Rightmove Group Ltd v pramualsin kerdngam / pramualsin
Claim Number: FA1909001862669
Complainant is Rightmove Group Ltd (“Complainant”), represented by Yinka Babarinde of Safenames Limited, United Kingdom. Respondent is pramualsin kerdngam / pramualsin (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rightmove.uk.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on September 18, 2019.
Complainant submitted a Complaint to the Forum electronically on September 18, 2019; the Forum received payment on September 20, 2019.
On September 19, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <rightmove.uk.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2019 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@rightmove.uk.com. Also, on September 25, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the RIGHTMOVE trademark, is a joint venture, created in 2000, by the top four UK corporate agencies then existing (namely Countrywide, Connells, Halifax and Riyal and Sun Alliance).
Complainant holds a registration for the RIGHTMOVE trade mark, which is on file with the European Union Intellectual Property Office (“EUIPO”) as Registry No. 015568561, registered April 13, 2017.
In March of 2006, Complainant became listed on the London Stock Exchange, and it is now part of the FTSE 250 stock index.
By 2009, Complainant experienced over one million visits to its official website, www.rightmove.co.uk/, in a single day.
Complainant has promoted the Rightmove trade mark extensively through various media channels and via TV advertising and outdoor posters across the United Kingdom.
The Rightmove website was ranked in the Top 10 most popular websites in the UK in 2013, and it is currently ranked the 4th most popular real estate website worldwide, according to SimilarWeb.
As a consequence, Complainant’s Rightmove trademark has acquired distinctiveness in the marketplace, and Complainant thus has rights in the mark under the common law running from a time prior to 2006.
Respondent registered the domain name <rightmove.uk.com> on or about February 1, 2016.
Respondent’s <rightmove.uk.com> domain name is confusingly similar to Complainant’s RIGHTMOVE mark.
Respondent has not been authorized to use Complainant’s RIGHTMOVE mark.
Respondent has not been commonly known by the domain name.
Respondent fails to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to offer competing services under the RIGHTMOVE mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent attempted to sell the domain name at the Sedo.com website for $1,999.00.
Respondent, for its commercial gain, employs the domain name to attempt to attract Internet users to its resolving website, at which it features a competing realty agency service.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the RIGHTMOVE mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The same domain name was registered or 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."
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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
The CDRP requires that Complainant have participated in a CentralNic Mediation and that such mediation must have been terminated prior to the Forum’s consideration of the Complaint. The Forum has confirmed that Complainant participated in the mandatory CentralNic Mediation and that the mediation process was terminated on September 18, 2019.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent, as applicable, in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the RIGHTMOVE trade mark, sufficient on its face for purposes of Policy ¶4(a)(i), by reason of its registration of the mark with an international trademark authority, the EUIPO. See, for example, Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018):
Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).
In ordinary circumstances, this would conclude the question of Complainant’s standing to pursue its Complaint against Respondent under the Policy. However, it appears from the record that Complainant registered its RIGHTMOVE trade mark on April 13, 2017, whereas Respondent registered the challenged <rightmove.uk.com> domain name earlier, on February 1, 2016, thus giving Respondent time priority for its domain name. Complainant answers this discrepancy by contending that, in addition to its trade mark registration, it also has rights in its RIGHTMOVE mark under the common law running from at least 2006. In aid of this contention, Complainant offers evidence of, among other things, its listing on a national stock exchange, the operation of a leading website in its industry with a domain name based on the mark, and extensive media exposure and commercial advertising to promote and develop the mark. In light of the evidence of the mark’s long and continuous use in commerce, and given that Respondent does not contest Complainant’s contentions, we conclude that Complainant has adequately established common law rights in the RIGHTMOVE mark running from at least 2006, and that this is sufficient to confer upon Complainant standing to proceed under Policy ¶4(a)(i). See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a UDRP complainant can establish common law rights in its mark).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United Kingdom) other than that in which Respondent resides or does business (here Thailand). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017), sec. 1.3:
[T]he fact that secondary meaning may exist only in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <rightmove.uk.com> domain name is confusingly similar to Complainant’s RIGHTMOVE mark. The domain name contains the mark in its entirety, merely adding the generic Top Level Domain (“gTLD”) “.uk.com.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy, because every domain name requires a gTLD or other TLD. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
We also note that the Second Level Domain (“SLD”) “.uk” contained within the domain name is a country code referring to the United Kingdom, which connects the domain name to Complainant’s country of origin. This naming stratagem on the part of Respondent underscores the confusing similarity of the domain name vis-à-vis Complainant’s mark. See, for example, Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017) (finding the <danskoshoes.us.com> domain name confusingly similar to a UDRP complainant’s DANSKO mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <rightmove.uk.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <rightmove.uk.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the RIGHTMOVE mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “pramualsin kerdngam / pramualsin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent, for its commercial gain, employs the <rightmove.uk.com> domain name to attempt to attract Internet users to its resolving website, at which it offers a competing realty agency service. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016), finding that:
[U]se of a domain to sell products and/or services that compete directly with a [UDRP] 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <rightmove.uk.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1623644 (Forum July 9, 2015):
Respondent uses the at-issue domain name to operate a website that purports to offer … services … all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <rightmove.uk.com> domain name, which we have found to be confusingly similar to Complainant’s RIGHTMOVE mark, is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy¶4(b)(iv), this too illustrates Respondent’s bad faith in registering and using the domain name.
See Citadel LLC v. Joel Lespinasse / Radius Group, FA1579141 (Forum October 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.
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the RIGHTMOVE trade mark when it registered the <rightmove.uk.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration of a contested domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <rightmove.uk.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 18, 2019
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