WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The British Council v. Mr. Li Yen Chun

Case No. D2001-0997

 

1. The Parties

The Complainant is The British Council of 10 Spring Gardens, London SW1A 2BN, United Kingdom, represented by Mr. Adrian Barrott, Office Manager of the Complainantís Corporate IT Department.

The Respondent is Li Yen Chun of IA Consulting Inc 4F, No 6, Lane 79 Chienkwo S Rd Sec 2 Taipei, Chinese Taipei 106, represented by Mr. Ling Hsiao Wang of 2F, No. 10 Alley 6, Lane 335 Fu Hsing Road, Shu Lin City, Taipei County, Taiwan.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <britishcouncil.com>.

The Registrar is Onlinenic Inc. d/b/a China-channel.com of Xiamen, China.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on August 6, 2001, and in hardcopy on August 7, 2001. The Complaint was acknowledged on August 7, 2001. An amended Complaint was filed on August 9, 2001, by email and on August 13, 2001, in hardcopy. On August 10, registration details were sought by the Center from the Registrar. On August 13, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent, who is also the Administration, Technical and Billing Contact; that the Policy applies to the disputed domain name; that <britishcouncil.com> is "under construction" and that the language of the registration agreements for the disputed domain name is English.

On August 16, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee) and formally dispatched to the Respondent copies of the Complaint by post/courier (with enclosures) and by facsimile and email (both without attachments). The Center also included with the material dispatched to the Respondent a letter dated August 16, 2001, containing notification of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was September 5, 2001. A Response was filed on September 5, 2001 by email and on September 10, 2001, in hardcopy. The Center acknowledged receipt on September 7, 2001.

On September 5, 2001, by email and on September 10, 2001, in hardcopy, the Complainant filed unsolicited additional material, namely a copy of an email sent on June 6, 2001, by the Respondent to the British Council in Hungary and a printout dated September 5, 2001, of the Respondentís web page accessed by means of the disputed domain name.

It is a matter for the discretion of the Panel whether to admit unsolicited material additional to the Complaint and the Response. In this case the Panel believes it would be fair to both parties to admit the email of June 6, 2001, because:

- it emanated from the Respondent, who cannot therefore be prejudiced by it, and

- it appears the email did not come to the attention of Mr. Barrott until September 5, 2001, when he immediately submitted it to the Center.

The Panel does not admit the web page printout of September 5, 2001.

On September 27, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day, the Center transmitted the case file to the panel and notified the parties of the projected decision date of October 11, 2001.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time prescribed by the Rules and the administrative panel was properly constituted.

The language of the proceeding was English, being the language of the registration agreement.

 

4. Factual Background (Uncontested Facts)

The Complainant is the United Kingdom' s international agency for cultural relations, educational co-operation, developmental training and English Language Teaching. It was established in 1934 and incorporated by Royal Charter in 1940. It was granted charitable status in 1963 and currently has over 220 offices in more than 110 countries. It has had an established Internet presence since 1996.

Itís range of trading services includes:

- development work under contract to a wide range of clients such as overseas governments, the European Commission, the UK Department for International Development and other multilateral and bilateral agencies. This work currently includes more than 250 contracts worth over 250 million pounds;

- a language services programme in many countries involving the promotion and development of English language teaching; and

- designing and managing conferences and seminars on contemporary issues from both the UK and international perspectives.

The title "the British Council" is the mark or designation by which the organisation is known globally, and which it uses actively in its trading activities.

The Respondent is in the business of web designing and Internet consulting services in Taipei, Taiwan. On May 6, 2001, the disputed domain name was registered in the name of the Respondent.

On June 6, 2001, the Respondent sent the following email addressed to <information@britishcouncil.hu and headed> "Subject:www.BritishCouncil.com":

"Dear Sir:
We own the domain name: www.BritishCouncil.com
This is the Top Level Domain (.com) on the World.
And I got a lot of emails about querying lessons every day by this domain,
Some of them are seeking the similar british council lessons.
If you want to buy this domain, please let us know.
Because we donít trade with people who donít know the domain value, so please "MAKE A SERIOUS OFFER" to us. (Anyone who offer us little or kidding price would be ignored forever.)
We would reply you our answer in 12 hours.
Thank you your time and look forward to hearing from you.
Best Regards,
Li. Yen Chun"

 

5. Partiesí Contentions

A. Complainant

None of the Respondentís trading activities relate to the work of the British Council, or to any other body bearing this name. Furthermore, there is nothing particularly British or pertaining specifically to Britain in the current use of the domain name.

It is highly likely that the current use of the disputed domain name would cause considerable confusion and lead enquirers into believing that this is a bona fide site which is owned and managed by the Complainant. This is clearly not the case.

It is clear that the Respondent has obtained the disputed domain name primarily with the purpose of offering this for sale, for variable [sic] consideration in excess of his out-of-pocket costs which are directly related to that domain name. As a result the disputed domain name is now being used in bad faith.

B. Respondent

The Respondent registered the disputed domain name for his client Mr. Liao Chien Shun, Executive Director of the International Affairs Dept. of Shulin Junior Chamber, Taiwan, an organization striving to serve young professionals and entrepreneurs in Taiwan. Shulin Junior Chamber is a local chapter of the Junior Chamber International (JCI), a well-known and worldwide federation of young professionals and entrepreneurs between the ages of 18 and 40 and active in 123 nations and territories.

Mr. Liao Chien Shun and some members of his organization plan to provide the "Shulin Junior Chamber" members and other entrepreneurs in Taiwan with business and tour information in relation to England. They wish to gather all those Taiwanese businessmen who have business or will be doing business in England together by building a non-commercial web site. Therefore, at the end of April, he contacted the Respondent Mr. Li Yan Chun and requested Mr. Li to materialize this web site project.

Before registering the disputed domain name "BritishCouncil.com", Respondentís initial intent was to choose another similar domain name <britishcommercialcouncil.com> to be associated with the said web site for his client Mr. Liao Chien Shun, but after consideration that the said web site will be focused on local users and a long domain name would not be proper for Chinese users to remember, they thought that "BritishCouncil.com" is shorter and will be more appropriate for Chinese visitors. The Respondent therefore decided to register the generic and descriptive term <britishcouncil.com> on May 6, 2001, for use of that web site.

After reviewing this Complaint, the Respondent admits that the disputed domain name is identical or confusingly similar to Complaintís alleged mark but refuses to accept that the Complainant has exclusive rights in the mark "British Council".

The disputed domain name comprises 2 generic terms "British" and "Council" where the term "British" is a geographical and descriptive term with definitions of 1 a: the Celtic language of the ancient b : BRITISH ENGLISH 2 plural in construction : the people of Great Britain or the Commonwealth of Nations, and the term "Council" is also generic with definitions such as a : a federation of or a central body uniting a group of organizations b : a local chapter of an organization, as defined in the Merriam-Webster Online Dictionary (http://www.m-w.com/).

The Complainant has not claimed to own a trademark or service mark, registered or unregistered, under the name "British Council", nor has the Complainant contended, provided sufficient evidence, or given arguments to the effect that it has a common law trademark for the name "British Council".

The only evidence "The British Council Supplemental Charter 1993" upon which the Complainant relies only evidences that the mark "British Council" is a name of an organization which is operated and/or supported under the British Government. The mark is not only geographical but also descriptive to Complainantís location and function.

"The Complainant has provided evidence that it is incorporated under this name, but the mere act of incorporation does not create a trademark. It has contended that it used this name for promotional activities, but it has not provided any evidence showing the extent or nature of this use, nor has it provided evidence of any other use of the name" [1]

It is no surprise that the Complainant has no registered trademark rights in the mark. Section 3(1)(c) of the U.K. Trade Mark Act 1994 expressly excludes from registration

"trade marks which consist exclusively of signs or indications which may serve, in trade, to designate Ö the geographical origin of Ö goods or of rendering of services".

Also, by performing a US trade mark search through United States Patent and Trade Mark Office, the Respondent finds no match for the mark "British Council" but he does find a record for a similar registered trademark "British American Commerce Council" in which a disclaimer "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BUSINESS COUNCIL" APART FROM THE MARK AS SHOWN" is added.

The Panelists of a previous similar case also finds that "seminar" and "success" are generic terms to which a complainant cannot maintain exclusive rights [2]. This further evidences that the term "British Council" is not exclusively protected.

Moreover, there are a number of organizations and companies that are associated with the term "British Council". ("British Council of Disabled People", "British Council for Offices", "British Council for Prevention of Blindness", "British Safety Council", "British Youth Council", "British Potato CouncilÖ).

A previous decision also finds that

"The Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of the Respondent" [3]

Since the Complainant provides no evidence showing that it has a trademark or service mark, registered or unregistered, and the mark "British Council" is geographically descriptive, it is our contention that the mark "British Council" is not protected under the Policy. Even if the Complainant were to be found having any rights in the mark "British Council", such rights are not exclusively protected and should be limited.

Legitimate Rights and Interest

The disputed domain name was registered for the purpose of establishing a non-commercial web site for the Respondentís client.

Before this dispute, the Respondent had already placed a message in the front page of "BritishCouncil.com" showing that: "This website is under construction, If you have any comment, Contact Us! " This clearly demonstrates Respondentís good faith intention and preparation for use of the disputed domain name.

Registering a descriptive domain name with generic terms or phrase itself constitutes legitimate rights and interest. The Respondent's interest in the disputed domain name appears to be unrelated to the Complainant's mark, and the Respondent thus may well have a legitimate interest in the disputed domain name even apart from its web site plan. Therefore, the Respondent contends that it has legitimate rights and interest in the disputed domain name and it is fully entitled to all rights to use it.

Bad Faith Registration and Use

The disputed domain name was registered and is been used in good faith. The Respondent lives in Taiwan. He has never been abroad and the parties are not in the same business and as he had no knowledge and no basis for knowledge of the Complainant's mark, there cannot have been bad faith in its registration.

The Respondent was not aware of the mark "British Council" at the time of registering the disputed domain name. In short, the Respondent was totally unaware of the existence of the Complainant, not to mention the Complainantís mark until he received this Complaint. The Respondent believes that the disputed domain name consisting of generic and geographically descriptive terms can be legitimately registered and used by any entities.

The Respondent has never attempted to offer the disputed domain name to the Complainant or to any parties for sale. The Complainantís contention that the Respondent obtained the domain name primarily with the purpose of offering it for sale, for valuable consideration in excess of his out-of-pocket expenses directly related to the domain name is nothing but mere assumption or presumption without any proof, facts and grounds to support it.

The Respondent has never approached the Complainant before this dispute and he has held the disputed domain name for only 3 months. This window of time is reasonable and acceptable for a web site project and does not constitute a typical "passive holding" as defined by previous decisions. The Complainant has presented no evidence to support its assertion of bad faith registration and use.

The Complainantís assertions are all based on presumptions without any proof or grounds and should be ignored.

 

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name 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 domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Rights

Each of the individual words in the name "The British Council" is descriptive. The significance of the definite article is to ascribe uniqueness to what follows. Accordingly, the combination "The British Council", used as a trademark, is capable of distinguishing the goods or services of a trader from those of all others, thus generating goodwill entitled to protection by way of trademark rights at common law. This is so whether or not that mark may be registered under applicable legislation.

Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks [4].

The Respondent contends that the Complainant has not claimed to own a trademark or service mark, registered or unregistered, under the name "British Council". However, that is not what the Complainant has claimed.

The Complainant has claimed (and it is not contested) that "The British Council" is the mark or designation by which the organization is known globally, and which it uses actively in its trading activities [emphasis supplied]. The Panel finds that the Complainant has effectively claimed that it has common law trademark rights in the name THE BRITISH COUNCIL.

"Önowhere in the Complaint does the Complainant actually allege that it holds common law or other rights in the mark FILM COUNCIL. However, the Panel is of the opinion that this is not fatal to the Complaint as the context of the Complaint and the allegations therein lead to the obvious conclusion that the Complainant is in fact alleging common law rights in the markÖ".[5]

Although other councils operate under names that include the words "British" and "Council" there appears, on the material before the Panel, to be only one called "The British Council". The name "The British Council" is therefore capable of being distinctive of the services provided by that body.

In Federal Court of Canada v. federalcourtofcanada.com [6] a three-member panel found the complainant to have common law trademark rights in the descriptive name "Federal Court of Canada" based on extensive and continuous use, that name having been conferred by statute and the court being the only one by that name in Canada.

The Respondent contends that the Complainant has not provided sufficient evidence that it has a common law trademark for the name "British Council". The Respondent has not disputed the Complainantís claim to have a long history of the supply of services in many countries under its name. Taking this into account, together with the uniqueness of the name "The British Council", as distinct from other names which include one or more of the words "british" and "council", the Panel is satisfied that the Complainant has established that it has rights in the common law trademark THE BRITISH COUNCIL.

Identity or Confusing Similarity

Essential or virtual identity is sufficient for the purposes of the Policy [7].

The Respondent concedes this element. The panel finds the disputed domain name is virtually identical and confusingly similar to the Complainantís trademark THE BRITISH COUNCIL [8]. The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The names of the Respondent and his client are not and do not include any part of the disputed domain name.

Descriptive names such as "Chinese Restaurant" may be legitimately used by anyone, provided the goods or services they provide conform to the description and are thus not misleading. But there is only one organization known as "The British Council" and accordingly it alone may use that name without misleading.

The Respondent does not officially represent Britain or things British, nor does his client. Although the Respondentís web site remains under construction, any use of the disputed domain name to provide information about Britain must necessarily mislead Internet users into the false belief that the operator of the web site represents Britain or things British. The inherent deceptiveness of the disputed domain name in the hands of the Respondent or his client negates any possibility that the Respondent has rights to or a legitimate interest in the disputed domain name.

"A name which will, by reason of its similarity to the name of another, inherently lead to passing off is [an instrument of fraud]". [9]

The Panel finds the Complainant has established this element. The Respondent has no rights or legitimate interests in the disputed domain name.

Bad faith Registration and Use

The Respondent claims to have been "totally unaware of the existence of the Complainant, not to mention the Complainantís mark, until he received this Complaint". Further, the Respondent claims he has "never approached the Complainant before this dispute" and "never attempted to offer the disputed domain name to the Complainant or to any parties for sale". The terms of the Respondentís email of June 6, 2001, disprove all of these statements.

Having regard to the fact that the disputed domain name was registered only one month before the email of June 6, 2001, was sent, and the clear aim of that email to extract a price from the Complainant for the disputed domain name in excess of the Respondentís registration costs, the Panel finds the disputed domain name was registered primarily for the purpose of sale to the Complainant for such a price. This constitutes evidence of both bad faith registration and bad faith use.

The Complainant has established this element. The panel finds the Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name <britishcouncil.com> be transferred to the Complainant.

 


 

Alan L. Limbury
Sole Panelist

Dated: October 7, 2001

 


Footnotes:

1. Powrachute Inc., v. Buckeye Industries (AF-0076).

2. Successful Money Management Seminars Inc. v. Direct Mail Express, (AF-96457).

3. Asphalt Research Technology, Inc. v Anything.com (D2000-0967).

4. See, for example, Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250).

5. Film Council v. Boolean Consulting Limited (AF-0503).

6. (AF-0563).

7. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (D2000-0102).

8. See John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray (D2000-1403).

9. British Telecommunications plc and others v. One In A Million Ltd and others [1998] EWCA Civ 1272 (UK Court of Appeal).