Pepper Deals Ltd trading as hotukdeals.com v. Pavan Annam
Claim Number: FA1702001715340
Complainant is Pepper Deals Ltd trading as hotukdeals.com (“Complainant”), represented by Victoria M McEvedy of McEvedys Solicitors & Attorneys Ltd, London, Great Britain. Respondent is Pavan Annam (“Respondent”), Great Britain
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotukdeals.uk.com>, registered with Namesco Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant participated in the mandatory CentralNic Mediation on June 6, 2012, and the mediation process was concluded/terminated. See Resp., at Attached Annex 7.
Complainant submitted a Complaint to the Forum electronically on February 1, 2017; the Forum received payment on February 2, 2017.
On February 7, 2017, Namesco Limited confirmed by e-mail to the Forum that the <hotukdeals.uk.com> domain name is registered with Namesco Limited and that Respondent is the current registrant of the name. Namesco Limited has verified that Respondent is bound by the Namesco Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On February 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hotukdeals.uk.com. Also on February 7, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 25, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with Forum's Supplemental Rule #7 on March 2, 2017.
On March 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant operates a platform based in the UK for third-party commercial offers, which generates revenues through affiliate marketing earnings when users and members click and transact. Complainant has rights in the HOTUKDEALS marks pursuant to its registrations with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Registry No. UK00002592128, filed Aug. 17, 2011, registered Sept. 28, 2012). See Compl., at Attached Annex 1. Complainant also has common law rights in the mark dating back to 2004. Respondent’s <hotukdeals.uk.com> is confusingly similar to the HOTUKDEALS mark as it incorporates the mark fully and merely adds the country-code top-level domain (“ccTLD”) “.uk” and generic top-level domain (“gTLD”) “.com” combined suffix.
Respondent has no rights or legitimate interests in <hotukdeals.uk.com>. Respondent is not commonly known by the domain name based on the WHOIS, and given that Complainant has not authorized or licensed Respondent to make use of its trademark. Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of <hotukdeals.uk.com>. Instead, Respondent’s use targets Complainant’s customers through its intentionally competitive offerings. See Compl., at Attached Annex 3 (Respondent’s site).
Respondent registered or used the domain name in bad faith. Complainant has senior rights in the HOTUKDEALS mark which comprises the entirety of the domain name, absent the TLD suffix. Respondent has registered an identical domain name and engaged in intentionally competitive use for commercial gain under Policy ¶ 4(b)(iv).
B. Respondent
Respondent made the following contentions
Respondent sets out a chronology of significant dates in the events leading up to the dispute.
Respondent submits that Complainant has no rights in the words
“ hot uk deals.”
Respondent raises issues concerning the standing of Complainant and its standing in the proceeding and requires it to explain how it acquired trademark rights over “hotukdeals.”
Two other domain names were registered with the terms ‘Hot UK’ and ‘UK Deals’ long before the Complainant has registered HotUKdeals.com and hotukdeals.co.uk.
Complainant has been using HUKD as its logo and HUKD is also being used as its mark everywhere on their website (see Annex 12). Even on email marketing, HUKD is being used predominantly. The Respondent found one press release which also shows HUKD as their mark. This was evidenced clearly in Respondent’s letter (see Annex 4). Even after Trade Mark registration, Complainant didn’t use the mark or word “HotUKDeals” in their website. Because of non-use and generic keyword, Respondent alleges Complainant doesn’t have any rights over the word “hotukdeals”.
Hotukdeals.uk.com website is not confusingly similar to the trademark or service mark.
Complainant’s asserted mark is comprised entirely of common and ubiquitous terms. Respondent therefore is not intending to profit from any alleged goodwill associated with Complainant’s alleged mark, but rather to profit from the terms’ inherent value.
Respondent’s use of its domain name has not harmed Complainant. Respondent’s Annex 11 shows Complainant’s turnover figures have increased from 2014 to 2016. Since 2011, Respondent has run a legitimate business, and this action has been taken by Complainant to eliminate a small competitor.
Respondent registered the www.hotukdeals.uk.com in good faith and running the site legitimately.
The phrase “Hot UK Deals” is a perfectly descriptive English phrase in its own right. Respondent registered the domain name consisting of ‘dictionary’ terms because Respondent had a good faith belief that the domain name’s value derives from its generic or descriptive qualities, and use of the domain name is consistent with such good faith belief and may establish a legitimate interest.
Complainant is engaging in anti-competitive behaviour. It appears that Complainant’s intentions are to eradicate small competitors like Respondent by adopting intimidation tactics. Respondent believes that acts of this kind are against the competition law.
C. Additional Submission—Complainant
The <hotukdeals.com> domain name was traded amongst related parties with accrued goodwill attached, adding to the argument that common law rights exist in the HOTUKDEALS mark.
Accordingly, Complainant has rights in the HOTUKDEALS mark and relies on the rights it has accumulated through its predecessors in title.
Third-party uses of similar iterations of the mark are not dispositive of this case. Rather, Respondent uses Complainant’s entire mark in an identical manner to engage in a directly competitive and identical use of its domain name to pass itself off as Complainant. Compare Compl., at Attached Annex 2 (Complainant’s site), with Compl., at Attached Annex 3 (Respondent’s site).
1. Complainant is a United Kingdom company engaged in the business known as a “deals site” described on its website as follows: “HotUKDeals.com was founded in August 2004 as a place for consumers to freely share deal tips, voucher codes and other consumer information. The purpose of the site is to escape from the marketing messages and ads that surround us and get genuine advice from other people about hot deals.” It operates this business by means of its website at www.hotukdeals.com.
2. Respondent is domiciled in London, United Kingdom. Respondent registered the disputed domain name on May 1, 2011. He also operates or is associated with a deals site that has been conducted on the internet via the website at www. hotukdeals.uk.com.
3. Complainant has established its registered trademark rights in the hotukdeals mark in lower case pursuant to its registration with the UKIPO (Registry No. UK00002592128, filed Aug. 17, 2011, registered Sept. 28, 2012) (“the HOTUKDEALS trademark”).
4. Complainant has established its registered trademark rights in the logo mark for hotukdeals which includes the word mark hotukdeals in lower case. That trademark is Registry No.00002593316, filed Aug..24, 2011, registered Feb.24, 2012.
5. Complainant has also established common law trademark rights in HOTUKDEALS dating back to August 25, 2004.
6. The disputed domain name is confusingly similar to the HOTUKDEALS trademark and Complainant’s common law trademark for HOTUKDEALS.
7. Respondent has no rights or legitimate interests in the disputed domain name.
8. Respondent both registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The CDRP also requires that Complainant to have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP principles and decisions as applicable in rendering its decision.
The first question that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant operates an internet platform based in the UK for third-party commercial offers, which generates revenues through affiliate marketing earnings when users and members click and use the platform for transactions. Complainant submits that it runs that business under a series of trademarks both registered and unregistered.
In that regard, Complainant submits that it has registered trademark rights in the hotukdeals mark in lower case pursuant to its registration with the UKIPO of the United Kingdom (Registry No. UK00002592128, filed Aug. 17, 2011, registered Sept. 28, 2012). See Compl., at Attached Annex 1. That is a word trademark for hotukdeals in lower case (hereinafter referred to as “the HOTUKDEALS mark”).
As Complainant submits and as was verified by extensive evidence, “That trademark was registered on a finding of acquired distinctiveness or secondary meaning by the UK IPO Registrar based on substantial filed evidence, including market survey evidence.”
Complainant also submits that it has another registered trademark, namely a logo mark for hotukdeals, which includes the same word mark hotukdeals in lower case. That logo mark is hereinafter referred to as “ the HOTUKDEALS logo mark”). That trademark is Registry No.00002593316, filed Aug.24, 2011, registered Feb.24, 2012.See Compl., at Attached Annex.
For the purposes of the UDRP and related domain name dispute resolution process, trademark rights attach to marks that are registered with UKIPO. See Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum July 11, 2015) (holding, “Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Further, such rights date back to the relevant filing date of record. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). The Panel therefore finds that Complainant’s UKIPO registration confers right in the HOTUKDEALS mark and that such rights date back to August 17, 2011.
In addition to its registered trademark rights in HOTUKDEALS, Complainant also argues that it has common law trademark rights in HOTUKDEALS dating back to 2004. It is now well established that common law or unregistered trademark rights are adequate for establishing standing to bring domain name dispute resolution proceedings such as the present proceeding. The question, therefore, is whether Complainant has made out a case for its common law trademark rights. The applicable principles for answering that question are as follows.
Common law rights are established when evidence proffered by a complainant makes out a case for a secondary meaning in a mark identifying the complainant with the words claimed and its goods and services, in addition to the primary meaning of the words claimed. The case that must be made out is illustrated in a series of consistent decisions on this issue. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004.”).
In the present case, Complainant has covered all of those bases by tendering a large quantity of relevant and persuasive evidence. It has provided evidence of awards it has received in connection with its business as HOTUKDEALS. See Compl., at Attached Annex 7. Complainant also provides evidence of media recognition in Annex 9, and recent traffic statistics at Annex 10, along with management turnover figures and advertising spending at Annex 11. Significantly, evidence has been tendered showing that from 2004 Complainant has held the domain name <hotukdeals.com> and that the Wayback Machine at www.achive.org shows Complainant has used that domain name and the website to which it resolves for the purposes of conducting its deals business. Significantly, the earliest screenshot revealed by the Wayback Machine is of the contents of the website as it was on August 25, 2004. The Panel has examined that screenshot which shows that on that date the website offered many discounts available at stores such as Curry’s, Dixons, PC World, Virgin Wines and many others. It contains links such as Deals, Forum and Coupons and access for its members to their accounts. At various points the site carries the words ”Hot UK deals bargains”, Hot UK Deals Forum Promotions and, referring to comments to be made ‘The comments are property of their posters, all the rest (c) 2004 HotUKDeals.”. These statements make it clear that at least from August 25, 2004, the entity named or using the name Hot UK Deals was operating the website for the purpose of conducting its business of providing the goods and services offered on the website.
It must also be remembered on this and other issues arising in this proceeding that the UK IPO Registrar found acquired distinctiveness and secondary meaning in the expression and that that finding was supported by strong evidence, also presented to the Panel.
The evidence is also to the effect that the website has been conducted since then up to and including today and that the site is owned and operated by Complainant.
Taking all of that evidence into account, the Panel finds that Complainant has given sufficient evidence to support a finding of common law rights in HOT UK DEALS dating back to August 25, 2004. It is also apparent from the evidence that the trademark has been in active use since that date and that it has acquired public prominence.
Respondent makes a direct challenge to Complainant’s position on this issue and submits that “The Complainant has no rights for the word “hot uk deals”.” Some of Respondent’s reasons in support of that proposition may be left until later parts of this decision, but two of them may be mentioned here. The first is that there were two other domain names registered before Complainant’s <hotukdeals.com> domain name was registered, one in 2003 and the other as early as 1997.The earlier of the two was <hotdeals.co.uk>, registered on June 12, 1997 in the name of Existent Ltd.The second was <ukdeals.co.uk> which was registered on October 28, 2003 in the name of a company whose name is not apparent from the record exhibited by Respondent, but which is described as “Coy. No 3959230,” a UK Limited Company.” The short point in response is that neither domain name can throw any light on whether Complainant has a trademark in the different expression HOT UK DEALS, which the Panel finds that it does. In any event, the question at this point in the proceedings is not whether other parties had or have trademark rights in the same or a similar term for which Complainant contends, but whether Complainant “ has“ a trademark in that term, HOT UK DEALS.
The second reason advanced by Respondent seems to go to the rights of Complainant, “Pepper Deals Ltd trading as hotukdeals.com” to bring this Complaint. In its additional statement, Complainant explains how the ownership of the business evolved, including its goodwill and trademarks, was sold and how the present owner is Complainant. The Panel is satisfied that Complainant is the successor in title to the previous owners and is entitled to claim the trademark rights that the Panel has found exist.
The Panel is therefore unable to accept Respondent’s objections and reiterates that Complainant has the trademark rights to UK HOT DEALS described above.
The second issue that arises for consideration is whether the disputed <hotukdeals.uk.com> domain name, the domain name registered in the name of Respondent, is identical or confusingly similar to the UKHOTDEALS trademark that Complainant owns. Complainant argues that the <hotukdeals.uk.com> domain name is confusingly similar to the HOTUKDEALS mark as it incorporates the mark fully and merely adds the ccTLD “.uk” and gTLD “.com” combined suffix. Adding such TLD suffixes has regularly been considered by previous panels to be irrelevant for the purposes of the comparison to be made under the Policy between the contentious domain name and the trademark in question, for the reason that all domain names must have one suffix or another for it to be effective. This view has become virtually a principle, with the possible exception of extensions under the new regime of new generic TLDs and those cases where the extensions used emphasize the confusing similarity of the domain name. See Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
In the present case, the use of the ccTLD “.uk”, as Complainant contends, actually makes the case a stronger one for finding confusing similarity. By adding this suffix, Respondent has apparently gone out of his way to emphasis the notion that the domain name relates to “hot” or current retail deals available in the UK and also that the business offering them is the UK business that does so, making the domain name virtually identical.
In any event, the objective bystander, asked to look at the domain name and the trademark in the present case could not but conclude that they are virtually identical and for that reason confusingly similar. Accordingly, the Panel finds that Respondent’s <hotukdeals.uk.com> domain name is confusingly similar to the HOTUKDEALS mark under Policy ¶ 4(a)(i).
Respondent contends that the <hotukdeals.uk.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark. But the Panel finds that such a determination, one way or the other, is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)). As has just been observed, Respondent’s generic argument is still a live issue but must be considered where the issue is whether Respondent has any rights or legitimate interest in the domain name and whether it registered or used it in bad faith, to which the Panel will shortly turn.
Complainant has thus made out the first of the three elements that it must prove.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <hotukdeals.uk.com> domain name, first, because Respondent is not commonly known by the domain name based on the WHOIS records relating to the domain name, and given that Complainant has not authorized or licensed Respondent to make use of its trademark. Where a respondent does not counter these points, such arguments are found to be dispositive of Policy ¶ 4(c)(ii) in favor of complainants. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). As the WHOIS record lists “Pavan Annam” as registrant, the Panel finds that Respondent is clearly known by that name and is not known as <hotukdeals.uk.com> or any similar expression.
Moreover, the evidence is that Respondent was not authorized or permitted by Complainant to use its trademark in a domain name or in any other way.
The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii), showing, to that extent, that Respondent has no right or legitimate interest in the disputed domain name.
Complainant advances several other arguments. It submits that it became aware of the disputed domain name and the use to which Respondent was putting it in 2012 .Consequent on that awareness, Complainant had a Takedown notice given on March 26, 2012 and the website to which the domain name resolved was immobilized. This was followed by several legal warnings where Respondent was made aware of Complainant’s trademark rights. Respondent concedes that “(f)ive Legal action letters” were sent to him on behalf on Complainant. Having studied the history of the actions engaged in by the parties, the Panel takes the view that the only conclusion open is that at least from that time, Respondent was aware of Complainant’s trademark rights. But it is also apparent that well before that time, Respondent was probably aware of Complainant’s rights and that he was undermining them. In particular, as has also already been explained, the record shows that from August 25, 2004, over six years before the disputed domain name was registered on May 1, 2011, Complainant’s predecessors in title and subsequently Complainant itself, were running their deals business on the internet under the name Hot UK Deals and were using that name successfully and extensively, to the extent that the market must have been aware that there was a business under that name conducting the same business that Respondent then entered into under the same name.
It is clear that a registrant is entitled to register and use a domain name that is generic or descriptive of its services and there are many cases where panelists who decide these cases, including the present panelist, have applied that principle. But at the same time it is equally clear that this must be genuinely what the registrant has done; registering a confusingly similar domain name must not be used as a guise for infringing a complainant’s trademark rights, trading off its trademark or targeting the trademark owner to get the value of its trademark.
It is often difficult to decide on conflicting facts whether the domain name registrant is genuinely using a common or descriptive expression or whether it is using such an expression as a cover for what is in reality an attempt to copy the trademark, confuse potential customers, pass itself off as the trademark owner or use the domain name for some other improper purpose. The present case is one such case, but there are several features of the evidence that tilt the balance against the registrant. The first is the sequence of events and the inferences that they raise. Complainant had trademarks rights and a business that was a going concern, run under the banner of the trademark and clearly known to the potential market through the internet from at least August 25, 2004. Over six years later, Respondent registered a virtually identical domain name. Secondly, there is no evidence that Respondent was in this field any time in that period. Respondent itself asserts that “The Respondent has been trading as Hotukdeals.uk.com since 1st May 2011 …” (emphasis added) and, by inference, not before that date. Thirdly, Respondent adopted a domain name that, by adding the “UK” suffix virtually asserts that it relates to the business of “hot “ deals in the UK run by a company in the UK which it must have known was a fair description of Complainant and the business it had been running since 2004. Fourthly, it was not necessary for Respondent to adopt a domain name that reflected so closely Complainant’s trademark and domain name when it could have achieved its legitimate purpose by other words. Fifthly, Complainant’s Annex 3, a screenshot of Respondent’s website, while obviously not identical to Complainant’s website, adopts the legend Hot UK Deals and offers the same services of discount vouchers and the like that Complainant had been using since 2004.
The role of the Panel is to decide this dispute on the balance of probabilities and, applying that standard of proof, the Panel finds that on the balance of probabilities, Respondent targeted and traded on Complainant’s trademark and business model to advance his own business and diminish Complainant’s business. That is not a legitimate use of the domain name.
To put it in different words, Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use of <hotukdeals.uk.com>. Instead, Respondent has targeted Complainant’s customers and potential customers in the market through its intentionally competitive offerings. Competitive does not evince a bona fide offering of goods or services or any legitimate noncommercial or fair use under the Policy. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Complainant has met its prima facie burden and Respondent has not rebutted it.
“HotUKDeals.com was founded in August 2004 as a place for consumers to freely share deal tips, voucher codes and other consumer information. The purpose of the site is to escape from the marketing messages and ads that surround us and get genuine advice from other people about hot deals.”
The expression “Hooked on hotukdeals” also appears at points through the history of the website, suggesting that Complainant continued to use the expression “hotukdeals” as its brand or trademark, even when the expression ”hukd” is used.
Complainant has therefore established that Respondent has no rights or legitimate interests in the disputed domain name and has thus made out the second of the three elements that it must prove.
It will have been seen from the foregoing findings that it would be difficult for Respondent to resist the conclusion that he registered or used the domain name in bad faith and, in all probability, both. The reasons for those conclusions have already been explained and it is not necessary to repeat them in detail here, other than to say that Respondent has copied Complainant’s trademark, domain name, business and general presentation.
Complainant submits that Respondent registered or used the domain name in bad faith. Complainant argues that Respondent registered a virtually identical domain name on May 1, 2011, after Complainant‘s own domain name <hotukdeals.com> was registered on August 11, 2004 and over six years after Complainant acquired its common law trademark rights to HOTUKDEALS, which was at least by August 25, 2004, and that he engaged in intentionally competitive use of his domain name for commercial gain within the meaning of Policy ¶ 4(b)(iv). The Panel notes again Complainant’s attached Annex 3, demonstrating Respondent’s use of the domain name on its website. Those actions show that Respondent acted in bad faith by registering the disputed domain name when Complainant’s trademark rights had long been established and Complainant’s business, brand name and business model had clearly acquired currency. The Panel reaches the conclusion that in all the circumstances such conduct constitutes bad faith in the registration of the disputed domain name. Respondent’s conduct, continued as it was, necessitating a Takedown notification and persistent legal warnings, can only be described as using the domain name in bad faith.
The findings of bad faith are underlined by additional facts, such as that the domain name chosen by Respondent used the constituent words of Complainant’s trademark and domain name in the same order as Complainant had used them. Moreover, as Complainant submits, Respondent’s business must not only be taken to have caused confusion in the relevant market but depended on that confusion being created for its success.
Complainant submits that this conduct also constitutes passing off behavior.. Such circumstances have been regarded in previous UDRP decisions as findings of bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Accordingly, the Panel finds for reasons already explained that Respondent has engaged in both bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).
In addition to the specific criteria under the Policy and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the HOTUKDEALS mark and in view of its conduct since the registration, Respondent both registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotukdeals.uk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 13, 2017
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