WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hammond Suddards Edge v. Westwood Guardian Limited
Case No. D2000-1235
1. The Parties
The Complainant is Hammond Suddards Edge, of 2 Park Lane, Leeds LS3 1ES, U.K.
The Respondent is Westwood Guardian Limited, of Bowcliffe Hall, Bramham, Wetherby, West Yorkshire, LS23 6LP, England (also with a registered office at Trinity Building, Calder Vale Road, Wakefield, West Yorkshire, WF1 5PE, U.K.).
2. The Domain Name and Registrar
The domain name at issue is "hammondsuddards.net".
The Registrar is CORE Internet Council of Registrars ("corenic.org")
3. Procedural History
The Complaint was received by email on September 18, 2000 and in hard copy on September 25, 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 CORE Internet Council of Registrars on September 21, 2000 and received a response on September 26, 2000 confirming that the Respondent, is the current registrant of the domain name "hammondsuddards.net" and that "this domain is active".
On September 27, 2000 the Center received a copy of an email from the Respondent to the Complainant commenting on the issue of the Complaint.
Proceedings in this case were formally commenced on September 29, 2000 when the Center notified the Respondent accordingly. The notification clearly stated that a Response would need to be submitted to the Center no later than October 17, 2000 to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on October 19, 2000 the Center issued a Notification of Respondent Default, which was duly transmitted, to the Respondent and to the Complainant by email.
On October 19, 2000 the Center received an email from the Respondent inquiring when the Respondent should submit its evidence. The Center replied on the same day pointing out the consequences of the Default and requesting the Respondent to submit a Response as soon as possible for consideration by the Panelist. No Response was received.
On October 26, 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 October 27, 2000. The Center appointed Mr. Gymer as Panelist on October 30, 2000 and notified the Respondent and the Complainant of this appointment by email on the same day. The Center noted that in the absence of exceptional circumstances a decision would be due from the Panelist no later than November 12, 2000.
4. Factual Background
The Complainant is Hammond Suddards Edge, a large UK commercial law firm which was formed in August 2000 on the merger of the firms of Hammond Suddards and Edge Ellison Solicitors. Measured by reference to the number of fee-earners the Complainant is the 7th largest law firm in the UK, and by reference to turnover, the 13th largest. With offices in London, Leeds, Manchester, Birmingham and Brussels the Complainant has a recognised presence in each of those areas.
Hammond Suddards, prior to its merger with Edge Ellison, registered "Hammond Suddards" as a trade mark in the UK in respect of a wide range of legal, business and financial services (UK trade mark number 2123245). The Complainant annexed in evidence a copy of the Certificate of Registration together with a letter from the Complainantís trade mark agents, Marks and Clerk of Manchester, dated September 15, 2000, confirming that an application has been made to the UK Trade Mark Registry to amend the registered proprietor's name from Hammond Suddards to the Complainant.
The Complainant also has Internet presence with its primary website currently at "www.hammondsuddardsedge.com". Prior to the merger, Hammond Suddards operated its website at "www.hammondsuddards.com" and www.hammondsuddards.co.uk. As the whois printouts submitted in evidence demonstrate the latter two domain names were registered in July 1997 and September 1996 respectively. The Complainantís website can be accessed by all three of these domain names.
The Respondent, Wakefield Guardian Limited, has its registered office in Wakefield, but used a trading address in Wetherby for its address for the domain name registration at issue (each of these towns are within 25 km of the Complainantís office in Leeds). The whois records show that the Respondent registered the Domain Name, "www.hammondsuddards.net", on 22 May 2000. At the time of the Complaint and, presumably, since its registration, when entering "www.hammondsuddards.net" the Domain Name resolves to the homepage of the website operated by the Respondentís Internet Service Provider, Easily.co.uk, at http://easily.co.uk/.
Additionally, the Parties have made a number of contentions as summarised below.
5. Partiesí Contentions
The Complainant claims that the name "Hammond Suddards" is exclusively distinctive of the Complainant. (The Complainant submitted evidence to support this, showing that the UK Telephone Directory has only one listing for "Suddards" throughout London, and that listing relates to the Complainant.)
In addition to the Complainant's registered trade mark rights, the Complainant asserts that rights in the name "Hammond Suddards" are protected and enforceable in the UK under the common law of passing-off.
The Complainant says that owing to the prior established reputation of Hammond Suddards, the firm was arguably best known in the city of Leeds and the surrounding area, not least due to its very prominent city centre offices which the Complainant now occupies. Inevitably, the Complainant will still be known and referred to as Hammond Suddards by many for some considerable time yet. Thereafter, the name "Hammond Suddards", independently of the name "Edge", will still identify the Complainant.
The Respondentís registration of the domain name "hammondsuddards.net" ("the Domain Name") first came to the Complainantís attention when Andrew Clay, an intellectual property partner in the Complainant, discovered the registration by chance when perusing a whois database on 7 September 2000. Mr. Clay subsequently sent an email, on the same day, to the address indicated by the whois record as a contact address for the Domain Name, i.e. "email@example.com", asking to be informed who had instructed the Respondent to register the Domain Name on behalf of the Complainant. Mr Clay received a response to that email on 13 September 2000 from a Mr. Mike Coultard of the Respondent to the effect that the Domain Name had been purchased on behalf of a client of the Respondent from whom instructions were awaited. Mr. Coultard did not disclose the full identity of the Respondentís client and indeed has not done so at any time in the intervening period. In response Mr. Clay requested that Mr. Coultard arrange for the transfer of the Domain Name from the Respondent to the Complainant in return for which the Complainant would pay the Respondent what was described as "the standard registration fee". (A copy of that email exchange was attached in evidence with the Complaint.)
Subsequently Mr. Coultard telephoned Mr. Clay to discuss the issue. In that telephone conversation Mr. Coultard refused to transfer the Domain Name to the Complainant for the registration fee and invited Mr. Clay to make a different offer for the Domain Name before finally indicating that the Respondent would be prepared to accept a figure of somewhere between £1000-£2000. (A transcript of that telephone conversation was attached in evidence with the Complaint.)
In this conversation Mr. Coultard also implied to Mr. Clay that the Respondent was preparing to sell the Domain Name on behalf of its client to an undisclosed third party as part of a bulk transfer of "about 50 names". Mr. Coultard also mentioned that "he was at liberty to dispose of" the Domain Name "assuming I get a reasonable amount." Since that telephone conversation and by an email dated 15 September 2000 (a copy of which was also included in evidence), Mr. Coultard indicated that the Respondentís client would be prepared to accept the sum of £500 in return for the transfer of the Domain Name.
The Complainant submits that the domain name is identical to the trade mark in which the Complainant has registered and unregistered rights; that the Respondent has no legitimate right to, or interest in, the Domain Name; that the Domain Name was purchased by the Respondent, whether or not on behalf of a third party, with the primary intention of selling it either to the Complainant or a third party for valuable consideration in excess of its out of pocket costs directly relating to the Domain Name, i.e. the Domain Name was registered in bad faith for the purposes of paragraph 4.a (iii) of the policy judged by reference to the guidance at paragraph 4.b (i) of the Policy. In addition, the Respondentís offer to sell the Domain Name for between £1000-£2000 constitutes use of the Domain Name in bad faith for the purposes of paragraph 4.a (iii) of the policy judged by reference to the guidance at paragraph 4.b(i) of the Policy.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel to issue a decision requiring the transfer of the Domain Name from the Respondent to the Complainant.
No formal 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 sent to the Center and the email and telephone transcript 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". 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. 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?
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 first point may be established by comparison of the domain name and the claimed mark having regard to the context and circumstances in each particular case.
In the present case, the Complainant claims rights in the mark "Hammond Suddards", and the domain name is "hammondsuddards.net". As the Complainant has observed, the distinctive part of the domain name, hammondsuddards, (save for the space, which would not be a valid character in a domain name), is identical to the name of one of the Complainantís constituent pre-merger law firms and to the registered trade mark identified above. Accordingly, the Panelist considers that the domain name is essentially identical to the Complainant's mark.
The Complainant's entitlement to enforceable rights in a registered mark can readily be established and independently verified by reference to the official Trade Marks Register. The Complainant provided a copy of the registration certificate and evidence to confirm that an assignment of the registration into the Complainant's name is in the process of being recorded. In any event, there is also an overlap between the nominee partners listed on the Register and the partners of the Complainant, so the Complainant would be entitled to assert the registered rights through its nominee partners in any event if necessary. The Panelist has checked the Register record available on line to confirm that the registration also remains in force and has not been surrendered or revoked
Under the UK Trade Marks Act 1994, 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.
The Complainant has also made the case that "Hammond Suddards" is a uniquely distinctive name in the UK at the very least, and that the Complainant has sufficient reputation to support a claim to unregistered common law rights in the name.
Consequently, the Panelist is satisfied that the domain name "hammondsuddards.net" is identical or confusingly similar to a trademark in which the Complainant has rights. The requirements of Paragraph 4(a)(i) of the Policy are therefore met.
6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?
Paragraph 4(c) of the Policy helpfully provides some guidance as to some factors, which, if present may serve to demonstrate a legitimate interest in a domain name. Conversely, the absence of such factors may therefore be indicative of a lack of such an interest. The relevant indications are:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The evidence suggests that Mr. Coultard, for the Respondent, had made no demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services. The domain name did resolve to a home page of Easily.co.uk which certainly offered services, including the registration of domain names, and notably offered registration of domain names ".Nets now just £9.99/year".
The whois record shows that Easily.co.uk provided the administrative and technical contact services for the registration at issue.
On the evidence, the Panelist agrees with the Complainant's submission that it is inconceivable that anyone typing the url "www.hammondsuddards.net" into a browser for the first time would expect to access anything other than the Complainantís website. The fact that calls to that url are automatically switched to easily.co.uk is inevitably going to be an immediate source of confusion for the user. It also misrepresents by implication that Easily.co.uk has some connection with the Complainant (e.g. as a service provider) that it apparently does not have. No doubt Easily.co.uk would seek to rely on indemnity provisions (for what they may be worth) in their contract with the Respondent to insulate them from liability for the misrepresentation which is surely made when a user seeking or expecting to find the Complainant by typing in "www.hammondsuddards.net" finds himself redirected to easily.co.uk. In these circumstances, however, whilst the services offered by Easily.co.uk are no doubt entirely legitimate in themselves, the Panelist believes that this cannot legitimise the use of the domain name at issue in this case. Rather, insofar as the Complainant could have reasonable grounds for complaint that Easily.co.uk is vicariously benefiting from a redirection which is implicitly confusing and misleading, it reinforces the view that the Respondent is not using the domain name for bona fide purposes.
In his telephone conversation with the Respondent, Mr. Coultard asserted that the domain name had been registered or was to be transferred to a person by the name of "Hammond" allegedly based in South Africa. Mr. Coultard also asserted that "he bought it [the domain name] not being aware that there was a Hammond Suddards in the UK trading" and that "his name is Hammond but I don't know where the Suddards part came into it".
The Complainant understandably viewed it as "an absolutely astonishing coincidence if an independent individual came up with the name Hammond Suddards independently of this law firm [the Complainant]." The Panelist similarly considers Mr.Coultard's explanation lacks any credibility, and therefore does not accept that the Respondent's use and registration of the domain name can be justified on the basis that the Respondent might have a client called "Hammond", whose existence is anyway unsubstantiated.
By his own admission, the Respondent's express intention has been to make money by selling the domain names it has registered, including the domain name at issue for "a percentage of any monies recovered". Consequently, it is plain that none of the factors supporting a legitimate claim to use of the domain name can be said to apply to the Respondent.
The question of the possible, legitimate interests in a disputed domain name was one of the many relevant issues addressed at length in the leading UK case British Telecommunications & Ors. v. One in a Million Ltd. & Ors. in the Court of Appeal (the full Court of Appeal judgement is available at http://www.nic.uk/news/legal/oiam-appeal-judgement.html. In the judgement, Aldous L.J. wrote, in consideration of whether a [domain] name may be an illegitimate instrument of fraud:
"In my view there can be discerned from the cases a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. [Ö] If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take placeÖ"
In the Panelist's analysis, the domain name in this case is one which, by reason of its similarity to the Complainant's mark, will inherently lead to passing off, such that it would be a potential instrument of fraud if used in any manner by any person, company or organisation other than the Complainant or with the Complainant's authority.
The Panelist therefore also concludes that the Respondent has no rights or legitimate interests in the domain name and the requirements of Paragraph 4(a)(ii) of the Policy are met.
6.3 Has the domain name been registered and is it being used in bad faith?
Paragraph 4(b) of the Policy states, specifies, without limitation, that the following are evidence of the registration and use of a domain name in bad faith:
(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 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; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As Aldous L.J stated in the One in a Million case (supra) first in relation to Marks & Spencer in that case:
"The placing on a register of a distinctive name [Ö] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered."
And in relation to the other plaintiffs:
"The trade names were well-known "household names" denoting in ordinary usage the respective [Plaintiff]. The appellants registered them without any distinguishing word because of the goodwill attaching to those names. It was the value of that goodwill, not the fact that they could perhaps be used in some way by a third party without deception, which caused them to register the names. The motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents. The value of the names lay in the threat that they would be used in a fraudulent way. The registrations were made with the purpose of appropriating the respondents' property, their goodwill, and with an intention of threatening dishonest use by them or another. The registrations were instruments of fraud and injunctive relief was appropriate just as much as it was in those cases where persons registered company names for a similar purpose."
In the Panelist's opinion, the evidence in this case is more than sufficient to demonstrate the Respondent's bad faith use and registration of the domain at issue, consistent with Paragraphs 4(b)(i) and (iv) of the Policy. The Respondent's conduct has plainly been directed at the illegitimate exploitation of the Complainant's name and reputation and at attempting to extract what to all intents and purposes would effectively have been a ransom for a domain name to which the Respondent has no conceivable rights whatever, with the express threat that otherwise the domain name would be sold to some unidentified third party. This is precisely the type of conduct which was unequivocally condemned by the Court of Appeal in the One in a Million case (supra).
In an email to the Complainant after the Complaint was filed Mr. Coultard (for the Respondent) wrote "I note [..] that you are about to pay/have paid USD$ 1500 to commence the action to obtain the said domain name. My client finds this expenditure very strange, in the knowledge that he has offered, in all good faith [sic], to transfer title for a mere £500 sterling."
Assuming Mr. Coultard had actually paid the £9.99 sterling for annual registration of a .net name charged by Easily.co.uk, and even if he paid the two-year minimum usually required, his "mere £500" would represent at least 2500% markup on the actual cost of registration. He would only need to have sold two of the 50 names he admits to having registered at that premium to cover the initial costs of registration of all 50. It would no doubt be instructive to see what other names Mr. Coultard has registered.
In the present case, Mr. Coultard's strategy is clear. He has pitched the buy-back price at lower than the likely costs of initiating litigation or UDRP proceedings, in the expectation that the Complainant would choose to pay him off rather than go to the extra effort and expense of filing a formal Complaint. Regrettably, economic realities and the fact that domain name registrants cannot be made subject to costs sanctions under the present Policy, no matter how egregious may be their conduct, mean that many businesses would inevitably have conceded to his demands. To its credit, and Mr. Coultard's evident surprise, the Complainant was not prepared to do so.
The Panelist concludes that the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.
For the reasons explained in Section 6 above, the Panelist concludes that each of the requirements of Paragraph 4(a) have been met. Accordingly, the Panelist requires that the domain name registration "hammondsuddards.net" be transferred to the Complainant.
Dated: November 6, 2000