed domain name was registered in good faith without intent to target or harass the Complainant.
The Respondent denies that it was trying to create any confusion between the Complainant’s trade mark and the Respondent, noting that the words “part of the Festive Lights Group” which it used on the website associated with the disputed domain name from 2008 to 2011 demonstrate this. The Respondent notes that following the revamp of its said website the Respondent’s logo and strap line “your online eco store” can be distinguished from that of the Complainant and thus that there is no likelihood of confusion with the Complainant’s trade mark.
The Respondent generally denies that it was well aware of, and set out to target the Complainant, when registering and using the disputed domain name or that this is part of a pattern of misconduct by the Respondent. The Respondent specifically denies that it requested samples in 2008 and notes that the Complainant has not provided evidence of this. The Respondent asserts that as it had already established a relationship with its Chinese supplier before 2008 it would not wish to sample products it had already supplied. The Respondent denies being aware of the Complainant’s alleged goodwill or reputation at the time the disputed domain name was registered.
The Respondent notes that its original logo can be distinguished from the Complainant’s trade mark. The Respondent asserts that the word “power” is highlighted and that the green half circle of dots to the right of the trade mark is also dissimilar to the figurative element appearing on the Complainant’s trade mark. The Respondent notes that its products are environmentally friendly and that it adopted the colour green to emphasise this. The Respondent asserts that its home page can be distinguished from that of the Complainant. The Respondent denies any likelihood of confusion or that it intended to create one.
The Respondent asserts that the Complainant has been aware of the Respondent’s use of the disputed domain name for a number of years and has not challenged its registration until now. The Respondent adds that the Complainant was in direct contact with the Respondent up until October 2010 regarding a potential supply of goods and provides evidence of this.
The Respondent denies that it registered the disputed domain name for any of the reasons set out in paragraph 4(b) of the Policy. The Respondent asserts that the facts and evidence of this case do not demonstrate that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s alleged rights.
The Complainant submits that its Supplemental Filing addresses a number of new factual matters raised in the Response which the Complainant could not have anticipated.
The Complainant asserts that the Respondent’s definitions of “solar” and “centre” disregard the issue which is the combination of the two terms and the non-obvious use of “Solar Centre” specifically for lighting rather than all things solar. The Complainant submits that the term is no less descriptive than the many descriptive names which have been held to establish common law rights under the Policy, which the Respondent does not address.
The Complainant asserts that none of the four companies cited by the Respondent use the exact term “Solar Centre”. All are in a different industry, namely solar panels, and three are geographically limited by name whereas the Complainant’s business is national.
The Complainant states that the Respondent ignores the vast goodwill established by the Complainant as of the date of the Complaint and focuses purely on the position as at registration of the domain name, though this is irrelevant to the establishment of rights. The Complainant submits that goodwill as at registration is potentially relevant only to bad faith and only then if there is doubt as to the Respondent’s knowledge of the Complainant on registration of the domain name - whereas here the Complainant says that there is no doubt.
The Complainant notes that it does not see what difference it makes whether the Complainant has used its mark to sell other products or its own branded products.
The Complainant asserts that the Respondent continually and disingenuously states that it wanted the disputed domain for sale of “solar powered goods” and is seemingly reluctant to admit that it acquired the domain name to sell specifically solar lighting products competing directly with the Complainant, and not for the other solar products in which it was avowedly interested. The Complainant notes that the Respondent is careful to evade the issue of its knowledge of the Complainant at the time of registration of the disputed domain name. The Complainant submits that the Respondent was clearly so aware, as it has not denied this (nor could it credibly have done so), a fact which the Complainant says is any case obvious not least because the Respondent registered a domain name targeting another competitor at around the same time, a step which the Respondent appears to admit was “egregious”.
The Complainant notes that while not denying its awareness of the Complainant, the Respondent still claims that it “could not have contemplated the Complainant’s then unregistered right” (clearly referencing paragraph 3.1 of the WIPO Overview 2.0). The Complainant submits that this claim is implausible given that the Complainant had already achieved national press coverage by then, however that even if it were correct, which the Complainant denies, the Respondent, knowing of the Complainant’s use of the name, would have acted in bad faith anyway as it obviously aimed to capitalise on potential Complainant rights, per the next sentence in paragraph 3.1 of the WIPO Overview 2.0, which the Respondent has not addressed.
The Respondent submits that the Respondent’s dictionary definitions represent the literal and obvious meaning of the words “solar power” and “centre” and that the public will perceive these terms according to the definitions provided in the Response. The Respondent asserts that the fact that the Complainant only purports to use SOLAR CENTRE for lighting is irrelevant and submits that what is important is the relevant consumers’ perception of the terms “solar power centre” and “solar centre”.
The Respondent notes that the Response was limited to facts and submissions concerning the Complaint and that the Respondent does not believe that cases referred to by the Complainant have similar facts to the Complaint. The Respondent points out that the Policy does not operate a strict doctrine of precedent.
The Respondent submits that the relevant public will perceive “The Solar centre (ne) Ltd”, “Thames Valley Solar Centre”, “Swindon Solar Centre” and “The Solar Energy Centre” as a centre retailing in solar products. The Respondent states that it is irrelevant that the companies operate in panels rather than lighting. The Respondent notes that similarly it is not using the exact term "solar centre".
The Respondent asserts that the Complainant’s submissions in its Supplemental Filing regarding the four companies cited by the Respondent are inconsistent with the submissions in the Complaint. The Respondent asserts that if the companies cited by the Respondent are not relevant, due to the fact that they are operating in a different industry, the Complainant would not be proposing to take infringement action against these companies as indicated in the Complaint.
The Respondent states that it does not believe the Complainant has established goodwill prior to or post the registration of the disputed domain name. The Respondent asserts that the Complainant has not taken the opportunity in its Supplemental Filing to address the criticisms made in the Response, in particular, the manner in which the details of turnover have been supplied.
The Respondent asserts that any goodwill initially vesting in the Complainant would have been in relation to retail services and notes that it does not believe that the Complainant established goodwill in relation to retail services during the period 2006-2008. The Respondent submits that an undertaking which has acquired goodwill in relation to one type of goods or services does not automatically have goodwill in another, as goodwill is attached to a particular product or service. The Respondent notes that the Complainant began to sell branded products on its website in 2008 and submits that the Complainant had not established goodwill in relation to own branded goods at the time the disputed domain was registered by the Respondent. The Respondent also submits that the Complainant has not established goodwill prior to or post the registration of the disputed domain in so far as retail services or own branded lighting are concerned. The Respondent states that it would require a substantial leap to come to the conclusion that the Respondent was aware of the Complainant’s alleged rights at the time the disputed domain was registered.
The Respondent denies any dishonesty in the Response. The Respondent refers to the evidence produced which related to investigations into the patentability of a solar panel and notes that this product was not developed and hence was not sold on the disputed domain name. The Respondent states that it sells other products on the disputed domain name including solar gadgets and solar water features (evidence provided).
The Respondent asserts that it was not aware of the Complainant’s alleged rights to SOLAR CENTRE at the time it registered the disputed domain name and that the Respondent does not admit to targeting a competitor at the same time as registering the disputed domain name. The Respondent notes with regard to the “single egregious example” that this was a quote from a previous case relating to what constitutes a “pattern of conduct”. The Respondent notes that while it has not investigated the domains owned by the Complainant, the Complainant registered <festivesolarlights.com> several years ago, which is not in use, which the Respondent submits is very similar to the Respondent’s other domain name <festive-lights.com>.
The Respondent reiterates its submission that at the time the disputed domain name was registered it was unaware of the Complainant’s alleged rights and submits that the national press referred to by the Complainant is not significant and does not demonstrate goodwill, and there is no reason to conclude that the Respondent had seen these publications.
The Respondent denies that it sought to capitalise on potential rights of the Complainant. The Respondent states that the disputed domain name is generic and there was no reason to believe that any undertaking could acquire rights in such generic terms. The Respondent submits that the scenario regarding capitalising on potential Complainant rights provided in the WIPO Overview 2.0 relates to the example of a publicised merger, which can clearly be distinguished in the present case.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
This element of the Policy has been described as a “standing” requirement (see, for example, the WIPO Overview 2.0, paragraph 3.1, “In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trade mark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark”). Likewise, the test in paragraph 4(a)(i) of the Policy has been described as “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
For the purposes of paragraph 4(a)(i), the Complainant relies upon rights in its registered figurative trade mark, as fully described in the Factual Background section above, together with claimed common law rights in the names SOLAR CENTRE and THE SOLAR CENTRE. While the Respondent is exercised by the question of whether the Complainant had common law rights in this name at the time when the disputed domain name was registered, this particular element of the Policy is only concerned with the identity or confusing similarity of the disputed domain name to a mark in which the Complainant currently has rights, in other words, at the time when the Complaint was filed.
Dealing first with the registered mark, paragraph 1.11 of the WIPO Overview 2.0 addresses the question “Are disclaimed or design elements of a trade mark considered in assessing identity or confusing similarity?” as follows:
“[...] as figurative, stylized or design elements in a trade mark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trade mark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trade mark overall. Some panels have found it to be a matter of impression in the circumstances of each case. Where the entire textual component of a complainant’s relevant trade mark has been disclaimed, or the only protectable component of such mark is comprised of design elements which generally cannot be represented in the alpha-numeric string of a domain name, then (absent a showing of acquired distinctiveness through use of the relevant mark) the complainant may lack any relevant rights under the UDRP on the basis of such mark, rendering moot any assessment of the disputed domain name's identity or confusing similarity with it.”
The Panel respectfully adopts the consensus view. In the present case, the Panel considers that the word portmanteau “solarcentre” forms the dominant component of the Complainant’s trade mark. The combination of words appears clearly and prominently in a stylized typeface to the right of a circular device and also in plain text below beside the legend “Mark text:” indicating that the mark is a combined “device and word mark” as far as the United Kingdom Intellectual Property Office is concerned.
The Respondent’s argument echoes the second aspect of paragraph 1.11 of the WIPO Overview 2.0, namely the question of whether the only protectable component of the mark is the design element which cannot be represented in a domain name. The Respondent’s corresponding submission is that it is unlikely that a trade mark registration for SOLAR CENTRE in plain text for the goods used under the trade mark would be inherently registrable in the absence of the figurative elements. The Complainant counters in its Supplemental Filing that the term is a non-obvious use specifically for lighting rather than all things solar and is no less descriptive than many descriptive names which have been held to establish common law rights under the Policy. In its Supplemental Filing, the Respondent asserts that the dictionary definitions represent the literal and obvious meaning of the words “solar power” and “centre”.
The Panel is satisfied that it is not the case here that the only protectable element of the Complainant’s registered trade mark is the device alone. The mark is not a “device only” mark and the textual element is both clear and prominent. When the device is removed, the textual or alphanumeric component of the mark remains and is perfectly capable of standing on its own for the purposes of comparison with the disputed domain name.
The Panel furthermore accepts that the Complainant has established common law trade mark rights in the name SOLAR CENTRE at the date of filing the Complaint. The Complainant has provided evidence of substantial sales under this name from 2006 to date together with a significant amount of national media recognition either in respect of the Complainant, its website or its products. The Complainant also provides evidence of its frequent attendance at trade shows and exhibitions together with evidence of collaboration with, and interest from, major retailers in the United Kingdom. Finally, the Complainant produces evidence indicating that there have been a large number of visits to its website at the address “www.thesolarcentre.co.uk”, on which its mark is prominently displayed, from a significant number of unique visitors.
The Panel accepts on the strength of all of this evidence that the Complainant has established a secondary meaning in the name SOLAR CENTRE with reference to the sale of solar lighting products, even if the approach of some panels as described in paragraph 1.7 of the WIPO Overview 2.0 is adopted, namely to place a greater onus upon the Complainant to produce compelling evidence because of the lack of inherent distinctiveness in the name concerned. The Complainant has provided extensive “specific assertions of relevant use of the claimed mark supported by evidence” as contemplated by the consensus view of the said paragraph 1.7. By contrast, in addressing this question, the Respondent has focused largely on the extent of the Complainant’s rights prior to registration of the disputed domain name. As noted above, that period is not critical to the Panel's assessment under paragraph 4(a)(i) of the Policy.
The Panel has considered the Respondent’s claim that goodwill which might have vested in the Complainant in respect of retail services should be differentiated from any goodwill in respect of the Complainant’s own products. The Panel has been unable to accord any weight to these submissions. In applying the approach described in the said consensus view of the WIPO Overview 2.0 the Panel examines the Complainant’s use of the name as a whole and there is no suggestion in the present case that the outcome on secondary meaning would be any different even if the uses were split into different categories as the Respondent proposes.
Turning to a comparison of the Complainant’s mark with the disputed domain name, the words “solar” and “centre” likewise appear in the disputed domain name separated by the word “power”, disregarding the generic top level domain “.com” as is customary under the Policy. The Panel considers that inserting the word “power” into what is otherwise the prominent textual element of the Complainant’s trade mark does not act to distinguish the disputed domain name from the trade mark. In terms of the relatively low threshold standing test of paragraph 4(a)(i), the Panel considers that there are reasonable grounds for assessing the disputed domain name as confusingly similar to the Complainant’s registered trade mark.
Accordingly, the Panel determines that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights and that accordingly the first element under the Policy has been established.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name. In the present case, the Complainant asserts that it has never authorised or licensed the Respondent to use its trade mark and submits that the Respondent has used the disputed domain name and the Complainant’s trade mark to disrupt a competitor and/or to attract, confuse and profit from Internet users seeking the Complainant who are searching for the Complainant’s business in search engines, web browsers and otherwise on the Internet; such use of the disputed domain name neither being bona fide nor generating rights or legitimate interests. The Panel considers that the Complainant’s submissions are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production therefore falls upon the Respondent to bring forward evidence of its rights or legitimate interests, if any, in the disputed domain name.
The Respondent’s submissions focus on its assertion that the words in the disputed domain name are descriptive of goods and services which it says it offers in good faith on the website associated with the disputed domain name, in other words effectively a case in terms of paragraph 4(c)(i) of the Policy. The Panel accepts that over the period from registration of the disputed domain name in 2008 to date (with a break following the hacking incident) the Respondent has used the disputed domain name in connection with an offering of goods and services, namely the sale of predominantly solar lighting products and some solar powered gadgets. On its own, this does not entitle the Respondent to rely upon the safe harbour provision of paragraph 4(c)(i) because it must also show that the use contended for is bona fide. In the present case, as in the case of Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058 cited by the Complainant, this boils down to whether, as the Complainant asserts, the Respondent was aware of the Complainant and its rights in the name SOLAR CENTRE and was intent upon targeting these when it registered the disputed domain name. If that is proven, any subsequent offering of goods under the disputed domain name could not be described as bona fide. In Emmanuel Vincent, supra, the Panel determined the issue based upon a consideration of “the relationship of the parties, their previous dealings and any knowledge that the Respondent may have of the Complainant’s services”.
The Respondent rightly points out that the registered trade mark relied upon by the Complainant was not in force when the disputed domain name was registered. Accordingly, the Panel accepts the Respondent’s contention that it cannot have had any awareness of the Complainant based upon the existence of its registered rights. Did the Respondent have any other rights in the name SOLAR CENTRE as at the date when disputed domain name was registered on June 23, 2008? By that date, the Complainant had been trading as “The Solar Centre” for just over two years. The Complainant’s website at “www.thesolarcentre” had attracted 16,683 visits during 2007 and this had risen to around 60,000 in the first six months of 2008. The Panel notes in passing that the Respondent is critical of the Complainant’s statistics as these are presented in whole years however this is not the only way in which the number can be ascertained. The statistics featured a graph for the year 2008 containing month by month points relative to visitor numbers. Due to the scale of the graph the Panel could not identify precise figures however considers that the sum of 60,000 is a perfectly reasonable approximation on which the Panel may rely. In addition to increasing visitor numbers to its website, the Complainant had also clearly begun to obtain national media recognition, albeit that only two instances are quoted - The Times article and the coverage on The One Show.
Clearly the extensive media recognition noted by the Complainant for the period following the registration of the disputed domain name to date is more comprehensive and impressive than the two examples of media recognition produced for the period to March 2008 (and indeed the remainder forms part of the Panel's assessment of the Complainant’s common law or unregistered rights in the mark noted above). However, this does not mean that the Complainant had no rights whatsoever in the term SOLAR CENTRE by March 2008. Furthermore, the Respondent’s criticism of the fact that the Complainant did not produce detailed turnover figures to March 2008 equally does not mean that the Complainant lacked any rights. The Panel considers that the Complainant’s reticence to disclose more detailed turnover figures, even after this was criticised by the Respondent, probably indicates that the amount of the Complainant’s sales to March 2008 was comparatively small. However, even if that assessment is correct, the amount of the Complainant’s turnover is not a conclusive issue but merely one of several factors here. Taking the Complainant’s period of trading to March 2008, the national media recognition which it had achieved by that date, the increasing visitor numbers to its website and the fact that sales were undoubtedly being generated to some extent, the Panel considers on the balance of probabilities that the Complainant’s activities had given rise to some rights, albeit limited in extent, in the name SOLAR CENTRE by March 2008. While the rights may have been limited this does not demonstrate by any means that they would not have come to the attention of one of the Complainant’s close competitors such as the Respondent.
Is there any further evidence that the Respondent was likely to be aware of the Complainant and its rights as at the date of the disputed domain name? Unlike Emmanuel Vincent, supra, the Panel is not presented with detailed evidence of prior communications between the Parties. Instead, however, the Panel is faced with the Complainant’s averment that in March or April 2008 it contacted the Respondent, following up by sending the Respondent samples by post, coupled with Complainant’s reference to there having been prior contact “last year” in the correspondence between the Complainant and the Parties' Chinese supplier dating from 2009. The Respondent denies this contact by means of a general denial (relative to the entirety of paragraph 54 of the Complaint) in the Response. In addition, however, the Panel notes that the Respondent includes a specific denial that it had requested any samples from the Complainant in 2008 together with an explanation that, having established a relationship with the Parties’ supplier before 2008, the Respondent would not have wished to sample such products. This strikes the Panel as a curious submission to make in response to the Complaint, in that the Complainant does not suggest that the Respondent actively or expressly requested the samples which the Complainant claims to have sent by post, merely that the Respondent “expressed interest”.
Equally, there is nothing before the Panel to indicate that, if the conversation of March/April 2008 took place, the Respondent knew at the time of that conversation that the Complainant’s products were the same products supplied by the Parties’ supplier and thus that it would have had no interest in them. The Panel is left with a feeling that the specific denial of the Respondent is somewhat carefully worded to appear to be a denial of the contact concerned when in fact it denies something that the Complainant did not specifically allege. It is also worthy of note that in the correspondence between the Parties’ agents, the Respondent’s representatives did not expressly deny the allegation made in the Complainant’s solicitors’ letter to the Respondent of May 30, 2012, namely “You were clearly aware of our client when you registered the domain name; indeed our client had approached you with product samples in early 2008.”
The Panel notes the Respondent’s assertion that it registered the disputed domain name in connection with its solar power project for which it investigated filing a patent in October 2008. The Panel does not consider that it can place any weight on this circumstance, coming as it does some four months after the registration of the disputed domain name and in circumstances where the disputed domain name does not ever appear to have been used to any appreciable extent in connection with solar power generation as opposed to solar lighting. Nor does the Panel place any weight on the Parties’ averments regarding the similarity (or difference) between the Complainant’s website and the website associated with the disputed domain name. The similarity in design terms of two websites does not necessarily demonstrate a Respondent’s knowledge or intent to target a Complainant’s rights, particularly if both websites refer to the same industry. One can imagine, for example, both of the Parties in this case independently coming up with a green colour to represent the “green” or environmentally friendly aspect of solar lighting and likewise each selecting circular devices that are suggestive of the sun.
The Panel has also considered, but is unable to place any weight on the following additional matters raised by the Parties. First, the Parties’ discussion of various other businesses which use the term “solar centre”. Whether or not these businesses are in a different industry, namely solar power generation, and/or whether or not they may be using the term generically or descriptively, and/or whether or not the Complainant is going to take action against them are not matters which have any bearing on the outcome in the present case as they do not demonstrate whether the Respondent (as opposed to any third party) is on the one hand using the term “solarpowercentre” in the disputed domain name generically or descriptively, or on the other hand has registered and used it with an awareness of the Complainant and its rights and with an intent to target these. Secondly, the Respondent’s submission that the Complainant has registered a domain name corresponding to the Respondent’s domain name <festive-lights.com>. The Panel does not consider that this is relevant to the present Decision as it has no bearing on the registration and use of the disputed domain name; clearly it is a matter in respect of which the Respondent would require to bring separate proceedings either under the Policy or in a different forum. Thirdly, the alleged copying by the Respondent of an image taken from the Complainant’s website. The correspondence shows that the Complainant brought this matter to the Respondent’s notice in April 2011 and as such it can have no bearing on the registration and use of the disputed domain name. Fourthly, the miscellaneous allegations of the Complainant and corresponding denials of the Respondent regarding the copying of a strap line and product descriptions or diagrams. It is not established when such copying is alleged to have taken place relative to the registration of the disputed domain name and the Panel finds that the evidence is in any event inconclusive.
What is more compelling in the Panel’s opinion than any of the matters described above is the fact that, just twelve days before the registration of the disputed domain name, the Respondent registered two domain names which appear to correspond to the name of a third party supplier trading under the name “Lights4fun”, albeit with the generic term “solar” prefixed thereto. How does the Respondent explain this conduct? The Panel considers that it would be very difficult for the Respondent to argue that “Lights4fun” is a generic or descriptive term and indeed the Respondent does not attempt this. “Lights4fun” is clearly the reasonably distinctive name of another of the Respondent’s (and indeed the Complainant’s) competitors. In fact, the Respondent is not prepared to say much by way of explanation, merely stating that “at the time it had a genuine intention to use these domain names” and that the competitor concerned has not complained.
The Panel finds that the registrations of the “Lights4fun” domain names and the Respondent’s submissions regarding them are extremely significant for the question of knowledge and targeting of rights in this case. The Panel considers that the Respondent’s account of how it came to make these domain name registrations is inadequate. In the absence of a cogent and credible explanation from the Respondent, the Panel considers that it is reasonable to infer that at around the time of the registration of the disputed domain name (1) the Respondent was examining certain websites and trading names of its competitors; and (2) the Respondent resolved to register domain names which corresponded to those trading names, albeit with slight variations which might have the appearance of a descriptive term. In these circumstances, there is reason to believe that the insertion by the Respondent of “power” into the Complainant’s SOLAR CENTRE name and mark is akin to the Respondent’s addition of “solar” to the third party competitor's “Lights4fun” trading name.
When all of the facts and circumstances put forward by the Parties are taken into consideration, it can be seen that the question of the Respondent’s knowledge of the Complainant and its rights is nevertheless quite finely balanced in this case. Some of the background is incomplete. For example, the Panel would have preferred to have had greater detail in evidence from the Complainant as to its alleged contact with the Respondent prior to the date of registration of the disputed domain name. The evidence which has been put forward on that topic is imperfect, consisting as it does of an averment of prior contact together with the circumstantial reference to this in subsequent correspondence (which does not itself provide an accurate date for the contact), along with the lack of a denial from the Respondent in previous correspondence.
Nevertheless, when such evidence as there is on prior contact is coupled to the Respondent’s unexplained registration of the “Lights4fun” domain names in very close proximity to the date of registration of the disputed domain name, the Panel finds that it is more probable than not that the Respondent registered the disputed domain name with an awareness of the Complainant’s rights and with intent to target these. In such circumstances, in the wording of Emmanuel Vincent, supra, “...it cannot be concluded that the Respondent is offering bona fide goods or services or making a "fair" use of the disputed domain name when the goods and services that the Respondent intends to offer using the disputed domain name are in direct competition with those of the Complainant.”
For these reasons the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel has considered the Parties’ averments with regard to paragraph 4(b)(iv) of the Policy and in particular the Respondent’s submission that it has not used the disputed domain name to confuse Internet users, because the words “Part of the Festive Lights Group” appeared under the name “solarpowercentre” until 2011. The Panel has seen a screenshot of the appearance of the website associated with the disputed domain name dated May 2009 which was obtained by the Complainant from the “Wayback Machine”. The Panel notes that little weight can be accorded to the Respondent’s submission here for two reasons. In the first place, the words “Part of the Festive Lights Group” evidently appeared in light grey text, in a much smaller font size than the words “solarpowercentre” and thus are given no prominence which would be identified by the typical visitor. In the second place, and of greater importance, is the fact that even if visitors to the disputed domain name noted these words, or the Respondent’s replacement strapline “your online eco store” and accorded any significance to them, they have by that point already arrived at the Respondent’s site, potentially due to confusion arising from the similarity between the Complainant’s trade mark and the disputed domain name. All of that said, the Panel considers that there is a more compelling reason whereby the disputed domain name may be considered to have been registered and used in bad faith than the likelihood of confusion.
As noted in the preceding section, the Panel considers that the Respondent’s argument that it registered the disputed domain name purely for its generic or descriptive value and independently of the Complainant or its rights falls away under scrutiny, given that the Respondent has been shown to have registered the disputed domain name within a fortnight of registering two domain names corresponding to the trading name of another of its competitors, with a subtle addition (the prefix “solar”). The Respondent argues that its registration of <solarlights4fun.com> and <solarlights4fun.co.uk> should not give rise to a finding of registration and use in bad faith because a single example does not establish a “pattern of conduct” in terms of paragraph 4(b)(ii) of the Policy, citing Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643. The Panel considers however that the facts and circumstances in Investone were very different from those in the present case. In Investone, the panel was faced with the respondent’s portfolio of some 900 domain names consisting of generic or descriptive words, none of which the complainant could show were identical to registered and/or recognizable trade marks. The panel in that case found that it was more probable than not that the respondent was engaged in large scale registration of generic or descriptive domain names rather than in targeting the complainant.
In the present case, the Parties are competitors who could be expected to have had knowledge of their respective activities within their relatively narrow marketplace. Furthermore, there is some evidence indicating that the Complainant and its rights came to the Respondent’s actual notice before the disputed domain name was registered. There is stronger evidence demonstrating that the Respondent registered two domain names relative to the name of another of its competitors twelve days before registering the disputed domain name and the Respondent is unable to explain this conduct to the Panel’s satisfaction. There is no evidence indicating that the Respondent was engaged in large scale registration of generic or descriptive domain names along the lines of Investone, such that the disputed domain name was likely registered independently of any knowledge of the Complainant or its rights.
In all of these circumstances, the Panel considers that on the balance of probabilities the Respondent registered the disputed domain name with the Complainant and its rights in mind and indeed with intent to target those rights. While the domains cited in this case do not necessarily constitute a “pattern of conduct” within the meaning of paragraph 4(b)(ii) of the Policy, the Panel is nevertheless satisfied in the circumstances outlined above that on the balance of probabilities the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor in terms of paragraph 4(b)(iii) of the Policy. In these circumstances, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and thus that the third element under the Policy has been established.
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 <solarpowercentre.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: September 21, 2012