Decision for dispute CAC-UDRP-108963

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

Among others, the Complainant owns the following registered trademarks:

European Union Registered Trade Mark Number 000646133, for the word mark SCREWFIX, registered on February 28, 2000, in Classes 6, 8, and 9.

European Union Registered Trade Mark Number 002231876 for the word mark SCREWFIX, registered on May 2, 2003, in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 35, and 37; and

United Kingdom Registered Trade Mark Number UK00902231876, for the word mark SCREWFIX, registered on May 2, 2003, in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19, 20, 21, 22, 24, 35, and 37.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, Screwfix Direct Limited, is a United Kingdom registered company founded in 1979 in Yeovil, Somerset, originally 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, the Complainant operates over 1,700 stores, employs more than 14,000 people, and generates annual revenue exceeding GBP 2.5 billion.

The Complainant owns various registered trademarks in respect of the SCREWFIX mark dating back to 1996, in the United Kingdom and European Union, covering multiple goods and services classes, including the marks outlined in the identification of rights section above.

The Complainant holds the domain name <screwfix.com>, registered in 1997, and maintains an active official website at that domain name, and a social media presence, both used to promote and sell its products, including in the United Kingdom, Spain, Poland, Netherlands, Belgium, Austria and Sweden.

The disputed domain name was registered on July 3, 2026, and resolved to a pay-per-click website including the advertisement “Buy Construction Materials Online”. The disputed domain name has been used to impersonate the Complainant and a member of its staff by sending phishing e-mails with a reply address to the disputed domain name, using the personal name of one of the Complainant’s senior members of staff for Screwfix France in the footer, and copying the Complainant’s genuine e-mail footer and branding in order to appear legitimate.

The said e-mails were sent to some of the Complainant’s actual suppliers seeking to place large fraudulent orders on the Complainant’s purported behalf.

On becoming aware of the registration and use of the disputed domain name, the Complainant instructed its representative to send a cease-and-desist/transfer request to the Respondent, addressed both to the fraudulent e-mail address and to the e-mail address in the WhoIs record, on  August 4, 2026. The Respondent did not reply to these communications.

The Respondent is the same individual who had earlier registered the domain name <screwfixtrading.com>, which was used for the purpose of sending fraudulent e-mails, and has already been the subject of a prior UDRP proceeding concerning that conduct (Screwfix Direct Limited v. jean dis, CAC-UDRP-108598). In such proceeding, the panel found that the Respondent had registered and used the domain name concerned in bad faith, and ordered that it be transferred to the Complainant.

Complainant:

The Complainant contends that the disputed domain name is confusingly similar to its SCREWFIX trademark because it incorporates the said mark in its entirety, with the mere addition of the word “achat” before it.

The Complainant contends that the “.com” generic Top-Level Domain should be disregarded in the comparison exercise, leaving the second-level portion, “screwfix” plus “achat” as the relevant point of comparison, which creates a likelihood of confusion with the SCREWFIX trademark.

The Complainant asserts that the Respondent is not a licensee or authorized distributor of the Complainant and has never been permitted to use the SCREWFIX mark, or any variation or derivative of it, in the disputed domain name or otherwise.

The Complainant is not aware of the Respondent being commonly known by the disputed domain name or any corresponding name, and the WhoIs record discloses no identifying information supporting such a claim.

The Complainant submits that the Respondent is not making a bona fide offering of goods or services, nor is engaged in legitimate non-commercial or fair use of the disputed domain name, but is instead exploiting the SCREWFIX mark’s renown to pass itself off as a senior member of the Complainant’s staff. The Complainant contends that the Respondent’s use of a confusingly similar domain name for this purpose is capable of misleading Internet users into believing that the fraudulent e-mails sent by the Respondent are affiliated with or endorsed by the Complainant, which they are not.

The Complainant notes that the website at the disputed domain name carries no disclaimer of non-affiliation with the Complainant, contributing to user confusion. The Complainant adds that the disputed domain name was registered on July 3, 2026, years after the Complainant’s first SCREWFIX trademark registration, supporting the conclusion the Respondent knew of the Complainant’s rights when registering the disputed domain name and had no rights or legitimate interests in it.

The Complainant asserts that the Respondent could not have been unaware of the Complainant’s trademark rights when registering the disputed domain name, given the Complainant’s longstanding and extensive use of the SCREWFIX mark.

The Complainant notes that, shortly after registration of the disputed domain name, an individual falsely identifying itself as an actual named member of staff for the Complainant’s Screwfix France business sent an e-mail to some of the Complainant’s actual suppliers seeking large orders purportedly on the Complainant’s behalf, using a reply address at the disputed domain name and copying the Complainant’s genuine e-mail footer so as to appear legitimate.

The Complainant contends that this conduct, namely registration and use of the disputed domain name to impersonate the Complainant for fraudulent purposes, constitutes registration and use in bad faith, involving specific targeting of the Complainant. The Complainant contends that the Respondent’s failure to answer the Complainant’s cease-and-desist communication is itself an indication of bad faith and an indirect admission of liability. Finally, the Complainant relies upon the fact that the Respondent has been involved in a previous case under the Policy in which it targeted the Complainant in a similar manner and was found to have registered and used the domain name concerned in bad faith, thus demonstrating a pattern of abusive conduct

Respondent:

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.

The Complainant has demonstrated to the Panel’s satisfaction that it has UDRP-relevant rights in the mark SCREWFIX by virtue of the registered trademarks listed above.

The Second-Level Domain of the disputed domain name incorporates the entirety of the Complainant’s SCREWFIX mark with the prefixed term “achat”, this being the French word for “purchase”. The Panel finds that the incorporation of the Complainant’s SCREWFIX mark in its entirety is sufficient to establish confusing similarity and that the addition of the term “achat” does not prevent such a finding, as the said mark remains clearly recognisable in the disputed domain name.

The Panel also notes that the disputed domain name has been used to send e-mails designed to impersonate the Complainant, claiming to be from a member of its staff. Such use, which clearly trades off the Complainant’s rights, in the Panel’s view, affirms confusing similarity.

The generic Top-Level Domain “.com” is typically disregarded for comparison purposes, as it is required for technical reasons only.

With regard to the second element of the Policy, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it is not aware of the Respondent being commonly known by the disputed domain name or any corresponding name, that the corresponding WhoIs record discloses no identifying information supporting such a claim, and that the Respondent is not making a bona fide offering of goods or services, nor is engaged in a legitimate non-commercial or fair use of the disputed domain name.

The Complainant shows that the disputed domain name has been used in connection with a fraudulent e-mail scheme. Ultimately, the disputed domain name has been used to attempt to confuse the Complainant’s suppliers into believing that the Respondent is associated with the Complainant, and indeed that it is a senior member of the Complainant’s staff, when it is not. This cannot confer rights or legitimate interests upon the Respondent.

The Respondent has not replied to the Complainant’s allegations and evidence in this case and has failed to set out any alleged rights or legitimate interests which it might have claimed in the disputed domain name. There are no submissions or evidence on the record which might serve to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

As indicated in the discussion of the rights and legitimate interest topic immediately above, the disputed domain name appears to the Panel intentionally to incorporate the Complainant’s SCREWFIX trademark. The evidence before the Panel shows that the Complainant’s SCREWFIX mark long pre-dates the date of registration of the disputed domain name. The Complainant’s mark is in widespread use in multiple countries, and likewise in connection with the Complainant’s own official domain name. The disputed domain name has been used in a manner which is clearly intended to imitate the Complainant. Namely, the disputed domain name has been used to send e-mails in a phishing scheme, the footers of which are said, in an uncontested assertion, to mimic that of the Complainant. The sender of the said e-mails has passed itself off as a named senior employee of the Complainant. A version of the Complainant’s logo is reproduced in the said e-mails. Furthermore, a person using the same organization name as the Respondent has been involved in a previous case under the Policy (Screwfix Direct Limited v. jean dis, CAC-UDRP-108598) in which the same modus operandi was used in impersonating the same member of staff of the Complainant. The domain name concerned, together with the disputed domain name, establishes a pattern of bad faith conduct targeting the Complainant.

In all of the above circumstances, it is entirely reasonable to infer that the disputed domain name was registered by the Respondent with knowledge of the Complainant and its rights, and with an intent to target these unfairly and illegally. Consequently, there appears to the Panel to be no possible good faith reason for the Respondent to have selected the disputed domain name, and there are demonstrable indications of bad faith present in this case.

In all of these circumstances, the Panel considers that the Complainant has made out a sufficient case of registration and use in bad faith. The Respondent has not filed a Response in this case and therefore has not addressed the Complainant’s assertions of bad faith registration and use to any extent. No explanation has been presented by the Respondent that might have suggested that its actions regarding the disputed domain name were in good faith.

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.