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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Premier Farnell PLC v. Gioacchino Zerbo

Case No. D2007-1208

1. The Parties

The Complainant is Premier Farnell PLC, Forge Lane, Leeds, United Kingdom of Great Britain and Northern Ireland, represented by Walker Morris Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Gioacchino Zerbo, Senna Comasco, Italy.

2. The Domain Name and Registrar

The disputed domain name <farnel.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2007. On August 20, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On August 21, 2007, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification of August 28, 2007 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 31, 2007. On September 3, 2007, the Center verified that the Complaint, together with the amendment to 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 September 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2007

The Center appointed Philippe Gilliйron as the sole panelist in this matter on October 8, 2007. 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

The Complainant is the right holder of numerous word trademarks around the world consisting of the word “farnell”. Such is the case in particular of Italy, where the word trademark FARNELL was registered on December 10, 1992 with a priority date of May 24, 1990 in class 9 for electric and electronic components, being the area of business of the Complainant. The registration was renewed on September 1, 2000.

The domain name <farnel.com> was registered on April 11, 2003 and is currently owned by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that FARNELL is an internationally recognized brand.

According to the Complainant, the domain name is phonetically identical and visually confusingly similar to its FARNELL trademark. The mere difference, i.e. the absence of the final “l”, would be irrelevant as that letter is silent in English.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent did not bring any evidence that he was using or intended to use the domain name in good faith. He is not commonly known by the domain name and is not making any legitimate non-commercial use of the domain name, as he merely diverts consumers to websites of the Complainant’s competitors.

Finally, the Complainant alleges that the domain name was acquired and is being used in bad faith. The website itself infringes the Complainant’s trademark as it mentions “Farnell Electronics Components” and “Farnell electronics” in its headings. Once clicked on, the “Farnell Electronic Components” heading diverts potential customers to the Complainant’s competitors.

According to the Complainant, these circumstances would indicate that the Respondent was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. Further and in the alternative, the domain name would have been acquired primarily for commercial gain to divert users to websites of the Complainant’s competitors by creating a likelihood of confusion with its trademark. Through his actions, the Respondent would have acted in bad faith in using the domain name with a primary purpose of disrupting the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s 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”.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the right holder of the word trademark FARNELL in numerous countries, including in Italy where the Respondent is located.

Though not identical, there is no doubt that <farnel.com> is confusingly similar to the Complainant’s trademark.

First, the gTLD is a technically necessary element of a domain name, which should not be considered as relevant in appraising the likelihood of confusion between a trademark and a domain name (Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061; Joe David Graedon v. Modern Limited. – Cayman Web Development, WIPO Case No. D2003-0640; Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493). As such, the mere addition of the gTLD “.com” does not exclude the likelihood of confusion.

Second, the Respondent’s domain name <farnel.com> is confusingly similar to the Complainant’s FARNELL mark, as it is only one letter different from the Complainant’s mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy, paragraph 4(a)(i) (Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it; Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No. D2004-0018).

The one-letter difference of the Respondent’s domain name renders it nonsensical, suggesting that the Respondent chose it specifically because it is confusingly similar to the Complainant’s mark.

Accordingly, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.

In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Subsequent panels have developed a consensus view that where the complainant makes a prima facie case that the respondent has no rights or legitimate interests, it falls to the respondent to show circumstances establishing such rights or legitimate interests. See e.g. paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.

In this case, the Complainant has made a prima facie case, and the Respondent does not bring any evidence that would demonstrate any right or legitimate interests in the domain name as the Respondent did not file a Response. More specifically, the Respondent does not demonstrate that:

(i) before any notice to it of the dispute, it used or made 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) the Respondent is commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

On the contrary, the use made by the Respondent of the website located at “www.farnel.com” clearly shows its absence of any rights or legitimate interests in the domain name at dispute. The website, entitled “Welcome to Farnel.com - For resources and information on Connector and Electronic Component”, contains several links related to electric components, the core activity of the Complainant. As correctly pointed out by the Complainant, two of these links, called “Farnell Electronic Components” and “Farnell Electronics”, divert consumers to the Complainant’s competitors instead of the Complainant’s official website as one would expect. Considering these circumstances, there is no doubt that the Respondent was aware of the existence and activities of the Complainant when it registered <farnel.com>, and that it has no rights or legitimate interests in this domain name.

Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled.

C. Registered and Used in Bad Faith

For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

To have registered the domain name in bad faith, the Respondent must have been aware of the existence of the Complainant. For the reasons given above, there is no doubt in the Panel’s view that the Respondent was aware of the Complainant’s trademark at the time he registered <farnel.com>, an already confusingly similar domain name, as the website expressly mentions FARNELL to refer to electronic and electric components, the activities conducted by the Complainant.

Although the Complainant does not submit for example any exchange of correspondence it may have had with the Respondent, the Panel is nevertheless satisfied that the way the Respondent uses the website clearly demonstrates its bad faith.

As stated by a prior panel, “[u]se for a portal linking to websites of the Complainant’s competitors is […] one which seeks to profit from confusion with the Complainant”. (Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).

Consequently, the Panel considers that circumstances clearly demonstrate that the Respondent intentionally intends to attract Internet users to his site by creating a likelihood of confusion with the Complainant’s FARNELL mark.

The Panel further infers that the Respondent is benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. Accordingly, the Panel considers that the circumstances constitute evidence of bad faith registration and use of the Domain Name in accordance with paragraph 4(b)(iv) of the Policy.

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 <farnel.com> be transferred to the Complainant.


Philippe Gilliйron
Sole Panelist

Dated: October, 22, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1208.html

 

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