Decisión del Panel Administrativo nº DIE2016-0001 of WIPO Arbitration and Mediation Center, May 20, 2016 (case Ideal Boilers Ltd v. Patrick Russell)
| Resolution Date | May 20, 2016 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Irlanda (.ie) |
The Complainant is Ideal Boilers Ltd of Hull, Yorkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Page White & Farrer, United Kingdom.
The Respondent is Patrick Russell of Kilkenny, Ireland, represented by Cruickshank Intellectual Property Attorneys, Ireland.
The disputed domain names [idealboiler.ie], [ideal-boilers.ie] and [idealboilers.ie] are registered with IE Domain Registry Limited ("IEDR").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2016 via email and in hardcopy on March 15, 2016. On March 10, 2016, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On March 11, 2016, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 23, 2016. In accordance with the Rules, paragraph 5.1, the due date for Response was April 21, 2016. The Response was filed with the Center on April 21, 2016 via email and in hardcopy on April 22, 2016. On April 27, 2016, the Complainant sent an email communication to the Center.
The Center appointed Alistair Payne as the sole panelist in this matter on May 3, 2016. 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.
The Complainant is a long established United Kingdom based manufacturer of boilers under the IDEAL brand and distributes its product in Ireland through a local distributor. It owns various trade mark registrations in the European Union incorporating its IDEAL word mark and in Ireland owns a combined word and device mark incorporating its IDEAL mark under registration number 245400.
The Respondent operates a business in Ireland through his company RPG Facilities Limited as a gas pipe fitter and gas installer, including of gas appliances. This company has a registration for the business name "Ideal Boilers Support" under registration number 565469 dating from March 7, 2016. The Respondent registered the disputed domain names as follows, [ideal-boilers.ie] on April 10, 2015, [idealboiler.ie] on April 29, 2013 and [idealboilers.ie] also on April 29, 2013.
The Complainant submits that it has used its mark in the United Kingdom for over 100 years and in Ireland for more than 30 years. It owns numerous trade mark registrations incorporating its IDEAL word mark in a number of countries including in the European Union and in the United Kingdom and Ireland. It says that in 2015 its turnover was GBP 290 million and that its products and use of its mark can be seen on its websites at "www.idealboilers.com" and "www.idealheating.ie". It also provides training courses and support for its installers.
In Ireland it says that it distributes its products to retail outlets through a distributor, Davies Limited and that its products are displayed in that company's showroom and on its website and it has provided copies of some of its advertising material for the Irish market. It submits that its products have been the number one selling boiler in Ireland for the last 3 years with annual turnover of GBP 5.9 million. It says that its annual advertising spend in Ireland is GBP 500,000.
The Complainant therefore submits that its word mark IDEAL is a protected identifier for the purposes of the Policy and that each of the disputed domain names incorporate the IDEAL word mark combined with the descriptive word "boiler" or "boilers" and are therefore confusingly similar to the Complainant's mark.
The Complainant notes that although the Respondent is identified in WhoIs information as a sole trader, he operates under the trading name...
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