WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CGU Insurance plc v. Irving Remocker

Case No. D2000Ė1515

 

1. The Parties

The Complainant in this administrative proceeding is CGU Insurance Plc, of Pithleavis, Perth, Scotland, PH2 ONH, a public limited liability company incorporated under the laws of Scotland, represented by Wildbore & Gibbons of Wildbore House, 361 Liverpool Road, London N1 1NL, England. The Respondent in this administrative proceeding is Irving Remocker, of 5 Broom Road East, Newton Mearns, G77 5RQ, Scotland represented by MacRoberts, solicitors, of 152 Bath Street, Glasgow G2 4TB, Scotland.

 

2. The Domain Name and Registrar

The domain name in issue is "yourmove.com" ("the Domain Name"), the Registrar of which is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("Network Solutions").

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received on November 3,  2000, an electronic version of the Complaint and on November 8, 2000, a hard copy version of the same, with accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On November 21, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On November 13, 2000, the Center transmitted via e-mail a request for registrar verification in connection with this case. On November 16, 2000, Network Solutions transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Irving Remocker, the Respondent herein, and stating that each of the administrative, technical and zone contacts is Hostmaster of Florida Digital Turnpike, 2002 NW 13 Street, Suite 250, Gainesville, FL 32609, USA. The Respondent lodged its Response by e-mail and a hard copy was received by the Center on December 8, 2000.

On December 15, 2000 the Complainant lodged a "Reply to Response". The Panel has decided to admit this submission, but considers it is unnecessary to offer the Respondent an opportunity to lodge a further submission.

The Complainant elected to have this matter decided by a single-member Panel, but the Respondent then opted for a three-member Panel and made the required payment. The procedure for appointing the Panel was duly completed with the notification of its appointment on February 1, 2000, and it was due to deliver its decision by

February 14, 2001.

 

4. Factual Background

(a) The Complainant filed two trade mark applications on October 1, 1999 with the United Kingdom Patent Office in Classes 35, 36 and 42 in relation to a range of business services, including insurance and estate agency, and designed to protect the words YOUR MOVE:-

(i) Application No. 2210311 was for a "device" mark which incorporates the words together with a generally circular device in a rectangular background. This application was accepted and is therefore now Registered Trade Mark No. 2210311.

(ii) Application No. 2210301 for the words YOUR MOVE simpliciter is still pending.

(b) The Domain Name was registered in 1996 in the name of Caissa International Corporation, of Florida, USA. On March 17, 2000 the Domain Name was transferred to the Respondent.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that the Domain Name is substantially identical to its unregistered trade mark YOUR MOVE as well as being identical to its pending UK trade mark application number 2210301. The Complainant also asserts that the Domain Name is confusingly similar to its UK registration 2210311. It argues that an essential element of the registration is the words "YOUR MOVE".

The Complainant alleges that the Respondent has no legitimate rights or interest in the Domain Name and relies upon the results of a search for domain names registered in the name of the Respondent. The Complainant submits that this shows that the Respondent has registered numerous domain names (the search lists 41 names) from which it surmises that the Respondent is a "domain name speculator".

The Complainant also relies upon correspondence passing between the Respondentís representative, HBJ Consulting Limited (now known as "Demys") and the Complainant. In its letter of 12th June 2000 HBJ Consulting Ltd claims that the Domain Name was registered in 1996 and is "currently pointed towards the Respondentís successful web site devoted to the world wide appreciation of Chess". The Complainant goes on to assert that the Domain Name, although registered in 1996, was registered in favour of a US Corporation called Caissa International Corporation, a fact which was drawn to the attention of the Complainantís Legal Department on 21st September 1999. It relies upon a print-out of the Annual Return filed by Caissa International Corporation which shows that the Respondent is not an officer or director of Caissa International. On this basis the Complainant argues that the Respondent has no legitimate rights or interests in the Domain Name.

In addition the Complainant relies upon its acquisition of substantial common law rights in the mark "YOUR MOVE" by 17th March 2000, i.e. the date on which it alleges the Respondent "registered" the Domain Name. It also points to several millions of poundsí expenditure on television and local press advertising.

In support of the allegation of registration of the Domain Name in bad faith the Complainant relies upon the registration of the Domain Name by the Respondent in full knowledge of the Complainantís interest in the trade mark "YOUR MOVE". It also relies upon the correspondence which shows that the Respondentís representatives wrote to the Complainant offering to sell the Domain Name. By e-mail dated 14th July 2000 the Complainant made an offer to purchase the Domain Name for £30,000. This offer was rejected and according to the Complainantís e-mail of the 26th July 2000 the Respondent wanted a "six figure sum" and suggested "an offer in the order of £500,000 would be very attractive".

The Domain Name was subsequently offered for sale by the Respondent in Estate Agency News dated September 2000 and the Sunday Times for 6th August 2000. The Complainant submits that the advertisement and the threat to sell the domain name to other third parties, especially in the estate agency business, demonstrates bad faith.

B. Respondent

Although the Respondent acknowledges that discussions were held regarding the sale of the Domain Name, the Respondent disputes many aspects of the complaint, especially the allegation of bad faith, and further requests that the Panel make a finding of reverse domain name hijacking.

The Respondent first denies that the Domain Name is confusingly similar to a trademark in which the Complainant had rights prior to the registration of the Domain Name. He notes that the Complainantís application for a mark without a design element is pending, and that whatever common law rights might currently exist did not exist at the time of registration. He further asserts that the words YOUR MOVE are generic, and appropriate for a chess web site. He further denies that he has in any way made a pattern of registering domain names for the purpose of resale, this being the only one of his 40 domain names, registered for his various business interests, that he has considered selling.

The Respondent also produced evidence to show that the Domain Name was not registered in order to sell it to the Complainant. The Respondent states that he began bona-fide preparations to use the Domain Name for a chess site no later than September 1999, well before the start of this dispute. This last contention is supported not only by the Respondent's own statement, but by statements from others, not least Gabriel Schwartzman, an international chess grandmaster.

The petition for a finding of reverse domain name hijacking notes the above, and also describes the reasons why Respondent considered selling the Domain Name, but rejected the complaint's offer of £30,000 as inadequate. He further notes that the Complainant appears to be engaged in an attempt to acquire as many variants of YOURMOVE in multiple top-level-domains, as it can. He suggests that since the site was obviously being operated for a bona-fide purpose, chess, and that the Complainant was unable to secure the name on its terms, this proceeding was brought in bad faith.

 

6. Discussion

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:-

(i) the 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.

So far as (i) is concerned, the Complainant is the registered proprietor of a device trade mark which includes the words YOUR MOVE, but only has a pending application to register the words by themselves. If the Panel were to accept that by the date of lodging its Complaint in November, 2000 the Complainant had established rights in the words YOUR MOVE on their own, it would not be difficult to conclude that the Domain Name was identical to the (unregistered) trade mark YOUR MOVE and that it was confusingly similar to the Registered Trade Mark No. 2210311. However, it is unnecessary for the Panel to decide this issue, since, for the reasons set out below, it concludes that the Complainant has failed to establish either (ii) or (iii) above.

Paragraph 4c.(i) of the Policy indicates to a respondent the following as one of the circumstances which, if found by the Panel to have been proved, demonstrate the respondentís rights or legitimate interests to a domain name:-

"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name Ö. in connection with a bona fide offering of goods or services"

The Complainant frankly admits that it was aware of the prior registration of the Domain Name by Caissa International Incorporated and clearly it had no grounds on which to allege that Caissa International had no rights or legitimate interests in respect of the Domain Name. In the Panelís opinion, the Complainant has no grounds on which to challenge the legitimacy of the Respondentís interests (or his rights). The crucial facts are:-

(a) In August/September 1999 the Respondent approached Gabriel Schwartzman, who is apparently the person in control of Caissa International with a view to purchasing the Domain Name to develop the chess-site further. (In the light of the letter of September 2, 1999 referred to in the next sub-paragraph the approach was probably in August rather than September).

(b) On September 2, 1999 Shahid Nazir of Exo Design Studios, at the request of the Respondent, put forward detailed proposals for developing the yourmove.com website, involving a budget of £160,000 in the first 12 months.

(c) Negotiations with Mr. Schwartzman continued until February 1999, when final payment for the Domain Name was made.

The Panel concludes that the evidence satisfies it that the Respondent was demonstrably preparing to use the Domain Name before he received notice of this dispute.

While it may be that by the time the Respondentís deal with Mr. Schwartzman was completed in February 2000 the Respondent had become aware of the Complainantís activities, he was fully entitled to acquire the Domain Name. Had he then (as originally planned) chosen to use the website for the purposes of chess, the Complainant would not have complained. The fact that the Respondent later decided to sell the Domain Name to fund other business activities cannot mean that suddenly his rights and legitimate interests evaporate.

The Complainantís case in relation to element (iii) is also bad. The Domain Name has been registered once only, i.e. by Caissa International, against which no allegation of bad faith is made. The Complainant also accepts (as it must) that the Respondentís initial enquiries in August 1999 concerning the possible purchase of the Domain Name were made in good faith Ė the Complainant appears not to have adopted the name YOUR MOVE for its business until November 1999. It is apparently merely the fact that the Respondent advertised the Domain Name in the Estate Agency News that has led to these proceedings (as asserted in the Reply to Response) and to the allegation of use of the Domain Name in bad faith. It may be that one reason why this advertisement was placed in the Estate Agency News was to apply commercial pressure on the Complainant to make a better offer than £30,000, but it is clear from the statements of the Respondent and Mr. Andrew Lothian of HBJ Consulting that (a) they would not sell the Domain Name to any estate agency other than the Complainant and (b) that they succeeded in attracting expressions of interest from parties whose businesses were in the fields of insurance, removals and recruitment agency. The Respondent was fully entitled to sell the Domain Name to the highest bidder. The Panel concludes that the Respondent has neither registered nor used the Domain Name in bad faith.

Finally, the Respondent asks the Panel to find the Complainant guilty of "reverse domain hijacking". This requires the Panel to find that the Complainant has acted in bad faith in bringing these proceedings. While the Complainant may have been ill-advised to have acted as it has done, it would seem that the Complainant genuinely believed that its rights in the name YOUR MOVE in relation to its estate agency business were being threatened. In the circumstances, the Panel declines to find there has been "reverse domain hijacking".

 

7. Decision

In the light of the foregoing, this Complaint is dismissed as is the Respondentís request for a finding of reverse domain name hijacking.

 


 

Christopher Tootal
Presiding Panelist

Michael Froomkin
Panelist

Clive Thorne
Panelist

Dated: February 19th, 2001