Westmore · UDRP DecisionWoolworthscatalogue.com
The Panel ordered transfer of <woolworthscatalogue.com>. It found the domain confusingly similar to the Complainant’s WOOLWORTHS mark because it merely added the descriptive word “catalogue.” The Respondent lacked rights or legitimate interests because the unauthorized website mimicked an official Woolworths website, displayed the Complainant’s trademarks and catalogues, and carried monetized advertising links. The same conduct demonstrated intentional attraction of Internet users through confusion for commercial gain and therefore bad-faith registration and use under paragraph 4(b)(iv) of the Policy.
The timeline behind woolworthscatalogue.com
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The decision illustrates how a domain combining a well-established mark with a term directly connected to the trademark owner’s promotional materials can reinforce, rather than reduce, confusion. The case also shows that a disclaimer may carry little weight where the overall website presentation imitates the trademark owner and is monetized through pay-per-click advertising.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Woolworths Limited v. Mucahid Saki Case No. D2014-0952 1. The Parties The Complainant is Woolworths Limited of Sydney, Australia, represented by King & Wood Mallesons, Australia. The Respondent is Mucahid Saki of Florida, United States of America. 2. The Domain Name and Registrar The disputed domain name <woolworthscatalogue.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2014. The Center appointed Ian Lowe as the sole panelist in this matter on July 10, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant was founded in 1924 and operates the largest supermarket chain in Australia. It currently operates almost 900 supermarkets under the name “Woolworths” and serves 18 million customers across Australia each week. The Complainant is the registered proprietor of 16 Australia trademarks for signs comprising the word “WOOLWORTHS” in a rectangle, including number 500118 registered on November 22, 1988 in respect of all goods in Class 16 and others registered on the same date in respect of various goods in other classes. The Complainant operates a website at “www.woolworths.com.au” and has registered other domain names comprising the word “woolworths” as part of a composite word, including <woolworthsonline.com.au>. The Domain Name was registered by the Respondent on September 22, 2013. At the time of the Complaint the Domain Name resolved to a website the home page of which was headed “woolworths”, “Woolworths Catalogue” together with a stylized green “W” logo which is a registered Australia trademark of the Complainant. The web pages feature a number of other registered trademarks of the Complainant together with reproductions of the Complainant’s catalogues and advertising comprising pay-per-click links. The Respondent responded to a cease and desist letter from the Complainant received by it on December 13, 2013 by denying any wrongdoing and offering to “work with you turning this website your [sic] official fan page with your acceptance”. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is identical or confusingly similar to its WOOLWORTHS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the 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. A. Identical or Confusingly Similar The Complainant has undoubted, uncontested rights in the WOOLWORTHS mark both by virtue of its Australia trademark registrations and as acquired through longstanding, widespread use in Australia over many years. The Domain Name differs from the Complainant’s trademark WOOLWORTHS only by the addition of the descriptive word “catalogue”, ignoring the “.com” suffix for this purpose. The descriptive term “catalogue” does not detract from the distinctiveness of the WOOLWORTHS mark. Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a mark or marks in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. It is not authorized in any way by the Complainant and is using the Domain Name for a website apparently intended to look like an authorised Woolworths website, which features a number of registered trademarks of the Complainant without its consent and carries monetized advertising links. The Panel therefore considers that the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not responded to the Complaint or sought to refute this prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith In light of the nature of the Domain Name and the use to which it has been put, the Panel cannot see that there is any doubt that the Respondent registered the Domain Name with the Complainant in mind. As indicated above, the Respondent has used the Domain Name for a website with get up that mimics an official Woolworths website but comprising pay-per-click advertising in the context of numerous references to the Complainant and its catalogues. Despite a disclaimer on at least one of the Respondent’s web pages, the Panel considers that by using the Domain Name for such a website the Respondent has intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name with the purpose of attracting Internet users to the Website. The obvious inference is that this was for commercial gain directing users to third party websites through the pay-per-click advertising. In the Panel’s view, the Respondent’s use of the Domain Name amounts to exploitation of the Complainant’s trademarks with a view to commercial gain and to paradigm bad faith registration and use for the purposes of the Policy, particularly with regard to paragraph 4(b)(iv) of the Policy. In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <woolworthscatalogue.com> be transferred to the Complainant. Ian Lowe Sole Panelist Date: July 24, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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