ADMINISTRATIVE PANEL DECISION
Sykes Cottages Limited v. NA Luca Mueller
Case No. D2009-1130
1. The Parties
Complainant is Sykes Cottages Limited, a United Kingdom corporation, (the “Company”) of Chester, United Kingdom, represented by Sally Cooper, United Kingdom.
Respondent is NA Luca Mueller of Bavaria, Germany.
The disputed domain name (the “Domain Name”) is registered with About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2009. On August 25, 2009, the Center transmitted by email to About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com a request for registrar verification in connection with the Domain Name. On September 7, 2009, PublicDomainRegistry.com, on behalf of About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2009.
The Center appointed James H. Grossman as the sole panelist in this matter on October 6, 2009. 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
Complainant’s principal business is the provision of providing holiday cottages. The Complainant looks for cottages that owners wish to make available for rent and then seeks prospective renters. The business has been trading for over twenty years and, on August 26, 1997, the domain name was registered by Mr.Clive Sykes t/a Sykes Cottages. Mr, Sykes, according to Complainant, is a director of Complainant, which was incorporated in 2002. In addition, since June 17, 2008, the Company is also the registrant of the domain name . According to Complainant, a substantial part of its business comes to it through the websites directed from these domain names. Also, the Company has registered trademark rights in the terms SYKES COTTAGES (United Kingdom Trade Mark Registration 2503548 registered on April 17, 2009). Complainant on July 28, 2009 made a written demand upon Respondent for transfer of the Domain Name to Complainant setting forth its reasons similar to those set forth in the Complaint.
The Registrar’s reply to the Request for Registrar Verification states a creation date for the Domain Name of May 15, 2008.
5. Parties’ Contentions
Complainant contends that the use of the Domain Name is confusingly similar to its own domain names as well as its trademark in that “sykes” is a distinctive element and the word “holiday” is wholly descriptive and Complainant believes that the Domain Name was clearly selected by Respondent in order to create a mark confusingly similar to SYKES COTTAGES in order to pass off the Domain Name as belonging to Complainant. Further, Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant alleges that Respondent may have in excess of 79,685 domain names registered in his name and that Respondent is a serial cybersquatter and has made a practice of using marks belonging to other businesses. It is Complainant’s view that Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s SYKES COTTAGES as to the source of services. With regard to bad faith, Complainant argues that it is necessary to look at Respondent’s modus operandi both in the number of domain names registered as set forth above as well as certain specific cases initiated under the Policy wherein Respondent has had several other domain names transferred away from him for reasons similar to the arguments made by Complainant in this case.
Section IV of the Complaint (Jurisdictional Basis, etc.) states that the registration date of the Domain Name was May 15, 2009. However in the WhoIs Search Results attached to and made a part of the Complaint, the date of the creation of the Domain Name is listed as May 15, 2008. Nevertheless, on page 2 of Complainant’s letter to Respondent of July 28, 2009 requesting transfer of the Domain Name which letter is included in Complainant’s documentation provided to the Center, Complainant correctly refers to Respondent’s registration as having taken place in May, 2008. This error in the Complaint becomes relevant in that the trademark SYKES COTTAGES while filed for on December 1, 2008, published in February 2009, was only registered on May 8, 2009. Thus the trademark is registered almost 1 year after the registration of the Domain Name. While the issue of the Domain Name filing having been prior to the trademark registration is addressed by the Panel below, the Panel is of the view that this error in providing the proper date of the Domain Name registration was inadvertent by Complainant in view of the other evidence described above and the Panel will make no negative inference as a result thereof.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
While Complainant’s trademark is registered approximately one year after Respondent obtained the registration of its Domain Name, paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The fact that the Domain Name predates Complainant’s trademark registration may only be relevant to the assessment of bad faith as discussed below in paragraph 4(a)(iii), Digital Vision Ltd v. Advanced Chemill Systems, WIPO Case No. D2001 0837. Accordingly, the Domain Name incorporates Complainant’s trademark so that Complainant has satisfied the threshold requirement of having trademark rights. While the content of the Domain Name is not identical to the content of Complainant’s sites, the issue to be determined is the likelihood of confusion between the Domain Name and Complainant’s trademark. Thus, the view of the Panel is that this Domain Name does indeed confuse an Internet user as to the source of the Domain Name. The addition of the generic word “holiday” in the Domain Name does not avoid a finding of confusing similarity.
The Panel finds that the first criterion is satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name nor is Respondent known by the Domain Name. Respondent has not been authorized by Complainant to use the SYKES COTTAGES marks in any connection.
The Domain Name was registered on May 15, 2008, long after Complainant had adopted and used its SYKES COTTAGES name in its business and established significant Internet presence. The fact that the Complainant sought and received registration of the domain name , a domain name closer to the Domain Name, only in June, 2008, the month after Respondent’s filing of the Domain Name, may have been an action taken by Complainant as a counter to Respondent’s filing, but there is no evidence presented on this issue by Complainant nor obviously by Respondent and of course Complainant had been using the earlier registered domain name since 1997.
A visit to the Domain Name by the Panel shows that while Respondent offers cottages on the website reached from the Domain Name, there is a focus on using the site as a link to many other sites and businesses where possibly Respondent may receive commissions for such transfers. The website used by Complainant is specifically directed to its business of renting cottages.
The Panel accepts that Complainant has made a prima facie case that Respondent lacks right or legitimate interests. Accordingly, the burden is transferred to Respondent to demonstrate that it has any such rights or legitimate interests in the Domain Name. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) 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, providing that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s website or location of a product or service on respondent’s website or location.
By using the Domain Name, this Panel is of the view that Respondent intentionally seeks to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondents’ website. With regard to the fact that the Domain Name was registered after the date of registration of Complainant’s trademark, the Panel finds based on the unrebutted record that the Complainant had relevant common law rights in its trademark at the time of registration of the Domain Name. Accordingly, this seems a classic case of an attempt by Respondent to pass itself off as having some association with Sykes Cottages and thus to intentionally mislead the Internet user. This action of bringing the Internet User to Respondent’s non-focused website cannot but damage goodwill long established by Complainant (e.g. registration of the domain name in 1997).
The Panel notes that this Respondent has registered the Domain Name as “.com” while the two domain names used by Complainant use “.co.uk”. This is simply form over substance and in the Panel’s view shows the bad faith of Respondent to deceive Internet users. While Complainant refers in its Complaint to the many other domain names listed as belonging to Respondent as a cybersquatter and several other specific cases where the domain names registered by Respondent have been transferred by other panels away from Respondent (<unileverservice.com>, Unilever PLC, Unilever N.V. v. Luca Mueller, WIPO Case No. D2009 0672 and , Grundfos A/S v. Luca Mueller, WIPO Case No. D2009 0091), the Panel is of the view that there is sufficient evidence in this case record to make a finding of bad faith and that the other cases cited above and/or a pattern of conduct by Respondent need not be considered. Notwithstanding this reasoning, the Panel does express its concern over such serial cybersquatters and the burden on trademark owners to deal with such problems via individual actions such as the claim brought by this Complainant with the obvious time and costs involved.
Thus, the Panel finds that Respondent has registered and used the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
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 be transferred to Complainant.
James H. Grossman
Dated: October 29, 2009