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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rolling Center Limited v. Gate Systems Limited

Case No. D2005-0779

1. The Parties

The Complainant is Rolling Center Limited, Bradford, West Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Gate Systems Limited, Hungerford, Berkshire United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <rollingcentre.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2005. On July 21, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 21, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2005.

The Center appointed Dawn Osborne as the sole panelist in this matter on August 22, 2005. 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. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant trades as “Rolling Center” in the United Kingdom, is based in Bradford, West Yorkshire and distributes gate hardware and accessories.

The Complainant registered the company name Rolling Centre Limited on April 7, 2003. The registration of the company name Rolling Centre Limited on April 7, 2003, was an error on the part of the Complainant’s accountant, Bernard Brosnan & Co. The name was subsequently changed to Rolling Center Limited. Separately the Complainant registered the company name Rolling Centre Limited on April 8, 2004. This was to prevent any third party from registering this company name as it was almost identical to the Complainant’s company name and the Complainant considered that its use by a third party could potentially cause confusion amongst the Complainant’s customers.

The Complainant’s agents, Rolling People, registered the domain name <rollingcenter.co.uk> on behalf of the Complainant on September 26, 2003. The registration of the domain name <rollingcenter.co.uk> was transferred to the Complainant on or around July 21, 2004. The Complainant uses the domain name <rollingcenter.co.uk> for the only website for its business in the UK.

The Complainant is the UK based arm of Rolling Center SpA Italy. Rolling Center SpA Italy is a family business based in Italy that was founded approximately 30 years ago. Rolling Center SpA Italy exports to approximately 52 countries and is tied to companies including Rolling Center Poland, Rolling Center Venezuela and Rolling Center France, as well as Rolling Center UK.

Rolling Center SpA Italy registered the domain name <rollingcenter.com> on October 23, 2002. Rolling Center SpA Italy previously supplied gate hardware to other distributors based in the UK, namely BFT Northern, RTS, Swift Automation and the Respondent. Rolling Center SpA Italy entered into an exclusive distribution agreement with the Complainant for the import and supply of its gates hardware in the UK in 2004, and is the sole UK based importer and distributor of Rolling Center SpA Italy products.

The Complainant began to build its business in April 2003, and commenced business as Rolling Center in the UK in 2004. The Complainant began trading on-line at the domain name<rollingcenter.co.uk> in April 2004, and has been trading since then. The Complainant’s letterheaded paper and business cards contain the name and details of “Rolling Center Limited”. The Complainant has produced marketing materials in the name “Rolling Center Limited”. The Complainant has placed advertisements in trade journals in the name “Rolling Center Limited”. The Complainant is known in the UK within the gate automation trade and by customers by the name “Rolling Center”. It is therefore submitted that the Complaint has rights in respect of the trademark ROLLING CENTER.

It is submitted that the Complainant, prior to the filing of the Complaint, provided goods and services under the unregistered mark and had thereby acquired a reputation such that customers or members of the public would associate those goods and services with the Complainant and not with others not authorised by the Complainant to use the mark. The Complainant is the proprietor of substantial good will and reputation in the trademark ROLLING CENTER.

The trademark ROLLING CENTER and the trademark ROLLING CENTRE are identical in all respects except the order in which the final two letters appear. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Respondent is a distributor of gate automation products.

The Respondent registered the domain name <rollingcentre.co.uk> on January 29, 2004, the Respondent also registered the domain name <rollingcentre.com> on January 29, 2004 .

The Respondent was a customer of Rolling Center SpA Italy from June 6, 2001, to March 26, 2004. The Respondent sold Rolling Center products and a wide range of other products from other suppliers. The Respondent is no longer supplied with Rolling Center products by Rolling Center SpA Italy and currently only sells products from other suppliers.

The Respondent has no rights in or to the mark ROLLING CENTER or ROLLING CENTRE. The Respondent has never traded as “Rolling Center” or as “Rolling Centre”. The Respondent is not known by the domain name. The Respondent has never made any 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. The Respondent knew of the existence of the Complainant’s trademark when registering the domain name.

The Respondent is not making a legitimate non-commercial or fair use of the domain name. The only active content at the domain name is used to divert Internet users away from the Complainant’s web page.

The Respondent has and is using the domain name with the intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has never been licensed nor otherwise permitted or authorised to use the Complainant’s trademark.

The Respondent only registered the domain name because it was virtually identical to the Complainant’s mark. The Respondent has admitted this in correspondence.

The statement on the page at the domain name does not remedy the infringing use of the Complainant’s trademark by the Respondent.

C. The domain name was registered and is being used in bad faith. (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The Respondent contacted Rolling Center SpA Italy on March 22, 2004, highlighting its concerns regarding the impact on the Respondent’s business of Rolling Center SpA Italy entering into a distribution agreement with the Complainant or any other third party. The Respondent had registered the domain name <rollingcentre.co.uk> on January 29, 2004, before sending the letter noted above to Rolling Center SpA Italy on March 22, 2004. The Respondent had also registered the domain name <rollingcentre.com> on January 29, 2004, before sending the letter noted above to Rolling Center SpA Italy on March 22, 2004.

Until the week beginning June 14, 2004, the domain name<rollingcentre.co.uk> and the domain name <rollingcentre.com> automatically re-directed to the Respondent’s website homepage at “www.gates.uk.com”. The domain name <rollingcentre.com> currently re-directs to the website at the domain name <gates.com> and displays a message directing visitors to the website to the Respondent or to e-mail or telephone the Respondent. The notice does not remedy the infringing use of Complainant’s trademark.

The Complainant and the Respondent entered into negotiations to seek to agree the transfer of the registration of the domain name. Rolling Center SpA Italy and the Complainant have both contacted the Respondent to seek a transfer of the domain name to the Complainant. On April 5, 2004, the Respondent e-mailed Rolling Center SpA Italy. In terms of this e-mail the Respondent admitted he had registered the domain name in the hope that it would lead to confusion among the Complainant’s customers. On April 13, 2004, the Respondent offered to forward all traffic received for the Complainant at the domain name<rollingcentre.co.uk> on to the Complainant’s website at “www.rollingcenter.co.uk”. On May 5, 2004, the Complainant wrote to the Respondent setting out the terms of an offer for the Respondent to act as a distributor of Rolling Center hardware in exchange for transfer of the registration of the domain name to the Complainant. The subsequent settlement talks between the Complainant and the Respondent did not result in a resolution of the issues in dispute. On June 8, 2004, the Complainant’s solicitors, Messrs Masons, wrote to the Respondent seeking to clarify the positions of the Complainant and the Respondent. On June 8, 2004, the Respondent responded to Messrs Masons by e-mail indicating that the Complainant should make “an offer” for the domain name. On June 10, 2004, Messrs Masons responded to the e-mail from the Respondent by e-mail seeking confirmation of the Respondent’s proposed transfer costs. By letter dated June 8, 2004, the Respondent wrote to Messrs Masons confirming his position in relation to the registration of the domain name.

On October 4, 2004, a Complaint was lodged by the Complainant with Nominet UK Dispute Resolution Service in respect of the domain name<rollingcentre.co.uk>. On November 8, 2004, the Respondent submitted a Response to the Complaint. On January 28, 2005, the Expert appointed by Nominet to decide upon the Complaint issued his Decision. In terms of the Decision of the Expert the domain name<rollingcentre.co.uk> was transferred from the Respondent to the Complainant.

By letter dated February 16, 2005, Messrs Pinsent Masons wrote to the Respondent to ask whether the Respondent was willing to transfer the registration of the domain name to the Complainant. By e-mail dated February 16, 2005, the Respondent responded to Messrs Pinsent Masons to confirm that he did recognize the legal authority of the decision from Nominet. The Respondent then offered to transfer the domain name to the Complainant upon the condition that the Complainant make a donation to charity. By e-mail dated March 2, 2005, Messrs Pinsent Masons responded to the e-mail from the Respondent. In terms of this e-mail the Complainant offered to reimburse the Respondent for any re-registration costs that may be incurred in transferring the registration of the domain name to the Complainant. By e-mail dated March 3, 2005, from the Respondent to Messrs Pinsent Masons the Respondent refused the offer of payment of the re-registration costs. Further negotiations took place between Messrs Pinsent Masons (on behalf of the Complainant) and the Respondent.

The Complainant is aware of and has evidence of confusion having been created amongst the Complainant’s customers by the registration of the domain name by the Respondent.

The Respondent was aware of the Complainant at the time of the registration of the domain name.

The Complainant submits that the notice currently posted on the Respondent’s website is not sufficient evidence of a lack of intent on the part of the Respondent to divert customers. By the time consumers read the notice on the Respondent’s website the domain name has already diverted them from the Complainant’s website.

The Complainant submits that the domain name was registered by the Respondent primarily for the purpose of disrupting the business of the Complainant, a competitor of the Respondent. Reference is made to paragraph 4 (b) (iii) and (iv) of the Policy.

The Complainant submits that the use of a domain name comprising a misspelling of the Complainant’s mark shows the Respondent’s intent to divert customers from the Complainant.

The Complainant submits that the Respondent is using the domain name for commercial gain by diverting customers to its services and website away from the Complainant’s services and website. The Complainant is creating a likelihood of confusion with the Complainant’s mark, so as to derive a potential business from those visiting the website at the domain name expecting to find the Complainant’s website.

The Complainant submits that the use of misspellings is sufficient to establish bad faith on the part of the Respondent. The Respondent is involved in “typosquatting” by using the domain name <rollingcentre.com> when the Complainant has a trademark in Rolling Center.

The Complainant has spent approximately Ј2,400 on printing marketing materials and in placing advertisements in trade journals. The Complainant is currently unable to put details of its website on marketing and promotional materials because of the risks that customers will be confused by the Respondent’s registration of the domain name and contact the wrong website. The Complainant is unable to market to customers and potential customers to its fullest potential as a consequence of the registration of the domain name by the Respondent. The Complainant wants customers and potential customers to be able to contact it by e-mail and visit its website without the risk existing of customers or potential customers being confused as a result of the registration of the domain name by the Respondent and mistakenly contacting the Respondent or visiting the Respondent’s website. The Complainant has spent approximately Ј4,500 developing its website at the domain name<rollingcenter.co.uk> but is unable to develop the website further until the issue of the registration of the domain name is resolved.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

5. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is using the mark ROLLING CENTER for its gate products business extensively across the UK. As such the Complainant has unregistered trademark rights in this mark. The substantive part of the domain name <rollingcentre.com> is confusingly similar to the Complainant’s ROLLING CENTER trademark with only the last two letters being transposed. Many customers in the UK appear to be in the habit of using the transposed spelling. The domain name is therefore confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not submitted a Response and therefore has not submitted any arguments in support of its position. The First Respondent is a former distributor of ROLLING CENTER products, but has no current relationship with the Complainant or Rolling Center SpA Italy. The Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the domain name. Although the Respondent has been reselling the Complainant's goods, it is clear from the case file that the Respondent never has had a legitimate interest in the disputed domain name. The Respondent has not been granted an explicit right to register the domain name, and even if the Respondent would have had requested such right to register the domain name, it seems clear that the Complainant would not have granted it, as the Respondent sold, and still is selling, products competing with the Complainant's products.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

““the Respondent has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name”; and

“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”

The Respondent offered to give up the domain name in return for being appointed a distributor of ROLLING CENTER products. As such the Respondent exhibited an intention to transfer the domain name for consideration in excess of its out of pocket registration costs. This does appear to have been the main goal of the Respondent in registering the domain name.

The Respondent appears to have registered the domain name without the knowledge or consent of the Complainant or Rolling Center SpA Italy while acting as a distributor for ROLLING CENTER products and then continued to use the domain name to sell similar products to the Complainant once ROLLING CENTER products were no longer supplied to the Respondent. The Complainant has produced evidence of instances of confusion caused by this. Whilst a disclaimer is now on the site, initially the domain name was linked directly to the Respondent’s website, and the disclaimer currently links to the Respondent’s site. The transposition of the last two letters of the domain name suggests an intention to use a name very close and confusingly similar to the ROLLING CENTER mark.

By using the domain name for products in the same field as the Complainant, the Respondent has shown that it always intended to take the benefit of the registrations of the domain name for itself even if it were no longer to be supplied with ROLLING CENTER products. The fact that it registered the domain name without requesting permission or telling Rolling Center SpA Italy reinforces this conclusion. The Panelist holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant’s ROLLING CENTER mark as to the source, affiliation or endorsement of the Respondent’s website.

As such the Panelist holds that the domain name was registered and used in bad faith.

6. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <rollingcentre.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist

Dated: August 24, 2005