The Complainant is Kingfisher PLC, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondents are John Richard, Name Redacted, Name Redacted, United Kingdom.1
The disputed domain names <kingfisher-corporation.com>, <kingfisher-groups.com>, <kingfisher‑order.com>, and <kingfisher-support.com> are registered with Combell NV (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names <kingfisher-corporation.com>, <kingfisher-groups.com>, and <kingfisher-support.com>. On December 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <kingfisher-corporation.com>, <kingfisher-groups.com>, and <kingfisher-support.com> which differed from the named Respondent and contact information in the Complaint. On January 4, 2022, the Complainant replied to the Registrar, stating that the Registrar had sent the wrong information for the disputed domain name <kingfisher-corporation.com>. On January 6, 2022, the Complainant requested to add the domain name <kingfisher-order.com> to the case. On January 14, 2022, the Center sent an email communication to the Registrar, asking to provide the correct information for the disputed domain name <kingfisher-corporation.com>, as well as for the new disputed domain name <kingfisher-order.com>. On January 17, 2022, the Registrar provided the correct information for the disputed domain names. The Center sent an email communication to the Complainant on January 18, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2022.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 26, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 16, 2022.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 23, 2022. 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 Complainant is an international home improvement company. Its brands include Screwfix, B&Q, and Castorama. The Complainant has over 1,400 stores with over 80,000 employees and recent annual sales in the region of GBP 12.3 billion.
The Complainant is the owner of numerous trademarks of which the following are representative for the purposes of the present proceeding:
KINGFISHER, European Union trademark, registered on December 19, 2002, registration number 001539139, in classes 35, 36, 41, and 42;
KINGFISHER, United Kingdom Intellectual Property Office (“UKIPO”) Trade Mark, registered on December 19, 2002, registration number UK00901539139, in classes 35, 36, 41, and 42; and
KINGFISHER, UKIPO Trade Mark, registered on January 30, 2004, registration number UK00002261399, in class 16.
The Complainant also owns and uses the website “www.kingfisher.com” for online sales.
No background information of significance is known about the Respondents except for such contact information as was provided to the Registrar in order to register the disputed domain names on October 27, 2021 (<kingfisher-groups.com> and <kingfisher-corporation.com>); on November 10, 2021 (<kingfisher‑support.com>); and on November 30, 2021 (<kingfisher-order.com>). The disputed domain names resolve to hosting service parking pages. They have however been used as email addresses in order to send messages purporting to be in the name of the Complainant.
The Complainant submits that all four disputed domain names, irrespective of being registered variously to three apparently different names and addresses, are effectively under common control. The Complainant submits that, in accordance with paragraphs 3(c) and 10(e) of the Rules, the Complaints should be consolidated into a single proceeding.
The Complainant contends the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. Each disputed domain name comprises of the Complainant’s trademark and a descriptive term, namely “support”, “groups”, “corporation”, or “order”, being words plausibly associated with the business or structure of the Complainant.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant says the disputed domain names could never be used for a legitimate purpose except by the Complainant and were registered in order to confuse people into believing they belonged to the Complainant.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith. The disputed domain names have been used for the purpose of sending emails purporting to come from the Complainant, apparently signed by the name of an actual employees of the Complainant, to third party suppliers of goods, with the intention of ordering goods on credit for delivery to spurious addresses. The Complainant says it has been advised by various suppliers on at least 17 different occasions that the Responds used the disputed domain names to imitate the Complainant and to attempt to order goods. The name of an actual employee of a Complainant subsidiary company was given as the registrant of one disputed domain name.
The Complainant requests the transfer of the disputed domain names.
The Respondents did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy states that the Respondents are required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 10(e) of the Rules states: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” The Complainant has requested that the proceedings in respect of all four disputed domain names shall be consolidated into a single case.
Paragraph 3(c) of the Rules states:
“The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
In order to accept that the Complaints be consolidated, the Panel must be convinced by the evidence that the disputed domain names are effectively under the control of a single entity. In the present instance, the Complainant has advanced the following reasons, which it is appropriate to reproduce verbatim (the names of the Complainant’s employees have been redacted by the Panel, and domain names have been bracketed conventionally):
“a. there are multiple similarities in the registrant details provided by WIPO. The address and phone number provided for <kingfisher-support.com> and <kingfisher-order.com> are identical, both using the Complainant’s own address and using the name [redacted (1)] who is an employee of the Complainant (and who is being impersonated by the Respondent as detailed below). Neither the Complainant nor [redacted (1)] registered these domains or consented to their details being used, therefore the details are not legitimate;
b. the phone number provided for <kingfisher-groups.com> and <kingfisher-corporation.com> are also identical, suggesting they were registered by the same individual(s);
c. the Registrant name provided for <kingfisher-groups.com> is [redacted (2)]. [Redacted (2)] is an employee of Screwfix Ltd, a company owned by the Complainant. Screwfix itself have had very similar issues with fraudulently registered domains being used to contact suppliers perpetrating to be a legitimate employee of Screwfix, as is the case with the Respondent. Screwfix has completed successful WIPO complaints previously in this regard. The Complainant believes the respondent(s) in previous complaints filed by Screwfix may now be targeting Kingfisher, as an associated company. This is illustrated by the use of the name [redacted (2)], who, as stated above, is a real employee of Screwfix but did not registered <kingfisher-groups.com> or any of the other Disputed Domain Names;
d. the email address <info@screwfix-store.com> is provided for <kingfisher-corporation.com>. As explained above, Screwfix is owned by the Complainant and in fact the <screwfix-store.com> domain name is the subject of a different WIPO complaint submitted November 4, 2021. This indicates the same individual(s) have targeted both the Complainant and Screwfix using multiple fraudulent email addresses and contact details, including the Disputed Domain Names, to mask their identity; and
e. [a]s detailed below, the activity and emails arising from all of the Disputed Domains Names is the same. It also inconceivable that the wording used in the emails sent from all four of the Disputed Domain Names could have be written by different individuals. For example, the first line of each initial email sent to supplier from email accounts associated with all four of the Dispute Domain Names, begins with the identical wording of ‘Kingfisher plc is a British multinational retailing company headquartered in London, with regional offices located across the United Kingdom, France and its brands include B&Q, Castorama, Brico Dépôt and Screwfix. Kingfisher is listed on the London Stock Exchange, and is a constituent of the FTSE 100 Index.’ The email then goes on to order a quantity of products from the supplier, using identical wording each time. Each email also signs off as [redacted (1)]; and
f. the Disputed Domain Names were registered within an extremely close time frame to each other, using the same host and same registrar. The Disputed Domain Names all take on a similar format that uses the Complainant’s trademarks along with one other descriptive word, separated by a hyphen.
Accordingly, the Complainant respectfully asks the Centre to deal with the complaint in relation to the Disputed Domain Names collectively.”
The Panel has duly considered the criteria for consolidation advanced by the Complainant, and has done so in the light of the 11 typical criteria reviewed at section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is noted that no Respondent has contested the request for consolidation. On the totality of the evidence, and taking into account the Complainant’s submissions, the Panel finds it to be more probable than not that all four disputed domain names have been registered and are being used under common control. Proceedings in respect of all four disputed domain names will therefore be consolidated.
The Respondents will be referred to hereafter in the singular.
The Panel is satisfied by the evidence produced that the Complainant has the requisite rights under the Policy in the registered trademark KINGFISHER.
Each of the disputed domain names features prominently the Complainant’s trademark and is to that extent found to be confusingly similar to the trademark. None of the additional words, variously “support”, “groups”, “corporation”, or “order”, are found to prevent a finding of confusing similarity. The generic Top-Level Domain (“gTLD”), “.com”, need not be taken into account. The disputed domain names are found to be confusingly similar to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.
The Complainant has stated a prima facie case to the effect that the Respondent cannot use the disputed names for any legitimate purpose and cannot have any rights or legitimate interests in them.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 trademark 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 trademark or service mark at issue.”
The Respondent has not asserted any rights or legitimate interests in any of the disputed domain names under the provisions of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise, and the Panel cannot conceive of any likelihood that it could. The use of the disputed domain names in furtherance of various fraudulent email schemes cannot confer rights or legitimate interests upon the Respondent. See section 2.13 of the WIPO Overview 3.0. Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant must prove under paragraph 4(a)(iii) of the Policy that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy states four illustrative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The disputed domain names do not resolve to active websites, but to parking pages. The disputed domain names have, however, been used as email addresses, either to make initial contact and in subsequent correspondence with suppliers, or after initial contact was made from a different address. The Complainant has produced in evidence a dossier of such emails forwarded to it by various suspicious third party suppliers who recognised, either immediately or after some correspondence, that the email was dressed up to look as though it came from the Complainant, but did not. Many of the Respondent’s initial emails to suppliers had the following common format:
“Good day,
Kingfisher plc is a British multinational retailing company headquartered in London, with regional offices located across the United Kingdom, France and its brands include B&Q, Castorama, Brico Dépôt and Screwfix. Kingfisher is listed on the London Stock Exchange, and is a constituent of the FTSE 100 Index.”
The emails then broached the ordering of goods. For example, one of them continued:
“We would be glad to order a large quantity of face-masks as we intend to start a long time business partnership with your company. Could you please send us your catalog or stock-list?
Do not hesitate if you need any further information.
Best regards,”
The emails were signed “[redacted (1)] Purchasing Director - Partnership Services”, together with the Complainant’s authentic website address, telephone and fax numbers, but in fact came not from the Complainant but from the Respondent.
In one instance, conducted through an email address at the disputed domain name <kingfisher-support.com>, a series of email exchanges led to an attempt by the Respondent to place a large order for decorative flooring materials, to be delivered on credit. One of the Respondent’s emails to this supplier said: “We are interested in working with your company but our Payment Terms is by swift payment 30 days after delivery. We’ve operated according to this payment policy with all our suppliers.” Delivery was to be made to an address that does not correspond to the Complainant’s.
The same delivery address was provided in an email sent to another supplier from an email address at the disputed domain name <kingfisher-corporation.com> in an attempt to order an industrial quantity of hygiene products.
The totality of the evidence (or in respect of the disputed domain name <kingfisher-order.com>, the Complainant’s uncontested statement), includes: the incorporation of the Complainant’s trademark in the disputed domain names together with misleading generic terms; the identical nature of phraseology used in initial emails from the Respondent to different suppliers from different email addresses; the impersonation of the Complainant with the name of a real employee of the Complainant in the signatures; and signatures displaying the Complainant’s authentic website address, telephone and fax numbers as they appeared in the Complainant’s website.
It may reasonably be concluded that the Respondent intended at least some recipients of its emails to be deceived into believing they were in communication with the Complainant. Had the suppliers checked the website shown, they would indeed have been directed to that of the well-established Complainant, but any reply to the originating address of the email or to the reply address provided would have been received by the Respondent. Furthermore, some suppliers were actually deceived, at least initially. The inescapable conclusion is an intention on the part of the Respondent that quantities of valuable materials that the suppliers would think they were sending to the Complainant would be diverted into the hands of the Respondent. The Respondent has not replied with any evidence of any intention to pay for the goods.
In the terms of paragraph 4(b)(iv) of the Policy, the Panel finds on the evidence and on the balance of probabilities that each of the disputed domain names has been used as the Respondent’s email address and online location with intent to attract Internet users by confusion with the Complainant for the purpose of commercial gain, constituting use in bad faith. The Panel further finds each disputed domain name to have been registered for the purpose for which it has been used. Accordingly the Panel finds the disputed domain names to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the policy.
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 names <kingfisher-corporation.com>, <kingfisher-groups.com>, <kingfisher-order.com>, and <kingfisher-support.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: March 5, 2022
1 The Respondent appears to have used the name of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondents’ name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondents. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.