WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Freeserve.com PLC v. Primary Source Online
Case No. D2001-0185
1. The Parties
The Complainant is Freeserve.com PLC whose principal place of business is at Maylands Avenue, Hemel Hempstead, Hertfordshire HP2 7TG, U.K. It is represented by Olswang, of 90 Long Acre, London WC2E 9TT, U.K.
The Respondent is Primary Source Online, with a postal address at 78 York Street, London W1H 1DP, U.K.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is <freeservetv.com> and it was registered on or about February 25, 2000.
The current Registrar of the domain name is BulkRegister.com, Inc. of 7 East Redwood Street Third Floor, Baltimore, MD 21202, USA ("BulkRegister"), but prior to a date said to be January 29, 2000 but which the Panel suggests should have been
January 29, 2001, the Registrar had been Network Solutions Inc. ("NSI").
The current Registrar provided the following contact details for the Respondent:
The Respondentís administrative contact is Mr. Bundeep Singh with the same adress as the Respondent.
The Respondentís technical contact is Mr. Pravin Mishra of Pugmarks Inc., 234 NE Madison Avenue, Suite 234, Peoria, IL 61602, USA.
3. Procedural History
On February 2, 2001 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by fax pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on February 6, 2001, and was acknowledged by the Center on the same day. Upon receipt of the email copy of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on February 6, 2001 by email.
The Center sent a Request for Registrar Verification to NSI on February 9, 2001 by email. On February 13, 2001 the Center notified the Complainant that NSI was not the Registrar, and requested an amendment from the Complaint. The Complainant supplied an amended Complaint, which designated the correct Registrar, to the Center by e-mail on February 13 2001, by fax on February 14, 2001and by hard copy of
February 19, 2001.
In its amended Complaint, the Complainant stated that on February 13, 2001 copies of the Complaint were sent to the Respondent by fax and postal service (postage pre-paid and receipt requested) as well as to BulkRegister.
The Center sent a further Request for Registrar Verification to BulkRegister by email on February 14, 2001, and BulkRegister responded on the same date, verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the disputed domain name , (3) that the Respondent, Primary Source Online, was the current registrant of the disputed domain name, (4) that the Respondentís contact details were correct, (5) that the Policy applied in relation to the domain name <freeservetv.com>, and (6) that the current status of the domain name was "Register LOCK".
On February 22, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, e-mail and fax, as well as to its administrative and technical contacts and to the Complainant.
The Center sent a Notification of Respondentís Default to the Respondent on
March 16, 2001.
The Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of April 9, 2001 to the Respondent and the Complainant on March 27, 2001 via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel, the Respondent and the Complainant on March 27, 2001. The Panel received hard copies of this material on March 28, 2001.
All other procedural requirements appear to have been satisfied.
4. Factual Background
Activities of the Complainant
The following information was asserted as fact by the Complainant and remains uncontested.
The Complainant is an exceptionally well-known UK Internet Service Provider. It was
launched by the Dixons Group, one of Europe's leading retailers of electronic products, in September 1998, and within five months the Complainant had opened one million accounts and had become a market leader. According to research conducted by Fletcher in June 2000, the Complainant had 37% of the home Internet access market in the UK and 96% consumer awareness among home Internet users in the UK. A survey conducted by MMXI Europe in October 2000 revealed that the Complainant currently has 2.09 million active accounts and had 4 million unique visitors in the UK. FREESERVE is the most recognised Internet brand in the United Kingdom and after only ten months of operation, the company was publicly listed on the London and NASDAQ Stock Exchanges.
In addition to providing Internet access, the Complainant provides a number of other services which include: a service devised for use on television sets, mobile Internet services, a comprehensive selection of UK content including news, entertainment, travel and sport, search and communication tools, an auction service, on-line sharetrading, personal insurance, motoring and some services targeted at specific groups such as women and business people.
A core element of the Complainant's online business is called the Freeserve TV Portal, which is said to be located at the URL www.freeserve.com/TV. However in practice, nothing is available at that site, although the Panel found something which could possibly be what is referred to at the URL www.freeserve.com/internettv. It is said that users of this site can access various information and that it is structured in a menu format and font size so that it can be navigated by a television viewer by using a television set. The portal includes news, sport, weather and entertainment. The Complainant has a number of partners and third party retailers who attract custom through operating as part of the Freeserve TV site rather than from their own website.
The Complainant has spent £31.1 million in the last 2 financial years on advertising its
services. It has also spent £2 million promoting its brand during the period proceeding its public floatation. As a result of this advertising spend, the public in the UK and elsewhere are very familiar with the Freeserve name and associate it exclusively with Freeserve.com Plc.
The Complainantsí trademarks
The Complainant is the proprietor of the trademarks FREESERVE and FREE SERVE, both with and without a device, in the United Kingdom and the European Union for goods and services in Classes 9, 16, 35, 38 and 42 as follows:
Trade Mark No.
2176580 (UK Registration)
2189290 (UK Registration)
FREE SERVE (word and device)
1108216 (Community Trade Mark Registration)
FREE SERVE (device)
Copies of these trademarks were attached as an Annex to the Complaint.
Activities of the Respondent
In the absence of any communication, nothing is known about the activities of the Respondent.
5. The Partiesí Contentions
In its Complaint, the Complainant contends that any attempt by the Respondent to supply services under or by reference to the domain name <freeservetv.com> in the United Kingdom or in any of the Member States of the European Union will amount to an infringement of one or more of the Complainantís UK and EU trademark registrations, as such use would amount to the use in relation to the supply of services of an identical or similar sign and would be likely to cause confusion and/or would take unfair advantage of and would be detrimental to the distinctive character and repute of the relevant trade mark or marks.
Further, by reason of the operation of the Complainant's business and by reason of the extensive promotion of that business, the Complainant has acquired considerable goodwill in its business in the United Kingdom. That goodwill is associated in the minds of public with the names <Freeserve plc>, <freeserve.com>, <freeserve.co.uk> and the marks FREESERVE and FREE SERVE. In the circumstances, any use by the Respondent of the domain name <freeservetv.com> in relation to the supply of services will inevitably lead to members of the public being confused or deceived into believing that the Respondent's business is or is associated with or related to the Complainant's, which it is not. This amounts to the tort of passing-off in the United Kingdom.
Further, the Respondent should be considered as having registered the domain name in bad faith. Any UK resident who uses the internet is aware of the Complainant. Further, with the advent of the convergence of digital media it would have been obvious that the Complainant would want to make use of interactive television (accessing the web via a TV set). It is therefore obvious that any "internet familiar" person who has registered a domain name which includes "freeservetv" must have done so in bad faith.
By reason of the above, the Respondent has registered the domain name <freeservetv.com> either primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the registration of the domain name, or to attempt to attract for financial gain Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. Or alternatively, the Respondent has registered the domain name to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name. In addition, a Mr. Bundeep Singh Rangar, who appears to be the administrative contact for the disputed .com domain name, has registered the corresponding .co.uk, country code level domain, <freeservetv.co.uk>. The Complainant is therefore effectively blocked from using this domain name. (A copy of the WHOIS query result for the .co.uk domain name was attached as an Annex to the Complaint.
The Respondent did not respond to the Complaint.
6. Discussion and Findings
Since the Respondent has not submitted a response, it is therefore in default, in accordance with the following paragraph of the Notification of Complaint Ė
"6. Default. If your Response is not sent by the above date (i.e. February 4, 2000), you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
Even though there has been no response the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the complaint." Which the Panel will now do.
* * * *
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. The Panel will now consider in detail each of the three elements in paragraph 4(a):
4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There is no doubt that the Complainant has rights in the trademarks FREESERVE or FREE SERVE. It is equally clear that FREESERVE is not identical to the disputed domain name <freeservetv.com>, but is it confusingly similar?
There have been other Decisions in which a complaint was upheld when the Respondent merely added a descriptive term to an otherwise distinctive or well-known trademark. See, for example, Cases D2000-0265 Sporoptic Pouilloux S A v, William H Wilson ("buyvuartsunglasses.com"), D2000-0275 Caterpillar Inc. v. Roam the Planet Ltd (catmachines.com), and Guerlain S A v. HI Investments (buyguerlain.com). In the present case the addition of the suffix ĎTVí gives the impression that the domain name is a version of the Complainantís internet services that is accessible through the medium of television Ė which in fact is said to be one of the Complainantís core businesses. If anything, this enhances the likelihood of confusion with the trademarks of the Complainant and, in the opinion of the Panel, the domain name is little more than a slavish copy of the Complainantís name and trademarks.
As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainantís trademarks, and that paragraph 4(a)(i) is proved.
4(a)(ii) you have no rights or legitimate interests in respect of the domain name.
The Complainant has only indirectly alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name by stating that any use of it by the Respondent would amount to the tort of passing off in the UK. This is relevant as both parties are domiciled in the UK and paragraph 15(a) of the rules states that a Panel shall decide a case, inter alia, on the basis of "any rules and principles of law that it deems applicable". The leading case involving passing off is still A.G. Spalding & Bros. v. A W Gamage in 1915, in which it was held by the House of Lords that "nobody has any right to represent his goods as the goods of somebody else. It is also sometimes stated in the proposition that nobody has the right to pass off his goods as the goods of somebody else." [32 RPC 273 at page 283]. So, the Complainant having established an arguable case, the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name.
By its default, the Respondent has done nothing to contest the allegation of the Complainant that he lacks any rights or legitimate interests in the disputed domain name. It could therefore be assumed that what lay behind the Respondentís registration of the disputed domain name was his actual or likely knowledge of the name and trademark FREESERVE. This has apparently been widely promoted, but in fact the name may not be as well known as the Complainant contends. It is, for example alleged by the Complainant, that "Any UK resident who uses the internet is aware of the Complainant." However in this context, the Sole Panelist would like to point out that, although a regular user of the Internet, and a UK resident, he was only dimly aware of the name FREESERVE prior to receiving this Complaint.
Paragraph 4(c) of the Policy sets out several ways in which a Respondent can establish rights or legitimate interests in the domain name(s) at issue. The Respondent can, for example, show that before he received any notice of a dispute, he had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. However the disputed domain name is inactive.
Under paragraph 10(a) of the Rules, the Panel is allowed inter alia to visit the Internet in order to obtain additional information in these default proceedings. The Panel did just that on March 30, 2001, and found the disputed domain name to be still unavailable.
The Panel concludes that the Respondent has made no "demonstrable preparations" beyond the mere registration of the disputed domain name.
The Respondent has produced no evidence that he has been commonly known as ĎFreeserveí, and he has made no legitimate noncommercial or fair use of the disputed domain name since he first registered it.
No other circumstance has been evidenced by the Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy. Therefore the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has been proved.
4(a)(iii) the domain name has been registered and is being used in bad faith.
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain names in bad faith. The Panel must perforce draw such inferences as it can from this inaction, and from the Complainantís uncontested allegations.
With regard to Ďbad faithí, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive. The Panel will consider each of them in turn.
4(b)(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 trade mark 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.
The Complainant alleges that the Respondent must be guilty of this charge simply by virtue of his having registered the disputed domain name, but the Panel finds this to be a somewhat dubious proposition on the facts before it.
The Complainant made no approach to the Respondent prior to the complaint having been filed, so it cannot be said that any offer to sell was made by the Respondent.
4(b)(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
Again one could infer that it was the intention of the Respondent to prevent the Complainant from using its name, but here the evidence is rather stronger for someone apparently connected with the Respondent has registered the domain name freeservetv.co.uk in the United Kingdom ccTLD. Proof of this has been filed as an Annex to the Complaint. It would appear therefore that the Respondent may have been engaged in a modest pattern of registering as domain names, trademarks or names with which he has connection.
Furthermore, not only does the Complainant already operate an existing online television service, but the promise that, in the next 10 years, all television channels in the UK will have switched to a digital service, could make FREESERVE TV an obvious choice of name for the Complainant if (when?) it decides to go down this route.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Since nothing is known of the Respondentís business, there is nothing to
suggest that he is in competition with the Complainant, but the registration of
freservetv.co.uk, referred to above, would seem to indicate that future
competition could be a real possibility.
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location."
Since nothing is known of the Respondentís business, there is nothing to
suggest that he has tried to create any confusion with the Complainant or his
business Ė yet. But with a name that is so close to that of the Complainant, confusion would be highly likely.
Taking all of the above four points into consideration, the Panel concludes
that the disputed domain name was registered in bad faith.
However, it should be noted that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. One of the earliest Panel decisions, Telstra Corporation Limited v. Nuclear Marshmallows, Case D2000-0003, established (at paragraph 7.9) that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." The question that must always be asked in these circumstances is: what are those Ďcertain circumstancesí?
Telstra is perhaps the most cited of all UDRP decisions to be handed down to date, it and its rationale have been followed by numerous subsequent panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behaviour" (see paragraph 7.11).
In the present case, the only positive evidence we have of the Respondentís behaviour is his non-response to the Complaint and the registration by someone with whom he is apparently closely connected of the domain name <freeservetv.co.uk>. But added to this is his adoption of a domain name which is virtually identical to the name and trademarks of the Complainant. All of this is a possible pointer to cybersquatting Ė an activity which the UDRP is specifically designed to combat.
These proceedings were binding on the Respondent. Nevertheless he failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that he had been duly notified by the Center. In particular, Respondent has not denied that he is using the domain name in bad faith. Furthermore, the inactivity of the website under the disputed domain name could cause the public to believe, inter alia, that Complainants do not have a website.
The Panel therefore concludes that the Respondent has registered and used the domain name in bad faith.
For these reasons, the Panel decides that the domain name registered by the Respondent is similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name was registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name <freeservetv.com> be transferred to the Complainant.
David H Tatham
Dated: 31 March, 2001