WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Liberty PLC v. DJV Associates

Case No. D2000-0708

 

1. The Parties

The Complainant is Liberty PLC, a public limited company incorporated under the laws of England, whose registered office is at Lasenby house, 32 Kingly Street, London W1R 5LA, England.

The Respondent is DJV Associates with a contact address at Rose Cottage, Ketton Road, Hambleton, Oakham, Rutland, LE15 8TH England. The administratorís name is Denise Strain, and the Technical Contact is Active ISP Inc. for whom two different addresses are given. In the Complaint, Active ISP Inc are shown as residing at 111 N. Market Street, Suite 670, San Josť, California 95113, USA, while according to the UWHOIS printout, they can be located at P.O. Box 70, Bogerud, Olaf Helsetsvei 6, 0621 Oslo, Norway.

 

2. The Domain Name and Registrar

The domain names upon which this Complaint is based are: "libertysoflondon.com", "libertyoflondon.net", and "libertysoflondon.net".

The Registrar of the domain name as at the date of the Complaint is Melbourne IT, a division of Melbourne IT Limited (hereinafter "Melbourne IT").

 

3. Procedural History

On June 30, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (hereinafter "the Center") by email pursuant to the Uniform Dispute Resolution Policy (hereinafter "the Policy") of the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") and under the Rules for the Policy implemented by ICANN (hereinafter "the Rules"). A hard copy of the Complaint was received by the Center on July 5, 2000.

The Complainant stated that copies of the Complaint had been sent on June 30, 2000:

- to the Respondent by postal mail to the address given for it in 1 above;

- to Active ISP Inc by postal mail to the first of the addresses given for it in 1 above;

- to the email addresses for the Technical and Administrative contacts shown in the domain name registration data in Melbourne ITís WHOIS database, namely infantaid@talk21.com and hostmaster@activeisp.com;

- by email to postmaster@libertysoflondon.com and postmaster@libertyoflondon.com.

The Complainant stated that a copy of the Complaint had also been sent to Melbourne IT by email, but it would seem to have been sent initially to the wrong email address. An amended copy was sent to Melbourne IT by email to the correct address on July 25, 2000.

Upon receipt of the email copy of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on July 5, 2000 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.

The Center sent a Request for Registrar Verification to Melbourne IT on July 25, 2000 by email. Melbourne IT responded to the Centerís request by email on July 26, 2000 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain names in dispute, (3) that the Respondent DJV Associates was the current registrant of the domain names in dispute, (4) that the Respondentís contact details were correct, (5) that the Policy applied in relation to the domain names "libertysoflondon.com", "libertyoflondon.net", and "libertysoflondon.net" and (6) that the current status of the domain names was licensed.

On July 25, 2000 the Complainant sent to the Center the amended copy of the Complaint with the correct address for the Registrar.

The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Complainant on July 26, 2000.

On August 2, 2000 the Complainant sent some additional submissions, consisting of two further letters it had received from the Respondents. These were received by the Center on August 4, 2000.

The Respondent having failed to reply in due time, the Center sent a Notification of Respondent Default to the Respondent on August 15, 2000 by post/courier, facsimile and email, with a copy to the Complainant.

The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on August 18, 2000 via email. A copy was also sent to the Panel on the same date by email.

The Center dispatched a Transmission of Case File to the Panel, to the Respondent and to the Complainant on August 18, 2000. The Panel received hard copies of this material on August 21, 2000.

All other procedural requirements appear to have been satisfied.

 

4. Factual Background

Activities of the Complainant

The following information was asserted as fact by the Complainant and, in the absence of any response from the Respondent, remains uncontested.

(i) The Complainantís first Liberty of London store was opened in the UK in 1875. The Complainant currently operates stores in Regent Street in Central London, in Windsor and at London Heathrow Airport Terminals. In addition, the Complainant owns a controlling interest in a company called KK Liberty Japan, which has traded successfully in Japan since 1988.

(ii) The Complainant manufactures and sells a wide variety of merchandise including fabric, linens, towels, curtains, apparel, gifts and housewares under the trademarks of LIBERTY OF LONDON and LIBERTY.

(iii) This merchandise is sold worldwide through the Complainantís retail stores as well as via mail order.

(iv) About a third of the Complainantís clients in the London stores are visitors to the UK, and as a consequence the names LIBERTY and LIBERTY OF LONDON are well known in many countries.

(v) The domain name "liberty-of-london.com" was registered for the Complainant in 1998, since which time it has been used by the Complainant as both its email address and its Internet address. The web-site at this domain name gives extensive information about the Complainantís history, goods and services. Between 1999 and May 2000 the Complainant used this address as its e-commerce site, making many transactions, including a significant number to the United States.

(vi) The Complainant has also acquired "liberty.co.uk" as part of its plans for a full-scale launch of an e-commerce business using its LIBERTY trademarks.

(vii) The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademarks or to apply for any domain name incorporating any such marks.

The Complainantís TradeMarks

The Complainant claims to be the owner of goodwill and reputation in the trademarks, LIBERTY and LIBERTY OF LONDON.

The Complainant owns and has owned for a considerable number of years a large portfolio of trade mark registrations world-wide for marks including LIBERTY and LIBERTY OF LONDON. A schedule in the form of a printout of all of the Complainantís trademarks worldwide was attached to the Complaint. An analysis of this shows that the trade mark LIBERTY is the subject of 248 registrations or applications in 57 legislations (including Benelux and the European Union), but that there are only 7 registrations or applications of LIBERTY OF LONDON in 3 countries.

The Complainant has provided no certificates for any of this massive portfolio of trade marks, but the Panel is prepared to accept the printout as evidence of the existence of these trademarks on the date it was printed, namely April 4, 2000, especially as it seems to have been prepared by an independent third party.

Activities of the Respondent

The Respondent does not appear to have previously conducted any commercial enterprise or non-commercial activity under the names, LIBERTY OF LONDON or LIBERTY, nor is the Respondent commonly known by the name LIBERTY OF LONDON or LIBERTY.

The domain names in dispute are not being actively used by the Respondent although they are being hosted by Active ISP Inc. No positive action has been taken by the Respondent in relation to the domain names since they were registered, and there is no indication of any future intended use. The web-sites at the domain names are merely holding pages for activeisp.com.

The only responses from the Respondent have been three letters to the Complainantís legal advisors. The first was dated June 22, 2000 and in it the respondents indicated that:

  1. it had no intention of using the domain names for trading;
  2. it had "received interest" in the domain names from third parties;
  3. it was prepared to give the Complainant the opportunity to "enter negotiations to purchase" the domain names;
  4. it was looking for "substantial offers" for the domain names; and
  5. it reserved its rights to "continue negotiation with other interested parties".

A second letter dated June 30, 2000 confirmed that the Respondents had given the Complainant first refusal to purchase the disputed domain names but that it still reserved the right to sell them elsewhere. The letter went on to say that the Respondent had recently purchased two more names of possible interest to the Complainant, although the letter does not reveal what they are. The third letter, dated July 28, 2000 was a reminder and it included a statement that the Respondent had no intention of responding to this Complaint.

 

5. The Partiesí Contentions

The Complainant contends:

That the domain names which are the subject of this Complaint are identical or confusingly similar to the trade names, trade marks and domain names in which the Complainant has legitimate and exclusive rights.

That the Respondent does not have any legitimate interest in the marks LIBERTY OF LONDON or LIBERTY.

That in addition to the domain names which are the subject of this complaint, the Respondent has also registered the following UK country code top level domain names incorporating the Complainantís mark, that no active use of these domain names is being made by the Respondent, and that by registering these domain names the Respondent is preventing the Complainant from reflecting is trade mark in all possible corresponding domain names:

- "libertyslondon.co.uk" - registered April 13, 2000;

- "libertyoflondon.co.uk" - registered April 13, 2000

- "libertysoflondon.co.uk" - registered June 23, 2000

The Complainant notes that the last of these names was registered some 15 days after the Complainant first wrote to the Respondents, and confirms that it will be making a separate complaint about them to the UK Registrar.

That the Respondent has engaged in a pattern of conduct of registering domain names in which it has no legitimate interest.

That by creating a likelihood of confusion between the domain names and the Complainantís trademarks, consumers and Internet users are likely to conclude that the Respondentís web-sites are in some way associated with the Complainant.

That the Respondent has registered the domain names with a view to disrupting the Complainantís business.

That the Respondent did not acquire the domain names for any legitimate purposes whether commercial or otherwise.

That the Respondent has registered and is using the disputed domain names in bad faith.

That the disputed domain names were registered primarily for the purpose of selling them to the Complainant or to a third party, for valuable consideration in excess of the out-of-pocket expenses.

 

6. Discussion and Panel Findings

On a preliminary issue, the Panel decided to admit and consider the further submissions and documents submitted by the Complainant, as they were not transmitted to the Panel after the Panel had been appointed, but at the same time as the Complaint and the Response to the Complaint.

Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. These are the only matters to be considered. The Panel will therefore now consider in detail each of the three elements in paragraph 4(a).

Paragraph 4(a)(i) of the Policy provides:

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights"

The domain names in dispute are: "libertysoflondon.com", "libertyoflondon.net", and "libertysoflondon.net". Most of the trade marks owned by the Complainant consist of the single word LIBERTY. If this had been the Complainantís only trademark, the Complaint might have been difficult to sustain. The Panel considers that the word LIBERTY per se is not identical to any of the disputed domain names, nor confusingly similar thereto. It is a common English word and there are over 40 entries in the London Business telephone book for companies or organizations having ĎLibertyí as the first word in their names.

However the Complainant also has trade mark registrations of LIBERTY OF LONDON: two in Canada, two more in Japan, and one in the USA, with further applications pending in each of Japan and USA. The Complainant also owns the domain name "liberty-of-london.com". LIBERTY OF LONDON is clearly identical to one of the disputed domain names, and confusingly similar to the other two. It is also in the personal knowledge of the Panel, that the Complainant is familiarly referred to as "Libertys".

Neither the Policy nor the Rules call for a Complainant to have a substantial number of trade marks in order to succeed under this paragraph, nor that the trade mark be registered Ė only that the Complainant must have some rights in it.

In these circumstances the Panel finds that Paragraph 4(a)(i) of the Policy has been proved.

Paragraph 4(a)(ii) of the Policy provides:

"(ii) you have no rights or legitimate interests in respect of the domain name"

It is quite clear from the correspondence received from the Respondent that it has no legitimate interest in retaining any of the domain names. It has stated that it has "no intention of using the liberty Domain Names for trading", and although the Respondent later claims to have registered the names in good faith, it nevertheless immediately offered to sell them to the Complainant for a substantial sum. The Panel further finds that such rights as exist in the name LIBERTY of LONDON or LIBERTYS OF LONDON are owned exclusively by the Complainant.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been proved.

Paragraph 4(a)(iii) of the Policy provides:

"(iii) The Domain Name has been registered and is being used in bad faith."

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. In some cases decided under the Policy it has been found that it is unnecessary to consider the two limbs of this provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. However, although bad faith use can be found to follow bad faith registration, it is still necessary for the Complainant to prove registration in bad faith.

Paragraph 4(b) of the Policy, provides that a number of different circumstances can be evidence of bad faith registration and use, namely:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of you web site or location or of a product or service on your web site or location."

The Complainant is relying on paragraphs (i). (ii), and )(iii) of the above, but not (iv).

In view of the correspondence from the Respondent it is quite clear that (i) is proved. In these circumstances the Panel need go no further as all four paragraphs are independent of each other. However, for the record, the Panel finds that (ii) is also satisfied by the Respondentís registration of the domain name "libertysoflondon.co.uk" after it had been made aware of the Complainantsí objection, but that without more evidence, (iii) has not been proved.

 

7. Decision

For these reasons, the Panel decides that the domain names registered by the Respondent are identical or confusingly similar to marks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name was registered and is being used in bad faith.

Accordingly the Panel requires that the registrations of the domain names "libertysoflondon.com", "libertyoflondon.net", and "libertysoflondon.net" be transferred to the Complainant.

 


 

David H Tatham
Panelist

Dated: August 22, 2000