The Carphone Warehouse Limited recently instituted proceedings under the Uniform Domain Name Dispute Resolution Policy against Navigation Catalyst Systems Inc.
The Complainant
Carphone Warehouse is a provider of telecommunications products and services in ten European countries including England and is one of the world’s largest independent telecommunications retailers. It owns the domain names carphonewarhouse.com and phonehouse.com and a number of related domain names. The Complainant has used the trade mark CARPHONEWAREHOUSE since 1989 and has obtained registrations in the United Kingdom, as well as community trade mark registrations.
Navigation
Navigation registered 18 domain names, all of which incorporated the words ‘carphone’, ‘warehouse’ or common misspellings of those words with the exception of the domain name camraphonewarehouse.com. The disputed domain names were registered commencing in 2004 until 2006. Each of the domain names resolves to a commercial web directory or directories, displaying links to other providers of telecommunication products and services, including some in direct competition with the complainant.
Navigation is an online media company that operates a search engine system based on a keyword system that delivers relevant advertisements and search listings based on relationships between certain keywords. Navigation publishes advertisements that advertisers bid on. In addition, Navigation acts as an investor in domain names which it sees as having the potential to be developed into premium web destinations. Navigation views the registration of keyword ‘variance, typographical misspellings and phonetical equivalents of generic domain names, as a logical part of its business of developing potential premium web destinations’.
The Policy
Under the Policy, the complainant has the burden of proving:
1. the domain name in issue is identical or confusingly similar to a trade mark in which the complainant has rights;
2. the respondent has no rights or legitimate interests in the domain names; and
3. the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant proved that it was the registered owner of the trade mark CARPHONEWAREHOUSE, which is sufficient to establish a ‘right’ in a trade mark for the purposes of the Policy. The location of the registered trade mark is irrelevant when considering the Complainant’s rights in that mark. However, the Panel was not convinced that the Complainant had established rights in the expression ‘camraphonewarehouse.’ No registration had been obtained for these words and the Panel was not satisfied that the Complainant had established a secondary meaning associated with them. Leaving that aside, the Panel was satisfied that all of the remaining impugned domain names were confusingly similar with the Complainant’s registered trade marks.
Rights or Legitimate Interest
Navigation contended that it had been using the domain names in issue to provide a legitimate service, namely, the establishment of directory websites at domain names which are generic and/or descriptive, with links to advertisements which are relevant to the generic and descriptive meanings of the words that Internet users type into their web browsers.
The Panel concluded that Navigation’s use of the remaining domain names was not in connection with a bona fide offering of goods or services and that Navigation had failed to establish any rights or legitimate interest in them.
Registered and Used in Bad Faith
The Panel stated that Navigation was an experienced professional acquirer and user of domain names. It is keenly interested in the possible value of domain names and in the circumstances it was not credible that Navigation would have registered all of the domain names consisting of obviously misspelled expressions without first enquiring who owned the domain names relating to the correctly spelled expressions. In addition, a number of the web pages to which the domain names resolved contained links to the Complainant’s website.
By registering the domain names, Navigation was targeting the Complainant and its trade marks. The substantial reputation of the Complainant in the United Kingdom and Ireland and the presence of the unexplained links to the Complainant’s website strongly suggested Navigation was well aware of the Complainant’s marks and had the intention to profit from the Complainant’s reputation in those marks by attracting additional Internet traffic to its websites and driving additional click-through revenue from browsers going to the linked third party websites.
Conclusion
The Panel ordered the transfer of the disputed domain names.
Read the full judgment here.
Note that the complaint in the case was filed on 28 March 2008 and the ruling was published on 20 June.
A partner at Cassels Brock, John McKeown’s practice focuses on intellectual property and related marketing matters, including trade-marks, copyrights, patents, and confidential information. He is certified by the Law Society of
