WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Screwfix Direct Limited v. Laksh Internet Solutions Pvt. Ltd. and Private Whois Escrow Domains Pvt. Ltd.
Case No. D2008-0784
1. The Parties
Complainant is Screwfix Direct Limited (“Complainant”), incorporated in England with its registered office and principal place of business located at Yeovil, Somerset, United Kingdom of Great Britain and Northern Ireland represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland (“UK”).
Respondents are Laksh Internet Solutions Pvt. Ltd. located in Mombai, Maharashtra, India and Private Whois Escrow Domains Pvt. Ltd. located in Mombai, Maharashtra, India (collectively “Respondents”).
2. The Domain Name and Registrar
The domain name at issue is <scewfix.com> (the “Domain Name”). The registrar is Lead Networks Domains Pvt. Ltd. (the “Registrar”) located in Mombai, Maharashtra, India.
3. Procedural History
On May 19, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On May 22, 2008, the Center received hardcopy of the Complaint. On May 23, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainant.
On June 9, 2008 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Center received the Registrar’s 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 June 9, 2008 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint.
On June 13, 2008, the Center received an Amended Complaint from Complainant via email. On June 16, 2008, the Center received the Amended Complaint in hardcopy.
The Center verified that the Complaint as amended satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On June 17, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents together with copies of the Complaint, with a copy to Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules. In accordance with the Rules, paragraph 5(a), the due date of the Response was July 7, 2008. On July 8, 2008, the Center advised Respondents that they were in default for failing to file a Response. No Response has been received.
On July 11, 2008 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.
4. Factual Background
Complainant was incorporated in England under number 03006378 on January 5, 1995. Complainant is the UK’s largest direct online supplier of trade tools, accessories and hardware products. Its principal trading site is at “www.screwfix.com”.
Complainant is the proprietor of two European Community Trade Mark Registrations for the trademark SCREWFIX (the “SCREWFIX Mark”). Complainant’s business and its SCREWFIX Mark are well-known in the UK. Complainant has numerous domain names registered in the gTLD’s <.co.uk> and <.com>.
The domain name was created on August 22, 2000.
The details of the registration of the Domain Name by Respondents are not clear, as indicated by the description of Complainant’s efforts to identify Respondents set forth below.
5. Parties’ Contentions
A. Complainant’s contentions
i. Complainant contends that it has registrations in the European Community of the SCREWFIX Mark.
ii. Complainant contends that the Domain Name is confusingly similar to the SCREWFIX Mark, pursuant to Paragraph 4(a)(i) of the Policy, because when pronounced it is virtually identical to the SCREWFIX Mark and contains a strategic typographical error in the deletion of the letter “r” from the Domain Name.
iii. Complainant contends that Respondents have no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii) of the Policy, and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.
Respondents cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) of the Policy because they have not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant contends that Respondents’ creating of links to adult services and pornographic videos and Respondents’ attempts to conceal their true identity preclude any services offered by Respondents from being bona fide.
Respondents cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) of the Policy because they are not commonly known by the Domain Name. Respondents have no connection or affiliation with Complainant, and have not received any license or consent, express or implied, to use the SCREWFIX Mark in a domain name or in any other manner.
Respondents cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) of the Policy because they are not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondents have allegedly received revenues on a pay-per-click basis from the website(s) to which the Domain Name has resolved.
Complainant alleges that Respondent Private Whois Escrow Domains Pvt. Ltd registered the Domain Name on behalf of Laksh Internet Solutions Pvt. Ltd. after March 7, 2008 and before March 18, 2008 which is after the European Community Trade Marks for SCREWFIX were registered. According to the WhoIs database the registrar of the Domain Name on May 9, 2008 was Lead Networks Domains Pvt. Ltd.
On March 3, 2008, SecureWhois, Inc. was the named Registrant of the Domain Name and operated a website at the Domain Name that pointed to a pay-per-click directory site containing numerous links to goods and services (including tools and hardware) which had no connection to Complainant. Also present were links to sites containing pornographic material, including sites offering pay-per-view pornographic videos.
In an effort to obtain a sensible commercial resolution, the Complainant’s legal representatives sent a letter to SecureWhois, Inc. on March 3, 2008 alerting SecureWhois, Inc. to Complainant’s legal rights and requesting transfer of the Domain Name. The letter was sent to SecureWhois, Inc. by email and post using the administrative contact details listed on the WhoIs database at that time.
SecureWhois, Inc. failed to respond to the March 3, 2008 letter. However, a response was received from John Gallo at Tucows Inc. by email on March 14, 2008, explaining that the Domain Name was not registered through Tucows Inc. Mr. Gallo suggested that Complainant contact the current registrar. Complainant’s legal representatives tried to contact Mr. Gallo to find out if there was some link between Tucows Inc. and SecureWhois, Inc. and/or the Domain Name. Mr. Gallo could not be reached and did not respond to the emails or voicemail messages of Complainant’s legal representatives.
Complainant notes that information on the history of the Domain Name taken from Domain Tools shows that on March 7, 2008 the registrant of the Domain Name was SecureWhois, Inc. By March 18, 2008, the registrant had become Private Whois Escrow Domains Pvt. Ltd. on behalf of Laksh Internet Solutions Pvt. Ltd.
The WhoIs record shows that the registrant of the Domain Name on May 9, 2008, was Private Whois Escrow Domains Pvt. Ltd. The Complainant alleges that both SecureWhois, Inc. and Private Whois Esrow Domains Pvt. Ltd. are entities providing anonymous proxy registration services for domain name registrants. The Complainant further alleges that Laksh Internet Solutions Pvt. Ltd., the ultimate registrant in this case, was also the entity hiding behind the proxy registration services provided by SecureWhois, Inc. Complainant bases this allegation on the fact that the Domain Name was transferred to a new anonymous proxy registrant shortly after receipt of the March 3, 2008 letter and because the nature of the website located at the Domain Name at the time of this Amended Complaint remains largely similar to that of the website in its previous incarnations. Complainant provides as support extracts of the website on March 3, 2008 obtained on May 9, 2008 with those obtained on June 10, 2008.
i. Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of Paragraph 4(a)(iii) of the Policy.
Complainant argues that Respondents have violated Paragraph 4(b)(iv) of the Policy by registering and using the Domain Name to intentionally attract, for commercial gain, Internet users to their website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website(s). Complainant alleges that the website to which the Domain Name points to a pay-per-click directory site contains numerous links to websites offering various goods and services which have no connection to Complainant. These links include links to websites which contain adult related commercial services, including dating services. The website located at the Domain Name also displays pornographic imagery.
B. Respondent’s contentions
Respondents have chosen not to respond to the allegations in the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. FULL SYSTEM S.a.S, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA94957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA94925.
Even though Respondents have failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
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.
B. Enforceable Trademark Rights
Complainant contends that it has registrations in the European Community of the SCREWFIX Mark.
The Panel finds that such registrations serve as prima facie evidence of its ownership and the validity of the SCREWFIX Mark. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondents have the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Respondents have chosen not to contest the assertions by Complainant that it has valid and subsisting rights in the SCREWFIX Mark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the SCREWFIX Mark.
C. Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical or confusingly similar to the SCREWFIX Mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that the Domain Name is confusingly similar to the SCREWFIX Mark, pursuant to Paragraph 4(a)(i) of the Policy, because when pronounced the Domain Name is virtually identical to the SCREWFIX Mark and contains a strategic typographical error in the deletion of the letter “r” in the Domain Name.
Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the SCREWFIX Mark.
Therefore, the Panel finds that the Domain Name is confusingly similar to the SCREWFIX Mark pursuant to the Policy paragraph 4(a)(i).
D. Rights or Legitimate Interests.
Complainant contends that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that Respondents have no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of Paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Domain Name. Complainant has alleged that Respondents can meet none of these criteria.
Complainant argues that the actions of Respondents in attempting to hide their identity and in providing links to adult or pornographic services shows that Respondents are not engaged in any bona fide or legitimate enterprise. Complainant alleges that Respondents have no relationship with or permission from Complainant for the use of the SCREWFIX Marks.
Complainant has sustained its burden of coming forward with proof that Respondents lack rights to or legitimate interests in the Domain Name.
Respondents have chosen not to contest the allegations by Complainant that this record shows no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Panel finds that Respondents have no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
E. Registered and Used in Bad Faith
Complainant contends that Respondents registered and are using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names. Complainant alleges that Respondents’ activities establish a showing of bad faith under Paragraph 4(b)(iv) of the Policy, because they demonstrate that Respondents intentionally attempted to attract, for commercial gain, Internet users to their web site or other on-line location, by creating a likelihood of confusion with Complainant’s SCREWFIX Mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website(s).
Complainant alleges that the website to which the Domain Name resolves points to a pay-per-click directory site containing numerous links to websites offering various goods and services which have no connection to Complainant. These links include links to websites which contain adult related commercial services, including dating services. The website located at the Domain Name also displays pornographic imagery.
Respondents have chosen not to contest these allegations of bad faith. The Panel finds that Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(a) and (b)(iv).
7. Decision
The Panel concludes (a) that the Domain Name <scewfix.com> is confusingly similar to Complainant’s registered SCREWFIX Mark, (b) that Respondents have no rights or legitimate interests in the Domain Name and (c) that Respondents registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <scewfix.com> be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: July 28, 2008