Complainant is CALA Group Limited, Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom“), represented by Demys Limited, Edinburgh, United Kingdom.
Respondent is Domain Admin, No valid address, Use Email 11001, Tuvalu.
The disputed domain name <calahomes.com> (the “Disputed Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 7, 2015 the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 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.
Complainant states that it is “a British housebuilder incorporated in Scotland”; that “Complainant’s predecessor was founded in Aberdeen, United Kingdom, as a land management and feu collection company in 1875 called the City of Aberdeen Land Association (CALA), from which the Complainant derives its name”; that “Complainant was the first Scottish Company listed on the London Stock Exchange and has since grown to become a major British housebuilder”; and that it “maintains a website associated with the domain name ‘www.cala.co.uk’ which has been registered by the Complainant and its predecessors since before August 1996.”
Complainant further states, and provides evidence to support, that it is the owner of U.K. Trademark Reg. No. 2,166,240 (filed May 9, 1998; registered on December 4, 1998) for the mark CALA for use in connection with, inter alia, “houses, buildings.”
The Disputed Domain Name was created on April 14, 1999, and is being used in connection with a monetized parking page that includes links related to Complainant’s services, including “Houses for sale in UK” and “New Build Homes.”
Complainant further states, and provides evidence to support, that it sent a letter to Respondent on September 22, 2015, regarding the Disputed Domain Name, but Respondent has not replied.
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because, inter alia, Complainant is the owner of U.K. Trademark Reg. No. 2,166,240 for CALA; and inclusion of the word “homes” in the Disputed Domain Name “is entirely descriptive of the Complainant’s business, is wholly generic and does nothing to distinguish the disputed domain name from the Complainant’s CALA mark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered on unregistered trademarks”; “Respondent’s use of the Disputed Domain Name cannot be construed as legitimate noncommercial or fair use, given the use of the disputed domain name for commercial purposes through its association with monetized advertising”; “given the fame of its mark there is no conceivable use to which the Disputed Domain Name could be put now, or in the future, that would confer any legitimate interest upon the Respondent, given the confusing similarity of the Disputed Domain Name to said marks”; and “given the pay per click advertising links capitalize on the value of Complainant’s mark, as incorporated in the disputed domain name, the related advertising does not and cannot confer any legitimate interest on Respondent.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name” and, therefore, “it is highly probable that the Respondent registered and is using the disputed domain name in bad faith for the primary purpose of disrupting Complainant’s business in terms of paragraph 4(b)(iii) of the Policy”; “it is well established under the Policy that in most circumstances the display of pay-per-click advertising in association with a domain name in which a complainant’s trademark is the dominant element is sufficient on its own for a finding of registration and use in bad faith”; and “there is no manner in which the disputed domain name could be used in association with related pay-per-click advertising by the Respondent which could not be considered use in bad faith,” especially because “the pay-per-click advertising currently displayed targets the Complainant, its Rights and activities.”
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. Policy, paragraph 4(a).
Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the CALA trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CALA trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “calahomes”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
It is obvious that the Disputed Domain Name contains both the CALA trademark in its entirety plus the word “homes”. The addition of certain words, as here (that is, “homes”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “homes” is associated with the CALA Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017 (finding the domain name <gucci-jewelry.com> confusingly similar to the trademark GUCCI).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered on unregistered trademarks”; “Respondent's use of the disputed domain name cannot be construed as legitimate noncommercial or fair use, given the use of the disputed domain name for commercial purposes through its association with monetized advertising”; “given the fame of its mark there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interest upon the Respondent, given the confusing similarity of the disputed domain name to said marks”; and “given the pay per click advertising links capitalize on the value of the Complainant’s mark, as incorporated in the disputed domain name, the related advertising does not and cannot confer any legitimate interest on the Respondent.”
Under the Policy, “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 UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraphs 4(b)(iii) and 4(b)(iv), given that the Disputed Domain Name is being used by Respondent in connection with a monetized parking page that displays links for services related to Complainant’s CALA trademark. Numerous panels have found such conduct to constitute bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainant has proven the third element 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 name <calahomes.com> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: November 30, 2015