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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Contact Privacy Inc. customer 0133835213 / ICS INC.

Case No. D2013-0927

1. The Parties

Complainants are National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Squire Sanders (UK) LLP, United Kingdom of Great Britain and Northern Ireland.

Respondent is Contact Privacy Inc. customer 0133835213 of Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, British Overseas Territory of United Kingdom of Great Britain and Northern Ireland

2. The Domain Name and Registrar

The disputed domain name <www1nationalgridus.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2013, 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 Complainants on May 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on May 28, 2013.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2013.

The Center appointed Ross Carson as the sole panelist in this matter on June 27, 2013. 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.

4. Factual Background

Complainants form part of the National Grid Group of Companies (“the Group”), one of the largest privately owned utilities worldwide. National Grid Electricity Transmission Plc is an operative company within the Group, while NGrid Intellectual Property Limited is the Group’s IP holding company.

Complainants form an international electricity and gas group of companies, which is one of the largest investor owned energy companies in the world. Complainants own and, via its subsidiaries, operate electricity and gas transmission networks in the United Kingdom and in the northeastern parts of the United States. Complainants’ subsidiaries also provide installation, maintenance and meter reading services to gas and electricity suppliers in the regulated and unregulated markets. Complainants’ principle operations also comprise the provision of liquefied natural gas facilities and property as well as electrical interconnectors

Complainants are owner of various trademark registrations and applications for the mark NATIONAL GRID and NATIONALGRID in the United Kingdom, European Union (Community trade marks), Canada and the United States (and in other jurisdictions). The above trademarks NATIONAL GRID and NATIONALGRID (with variations) are the property of Complainants for a wide range of goods and services related to the operation of a major utility company.

Complainants are the owner of United States Trademark Registration No. 4099285 for NATIONALGRID registered on the Principal Register on February 14, 2012 in relation to goods and services in IC 4, 9, 16 and 35 to 40 and 42. The registration shows a first use date of March 31, 1990 and a first use in Commerce date of May 17, 2000 in relation to goods and services in some of the above noted classes

Complainants are also the owner of United States Trademark Registration No. 4247767 for NATIONALGRID THE POWER OF ACTION, design plus words registered on the Principal Register on November 27, 2012 in relation to goods and services in IC 7, 9, 11, 16 and 35 to 40 and 42.

Complainants’ trademarks enjoy a significant reputation in the United Kingdom and the northeastern United States and are well-known amongst professionals of the utility industries as well as end consumers.

Complainants are the owner of numerous domain names incorporating their trademarks NATIONALGRID including the domain name <nationalgridus.com> created on April 15, 1999.

The disputed domain name <www1nationalgridus.com> was created on March 17, 2013.

The disputed domain name resolves to a webpage incorporating links to subjects such as: Safety Training, National Grid, Osha Training, Home Health, National Grid Us, Training Videos, Food, Fire Safety, Food Safety and Safety Gloves. The live links resolve to advertising pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent. The webpage also advertises that the disputed domain name is for sale.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainants state that it is the owner of numerous trademark registrations for the trademarks NATIONAL GRID and NATIONALGRID in the United Kingdom, European Union (Community trade marks), Canada and the United States (and in other jurisdictions). The above trademarks NATIONAL GRID and NATIONALGRID (with variations) are the property of Complainants for a wide range of goods and services related to the operation of a major utility company as set out in Section 3 immediately above.

Complainants submit that the disputed domain name <www1nationalgridus.com> is confusingly similar to Complainants’ widely used trademarks NATIONAL GRID and NATIONALGRID. The disputed domain name incorporates Complainants’ trademarks in their entirety with the non-distinctive prefix “www1”, aimed at users misspelling “www.[...]”, and the suffix “us” as reference to Complainants’ US-website “www.nationalgridus.com”. Therefore, the overall impression is that Complainants’ trademarks are the dominant part of the disputed domain name.

A.2. No Rights or Legitimate Interests in Respect of the Disputed Domain Name

Complainants submit that Respondent has no rights or legitimate interests in the disputed domain name as it is not affiliated with Complainants or licensed to use Complainants’ trademarks. Respondent is not commonly known by the disputed domain name nor has it acquired any trademark rights in the name through a bona fide offering of goods or services. Respondent uses the disputed domain name to link to external sites including sponsored listings, which is not bona fide use. Instead, the practice to use Complainants’ trademarks for the disputed domain name aimed at users misspelling Complainants’ US-website “www.nationalgridus.com” must be considered as unfair use resulting in misleading diversion.

Since Complainants have made out a prima facie case that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the disputed domain name.

A.3. Registration in Bad Faith

Complainants state that the disputed domain name was registered in bad faith because it is inconceivable that Respondent was unaware of Complainants’ rights in their trademarks NATIONAL GRID and NATIONALGRID at the time of registration of the disputed domain name on March 17, 2013. One of the Complainants commenced a previous UDRP case against Respondent on March 6, 2012 with respect to the domain name <nationalgridonline.com> created by Respondent on November 16, 2011, alleging that the domain name was confusingly similar to Complainants’ trademarks NATIONAL GRID and NATIONALGRID. See: National Grid Electricity Transmission Plc v. Undisclosed customer0129436546 / ICS Inc., WIPO Case No. D2012-0352. The panel ordered that the domain name <nationalgridonline.com> be transferred to that Complainant on April 16, 2012.

A.4. Use in Bad Faith

Complainants state that paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith.

Complainants state that it relies principally on paragraph 4(b)(iv) of the Policy.

Complainants state that the disputed domain name was registered and is used in bad faith as it uses Complainants’ trademarks to attract Internet users to the website associated with the disputed domain name based on a likelihood of confusion with Complainants’ registered trademarks.

Complainants further submit that links to Complainants’ competitors’ websites generate click through revenue. Given Complainants’ prior and substantial use of their trademarks, Respondent has both actual and constructive notice of Complainants’ trademarks which shows the disputed domain name was intentionally registered to profit unfairly from the goodwill of Complainants’ trademarks.

Complainants further state that the website associated with the disputed domain name includes a link “Inquire about this domain” that enables third parties to make an offer for the purchase of the disputed domain name via the website “www.domainsponsor.com”. This shows that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants or to a competitor of Complainants for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.

In summary, Respondent’s use of the disputed domain name is a deliberate use of the confusion created by the similarity of the disputed domain name to Complainants’ trademarks. In addition, Respondent cannot be unaware that the offer to sell the disputed domain name would be most valuable to Complainants as they are most negatively affected by Respondent’s use of the disputed domain name. The offer to sell is therefore likely primarily targeted at Complainants.

B. Respondent

The Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainants 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 registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) 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.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainants. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainants’ evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainants must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainants have rights.

Complainants are owner of various trademark registrations and for the mark NATIONAL GRID and NATIONALGRID in the United Kingdom, European Union (Community trade marks), Canada and the United States (and in other jurisdictions). The above trademarks NATIONAL GRID and NATIONALGRID(with variations) are the property of Complainants for a wide range of goods and services related to the operation of a major utility company. Complainants’ trademark registrations include, inter alia, the two United States Trademark Registrations for NATIONAL GRID and NATIONALGRID” referred to in greater detail in Section 3 above.

The disputed domain name <www1nationalgridus.com> is substantially identical to Complainants’ domain name <nationalgridus.com>. The disputed domain name is comprised of the “www” the acronym for “World Wide Web”; the numeral “1”, Complainants’ trademarks NATIONAL GRID and NATIONALGRID; the term “us”, an abbreviation of the geographic area for the United States; and the (gTLD) “.com”. As Complainants operate a major utility company in association with their trademarks NATIONAL GRID and NATIONALGRID in the northeastern United States, the geographic abbreviation “us” attached in the disputed domain name is descriptive of Complainants’ business in the United States. The acronym “www” is a descriptive term. The numeral “1” suggests a variation of Complainants’ domain name <nationalgridus.com>. See: Hoffman-La Roche Inc. v. Whois Privacy Protection Service Inc., WIPO Case No. D2006-1030 in which the panel found that the domain name <1-xenical.com> was confusingly similar to complainant’s trademark XENICAL.

The inclusion of the generic Top-Level Domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Respondent’s use of the descriptive term “www”; the numeral “1”; the geographic designation “us”, and the (gTLD) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s registered trademarks NATIONAL GRID or NATIONALGRID.

The Panel finds that Complainants have established rights in the trademarks NATIONAL GRID and NATIONALGRID and the disputed domain name is confusingly similar to Complainants’ registered trademarks NATIONAL GRID and NATIONALGRID.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainants must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name <www1nationalgridus.com>.

Respondent is not affiliated with Complainants and has never been authorized by Complainants to use Complainants’ trademarks NATIONAL GRID or NATIONALGRID.

The Parties were previously involved in domain dispute proceedings concerning the domain name <nationalgridonline.com>. By decision of April 16, 2012, the panel in National Grid Electricity Transmission Plc v. Undisclosed customer 0129436546 / ICS Inc., WIPO Case No. D2012-0352 upheld the complainant’s complaint and ordered that the domain name be transferred to the complainant. The disputed domain name in this case was created by Respondent after proceedings in the above noted case between the Parties were finished.

Complainants have been using their NATIONAL GRID trademark since at least 1990 to promote their goods used in operating utilities and providing utility services. Respondent appears to have registered or acquired the disputed domain name over twenty years later.

There is no evidence that Respondent has ever been known by or used the trademark NATIONAL GRID or NATIONALGRID in association with their own goods or services. Respondent has used the disputed domain name in association with a website that resolves to a webpage incorporating links to subjects such as: Safety Training, National Grid, Osha Training, Home Health, National Grid Us, Training Videos, Food, Fire Safety, Food Safety and Safety Gloves. The live links resolve to advertising pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent. The webpage also advertises that the disputed domain name is for sale.

Previous UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda, WIPO Case No. D2001-0067.

The Panel finds that Complainants have made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainants have proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainants must prove that the disputed domain name has been registered and is being used in bad faith.

C.1. Registered in Bad Faith

In this Panel’s view, Respondent was aware of Complainants’ rights in their trademarks NATIONAL GRID and NATIONALGRID at the time of registration of the disputed domain name on March 17, 2013. One of the Complainants commenced a previous UDRP case against Respondent on March 6, 2012 with respect to the domain name <nationalgridonline.com> created by Respondent on November 16, 2011 alleging that the domain name was confusingly similar to the complainant’s trademarks NATIONAL GRID and NATIONALGRID. See: National Grid Electricity Transmission Plc v. Undisclosed customer0129436546 / ICS Inc., WIPO Case No. D2012-0352. The panel ordered that the domain name <nationalgridonline.com> be transferred to the complainant on April 16, 2012. Respondent created the disputed domain name after service of the Decision in WIPO Case No. D2012-0352.

In view of the above, the Panel finds that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The disputed domain name which is confusingly similar to Complainants’ NATIONAL GRID and NATIONALGRID trademarks resolves to a webpage incorporating links to subjects such as: Safety Training, National Grid, Osha Training, Home Health, National Grid Us, Training Videos, Food, Fire Safety, Food Safety and Safety Gloves. The live links resolve to advertising pages advertising a wide range of products and services having no connection to Complainants or reference to any goods or services offered by Respondent. Respondent is using the disputed domain name to attract Internet users to its website based on the goodwill associated with Complainants’ NATIONAL GRID and NATIONALGRID trademarks to obtain Pay-Per-Click income.

The Panel finds that Complainants have proven, on a balance of probabilities, that Respondent uses the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <www1nationalgridus.com> be transferred to Complainants.

Ross Carson
Sole Panelist
Date: July 9, 2013

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