WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Independent Committee for the Supervision of Standards of Telephone Information Services ("ICSTIS") v. Roy Devaney, of International Commercial Software Training and IT Support
Case No. D2001-0607
1. The Parties
The Complainant is The Independent Committee for the Supervision of Standards of Telephone Information Services ("ICSTIS") of 4th Floor Clove Building, 4 Maguire Street, London, SE1 2NQ.
The Respondent is Roy Devaney, of International Commercial Software Training and IT Support, Vitoria-Gasteiz, 01010 Alava, Spain.
2. The Domain Names and Registrar
The domain names at issue are <icstis.com>and <icstis.net>, <icstis.org>. The current domain name registrar is Internet Domain Registrars, Registrars.com™, Suite 1900, One Bentall Center, 505 Burrard Street, Vancouver, B.C., Box 44,Canada V7X 1M6.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on April 27, and in hard copy on the May 1, 2001, (the "Initial Complaint").
On April 30, 2001, an Acknowledgement of Receipt of Complaint was sent from the Center to the Complainant.
On May 2, 2001, the Center transmitted a request for Register Verification to Internet Domain Name Registrars and CORE Internet Council of Registrars in connection with this case.
On May 2, 2001, Registers.com, sent via email to the Center a Verification Response stating that the Internet service provider of the domain name, Windsor Telecommunications Plc. were the registrants of the domain names in question as well as the administrative and technical contact.
On May 3, 2001, Roy Devaney of International Commercial Software Training and IT Support communicated with the Center by email identifying himself as the Respondent in this case.
On May 4, 2001, the Center issued a Complaint Deficiency Notice to the Complainant.
On May 9, 2001, an amended Complaint was filed with the Center which was received by email, and in hard copy on June 22, 2001. This Complaint referred to Windsor Telecom Plc. as the Respondent (the "Windsor Complaint").
On June 26, 2001, the Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules").
On June 26, 2001, the Center formally commenced this proceeding and notified the Respondent that its response would be due by August 27, 2001. The notification was sent to Mr. Devaney in Spain and to Windsor Telecommunications Plc. by courier, fax and by email.
On June 27, 2001, Mr. Devaney confirmed that he was the holder of the domain names in question by email.
On June 28, 2001, the Center acknowledged receipt of the email from Mr. Devaney.
On July 18, 2001, the Center issued a Notification of Respondent Default. This was sent to both the Respondent's email address and to Windsor Telecommunications Plc.
On July 24, 2001, the Administrative Contact of Windsor Telecommunications Plc. confirmed to the Center that that company was not the holder of the domain names in question and confirmed that the Respondent holds such domain names.
On July 25, and August 1, and August 2, 2001, the Center transmitted a second request for Register Verification to Registrars.com in connection with this case.
On August 6, and on August 7, 2001, the Center initiated the process of appointment and the Administrative Panel communicated this to the Respondent by email.
On August 11, 2001, the Respondent corresponded with the Center by email.
On, August 13, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist.
On August 17, 2001, the Panelist issued a procedural order for clarification of the legal basis of the Complaint.
On August 30, 2001, the Complainant made filings with respect to the procedural order which was received by email and by hard copy on September 3, 2001.
On September 6, 2001, the Respondent filed submissions which were received by email.
Subsequently, without request from the Panelist, both the Claimant and the Respondent have made submissions. These submissions have not been taken into account in these proceedings.
On September 13, 2001, the Panelist asked for a confirmation of the registration record for the domain name from WIPO. This was received on October 1, 2001.
As discussed below, the procedural requirements of the Policy have been met due to the acceptance by the Respondent that it is the proper Respondent in this case.
4. Procedural and Factual Background
The Complainant has described itself as follows in the Windsor Complaint:
"The Complainant in this administrative proceeding is The Independent Committee for the Supervision of Standards of Telephone Information Services ("ICSTIS") a non-profit making company limited by guarantee incorporated as a company in England and Wales whose principal place of business is 4th Floor, Clove Building, 4 Maguire Street, London, SE1 2NQ.
ICSTIS is the regulatory body for the premium rate telecommunication industry in the UK and is a non-profit making company limited by guarantee. ICSTIS was established in 1986 and its first Code of Practice was published in September 1987. An independent secretariat was established in 1988 and ICSTIS was incorporated as a limited company on June 26th, 1989. ICSTIS has been the regulatory body for the premium rate industry for over 10 years.
All premium rate telecommunication service providers are required to comply with the ICSTIS Code of Practice, which applies to all premium rate services accessed by a customer in the United Kingdom, whether the services are promoted from within the United Kingdom or from abroad. In addition to the Eighth Code of Practice there is also a Live Conversation Services Code of Practice which applies specifically to live conversation services.
The ICSTIS Committee consists of around 10 members all appointed in their individual capacities and supported by a full time Secretariat of around 30.
ICSTIS’ website address is <www.icstis.org.uk>.
However, it has come to ICSTIS’ attention that the following domain names have been registered:
ICSTIS’ website provides information relating to premium rate services, the Code of Practice and guidelines, how consumers can make a complaint or enquiry and publishes activity reports, monthly reports, press releases and provides ICSTIS literature and receives over 800 hits per month. This figure is continually increasing and the average user looks at over 25 pages of information."
As noted above, the Respondent, Mr. Roy Devaney has acknowledged that he is the proper Respondent in these proceedings and he has been provided with a copy of the Initial Complaint and the Windsor Complaint.
5. Parties' Contentions
The Complainant maintains that the requirements of the Policy are met based inter alia on the following:
"ICSTIS (and other Internet users) consider that Windsor Telecommunications Plc. is not actively using the web addresses and that Future Numbers services are too similar to ICSTIS’ own activities and are likely to cause confusion to consumers and Internet users in general. In this regard, we attach as Annex 3 a copy of an e-mail from Neil Melvin, an Internet user, who has already complained to ICSTIS that the domain names have confused him."
"As consumers’ awareness and use of the Internet increases there is a significant risk that the continued registration of <www.icstis.net/org/com> will increase the already existing confusion and mislead the public. Further, since ICSTIS is a consumer protection organisation it is vital for the public good that its independence and accessibility are not compromised, as is presently occurring, and will continue to occur should the domain names remain registered with its present holder. Further, ICSTIS is currently in the process of registering its name as a UK Trademark, which it anticipates will proceed to registration during the coming weeks. Although it has not previously had its name registered as a UK Trademark, ICSTIS has been commonly known as such for almost 15 years and it was incorporated as a limited company on 26 June 1989."
"ICSTIS infers that the domain name registrant may have intentionally attempted to attract for financial gain Internet users to certain websites by creating a likelihood of confusion. There is no evidence of the registrant’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. As we have stated, when any of the <icstis.com/net/net/org> domain names are visited the user only finds a holding page which provides details of Future Numbers services, which include selling Premium Rate numbers. Neither is there any evidence indicating that the domain names registrant has ever commonly been known by the domain name. In addition, we consider that the domain name registrant is not making any legitimate non-commercial or fair use of the domain names. We submit that: the names are confusingly similar to a mark in which ICSTIS has legitimate rights:-
-the Respondent has no rights or legitimate interests in respect of the domain names and
-the domain names were registered in bad faith
-the addresses have not been used actively and merely attract consumers seeking the ICSTIS website to Future Numbers services instead."
The Respondent denies these allegations and refers to the preparations to use the domain names.
6. Discussion and Findings
The burden for the Complainant under para. 4 (a) of the Policy is to prove:
(i) that the domain names registered by the Respondent are 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 names; and
(iii) that the domain names have been registered and are being used in bad faith.
The initial issue is whether the Claimant has brought these proceedings against the correct Respondent.
Based on the documents referred to above, the proper Respondent was Mr. Roy Devaney. The Panelist is satisfied that Mr. Devaney had notice of the proceedings brought against him on April 27, 2001, and of the proceedings mistakenly brought against Windsor Telecom Plc. on May 9, 2001, and that he agreed that he was the Respondent in these proceedings.
Therefore, the Panelist finds that these proceedings have been properly brought against the Respondent.
B. Similarity of the Domain Name and Trademark
To succeed in this proceeding, the Complainant must show that the domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel invited submissions of the Claimant to clarify the legal basis on which it states that it has a trademark meeting the requirements of the UDRP and to provide support therefor.
The Complainant did not have a registered trademark on February 10, 2001, on the date that the Respondent applied to register the domain name <icstis.com>. The Panel observes that on March 9, 2001, the Respondent registered the domain names <icstis.net> and <icstis.org> and the Complainant filed a trademark application. The trademark was not granted until August 31, 2001.
Therefore, at the time the Initial Complaint and the Windsor Complaint were filed, the Complainant did not have a registered trademark to meet the first requirement of the Policy.
However, it is now well settled that rights in a trademark that is not registered can meet the requirements of the Policy.
The Complainant has cited the authority of WIPO Case No.D2000-0235 Jeanette Winterson v. Mark Hogarth where the Panel decided that a proper name was protectable other than by an action for trademark infringement citing, inter alia, the case of British Telecommunications plc. & Others, v. One in a Million Ltd (1999) FSR 1 (C.A.). That case concerned passing off and not trademark infringement.
However, most cases of unregistered rights relate to rights of individuals in their personal name. One of the few exceptions is in the National Arbitration Forum case File No. FA 0002 000093633 Cedar Trade Associates Inc. v. Greg Ricks relating to BuyPC.com. However, that decision does not give any basis for the conclusion that the Complainant had rights to the name in question and refers to the use of the name as a trade name when trade names are not covered by the Policy (See WIPO Final Report of April 30, 1999 on The Management of Internet Names and Addresses: Intellectual Property Issues, paragraph 167).
Nevertheless, in this case, the Panelist is satisfied that given the investment in the activities of ICSTIS over the past fifteen years at least, the name has developed a distinctiveness and more importantly that the Complainant has rights in the name ICSTIS such as would justify the bringing of a passing off action in England in accordance with the principles in British Telecommunications plc. & Others, v. One in a Million Ltd (1999) FSR 1 (C.A.).
Moreover, the Complainant has in fact registered ICSTIS as a trademark as of the date of this decision. The fact that such registration is after the date on which the domain names were issued, and that no opposition to the trademark registration was raised, supports the Complainant’s application in complying with the first requirement of para. 4 (a) of the Policy.
The Panelist holds that this combination of prior rights and a subsequent registration meets the requirements of para. 4 (a) of the Policy. Therefore, the first requirement has been met.
C. Respondent's Rights and Legitimate Interests
The Panelist notes that the letters of the Respondent's company spell ICSTIS. However, the Policy requires that a registrant actually be known by the domain name and there is no evidence that such is the case. Indeed, there appears to be no credible evidence from the Respondent as to an intent to use this rather curious combination of letters.
D. Bad Faith
The third requirement of the Policy is that the domain names were registered and are being used in bad faith.
Registration and Acquisition
According to the Respondent's letter of September 6, 2001, he purchased the domain name from Windsor Telecom Plc. which was offering the domain name for sale.
When Windsor Telecom registered the domain names, it made the representation that "the registration of the domain name will not infringe the rights of any third party". (para. 2 of the Policy)
Given Windsor Telecom's activity in the telecommunications market, the Panelist is satisfied that it did not choose this name by chance and that it registered this domain name because it was identical to that of the Complainant and that was perceived as having a commercial value for a subsequent resale, like the authors' names registered by the mercantile professor in the Hogarth case cited above. The value was linked to the potential of attracting consumers to sites that had nothing to do with the Complainant.
However, with regard to the Respondent, the key point under Section 4 (b) of the Policy is the time of acquisition of the domain name. And there is no evidence that the Respondent falls within any of the examples set out in (i) to (iii) of that Section. The fact that the first letter's of the Respondent's company spell "ICSTIS" is not entirely convincing, but that does not establish bad faith. Therefore, the Panelist finds that this requirement has not been met.
The Respondent has sought to justify the lack of use of the domain name by reference to Spanish requirements. He acknowledges that the domain name did redirect to a Windsor Telecom's site, but that he was not authorized. However, all three of these domain names did redirect as of October 11, 2001, and at least two of them had nothing to do with ICSTIS. This is contrary to para. 4 (b)(iv) of the Policy. It is clear that when an English Internet consumer types in the name ICSTIS with "com", "org" or "net" he or she will anticipate arriving at a site that has some connection with the Complainant. However, in this case, they will be redirected to what appear to be sites that are selling domain names. That is misuse of the sites, but, under the Policy the Complainant has the burden of demonstrating that both the registration/acquisition and the use are made in bad faith.
For the forgoing reasons, the Panelist decides that all three elements of para. 4 of the Policy have not been satisfied and the Complainant's request for relief is denied.
Thomas H. Webster
Dated: October 31, 2001