Russell & Bromley Limited v. KIM H. SUK
Claim Number: FA1705001729773
Complainant is Russell & Bromley Limited (“Complainant”), represented by David Powell of Stevens Hewlett & Perkins, United Kingdom. Respondent is KIM H. SUK (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <russellandbromley.com>, registered with eNom, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 2, 2017, eNom, LLC confirmed by e-mail to the Forum that the <russellandbromley.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@russellandbromley.com. Also on May 12, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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 for Uniform Domain Name 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of trade mark registrations which protect its RUSSELL & BROMLEY (words) mark in numerous territories:
i) UK trade mark registration No. 1380002 RUSSELL & BROMLEY (application filed on and registered effective from 7th April 1989).
ii) EUTM registration No. 002773745 RUSSELL & BROMLEY (application filed on and registered effective from 12th July 2002).
iii) Swiss Federal Institute of Intellectual Property’s registration No. P-401712 RUSSELL & BROMLEY and confirms that the mark has been protected in the territory since 21st October 1992 and that the registration remains in force.
This Complaint is based on the above trade mark registrations.
Russell & Bromley is a leading UK brand in the footwear and handbag sectors and the RUSSELL & BROMLEY trade mark has been used extensively and continuously since the brand’s inception in 1873.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Complainant’s registration of the RUSSELL & BROMLEY mark with the various trade mark authorities precedes Respondent’s registration of the russellandbromley.com domain name on 10th January 2003. Under the Policy, registration of the mark with an appropriate governmental authority confers rights in that mark to Complainant. Thus, the Panel must conclude that Complainant has established rights in the RUSSELL & BROMLEY mark pursuant to Policy Section 4(a)(i).
a. Identical and/or Confusingly Similar
Excepting the gTLD “.com”, Respondent’s russellandbromley.com domain name differs from the Claimant’s RUSSELL & BROMLEY mark only by use of the word “and” in the domain name instead of the “&” symbol. Such a difference should be treated as wholly immaterial, particularly given that the “&” symbol cannot be used as a character in a domain name. The addition of “.com” is irrelevant when establishing whether or not a mark is identical or confusingly similar, since top-level domains are a required element of every different domain name (see Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) which held that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, and since the addition of the top-level domain “.com” is the only material difference between Respondent’s russellandbromley.com domain name and Complainant’s RUSSELL & BROMLEY mark, the Panel must conclude that they are identical pursuant to Policy Section 4(a)(i). In the alternative, should the Panel conclude that the use of “and” in the domain name is apt to preclude a finding of identity with Complainant’s RUSSELL & BROMLEY mark, it must be concluded that they are confusingly similar pursuant to Policy Section 4(a)(i).
b. Rights or Legitimate Interests
The Complaint contends that Respondent is not commonly known by the russellandbromley.com domain name. Respondent does not have any affiliation, association, or business relationship of any kind with Complainant, and Respondent is not licenced or authorised to use the RUSSELL & BROMLEY mark. The WHOIS information identifies Respondent as Kim H. Suk and Complainant’s research has not uncovered any evidence to indicate that Respondent is commonly known by the disputed domain name. We note the findings in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) which concluded that Respondent was not commonly known by the “coppertown.com” domain name where there was no evidence in the record, including the WHOIS information, suggesting that Respondent was commonly known by the disputed domain name.
Respondent is using the russellandbromley.com domain name to display numerous hyperlinks which resolve to websites of competitors of Complainant. Complainant (logically) presumes that Respondent receives click-through fees for each redirected Internet user. Complainant contends that Respondent’s attempt to benefit commercially from the unauthorised use of Complainant’s RUSSELL & BROMLEY mark does not constitute a bona fide offering of goods and services under Policy Section 4(c)(i) or a legitimate non-commercial or fair use under Policy Section 4(c)(iii); a domain name is not used within the parameters of Policy Section 4(c)(i) or (iii) if Respondent uses the domain to take advantage of Complainant’s marks by diverting Internet users to a competing commercial site (see H-D Michigan Inc. v. Buell, FA 1106640 (FORUM Jan. 2, 2008) which found that because Respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under [Complainant’s] mark, Respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate non-commercial or fair use). As such, the Panel must find that Policy Section 4(a) (iii) has been satisfied.
c. Registration and Use in Bad Faith
It will be noted the domain is offered for general sale. Past Panels have found general offers for sale as evidence to support a finding of bad faith use under Policy Section 4(b)(i) (see Little Six, Inc. v. Domain For Sale, FA 96967 (Forum Apr. 30, 2001) which found Respondent’s offer to sell the domain name at issue to Complainant was evidence of bad faith).
The name RUSSELL & BROMLEY is properly associated with Complainant. The nature of Respondent’s business sees it registering domain names to which it has no connection simply for the purposes of generating income. It is clear that Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent in connection with claim No. FA 1507001630837 is also Kim H. Suk and the circumstances of this earlier case mirror precisely the basis for this current complaint. Respondent had registered and was using domain names identical/confusingly similar to an earlier party’s trade/service marks with a view to preventing said earlier party from registering and using the domain names itself and honestly within the context of its commercial endeavours. Complainant contends that this additional registration and use of a domain name consisting of Complainant’s trade mark is apt to demonstrate that Respondent has engaged in a pattern of such conduct pursuant to Policy Section 4(b)(ii). Further, given the decision issued in respect of claim No. FA 1507001630837, this current claim brought by Complainant must be bound to succeed.
By their nature, domain names identified as having a high level of traffic will be connected to well-known trade marks, trade names, persons or business undertakings. It would appear that the nature of Respondent’s business is to obtain domain names to which it has no legitimate right with the aim purely of taking unfair advantage of rights that third parties have established. Respondent is using the russellandbromley.com domain to display numerous hyperlinks, some of which directly compete with Complainant’s goods. This use of the disputed domain name will disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel must find that Respondent has diverted business from Complainant to competitors websites in violation of Policy Section 4(b)(iii) (see H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) and that Respondent has acted in bad faith by attracting Internet users to a website that competes with Complainant’s business (S. Exposure v. S. Exposure, Inc., FA 94864 (Forum July 18, 2000) refers).
Respondent’s use of the russellandbromley.com domain name, which is identical/confusingly similar to Complainant’s RUSSELL & BROMLEY mark, will confuse customers as to the affiliation, sponsorship, or endorsement of the goods advertised on Respondent’s website. Respondent presumably profits from this confusion by receiving click-through referral fees for each re-directed Internet user. The Panel must find that Respondent profiting from its diversionary use of Complainant’s mark when the domain resolves to commercial websites is prima-facie evidence that Respondent is using the domain name in bad faith pursuant to Policy Section 4(b)(iv) (see Associated Newspapers Ltd v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) which found evidence of bad faith pursuant to Policy Section 4(b)(iv) because the domain name provided links to Complainant’s competitors and that Respondent had presumably [commercially] benefitted from the misleading domain name by receiving “click-through fees”). In addition, the Panel must find bad faith given that Respondent is directing Internet users seeking Complainant’s site to its own website for commercial gain (Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum August 21, 2000) refers).
The motive behind Respondent’s actions in registering the russellandbromley.com domain name clearly was to take unfair advantage of the reputation that Complainant has built up. Further, the domain name has been put to use in a manner which is for the sole purpose of generating income. This clearly takes unfair advantage of and is unfairly detrimental to Complainant’s rights.
By selecting the russellandbromley.com domain name for registration, and by using the domain for this purpose, Respondent does so in the full and conscious knowledge that;
a) The registration and use of the domain name are likely to cause confusion and to deceive customers into mistakenly believing that Respondent’s domain and website are offered, authorised, or are sponsored by Complainant, or are otherwise affiliated with Complainant.
b) As a consequence of its action in registering and using the domain name, Complainants business will be unfairly disrupted by the re-direction of Internet users which will deprive Complainant of internet traffic rightly intended for its websites.
c) By registering and using the domain name it is misappropriating Complainant’s goodwill solely for its value derived from the well-known RUSSELL & BROMLEY mark.
d) It will be blocking Complainant from registering a name in which Complainant has rights.
e) By registering and using the domain name in this manner, its actions are unfairly detrimental to Complainant’s rights in the RUSSELL & BROMLEY mark.
In view of the above, the Panel must find that Policy Section 4(a)(iii) has been satisfied.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
Complainant claims rights in the mark because of its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. UK00001380002, registered Apr. 10, 1992). Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. 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).”). Complainant has rights in the mark.
Complainant claims Respondent’s domain name, <russellandbromley.com>, is identical to Complainant’s mark because it contains the mark in its entirety and add the gTLD “.com.” The ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word “and” (in the domain name). Past panels have found a domain name identical to a mark under Policy ¶4(a)(i) where a respondent chose the word “and” to replace the ampersand symbol within a complainant’s mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). Respondent’s domain name is identical to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 claims Respondent is not commonly known by <russellandbromley.com>, nor has Complainant authorized Respondent to use Complainant’s mark. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that Respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names the registrant as “KIM H. SUK.” There is no obvious relationship between that name and the domain name. Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent failed to use <russellandbromley.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain name displays pay-per-click advertising for Complainant’s competitors (who pay a click through fee) to Respondent. Using an identical domain name to host pay-per-click links in competition with a complainant does not constitute a bona fide offering of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if Respondent is itself commercially profiting from the click-through fees); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services). Respondent lacks rights and legitimate interests under Policy ¶¶4(c)(i) & (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain name in bad faith because of Respondent’s general offer to sell <russellandbromley.com>. Past panels have found a general offer to sell a disputed domain name evidences a finding of bad faith under Policy ¶4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”). Respondent cannot avoid this conclusion simply because the landing page says “This domain name may be for sale” instead of saying “This domain name is for sale” [emphasis added]. Respondent registered and used the domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent engaged in a pattern of bad faith registration and use as Respondent blocked Complainant from registering a domain name reflecting its mark. Respondent had a prior UDRP proceeding in which the panel ordered the transfer of the disputed domain: ADP, LLC v. KIM H. SUK, FA 1507001630837 (Forum Aug. 24, 2015). This Panel is not convinced. Complainant registered the russellandbromley.co.uk domain name. Complainant has not directly claimed Respondent prevented Complainant from registering ANY domain name containing Complainant’s mark, just THIS domain name. Policy ¶4(b)(ii) provides: “[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, provided that [Respondent has] engaged in a pattern of such conduct.” There is no right to a particular domain name, just some domain name somewhere which reflects Complainant’s mark. Complainant can reflect its mark in a number of gTLDs, including russellandbromley.net, russellandbromley.org, russellandbromley.biz and russellandbromley.info. The mere fact Respondent has lost previous UDRP proceedings does not mean ipso facto Respondent should automatically lose this proceeding. Respondent has not engaged in bad faith registration and use under Policy ¶4(b)(ii).
Complainant claims Respondent disrupts Complainant’s business by using pay-per-click advertising that competes with Complainant’s business. Using an identical domain name to resolve to competing pay-per-click advertising is evidence of bad faith registration and use under Policy ¶4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶4(b)(iii)). Respondent registered and used the disputed domain name bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent diverted Internet users seeking Complainant to Respondent’s resolving web page for Respondent’s commercial gain by using pay-per-click hyperlinks to competitors of Complainant. Where a respondent has created a likelihood of confusion for commercial gain, past panels have found evidence of bad faith registration and use per Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where Respondent was diverting Internet users searching for Complainant to its own website and likely profiting); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that Respondent’s use of the <capitaloneonebank.com> domain name to display links to Complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)). Respondent registered and used <russellandbromley.com> in bad faith per Policy ¶4(b)(iv).
Complainant claims Respondent actually knew of Complainant’s rights in the RUSSELL & BROMLEY mark at the time Respondent registered <russellandbromley.com>. Actual notice of a complainant’s rights in a mark is evidence of bad faith under the non-exclusive nature of Policy ¶4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The advertising on Respondent’s resolving website competes with Complainant. Respondent registered and used the domain in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <russellandbromley.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 12, 2017
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