The Complainant is Halfords Limited of Worcestershire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by HGF Limited, United Kingdom.
The Respondent is Mark John Willcox of London, United Kingdom.
The disputed domain name <halfords-group.com> (the “Domain Name”) is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2015. On August 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2015.
The Center appointed David Taylor as the sole panelist in this matter on September 24, 2015. 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 a retailer based in the United Kingdom specializing in automotive and cycling products and accessories. It is the registered proprietor of a number of United Kingdom and International trade mark registrations covering various states in the European Union and countries across the globe for HALFORDS dating back to 1955. By way of example, the Complainant’s trade mark registrations include:
- UK trade mark registration No. 739238 for HALFORDS covering class 12;
- UK trade mark registration No. 2509709 for HALFORDS covering classes 12, 35 and 37;
- International trade mark registration No. 534962A for HALFORDS, covering, inter alia, classes 12 and 16; and
- International trade mark registration No. 885702 for HALFORDS, covering, inter alia, classes 12 and 16.
The Complainant also has Common Law rights in HALFORDS based on its use since as early as 1904. The Complainant is a subsidiary of the ultimate holding company, Halfords Group plc, a company registered in the United Kingdom. The Complainant’s main retail website is “www.halfords.com” and the corporate website of the holding company is “www.halfordscompany.com”.
The Domain Name was registered on July 9, 2015. It is redirecting either to a registrar holding page or to the Complainant’s website at “www.halfords.com”, depending on whether the “www” is entered or not in the URL.
The Respondent appears to have been the respondent in a prior domain name dispute proceeding involving the Complainant’s trade marks (see Halfords Limited v. Mark John Willcox, WIPO Case No. D2015-0776).
The Complainant contends that the Domain Name is confusingly similar to its HALFORDS trade marks. It contends that the Domain Name is dominated by the word “halfords” and that the descriptive term “group” as well as the hyphen between both terms and the “.com” are non-distinctive elements. Furthermore, the Domain Name consists of the name of the Complainant’s holding company, Halfords Group. The Complainant contends that consumers, suppliers, or other operators within the market will undoubtedly make an economic and commercial connection between the Complainant’s trade marks and the Domain Name and will assume that the Respondent is in some way affiliated to the Complainant or is indeed the Complainant. Thus, the Domain Name is confusingly similar to the Complainant’s trade marks.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. It argues that the Respondent is not an employee of the Complainant nor has he been authorised by the Complainant to use or register the Domain Name. The Complainant further argues that given the Respondent’s name, it does not appear that the Respondent is known by the name “Halfords” or “Halfords Group”. The Complainant further asserts that the Respondent has not made any legitimate noncommercial or fair use of the Domain Name given that it is resolving to a registrar holding page or redirecting to the Complainant’s official website available at “www.halfords.com”. The Complainant contends that the Respondent does not have any legitimate interests in the Domain Name and it is likely being used or is intended to be used as an “instrument of fraud”.
The Complainant also contends that the Domain Name was registered and used in bad faith. The Complainant asserts that the Domain Name was registered with the intent to prevent the Complainant from reflecting its trade marks in a corresponding domain name, and that the Respondent appears to have made a pattern of bad faith registrations, including, for instance, <dixons-currys.com> as well as other domain names consisting of the Complainant's trade marks, such as <halfordsltd.com> (see Halfords Limited v. Mark John Willcox, supra., which was transferred to the Complainant further to a prior domain name dispute proceeding). The Complainant further contends that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant because the Respondent undoubtedly would have been aware of the Complainant’s activities. The Complainant also contends that it appears that the registration details given for the Domain Name are false, as the address does not seem to exist and the telephone number is not in operation.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows:
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence of its trade mark registrations for HALFORDS. The Panel is therefore satisfied that the Complainant has established trade mark rights in the term HALFORDS.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade marks. The Panel notes that the Domain Name incorporates the Complainant’s HALFORDS trade marks in conjunction with the descriptive term “group” and a hyphen between both terms. The Panel finds that neither the descriptive term “group” nor the hyphen in the Domain Name is sufficient to diminish the confusing similarity with the Complainant’s HALFORD marks, incorporated as the dominant component of the Domain Name.
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name, as it is a functional element.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade marks.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
“(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 non-commercial 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.”
Whilst the overall burden of proof rests with the complainant, it has been recognized by panels deciding under the Policy that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See paragraph 2.1 of the WIPO Overview 2.0.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has stated that it has not authorised the Respondent to make any use of its trade marks. There is no indication that the Respondent is “commonly known” by the Domain Name. In addition, the Respondent’s use of the Domain Name to resolve to a registrar holding page or to the Complainant’s official website at “www.halfords.com” is neither use in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
“(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 web site or location or of a product or service on your web site or location.”
The Panel accepts the Complainant’s submission that the Respondent must have been aware of the Complainant’s rights at the time of registration of the Domain Name. The Complainant’s HALFORDS trade marks have been used extensively since well before the Domain Name was registered and also enjoy considerable goodwill and renown in the United Kingdom, where the Respondent also appears to be based. The Respondent’s subsequent use of the Domain Name redirecting Internet users to the Complainant’s own website available at “www.halfords.com” is indicative of the Respondent’s awareness of the Complainant and its rights. The Panel therefore finds that, in the circumstances of this case, the Respondent’s awareness of the Complainant’s rights at the time of registration of the Domain Name is a strong indication of bad faith.
Such an inference of bad faith is further supported by the Respondent’s demonstrated pattern of abusive domain name registrations, including other domain names consisting of the Complainant’s trade marks. See, for instance, Halfords Limited v. Mark John Willcox, supra.. Accordingly, the Panel finds that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its trade marks in the corresponding domain name, and has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy.
The Respondent’s use of the Domain Name to resolve to a registrar holding page or to the Complainant’s own website cannot constitute a legitimate use and further supports such an inference of bad faith. Furthermore, the Respondent’s failure to take part in the present proceedings is also telling. SeeWal-Mart Stores, Inc. v. Legal Department, WIPO Case No. D2008-1243.
The Panel therefore finds that the Domain Name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied 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 Domain Name <halfords-group.com> be transferred to the Complainant.
David Taylor
Sole Panelist
Date: October 9, 2015