Decision for dispute CAC-UDRP-108598

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of various trademark registrations, including the following:

• SCREWFIX, European Union Trade Mark number 002231876, registered on September 21, 1997;
• SCREWFIX, UKIPO Trademark number UK00902231876, registered on May 2, 2003; and
• SCREWFIX, European Union Trade Mark number 000646133, registered on September 21, 1997.

The Complainant owns and operates its official domain name at <screwfix.com>, registered on July 21, 1997.

The disputed domain name <screwfixtrading.com> was registered on January 16, 2025. At the time of filing the Complaint, the domain resolved to a website displaying the message "This site is temporarily unavailable."

The Respondent is Celestine Ify of jean dis, Cote D'Ivoire.

The Complainant, Screwfix Direct Limited, is a British company founded in 1979 in Yeovil, Somerset as the Woodscrew Supply Company. The Complainant is one of the United Kingdom's largest multi-channel retailers of trade tools, accessories, and hardware. Today Screwfix operates over 1,700 stores, employs more than 14,000 people, and generates annual revenue exceeding £2.5 billion. The Complainant trades online and in stores across the United Kingdom and Europe, including Spain, Poland, the Netherlands, Belgium, Austria, and Sweden.

The Complainant has been the owner of the trademark SCREWFIX since 1996 and has since acquired an extensive portfolio of national and international trademark registrations. 

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant has provided evidence that it owns registered trademark rights in the marks SCREWFIX and SCREWFIX DIRECT.

In this case, the disputed domain name consists of the Complainant’s SCREWFIX trademark in its entirety with the addition of the generic suffix “trading”. The mere addition of a generic term to a registered trademark would not prevent a finding of confusing similarity. Thus, the disputed domain name is confusingly similar to the Complainant’s trademark.

As for the generic Top-Level Domain (“gTLD”) “.com”, it is well established that the gTLD is not relevant to the issue of identity or confusing similarity between the Complainant’s trademarks and the domain name in dispute (see WIPO Overview 3.1, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect of the domain name (see WIPO Overview 3.1, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it has been the registered owner of the SCREWFIX and SCREWFIX DIRECT marks long before the date that the disputed domain name was registered and that it has not authorised the Respondent to use the Complainant’s trademarks. There is no evidence that the Respondent is commonly known by the disputed domain name.

The Respondent did not submit a Response and did not provide any explanation for its choice of the disputed domain name nor evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The SCREWFIX trademark has been registered and in continuous use since 1996 and is a well-known mark in the United Kingdom and across Europe, as recognised in prior UDRP decisions, including WIPO Case No. DAU2010-0019, Screwfix Direct Limited v. Brian Perry. On the evidence, the Panel is persuaded that the Respondent was aware of the Complainant and its SCREWFIX trademark at the time of registering the disputed domain name, and that the disputed domain name was registered with the Complainant’s mark in mind.

The evidence shows that the disputed domain name has been used as a source domain for phishing e-mails impersonating a named senior executive of the Complainant's French operation, Mr. Barbero, with the intention of inducing the Complainant's suppliers to deliver goods on the false premise that orders made were legitimate. The fraudulent e-mails made use of the Complainant's actual e-mail footer comprising the Complainant's SCREFIX stylized logo, trademark, and information to create an appearance of authenticity and leveraged the similarity between the disputed domain name and the Complainant's SCREWFIX trademark to reinforce the deception. The Complainant reported the matter to the French police.

This conduct falls squarely within the category of bad faith use identified in paragraph 4(b)(iv) of the Policy, namely intentional use of the domain name to attract Internet users (here, commercial counterparties) by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the domain name or the communications originating from it.

Given the particular circumstances of this case and the distinctive nature of the Complainant's trademark, the Panel is persuaded that the Respondent's registration of the disputed domain name was made with the deliberate intention of exploiting the Complainant's trademark for fraudulent purposes.

Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.