WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SSL INTERNATIONAL PLC v. MARK FREEMAN

Case No. D2000-1080

 

1. The Parties

Complainant is SSL International PLC, Toft Hall , Knutsford, Cheshire WA16 9PD, United Kingdom.

Respondent is Mark Freeman, PO Box, 51226, Musgrave Road, Musgrave, Durban 4062, South Africa.

 

2. The Domain Name and Registrar

The domain names at issue [hereinafter the Domain Names] are:"sslinternational.com"; "setonscholl.com"

The registrar of the Domain Names is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.

 

3. Procedural History

On August 16, 2000, Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated August 21, 2000. In an e-mail dated August 28, 2000, the Center informed the Complainant, that the Complaint did not indicate the correct Registrar with which the domain names had been registered. On August 31, 2000 the Complainant sent the Center an amended Complaint which stated the correct Registrar. On August 31 the Center received the Registrarís Verification Response attesting that the current registrant for the Domain Names is the Respondent. On September 18, 2000, the Center sent a letter to the Complainant, indicating that the Complaint had to be amended to include the consent of the Complainant to submit (for mutual jurisdiction) to the Respondentís address. On September 18, 2000, the Complainant sent by e-mail the amended Complaint to the Center and in hard copy on September 25, 2000.

The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organisation Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on September 25, 2000.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

In a letter dated September 25, 2000, the Center informed the Respondent of the commencement of the proceedings as of September 26, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.

In a letter sent October 17, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

On October 27, 2000 the Center informed both parties ,by e-mail, that an administrative panel had been appointed.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to November 9, 2000, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.

 

4. Factual Background

The Complainant in this administrative proceeding is a company incorporated in England and Wales with the registration number 388828 whose registered office is situated at Toft Hall, Knutsford, Cheshire, WA16 9PD, England. The Complainantís company was formed in June 1999 following the merger of two separate businesses trading under the names "Seton Scholl Healthcare plc" and "London International Group plc". Following the merger the complainantís company (SSL International) has become a leading multinational healthcare business, with strong international brands and world wide distribution through pharmacies, mass market outlets and healthcare professionals. It has operations in over 35 countries with its products being sold in over 100 countries (including South Africa). As a result of the merger, the Complainant acquired all of the goodwill and reputation in the names "Setonscholl", "Seton", "Scholl", and "SSL International". The evidence establishes that for the period which ended on the March 31, 2000, the Complainantís turnover under the name "SSL International" was £704.7 million.

No information has been supplied regarding the attributes and/or businesses of the Respondent although it appears that the Respondent is a resident of South Africa.

As shown by the evidence, the Respondent registered the Domain Names, which consisted of "sslinternational.com" et "setonscholl.com" on or about May 25, 2000, and April 1999, respectively. The Domain Names are not directed to a web site or other on-line presence despite having been registered over a year ago. When entered into an internet search engine, the Domain Name "setonscholl.com" produces a holding page advertising the Registrarís services. The domain name "sslinternational.com" when entered into an Internet search engine does not produce any web site or holding page.

The Complainant owns registrations or has applied for registrations for the trademarks related to the Domain Names in various countries around the world. This newly merged company acquired a number of international brands including the rights (with the exception of the US rights) in the mark "Scholl" which had been in use for foot care and footwear by Scholl plc since 1987.

There is no relationship between the Respondent and the Complainant. The Respondent is not a Licensee of the Complainant nor has he otherwise obtained any authorisation to use the Complainantís marks or apply for any domain names incorporating any of these marks.

 

5. Partiesí Contentions

A. Complainant

At paragraph 6 to the Complaint the Complainant maintains that the Respondent is a cyber squatter. The Domain Names are not directed to a web site or other on-line presence despite having been registered over a year ago. When entered into an internet search engine, the Domain Name "setonscholl.com" produces a holding page advertising the Registrarís services. The domain name "sslinternational.com" when entered into an Internet search engine does not produce any web site or holding page.

At paragraph 4 to the complaint, the Complainant alleges that the Respondentís registration of the Domain Names infringed its Registered Trade Marks and amounted to passing off Ė on the basis that the names "SSL International" and "setonscholl" are exclusively associated with the Complainant company so that anyone who learned of the Domain Names and/or who conducted a "Who is" search against itís proprietors would be confused into believing that the Domain Names, the Domain Name proprietor and any web sites operated from the Domain Names were associated with the Complainant.

At paragraph 7 of the Complaint, the Complainant continues by alleging that it is concerned that, because of the confusing identity/similarity of the Domain Names to the Complainantís trade marks "SSL International", "seton", "scholl" and "setonscholl" the registrations and ultimately any use by the Respondent or any other third party of the Domain Names would inevitably result in the dilution of the Complainantís reputation and goodwill in its trade marks and trading name.

At paragraph 13 The Complainant alleges bad faith in that the Respondent has registered the Domain Names with intention to transferring them to the Complainant or a third party for valuable consideration in excess of the Respondentís out of pocket expenses. In this regard the Complainant refers to its extensive reputation for the marks "setonscholl" and "SSL International" for healthcare products.

Further on in paragraph 13 on the Complaint, the Complainant alleges the lack of any legitimate rights on the part of the Respondent to use the Domain Names whatever kind of site he plans to develop and the Respondentís declination to transfer the Domain Names to the Respondent.

At paragraph 14 on the Complaint, the Complainant alleges the fact there is no evidence offered by the Respondent that he (1) has used or has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services,; (2) has ever been commonly known by the Domain Names - or (3) has made a legitimate, non-commercial or fair use of the Domain Names, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainantís Trade Marks.

At paragraph 4 to the Complaint the Complainant alleges that the Respondent knew of the Complainantís mark when the Domain Names were registered.

B. Respondent

The Respondent failed to file a response with the Center within the prescribed delays

 

6. Discussion and Findings

Referring to paragraph 14 of the ICANN Rules, in the absence of a response to the complainantís allegations by the respondent, the Panel may consider those claims in light of the unchallenged evidence submitted by the Complainant. While, the Panel cannot decide in the Complainantís favour solely on the basis of the Respondentís failure to respond, it is however entitled to draw, and in this case does draw, such inferences as it deems appropriate and just in the circumstances.

Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements. In order to have the Domain Name transferred to this end, it is incumbent on the Complainant to show:

i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;

ii) that the Respondent has no legitimate rights or interests in the Domain Name; and

iii) that the Domain Name was registered and is being used in bad faith.

These three elements are considered below.

Identical or Confusingly Similar to Trademark

The Complainant provided evidence to the effect that it (on its own or through its wholly owned subsidiaries) was the registered owner of the trademarks "Seton" and "Scholl" in a number of jurisdictions prior to the registration of the Domain Names by the Respondent. These registered trade marks are similar or identical to the domain name "setonscholl", registered by the Respondent. As for the name "SSL International", the Complainant alleged that it had acquired substantial goodwill and reputation in relation to its business activities of manufacturing and supplying health care products. It is the Panelís view that the goodwill and reputation in the name "SSL International" may be inferred from the scale and success of its trading activities since June 1999.

The Panel is also of the opinion that the names "SSL International" and "Setonscholl" are exclusively associated with the Complainant company so that anyone who learned of the Domain would be confused into believing that the Domain Names, the Domain Name proprietor and any web sites operated from the Domain Names were associated with the Complainant. As there has been no explanation or evidence offered by the respondent to the contrary, the Panel deems appropriate to find a negative inference and conclude that the Respondent was attempting to take advantage of the very highly publicised merger which created SSL International.

The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.

No Rights or Interest

Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.

The Panel is of the opinion that there is no evidence to support any finding of a legitimate right or interest in the Domain Names on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services, nor has he attempted to show that he has commonly been known by the Domain Names nor has he attempted to show a legitimate non-commercial or fair use of the Domain Names.

Consequently, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interests he might have had in the Domain Names of the type defined in paragraph 4(c) of the ICANN Policy.

Bad Faith

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances tend to indicate that by using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site, then this might be evidence of bad faith registration and use on behalf of the Respondent.

Notwithstanding the fact that the Respondent has not yet constructed web sites for the Domain Names, the Panel is of the opinion that the present case is a blatant example of the kind of bad faith which the ICANN policy addresses at paragraph 4(b)(iv). The Panel agrees with the Complainant that it is more than coincidental that the Respondent registered the domain name "setonscholl.com" at a time (April 1999) when Seton Scholl Healthcare plc was being named as a possible merger partner for London International Group plc, and that "sslinternational.com" was registered on 25th May 2000, one day after the merger was announced and the newly merged company was named as "SSL International".

It is quite obvious that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the domain Names into believing that these Domain Names, their

proprietors or any web site were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes.

The Panel is also of the opinion that the Domain Names are so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163).

The Panel, having received no evidence or explanation to the contrary from the Respondent is of the opinion that the only other plausible explanation for the Respondent having registered the Domain Names would be primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark 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. This act would also be considered a blatant example of bad faith according to paragraph 4(b)(i) of the ICANN policy.

Therefore, pursuant to the above mentioned reasons the Panel is of the opinion that the Complainant has met the burden of proof and has proven that the Respondentís actions have been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN policy.

 

8. Decision

For the foregoing reasons, the Panel decides:

- that the Domain Names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

- that the Domain Names have been registered and are being used by the Respondent in bad faith.

Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the domain names: "sslinternational.com" and "setonscholl.com" be transferred to the Complainant.

 


 

Jacques A. Lťger, Q.C.
Presiding Panelist

Dated: November 9, 2000