WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Barry & Co. Ltd. v. Jason Beatty
Case No. D2000-1756
1. The Parties
The Complainant is Robert Barry & Co. Limited, a company incorporated in England with a registered office at Milner House, 14 Manchester Square, London, W1A 1BA, United Kingdom. The Complainant is represented by Marcus J. OíLeary, of The Law Offices of Marcus J. OíLeary, Centennial Court, Easthampstead Road, Bracknell, Berkshire, RG12 1YQ, United Kingdom.
The Respondent, Jason Beatty, appears to be a private individual. His address has been given as 43, Moyne Road, Ranelagh, Dublin 6, Republic of Ireland.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is "robertbarry.com".
The Registrar of this domain name is Network Solutions Inc. (NSI), of 505 Huntmar Park Drive, Herndon, Virginia, 20170, U.S.A.
3. Procedural History
On December 18, 2000, the Complainant submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") a Complaint made 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, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Resolution Policy ("the Supplemental Rules"). A hard copy of the Complaint was received by the Center on December 20, 2000.
On December 20, 2000, the Center transmitted a Request for Registrar Verification to the Registrar. The Registrar acknowledged receipt of a copy of the Complaint on the following day and confirmed that it was the Registrar of the domain name "robertbarry.com" which was in active status. It also confirmed that the Respondent, was subject to the NSI Service Agreement Version 5.0. The Registrarís reply also disclosed that the Administrative and Billing Contact was:
"robert barry, jason Beatty 43 moyne rd ranelagh d6 d6 IE"
and that the Technical Contact was:
Hostmaster, Icom DNS (DH 397-ORG) Internet Communications, 7787 Sunset Blvd., Los Angeles, CA 90046.
In accordance with paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules. Timely payment of the required fee was made by the Complainant. Copies of the Complaint were transmitted to the Respondent and to the Registrar.
On December 24, 2000, the Center sent by post and courier, to the Respondent, at the address given for his Administrative Contact, and to his Technical Contact, a Notification of Complaint and Commencement of Administrative Proceedings. Copies were sent to the Complainant through its representative and to ICAAN. In this notice, the Respondent was informed that a Response to the Complaint was required within 20 calendar days from the date of receipt of the notification.
Having received no communication from the Respondent by the due date, the Center, on January 16, 2001, sent a Notification of Default to the Respondent.
On January 17, 2001, the Center invited the undersigned to serve as panelist in this proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 22, 2001, the undersigned advised of his acceptance, and transmitted by facsimile to the Center a copy of the executed Statement and Declaration.
The Panel has independently determined, and agrees with the assessment of the Center, that the Complainant has met the formal requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
The Complainant asserts that the mark "Robert Barry" has acquired a significant reputation over the past forty years, particularly in relation to commercial property transactions. The Complainantís business has been in continuous operation since 1960, under the name Robert Barry & Co., frequently shortened in use to "Robert Barry" by third parties. The Robert Barry business was founded in Cirencester in 1960, expanded with the opening of a second office in Edinburgh in 1966, offices in London and Harrogate in the 1970ís and 1980ís, and an office in Plymouth in 1998. From these five offices, the company has assisted clients in the purchase and sale of commercial properties throughout the United Kingdom, specializing in hotel, leisure and licensed properties. Substantial figures in the millions of pounds have been provided but the Complainantís table setting out these figures is unclear as to whether these amounts represent earnings or profits.
Since June 1, 1999, the company has been associated with a global real estate service organization, which has 251 offices in 52 countries. The mark "Robert Barry" continues to be used in its business and through the association with the global organization has received international exposure through the latterís web site.
In 1996, the Complainant secured a web site address "robertbarry.co.uk" which by 1999, was recording more than 100,000 hits per year.
An enquiry to the WHOIS database of NSI, disclosed that the Respondentís domain name in issue was created on April 18, 2000. The report also identified a Domain Server, DomainsAreFree, with which the disputed domain name was parked as soon as it was issued. (Annexe 1 & 3).
Barely two days after the domain name was registered, on April 20, 2000, the Respondent sent an e-mail to the Complainant, reading as follows:
"My company is receiving many of your customers inquiries every day for property via our new web site "robertbarry.com"
It appears many of your internet customers are using the dot com when sourcing your company domain name (robertbarry.co.uk).
As we are also receiving many e-mails I have asked our webmaster to temporarily cease our e-mail address email@example.com because of the confusion.
As my web site is still under construction I have no proplem (sic) forwarding the e-mails I receive in the short term when I re-activate our e-mail address, so could you please contact me in relation to what address your company would like me to send your customers correspondence to.
Jason Beatty" (See Annex 8)
The Complainant referred the matter to its solicitor, who over the next three months engaged in correspondence with the Respondent and with a solicitor for the latter, who in time disclosed that she acted with very restricted powers. (Annex 20).
In the course of the exchanges:
(i) Jason Beatty represented that he and his partner Robert Barry were going to be operating a small business carrying out tours of Dublin in the coming summer, under the name of Robert Barry (See Annex 13);
(ii) that he had prepared brochures for this purpose and while willing to transfer the domain name to the Complainant, he would require £950 to compensate him for producing the brochures which he would no longer be able to use since they bore the name Robert Barry;
(iii) upon the Complainantís solicitor requesting to see a copy of the Dublin brochure, the Respondent was unable or unwilling to produce such a brochure;
(iv) when pressed to secure an agreement signed by his partner, Robert Barry, Jason Beatty instructed his solicitor to say that he, Jason Beatty, was the sole proprietor of the domain name in issue (See Annexe 19 & 20);
(v) although the Respondentís solicitor was furnished on June 15, 2000, with a draft statutory declaration for signature by the alleged partner, Robert Barry, to confirm that he had no rights or interests either on his own account or as part of any partnership, this declaration was not forthcoming. (See Annex 20).
Concurrently, on June 1, 2000, another client of the Complainantís solicitors, Dolphin Telecommunications Ltd. (whose domain name was DOLPHIN-EXPRESS.NET), received a letter signed by Jason Beatty, in virtually identical wording to that received by the Complainant (Annex 9). Again, the letter alleged that many misdirected inquiries had been received just two days after registration of the domain name "DOLPHINEXPRESS.NET". A WHOIS search (Annex 10) disclosed that the named registrant was "Dolphin Express couriers" at an address in Dublin which on May 4, 2000, Jason Beatty had given as his address to the Complainantís solicitor.(See Annex 11)
Further in decision dated April 24, 2000, Bloomberg, L.P. v. Bloom-Berg-Dom, Jason Beatty and/or Jason Bloom, (Forum File No.: FA0003000094358, National Arbitration Forum), the Respondent was found to have written to the claimant whose registered domain name was (Bloomberg.com") within three days of registering the domain name "bloom-berg.com", alleging that:
"My company is receiving large amounts of your customers e-mails every week via my web site "bloom-berg.com"". (Annex 2).
Because the Respondent has submitted no response to the allegations of the Complaint, certain factual conclusions may be drawn by the panel on the basis of the Complainantís undisputed representations (Rules, paragraph 14(b)).
5. Partiesí Contentions
Complainant contends that it has a common law trade mark in the name "Robert Barry".
Complainant further contends that the Respondent has registered as a domain name a mark "robertbarry.com" which is identical with and confusingly similar to the Complainantís trademark, pursuant to the Policy paragraph 4(a)(i).
Complainant contends that the Respondent has no rights or legitimate interest in the domain name, pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Respondent failed to contest each of the above allegations of the Complainant.
6. Discussion and Findings
Does the Complainant have valid rights?
The Panelist finds that "Robert Barry" is a common law trademark applied to services related to the purchase and sale of commercial real estate, with particular specialization in hotel, leisure and licensed property transactions. An abbreviated form of a company name is often used as a trademark. The Complainant need not hold a registered trademark to establish rights in a mark protectable under the Policy and Rules. Adobe Systems Incorporated v. Domain OZ , WIPO Case No. D2000-0057. Use of the mark in the United Kingdom to an extent that establishes distinctiveness is sufficient for purposes of stating a claim. In the present case, "Robert Barry" has been used as the distinctive element of the Complainantís trade name for forty years and it is significant from the standpoint of distinctiveness, that members of the public have referred to the business and its services as "Robert Barry". The mark has been used throughout the United Kingdom. The fact that the name has been used as the defining identification in the Complainantís web site address "robertbarry.co.uk" since 1996, by a substantial number of persons who may be presumed to be interested in the services offered by the Complainant, supports the claim to distinctiveness.
The web site (Annex 5) shows the use of the mark "Robert Barry" in advertising the companyís services, displayed in a distinctively bolder and different type of lettering so as to create a separate impression apart from the corporate name. There is no evidence that any other trader uses "Robert Barry" or "Robertbarry" to identify wares or services The Respondent was not using the name "Robert Barry" in association with an existing legitimate business before the date the domain name was registered or at the date when the Complaint was filed, and it seems doubtful that there was any partner of that name.
The panelist finds that the Complainant has rights in the mark "Robert Barry".
Identical or Confusingly Similar
It is not difficult to conclude that the domain name "robertbarry. com" is identical or confusingly similar to the mark "Robert Barry". Indeed, if the Respondentís initial letter to the Complainant were accepted as a true statement of fact, i.e. that within two days of registration, many of the Complainantís customers were misdirecting their inquiries to the Respondent, there would indeed be confusion to cause concern. The Respondentís scheme was based on the need to convince the Complainant that confusion was already substantial and so likely to continue that the latter could be induced to pay a sum far in excess of the registration costs in order to acquire the disputed domain name. Even if the statement in the letter were not considered an admission, there is no substantial difference between the domain name and the mark. The relevant part of the domain name is "robertbarry" and this is no more than a compression or telescoping of the Complainantís mark. Confusion would be inevitable.
Accordingly, the Panelist finds that the domain name "robertbarry.com" is identical or confusingly similar to the mark "Robert Barry".
Rights or Legitimate Interests
The Complainantís use of its mark and trade name predates the registration of the Respondentís domain name by decades. Its web site was in use for more than three years before the Registrantís actions. The Respondent has not shown any prior association with the Complainant nor any license or other authorization to use the Complainantís name or mark.
The Respondent parked the domain name in issue upon grant and immediately wrote to the Complainant to instill the thought of serious confusion. When contacted by the solicitor for the Complainant, the Respondent suggested that he and a partner, Robert Barry, intended to establish a business at a date later in the year using the name of the partner and the domain name. The evidence strongly suggests that there was never a partner named Robert Barry, nor any partner. At an early stage, the Respondent indicated a willingness to transfer the domain name for £750, purportedly to cover the costs of brochures, which could no longer be used. When asked for a copy of the brochure, he was unable to comply, which would suggest that there were no brochures nor indeed, any use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of services.
There is no evidence on the record that the Respondent has undertaken any act regarding the disputed domain name other than to offer it to the complainant for a sum far in excess of the cost of acquiring the domain name.
Paragraph 4(c) of the Policy sets out a number of circumstances which, if proven, would establish rights or legitimate interests in a domain name in responding to a complaint. The Respondent has made no attempt to demonstrate that any of these circumstances apply in the present case.
Absent any evidence on the record establishing the Respondentís rights or legitimate interests in the domain name "robertbarry.com", the Panelist finds that the Respondent has no rights or legitimate interests in that domain name.
Registered and Used in Bad Faith
The facts disclose a pattern of conduct on the part of the Registrant, adopted on at least three occasions in the first six months of the year 2000. In each case, the respondent first identifies as a target an existing business having in use a mark, a domain name or a web site. He than registers and parks an identical or confusingly similar domain name. The registration is held in his own name and in a second name, which is the name of an individual or a trade name, again closely similar to that of the target business, suggesting the likelihood of a partnership or other business in existence. Within two or three days after registration of the domain name, the Respondent contacts the target company representing that his company is receiving many inquiries from customers of the target company, who mistakenly direct messages to the Respondentís new web site. The letter invites the target Company to contact the Respondent to resolve the substantial confusion. When the contact is made, the Respondent indicates a willingness to transfer the new domain name at an excessive price said to cover expenses incurred in the venture associated with the new domain name.In the present case, the Respondent retained and involved a solicitor to act on his behalf, but under severely limited powers. It would appear that the instruction of this solicitor was intended to lend a measure of verisimilitude to negotiations.
It has been held that included among circumstances evidencing bad faith, is the engagement in a pattern of registering domain names that are the names or marks of well known businesses, which action suggests an intent to profit from the
activities of others. J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035; Texas Instruments v. DM, WIPO Case No. D2000-1448.
The Respondentís misleading representations that there was a partnership business, that a Robert Barry was a partner, that brochures were in existence amounting to an out of pocket expense of £950, and that Robert Barry would sign a statutory declaration, none of which were proven to be true, would suggest bad faith on the part of the Respondent.
On the evidence presented, and in the absence of denial or evidence to the contrary, the panelist is satisfied that the Respondent registered the disputed domain name primarily for the purpose of selling or transferring the domain name to the Complainant, the owner of the mark, for valuable consideration in excess of the Respondentís out-of- pocket expenses related to the domain name. The Complainant has met its burden under paragraph 4(b)(i) of the Policy.
This Administrative Panel decides that the Respondent has registered a domain name "robertbarry.com" which is identical or confusingly similar to the Complainantís common law mark "Robert Barry", that the Respondent has neither rights nor legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith.
The Panel decides that the domain name "robertbarry.com" should be transferred to the Complainant.
James Gordon Fogo
Dated: February 5, 2001