WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

W. & G. Foyle Limited v. Foyleís Books Limited

Case No. D2000-1544

 

1. The Parties

The Complainant is W. & G. Foyle Limited, a private limited company incorporated in England whose registered office is at 113-119 Charing Cross Road, London WC2H 0EB, United Kingdom, represented by Dechert of London.

The Respondent is Foyleís Books Ltd., PO Box 3265, Christchurch 8015 New Zealand, 29 Alpha Avenue, Strowan, Christchurch, New Zealand, represented by Mardi Lewis, James and Wells of Christchurch.

 

2. The Domain Name and Registrar

The disputed domain name is "foyles.com" and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on November 9, 2000 and in hard copy on November 15, 2000. The Center acknowledged receipt on November 16, 2000. On November 20, 2000, the Center sought registration details from the Registrar. On December 13, 2000, the Registrar confirmed that the respondent [spelled Foyles Books Ltd] is the registrant, the Registrarís 5.0 Service Agreement is in effect (which incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy); and that the status of the disputed domain name is "active."

On December 14, 2000 the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly December 14, 2000. The last day specified in the notice for a response was January 2, 2001. On December 18, 2000 a Response was filed by email and on December 22, 2000 in hardcopy. Its receipt was acknowledged by the Center on December 18, 2000.

On December 19, 2000, without seeking leave to do so, the complainant filed a reply. In Goldline International, Inc. v. Gold Line, (WIPO Case No. D2000-1151) the 3-member panel addressed a similar situation as follows:-

"The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), though, do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000). Nevertheless, Complainants routinely submit replies, which not only is usually a waste of party resources (not to mention the resources of the Center and Panelists), but also delays the final resolution of the proceeding, which undermines the Policyís promise of rapid, cost effective dispute resolution. CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000). For these reasons, many Panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF Oct. 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO Nov. 3, 2000); Viz Communications, Inc. v. Redsun dba www.animerica.com, Case No. D2000-0905 (WIPO Dec. 22, 2000). Because the Reply in this case presents neither previously-unavailable evidence nor authority, it is stricken and the Panel has disregarded it in its entirety."

In this case the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its Complaint, nor does the Response appear to have raised arguments that the complainant could not reasonably have anticipated. There appear to be no other exceptional circumstances that would justify admission of the Reply. Accordingly the Panel has disregarded the Reply.

On January 3, 2001 the Center notified the parties of the appointment of Alan L. Limbury as the administrative panel, Mr Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 16, 2001 as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.

 

4. Factual Background

In 1906 William and Gilbert Foyle (from whom the initials in the Complainantís name were taken) founded a business known as W & G Foyle Ltd., supplying second hand books. In 1914 they opened a bookshop called FOYLES in Charing Cross Road in London, where it remains today. The Foyle family has always been involved in the operation of this business, which in 1966 was described as "the worldís greatest bookshop" and as a "great British institution" (Response, Annex A). It has more recently been described as "possibly the largest and worst organised bookshop in the world" (Response, Annex D).

In 1930 at the age of nineteen, Williamís daughter Christina Foyle established the famed "Foyles Literary Luncheons" at which authors would address notables of the day. She took over the running of the FOYLES bookshop when William died in 1963. The bookshop is now owned by the Complainant, which was incorporated on 1 January 1969.

The schools side of the business grew to such an extent that in 1921 Gilbert Foyle set up Foyles Educational Ltd, a subsidiary business within FOYLES, specializing in the sale of books to schools. Foyles Educational Limited operated initially "from a makeshift shed at the back of the Charing Cross Road premises" and remained at those premises for 43 years (Response, Annex A). In 1945 Gilbert Foyle became the sole owner of Foyles Educational Ltd and continued its business from premises within W&G Foyle Ltd. By 1966, Foyles Educational Limited had moved its textbook contracting operations and its showrooms elsewhere and no longer occupied any part of the Foyles bookshop premises in Charing Cross Road.

Robert Foyle, the sole director and founder of the Respondent, is the grandson of Gilbert Foyle.

Robert Foyleís father, John Foyle, joined Foyles Educational Ltd in 1946 and, as Sales Director, expanded sales in both the UK and export markets to the point at which in 1964 it had become the leading national supplier of text and library books to schools and colleges.

In 1975 Robert Foyle joined Foyles Educational Ltd, and was engaged in sales to the export market. In 1977 Unifoyle Ltd was formed to take control of all export sales. By 1990 Robert Foyle and his brother, Lance Foyle, were directors of both Foyles Educational Ltd and Unifoyle Ltd, and had moved to New Zealand and Australia respectively to concentrate on sales to the Asia Pacific region.

There is no longer any Foyle family participation in the business of Foyles Educational Ltd. and Robert Foyle does not have any interest in it.

Since 1995 the Complainant has obtained trade mark registrations for FOYLE and/or FOYLES in Canada, the United States, Australia and the European Community. It has pending applications to register FOYLES in New Zealand and FOYLE and FOYLES in the United Kingdom.

In 1995 Robert Foyle incorporated the Respondent in New Zealand. On January 28, 1997 the Respondent registered the disputed domain name <foyles.com>. The Respondentís website www.foyles.com is presently used to link Internet users to a site at www.robertfoylebooks.com, an online bookshop conducted by Robert Foyle under the name Robert Foyle Books, selling British books world-wide.

In February and March 1999 Robert Foyle registered in his own name the domain names <foylesbooks.com> (the subject of administrative proceeding D2000-1543), <foylebooks.com>, <robertfoylebooks.com> and <robertfoylebooks.co.uk>.

 

5. Partiesí Contentions

A. Complainant

The Complainant is the owner of goodwill and reputation and trade mark rights in the name FOYLES. FOYLES has an international reputation (including New Zealand) as a quality bookseller, as evidenced by the number of overseas visitors (including those from New Zealand) to the store and by the references to the store in many travel guides. The Complainant also has mail order customers internationally, including in New Zealand.

In addition to its trade mark registrations and applications, the Complainant has acquired reputation and goodwill in the name FOYLES since the inception of the bookstore in 1906. That reputation and goodwill is the result of significant investment and promotion over a long period of time and represents an important and valuable part of the Complainantís business. This goodwill and reputation is owned internationally including the UK, US and New Zealand.

Identity and confusing similarity

The disputed domain name is identical to the name and trade mark in which the Complainant has extensive legitimate rights. It is also identical to the Complainantís domain name <foyles.co.uk>. The domain name was registered 28 years after the Complainant was incorporated and 91 years after the Complainantís predecessor in title commenced its FOYLES book store business.

Illegitimacy

The Respondent does not appear to have any legitimate interest in the name FOYLES and/or FOYLES BOOKS. The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade marks or to apply for any domain name incorporating any such marks.

The Respondent is involved in the sale and supply of books from Great Britain. It can be seen that the active web-sites are for the business trading as ROBERT FOYLE BOOKS. Whilst Robert Foyle and/or the Respondent proudly claim a connection with W&G Foyle in London, it is clear that the business is ROBERT FOYLE BOOKS and not FOYLES or any name incorporating FOYLES. This is the case notwithstanding that the Respondent's name incorporates "Foyleís". From the Union Jack flag on the web-site it also appears that this is a British business aimed at the international market.

Given that FOYLES has been used by the Complainant (including its predecessor in title) and is associated with the Complainant and given that the Respondentís sole director is a member of the Foyle family, it is reasonable to conclude that in 1999 the Respondent and/or Robert Foyle knew or ought reasonably to have known that a third party and in particular the Complainant had rights in the name FOYLES.

Alternatively the Respondent and/or Robert Foyle ought reasonably to have made all reasonable enquires and searches prior to registration of the domain name to ensure that the use of FOYLES would not or could not infringe the rights of any third party. Additionally the Respondent ought reasonably to have enquired as to whether FOYLES had been registered as a trade mark by any third party before registering a domain name incorporating this name.

The Respondentís and/or Robert Foyleís use of FOYLES in addition to its use of FOYLE and ROBERT FOYLE demonstrates that the Respondent and/or Robert Foyle has made a deliberate attempt to trade off the reputation and trade mark rights in the name FOYLES. It is not accepted that FOYLES has been used innocently in the possessive sense or in the descriptive sense to indicate ROBERT FOYLEíS.

Bad faith registration and use

In view of the fact that the Respondent had no legitimate reason for registering the domain name and deliberately chose to register domain names incorporating FOYLES as opposed to restricting his [sic] registrations to FOYLE or ROBERT FOYLE, it is submitted that it must have therefore been in bad faith and has been used in bad faith.

The Complainant has been in correspondence with the Respondent and Robert Foyle in relation to this matter since 1999. In an e-mail to the Complainant dated 12 February 1999 Robert Foyle indicated that whilst he had already registered the domain name he did not want to infringe the Complainantís trade marks and wanted to reach an agreement in relation to the domain name. It is clear from this that he accepted from the outset that the registration and/or use of the domain name would require the express permission or licence of the Complainant. This is also clear from Mr Foyleís e-mail of 19 February 1999 in which he proposed that the web-site at the domain name should feature only links to Robert Foyleís businessí web-site and to the Complainantís businessí web-site.

Following the instruction of solicitors in New Zealand, Robert Foyle wrote on 14 February 2000 confirming that he would trade only under the name ROBERT FOYLE. A deed of settlement was sent to him but to date this has never been signed and Mr Foyle has continued to trade under the name FOYLES.

The Respondent has also opposed the Complainantís trade mark application in New Zealand.

By registering the domain name the Respondent is also preventing the Complainant from reflecting is trade mark in a corresponding top level generic domain name and the Respondent and its sole director, Robert Foyle, have engaged in a pattern of conduct of registering domain names in which they appear to have no legitimate interest. This is sufficient to constitute bad faith registration and bad faith use of the domain name.

The Respondent has intentionally attempting to attract for commercial gain Internet users to its web-site by creating a likelihood of confusion with the FOYLES trade mark.

Consumers and internet users who type <foyles.com> (the most popular and common domain name) as a deliberate or mistaken attempt to view the Complainant's web-site are likely to be confused by any web-site that appears at the domain name.

By creating a likelihood of confusion between the domain name and the Complainant's trade mark, consumers and Internet users are likely to conclude that the web-site at the domain name is in some way associated with the Complainant. This will ultimately benefit the Respondent to the detriment of the Complainant, particularly since the Respondent and the Complainant are engaged in the same field of activity and Internet users may be diverted away from the Complainant towards the Respondentís business.

The Complainant has evidence that confusion has already arisen between the Complainantís business and the Respondentís and/or Robert Foyleís business.

The Complainant also relies on the principle of initial interest confusion as described by the US Courts of Appeal for the Ninth Circuit in Brookfield Communications In v West Coast Entertainment Corporation (Case number 98-56918). The concept of initial interest confusion was adopted by the Sea & Commercial Court of Copenhagen in Denmark when it gave its decision on 8 August 2000 in relation to the domain name <rolex.dk> which had been registered by a party not owning the trade mark rights in ROLEX (Montres Rolex).

In other words, it does not matter that if once an internet user arrives at <foyles.com> he or she then realises that the web-site is not for W&G Foyle Limited. The mere fact that he or she has been diverted towards Foyleís Books Limited and/or Robert Foyle Booksí web-site when looking for W&G Foyle Limited is sufficient for there to have been confusion.

The Respondent has registered the domain name with a view to disrupting the Complainant's business and has intentionally attempted to attract for commercial gain internet users to its web-site by creating a likelihood of confusion. The Respondent has been successful in both respects. This is sufficient to constitute bad faith registration and bad faith use of the domain name.

B. Respondent

The Respondent has rights in a trademark or service mark which is identical or similar to a trademark or service mark in which the Complainant has rights. The Respondent has rights and legitimate interests in respect of the domain name. The Respondent has not registered the domain in bad faith and the domain is not being used in bad faith.

The Respondent is the owner of goodwill and reputation and trade mark rights in the name FOYLES.

Although W&G Foyle Ltd's bookshop in London was located 1 mile away from the business of Foyles Educational Ltd, there was no confusion between the two separate businesses in over 20 years, despite their close proximity.

The Respondent and customers of both Foyles Educational Ltd and Unifoyle Ltd, commonly referred to those businesses as FOYLES. Whilst the Complainant's branch of the family has used FOYLES in relation to sales and services for books since the founding of W&G Foyle Ltd, so also has the Respondent's branch of the family.

The Complainant alleges that Respondent "does not appear to have any legitimate interest in the name FOYLES and/or FOYLES BOOKS". Given that the Complainant knows the Respondentís history and reputation for sales of British books world-wide under FOYLES, and given that the Complainant was reminded of the Respondentís history and current policy in the usage of the name in correspondence, the Respondent submits that the Complaint was brought in bad faith.

The Complainantís description of the Respondentís family background appears to have been deliberately expressed in a manner which is both insouciant and factually incorrect, and appears to be intended to deny the existence of the Respondentís legitimate interest in the name FOYLES. It is, after all, the surname of the principals of both businesses and, like the family, has a common origin over 90 years ago.

The Complainant alleges that the Respondent has no right to register a domain name incorporating FOYLES or FOYLES BOOKS. The Respondent denies this allegation, and refutes the Complainantís submission that "the Respondent has made a deliberate attempt to trade off the (Complainantís) reputation and trade mark rights in the name FOYLES." The Complainantís reputation in the name FOYLES relates to the sale of books, especially second-hand, from its sole location in London, and its "Foyles Literary Luncheons".

The Complainantís name, while known world-wide, may be conservatively described as unenviable. Numerous personal accounts have appeared in various media over the years describing the frustration experienced by individuals attempting to purchase books from, or make contact by telephone with, the Complainantís shop in London.

The Respondent fairly claims a valid reputation in his and his familyís use of the name FOYLES since the founding of W&G Foyles. Without relinquishing any of the goodwill created in his and his familyís usage in trading and rights in the name FOYLES, the Respondent has been assiduous in making the distinction clear between his business and that of the Complainant, and has invariably referred any individuals that were unaware of the distinction that wished to contact the Complainant, to the Complainant.

In reference to an e-mail sent by Robert Foyle to Christopher Foyle on 12 February 1999, which was phrased in the language of familial goodwill, the Respondent takes exception to and denies the allegation that "It is clear from this that he accepted from the outset that the registration and/or use of at least this particular domain name would require the express permission or licence of the Complainant". At that time of writing, the Respondent was unaware of the Complainantís intention to attempt to monopolise, through registration of trademarks, any goodwill in the name FOYLES owned by the Respondent and the considerable investment that the Respondent had made in the creation of a website. Nevertheless, and despite Christopher Foyleís surprising response, the Respondent went further in his e-mail of 19 February in the spirit of good faith and generosity, to make the offer that, in deference to the concept of the shared nature of the name FOYLES and as a way to avoid customer confusion between the two businesses, that a page at <foyles.com> should show the addresses of both companies. This offer was ignored.

Later, after further correspondence, a "Deed of Settlement" was sent to the Respondent on 20 March which was, in effect, a demand that the Respondent surrender its domain names to the Complainant. This has been declined by the Respondent. The Respondent had been negotiating in good faith to settle the dispute regarding various domain names and was surprised to receive the complaint on domain names included in the settlement. These negotiations are continuing without the domain names.

The Respondent denies that it is preventing the Complainant from reflecting its trade mark, and denies that it has engaged in a pattern of conduct of registering domain names in which it appears to have no legitimate interest.

The Respondent has legitimately used the name FOYLE, or FOYLE'S, in reference to his present and past businesses in good faith, it being his own surname, as his father and grandfather had before him.

The Complainant has a website at the address: <foyles.co.uk>. This domain name appears to have been registered in August 1996. As of May 2000, no use of the domain name had been made. The Respondent submits that if before this year, the Complainant had made no effort to have a presence on the Internet in its name, it is difficult to see how the complaint can be justified. It appears no attempt to register the domain name <foylesbooks.com> was made when the Complainant's own UK domain name was registered.

The Respondent denies that it is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainantís trademark. The Respondent refers to e-mail correspondence which explains the letter of 13 July 2000 which the Complainant cites as a cause for particular concern in that "this could damage the Complainantís business and/or reputation". The Respondent is proud of its level of customer service, and feels that the correspondence with the customer in this instance clearly justifies this.

The Respondent denies the allegation that it has registered the domain name with a view to disrupting the Complainantís business, or that it has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion. The Respondent registered the domain name in good faith and is using the domain name in good faith.

 

6. Discussion and Findings

Procedure

The issue whether the Respondent has trade mark rights in the names FOYLE or FOYLES is presently pending before the New Zealand Trade Marks Office in opposition proceedings to the Complainantís application to register those names as trade marks in that country. The panel has decided, pursuant to Rule 18, that it is appropriate for it to proceed to a decision notwithstanding those proceedings because:-

(i) it is not clear whether those proceedings are "in respect of a domain name dispute that is the subject of" the present complaint (see Rule 18);

(ii) the Respondent agreed to submit to this administrative proceeding upon registering the disputed domain name;

(iii) under Rule 15, the panel is obliged to decide this case, unless it exercises its discretion under Rule 18(a);

(iv) neither party has asked this panel to suspend or terminate this proceeding under that Rule; and

(v) the Complainant has submitted to the jurisdiction of the courts of New Zealand in relation to any challenge the Respondent may mount to this panelís decision;

Substantive issues

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

Rights

Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks: Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250).

Despite the opposition of the Respondent to the Complainantís application to register FOYLES as a trade mark in New Zealand, there is no dispute that the Complainant has common law and/or registered trade mark rights in that mark in the U.K. and other countries. The Respondentís claim also to have rights in that mark does not deprive the Complainant of its rights in that mark.

Identity or confusing similarity

It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO case D2000-0102), holding disputed domain names confusingly similar to the trademark of the Complainant, despite the addition of generic words.

The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):

"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".

This applies equally where a domain name is composed in whole or in part of a trade mark.

See also, by way of illustration, the approach adopted by the U.S. courts, Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sportyís" and the domain name "sportys.com" Ė specifically, an apostrophe in the trademark and the addition of .com in the domain name Ė are "inconsequential", such that the domain name is "indistinguishable" from and "certainly Ďconfusingly similarí to the protected mark").

The panel finds that the disputed domain name <foyles.com> is essentially identical and is confusingly similar to the Complainantís trademark FOYLES. The Complainant has established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out circumstances, any of which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. (The Complainant has the burden of proving the absence of rights or legitimate interests).

As to subparagraph 4(c)(i), on February 12, 1999 Robert Foyle, by email from the Respondentís address to his cousin Christopher Foyle (to whom Christina, then quite frail, was handing over the running of the Complainantís business), stated that development of the website at www.foyles.com was nearing completion and sought to open discussion on forming an "understanding relationship" between Foyles.com and the Complainant. The email continued:

"Foyles.com has been built to promote and sell British books world-wide, and does not want to infringe on any trademarks owned by W & G Foyle."

Christopher Foyleís reply included the passage:

"I believe we do have a potential problem in your having registered Foyles.com. Foyles has been the recognized trade name of W & G Foyle Ltd booksellers worldwide rather than any other company since its founding. We would be unhappy for another party trading as a bookseller passing itself off as/and or using our trade name Foyles and using any advertising or marketing medium, Internet or any other for this purpose."

That passage constitutes sufficient notice to the Respondent of this dispute, for the purposes of subparagraph 4(c)(i) of the Policy.

As to whether the Respondent had used the disputed domain name before such notice, it is common ground that the disputed domain name had been registered in 1997. The Response states that in July 1997 the Respondent commenced trade on the Internet through its websites <foyles.co.nz> and <foyles.com>. However, this is contradicted by Robert Foyleís email of February 12, 1999 which described development of the <foyles.com> website as "nearing completion" and the process as having been "much more involved than I had thought it would be at the outset!" No evidence of use prior to February 12, 1999 has been provided. Under these circumstances the panel concludes that, as at February 12, 1999 there was no completed website at that domain name and that the domain name had not been used.

However, by nearly completing the website, the Respondent had made preparations to use the disputed domain name before it had notice of this dispute. The question arises whether those preparations were, as required by the subparagraph, "in connection with a bona fide offering of goods or services".

It was held in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"(WIPO case D2000-0847) that use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or services. As detailed under the heading Bad Faith, the panel has concluded that the Respondent has used the disputed domain name intentionally to trade off the goodwill of the Complainantís mark FOYLES. The preparations to use the disputed domain name which had been undertaken prior to notice of this dispute were therefore themselves not in connection with a bona fide offering of goods or services. Accordingly, the requirements of this subparagraph of the Policy are not established.

As to subparagraph 4(c)(iii), since the use which the Respondent is making of the disputed domain name is commercial, (by linking the web address www.foyles.com to the online bookshop website www.robertfoylebooks.com,) this subparagraph has no application. See Hollywood Casino Corporation v. Go Call Inc., NAF case FA0009000095471:

"using the Complainantís mark to divert internet traffic to an alternative site is not a legitimate, bona fide, or noncommercial use of the domain name".

As to paragraph 4(c)(ii), the critical issues in this case are whether the Respondent has trade mark rights in or has been commonly known by the name FOYLES. If either were so, the Respondent, as a bookseller, would undoubtedly have a legitimate interest in the disputed domain name.

The Response presents a difficulty in that paragraph 8 incorrectly identifies the Respondent as the grandson of Gilbert Foyle. Thereafter, when the Response refers to "the Respondent" it is not clear whether this is intended to be a reference to Foyleís Books Ltd.

The panel has approached the question of the rights and legitimate interests of the Respondent, if any, to the disputed domain name on the assumption that any entitlement to use the name FOYLES that Robert Foyle might be shown to have, could properly be exercised by any corporate vehicle under his control, such as the Respondent. The panel has also considered whether, on the materials before the panel, the Respondent is shown to have any such entitlement in its own right.

Robert Foyle claims to have used "the name FOYLE or FOYLEíS [sic], in reference to his present and past businesses in good faith, it being his own surname, as his father and grandfather had before him." He also claims a valid reputation in his and his familyís use of the name FOYLES since the founding of W & G Foyles. He describes the name FOYLES as "the surname of the principals of both businesses and, like the family, has a common origin over 90 years ago."

It appears to the panel that there is an important difference between the surname of Robert Foyle and that of his father and grandfather before him, FOYLE, on the one hand, and the name FOYLES on the other, being that of the business originally founded by William and Gilbert Foyle and now owned by the Complainant. Having set up together a business enterprise under the name FOYLES, the two founders themselves could have been restrained under the law of passing off from trading as individual booksellers using that name, as distinct from their proper surnames, without the permission of the enterprise they founded or without sufficiently distinguishing their individual businesses from that of the enterprise. They could also have been restrained under trade mark law from infringing the trade mark of the enterprise. It is hard to see how the passage of time alone should enable Robert Foyle to do that which his grandfather could not.

In support of his claim to rights in the name FOYLES, Robert Foyle relies not on the passage of time nor only on the incorrect claim that the family surname is FOYLES. He relies also on:-

(a) the circumstances of the establishment and activities of Foyles Educational Limited;

(b) the claim that the Respondent and customers of Foyles Educational Limited and of Unifoyle Ltd, which took over the export operations of Foyles Educational Limited, called those businesses FOYLES;

(c) the claim that Robert Foyle and customers of Robert Foyle Books and Foyleís Books Ltd (the Respondent) commonly referred to those businesses as FOYLES.

As to (a), it appears the business Foyles Educational Limited was established and that name was adopted with the permission of the Complainantís predecessor, otherwise it is hard to see why its operations would have been accommodated at the Charing Cross Road premises for 43 years, even allowing for what have been described as FOYLESí eccentricities.

Taking into account the eventual separation of Foyles Educational Limited from the business of the Complainantís predecessor, there is nothing before the panel which appears to have conferred upon Gilbert, his son or his grandson the right to use the name FOYLES independently from the businesses of Foyles Educational Ltd, (with which the Respondent has no present association) or Unifoyle Ltd, nor is there any evidence that any of those members of the family ever used the name FOYLES as a trade mark without the permission of the Complainant prior to the events giving rise to this dispute.

As to (b), any use Robert Foyle or customers of Foyles Educational Limited and Unifoyle Ltd. may have made of FOYLES in reference to those businesses is irrelevant to the present case, which involves the business of Foyleís Books Ltd (the Respondent).

As to (c), having regard to the close similarity between the names FOYLE, FOYLEíS and FOYLES, and the phonetic identity between the possessive of the surname FOYLE and the Complainantís mark, there would need to be clear evidence of use by the Respondent or by customers of the name FOYLES, as distinct from FOYLE or FOYLEíS before this panel could be satisfied either that the Respondent has trade mark rights in the name FOYLES or that the Respondent has been commonly known as FOYLES.

There is no evidence whatever before the panel to support either assertion in (c), despite the fact that, in its Notice of Opposition to the Complainantís application to register the trade mark FOYLES in New Zealand, dated May 29, 2000, the Respondent claimed ownership in that country of the trade marks "FOYLE or FOYLES or ROBERT FOYLE BOOKS" and use and promotion of those marks in New Zealand and overseas. The panel draws the inference from the Respondentís failure, only seven months after that Notice of Opposition was filed, to produce to this panel any evidence upon which it relies in claiming ownership and use of the trade mark FOYLES, that there is no such evidence. Accordingly, the Respondent is not shown to have any such entitlement in its own right.

The panel finds the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy specifies, non-exhaustively, four circumstances, any one of which shall be evidence of both bad faith registration and use. Insofar as examination of the Respondentís intent is required, the panel regards Robert Foyle, its sole director and founder, as the mind and will of the Respondent.

As to subparagraph 4(b)(i), there has never been any intent on the part of the Respondent to sell the disputed domain name.

As to 4(b)(ii), although registration of the disputed domain name necessarily prevented the Complainant from registering the same domain name, the evidence does not establish that this was the Respondentís purpose. It is therefore unnecessary to consider whether other domain names registered by the Respondent and by Robert Foyle form a pattern of such conduct.

As to 4(b)(iii), the evidence does not establish that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant, being a competitor.

As to 4(b)(iv), in SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037). However, such a finding does not follow as a matter of course from proof of prior knowledge of the mark: Goldline International, Inc. v. Gold Line, (WIPO case D2000-1151, 4 January 2001).

Despite having found that the Respondent has no rights or legitimate interest in the disputed domain name, the panel is prepared to accept that Robert Foyle and, through him, the Respondent, genuinely believe they have a right to use the name FOYLES as a trade mark in connection with the Respondentís business and to reflect that mark in a corresponding domain name.

However, in asserting that "the Respondent has rights in a trademark or service mark which is identical or similar to a trademark or service mark in which the Complainant has rights" (Response ∂6) and in asserting "the concept of the shared nature of the name FOYLES" (Response p.7), the Respondent acknowledges that the Complainant also has at least some goodwill in that name. Robert Foyleís emails of February 12 and 19, 1999 to his cousin Christopher concerning the disputed domain name also indicate an awareness on his part and, through him, on the part of the Respondent, that the Complainant has some rights in the name FOYLES.

The Respondent is using the disputed domain name to route Internet traffic to a commercial website (robertfoylebooks.com) that promotes the supply of British books worldwide. These services are similar, if not identical, to those of the Complainant. It is made clear on the <robertfoylebooks.com> homepage that the business is not that of the Complainant. However, in linking a domain name that is confusingly similar to the Complainantís mark to a website offering similar services to those of the Complainant, the Respondent stands to divert to the benefit of Robert Foyle Books some proportion of the trade that, absent "initial interest confusion" (Footnote 1), would otherwise go to the Complainant.

See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,(WIPO case D2000-0869, September 25, 2000):

"The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion".

Having regard to Robert Foyleís family background and intimate knowledge of the longstanding use of the trade mark FOYLES by the Complainant and its predecessors, the panel concludes that it was his and hence the Respondentís intention in registering the disputed domain name and in linking it to the <robertfoylebooks.com> site to seek to divert to the business of Robert Foyle Books, to the extent possible, not merely the benefit of any goodwill that the Respondent might have in the name FOYLES but also the benefit of such of the goodwill in the name FOYLES as both Robert Foyle and the Respondent knew belonged to the Complainant. The panel finds that, in this sense, the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site, within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, the panel finds the disputed domain name was registered and is being used in bad faith.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name <foyles.com> to be transferred to the Complainant.

 


 

Alan L Limbury
Sole Panelist

Dated: January 13, 2001

 


 

Footnote:

1. Brookfield Communications Inc. v. West Coast Entertainment Corporation 174F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558 (9th Cir. 1999).