WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brown Thomas & Company Limited v. Domain Reservations
Case No. D2001-0592
1. The Parties
The Complainant is Brown Thomas & Co Limited, a private company limited by shares, incorporated in Ireland on the June 6, 1890, having its registered office at 92, Grafton Street, Dublin 2, Ireland.
The Respondent is Domain Reservations of 81, Belfield Park, Stillorgan, County Dublin, Ireland.
2. The Domain Name and Registrar
The domain name in issue in these Administrative Proceedings is <brownthomas.com>. The registrar, with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
On April 24, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy and was subsequently received in electronic form on April 27, 2001.
On April 26, 2001, the Center sent an acknowledgement of receipt of the Complaint to the Complainant by e-mail and a copy of the acknowledgement was at the same time sent to the Respondent by e-mail.
On April 26, 2001, the Center sent a request for Registrar Verification to the Registrar. On April 27, 2001, the Registrar responded to the Center by e-mail and confirmed that it is the registrar of the said domain name <brownthomas.com>, confirmed that the Respondent was at that time the registrant of the said domain name, confirmed that the Respondent was the technical contact and the billing contact in respect of the said domain name, confirmed that the Registrar's Network Solutions 5 Service Agreement is in effect in respect of the said registration and that the said registration had "active" status.
The Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On May 4, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name < brownthomas.com > to the Respondent by post/courier (with enclosures), facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on May 4, 2001 and that the Respondent was required to submit a Response to the Center on or before May 23, 2001.
On May 25, 2001, as no Response had been filed by the Respondent, the Center sent a Notification of Respondent Default to the Respondent by email. A copy of said Notification was at the same time sent to the authorised representative of the Complainant by e-mail.
On May 30, 2001, the Center invited James Bridgeman to act as Administrative Panel in these proceedings.
On June 6, 2001, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member. On the same date, the Center advised the authorised representative of the Complainant and the Respondent by e-mail, that this Administrative Panel had been appointed and the case file was transferred to the Administrative Panel.
In the view of this Administrative Panel, the proper procedures were followed and the panel was properly constituted.
On June 20, 2001, having considered the case file in this reference this Administrative Panel formed a preliminary view that the Complainant had not satisfied all the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and in particular the test in paragraph 4(a)(i) of the Policy, but that it was highly likely the Complainant could do so upon the submission of further arguments and/or evidence.
Following the procedure adopted by the learned administrative panel in WIPO Case No. D2000-1490 wherein a similar situation was considered, this Administrative Panel issued directions seeking further particulars from the Complainant on or before June 27, 2001 and providing the Respondent with the opportunity to make further submissions on the said further particulars on or before July 4, 2001.
On June 21, 2001, the Center transmitted said directions to the authorised representative of the Complainant and to the Respondent by e-mail.
On June 27, 2001, the Complainant furnished said further particulars however once again the Respondent failed to furnish any submissions.
This Administrative Panel proceeded to make this decision.
4. Factual Background
An Irish registered company, Brown Thomas Group Limited is the holding company of the Brown Thomas Group, having fourteen subsidiary companies. The Complainant is an Irish registered single member private limited company. The single member of the Complainant is another Irish registered single member private company A-Wear Limited that is in turn a wholly owned subsidiary of Brown Thomas Group Limited.
Said holding company, Brown Thomas Group Limited is the owner of the following registered trademarks:
Irish registered trademark No. 131955 BROWN THOMAS registered on July 11, 1988 in respect of goods in Class 3, namely perfumes; eau de Cologne; toilet water; essential oils, cosmetics, toilet preparations; preparations for the hair; deodorants for personal use; dentifrices;
Irish registered trademark No. 131956 BROWN THOMAS registered on July 11, 1988 in Class 16 in respect of printed matter; printed publications; stationery; goods made of paper and cardboard included in Class 16; photographs; adhesives for stationery or household purposes; artistsí materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); playing cards; table linen, napkins and coasters made of paper; paper tissues; paper bags; paper blinds; confetti; drawing and writing instruments and materials included in Class 16; embroidery and dress-making designs and patterns, lithographs and paintings (pictures), and paper weights;
Irish registered trademark No. 131957 BROWN THOMAS registered on July 11, 1988 in respect of goods in Class 20, namely furniture; mirrors; picture frames; bedding included in Class 20; sleeping bags for camping; works of art of wood, wax, plaster or plastics; basins; baskets and bins and many other items of furniture and related items all in Class 20;
Irish registered trademark No. 131958 BROWN THOMAS registered on July 11, 1988 in respect of goods in Class 24, namely textiles and textile goods, all included in Class 24; bed and table covers;
Irish registered trademark No. 131959 BROWN THOMAS registered on July 11, 1988 in respect of goods in Class 25, namely articles of clothing, footwear, headwear included in Class 25.
In addition to the said Irish registered trademarks, Brown Thomas Group Limited is also the registered proprietor of community trademark No. 000059428 BROWN THOMAS registered on 4 November, 1988 in respect of goods and services comprised in Classes 3, 16, 20, 24 and 25.
In addition to the said registered trademarks, Brown Thomas Group Limited has also applied to register BROWN THOMAS as a trademark in respect of goods and services in Class 16 (namely credit and debit cards, store cards, etc.) and goods in Class 36 (namely financial and monetary services, namely credit card, debit card, store card and charge card services etc.)
The Complainant is the trading company within the Brown Thomas Group and uses the BROWN THOMAS name and trademarks on a day to day basis. There is no formal written licence arrangement between these companies with respect to the use of the trademarks by the Complainant, however, there is a consensual arrangement between the two companies and the Complainant has used the said trademarks in accordance with this arrangement since 1995.
The Complainant is a member of the BROWN THOMAS group and is the proprietor of a number of department stores trading under the name in Ireland. The original store was situated in Grafton Street in Dublin, Ireland and was opened in 1849 as a general drapery and haberdashery store.
The original proprietors of the store were Hugh Brown (who had commenced his own business at No. 16 Grafton Street in 1848 under his own name) and his friend, James Thomas. In 1849, they together bought out the business of Mary Hayden, milliner and court dressmaker, at No. 17 Grafton Street and began trading in the expanded premises comprising Nos. 16 and 17 Grafton Street as general drapers and haberdashers under the name Brown Thomas & Company. A few years later, Brown Thomas & Company expanded their business further; taking over No. 15 Grafton Street.
In 1991, the Switzer group of stores in Ireland (which included "Switzers" store in Dublin; "Cashís" of Cork; "Todds" of Limerick and "Moonís" of Galway) were all bought by a company known as The Brown Thomas Group Limited from the House of Fraser. It was decided to close the "Switzers" store and re-open it as BROWN THOMAS. In February 1995, the BROWN THOMAS department store was moved to the "Switzers" premises in Grafton Street (just across the street from its old premises) from where it currently trades under the BROWN THOMAS name (the words "& Company" having been dropped from all signage).
The group decided to re-brand its stores in Cork, Limerick and Galway. In March 1998, the Cork store known as "Cashís" was re-branded as a BROWN THOMAS store. In May 1999, "Todds" in Limerick was re-branded as a BROWN THOMAS store. The Galway store "Moonís" was re-branded as a BROWN THOMAS store in July 2000.
In the absence of a Response, except for basic contact details, there is no information available with regard to the Respondent. The only information given in the Complaint is that ascertained by a search of the Registrar's WHOIS database on June 9, 2000 giving the Respondentís name and contact details. John Cummins having an address at Domain Reservations, 81, Belfield Park, Stillorgan, Dublin is the Administrative Contact, Technical Contact, Zone Contact, Billing Contact. This information was confirmed by the Registrar's response to the Center's Request for Register Verification on April 27, 2001.
The title of these Administrative Proceedings as stated in the Complaint is John Cummins trading as Domain Reservations. For reasons given below this Administrative Panel has amended the title.
5. Partiesí Contentions
The Complainant requests a decision in accordance with paragraph 4(a) of the Policy, that the contested domain name be transferred to the Complainant on the grounds that the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the said domain name was registered and is being used in bad faith.
The Complainant submits that the trademark BROWN THOMAS has become indelibly and exclusively associated with the retail department store business carried on by the Complainant and its predecessors in title at premises in Grafton Street, Dublin. While the names "Brown" and "Thomas" are relatively common surnames, no other business is carried on in Ireland using the combination of words BROWN THOMAS.
The Complainant submits that the relevant part of the domain name in issue is <brownthomas> which is identical to the Complainantís trademark and trade name BROWN THOMAS. In addition, the Complainant submits that the whole of the domain name <brownthomas.com> is identical or confusingly similar to the Complainantís trademark and trade name BROWN THOMAS.
The Complainant is not aware of any evidence that the Respondent has ever had any legitimate interest in or any proposal to make any legitimate use of the said domain name. The Respondent has no connection whatever with the Complainant.
The Complainant submits that the Respondent has registered what the Complainant describes as "a series of domain names" in respect of which the Respondent has no rights or legitimate interest viz.
- said domain name the subject of these Administrative Proceedings;
- <superquinn.com> which was also registered by the Respondent on April 30, 1998;
- <rochesstores.com> which was registered on April 30, 1998;
- <skymovies.com> which was registered on april 30, 1998; and
- <skyboxoffice.com> which was also registered on April 30, 1998.
The Complainant states that Superquinn and Roches Stores are the names of a supermarket chain and a chain of department stores respectively.
The Complainant submits that the Respondent has no connection with the Complainant or Roches Stores or Superquinn or British Sky Broadcasting. The Complainant submits that this pattern of behaviour in registering a series of domain names clearly evidences an intention on the part of the Respondent to register or acquire the domain names for the purposes of selling, renting or otherwise transferring them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to them. Indeed, the very name which the Respondent has adopted "domain reservations" also demonstrates very clearly that the Respondent trades in domain names.
As to whether the said domain name was registered and is being used in bad faith, the Complainant refers to the above domain registrations by the Respondent and states that in ICANN proceedings British Sky Broadcasting Limited v. Domain Reservations (WIPO Case No. D2000-0507), the administrative panel indicated at paragraph 4.1.5 of the decision that the Respondent has the business name Domain Reservations and that operates the e-mail address email@example.com. The Panel stated that the Respondent in those proceedings "Ö. registers domain names and is willing to sell them". In that case, the Respondent offered to sell the domain names <skymovies.com> and <skyboxoffice.com> to British Sky Broadcasting Limited for STG£95,000 each.
The Complainant claims to have ascertained that the Respondent has already approached Roches Stores enquiring of them whether they were interested in purchasing the domain name <rochesstores.com>.
The Complainant also submits that the Respondent also attempted to make contact with the Complainant by way of telephone. In and around 2000, the exact date being unknown, the Administrative Contact of the Respondent telephoned the Complainant on two occasions asking to speak to the managing director of the Complainant company. The Managing Director did not take the telephone call, but the call was taken by another employee of the Complainant.
It is the Complainantís belief that the Respondent is in the business of registering well known trademarks as domain names for the purposes of selling them to the owners of the trademark and that this is evident from the manner in which the Respondent has purported to register a series of domain names of different businesses with which he has no legitimate connection. The Complainant therefore did not wish to give any encouragement to the Respondent.
It is quite clear that at the time of registration of the domain name, the Respondent was well aware of the reputation of the trademark BROWN THOMAS and the connection between the trademark and the Complainant. The Respondent is resident in Dublin and the Respondent cannot but be aware of the reputation which the BROWN THOMAS name and trademark has in Ireland and abroad.
Furthermore, the manner in which the Respondent registered the names of three well known Irish stores at about the same time (namely Roches Stores, Superquinn and Brown Thomas) clearly demonstrates that he was well aware that such stores existed, and that he was well aware of the reputation which they each had. It could not conceivably be the case that the Respondent fixed upon these three domain names by coincidence or chance. The Complainant submits that the Respondent clearly chose them because of their identity with or confusing similarity to the names of three of the most important retailers in Ireland and consequently it follows that the domain name <brownthomas.com> has been registered in bad faith.
By letter dated August 14, 2000, the Complainantís solicitors wrote to the Administrative Contact of the Respondent in the following terms:-
Dear Mr Cummins
OUR CLIENT: BROWN THOMAS & COMPANY LIMITED
We act for Brown Thomas and Company Limited of 88/95 Grafton Street, Dublin 2.
As you will be aware, our clients have an established reputation not only in this country but globally as a high quality specialist department store which in addition retails a selection of own brand products. These products are quality items which further enhance the reputation of our clients identity and reputation in the market place.
It has come to our clientsí attention that you have registered the domain name <brownthomas.com> in which you are named as the administrative contact and owner of the name. It is quite clear that you have no connection or interest whatsoever with this domain name which is within the ownership of our client alone. We have also ascertained that you have registered the domain names <superquinn.com> and <rochesstores.com>. It is apparent from this trend that you have usurped both the before mentioned names and reputations therein for your own purposes and we are aware that you have already approached the owners of one of the before mentioned names with an offer to sell the name to them.
The law is quite clear in this matter as established by the One in a Million case in the UK and numerous decisions issued by ICANN.
TAKE NOTICE that unless you undertake within ten days from the date herein to arrange the transfer of the domain name <brownthomas.com> to our client that immediate proceedings will be issued against you without further notice before either the High Court seeking an injunction and damages together with legal costs and/or the World Intellectual Property Organisation (WIPO) for an immediate ruling under the ICANN procedures under which your registration can be cancelled or transferred on adjudication. "
A copy of said letter has been furnished to this Administrative Panel as an annex to the Complaint. The Respondent did not reply to the said letter.
The Complainant submits that the Respondent has never denied the case made in the said letter that the Respondent has no connection with or interest in the domain name <brownthomas.com>, nor has the Respondent denied the Complainantís allegations that the Respondent has usurped the names <brownthomas.com>, <superquinn.com> and <rochesstores.com> and the reputations therein for the Respondent's own purposes. Nor has the Respondent denied the Complainantís allegation that the Respondent has approached the owners of one of those names with an offer to sell it to them.
The Complainant submits that the Respondent has clearly registered the domain name <brownthomas.com> for the purposes of selling it to the Complainant with a view to being paid valuable consideration in excess of the Respondent's out-of-pocket expenses directly related to the registration of the domain name.
In addition, it is the Complainant's case that the domain name <brownthomas.com> was clearly registered in order to prevent the Complainant as owner of the relevant trademarks from reflecting the mark in a corresponding domain name. In this regard, it is quite clear that the Respondent has been engaged in a pattern of such conduct as is shown by the registrations of the domain names <skymovies.com>, <skyboxoffice.com>, <superquinn.com> and <rochesstores.com>.
The Complainant further submits that the bad faith of the Respondent extends not only to the initial registration of the domain name <brownthomas.com> but that it extends also to use of the domain name. Although the Respondent does not appear to have established a www site at that address, the Complainant submits that the Respondent is nonetheless making use of the said domain name by the manner in which the Respondent has purported to add it to the Respondent's "bank" of domain names including <rochestores.com> and <superquinn.com>. The Complainant submits that the Respondent has continued to hold this bank of names even after the decision in the British Sky Broadcasting case. It is quite clear from the Respondentís own business name "Domain Reservations" that the Respondent is attempting to build up a business in reserving domain names. By maintaining this bank of names and having the <brownthomas.com> domain name in the Respondentís bank of names, the Respondent is clearly doing so by way of a business. The Respondent is therefore making use of the name to that extent.
The Complainant submits that it is unnecessary to consider whether the Respondent is engaged in "active use" or "passive use" of the said domain name and it is clearly use for the purposes of the Respondent's business and it is therefore sufficient for the purposes of this Complaint.
Further and in the alternative, the Complainant submits that if the Panel takes the view that there is a distinction to be made between "active" use and "passive" use, then it is submitted that, as in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), this is a case where it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate (in the sense of being a passing off or infringement of the Complainantís rights under trademark law).
If therefore the Panel takes the view that the activities of the Respondent to date constitute no more than "passive holding of the domain name", then it is submitted on the basis of the Telstra decision that the requirement that the domain name is being used in bad faith by the Respondent is nonetheless satisfied. As stated in paragraph 7.9 of that decision, 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 Complainant submits that by denying the use of the domain <brownthomas.com> to the Complainant, the Respondent is undoubtedly passively using the domain name in bad faith in the same manner as the Respondent in the Telstra case.
The Complainant further submits that as in the British Sky Broadcasting decision use of the said domain name in bad faith by the Respondent can be demonstrated by the fact that the <brownthomas.com> domain name is clearly being used by the Respondent to obtain monies from the Complainant. The Complainant submits that this is evident from the unsuccessful attempt to make contact with the managing director of the Complainant company and from the attempts to obtain payments from Roches Stores and from British Sky Broadcasting in respect of the domain names registered in close proximity (in time) to the registration of <brownthomas.com>.
In the alternative, the Complainant submits that if it is not the case that the Respondent intends to sell the domain name (which is improbable), then the only alternative is that the Respondent intends to use the name for a www site. However, the Complainant submits that if the Respondent were to use the name for a www site, it is quite clear that such use would amount to passing off and/or trademark infringement. It is inevitable that any trading under the domain name <brownthomas.com> will deceive members of the public into thinking that there is some connection in the course of trade between that domain name and the Complainant. In those circumstances, any such proposed use of the domain name must of necessity involve use in bad faith. The Complainant states that as the administrative panel pointed out in its British Sky Broadcasting decision, it would be absurd if the Complainant had to wait for the Respondent to commence such use and commit the torts of passing off and trademark infringement before making this Complaint.
There was no Response from the Respondent.
6. Discussion and Findings
In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-
(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
Firstly there is the question of the title of these proceedings. Having considered the evidence submitted in the Complaint, this Administrative Panel notes that the Complainant is of the view that the Respondent in these proceedings is Mr. John Cummins. This may well be the case and indeed there is a strong likelihood that this is so since Mr. Cummins is the Administrative Contact, the Technical Contact, the Zone Contact and the Billing Contact for the registration, however, there is no evidence that Domain Reservations is the business name of John Cummins. In the circumstances this Administrative Panel is of the view that the title of these proceedings should be stated as above.
This Administrative Panel is satisfied that Brown Thomas Group Limited, is the owner of a number of registrations and a pending application for registration of the trade mark BROWN THOMAS.
In compliance with the directions of this Administrative Panel dated June 20, 2001, made pursuant to rule 12 of the Rules, the Complainant has furnished this Administrative Panel with a letter from the Company Secretary of the said holding company confirming that Brown Thomas Group Limited has authorised the Complainant to use the said registered trade marks and the mark being the subject of the said Community Trade Mark Application.
The licence arrangement would appear to be quite informal and the situation is somewhat complicated by the fact that the Complainant and its parent company have changed their names in recent years, nonetheless by providing the additional submissions requested, the Complainant has satisfied this Administrative Panel that the Complainant has rights in said trade mark BROWN THOMAS as a licensee of the registered owner. Furthermore the registered owner of the trade mark is aware that the Complainant is pursuing these Administrative Proceedings.
While arguably the said domain name is not identical to the said trade marks, in that the said trade marks consist of two separate words <brown> and <thomas> whereas the said domain name consists of the one unbroken word, it is clear that the said domain name is confusingly similar to the said trade marks.
This Administrative Panel is satisfied that the Complainant has made out a prima facie case that the said domain name is confusingly similar to a trade mark in which the Complainant has rights and the Complainant has therefore satisfied the first element in the test in paragraph 4 of the Policy.
The Complainant has submitted that the Respondent has no rights or legitimate interest in the said domain names. The Complainant wrote to the Respondent on August 14, 2000, challenging any claim the Respondent might make to ownership of the said domain name. There has been no response from the Respondent. The difficulty facing a Respondent in proving a negative in order to satisfy the second element of the test has been addressed in a number of decisions. In the present case, this Administrative Panel is satisfied that the said letter of the Complainant and the claims made in the Complaint and duly served on the Respondent are sufficient to shift the burden of proof onto the shoulders of the Respondent with respect of this element of the test in paragraph 4(a) of the Policy. The Respondent has not filed any Response or made any attempt to provide either the Complainant or this Administrative Panel with any explanation as to how the Respondent might have a legitimate interest in the said domain name. Therefore in the circumstances this Administrative Panel is satisfied that the Complainant has satisfied the second element of the test also.
The Complainant states that the Administrative Contact of the Respondent contacted the Complainant company on an unknown date during the year 2000, that he wished to speak to the managing director but that the calls were taken by another employee of the Complainant company. The Complainant submits that this is in some way evidence that the Respondent wished to sell the said domain name to the Complainant. This Administrative Panel cannot accept this submission as the Complainant has not provided any details of the said telephone conversation or provided any evidence as to the intention of the Respondent in making these telephone calls. The Complainant has not given the dates of these calls and there is no reason to suppose that the telephone calls were not in response to the letter sent to the Respondent by the Complainantís solicitors.
Furthermore the Complainant has made detailed submissions relating to the registration of other domain names by the Respondent and has stated that the Respondent has no right to register said domain names. The onus of proof rests on the Complainant to prove each of the elements in paragraph 4 of the Policy and the Complainant has not supported these assertions with any evidence whatsoever.
It is clear that in British Sky Broadcasting Limited v. Domain Reservations (WIPO Case No. D2000-0507) it was accepted that the Respondent had no connection with the Complainant. British Sky Broadcasting Limited v. Domain Reservations (WIPO Case No. D2000-0507) is however an entirely different case from the present proceedings. The administrative panel in that case reached the decision based on the evidence submitted in that case. This Administrative Panel is not bound by any findings of facts or any other aspects of that decision.
Furthermore, the Complainant has stated that the Respondent has registered other domain names including <rochesstores.com> and <superquinn.com> and that the Respondent has sought payment from Roches Stores for the <rochesstores.com> domain name. The Complainant also states that the Respondent has no connection with the department store Roches Stores or the supermarket chain Superquinn. The Complainant has not however provided this Administrative Panel with any evidence to support these assertions either. There is no evidence that the Respondent wishes or intends to sell said domain name to the Complainant or any third party.
On the other hand, this Administrative Panel accepts the Complainantís submissions that the Complainant has a long established reputation in the retail business in Dublin. It is most improbable that a resident of Dublin would be unaware of the Complainant's reputation.
It is highly unlikely that the Respondent was unaware of the Complainant's reputation and its rights in the said trade marks when he registered the said domain name. Furthermore, this Administrative Panel accepts that use by the Respondent of the said domain name as an address of a www site concerned with any business with which the Complainant is engaged could well be actionable as passing off or trade mark infringement.
The Complainant refers to the decision in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003, February 18, 2000) in support of its arguments the said domain name was registered and is being used in bad faith inter alia because the Respondent is engaged in passive domain name holding amounting to use in bad faith.
In Telstra the learned administrative panel found that the Respondent did not conduct any legitimate commercial or non-commercial business activity in Australia; that the Respondent had taken deliberate steps to ensure that its true identity could not be determined and that communications could not be made with the Respondent; that given the numerous trademark registrations and the reputation of the Complainant it was not possible to conceive of a plausible circumstance in which the Respondent could have legitimately used the domain name in issue; and that it was not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. Those findings together with the finding that the Respondent had no rights or interests in the domain name led the administrative panel to conclude that the said domain name had been registered by the Respondent in bad faith.
As to the additional requirement that the Complainant proves that the said domain name was being used in bad faith, the administrative panel in Telstra noted that the said domain name did not resolve to a www site or other on-line presence; there was no evidence that any such www site or other on-line presence was in the process of being established; there was no evidence of advertising, promotion or display to the public of the said domain name; and finally, there was no evidence that the Respondent had offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. The administrative panel commented that in short, there was no positive action being undertaken by the Respondent in relation to the domain name. The learned panelist decided that the relevant issue was not whether the Respondent was undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it could be said that the Respondent was acting in bad faith. The administrative panel went on to state that "[t]he distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is 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."
He went on to state that paragraph 4(b) of the Policy recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.
The learned panelist went on to consider whether inaction (passive holding) in circumstances other than those identified in paragraphs 4(b)(i), (ii) and (iii) could constitute a domain name being used in bad faith? He concluded that this question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case and he further concluded that an administrative panel must give close attention to all the circumstances of the Respondent's behaviour. A remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith.
In Telstra the learned administrative panelist considered that certain specific facts taken together were sufficient to establish that the passive holding by the Respondent of the domain name in issue was sufficient to establish that the said domain name was being used in bad faith viz:-
(i) the Complainant's trademark had a strong reputation and was widely known, as evidenced by its substantial use in Australia and in other countries;
(ii) the Respondent had provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name;
(iv) the Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.
This Administrative Panel accepts the interpretation and application of the Policy made by the learned panelist in Telstra.In the present administrative proceedings the following facts are pertinent:-
(i) the Complainant, through its own trading and the trading of its predecessors in title, has a long established goodwill in the name BROWN THOMAS and has a licence to use the trademark registrations from its holding company, and substantial goodwill and common law rights have been accumulated by the Complainant, its holding company and their predecessors in title in carrying on an established retail business for over a century;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name - in this regard it is pertinent that the Respondent was given three opportunities to clarify the position;
(iii) such information as there is about the Respondent would appear to indicate that the Respondent is likely to be engaged in some form of commercial as distinct from non-commercial activity and this commercial activity is primarily concerned with the Irish jurisdiction, in that the contact address is in Dublin;
(iv) it is most improbable that the Respondent was not aware and conscious of the Complainant's long and established national and international reputation and trademarks rights when the said domain name was registered;
(v) it is possible but most unlikely that any use of the said domain name by the Respondent as a www site address could be legitimate;
(vi) the indications are that any site established by the Respondent would have a commercial as distinct from non-commercial purpose and it is most likely that use of the said domain name on a commercial site by the Respondent would amount to passing off or an infringement of the Complainant's rights under trademark law.
This Administrative Panel therefore concludes that the Complainant has put forward a prima facie case that the Respondent registered the said domain name in bad faith and is engaged in passive holding of the said domain name such as to amount to use of said domain name in bad faith. On the balance of probabilities in the absence of any Response or other rebuttal from the Respondent, this Administrative Panel must decide that the Complainant has therefore satisfied the third and final element of the test in paragraph 4 of the Policy.In reaching this decision this Administrative Panel is conscious that the onus rests on the Complainant to establish each of the elements in paragraph 4 of the Policy, however it is significant that the Respondent has not made any attempt whatsoever to file a Response or to comment on the further submissions sought from the Complainant. In another early WIPO case, Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, (WIPO Case No. D2000-0004, February 16, 2000) the question of good faith was in issue. The administrative panel noted that "the potential evidence of good faith registration and use was in Respondentís control. Respondentís failure to present any such evidence or to deny Complainantís allegations allows an inference that the evidence would not have been favorable to Respondent."
With specific reference to paragraph 4 of the Policy and paragraph 15 of the Rules this Administrative Panel therefore decides that the domain name <brownthomas.com> registered by the Respondent is confusingly similar to a trademark mark in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <brownthomas.com> should be transferred to the Complainant.
Dated: July 17, 2001