WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Espirito Santo Financial Group S.A. v. Peter Colman
Case No. D2001-1214
1. The Parties
The Complainant is Espirito Santo Financial Group S.A. of 231 Val des Bons Malades, Luxembourg-Kirchberg.
The Respondent is Peter Colman of 28 Heathstan Road, London W12 0RA, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <espiritosanto.com> and the Registrar is Melbourne IT Limited, D/B/A Internet Names Worldwide.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on October 5, 2001 [electronic version] and on October 9, 2001 [hard copy]. The Center verified that the Complaint satisfies 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is October 18, 2001.
On October 10, 2001 the Center transmitted via email to Melbourne IT Limited a request for Registrar verification in connection with this case and on October 12, 2001, Melbourne IT Limited transmitted by email to the Center Melbourne IT Limited's verification response confirming that the registrant is Peter Colman who is also the contact for both administrative and billing purpose.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on October 18, 2001 to Respondent; and to firstname.lastname@example.org this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by November 7, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to 2 Respondent’s addresses.
A Response was received from the Respondent on November 8, 2001 [electronic version] and on November 26, 2001 [hard copy]. On November 8, 2001, Notice of Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.
Having received Declarations of Impartiality and Independence and Statements of Acceptance from G Gervaise Davis III, Dawn Osborne and David Perkins on November 27, 2001, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date of January 2, 2002. That Decision Date was subsequently extended to January 8, 2002, and again to January 15, 2002. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
4.1 The Complainant
4.1.1 The Complainant is the Luxembourg based holding company of a Portuguese Financial Services Group. The Complainant is listed on the London, Luxembourg and New York Stock Exchanges.
4.1.2 The words ESPIRITO SANTO are the name and brand by which the Group trades. For example:
- Espirito Santo Financial Group S.A. [the Complainant] is the holding company.
- Banco Espirito Santo is a Bank having more than 600 branches in Portugal. The Bank is also represented through branches, subsidiaries or representative offices in 17 countries worldwide. The Bank and Espirito Santo Nominees are listed at 33 Queen Street, Blackfriars, London.
- Other Portuguese based operations include:
- Banco Espirito Santo de Investimento: fund management.
- Espirito Santo Activos Financeiros: merchant banking and stock broking.
- Espirito Santo Dealer: a Lisbon based bank and one of the country's largest stock brokers.
- Compagnie Bancaire Espirito Santo S.A.: a private Swiss Bank engaged in Fund Management.
- Banque Espirito Santo de la Vénétie: a Commercial Bank in France.
- Espirito Santo Bank : a Commercial Bank in the United States of America.
The Complainant's ESPIRITO SANTO Trademark
4.1.3 The Complainant has registered trademarks comprising two categories, the mark ESPIRITO SANTO simpliciter and marks which include the words ESPIRITO SANTO. Those in the first category are:
Goods / Services
Application / Registration Date
Community Trade Mark
15, 36 and 41
Filed: April 1, 1996
United States of America
Filed: March 28,
Filed: January 15,
Filed: February 3,
Filed: November 6,
Filed: January 17,
Filed: January 11,
These registrations are principally held by Bank Espirito Santo International Limited of the Cayman Islands, the later of the two French registrations is held by Banque Espirito Santo de la Vénétie [see, paragraph 4.1.2 above] and the Community Trade Mark, which dates from April 1996 is held by the Complainant.
4.1.4 The second category registrations incorporate ESPIRITO SANTO as the identifying element of the mark. The 8 marks registered or applied for before the date of registration of the domain name in issue [September 16, 1997] are in Denmark, Germany, Spain and Switzerland. The 9 marks registered or applied for after that date are in Canada, France, Spain and a CTM.
4.1.5 The Complainant currently advertises and markets the ESPIRITO SANTO Group on the Internet through its website at www.esfg-com and its banking services specifically through www.bes.pt, www.bic.pt, and www.espiritosanto.ch.
4.2 The Respondent
4.2.1 The Respondent states that he has registered a considerable number of domain names. He asserts that since the date of registration of the domain name in issue he has been engaged in preparations to use it for businesses which will provide portal information and useful links to businesses and services in a variety of classifications and geographical areas, including the State of Espirito Santo, Brazil.
4.2.2 The Complainant has listed some of the domain names which he has registered and which he describes as generic. The majority listed clearly fall into that category, for example:
<thecreditcard.com>, <thelunch.com>, <thevan.com>, <therailway.com> etc.
A number comprise geographical place names, for example:
and a number of other locations in the United Kingdom. Four refer to non-United Kingdom geographical names, <asuncion.com>, <osterreich.com>, <tropicalqueensland.com>, and the domain name in issue. A number comprise third party business names and/or trademarks, for example:
<oxfordscientific.com>,<rimmel.com>,<thameswater.com>, <eaglestar.com>, <rivegauche.com>.
and some 16 United Kingdom football teams. With the exception of <oxfordscientific.com>, the domain names incorporating third party brands were listed in an attachment to the Complaint. Some others are virtually identical to third party marks, for example:
<britishair.com> [BRITISH AIRWAYS] and <jamesons.com> [JAMESON'S Irish Whiskey].
5. Parties’ Contentions
The Complainant refers to three disputes involving domain names registered in the name of or involving the Respondent. They are:
5.1 Laurent Perrier S.A. & Anor v. Mr. L Perrier & Others WIPO Case No: D2000-0396
5.1.1 The French Proceedings
The domain names in issue were <laurentperrier.com> and <laurent-perrier.com>. Mr. Colman, the Respondent in this case, was the original registrant of the two LAURENT PERRIER domain names. Laurent Perrier, the well-known Champagne House, initiated actions in the Tribunal de Grand Instance, Paris against Mr. Colman sometime after August 1997 seeking transfer of the two domain names. In June 1998 the French Court issued judgments ordering Mr. Colman to transfer them to the Complainant.
5.1.2 Prior to that Judgment in about December 1997, Mr. Colman transferred the two domain names to Laurent Jacques Perrier and to M L Perrier, both having the same address in Nassau, Bahamas. This was the address of Fernhead Property Holdings, who were the Administrative and Billing Contact for the original registrations.
5.1.3 The UDRP Case
Although, because of that transfer of the two domain names, Mr. Colman was not the Respondent to the Complaint subsequently brought in 2000 by Laurent Perrier, he nevertheless submitted a Response on behalf of the new registrants.
5.1.4 The Panel ordered transfer of both domain names to Laurent Perrier. With regard to rights or legitimate interests in the names, the Panel expressed, more than scepticism about the existence of M L Perrier and Laurent Jacques Perrier and concluded that they were Mr. Colman's inventions created with a view to avoiding the French proceedings and the Order which was likely to follow.
5.1.5 The Panel also found evidence of registration and use in bad faith pursuant to paragraph 4(b)(ii) of the Policy:
"… it is evident to the Panel that the domain name was registered to prevent the Complainant, as the owner of the trademark LAURENT PERRIER (among other related marks) from reflecting its mark in a corresponding domain name. Furthermore, the Panel finds evidence exists that the Respondents, or someone closely affiliated with the Respondents have engaged in a pattern of such conduct."
In this respect, the Panel noted that Mr. Colman:
"… appears as the Registrant of several names of potential commercial importance, in particular, thepru.com."
5.1.6 The Response in this case seeks to dismiss the relevance of the LAURENT PERRIER case within the following argument:
"It is important to note the Respondent in the instant case, Mr. Peter Colman, was not named as a respondent in case number D2000-0396. Complainant does not provide any evidence to attempt to prove that Mr. Colman was the respondent from whom the domain name was transferred by the decision or to prove that Mr. Colman demonstrated bad faith in the registration and use of the domain name in that previous proceeding. Accordingly, no serious consideration should be afforded to the Complainant's attempt to use this argument to prove a pattern of bad faith."
5.1.7 The Panel considers the Orders of the French Court and the Decision of the Panel material to the issue of bad faith in the present case.
5.2 Skipton Building Society v. Mr. Peter Colman WIPO Case No. D2000-1217
5.2.1 The domain name in issue was <skipton.com>. The Building Society had been trading in the United Kingdom since 1952 under the name SKIPTON and obtained a registered service mark for SKIPTON in 1987, which was the first year that registered service marks became available under English law.
5.2.2 As to rights or legitimate interests, Mr. Colman asserted that he had registered the domain name in issue in September 1997 - the same month that the domain name <espiritosanto.com> was registered - with the intention of establishing a local portal site featuring information about the town of Skipton in North West Yorkshire, England. No such site had, however, been established in the 3 years between registration and the Complaint brought by the Building Society.
5.2.3 In relation to bad faith registration and use, the Building Society pointed to a series of domain names registered by Mr. Colman which appeared to relate to well-known football clubs in England, none of which were used for active websites.
5.2.4 The 3 member Panel found for the Building Society and directed transfer of the domain name by Mr. Colman to the Society. In its Findings, the Panel stated:
"Mr. Colman need not convince the Panel that it is reasonable for individuals or companies to own and hold undeveloped domain names. Domain names are a tradable commodity, as are any intellectual property rights of a similar nature. That is not the point. The issue is the nature of the domain name in question."
The Panel went on to state:
"However, by his own admission, Mr. Colman took advantage of the first come first served policy of the domain name registrars to obtain a wide range of registrations, including a number of well-known English football clubs, and other substantial entities, including W H Smith and Thames Water. The latter two registrations are particularly telling, as there can be no legitimate geographical or other justification for the registrations."
The Panel found:
"… that Mr. Colman's pattern of conduct is compelling. His explanation as to why he registered the various well-known football clubs, and other businesses, such as W H Smith and Thames Water, is in the words of the Complainant, fanciful."
The Panel concluded:
"Applying the current position ex post facto it is hard to see that the registrations which Mr. Colman undertook in 1997, including the domain name at issue, can have been made otherwise than in bad faith, and for the purpose of getting in first ahead of legitimate businesses.
It is irrelevant that Mr. Colman also registered a number of non-offensive generic names. There is perfectly adequate evidence before the Panel that there was a pattern of behaviour by Mr. Colman that brought his conduct within the terms of sub-paragraph (ii) of paragraph 4(b) of the UDRP."
5.3 W H Smith Ltd v. Peter Colman [English High Court]
5.3.1 Mr. Colman had registered the domain name <whsmith.com>. The Claimant sought injunctive relief against use of that domain name and a mandatory order requiring Mr. Colman to transfer it to the Claimant. Mr. Colman had transferred the domain name to William Harold Smith, said to be a US resident but with an address in the Bahamas.
5.3.2 The case report, 2000 Fleet Street Reports 9, exhibited to the Complaint is of an interlocutory judgement of the English Court of Appeal relating to the admissibility of correspondence marked without prejudice which the Claimant wished to use in evidence. The Appeal Court held that the particular letter concerned was a genuine offer to negotiate a settlement, that it was therefore properly captioned without prejudice and should not be admitted into evidence.
5.3.3 The case report does not deal with the outcome of the substantive dispute It is limited to that one interlocutory issue. The Complainant states that it is unaware of the outcome but submits that the background facts of this action are further evidence to support its submission that Mr. Colman has engaged in a pattern of conduct involving the speculative registration of domain names in bad faith.
5.3.4 In his Response, Mr. Colman submits that because the Complainant is unaware of the outcome of the W H SMITH case, it cannot be used to demonstrate bad faith. The Panel observes that Mr. Colman will, of course, be aware of the outcome but has chosen not to reveal it. If the outcome exonerated his conduct in registering the <whsmith.com> domain name from bad faith, then doubtless Mr. Colman would have wanted to say so. The Panel is entitled to make such inference as it deems appropriate from the way in which Mr. Colman has declined to deal with the result of the W H SMITH case.
5.4. Communications between the Parties
5.4.1 In May 2000, the Complainant approached the Respondent and asked if the domain name in issue was for sale. The Respondent replied that it was. In June 2000, the Respondent met representatives from the Complainant. Mr. Colman stated at that meeting that he had not heard of the Complainant Bank and that he had registered the domain name after searching the names of states and cities in South America and finding the State of Espirito Santo, Brazil.
5.4.2 Following that meeting, by email dated July 28, 2000 Mr. Colman wrote to the Bank:
"You indicated that you would come back to me with an offer. I had not heard from you and wondered if you were still interested as I have refrained from contacting other possible buyers whilst awaiting a response from yourselves."
5.4.3 The Complainant did not pursue matters further at that time. But almost a year later in June 2001, the domain name still not being used in relation to an active website, the Bank contacted Mr. Colman again to enquire if it was still for sale. The Respondent replied that it was. The Complainant offered £4,000.00. Mr. Colman counter-offered £10,000.00. The Complainant raised its opening offer from £4,000.00 to £5,000.00. That figure was not accepted by the Respondent. In the course of the email and telephone exchanges in June and July 2001, Mr. Colman asked the Complainant to provide evidence of any registered trademark for ESPIRITO SANTO and the countries of such registrations.
6. The Parties Contentions
6.1 The Complainant
6.1.1 Identical or Confusingly Similar
The Complainant's case is that the domain name in issue is identical with the first category of ESPIRITO SANTO registered trademarks and confusingly similar to the second category of registered marks.
6.1.2 Rights or Legitimate Interests
The Complainant maintains that the Respondent's true motive is to register speculatively domain names with a view to selling them for a profit to the trademark owner. There is no evidence of actual use or preparations to use the domain name in connection with a bona fide offering of goods or service. It has lain dormant for the 4 years since it was registered by the Respondent. The Respondent cannot bring himself within any of the circumstances set out in paragraph 4c of the Policy as demonstrating rights or legitimate interests to the domain name.
6.1.3 Registered and Used in Bad Faith
The Complainant's case is that there is ample evidence of the circumstances set out in paragraphs 4(b)(i) and (ii) of the Policy demonstrating Mr. Colman's bad faith. The Complainant relies upon the following:
- Registration as domain names of a number of well-known United Kingdom football
clubs, such as:
|<queensparkrangers.com>||Queen's Park Rangers F.C.|
|<tranmererovers.com>||Tranmere Rovers F.C.|
|<radfordcity.com>||Bradford City F.C.|
|<orwichcity.com>||Norwich City F.C.|
|<glasgowrangers.com>||Glasgow Rangers F.C.|
- Registration as domain names of other substantial commercial entities, such as:
|<thameswater.com>||Thames Water PLC|
- The Respondent's role in the Laurent Perrier litigation, both in the French Courts and under the Policy [see, paragraph 5.1 above].
- The Respondent's role in the Skipton Building Society case [see, paragraph 5.2 above].
- The Respondent's role in the dispute with W H Smith [see, paragraph 5.3 above].
- The Respondent's suggestion that registration of the domain names in issue was the result of his searching the names of states and cities in South America is not credible, since he has produced no evidence of having registered any other domain name incorporating the name of a State or City in South America. Nor does Mr. Colman appear to have any business interests in or geographical connection with the State of Espirito Santo or any other South American State.
- The Respondent's asking price of £10,000.00 for the domain name in issue is greatly in excess of his documented costs relating to it.
- The Respondent's statement in July 2000 that he was refraining from contacting other possible buyers [see, paragraph 5.4.2 above] is consistent with bad faith intent to extract as much as possible from the trademark owner.
- The Respondent's request in July 2001, for particulars of any registered ESPIRITO SANTO trademarks held by the Complainant [see, paragraph 5.4.3 above] is consistent with his bad faith intent to extract a disproportionate payment from the trademark owner. From the Respondent's earlier domain name litigation [see, paragraphs 5.1 to 5.3 above] he is well aware of the Policy and this request was clearly for information to enable him to evaluate whether or not to accept the Complainant's final offer of £5,000.00 or risk a Complaint under the Policy.
- The Respondent's conduct in the earlier domain name litigation of transferring the domain names in issue respectively to fictitious M L Perrier, Laurent Jacques Perrier, Mr. John Skipton in the USA and Mr. William Harold Smith also in the USA are powerful evidence of bad faith dealing.
6.2 The Respondent
6.2.1 The Policy does not apply
The Policy is intended to deal only with clear abuses of the domain name registration system, such as cybersquatting and cyberpiracy. It is not suited to disputes of the type involved here which involves neither activity. In support of this proposition the Response cites the following extracts from 2 cases decided under the Policy.
"… the purpose of the ICANN UDRP is to deal with simple, clear, abusive registrations of domain names, and not complex trademark disputes or to inject the Panel's views that someone should not be doing this since it might be wrong or unfair." [America Online Inc v. John Deep d/b/a Buddy USA Inc. Case FA 0103000096795].
"The ICANN policy is very narrow in scope; covers only clear cases of cybersquatting and cyberpiracy, and does not cover every dispute that might arise over domain names." [J Crew v. crew.com WIPO Case No: D2000-0054].
"Except in cases involving abusive registrations made with bad faith intent to profit commercially from other's trademarks (e.g. cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts … ." [Second Staff Report Implementation Documents for the UDRP (October 24, 1999)].
6.2.2 The American Online case involved four domain names, <aimster.com>; <aimstertv.com>; <aimstertv.net> and <almster.com> and America Online's AIM registered trademark used for its America Online Instant Messenger [AIM] service. The Panelists disagreed on the issue of rights or legitimate interests [paragraph 4a(ii) of the Policy]. The nub of the issue was whether the Respondent's use of the disputed domain name, <aimster.com>, was a nominative or fair use of a trademark. The Respondent used that domain name for a website which provided a service which interacted and/or integrated with America Online's AIM service. AOL neither authorised nor licensed such use. The difference of opinion between the Panelists, who split 2 to 1 in favour of the Complainant, centered around application of the fair use doctrine of US trademark law. The minority Panelist concluded:
"Simply put, I believe the issues in this case are far too involved in the necessary factual determinations of whether or not the use to which Respondent put the AIM name in its AIMSTER domain name is confusingly similar and whether or not it is a fair or nominative use. The issues are more properly determined by a trial court … ."
6.2.3 The J Crew case involved the domain name <crew.com> and the Complainant's registered trademarks J CREW and CREW for clothing, shoes, bags and catalogue services. The alter ego of the Respondent was Telepathy Inc., which was in the business of selling domain names, which either comprised third party trademarks or generic words that others might want to use. In the Decision directing transfer of the domain name in issue to the Complainant, the majority Panelists said:
"The majority of the Panel does not decide that all speculation in domain names is prevented by the Policy. Rather, for the purpose of this case, we merely hold that registration of domain names for speculative purposes constitutes an abusive registration when (1) the Respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the Respondent had constructive or actual notice of another's rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name; (3) the Respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark. This definition is consistent with the considerations stated in the WIPO Report and allows speculation in domain names that do not correspond to registered marks or where the registrant has a demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition."
6.2.4 Quoting Justice Holmes, the dissenting panelist said:
"A trademark does not confer a right to prohibit the use of the word or words … A trademark only gives the right to prohibit the use of it so far as it protect the owner's goodwill against the sale of another's product as his."
He considered that, on the facts in the J CREW case the Complainant failed to established the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. He concluded:
"We are not legislators, but arbitrators. The majority, in an effort to stop a practice that it seems to take upon itself to believe is an unstated purpose of the ICANN Policy, has completely over-stepped its mandate as arbitrator. … In my judgement, the majority's decision prohibits conduct which was not intended to be regulated by the ICANN Policy. This creates a dangerous and unauthorised situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross. I cannot and will not agree to any such decision, which is fundamentally wrong."
6.2.5 In both the AOL and J CREW cases the parties were located in the United States, the 3 member Panels were composed of US lawyers and the Decisions quoted substantially from US trademark case law. By contrast in this case neither party is located in the United States, both are in Europe. Two of the three panelists are English lawyers and there is no apparent reason to consider rules or principles of US trademark law. The approach taken by the Panel in the Skipton Building Society case in relation to an unused geographical name quoted in paragraph 5.2.4 above seems to set out a reasonable approach which has equal application to this case.
- This Policy does not prohibit the owning and holding of undeveloped domain names.
- Nor does the Policy prevent trading in domain names.
- The issue always turns on the nature of the particular domain name in issue.
Identical or Confusingly Similar
6.2.6 The Respondent's case is that;
- by not exhibiting trademark registration certificates the Complainant has failed to establish trademark rights in ESPIRITO SANTO. The Response cites Primo Incense v. Spring.net Claim No: FA0101000096565. In that case the Complainant, Primo Incense Distributing Company, maintained that it had been doing business since 1972 but, although it produced some evidence of trademark rights in PRIMO, failed to produce any evidence of trademark rights in PRIMO INCENSE. The domain name in issue was <primoincense.com>. The Panel held that, on the evidence, the Complainant had failed to show any registered or common law trademark rights in PRIMO INCENSE and the Complaint, therefore, failed.
[This Panel believes that given the registered rights in the mark ESPIRITO SANTO evidenced by the Complainant in this case [see, paragraphs 4.1.1 to 4.1.5 above], the Primo Incense case is, clearly, quite different on the facts. The Primo Panel's statement in that case quoted in the Response:
"The Complainant must demonstrate the factual existence of its rights in a trademark or servicemark" is no more than an embellishment upon the requirement of paragraph 4(a)(i) of the Policy.]
- That there is no evidence of confusing similarity between the Complainant's ESPIRITO SANTO mark and the domain name in issue.
- The addition of the .com suffix is an important element to distinguish the Complainant's trademark from the domain name in issue for the purposes of considering confusing similarity. For example, the domain name <microsoft.com could hardly be confusingly similar to a registered trademark for MICRO.
- The Response cites 2 Decisions in support of its case on confusing similarity.
Kittinger Co. v. Kittinger Collector [AF 0107].
The Complainant's trademark was KITTINGER for furniture. The domain names in issue were <kittinger.com> and <kittingercollector.com>. The Respondent was in the business of re-conditioning furniture made by the Complainant's predecessor in business. The Panel held that the Complaint succeeded under paragraph 4(a)(i) as regards the domain name <kittinger.com> but that the <kittingercollector.com> domain name was nominative and was used purely as descriptive of the Respondent's business. The Complaint also failed under both paragraphs 4(a)(ii) and (iii) of the Policy since the Respondent's use of the KITTINGER trademark was in a purely descriptive sense.
By comparison, in the instant case no use - descriptive or otherwise - has been made of the domain name <espiritosanto.com>.
Smart Design LLC v. Carolyn Hughes [WIPO Case No: D2000-0993]
Here the domain name in issue was <smartdesign.com>. The Complainant was a prestigious designer and developer of consumer products founded in 1985. The Respondent used the domain name in issue for her thinkubator research and development laboratory, which developed patentable intellectual property for the market. This included, for example, a business method patent to provide improvements to current e-commerce traffic.
Although the Complaint succeeded under paragraph 4(a)(i) of the Policy, it failed under paragraphs 4(a)(ii) and (iii).
Rights or Legitimate Interests
6.2.7 The Respondent's case is as follows:
The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the domain name in issue.
In this respect, the Respondent relies on 4 Decisions under the Policy.
General Machine Products Co. v. Prime Domains [Case No. FA00010000092531].
The Domain name in issue was <craftwork.com>. The Complainant had used the registered CRAFTWORK trademark since 1989 for a wide range of products used in the construction utility field. The Respondent, later known as Telepathy Inc [also, the alter ego of the Respondent in the J Crew case] was in the business of registering and selling domain names, primarily common dictionary terms or generic words. In this case, there was no evidence of Telepathy registering third party trademarks as domain names.
The Complaint failed under paragraphs 4(a)(ii) and (iii) of the Policy, the Complainant having failed to prove that the Respondent had no rights or legitimate interests in the domain name in issue. The fact that the Respondent had offered to sell the domain name did not make its interest illegitimate.
Marbil Co Incorporated d/b/a Insol v. Sangjun Choi [WIPO Case No. D2000-1275].
The Complainant was a small Atlanta based computer company which had used the trademark INSOL since 1993. The domain name in issue was <insol.com>. The Respondent, a Korean company, was in the business of organising conducted tours. The word INSOL in Korean means "lead" or "guide", hence the reason for the Respondent choosing the <insol.com> domain name for its business. On the facts, the Complaint failed under paragraphs 4(a)(ii) and (iii) of the Policy.
Dorset Police v. Gerry Coulter [AF 00942].
The domain names in issue were <dorsetpolice.com> and <dorsetpolice.net>. The Respondent, Mr. Coulter, had grievances against the Dorset Police Authority who he accused of corruption and of failure to recover his stolen car. Applying US doctrines of fair use and free speech, the Panel considered that the domain names were used for a genuine criticism site, which was a legitimate use. The Complaint was rejected for failing to meet the requirement of paragraphs 4a(ii) of the Policy.
Rent Right Inc v. Worldwide Media Inc a/k/a Michael Berkens [Case No. FA0109000099675].
The Complainant claimed to have used the RentRight trademark since 1996 for its software, which had over 7,000 users. The domain name in issue was <rentright.com> and the Respondent was in the business of selling domain names. The Complaint failed under paragraph 4a(i) of the Policy for failure by the Complainant to show any trade mark rights in RentRight.
Paragraph 4(c) of the Policy
The Respondent relies upon demonstrating his rights and legitimate interests under paragraph 4(c)(i) of the Policy. Namely, before notice of this dispute, he had made demonstrable preparations to use the domain name in connection with a bona fide offering of services. The evidence he relies upon is as follows:
- Since September 16, 1997, he has been engaged in preparation for use of the domain name in issue.
"… for businesses which will provide Internet portal information and useful links to businesses and services in a variety of classifications and geographical areas - including the State of Espirito Santo, Brazil."
- He has registered a large number of domain names that can be used in a similar capacity [see, paragraph 4.2.2. above].
- He has engaged in correspondence with business associates in that respect. Here the Respondent relies on 2 affidavits, one of his own and the other from Mr. Alan Barnett.
- The Respondent's affidavit merely reiterates these assertions of preparations to use the domain name in issue. The remainder of the affidavit tracks the wording of paragraphs 4(c)(iii) and 4(b)(i) to (iv) of the Policy. Finally, he states that he was not aware of the Complainant or of its trademark rights when registering the domain name in issue in September 1997.
- Mr. Barnett's affidavit also in large part merely tracks the wording of paragraphs 4c(iii) and 4b(i) to (iv) of the Policy. He states that he had been a business associate of Mr. Colman for some years. He says he is a Director of Twenty Twenty Media, a web-hosting, e-mail provider and design company. As such he says that Twenty Twenty Media has been.
"… engaged in extensive discussion and planning of the operation of these businesses and it has been proposed by Mr. Colman that the site design, web hosting and associated services will be operated by our company."
- Mr. Colman states that Twenty Twenty Media have engaged in preliminary design work on Mr. Colman's intended use of the <espiritosanto.com> and other domain names, in planning activities with business associates and in looking at a variety of options for the provision of Internet links.
- Mr. Colman exhibits an email exchange in December 1999 with Fiona Worthington of Schroder Securities Ltd which indicates that Ms. Worthington was assisting him with his aim of using his collection of domain name registrations to provide Internet portal information and links to businesses.
- Finally, he exhibits the web page of what is described as his <pigsmightfly.com> website with an email from a Rex Wickham of 2020 Media dated September 16, 2000. This is submitted as evidence of a third party responding to the request for partners to develop generic portals contained on that website.
Registered and Used in Bad Faith
6.2.8 The Respondent's case is as follows:
The Complainant has the burden of proof.
Here the Respondent cites 2 Decisions under the Policy.
Diamond Shamrock Refining and Marketing Company v. CES Marketing Group Inc [Case No. FA0102000096766].
The Complainant had used the registered CORNER STORE trademark for the retail of gasoline at over 800 outlets since 1986. The Respondent was in the business of registering and selling generic words as domain names and had registered the domain name <cornerstore.com> before issuance of the Complainant's US registered trademark. Held, there was no evidence of any of the circumstances set out in paragraph 4b of the Policy and the Complaint was duly dismissed.
Los Angeles County Bar Association v. J D Barnett Law Offices [Case No. FA0011000096113].
Here the domain name in issue was <smartlaw.com>, which the Respondent stated had been registered at a time before it became aware of the Bar Association's use and US federal service mark registration of SMART LAW. The Respondent law firm was located in Ontario, Canada and the domain name was registered in early 1997. The Complainant Bar Association, through its predecessor in interest, had used the SMART LAW service mark since 1986 and in 1997 applied for the US service mark registration.
The Respondent practised law in Ontario from 1986 to 1999, when due to ill health his law firm closed and he subsequently offered the seven domain names which he had used in the practice - including the domain name in issue - for joint ventures with other parties. On the facts the Panel found no evidence that the <smartlaw.com> domain had originally been registered in bad faith and dismissed the Complaint.
The Respondent's Other Domain Names
As to the domain names corresponding to football teams in England and Scotland and third party trademarks, Mr. Colman proposes that they do not constitute a bad faith pattern of conduct. He suggests 3 legitimate potential uses, namely:
- to establish an Internet portal to provide information and useful links to businesses and services in a variety of classifications and geographical areas; or
- the names of the football clubs could have been registered for establishing fan clubs; or
- the domain names could have been registered for use as criticism websites [see, the Dorset Police case].
Further, the Complaint contains no evidence of any attempt to deprive third party trademark owners from reflecting their marks in corresponding domain names.
The Previous UDRP Cases involving the Respondent
The Respondent's explanations are set out in paragraphs 5.1.6 [the LAURENT PERRIER cases]; 5.2.5 [the SKIPTON BUILDING SOCIETY case] and 5.3.4 [the W H SMITH case]. He submits that they fail to establish a pattern of conduct for the purposes of paragraph 4b(ii) of the Policy.
The Negotiations to sell the Domain Name in Issue to the Respondent
When a domain name registrant merely responds to a trademark owner's request to purchase, an offer to sell is not evidence of bad faith registration and use. The Respondent cites 4 Decisions under the Policy in this respect.
Mark Warner 2001 v. Mike Larson [Case No. FA0009000095746].
Mark Warner was a successful and well-known businessman in the telecoms and hi-tech areas. He was also candidate for Governor of the State of Virginia in 2001. The Complainant was the campaign organisation formed to support his candidacy to that office. The domain names in issue were <markwarner2001.com> and <warner2001.com>. Held that the Complainant satisfied the requirements of paragraphs 4(a)(i) and (ii) of the Policy but failed on the facts to show any pattern of conduct required by paragraph 4(b)(ii).
Open Systems Computing AS v. Alberto degli Alessandri [WIPO Case No. D2000-1393]
The Complainant was a Norwegian based company, with a subsidiary Open iT Inc. The Respondent registered the <openit.com>domain name in issue in 1997, before the Complainant began using the OPEN IT trademark in January 1999. The earlier registration of the domain name in issue indicated absence of bad faith registration by the Respondent. This Panel notes that this is an entirely different fact pattern to that in the present case.
Pacific Place Holdings Ltd v. Richard Greenwood [WIPO Case No. D2000-0089].
The domain name in issue was <pacificpalace.com> which had been owned by the Complainant but which had inadvertently been allowed to lapse. The Complainant had used the PACIFIC PLACE trademark for its real estate development and management business since 1989. The Respondent acquired the domain name with the intention of using it for a Cyber Café at Pacific Beach, California but subsequently offered to sell it to the Complainant. The Complaint was dismissed for failure to meet the requirements of both paragraphs 4(a)(ii) and (iii) of the Policy. As to bad faith, the Panel held;
"(2) the fact that, when approached by someone on behalf of the Complainant, Source Internet was agreeable to selling the domain for $1500 is not evidence that Source Internet registered the domain name primarily for the purpose of selling it to the Complainant (see paragraph 4b(i) of the Policy)."
CottonSmith LLC v. Resource Services Ltd [Case No. FA0104000097096].
The Complainant claimed first use in commerce of the COTTONSMITH trademark for clothing from February 1994. The <cottonsmith.com> domain name was registered in 1998 and the COTTONSMITH name had been used since that date for the Respondent's cotton products. On the facts, the Complaint failed under paragraphs 4a(ii) and (iii) of the Policy, there being a conflict of affidavit evidence relating to the Respondent's alleged use of the COTTONSMITH mark. The mere fact that the parties had discussed purchase of the domain name by the Complainant did not amount to registration or use of the domain name in bad faith.
Non-Use of a Domain Name is not an indication of bad faith
The Response seeks to distinguish the Telstra case [WIPO Case No. D2000-0003] cited by the Complainant on the basis that it was decided in default of Response. The Panel in Telstra decided that, in certain specific circumstances, non-use of a domain name can constitute use in bad faith.
"… 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." (paragraph 7.9).
The circumstances other than those set out in paragraph 4(b) of the Policy evidencing bad faith are without limitation. Other circumstances can be evidence that a domain name was registered and is being used in bad faith. Examples of such circumstances suggested by the Panel in Telstra include failure by the Respondent to provide evidence of actual or contemplated good faith use by it of the domain name. As this Panel notes in its Discussion and Findings, here there is a failure of the Respondent to provide convincing evidence of his good faith preparation for use of the domain name.
No paragraph 4(b) Policy evidence of registration and use in bad faith exists in this case
Here, the Response tracks paragraphs 4(c)(iii) and 4(b)(i) to (iv) of the Policy, denying that bad faith evidence exists. Mr. Colman relies in this respect upon the evidence adduced in support of his preparations to use the domain name <espiritosanto.com> in connection with a bona fide offering of services, see paragraph 6.2.7 above which outlines his own affidavit evidence, that of Mr. Barnett, and the email exchanges in December 1999 with Ms. Worthington and in September 2000, with 2020 Media. He also reiterates his ignorance of the Complainant or its trade marks when registering the domain name in September 1997. Finally, he refers to the Decision in WPP Group PLC v. WPP [Case No. AF0530a]. There the Complainant, WPP, was one of the world's largest advertising agencies. The Respondent, WPP Agency SA, also engaged in inter alia advertising, used WPP [an acronym for World Publicity in Paris] and had registered WPP as a trademark in France in 1989. The domain names in issue were <wppinternational.com> and <wppmultimedia.com>. The Complaint failed under both paragraphs 4(a)(ii) and (iii) of the Policy. Specifically, the Panel held that no evidence had been proved by the Complainant to establish any of the circumstances set out in paragraph 4(b) of the Policy.
7. Discussion and Findings
7.1 The Requirements of the Policy
The Policy paragraph 4(a) provides that the Complainant must prove each of the following;
- That the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
7.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii).
7.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Policy states that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Identical or Confusingly Similar
7.4 The Complainant has provided evidence that it, or companies within the Espirito Santo Group, own registered trademarks for the mark ESPIRITO SANTO simpliciter in the United States of America, France, Germany and Italy dating from the mid 1980's. The Complainant itself owns a Community Trade Mark for ESPIRITO SANTO for the 15 Member States of the European Union. The mark dates from April 1996. The domain name in issue was registered in September 1997.
7.5 The Primo Incense case relied upon by the Respondent was decided on totally different facts and is of no relevance to the instant case.
7.6 Addition of the .com suffix is irrelevant when considering identicality of the Complainant's registered ESPIRITO SANTO trademarks and the domain name <espiritosanto.com>. There is identicality for the purposes of paragraph 4(a)(i) of the Policy and the Complainant succeeds on this limb of the Complaint.
7.7 There is, therefore, no need to address whether the domain name in issue is confusingly similar to the Complainant's second category of registered trademarks. Those are referred to in paragraph 4.1.4. above.
7.8 It follows that the Kittinger and Smart Design cases are not relevant. Neither are in point in any event. The Kittinger case concerned the issue of fair use of a trademark affecting parties both located in the United States. In the Smart Design case, the Complaint was held to satisfy the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
7.9 The Burden of Proof
The cases cited by the Respondent do not assist its case. The Complaint argues for the position that the facts, prima facie, establishes lack of rights or legitimate interests of the Respondent in the domain name in issue by demonstrating that, although registered in September 1997, some 4 years later it is still not used in relation to an active website. This Panel is unwilling to agree with Complainant that mere lack of use establishes bad faith, but agrees with Complainant's contention that a combination of lack of solid evidence of the reason for non-use, combined with a history of other similar situations involving the same Respondent, making the same type of weak arguments, is enough to find bad faith here. The Complaint has also pointed to 2 other cases decided under the Policy where it was held that Mr. Colman [or his alter egos] had no rights or legitimate interests in other domain names. They are the LAURENT PERRIER and the SKIPTON Building Society cases.
7.10 The cases relied upon by the Respondent now fall to be addressed. First, the Rent Right case was decided under paragraph 4(a)(i), not 4(a)(ii), of the Policy. In the Marbil case, the domain name in issue was in actual commercial use by the Respondent, Korean Tour Company. The Dorset Police case turns on application of the US doctrines of fair use and free speech. In this area there is a clear divergence between Panelists applying rules and principles of US law and those applying other principles. The instant case is not one of fair use or free speech, but involves non-use and lack of convincing evidence of preparation for use over more than four years.
7.11 Take, for example, Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company [WIPO Case No. D2000-0878]. The Respondent used the domain name <canoninkjet.com> for its website at which it was selling genuine CANON inkjet products. Held, the Respondent had rights to sell CANON products but had no right or legitimate interest to use the CANON trademark for a domain name. Compare Canon USA Inc, Astro Business Solutions, Inc and Canon Information Systems, Inc v. Richard Sims [WIPO Case No. D2000-0819] where the domain name <canoncopymachines.com> was permitted in the context of a website selling CANON copiers. The same view that under US law reference to a third party trademark - even in a domain name - is fair where it is used to identify the types of products or services sold was taken in the Kittinger case [paragraph 6.2.6 above].
7.12 The approach in Case No. D2000-0878 is consistent with trademark case law in the European Union, the jurisdiction within which the parties in this case are located. The European Court of Justice decision in BMW v. Deenik [Case C-63/97 1999 1 CMLR 1099] concerned Mr. Deenik, a mechanic and trader in second-hand / used BMW automobiles who was not a part of BMW's authorised Dealer Network. He was also involved in the repair / servicing of BMW vehicles. Was Mr. Deenik entitled to promote his activities using the name / descriptor "BMW Specialist"? Held that a party can make use of a third party trademark only where necessary to indicate the origin of the goods or services. Such was fair use. It was not, however, fair use to advertise the business as "BMW Specialist" when this was not necessary and could well be understood as indicating that Mr. Deenik was an unauthorised BMW Distributor / Repairer, which he was not.
7.13 Although cases such as Dorset Police typically raise the free speech issue in relation to criticism websites in the context of bad faith use [paragraph 4(a)(iii) of the Policy], since that case has been cited by the Respondent in relation to paragraph 4(a)(ii) it will be further addressed in this part of the Discussion and Findings. Here, conflicting decisions arise depending upon whether or not Panels apply the concept of free speech enshrined in the First Amendment to the US Constitution. Domain names including the suffix sucks have been held to be consistent with a consumer right to publicise criticism of a brand owner. For example, wal-martsucks.com was held to be unobjectionable in Wal-Mart Stores Inc v. Richard MacLeod d/b/a For Sale [WIPO Case No. D2000-0662]. The same Panelist, a US attorney applied the same approach in a non-US context in relation to a dissatisfied shareholder site under the domain name <britanniabuildingsoceity.org> [Britannia Building Society v. Britannia Fraud Prevention WIPO Case No. D2001-0505].
7.14 On the other side of the coin, the domain names <walmart-canadasucks.com> and <guinessreallysucks.com> were both held to violate the Policy [respectively, Wal-Mart Stores Inc v. wallmartcanadasucks.com and Kenneth Harvey WIPO Case No. D2000-1104 and Diageo PLC v. John Zuccarini, Individually and t/a Cupcake Patrol WIPO Case No. D2000-0996].
7.15 But, this debate - interesting though it may be - is not relevant to the instant case for the simple reason that here the domain name in issue has not been used, whether fairly or unfairly.
7.16 The General Machine case is more helpful to the Respondent but it, as with all decisions under the Policy, is fact dependent. Would, for example, the majority Panelists in the J Crew case - where the Respondent was also the alter ego of Telepathy Inc - have decided the General Machine case differently?
7.17 Is the Respondent correct in saying that, on the evidence, the instant case does not fall fair and square within the cybersquatting category of cases and should be decided not under the Policy but by a Court? The America Online case turned on principles of US law relating to nominative or fair use. Since [as noted in paragraph 7.15 above] the domain name in issue here has not been used, such consideration is otiose. The J Crew case was decided on the facts found by the majority in the extract quoted from their Decision in paragraph 6.2.3 above. The issue, as stated in the Skipton Building Society case, always turns on the nature of the particular domain name in issue. It is to the Respondent's submissions in that respect that the Panel must now turn.
7.18 The Respondent asserts that he has been engaged since registration of the domain name in September 1997 in preparation for use of it for businesses which will provide Internet portal information and useful links to businesses and services in a variety of classifications and geographical areas, including the State of Espirito Santo, Brazil. What evidence is offered in support of this?
- First, the Respondent's own assertions to that effect in his affidavit.
- Second, an email exchange in December 1999 with Ms. Fiona Worthington at Schroeder Securities Ltd, now part of Citigroup. This hardly has the appearance of a serious venture with Schroeder Securities. It comprises one email from Ms. Worthington which concludes "Love and passion Fee."
There is absolutely no evidence of any follow up with Schroeder Securities which indicates demonstrable preparations to use Mr. Colman's collection of domain names - which include the domain name in issue - for the purposes stated in his affidavit.
- Third, Mr. Colman's website at www.pigsmightfly.com is not relevant to the domain name in issue.
- Fourth, although the Complaint points out that none of Mr. Colman's other domain names appear to incorporate the name of a State or City in South America, nor does he appear to have any business interests in or geographical connection with the State of Espirito Santo or any other South American State, this is not explained or refuted in the Response.
- Fifth, the Respondent's proposed use of the domain name as an Internet portal site featuring information about the State of Espirito Santo is, essentially, the same as the Respondent's proposed use for his domain name <skipton.com>, which was not accepted as believable by the Panel in that case [see, paragraph 5.2.2 above].
- Sixth, Mr. Colman's willingness to sell the domain name in issue to the Complainant first in mid 2000, and again in mid 2001 [see, paragraph 5.4 above] is hardly consistent with his allegedly ongoing preparations to use the same for the purpose of Internet portal information etc.
- Seventh, Mr. Colman's affidavit deposes to correspondence with business associates (plural) and to contacts with web hosting companies (also, plural) but the only evidence offered is of his connection with Mr. Barnett of Twenty Twenty Media. Had there been other associates and/or companies involved. Mr. Colman could be expected to have identified them.
- Eighth, as to Mr. Barnett's evidence, it amounts to no more than unsubstantiated assertions. Where, for example, is there any documentary evidence of the "extensive discussion and planning", the "preliminary design work", the "planning activities with business associates" or "the variety of options" considered? There is none, nor is there evidence of Mr. Barnett's company invoicing Mr. Colman for all this extensive planning, preliminary design work etc.
7.19 The assertions of Mr. Colman and Mr. Barnett must also be evaluated against the background of Mr. Colman's other activities with domain names registered during 1997, including another geographical name <skipton.com>. The evidence as to demonstrable preparations to use the domain name in issue given in the Response is wafer thin and unconvincing. The Panel concludes that the Complaint succeeds in showing that the Respondent has no rights or legitimate interests in the domain name in issue and, therefore, satisfies the second requirement of paragraph 4(a) of the Policy. This is not, on its facts, a case where the conflict of evidence and/or the complexity of the issues are such that they are more appropriate to be resolved by a Court rather than under the Policy. It is simply one where the Respondent has failed to carry the burden of establishing convincing evidence of good faith registration and preparation for use, once the Complainant raised valid reasons to question the good faith of the Respondent.
Registered and Used in Bad Faith
7.20 As to the burden of proof, the cases cited by the Respondent are not material. The Diamond Shamrock case involved a quite special and different fact set, where the Complainant's registered trademark issued after registration of the domain name <cornerstore.com>. Further, the Panel in that case considered the Complainant's CORNER STORE trademark particularly generic. By comparison, in this case the Complainant's ESPIRITO SANTO category one trademark is registered in some 15 European States and in the USA. Finally, there is nothing in the Diamond Shamrock Decision which indicates that, although the Respondent - like Mr. Colman in this case - was in the business of registering and selling domain names, there was a background history of falling foul of the Policy and a national court in relation to registration of third party trademarks as domain names.
7.21 As to the Los Angeles County Bar Association case, on the evidence there had been actual bona fide use by the Respondent of the domain name <smartlaw.com> by his Law Firm in Ontario, Canada over the period 1997 to 1999. The difference from the instant case where there has been no use of the domain name in issue over 4 years is readily apparent.
7.22 Mr. Colman then suggests 3 possible good faith reasons for registering his domain names incorporating the names of well-known United Kingdom football / soccer clubs [see, paragraphs 6.1.3 and 6.2.87 above] and third party trademarks. This is with a view to countering the Complainant's allegation of a pattern of conduct under paragraph 4(b)(ii) of the Policy.
7.23 The first, relates to establishment of an Internet portal, preparations for which the Panel has already decided (supra) have not been demonstrated on the evidence. The second is that the names of football clubs could have been registered for establishing fan clubs. This is, of course, a possibility but the Response adduces no evidence that any of Mr. Colman's registrations were so used. Further, the Panel is not convinced that such use of a domain name incorporating a third party trademark is necessarily fair and unobjectionable under the Policy. Each case will depend upon its particular facts. Since the issue does not arise for decision here, further comment in this respect is unnecessary. The third relates to criticism websites. The Panel has identified the conflicting approaches which have been taken under the Policy in this respect in paragraphs 7.13 and 7.14 above. Again, since there is no evidence that the domain names in issue were registered or used by Mr. Colman for this purposes, it is not an issue to be decided in this case.
7.24 Mr. Colman denies that the previous UDRP cases in which he has been involved indicate a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy. As to the Laurent Perrier case, Mr. Colman's attempt to distance himself from involvement is rejected. He was the initial registrant of the two domain names. He attempted to evade the likely Orders of the French Court. The Decision of the Panel clearly directed its holdings of bad faith under paragraph 4(b)(ii) of the Policy against Mr. Colman as the alter ego of the fictitious Respondents.
7.25 As to the Skipton Building Society case, the Panel clearly had no doubt in finding bad faith established under paragraph 4(b)(ii) of the Policy; see, the extracts from the Panel's conclusions quoted in paragraph 5.2.4 above.
7.26 As to the W H Smith case, the Panel refers to its comments in paragraph 5.3.4 above. The outcome of that litigation is clearly known to Mr. Colman but he has declined to disclose it in the Response. The Panel is entitled to draw such inference from this as it considers appropriate. If the case exonerated Mr. Colman from bad faith registration of the domain name <whsmith.com>, he would be expected to have so stated in the Response in this case. No such statement has been made and the Panel concludes that Mr. Colman had no good faith justification for hijacking the well known W H SMITH name and mark for a domain name.
7.27 Mr. Colman rightly states, in the Panel's view, that merely responding to a third party offer to acquire a domain name is not evidence of bad faith registration and use. The 4 cases cited by Mr. Colman are consistent with that position.
7.28 Mr. Colman maintains that non-use of the domain name in issue is not an indication of bad faith registration or use. As a general principle this Panel agrees that mere non-use is not, alone, conclusive of bad faith, however, that is not the point, as this Panel notes in its discussion of the Telstra case in paragraph 6.2.8 above. What the Panel Decision in Telstra holds is that an offer for sale of an otherwise unused domain name can constitute use for the purposes of paragraph 4(a)(iii) of the Policy. This particular aspect of the Telstra Decision has been widely followed in numerous Panel Decisions under the Policy and is regarded by this Panel as correct on the facts of that case.
7.29 Finally, Mr. Colman relies upon his affidavit and that of Mr. Barnett as demonstrating lack of bad faith registration and use of the domain name by reference to any of the circumstances prescribed by paragraph 4(b) of the Policy. The Panel's view of the evidential value of those affidavits is set out in paragraphs 7.18 and 7.19 above. Insofar as they address demonstrable preparations to make good faith use of the domain name they are unconvincing.
7.30 The WPP case in the Panel's opinion does not assist the Respondent. It involved actual use of the disputed domain name by the Respondent, WPP Agency SA. The Complaint failed under both paragraphs 4(a)(ii) and (iii) of the Policy and on the facts bears no relationship to the instant case.
7.31 Evidence of bad faith is not restricted to the circumstances enumerated in paragraph 4(b) of the Policy, which are stated to be without prejudice. The Complaint also points Mr. Colman's practice in other cases of taking active steps to conceal the true identity of the registrant, another circumstance which the Panel in Telstra took into account when assessing bad faith. Here we have Mr. Colman's pattern of conduct of transferring domain names in the face of litigation; the two Mr. Perrier in Nassau, Bahamas and Messrs John Skipton and William Harold Smith in the USA [see, paragraph 6.1.3 above].
7.32 The Complaint also points to the Respondent's asking price of £10,000.00 and to his statement to the Complainant in July 2000 that he was holding off from contacting other possible buyers as indicia of bad faith intent to extract as much as possible from the trademark owner. The Panel agrees that this is damning evidence.
7.33 Then there is the issue of whether or not Mr. Colman had actual notice of the Complainant or its ESPIRITO SANTO trademarks. He denies that he did. The fact, however, remains that the category one registrations date from the mid 1980's and the Community Trade Mark application, which covers all 15 European Union Member States, was filed April 1, 1996 and its existence could have readily been ascertained from the OHIM website before the domain name in issue was registered in September 1997. The Community Trade Mark - in effect, one Federal registration for Europe - was widely publicised in 1996 when the CTM system came into operation and was an obvious and readily available place to check for the existence of potential prior trademarks, apart from the fact that the Complainant is listed on the London, New York and Luxembourg Stock Exchange.
7.34 In July 2001 Mr. Colman requested the Complainant to provide particulars of any trademark registrations. He points to this as indicative of his lack of knowledge of the Complainant's trademarks either then or when the domain name in issue was registered. The Complainant characterises this differently. The Complaint suggests that from the Respondent's earlier domain name litigation he was well aware of the Policy and his request was for information to enable him to evaluate whether or not to accept the Complainant's final offer of £5,000.00 or risk a Complaint under the Policy. Whichever interpretation is correct, Mr. Colman certainly had constructive knowledge of the ESPIRITO SANTO registered marks, if for no other reason than the prominence of the Complainant and its affiliates in the UK and Europe.
7.35 The Rules [paragraph 10(d)] provide that the Panel shall determine the relevance, materiality and weight of the evidence. On the evidence before it the Panel takes the view that the Complaint succeeds in establishing that the Respondent registered the domain name in order to prevent the Complainant from reflecting its ESPIRITO SANTO mark in a corresponding domain name, which is consistent with a pattern of such conduct in the past by the Respondent. Neither the evidential nor the legal issues here are of the complexity envisioned by the dissenting Panellist in the AOL and J Crew cases, such that they are not suitable for decision under the Policy but ought properly to be determined by a Court. Mr. Colman has a history of bad faith registration and use of third party trademarks. The fact that he also conducts a quite legitimate business of registering and selling and/or seeking to exploit domain names comprising common or generic words is not the issue here. It is, as the Panel in the Skipton Building Society case said, a question of the nature of the particular domain name in question and the facts surrounding the registration and use of each domain name. Looking at the totality of the evidence in this case, the Panel concludes that the Complaint succeeds in meeting the twin requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that the registration of the domain name <espiritosanto.com> be transferred to the Complainant.
G Gervaise Davis III
Dated: January 22, 2002