On August 26, 2003 a complaint was made by Electricity Supply Board to the WIPO Arbitration and Mediation Center in relation to the trademark of the domain name "shopelectric.ie" which is registered with the IE Domain Registry Limited by Lislyn Retail Limited and Northern Retail Limited. As in the case file Electricity Supply Board will be referred to as the Complainant and Lislyn Retail Limited and Northern Retail Limited will be referred to as the Respondent. There is no connection between the two.
The Respondent was given a deadline of October 30 2003 to respond and did so on that date. On November 10, Edmund Fry was appointed as the sole panelist for this case. The Complainant here stated that it was primarily operating in Republic of Ireland but also internationally. ESB Retail is a branch of the Complainant that sells electrical appliances through retail throughout the Republic of Ireland and according to the Complainant it is the largest electrical retailer in Ireland with 81 shops nationwide. This complaint is being filed as the Complainant operates under the "shopelectric" brand name since 1968. Also stating it has built up a body of goodwill with the people of Ireland over this period of time.
The Complainant registered "SHOPELECTRIC" as a trademark in the Republic of Ireland on October 21, 1997. By January of the same year the Respondent had a network of 29 High Street "Shop Electric" stores, all located in Northern Ireland. During the financial year April 2001 to March 2002, it's turnover was in the region of £48.9m.
Now according to the Complainant the "shopelectric.ie" domain name automatically connects you to the "www.pluggedin.co.uk" website. The online store of Northern Retail Limited. It was clear that the domain "shopelectric.ie" was not in use.
The Complainant believes that Respondents have no physical presence within the Republic of Ireland and that they have never used, nor have any intention to use this domain. The Complainant also feels that this site domain will attract Irish users to the site and cause confusion with the Complainants trademark.
The Respondent feels that the two trademarks are not similar, as the Respondent has the trademark "shopelectric.ie" and the Complainant has registered "SHOPELECTRIC" which is a stylized font. The Respondent also feels that the Complainant has not proved that they have built up a substantial amount of good faith with their customer base.
In order for a transfer of the domain name to occur three qualifications must be met by the panel. The panel must first decide as to whether or not the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights. Here the panel decided that the domain name is misleadingly similar and the Respondents claim that the Complainant has a stylized font has been refuted as "shopelectric" and "SHOPELECTRIC" are built of the same characters and this is a specified term and not a generic term.
Secondly, does the Registrant have any rights in law or legitimate interests in respect of the domain name. The Respondents do not admit any use of the site "shopelectric.ie" itself and have stated that they have no way in selling to customers in Ireland as of yet, meaning that they may plan to in the future. However the panel can only take into account anything which has happened before the complaint was made. Therefore this meaning of good faith to provide this service in the future is invalid. However in regards to the Respondents long standing use and the existence of trademarks in Northern Ireland.
Finally, was the domain name registered or used in bad faith. As stated above it is clear that the Respondents have legitimate interests in the domain there was no need to check whether the domain was registered in bad faith.
Once all this was taken into consideration and it was clear that one of the three qualifying factors in making a complaint had failed, it was concluded that the complaint had failed and the Respondent was able to keep hold of their domain.
I myself do agree with this decision as I feel it is clearly stated above. The Respondent had all the relevant trademarks in place within Northern Ireland, and by having registered this domain in the Republic of Ireland they are clearly taking precautions for future business ideas and they have been using the trademarked for over 30 years to add to their defense. Even though it was not included in the report, I feel that it was also clear that the domain was not registered in bad faith as the Respondent had been operating under this trademark for 30 years.
Here is a link to the WIPO's decision on the case http://www.wipo.int/amc/en/domains/search/case.jsp
The Respondent was given a deadline of October 30 2003 to respond and did so on that date. On November 10, Edmund Fry was appointed as the sole panelist for this case. The Complainant here stated that it was primarily operating in Republic of Ireland but also internationally. ESB Retail is a branch of the Complainant that sells electrical appliances through retail throughout the Republic of Ireland and according to the Complainant it is the largest electrical retailer in Ireland with 81 shops nationwide. This complaint is being filed as the Complainant operates under the "shopelectric" brand name since 1968. Also stating it has built up a body of goodwill with the people of Ireland over this period of time.
The Complainant registered "SHOPELECTRIC" as a trademark in the Republic of Ireland on October 21, 1997. By January of the same year the Respondent had a network of 29 High Street "Shop Electric" stores, all located in Northern Ireland. During the financial year April 2001 to March 2002, it's turnover was in the region of £48.9m.
Now according to the Complainant the "shopelectric.ie" domain name automatically connects you to the "www.pluggedin.co.uk" website. The online store of Northern Retail Limited. It was clear that the domain "shopelectric.ie" was not in use.
The Complainant believes that Respondents have no physical presence within the Republic of Ireland and that they have never used, nor have any intention to use this domain. The Complainant also feels that this site domain will attract Irish users to the site and cause confusion with the Complainants trademark.
The Respondent feels that the two trademarks are not similar, as the Respondent has the trademark "shopelectric.ie" and the Complainant has registered "SHOPELECTRIC" which is a stylized font. The Respondent also feels that the Complainant has not proved that they have built up a substantial amount of good faith with their customer base.
In order for a transfer of the domain name to occur three qualifications must be met by the panel. The panel must first decide as to whether or not the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights. Here the panel decided that the domain name is misleadingly similar and the Respondents claim that the Complainant has a stylized font has been refuted as "shopelectric" and "SHOPELECTRIC" are built of the same characters and this is a specified term and not a generic term.
Secondly, does the Registrant have any rights in law or legitimate interests in respect of the domain name. The Respondents do not admit any use of the site "shopelectric.ie" itself and have stated that they have no way in selling to customers in Ireland as of yet, meaning that they may plan to in the future. However the panel can only take into account anything which has happened before the complaint was made. Therefore this meaning of good faith to provide this service in the future is invalid. However in regards to the Respondents long standing use and the existence of trademarks in Northern Ireland.
Finally, was the domain name registered or used in bad faith. As stated above it is clear that the Respondents have legitimate interests in the domain there was no need to check whether the domain was registered in bad faith.
Once all this was taken into consideration and it was clear that one of the three qualifying factors in making a complaint had failed, it was concluded that the complaint had failed and the Respondent was able to keep hold of their domain.
I myself do agree with this decision as I feel it is clearly stated above. The Respondent had all the relevant trademarks in place within Northern Ireland, and by having registered this domain in the Republic of Ireland they are clearly taking precautions for future business ideas and they have been using the trademarked for over 30 years to add to their defense. Even though it was not included in the report, I feel that it was also clear that the domain was not registered in bad faith as the Respondent had been operating under this trademark for 30 years.
Here is a link to the WIPO's decision on the case http://www.wipo.int/amc/en/domains/search/case.jsp
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