WIPO Domain Name Decision: D2006-1309

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Screwfix Direct Ltd v. Ajay Kaler

Case No. D2006-1309

1. The Parties

The Complainant is Screwfix Direct Ltd, Yeovil, Somerset, United Kingdom of Great Britain and Northern Ireland represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ajay Kaler, Luton, Beds, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <screwfix.mobi> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2006. On October 11, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On October 11, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 the Respondent of the Complaint, and the proceedings commenced on October 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2006.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 28, 2006. 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.

On October 31, 2006 the Complainant made a supplemental filing with the Center. This consisted of copies of the trademark certificates referred to in the Complaint which had inadvertently been left out of the annexes thereto. On the basis that this filing was made during the Respondent’s period of notice of the Complaint and the Respondent has not objected to the late filing, the Panel is content to admit the supplemental filing as though the documents contained therein had been filed along with the Complaint.

4. Factual Background

The Complainant was incorporated in England under number 03006378 on January 5, 1995. The Complainant is a direct online supplier of trade tools, accessories and hardware products. Its principal trading site is at “www.screwfix.com”.

The Complainant is the proprietor of two Community Trademark registrations for the name SCREWFIX, namely:

000646133 registered February 28, 2000 in Classes 6, 8 and 9 and 002231876 registered May 2, 2003 in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 35 and 37.

The Complainant’s business and SCREWFIX trademark are well known in the United Kingdom.

The Respondent, a previous customer of the Complainant, registered the disputed domain name on September 26, 2006.

On September 28, 2006, the Respondent approached the Complainant by email to invite offers to purchase the disputed domain name. The email stated “…I have recently acquired screwfix.mobi domain name for mobile based websites. I am sure as you are aware of the significance of this (4 x as many mobile phones as PCs) so the potential is huge, if you are interested in purchasing the domain name off me I am interested in offers…”.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademarks.

The Complainant submits that none of the elements of paragraph 4(c) of the Policy applies. The Complainant has not granted the Respondent any licence to use the trademark SCREWFIX in any way at all. The Respondent registered the disputed domain name simply because he knew it to be the trademark of the Complainant and intended to make a profit by selling it to the Complainant.

The Complainant contends that this is the kind of straightforward case of cybersquatting for which the Policy was devised. The Complainant is the owner of the well known trademark SCREWFIX. The Respondent, a customer of the Complainant, knew perfectly well that SCREWFIX was a trademark of the Complainant and deliberately registered it as the disputed domain name knowing that he had no rights or legitimate interests in respect of it and with a view to selling it to the Complainant at a profit. The terms of his offer to sell to the Complainant are such that he was clearly setting out to rack up the figure on the back of what he knew would be a very valuable domain name for the Complainant. Paragraph 4(b)(i) of the Policy applies.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:

(i) That the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the registered trademark SCREWFIX (Community trademarks number 6461333 registered February 28, 2000 and 2231876 registered May 2, 2003, both for the word mark SCREWFIX in varying use classes). When these marks are compared to the disputed domain name, it can be seen that it is identical to the Complainant’s trademarks given that the generic top level domain (gTLD) “.mobi” can be disregarded for the purposes of comparison on the basis that it is wholly generic.

Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the Complainant has proved the first element required under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] 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 trademark or service mark at issue.”

The Complainant asserts that none of the elements of paragraph 4(c) of the Policy applies and confirms that it has not granted the Respondent any licence to use the trademark SCREWFIX. The Complainant suggests that the Respondent registered the disputed domain name because he knew it to be the trademark of the Complainant and intended to make a profit by selling it to the Complainant. In the absence of any apparent explanation from the Respondent, the Panel agrees with the Complainant’s assessment. The Respondent’s motivation in registering the disputed domain name to sell it to the Complainant does not confer any rights or legitimate interest therein and consequently the Panel finds that the Complainant has proved the second element required under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name is identical to the Complainant’s name and trademark and appears to the Panel to be uniquely referable to the Complainant and not to the Respondent. Furthermore, the correspondence between the Respondent and the Complainant’s personnel is highly indicative of the Respondent’s motivation in registering the disputed domain name; within a mere two days of its registration the Respondent approached the Complainant to invite offers for purchase. The Complainant has also demonstrated that the Respondent would have had no doubt as to the nature of the Complainant’s rights in the SCREWFIX name and trademarks on the basis that the Respondent is a previous customer of the Complainant. The email address used by the Respondent to communicate with the Complainant regarding the disputed domain name is in fact exactly the same email address for the Respondent as is held by the Complainant on its customer database.

Paragraph 4(b) of the Policy lists certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(i) provides:-

“(i) circumstances indicating that you [Respondent] 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 trademark 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;”

While the Respondent did not expressly seek an amount in excess of his out-of-pocket costs for the disputed domain name, it is clear in the Panel’s view that he fully intended to do so. This is demonstrated by the fact that the Complainant offered to pay the Respondent’s registration and transfer costs in its second email to him and the Respondent rejected that proposal. In the Panel’s view, all of the circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant in the manner contemplated by paragraph 4(b)(i) of the Policy.

The Panel considers that it is reasonable to infer from the evidence presented by the Complainant that the disputed domain name has been registered and is being used in bad faith and consequently that there is a case for the Respondent to answer. The Respondent has chosen not to provide any alternative explanation for such registration and use. The Panel therefore finds that the Complainant has proved the third element required under paragraph 4(a) of the Policy.

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 disputed domain name <screwfix.mobi> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist

Dated: December 12, 2006