WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
County Bookshops Limited v. Guy Loveday
Case No. D2000-0655
1. The Parties
The Complainant is County Bookshops Limited, represented by emw law of 101 North 13th Street, Central Milton Keynes, Buckinghamshire MK9 3NU, United Kingdom.
The Respondent is Guy Loveday, of 3 Shelton Drive, Ainsdale, PR8 2TE, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is "countybookshops.com".
The Registrar is Registrar.com, Inc.
3. Procedural History
The Complaint was received by email on June 22, 2000, and in hard copy on June 30, 2000, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and, both parties being located in England, the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.
The Center transmitted the requisite Registrar Verification request to Registrar.com, Inc. on June 28, 2000, and received a response on July 5, 2000, by facsimile from Registrar.com, Inc., confirming that the Respondent, Guy Loveday, is the current registrant of the domain name "countybookshops.com".
Proceedings in this case were formally commenced on July 17, 2000, when the Center sent a copy of the Complaint to the Respondent at the email address firstname.lastname@example.org recorded as the Respondent's email address in the Administrative Contact details for the domain name at issue. A hard copy of the Complaint was sent by courier to the Respondent on July 18, 2000. This was addressed to:
3 Shelton Street
This incorrectly substituted "Ayrshire" (a part of Scotland) for "Ainsdale", the town near Southport in Lancashire, which is the Respondent's actual address shown in the Administrative Contact details. This error originates from Paragraph  of the Complaint, where the Respondent's contact address was wrongly shown as in "Ayrshire" (the contact address was correctly recorded on the front of the Complaint as filed). Nevertheless, despite this address error, it appears that the courier was able to deliver the hard copy correctly because the UK postcode PR8 2TE uniquely identifies the correct street location.
As the courier did not report any failure of delivery and the email notification was to an active email address otherwise shown by the evidence to be in use by the Respondent, the Panelist is prepared to accept that the proceedings were effectively commenced in this case. However, this instance highlights the need for the Complainant to be diligent in ensuring that a Respondent's contact details are consistent and correctly shown in the Complaint.
The notification to the Respondent advised that a Response would need to be submitted to the Center no later than August 6, 2000, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on August 14, 2000, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent and to the Complainant's representatives by email only.
On August 21, 2000, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his Statement of Acceptance and Declaration of Impartiality and Independence on August 23, 2000. The Center appointed Mr. Gymer as Panelist on August 25, 2000, and notified the Respondent and the Complainant's representatives of this appointment by email on the same day.
4. Factual Background
The Complainant is County Bookshops Limited, a company which was incorporated in England on February 15, 2000. It apparently operates bookshops under the "County Bookshops" name in a number of locations in the UK.
The Complainant claims to have registered the domain name countybookshops.co.uk on January 17, 2000, and a check carried out by the Panelist of the WHOIS at Nominet UK (www.nic.uk) confirms that this domain name was indeed registered for "County Book Shops" [sic] on that date.
The Respondent registered the domain name countybookshops.com on January 18, 2000, as shown in the Register.com WHOIS record for this domain name.
According to the evidence submitted by the Complainant, on May 23, 2000, a Mr. Terry Cudbird, reportedly the Marketing Director for the Complainant, sent an email to the Respondent in which he expressed an interest in purchasing the countybookshops.com domain name from the Respondent and asked "How much would you want for it?" In an email reply dated June 5, 2000, the Respondent admitted "to know little of [the Complainant] aside from [its] stores on the high street" and replied "Of course I would be willing to sell the name …". In the email, the Respondent also asked Mr. Cudbird to "[make him] an offer for the name."
Otherwise, the Complainant has made a number of further contentions by way of a Statement of Case in the Complaint. These are summarised below.
5. Parties’ Contentions
The Complainant claims that it has common law trademark rights in the name "County Bookshops". Although the Complainant was only incorporated as the limited company, County Bookshops Limited, earlier this year, it alleges that the name was previously used by "the partnership" (details of which are not provided in the Complaint) for approximately twenty years in respect of the retail sale of books, evidently with the implication that the Complainant is the successor in title to that business and is entitled to any goodwill established by such use. The Complainant claims to have 54 shops in major cities in the United Kingdom, and to have invested considerable time and money to build up its substantial goodwill in the "County Bookshops" trademark, such that the trademark is now synonymous with the products and services offered by the Complainant.
The Complainant states that it proposes to conduct e-commerce with respect to the sale of books under the trademark in the near future and registered the domain name countybookshops.co.uk on the January 17, 2000, presumably for that purpose.
The Complainant asserts that the domain name countybookshops.com, registered by the Respondent on January 18, 2000, is identical to the Complainant’s trademark; that the Respondent has no legitimate interests in respect of the name as he is involved in the information technology business and has no plans to use the name in connection with books; that in any event, if he were to use the domain name for a website in any way related to the sale of books, there would be a strong likelihood of confusion with the Complainant’s trademark as to the origin or endorsement of products on such a website; and that the domain name was actually registered and is being used in bad faith as it was registered primarily for the purpose of selling it for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
In support of these assertions the Complainant submitted evidence annexed to the Complaint:
(i) that the web page to which the domain name relates was a free parking page provided by GreatDomains.com on which page the domain name was offered for sale (Annex 3 to the Complaint);
(ii) that a Mr. Cudbird of the Complainant e-mailed the Respondent on May 23, 2000, indicating that the Complainant might wish to purchase the name and asking how much the Respondent might wish to sell it for. The evidence shows that the Respondent replied acknowledging that he was aware of the Complainant’s stores and inviting the Complainant to make an offer to purchase the domain name (Annex 4 to the Complaint).
The Complainant states that it took legal advice and subsequently advised the respondent, Mr. Loveday, of its rights in the trademark and requested that the Respondent transfer the domain name to the Complainant. No details were provided in the Complaint of how and when this information was given or the request made to the Respondent.
It is further asserted that both a Mr. James of the Complainant [presumably the Mr. Laurence James who signed the hard copy of the Complaint as submitted to the Center, although this is not made clear] and Mr. Bowmer of emw law, legal advisers to the Complainant, have had subsequent conversations with the Respondent during which the Respondent indicated that he would not be prepared to sell the domain name to the Complainant if he were only to be paid his out-of-pocket costs directly related to the domain name. The Respondent is alleged to have also stated that he has in fact agreed to sell the name to a third party. Again no details were provided in the Complaint of who made and who participated in such calls or when they took place, nor was any information disclosed identifying the alleged third party or what use (legitimate or otherwise) the third party might make of the domain name.
On the basis of these assertions, the Complainant claims that the three elements specified in Paragraph 4(a) of the Policy are fulfilled and requests that "www.countybookshops.com" [sic] should be transferred to the Complainant.
No Response to the Complaint was received from the Respondent. The only evidence of the Respondent's position is that provided in the copy of the email submitted in evidence by the Complainant as noted above.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". It is perhaps misleading, therefore, that the Rules (Paragraph 14) and the Supplemental Rules (Paragraph 7(c)) refer to this situation as a "[Respondent] Default". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
6.1 Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
In the Panelist's opinion, this requires the Complainant to satisfy the Panel on two points. Firstly that the domain name is identical or confusingly similar to a trademark or service mark claimed by the Complainant and, secondly, that the Complainant does indeed have rights in the mark. The Panelist considers it settled interpretation that the reference to "rights" in Paragraph 4(a)(i) of the Policy includes both registered and unregistered rights (this issue has been previously addressed in relation to disputing parties based in the United Kingdom, for example, in the decision in WIPO Case No. D2000-0235 Jeanette Winterson v. Mark Hogarth).
The first point may be established by comparison of the domain name and the claimed mark.
In the present case, the Complainant claims rights in the mark "County Bookshops", and the domain name is countybookshops.com. The Panelist therefore considers it unarguable that the domain name is essentially identical to the Complainant's mark in plain text.
If the mark were a registered trademark, the second point could readily be established and independently verified by reference to the relevant official Trade Marks Register. In such a case, presentation of an appropriately certified true copy of the registration details would plainly provide sufficient evidence of the existence of applicable rights. For example, under the UK Trade Marks Act 1994, (the TMA1994) Section 72, registration provides prima facie evidence of validity and hence of the registered proprietor's entitlement to the rights conferred under Section 9 of the TMA1994.
As the mark is unregistered, however, there can be no such presumption of entitlement to rights under English law and the onus is on the Complainant to provide convincing evidence that it should be entitled to such rights. The key questions for the Panelist in this case are how the Complainant should reasonably be expected to support its claim to such unregistered rights and whether the Complaint does provide such support.
Proceedings under the Policy have relevant aspects in common with an application for Summary Judgment. The Complainant states its case with supporting evidence and applies for a decision to be taken, the Respondent has an opportunity to respond and a summary decision on the merits is to be made promptly thereafter.
Under the Civil Procedure Rules (CPR) which apply to Summary Judgment proceedings in England and Wales, the claimant (cf. Complainant) making an application is expected to submit evidence in support of its application "verifying the relevant claim or issue"[CPR 24.4.9]. Such evidence would normally be presented in the form of a Witness Statement with a Statement of Truth or an Affidavit with a jurat.
There are also relevant comparisons to be drawn with opposition proceedings against registration of a trademark. A party claiming unregistered rights in the UK may oppose registration of a trademark on the grounds that use of the trademark in the UK "is liable to be prevented … by virtue of any rule of law (in particular, the law of passing-off) protecting an unregistered trademark or other sign used in the course of trade" [TMA1994, Section 5(4)(a)]. An opposition on such grounds would need to be supported by appropriate evidence to satisfy the Trade Marks Registry that the opponent was entitled to the protection claimed for any such unregistered trademark right. Again, such evidence would normally be presented in the form of a Witness Statement, Affidavit or Statutory Declaration. The UK Trade Marks Registry has useful notes on "How to provide evidence of use of a trade mark", which are available at http://www.patent.gov.uk/dtrademk/evidence.html
In all cases, the person giving the evidence must be identified and the evidence must make clear which statements are made from that person's own knowledge and which are matters of information and belief. If evidence is of hearsay, then this must also be stated and the degree of hearsay specified (i.e. whether it is first-hand or second-hand hearsay).
In the Panelist's view, it is reasonable to expect that the standards to be applied to supporting evidence in cases brought under the Policy and based on claims to unregistered rights in particular should be equivalent in form and extent to that which would be required in an opponent's evidence-in-chief in a trademark opposition brought on corresponding grounds.
The mark in this case is "County Bookshops". In the UK, a "county" is a geographical division of the country, principally used for administrative purposes (e.g. County Durham, Kent, Lancashire etc. are such counties). The term "county" is used similarly in Ireland (e.g. County Cork) and in the United States (e.g. Marin County; Orange County etc.). The mark "County Bookshops", therefore, is prima facie directly descriptive of bookshops in a county and, consequently, it is no surprise that the Complainant has no registered trademark rights in the mark. Section 3(1)(c) of the TMA1994 expressly excludes from registration "trade marks which consist exclusively of signs or indications which may serve, in trade, to designate … the geographical origin of … goods or of rendering of services".
This, in itself, does not necessarily mean that the Complainant cannot have any proprietary rights in the mark "County Bookshops". The TMA1994 recognises that such a mark can become distinctive (and entitled to registration) on evidence that it has in fact acquired a distinctive character as a result of the use made of it. However, for a mark as inherently descriptive as "County Bookshops", the evidence which would required to prove that the mark has acquired sufficient distinctiveness to merit registration would be substantial.
The evidence which would be required to support a claim to protection for the purposes of a trademark opposition would probably not need to be so substantial - for example, it might be sufficient to establish a significant local rather than a national reputation in such a mark. Nonetheless, the Panelist considers that it would certainly require more than mere assertion to justify any claim to proprietary rights in such a descriptive mark.
In this case, the Panelist is prepared to accept that the Complaint itself may be treated as evidence corresponding to a witness statement with the Certification under Paragraph 3(b)(xiv) of the Rules serving the function of a Statement of Truth for the purposes of these proceedings. It appears to have been signed by a Mr. James who is said elsewhere in the Complaint to be the Complainant's own contact (although it is somewhat unsatisfactory that there is no indication of what position and responsibilities Mr. James has in the Complainant).
It is noted that the Respondent did not expressly challenge any of the assertions in the complaint. However, this cannot simply be taken as an admission of all the claims in the Complaint. The Respondent might conceivably have taken the view that the Complainant had failed to make a case meriting a response.
Taking all these issues into consideration, the evidence presented by the Complainant falls well short of that which would be desirable to support the claims to proprietary rights in the descriptive mark "County Bookshops" in this case. Particular deficiencies that are apparent include:
- no evidence of the form in which the mark is actually used (e.g. whether in a stylised logo or in plain text) or to confirm whether or not the mark has been used in the same form throughout the twenty years' alleged use;
- no evidence to show how the Complainant acquired any purported rights or goodwill from the unidentified earlier "partnership";
- no evidence to confirm the extent of use or the actual expenditure incurred in establishing the claimed goodwill the in the mark;
- no evidence to support the assertion that the mark is now synonymous with the goods and services of the Complainant.
The Complainant's own website at www.countybookshops.co.uk was still not yet operational when checked by the Panelist while the Complaint was under consideration, so no additional information to support the Complainant's case could be found there.
In the circumstances, the Panelist concludes that the Complainant has not adequately discharged its obligation to show that its claim to unregistered rights in the trademark is justifiable. The evidence as submitted is simply insufficient to convince the Panelist that the Complainant is entitled to assert such rights in such a descriptive mark.
The Panelist has also gone on to consider whether it would be appropriate of the Panel's own motion to invite the Complainant to file further evidence, if available, to substantiate its claims. A Panel would appear potentially to have this option under the General Powers specified in Paragraph 10 of the Rules.
After due deliberation, the Panelist has concluded that it would not be appropriate to extend the present proceedings for that purpose. The Policy is specifically directed at the cheap and speedy determination of disputes. The parties have each had an opportunity to make their respective case. If the Complainant were to be allowed a further opportunity to present supplementary evidence in these proceedings then this would inevitably require a significant extension of time and an additional period for the Respondent to consider the additional evidence and provide a reply. The dispute resolution service provider would be put to significant extra work and unrecoverable expense dealing with the administrative aspects, and the Panelist would also be required to delay a decision and take additional time reviewing the supplementary evidence.
A Court in the UK would have liberty to take account of a claimant's failure to make its case at an initial hearing by making an appropriate costs order if the proceedings were to continue. A Panel does not have that flexibility available to it. However, the Policy does not absolutely bar a Complainant from reapplying by filing a new Complaint (subject to payment of a further fee) if it is able to present more substantial and convincing evidence to justify its claim to have enforceable rights. Alternatively, the Complainant is at liberty to apply to the High Court and make its case there, if it can produce adequate evidence to show that it does have proprietary rights in the name "County Bookshops.
In the present proceedings, it follows that, as the Complainant has not provided sufficient evidence to convince the Panelist that it is entitled to claim such rights, it has not fulfilled the requirements of Paragraph 4(a)(i) of the Policy. No further determination is needed.
The Complainant attached as Annex 5 to the Complaint copies of the decisions in the following matters, decided under the ICANN Dispute Resolution Policy, in support of its case:
Domain Name: BuyPC.com. Decision of the National Arbitration Forum No.FA0002000093633 between Cedar Trade Associates, Inc and Gregg Ricks
Domain Name: aeroturbine.com. Decision of the National Arbitration Forum No. FA0002000093674 between Aeroturbine, Inc. and Domain Leasing Ltd.
Domain Name:worldwrestlingfederation.com. Decision of WIPO Arbitration and Mediation Center case no D99-0001 between World Wrestling Federation Entertainment, Inc and Michael Bosman.
In the Panelist's view, none of these cases helps the Complainant overcome the fundamental deficiency in the evidence which obliges the Panelist to conclude that the Complainant has failed in these proceedings to provide sufficient evidence to support its claim to have protectable rights in the "County Bookshops" mark.
The BuyPC.com case does relate to an American unregistered trademark, but the case was decided on its own merits and there is no information on the form and extent of evidence submitted by the Complainant in that case to support its claim to unregistered rights.
The aeroturbine.com and worldwrestlingfederation.com decisions were also both based on US registered trademarks and so are not analogous with the present case.
For the reasons given in Section 6 above, the Panelist decides that this Complaint should be dismissed for lack of adequate evidence to support the claim to unregistered trademark rights required under Paragraph 4(a)(i) of the Policy.
Dated: September 22, 2000