Tesco Personal Finance Ltd. v. Richard Johnson
Claim Number: FA0611000843584
Complainant is Tesco Personal Finance Ltd. (“Complainant”), represented by James
A. Thomas, of Parker, Poe, Adams & Bernstein L.L.P.,
Post Office
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tescosfinance.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@tescosfinance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the financial services branch of Tesco Stores
Ltd., a large supermarket chain in the
Under the TESCO mark, Complainant provides an array of low cost, value-for-money financial services, including, but not limited to, insurance, credit cards, mortgages, loans, and savings.
Complainant’s main website is located at the <tescofinance.com> domain name.
Complainant has registered the marks TESCO (Reg. No. 2,116,694, issued March 27, 1998) and TESCO PERSONAL FINANCE (Reg. No. 2,154,304, issued July 23, 1999) with the United Kingdom Patent Office (“UKPO”).
Respondent’s <tescosfinance.com> domain name,
which it registered on
Respondent’s <tescosfinance.com> domain name is confusingly similar to Complainant’s TESCO mark.
Respondent does not have any rights to or legitimate interests in the domain name <tescosfinance.com>.
Respondent registered and uses the <tescosfinance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has rights in the TESCO mark pursuant to Policy
¶ 4(a)(i) by virtue of its registration of the mark with the UKPO. See
The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum
The
Panel finds from a preponderance of the evidence that Complainant has
registered its mark with national trademark authorities. The Panel has determined that such
registrations present a prima facie case of Complainant’s rights in the mark
for purposes of Policy ¶ 4(a)(i).
By merely adding the letter “s” and the term “finance” to
Complainant’s TESCO mark in the <tescosfinance.com> domain name,
Respondent has failed sufficiently to distinguish the disputed domain name from
the mark. In Chanel, Inc. v. Cologne
Zone, D2000-1809 (WIPO
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <tescosfinance.com> domain name. Complainant must first make a prima facie case
in support of its allegations. The burden then shifts to Respondent to show that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where a complainant has asserted that a respondent has no rights
or legitimate interests with respect to a domain name, it is incumbent on that
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make a prima facie case that a respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <tescosfinance.com>
domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO
By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name.
However, the Panel will nonetheless
examine the record to determine if thee is any basis for concluding that
Respondent has rights or legitimate interests under Policy ¶ 4(c).
We begin by noting that Respondent has registered the domain
name under the name “Richard Johnson,”
and that there is no other evidence in the record suggesting that Respondent is
commonly known by the <tescosfinance.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <tescosfinance.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Moreover, it is undisputed
that Respondent’s <tescosfinance.com> domain name, which includes Complainant’s
TESCO mark in its entirety, resolves to a commercial web directory providing
links to financial services companies in direct competition with the business
of Complainant. Because Respondent is thus
diverting Internet users seeking Complainant’s services to competing websites, presumably
for commercial gain in the form of click-through fees, Respondent’s use of the
disputed domain name does not constitute a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use
pursuant to Policy ¶ 4(c)(iii). See Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name
within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used
the domain name to take advantage of a complainant's mark by diverting Internet
users to a competing commercial site); see
also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18,
2001) (stating that a respondent’s use of a complainant’s entire mark in domain
names makes it difficult to infer a legitimate use).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the disputed
domain name to redirect Internet users to a commercial web directory featuring
links to Complainant’s direct competitors in the financial services industry
constitutes bad faith under Policy ¶ 4(b)(iv).
In Identigene, Inc. v. Genetest
Labs., D2000-1100 (WIPO Nov. 30, 2000), a panel found that a respondent’s
use of the <identagene.com> domain name, which was found to be confusingly
similar to a complainant’s IDENTIGENE mark, to operate a website offering
Internet users services similar to those of a Complainant constituted bad faith
registration and use because it was likely to cause consumer confusion as to
the source or sponsorship of the services offered via the domain. Likewise,
Respondent here is taking advantage of consumer confusion as to the possible source,
affiliation, sponsorship or endorsement of the disputed domain name and
profiting from the goodwill associated with the TESCO mark. Such conduct is indicative of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb.
Forum
Finally under this head, we note
that Respondent is charged with at least constructive knowledge of
Complainant’s rights in its TESCO mark
owing to its registration with the competent authorities in the United Kingdom,
so that Respondent’s recent registration of a domain name confusingly similar
to Complainant’s registered mark is, without more, evidence of Respondent’s bad
faith registration and use of the disputed domain name within the compass of
the Policy. See, for example, Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <tescosfinance.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated:
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