Marks and Spencer plc v. WhoisGuard, Inc. et al.
Claim Number: FA1912001875008
Complainant: Marks and Spencer plc of London, United Kingdom.
Complainant Representative:
Complainant Representative: Stobbs of Cambridge, United Kingdom.
Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama Panama, PA.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Petter Rindforth, as Examiner.
Complainant submitted: December 13, 2019
Commencement: December 18, 2019
Default Date: January 3, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Fact:
The Complainant is the owner the following trademark registrations:
European Union Trademark registration No. 011266301 M&S (word), registered on March 20, 2013, covering goods and services in Intl Classes 25, 35 and 43;
U.S. trademark registration No. 3,765,852 M&S (word), registered on March 30, 2010, covering goods in Classes 14, 16 and 18; and
Andorra trademark registration No. 32650 “M AND S” (word), registered November 20, 2013, covering goods and services in Classes 25, 35 and 42.
The Complainant has provided evidence of use for the trademarks, by a screenshot from the Complainant’s website www.corporate.marksandspencer.com
There is no information on the Respondent, other than provided by the Complainant, as the Respondent has not responded.
Legal Findings and Conclusion:
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since the Complainant has proved its right to the valid U.S. national trademark registration No. 3,765,852 M&S (word), the valid European Union Trademark registration No. 011266301 M&S (word), and the valid Andorra trademark registration No. 32650 “M AND S” (word). Further, the Complainant has proved that the said trademark is in current use by presenting screenshot from the Complainant’s website.
The relevant part of the disputed domain name is <mandspeoplesystem>, as the added top-level domain – being a required element of every domain name – is generally irrelevant when assessing whether or not a trademark is identical or confusingly similar and in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
A quick visual comparison between the Complainants trademark M&S and M AND S with the disputed domain name <mandspeoplesystem> may lead to the consideration that there is no confusingly similarities. However, the sign “&” (meaning “and”) cannot be used as part of a domain name for pure technical reasons, and the same relates to M AND S - for pure technical reasons, there is only two ways to create a domain name based on a three worded/letter trademark: either write the three words/letters with a hyphen in between, or – as in this specific case – combining the three words/letters into one word: “mands”.
The additional words “people” and “system” makes no difference, as they are basically referring to a service provided by the Complainant.
The Examiner concludes that the disputed domain name is confusingly similar to the Complainant's trademarks M&S and M AND S.
Further, the fact that the complainant’s trademark is written as two separate words whereas the disputed domain name is written in one word makes no difference as there are, for pure technical reasons, only two ways to create a domain name based on a two worded trademark: either write the two worded trademark with a hyphen, or – as in this specific case – combining the two words into one.
The Examiner concludes that the disputed domain name is identical or confusingly similar to the Complainant's trademark CONDE NAST.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in <mandspeoplesystem.online> as the Complainant has not authorized the Respondent to register a domain name containing its registered and used trademarks M&S and M AND S, nor is the Respondent commonly known by <mandspeoplesystem.online>.
As M&S and the M AND S version is a distinctive and well known trademark, the Examiner also draw the conclusion that the Complainant has shown that the Respondent cannot have any legitimate interests in registering and using <mandspeoplesystem.online>.
To summarize, the Examiner find that the Complainant has established that the Respondent has no rights or legitimate interests in <mandspeoplesystem.online>.
BAD FAITH REGISTRATION AND USE
The According to the URS Procedure 1.2.6.3, examples of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
In this case, the Complainant has shown that the Respondent is using the disputed domain name to link to a website that features pornographic content.
Although the Respondent has not responded, the use as such strongly indicates that the Respondent has registered and is using <mandspeoplesystem.online> for intentionally attempting to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Further, although the current use for a pornographic content is indeed different from the services provided by the Complainant, the fact that the disputed domain name is created by a combination of the Complainant’s trademark/s together with description of the Complainant’s services, may indicate that the Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor.
Thus, the Examiner concludes that the Complainant has established that the Respondent has registered and is using <mandspeoplesystem.online> in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<mandspeoplesystem.online>
Petter Rindforth, Examiner
Dated: January 06, 2020
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