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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

McCarthy & Stone Plc v. Domain Drop S.A.

Case No. D 2008-0988

 

1. The Parties

The Complainant is McCarthy & Stone Plc, Bournemouth, Dorset, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Bond Pearce, UK.

The Respondent is Domain Drop S.A., Charlestown, West Indies, Saint Kitts and Nevis.

 

2. The Domain Name and Registrar

The disputed domain name <mccarthystone.com> is registered with DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2008. On July 1, 2008, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the disputed domain name. On July 1, 2008, DomainDoorman, LLC 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 July 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 31, 2008.

The Center appointed Andrew Brown QC as the sole panelist in this matter on August 12, 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

The Complainant owns a number of registered trademarks for marks incorporating MCCARTHY & STONE in the UK.

Mark	No.	Application	Class
MCCARTHY & STONE device	1269919	25/6/86	19
MCCARTHY & STONE device	2245566	14/9/00	35, 37
MCCARTHY & STONE THE NATURAL CHOICE FOR A HAPPY RETIREMENT and device	2243731	29/8/00	36, 37, 42
MCCARTHY & STONE ASSISTED LIVING	2243732	29/8/00	36, 37, 42
MCCARTHY & STONE and device	2441488	14/12/06	36, 37, 43, 44

The disputed domain name <mccarthystone.com> was registered by the Respondent on April 28, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the largest builder of private retirement homes and flats in the UK. Over the past 30 years, the Complainant states that it has built more than 40,000 homes for more than 45,000 customers throughout the UK. In addition to being Britain’s leading retirement home builder, the Complainant has gained a reputation as one of the premier house builders in the UK. It has been voted winner or runner up for the accolade Britain’s Best Builder in the annual Daily Express Business House Builder Awards for the last five years.

The MCCARTHY & STONE brand was first used in 1973 in relation to residential and commercial development. At the time of the Complaint the Complainant’s turnover was stated to be some £458 million.

The Complainant is the owner of a number of MCCARTHY & STONE domain names including <mccarthyandstone.co.uk> and <mccarthyandstone.com>.

The Complainant asserts that in addition to its UK registered trademarks for MCCARTHY & STONE detailed earlier, it has acquired substantial goodwill and reputation in MCCARTHY & STONE throughout the UK. This results from extensive usage, advertising and promotion. The Complainant has annexed to its Complaint copies of brochures and publications outlining the various services on which it has used its trademark over the years.

The Complainant alleges in brief that:

(a) Domain name

The domain name is essentially identical to the Complainant’s trademark but in the alternative is certainly confusingly similar.

(b) The Respondent has no rights or legitimate interest in the disputed domain name

The Respondent has no connection or affiliation with the Complainant and has no licence, express or otherwise, to use the Complainant’s mark in a domain name or in any other manner. Further, the Respondent has no common law rights or other rights to the domain name in dispute.

There is no bona fide noncommercial or fair use being made of the disputed domain name. It directs to a website containing links to retirement homes and development websites, many of which are based in the UK and directly compete with the Complainant.

(c) Registration and use in bad faith

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. As to registration, this contention is tied to the Complainant’s submission that the Respondent has no rights or legitimate interests in MCCARTHY & STONE.

The Complainant asserts that there is use in bad faith because:

(i) Use of the disputed domain name will tarnish the Complainant’s trademark and affect the brand;

(ii) Members of the public will be misled into believing that there is an association with or endorsement by the Complainant when there is not;

(iii) The Respondent is using the domain name intentionally to attract for commercial gain, Internet users to its website or other online location within paragraph 4(b)(iv). It is inconceivable that the Respondent was unaware of the Complainant’s rights in its trademark when it registered the disputed domain name. The fact that the Respondent’s website contains commercial links to other websites offering competing services shows that the Respondent must have been aware of the Complainant’s trademark.

(iv) The Respondent has a history of registering and using domain names without any legitimate rights including some 23 previous UDRP decisions. The Complainant attaches details of these decisions.

B. Respondent

The Respondent did not file a Response or otherwise reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trademark registrations in the UK for the mark MCCARTHY & STONE in logo format and in some cases with additional matter across classes 19, 36, 37, 42, 43, and 44. The first of these registrations dates from 1986 (with subsequent registrations dating variously from 2000 and the final one in 2006). The Complainant has also provided brochures showing extensive use of MCCARTHY & STONE in relation to building and retirement living services in the UK. The Complainant claims use of the mark for 30 years.

The Panel is satisfied that the Complainant has clearly demonstrated rights in MCCARTHY & STONE and that these rights very substantially predate the registration of the disputed domain name on April 28, 2006.

The disputed domain name <mccarthystone.com> omits the ampersand. The ampersand character cannot be represented in domain names for technical reasons and is regularly replaced with “and” or dropped altogether. Internet users are familiar with the fact that ampersands cannot be used in Internet addresses: Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496; Hexagon AB, Hexagon Metrology AB, Hexagon Holdings, Inc., Hexagon Metrology GmbH, Hexagon Metrology Nordic AB, Hexagon Metrology SpA, Brown & Sharpe, Inc., C.E. Johansson Ltd., Sheffield Measurement, Inc., Romer, Inc., Wilcox Associates, Inc. v. Xspect Solutions Inc., WIPO Case No. D2005-0472.

The Panel finds that the disputed domain is confusingly similar to the MCCARTHY & STONE mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out certain circumstances that, in particular without limitation, may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

It is sometimes difficult for the Complainant to prove a negative i.e. that the Respondent has no rights or legitimate interests in the disputed domain name. Here, the Complainant has asserted that the Respondent has no rights or legitimate interests and that it has never licensed the Respondent or expressly or impliedly consented to the Respondent’s use of its mark in a domain name or in any other manner.

In such circumstances, the Panel finds that the Complainant has done enough to meet the second requirement and the onus of proof shifts to the Respondent to prove that it has a right or legitimate interest in the disputed domain name. There has been no Response from the Respondent. In the absence of any Response or attempt to justify its actions in registering the domain name, the Panel finds that the Complainant has done enough to satisfy the second element and that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive example of registration and use in bad faith:

“(iv) By using the domain name you have intentionally attempted to attract, for commercial gain, Internet users to your website or on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The MCCARTHY & STONE mark is an unusual combination of two surnames. Given the absence of any right or legitimate interest in the trademark (and the lack of Response from the Respondent), the Panel is justified in finding that registration was in bad faith.

Further, as identified by the Complainant, the disputed domain name at the time of the Complaint resolved to a website with commercial links to other websites offering competing services to those of the Complainant. The Panel agrees with the Complainant’s submission that this strongly suggests a clear awareness of the Complainant’s trademark by the Respondent. The mark MCCARTHY & STONE does not of itself describe or allude to any particular goods or services. Therefore the Respondent’s adoption and then use of “mccarthy stone” in the disputed domain name for competing services to those offered by the Complainant (as owner of the trademark) clearly indicates use in bad faith.

In this regard, the Panel also considers that the Complainant is justified in its submission that the Respondent will have made some commercial gain from posting links to competing services from the website and that members of the public encountering the disputed domain name are likely to be confused into believing that there is an association with the Complainant or some sort of sponsorship, affiliation or endorsement when this is not the case.

The circumstances fall well within 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, <mccarthystone.com> be transferred to the Complainant.

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Andrew Brown QC
Sole Panelist

Date: August 26, 2008