Complainant is Howden Joinery Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom.
Respondents are Maya Hendriani of Yogyakarta, Indonesia; and Anang Mutakin of Jawa Timur, Indonesia.
The disputed domain name <howdenskitchens.info> is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2012. On October 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On November 1, 2012, Complainant filed an amendment to the Complaint arguing that cyber flight had occurred in this case which violated paragraph 8 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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 Respondent of the Complaint, and the proceedings commenced on November 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2012.
The Center appointed Gary J. Nelson as the sole panelist in this matter on December 6, 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.
Complainant is the owner of at least one United Kingdom Trademark Registration for HOWDENS JOINERY. Specifically, Complainant owns at least the following trademark registration (the “HOWDENS mark”):
|
Country/Territory |
Reg. no. |
Mark |
Classes |
Date of Registration |
|
United Kingdom |
2335346 |
HOWDENS JOINERY CO HOWDENS JOINERY CO HOWDENS JOINERY |
06, 19, 20 |
July 30, 2004 |
The disputed domain name appears to have been registered on February 3, 2011.
The operational website at <howdenskitchens.info> resolves to an inactive website that indicates <howdenskitchens.info> is not loading "at the moment."
Complainant owns trademark rights in HOWDENS which it acquired prior to the registration of the disputed domain name <howdenskitchen.info>.
The disputed domain name <howdenskitchen.info> is confusingly similar to Complainant’s HOWDENS trademark.
Respondents have no rights or legitimate interests in the disputed domain name.
Respondents registered and are using the disputed domain name in bad faith.
Complainant is a leading supplier of kitchen furniture and associated appliances, and has 250,000 registered customers. Over the past 17 years, Complainant has sold nearly £850 million worth of merchandise and sells approximately 3.6 million kitchen cabinets, 2 million doors, and 400,000 complete kitchens, each year.
Complainant established unregistered common law trademark rights in HOWDENS prior to the registration of the disputed domain name.
Complainant owns numerous domain names incorporating the HOWDENS trademark, including <howdens.com> and <howdenjoinerygroupplc.com>.
Respondent registered the <howdenskitchen.info> domain name on February 3, 2011, and began hosting a website with a number of sponsored links to third party websites, including websites owned by competitors of Complainant.
After contacting Gin Panda, the former holder of the disputed domain name, with a request to voluntarily transfer ownership of the disputed domain name, Gin Panda responded by offering to sell the disputed domain name to Complainant for USD 1,000.
On November 3, 2011 the following disclaimer had been added to the website at the disputed domain name: “www.howdenskitchens.info is in no way related with howdens.com or any other Howdens websites”.
As of July 9, 2012, Respondent had added Complainant's HOWDENS-based logo to the corresponding website.
At some point in time, subsequent to July 9, 2012, Respondent converted the operational website into the current passive website.
Respondents did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the HOWDENS mark and that the disputed domain name is confusingly similar to Complainant’s HOWDENS mark.
Complainant owns at least one trademark registration incorporating the HOWDENS mark, United Kingdom Registration No. 2335346. The relevant priority date for this registration (i.e., July 30, 2004) precedes the date upon which the disputed domain name was registered (i.e., February 3, 2011).
Complainant has also established that it had secured common law trademark rights in HOWDENS, prior to the date <howdenskitchen.info> domain name was registered (see The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483). For over 17 years, Complainant has been using the HOWDENS mark in association with the sale and manufacture of kitchen and kitchen related products. Using the HOWDENS mark, Complainant has sold nearly £850 million worth of merchandise, including 3.6 million kitchen cabinets, 2 million doors and 400,000 complete kitchens. Complainant's commercial customer base is approximately 250,000. Accordingly, the Panel concludes that Complainant established common law trademark rights in HOWDENS prior to the date the disputed domain name was registered, pursuant to paragraph 4(a)(i) of the Policy.
The disputed domain name, <howdenskitchens.info>, is confusingly similar to Complainant’s HOWDENS trademark because the disputed domain name incorporates the entirety of Complainant’s HOWDENS trademark, and then merely tacks on a descriptive term (i.e., “kitchens”) and the top-level “.info” domain suffix. Neither the addition of a purely descriptive term to a well-known mark nor the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity (see Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy / BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of complainant combined with a generic word or term); Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”) and thus Policy, paragraph 4(a)(i) is satisfied.
The addition of the descriptive term “kitchens” directly in front of Complainant’s HOWDENS mark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondents have no rights or legitimate interests in the disputed domain name.
Respondents have failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondents lack rights or legitimate interests in the disputed domain name (see Cliff Greenhouse / Keith Greenhouse and Pavillion Agency, Inc. v. Glenn Greenhouse and Greenhouse Agency Ltd.,, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondents have not provided any evidence that they are commonly known by the disputed domain name, or that they are commonly known by any name consisting of, or incorporating the words “howdens”, “kitchens” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondents also failed to provide any evidence that they are a licensee of Complainant or that their acquisition of the disputed domain name predates the establishment of Complainant’s rights in its HOWDENS mark.
Complainant has provided unrebutted evidence showing that Respondents have operated several different websites at <howdenskitchens.info> featuring click-through opportunities to websites operated by Complainant's competitors. Accordingly, the Panel concludes Respondents were using the disputed domain name in association with a website that competed directly with Complainant’s business interests. Furthermore, it is likely that Respondents received click-through fees each time an Internet user accessed the website at <howdenskitchens.info> and clicked on any of the numerous options available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that respondent has no right or legitimate interest in the domain name.
Complainant has also provided unrebutted evidence showing that Respondents have operated a website at <howdenskitchens.info> featuring Complainant's HOWDENS mark and related Logo. The unauthorized use of Complainant's trademark is evidence that Respondents do not have rights or legitimate interests in the disputed domain name (see Accor and Soluxury HMC v. Yu Gang, WIPO Case No. D20121593 "[i]nfringement of another's trademark or service mark can never create rights or legitimate interests in a corresponding domain name").
To the extend Respondents are now operating a passive website at the URL address for the disputed domain name, the maintenance of a passive website is further evidence that Respondents do not have rights or legitimate interests in the disputed domain name (see Riot Games Inc. v. Michael Brown, WIPO Case No. D2012-1516,"[i]n the Panel's view, Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interest in the disputed domain name").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondents registered and are using the disputed domain name in bad faith.
Currently, Respondents appear to maintain the disputed domain name as a passive website. Given the circumstances of this case, this is evidence that Respondents registered and are using the disputed domain name in bad faith (see Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260, finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose; Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, finding that respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
Even though not conclusive, further indication of bad faith registration and use is the attempt by the previous domain name holder to sell the <howdenskitchens.info> disputed domain name to Complainant for USD 1,000, an amount exceeding the cost incurred by the previous domain name holder to register and maintain the disputed domain name. This attempt to sell the disputed domain name, containing a well-known trademark of another, for profit in excess of costs associated with the registration of the domain name is further evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.
The Panel also finds that Respondents’ prior use of the disputed domain name <howdenskitchens.com> to provide click-through opportunities and the use of Complainant's HOWDENS mark on the corresponding website were attempts by Respondents to intentionally attract, for commercial gain, Internet users to Respondents’ website by creating a likelihood of confusion with Complainant’s HOWDENS mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website. This established activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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 <howdenskitchens.info> be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: December 14, 2012