Westmore · UDRP DecisionFraserhart.com
The Panel ordered transfer of <fraserhart.com>. It found the domain confusingly similar to the Complainant’s FRASER HART mark, found no evidence of Respondent rights or legitimate interests, and concluded that the domain was registered and used in bad faith. The bad-faith finding relied principally on the domain’s incorporation of FRASER HART, its prior use for UK jewellery news and advertising involving the Complainant’s field, and the Panel’s conclusion that the Respondent knew of the Complainant when registering the domain. Current inactivity did not prevent a finding of bad-faith use.
The timeline behind fraserhart.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The case illustrates a bad-faith finding where the cited registered trademark postdated the domain registration. The Panel grounded its registration-stage conclusion instead in the Complainant’s longstanding retail history, its earlier <fraserhart.co.uk> registration, the exact domain wording, and the Respondent’s jewellery-specific use. It also confirms that later inactivity does not neutralize evidence of earlier confusing commercial use.
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 Fraser Hart Limited v. Registration Private, Domains By Proxy, LLC / DNescrow Afternic, Afternic Case No. D2018-1696 1. The Parties The Complainant is Fraser Hart Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Brodies LLP, United Kingdom. The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / DNescrow Afternic, Afternic of Cambridge, Massachusetts, United States. 2. The Domain Name and Registrar The disputed domain name <fraserhart.com> (the “Disputed 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 July 26, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 3, 2018. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2018. On August 10, 2018, the Respondent sent an email communication to the Center. On August 31, 2018, the Center informed the Parties that it would commence the panel appointment process. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 11, 2018. 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 Fraser Hart Limited is one of the UK’s leading retail jewelers. The Complainant opened the first store in 1936 and up to now it has 40 shops across the UK. The Complainant’s stores are recognizable through the use of the “Fraser Hart” branding. The Complainant is owner of the United Kingdom trademark registration No. 0002414001A for the word mark FRASER HART, registered on March 7, 2008. Furthermore, the Complainant is also the owner of the domain name <fraserhart.co.uk>, registered on June 15, 1999. The Disputed Domain Name <fraserhart.com> was registered on August 4, 2006. The Disputed Domain Name is currently inactive. However, the Complainant provided evidence that the Disputed Domain Name previously resolved to a website which claimed to be an aggregator of Jewellery Business News in the United Kingdom and offered news about the United Kingdom jewellery business as well as advertising retail competitors of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant argues that the Disputed Domain Name is confusingly similar to the FRASER HART trademark as it fully incorporates the latter, the only difference being the Top-Level Domain (“TLD”) “.com”. Therefore, Internet users will be confused into believing that the Disputed Domain Name and website operated by the Respondent, are the domain name and website of the Complainant or at least operated, authorized or endorsed by the Complainant. Rights or legitimate interests The Complainant submits that the Respondent has deliberately adopted and used the “Fraser Hart” name in order to attract Internet users. Furthermore, the Disputed Domain Name is being advertised for sale to the public for a substantial sum of money. The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Moreover, the Respondent is not using the Disputed Domain Name with a bona fide offering of goods or services and is not known by the Disputed Domain Name. Registration and use in bad faith The Complainant alleges that the Respondent has intentionally registered and is using the Disputed Domain Name in bad faith, since the Respondent is using the Disputed Domain Name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s branding and trademark as to the source, sponsorship, affiliation or endorsement of the Respondent website and/or to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant or to a competitor for a valuable sum of money. B. Respondent The Respondent did not reply to the Complainant’s contention but it sent a reply stating that it was the owner of the Disputed Domain Name <fraserhart.com>, and it had noticed that the same was “Locked for Dispute”. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case: (i) The Disputed Domain Name 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Disputed Domain Name <fraserhart.com> is confusingly similar to the Complaint’s trademark FRASER HART. The Disputed Domain Name wholly incorporates the Complainant’s trademark. Furthermore, the addition of the TLD “.com” does not prevent a finding of confusing similarity. Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate his rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a) (iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Disputed Domain Name <fraserhart.com> is being used to attract Internet users for commercial gain, to the Respondent website or an affiliate website by creating a likelihood of confusion with the Complainant’s trademark. The Complainant explains in its Complaint that when visiting the Disputed Domain Name, users are greeted with a website that offers news and advertisements of a jewellery business, all of them related to the Complainant’s main activity. Besides, the Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent intentionally created this website to mislead users to third party websites instead of reaching the Complainant’s legitimate website. This shows that the Respondent could not ignore the Complainant’s trademark at the moment of registering the Disputed Domain Name. In this respect, the Panel notes that the Complainant opened its first store in 1936 and is the owner of the domain name <fraserhart.co.uk>, registered in 1999. The fact the Disputed Domain Name fully incorporates the Complainant’s FRASER HART trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name. Moreover, the Disputed Domain Name was applied to goods and services which are identical with the goods and services covered by the Complainant. The Disputed Domain Name <fraserhart.com> is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect. Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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 Disputed Domain Name, <fraserhart.com>, be transferred to the Complainant. Pablo A. Palazzi Sole Panelist Date: September 14, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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