WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Logica plc and Logica UK Limited v. Logica Solutions Limited

Case No. D2001-0140

 

1. The Parties

The Complainants are Logica plc and Logica UK Limited of Stephenson House, 75 Hampstead Road, London NW1 2PL. The Respondent is Logica Solutions Limited of 17 Sparthfield Avenue, Rochdale, Lancashire OL11 3SF.

 

2. The Domain Name and Registrar

The domain name in dispute is <logicasolutions.com> ("the Domain Name"). The Registrar is EPAG Enter-Price Multimedia AG of Dusseldorf, Germany.

 

3. Procedural History

The Complaint was filed by the Complainantsí solicitors, Fieldfisher Waterhouse, with the WIPO Arbitration and Mediation Center ("the Center") by email on

January 25, 2001 and in hard copy on January 26, 2001. By email of February 8, 2001 the Registrar confirmed that a copy of the Complaint had been sent to it, that it was the Registrar of the Domain Name, that the Respondent was the current Registrant and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied. The Registrar omitted in this email to answer the Centerís question as to the language of the Registration Agreement. In response to the Centerís reminder, the Registrar stated by email of February 15, 2001 that the language of the Registration Agreement was English. The Complaint indicates that payment of US $1500 was made by check and the Centerís Notification of Complaint and Commencement of Administrative Proceeding records that the payment has been made. Having reviewed the file, the Panel concludes that the Complaint complied with the applicable formal requirements.

The Complaint was notified to the Respondent on February 19, 2001 by email, fax and courier to the addresses and fax number provided for the administrative, technical, zone and billing contacts in the Registrarís whois database and also by courier to the Respondent at its address provided in that database. It appears that the Complaint was not sent to Postmaster@logicasolutions.com. Nevertheless the Panel is satisfied that reasonably available means calculated to achieve actual notice to Respondent were employed and that the complaint was properly notified in accordance with paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

The Respondent did not submit a response within the time required by the Rules and on March 13, 2001 the Center gave Notification of Default to the same addresses and fax number of the Respondent and its contacts. The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on March 26, 2001. In accordance with paragraph 15 of the Rules, the Panel was required to forward its decision to the Center by April 9, 2001 in the absence of exceptional circumstances.

 

4. Factual Background

The Complainantsí group is a well-known information technology consultancy. The First Complainant is the parent company and the Second Complaint is the main operating company in the UK. The First Complainant is the proprietor of registered trade marks in the UK and US in respect of the word "Logica".

The Respondent was incorporated as a UK company under the name "Logica Solutions Limited" on June 21, 2000 and registered the Domain Name on September 11, 2000. Following several letters of complaint by the Complainantsí solicitors, a Mr Ali telephoned them on December 22, 2000. He claimed to be a business adviser of the Respondent. He informed them that the Respondent was not yet trading but had set up certain documentation for the new business. Although asked, he declined to say what the Respondentís activities would be. He said that the Respondent had spent £2,000 for signs and letterheads, but that he might be able to persuade it to change its name if the Complainants made a goodwill payment. In a subsequent telephone conversation on January 9, 2001 Mr Ali said that his clients had been approached by a Pakistani company which registers domain names and which wished to acquire the Domain Name, but that his client was prepared to sell it to the Complainants for £700-£800. In a further telephone conversation on January 12, 2001 Mr Ali said that his client was unlikely to accept the Complainantsí offer to pay the costs of registering the Domain Name up to a maximum of £150 including VAT in return for its transfer.

The Domain Name points to a page on the website of the Internet service provider, Names.co plc, through which it was registered.

 

5. Partiesí Contentions

The Complainants contend that the Domain Name is confusingly similar to the mark "Logica" in which they have registered and unregistered rights, that the Respondent has no legitimate interest in using the Domain Name, and that it was registered and is being used in bad faith, in particular for the purpose of sale to the Complainants or a competitor for valuable consideration in excess of the costs of registration.

The Respondent has not submitted a Response to the Complaint.

 

6. Discussion and Findings

In accordance with paragraph 4 of the Policy, a complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.

As to the first requirement, the Panel considers that the Domain Name is confusingly similar to the trade mark "Logica" in which the Complainants have registered and unregistered rights.

As to the second requirement, Mr. Ali stated on behalf of the Respondent in the telephone conversation of December 22, 2000 that the Respondent had not yet started trading but had set up certain documentation. However, he declined to provide details and the Respondent has not demonstrated, by a Response in this Proceeding or otherwise, any preparations for bona fide commercial or other use of the Domain Name prior to the Complainantís objections. The existence of genuine preparations on the part of the Respondent to use the Domain Name is implausible given Mr Aliís threat to sell it to a company in Pakistan. The Panel is satisfied that the Respondent has no right or legitimate interest in the Domain Name.

As to the third requirement, Mr. Ali sought in the telephone conversations of December 22, 2000 and January 9 and 12, 2001 to sell the Domain Name to the Complainants for a sum in excess of the cost of registration. He also threatened to sell it to a company in Pakistan. The Panel is satisfied that the Domain Name was registered and is being used in bad faith with the primary aim of sale for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name.

The Panel considers that the use of the Domain Name by a person other than a member of the Complainantsí group would be likely to cause confusion. The Panel concludes that the Domain Name should therefore be transferred to the Complainant Logica plc.

 

7. Decision

The Panel decides that the Domain Name <logicasolutions.com> should be transferred to Logica plc of Stephenson House, 75 Hampstead Road, London NW1 2PL.

 


 

Jonathan Turner
Sole Panelist

Dated: April 9, 2001