The Complainant is Hydrobolt Limited, Wolverhampton, United Kingdom of Great Britain and Northern Ireland, represented by Martineau, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Billington Bolt, Wolverhampton, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hydrobolt.com> is registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 6, 2008, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On August 8, 2008, Easyspace 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”), 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 the Respondent of the Complaint, and the proceedings commenced on August 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 4, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on September 16, 2008. 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
Since February 2002, the Complainant has owned registered trademarks in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) for HYDROBOLT and HYDRO BOLT under trade mark number 2239198. These marks were originally registered in December 2000.
5. Parties’ Contentions
A. Complainant
The Complainant acquired the rights to the trademarks referred to above and the business originally named Hydrobolt in February 2002. Hydrobolt and its successor owners including the Complainant have extensively used and promoted the HYDROBOLT trademark continuously since 1991 when the business was founded. The Complainant’s website prominently features the HYDROBOLT trademark and provides information about the Complainant’s activities and products. As a result of this, the Complainant owns common law trade mark rights to the HYDROBOLT trade mark dating from around 1991 and registered rights in the United Kingdom from July 13, 2000, the date of the formal assignment of the HYDOBOLT registered trademark to the Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the HYDROBOLT or HYDRO BOLT trade mark and neither the Complainant nor the previous owners of its Hydrobolt business authorized the Respondent to apply for or register any domain name that incorporated any of the HYDROBOLT trade marks. The Complainant’s own website predates registration of the domain name in issue and incorporated the HYDROBOLT trademark. The Respondent has not conducted any prior business under the name HYDROBOLT or HYDRO BOLT in connection with the bona fide offering of goods or services.
The Respondent was aware of the Complainant’s trade mark rights prior to it registering the domain name in issue. The Respondent’s address is in the same town and physical locality as that of the Complainant and the Respondent was in a competing business to the Complainant. The Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant by preventing the Complainant from reflecting the HYDROBOLT trade mark in a corresponding generic top level domain name. The Respondent ought to have known or should have made enquiries as to the Complainant’s rights.
The Respondent’s bad faith is further demonstrated by its inaction, its passive holding of the domain name to the exclusion of the Complainant. Since registration of the domain name in issue, the domain name has directed users to a website advertising the services of the registrar with which the domain name in issue is registered. The website has not been actively used by the Respondent for several years.
However, as at the date of the Complaint, the domain name in issue directs users to a site that advertises the web sites of businesses that compete with or operate in related fields to that of the Complainant. This is a feature of the sponsored listings that appear on the site, which are provided by Sedo. Sedo provides a domain name parking service. Its homepage describes its service:
“Domain Parking is a simple way to earn money from your domains’ natural traffic. If you have registered domain names, but they are not currently being used, then domain parking is a great way to put those domains to work earning you revenue. You can make money without even lifting a finger! The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements you earn money.
Sedo’s self-optimisation tools help you ensure that relevant advertisements are displayed on your parked domains.”
The Respondent is likely to profit from the diversion of Internet users attracted to the website of the disputed domain name by creating a likelihood of confusion with the Complainant’s mark and that this is the Respondent’s intention. The test is whether the objective effect of the Respondent’s conduct is to free-ride on the Complainant’s goodwill.
The disputed domain name is being used to attract Internet users to the Respondent’s website for commercial gain and the Respondent is responsible for whatever is posted on the website.
The Respondent knew perfectly well when it registered the domain name in issue that it was likely to be taken by many people as a reference to the Complainant and that people accessing a website by reference to the domain name in issue may well be confused as to the source, sponsorship, affiliation or endorsement of the website.
The Respondent’s use in bad faith is further demonstrated by its failure to reply to the letters written to it by the Complainant’s authorized representative.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark and the generic suffix “.com”. It is confusingly similar to a trademark in which the Complainant has rights.
It is irrelevant that the domain name was registered before the trademark. The Policy only requires to the domain name to be confusingly similar to a trademark in which the Complainant “has” rights at the time of filing the complaint. As the panel said in MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598:
“These trademarks are sufficient for the purposes of the Policy, paragraph 4(a)(i), although it is noteworthy that they are quite recent and do not appear to predate the registration of the domain name in question.”
B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has not asserted any rights or legitimate interests in that name, e.g. under paragraph 4(c) of the Policy.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The use of the common word “bolt” in the Respondent’s name does not mean that the Respondent has any rights over the name “hydrobolt” which combines the word “bolt” with “hydro”, a word derived from the Classical Greek word for “water”. It is the combination of the two words that gives the Complainant’s mark and the disputed domain name their distinctive character. None of this is reflected in the Respondent’s name.
C. Registered and Used in Bad Faith
The word “hydrobolt” is not a common English word. It appears only to be used in connection with the Complainant’s business. The Complainant has asserted plausibly that the only reason why the Respondent registered the disputed domain name was because it knew of the trade name and mark HYDROBOLT. The Respondent has indicated no other reason for the registration. At best, the Respondent appears to have registered a domain name in order to reflect a trade name being used by another company located in the same town. While the trademark had not been registered at that point, (the application was made a month after the registration), it is reasonable to assume that the only point of the registration was to stop another company reflecting its business name in a website. The Respondent has not disputed these assertions. In the circumstances, the Panel finds that the website was registered in bad faith.
The domain name appears to have been passively held by a company which knew of the Complainant’s existence and its probable trademark rights over the name. That alone justifies a finding of bad faith use. The fact that the Respondent appears now to be exploiting what it must know is the Complainant’s trademark to attract visitors to the Respondent’s website and seeks to profit through this from click-through revenue further supports a finding of bad faith use.
For all these reasons, the Panel concludes that the domain name in dispute was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hydrobolt.com> be transferred to the Complainant.
Adam Samuel Sole Panelist
Date: September 30, 2008
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