WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The London Metal Exchange Limited v. Syed Hussain

Case No. D2000-1388

 

1. The Parties

The Complainant is The London Metal Exchange Limited, a United Kingdom corporation with its principal place of business in London, United Kingdom. The Complainant is represented by Mr. Roland Mallinson of Linklaters & Alliance, Solicitors, London, United Kingdom.

The Respondent is Syed Hussain of CPIC Net, 15 5th Street, Closter, NJ, USA. The Respondent has filed no Response.

 

2. The Domain Name and Registrar

The domain name at issue is "lmeholdings.com". The domain name is registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").

 

3. Procedural History

The Complaint submitted by The London Metal Exchange Limited was received by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on October 13, 2000 (electronic copy) and on October 20, 2000 (hard copy). An Amended Complaint was received by the WIPO Center on November 1, 2000 (electronic copy) and on November 6, 2000 (hard copy).

On or about October 24, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with NSI.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in NSIís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy is in effect.

Indicate the current status of the domain name.

By email dated October 29, 2000, NSI advised the WIPO Center as follows:

NSI had received a copy of the Complaint from the Complainant.

NSI is the registrar of the domain name registration "lmeholdings.com".

The abovenamed Respondent is shown as the "current registrant" of the said domain name. The registrantís address is shown above.

The administrative, billing, technical and zone contact is shown as the Respondent at the address above.

The ICANN Dispute Resolution Policy is in effect with regard to the said domain name.

The status of the domain name registration "lmeholdings.com" is "on hold".

NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is "on hold", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Amended Complaint ("Complaint") satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on November 15, 2000 transmitted by post/courier a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Respondent was advised in the couriered communication that a Response to the Complaint was required within 20 calendar days of the email advice (i.e., by December 5, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent filed no Response. A Notice of Default was sent to the Respondent by the WIPO Center on December 5, 2000.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

On December 8, 2000, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On December 8, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On December 19, 2000, the WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on December 14, 2000. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by December 24, 2000.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Claimant is, and has been for many years, the owner of many trademarks in the United States and the United Kingdom, including the words "LME" and "London Metal Exchange". These trademarks cover common metals and their alloys, business services, computerized data base management, operation, supervision and regulation of markets and exchanges, transportation and storage services relating to metal and their alloys, etc. Details of representative trademarks are set out below:

On June 13, 2000 Reuters published an article stating that the Claimant wanted to set up a new company called LME Holdings Limited. Given the time difference, the Respondent, in the USA, would have had time to read the article and register the name "lmeholdings.com" on the same day. This appears to be what happened. The Respondent has also registered the name "lmeholdings.co.uk". This is currently the subject of a Nominet dispute application.

A Domain Name Investigation Report carried out by Virtual Internet reveals that CPIC NET owns a large number of top level domain names, including well-known trademarks.

Two ICANN dispute resolution procedures have already been taken against CPIC NET this year, indicating a pattern of abusive registration. First, the National Arbitration Forum ruled that "phharval.com" and "arvalphh.com" should be transferred to PHH Vehicle Management Services, LLC in line with the ICANN Policy Rule 4(a). Secondly, a WIPO Panelist ruled in favour of Time Warner and EMI and ordered the transfer of the names "emiwarnermusic.com", "emiwarner.org", "emiwarner.net", "warneremi.net" and "warneremi.org" from CPIC NET to Warner EMI Music.

 

5. Partiesí Contentions

The Complainant alleges that:

(a) The domain name "lmeholdings.com" is confusingly similar to its trademark "LME".

(b) A search of the web and, in particular, a review of the website maintained by or for the Complainant (correct site: "lme.co.uk") will reveal through the use of the domain name "lmeholdings.com" that there is a business connection with the Complainant when in fact no such connection exists. As was publicly announced and widely reported internationally on June 13, 2000, the corporate group of LME companies was recognised under a UK holding company called LME Holdings Limited.

(c) Any use of the domain name "lmeholdings.com" by the Respondent, whether as a website or for correspondence, must set up a false assumption with internet users that the Respondent is in some way connected with the Complainant and thereby causes confusion to such users.

(d) The Respondent has no legitimate interest in respect of the domain name "lmeholdings.com", as there is no evidence that this name corresponds with the business of CPIC NET (which seems to trade in internet domain names), nor that the Respondent is using this site at all, since it is not possible to access this site.

The time contiguity of the registration in the United States and the announcement in the United Kingdom of the establishment of LME Holdings Limited indicates bad faith registration and use.

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

The domain name "lmeholdings.com" is confusingly similar to the Complainantís marks. The addition of the word "Holdings" to the domain name is devious, given that the domain name was registered by the Respondent on the same day as the announced intention to establish LME Holdings Limited. Persons accessing the domain name would be bound to think that the domain name had a connection with the Complainant. The Panel decides that the domain name is confusingly similar to the Complainantís marks.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue. The Respondent has never suggested to the contrary.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be 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

(ii) you have registered the domain name in order to prevent the owner of the trademark 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 your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name "lmeholdings.com" in bad faith. The letters "lme" are so obviously connected with a well-known entity that their very use by someone with no connection to the Complainant suggests opportunistic bad faith. Particularly so when the domain name registration was effected within hours of an announcement concerning a reorganization of the Complainant. The Respondentís track record as a cybersquatter with the names of well-known entities and the previous adjudication against him indicate bad faith.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "lmeholdings.com" has been registered and is being used by the Respondent in bad faith.

The Complainant asserted that the domain name was confusingly similar or identical to a company name. Whilst that circumstance might provide a remedy in English law, the Panel can only determine the Complainant under the Policy, i.e., it can only consider such names, if and to the extent they give rise to a trademark, whether registered or common law.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to the trademarks to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "lmeholdings.com" be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Dated: December 15, 2000