WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haymarket Business Publications Limited v. Shots
Case No. D 2000-1387
1. The Parties
The Complainant is Haymarket Business Publications Limited, 174 Hammersmith Road, London W6 7JP, United Kingdom.
The Respondent is Shots, 33-39 Bowling Green Lane, London EC1R 0DA, United Kingdom.
2. The Domain Name and Registrar
The Domain Name is <campaignscreen.com>.
The Registrar is Register.com.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy on October 13, 2000 and by email on November 2, 2000. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that campaignscreen.com ("the Domain Name") was registered through Register.com and that Shots ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On November 13, 2000 the Center notified the Respondent of the Complaint and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was December 2, 2000. No response having been received, on December 7, 2000 the Center issued to the Respondent a notice of default.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is January 2, 2001.
4. Factual Background
The Complainant is a well known UK publishing company and is the registered proprietor of UK trade mark registration number 1313645 dated January 20, 1987 for CAMPAIGN (word) for periodical publications relating to marketing, media and communications.
The Complainant publishes inter alia one of the leading periodicals for the UK advertising industry namely Campaign magazine. It has been published since 1968 and is very well known in the advertising industry.
Since June 1999 the Complainant has circulated 10 times per year a compilation video of approximately 1 hour duration of certain UK and international commercials selected by the Complainant for inclusion in the compilation. The video is accompanied by a magazine and is circulated to senior people in the advertising industry. The subscription cost for the video is in the region of £850 per year. The video and the accompanying magazine are marketed under and by reference to the name/title Campaign Screen.
The Domain Name was registered by the Respondent on Friday May 12, 2000.
From the pages of the Respondent’s website at <www.shots.net> the Respondent would appear to be a competitor of the Complainant. The home page contains references to videos and magazines and claims to be "the world’s foremost on-line resource for creative advertising".
On September 14, 2000 lawyers representing the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights in the marks CAMPAIGN and CAMPAIGN SCREEN and demanding, inter alia, transfer of the Domain Name to the Complainant. The Respondent did not respond.
5. Parties’ Contentions
The Complainant contends as follows:
The Domain Name is very similar to the title of its well known magazine and is identical to the name/title under and by reference to which the Complainant markets its video and accompanying magazine.
It contends that the Respondent does not and has never carried on business under any name similar to the Domain Name; it has no registered trade mark similar to the Domain Name; it is a direct competitor of the Complainant in the market for the distribution of compilations of commercials; it does not appear to be using or to be making any preparations for using the Domain Name in connection with a bona fide offering of goods or services. In relation to this last point, it draws attention to the fact that the Domain Name points to a holding website advertising the services of the Registrar.
In consequence, the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.
As to bad faith, the Complainant is prevented by virtue of the Respondent’s registration of the Domain Name from acquiring and using the Domain Name in relation to its business activities. The Complainant points out that this disrupts the business of the Complainant since the Complainant wishes to make use of the Domain Name in its on-line activities but is prevented from doing so.
The Complaint further points out that the Respondent is a competitor of the Complainant. What is more, the Respondent ignored the Complainant’s letter of September 14, 2000, referred to above.
The Respondent has failed to respond.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
Identical or confusing similarity
The Domain Name comprises two elements, namely ‘campaign’, which is the Complainant’s registered trade mark, and ‘screen’, which is by itself non-descriptive. The .com suffix can be ignored. The two elements of the Domain Name when put together comprise the Complainant’s unregistered trade mark, which it uses for the marketing of its video and the accompanying magazine.
Paragraph 4(a)(i) does not call for registered rights and the Panel finds that the Domain Name is identical to a trade mark in respect of which the Complainant has rights.
Were it necessary for the Panel to consider the Domain Name by reference to the Complainant’s registered trade mark CAMPAIGN, the Panel would find that the Domain Name is confusingly similar to a registered trade mark in respect of which the Complainant has rights. In coming to this conclusion, the Panel would be taking into account the fact that the Respondent is a competitor of the Complainant.
Rights or legitimate interest of the Respondent
The Panel unhesitatingly adopts the contentions of the Complainant in this regard. The Complainant has made out a prima facie case and it is for the Respondent to demonstrate, if it can, that it has any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond and the Panel can think of no reason why the Respondent might reasonably claim to have such rights or legitimate interest.
The Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
While the Complainant asserts bad faith registration and use of the Domain Name it does not expressly state the basis for the bad faith claim. It points to the fact that the registration of the Domain Name by the Respondent has baulked the Complainant from registering the Domain Name and that it has thereby disrupted the business of the Complainant, but that of itself does not go far enough. The Complainant has to prove that the Respondent registered the Domain Name with that objective in mind.
However, the Panel is of the view that the Respondent must have registered the Domain Name with the Complainant in mind. The Domain Name is unusual and in the specialist area in which both the Complainant and the Respondent operate it can only refer to the Complainant and/or the Complainant’s products.
The Panel can think of no reason why a competitor would wish to do this otherwise than to disrupt or interfere with the business of the competitor in question.
If the Respondent’s intentions were honourable, the Respondent has had ample opportunity to provide an explanation. It could have responded to the Complainant’s lawyer’s warning letter and it could have responded in this Administrative Proceeding. In the view of the Panel, its failure to take up these opportunities in the particular circumstances of this case demonstrates an inability to provide a satisfactory explanation.
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the above findings, namely that the Domain Name is identical to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel finds that the Complaint succeeds and directs that the Domain Name be transferred to the Complainant.
Dated: January 2, 2001