WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Countryside Alliance Limited v. Ian Mac, Unfinished Business
Case No. D2001-0861
1. The Parties
The Complainant is Countryside Alliance Limited, a company incorporated in the United Kingdom, whose registered office is at 367 Kennington Road, London SE11 4PT.
The Respondent is Ian Mac of Unfinished Business, an unincorporated entity whose listed address is 321 Queens Park Road, Brighton BN2 2XL, UK. The Network Solutions WHOIS database gives Unfinished Business as registrant of the domain name in issue and Ian Mac as Administrative and Billing Contact, the Technical Contact being Hostmaster, Knightsbridge Online, 7 Lower Rock Gardens, Brighton, East Sussex, BN2 1PG, UK.
2. The Domain Name and Registrar
<countrysidealliance.org>, registered with Network Solutions, Inc.
3. Procedural History
(1) The Complaint in Case D2001-0861 was filed by e-mail on July 6, 2001, and in hardcopy on July 10, 2001. It was notified to the Respondent on July 16, 2001.
(2) The WIPO Arbitration and Mediation Center has stated that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("the Rules");
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a); in particular, as well as being transmitted by email to the contact addresses given for the Respondent on the Network Solutions WHOIS database, the Complaint was transmitted by courier to Unfinished Business at the address given above and to the Technical Contact named above at its address. While in the latter case the courier duly delivered the Complaint, in the former case the courier was unable to deliver it on three occasions and it was returned to the WIPO Arbitration and Mediation Center.
- a Response to the Complaint was not filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the Rules.
(3) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The date scheduled for issuance of a decision is August 28, 2001.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Complainant is a non-profit making organization which promotes the case for hunting and other field sports as well as other issues concerning the countryside in the United Kingdom. It was incorporated as a British registered company on August 28, 1997. Its public activities on behalf of the "pro-hunt lobby" are prominent, as has been established by evidence of citations in the press for the month of May 2001 (in total, 20) and in UK government reports from January 2001 (in total, 6). It also states that in the year from July 2001, its website received over 12 million hits. As is widely known, the question whether or not to ban or curb various forms of hunting has been a major issue in recent British politics, not least during the campaigns for the General Election in June 2001.
(2) Since December 22, 2000, the Complainant has been the registered proprietor of United Kingdom Trade Mark No. 2239734, comprising the words "Countryside Alliance" with logo, in Class 16 for printed matter of various kinds, Class 35 for business management and like services provided on-line, and Class 41 for education, training, publication and entertainment services.
(3) The Complainant holds registrations for the following domain names: <countryside-alliance.org.uk>; <countryside-alliance.co.uk>; <countryside-alliance.net>; <countryside-alliance.org>; <countryside-alliance.com>.
(4) The record for the domain name in issue was created on June 17, 1999.
5. Parties’ Contentions
In order to satisfy the requirements of the Rules, the Complainant asserts the following:
(1) The Respondent organization is well-known as an opponent of the views promoted by the Complainant;
(2) The Respondent uses the domain name at issue for a site which contains anti-hunting information and views. This is likely to mislead members of the public into believing that they are receiving this information from the Complainant. The Respondent's conduct amounts to passing off.
(3) The Respondent registered the domain name in order to prevent the Complainant from doing so and making legitimate use of it. According to the Complainant, the Respondent had previously received letters from the Complainant's solicitors outlining its claims in respect of the domain name here in issue, to which it did not respond.
(4) Two allied domain names, <countryside-alliance.com> and <countrysidealliance.net>, have been registered in other names but with the same hostmaster name and address as for the presently disputed domain name. Each is the address for an anti-fieldsports website. The Complainant, which is attacking these registrations in separate dispute settlement proceedings, claims that in consequence there has been collusion between the registrants of the three domain names which demonstrates bad faith amounting to deliberate passing off aimed at the Complainant.
The Respondent, although duly notified of this dispute, has not chosen to submit a response to the Complaint.
6. Grounds for Decision
Under the Uniform Domain Name Dispute Resolution Policy ("UDNDRP"), no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a). The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the complainant has rights.
Given the summary nature of the Dispute Resolution procedure, there must be clear evidence that this is so.
There is virtual identity between the substantive portion of the domain name in issue and the Complainant's registered name. (There is also considerable verbal similarity to its registered trademark, though that registration is too recent to make it a relevant consideration on its own). The first question accordingly is whether, given the nature of its activities, the Complainant does have rights in "Countryside Alliance" as a trademark or service mark. Its major objective is the conduct of political campaigns on relatively specific issues. It provides no evidence of commercial activity itself. It states that its registered trademark is licensed for use on various merchandise, from printed matter to clothing, but it supplies no indication of the extent of resulting trade. Its Complaint does not suggest that this merchandising amounts to more than a secondary activity. Its essential objection is that it is well-known to the British public as a political lobbyist and that it is entitled to be protected against conduct by a counter-lobbyist if the public is misled by that conduct into thinking that it is receiving propaganda from the Complainant.
In my view, the Complainant's activities, though not primarily commercial, are of a kind that can give rise to actionable passing off under English law. Given the close interest of both parties in national British politics, it is appropriate to treat that law as relevant in defining the scope of what may constitute a trademark or service mark within the UDNDRP. English courts have held passing off actions to lie to protect the reputation associated with the name of professional associations, charitable bodies and servicemen's clubs, particularly when, as today, they engage in merchandising or other transactions at least in some secondary degree: see Kitchin, Llewelyn, Mellor, Meade and Moody-Stuart, Kerly's Law of Trade Marks and Trade Names (13th edition, 2001), paragraphs 14.42-14.44. Political pressure groups are not in essence dissimilar to these types of body. What the Complainant must show is that the name or sign in question is well recognised as the means for distinguishing it as an organization from others of similar character; and that the public must be likely to be misled into thinking that the name or sign used by the Respondent refers to the Complainant rather than to others. It must moreover be likely that the consequences will be detrimental to the Complainant.
The evidence submitted shows sufficiently that the Complainant has an established reputation as the "Countryside Alliance". The Respondent's website, identified by a domain name comprising primarily those words, is therefore likely to mislead a substantial part of the British public into the belief that it is the Complainant's site. The Panelist, on visiting the site, could find no information which he considered would dispell this impression in the mind of someone who did not already know the background. Once members of the public are misled by the Respondent's confusing domain name, the viewpoint for which the Complainant stands is likely to become muddled and its credibility jeopardised. The risk of detriment accordingly appears real. The Respondent has chosen to offer no explanation which might justify what it is doing.
The Complainant has been registered as a corporate entity using the name "Countryside Alliance" since 1997, which is apparently well before the Respondent's registration of the domain name in issue. The Complainant's allegation that the Respondent had no legitimate interest or right in that name which would justify its domain name registration is therefore sufficiently made out. Again it must be noted that the Respondent has given up the opportunity to offer another explanation of its conduct – a matter which it must know better than anyone else. Given the Complainant's well-established reputation, it is hard to conceive what element of good faith could explain the Respondent's registration. The evidence concerning the registration of two related domain names by others who are probably associates adds weight to the conclusion that the Respondent in this proceeding has acted in bad faith.
For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, that the domain name <countrysidealliance.org> should be transferred forthwith to the Complainant.
William R. Cornish
Dated: August 28, 2001