WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Damon Hill Grand Prix Limited v The New Group

Case No. D2001-1362

 

1. The Parties

The Complainant in this administrative proceeding is Damon Hill Grand Prix Limited a private company incorporated in Jersey of PO Box 83, Ordnance House, 31 Pier Road, St. Helier, Jersey JE4 8PW represented by Julian Connerty, Solicitor and Partner of Clyde & Co., 51 Eastcheap, London, EC3M 1JP, England.

The Respondent, The New Group, is apparently a business name of Jaymz Edwards, of 1190 Wilson Avenue, Kelowna, British Columbia V1Y 6Y6, Canada.

 

2. The Domain Name and Registrar

The domain name in issue is <damonhill.com> ("the Domain Name").

The Registrar is Intercosmos Media Group Inc. ("Intercosmos").

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received on November 15, 2001, an electronic version of the Complaint and on November 19, 2001, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On December 17, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On December 4, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On December 13, 2001, Intercosmos transmitted via e-mail to the Center its Verification Response, stating that the "current registrant" is "Edwards, Jaymz", but also recording under "full contact details on the domain" that the Registrant is The New Group of the above address. The Administrative, Technical and Billing Contacts are all stated to be Edwards, Jaymz of the above address.

A Response was filed on January 7, 2002. On January 14, 2002, the Complainantís representative lodged a Supplemental Filing, requesting that it be placed before the Panel.

On January 30, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision was scheduled to be forwarded to the Center by February 13, 2002.

On February 20, 2002, the Panel issued a Procedural Order, seeking further information from the Respondent. In compliance with that Order, the Respondent filed a further submission and the Complainant commented on it. Pursuant to the same Order, the Panelist is due to forward his decision to the Center by March 8, 2002.

 

4. Factual Background

(a) The Complainant is the registered proprietor of United Kingdom Trade Mark No. 2033327 dated September 12, 1995, in respect of the mark DAMON HILL ("the Trade Mark"). The Trade Mark covers goods in Classes 6, 9, 16, 25 and 28.

(b) The Domain Name was registered with the Registrar in question on November 9, 1998.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:-

(i) The Domain Name is identical to the Trade Mark.

(ii) "Damon Hill" is associated worldwide with the former World Champion Formula One racing car driver of the same name. The Complainant is the owner of all the intellectual property rights associated with Damon Hill.

(iii) The Complainant is a private company incorporated in Jersey, established to exploit the name, fame, image and reputation of Damon Hill. The Complainant has a service agreement with Mr. Hill and manages all enterprises relating to the marketing and merchandise of goods and products associated with Damon Hill.

(iv) The Respondent seems to make use of several different names. The Domain Name is registered to the "New Group", with an address in Canada and the contact name of Jaymz Edwards. The same address, and contact name of Jamie Edwards is associated with a company called Infinity Webworks. It now seems from correspondence that Jamie Edwards of the same address purports to run a company called The Dam on the Hill.

(v) In or around April 2000, the Complainant attempted to register the Domain Name and discovered that it had already been registered to the Respondent on November 9, 1998. Circumstances indicate that the Domain Name was registered primarily for the purpose of selling the name to the Complainant at a cost considerably in excess of the registration fee.

(vi) On July 27, 2000, the Complainant, through its legal representatives, wrote to the Respondent requesting the transfer of the name to the Complainant due to the goodwill owned by, and the intellectual property rights vested in, the Complainant. An offer was made to recompense the Respondent with the price of the registration fee.

(vii) On August 9, 2000, Jamie Edwards of the Respondent replied on headed writing paper which was marked with a logo and the words "The Dam on the Hill". The letter made a demand for $14,750 for the transfer of the Domain Name. The amount was said to be in payment for "all the time and money spent by myself on the projects associated with the domain". The letter stated that the writer ran a web design company and that he had no "Intellectual Property or Good Will associated with Formula 1 or Damon Hill Grand Prix Limited in any way". He also stated that he had not "broadcast any html over the Internet from that domain for approximately one year".

(viii) A company search in Canada has revealed that the "The Dam on The Hill" cannot be traced in the Canadian Federal and British Columbia Provincial Departments of corporation. It seems that the company does not exist and that the Respondent has claimed to run a business with the same name as the Complainant to justify the breach of the Complainantís intellectual property rights and to provide a spurious reason for the demand for payment for transfer of that name.

(ix) By letter dated September 13, 2000, the Complainantís legal representatives wrote again to the Respondent to ask him to comply with the request to transfer the name, and when no response was received wrote again on October 9, 2000. The Respondent replied by letter dated October 30, 2000, claiming that he would incur considerable costs in changing the e-mail, which he claimed to have been using for two years. A further letter was written on April 6, 2001, by Canadian lawyers instructed by the Complainant repeating the previous requests for transfer of the Domain Name, but no reply was received from the Respondent.

(x) There has been no explanation for why the Respondent has not registered the more relevant domain name <thedamonthehill.com/org/net> or <damonthehill.com/org/net>. These domain names are available.

(xi) There further seems to be no explanation why the company should adopt an inherently nonsense name with no obvious relation to the industry that the Respondent claims to be part of.

(xii) On first entering the Respondentís website one sees a piece of text in small print that states as follows: "sorry, this domain is not for sale and we are not affiliated with Damon Hill Grand Prix in any way". This message appears for approximately seven seconds prior to the home page appearing. In even smaller text on that seven-second page, there is a piece of text that states: "Are you looking for the Race Car Driver Damon Hillís site? <<<click here to go to his official website>>>". On clicking on that link, a blank page appears.

(xiii) The website <www.damonhill.com> provides a list of projects that are clearly Internet related.

(xiv) It is the opinion of the Complainant that the Domain Name was registered for the sole purpose of selling the name to the Complainant, as owner of the Trade Mark for valuable consideration in excess of the Domain Name registrantís out of pocket costs directly related to the Domain Name.

B. Respondent

The Response has been filed by James Edwards, who has replied to each of the Complainantís submissions. So far as seems material, the Response states:-

(i) It is admitted that the Domain Name is identical to the Trade Mark.

(ii) In reply to A.(iv) above (concerning the Respondentís use of various business names):-

"I often have several business developments being worked on simultaneously. One of these businesses concepts was a network of websites reporting on new releases within many different industries. Some examples include <newcomputing.com<, <newgaming.com>, <newboating.com<, <newdriving.com>, etc. As an Internet consultant many business concepts and plans come my way, this is the nature of the business I am in. At the time I registered <damonhill.com> I was (and still am) registered with Networksolutions.com. Part of the registration process requires you to build a profile. You are then issued what is called a NIC handle. This allows for easy domain registration without having to fill in all your information each and every time you register a domain. When I registered damonhill.com my NIC handle reflected the previous business name I was going under. Infinity Web Works was a loose partnership I was involved with that is no longer in operation. Back in 1998 when I registered the domain in question it was a lengthy process to change the contact and company information associated with a domain so it was never changed to reflect the new business name. At the time I did not think this would be an issue at all. The business name that the domain is registered in does not in any way reflect the absence of an actual business."

(iii) The Domain Name "was not purchased with the intent to sell to the Complainant. The domain has never been offered for sale to anyone including the Complainant. In fact on the website located <www.damonhill.com > it states that the domain is not for sale. Here is the exact wording from the main page of the website. "Sorry, this domain is not for sale and we are not affiliated with Damon Hill Grand Prix Limited in any way."".

(iv) In reply to A.(vii) above:-

"Denied. The offer was made FIRST to me to pay me for the domain to be transferred. The purchase offer mentioned that they would compensate me for the cost paid for the initial registration. My response mentioned that even if I was interested in selling the domain to the Complainant, and I am not, then there is a lot more cost that I have put into it other than just the initial registration. I then tallied up all the costs that I had incurred, that is where the figure came from. If they were going to compensate me then there was more to be compensated for other than the initial cost of the registration."

(v) In reply to A.(viii) above the Response points out that "sole proprietor" businesses would not show up on a search of incorporated businesses.

(vi) In reply to A.(ix) above, which is admitted, the Response attaches 8 e-mails addressed to <info@damonhill.com> and spanning the period February to November 1999.

(vii) The Respondent, in reply to A.(x) above, explains his reasons for choosing the Domain Name as follows:

"About 1.5 km from the town I grew up in, and about 12 km from where I do business now, there is a small river called powers creek. It is located in the town of Westbank British Columbia. On this river there is a dam, powers creek dam to be exact, and it is a very popular hiking destination as it is at the top of a hill. Many people hike to the dam and have picnics etc. It is one of my favorite places to go in the summer and is well know in this area. It is therefore not a nonsense name but a quite relevant, albeit geographically specific name."

(viii) In reply to the charge (in A.(xiv) above) that the Domain Name was registered for the sole purpose of selling it to the Complainant, Mr. Edwards replies:

"This may be the opinion of the Complainant, but it is simply not true. I have had the domain for 4 years, why had a dispute not taken place earlier? I reiterated many times that the domain is not for sale, I do not want to sell it, and I did not register the domain so that I could re-sell it. I am not trying to confuse the Mark, I hardly think that a web design company that has a Dam on a Hill could be confused with a race car driver, especially when I mention that if anyone is looking for the race car driver to click on a link. I use this domain for my own business use, and have gone out of my way to make clear that I am not Damon Hill Grand Prix Limited. Anyone would have a very hard time thinking that I am that entity. One other thing, I do not want to sell the domain, I have also made that very clear on the website and in my correspondence to the Complainant."

C. Complainantís Supplemental Submission

This document has been considered by the Panel, but he finds it of little assistance. It is largely argumentative.

D. Respondentís Response to Procedural Order

The Procedural Order requested the Respondent to provide further information about the issue of the legitimate fair use claimed by the Respondent, such as;

- Correspondence to/from the firm The Dam on the Hill (other than those 8 e-mails addressed to <info@damonhill.com> which were attached to the Response).

- Marketing material, business plans etc. for the firm The Dam on the Hill.

- A breakdown of the sum of $14,750 referred to in the Respondentís letter of August 9, 2000.

- Details of the registration of the domain name with search engines.

- A brief explanation for why the Respondent has not registered the domain name <thedamonthehill.com/org/net> or <damonthehill.com/org/net>.

The Respondentís further Response can be summarized as follows:-

(i) Many pieces of correspondence were lost when the Respondent got his new computer. A bundle of further e-mails is exhibited, but all bear a date in 2002.

(ii) There is no business plan, but a flyer for "The Dam on the Hill" is exhibited.

(iii) The sum of $14,750 is broken down into 19 items, all but 3 to the nearest $100. The items include a desk, computer, computer monitor, rent and a briefcase. No receipts are exhibited.

(iv) A list of 18 search engines is provided, and it is asserted that registration has taken place a number of times, estimated to be at least 4 times over the past four years.

(v) "As mentioned in my response to the complaint, I have not registered <thedamonthehill.com/org/net> or <damonthehill.com/org/net> because I already have a domain name that fits my needs. The other domains that you mention have more letters in them and are easier to spell wrong."

E. Complainantsí further comments

The Complainants make the following observations on the recent e-mails referred to in D(i) above:-

(i) The address used in the e-mails (all January 2002) by the senders are not consistently addressed to <info@damonhill>, but rather other e-mail addresses of the Respondent such as <jamie@cnx.net> and <jamie@valongroup.com>, and the mail seems to have then been automatically routed to <info@damonhill.com>. This seems to indicate that not all the Respondent's "clients" would be affected by the transfer of the domain name.

(ii) An e-mail dated January 8, 2002, submitted by the Respondent, has a heading in the Subject line that states "Is this a new address for you guys?" which implies that this sender is not familiar with the address.

 

6. Discussion

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.

As to element (i), the Panelist and the parties all agree that the Domain Name is identical to the Trade Mark.

As far as element (ii) of paragraph 4(a) of the Policy is concerned, there is one preliminary issue that arises in this case Ė who is the Respondent? In its Supplemental Submission the Complainant seeks to treat The New Group, Mr. Edwards himself, and The Dam on the Hill as separate entities, and complains that no evidence has been produced to show what is the relationship between them. To the Panelist, as an English lawyer, it seems plain that there is only one legal entity present on the Respondentís side, and that is Mr. Edwards himself. The New Group and The Dam on the Hill are simply two business names that have been used by him. If the situation under Canadian law were otherwise, the Panelist would have expected the Canadian lawyers referred to in paragraph 5A(ix) above to have made an issue of it. Their letter, which is exhibited to the Complaint is addressed to Jamie Edwards, inter alia:-

(a) assumes "that the New Group is simply a trading style that you personally use as you indicate in your August 9, 2000 letter that you own the domain name"; and

(b) states that "it appears that it is your position that you are using [the Domain Name] for your Internet consultancy business by the name of THE DAM ON THE HILL Ö".

From the above quotations (in the context of the Canadian lawyersí letter as a whole) it is clear that the Canadian lawyers consulted by the Complainant also regard Mr. Edwards as the relevant legal person here.

As to the merits on the issue of rights or legitimate interests, the Respondent faces the problem that in 1998 Damon Hill was one of the most famous motor-racing drivers in the world, and it is inconceivable that the Respondent was unaware of this fact. It was wholly unnecessary for the Respondent even if at the time he genuinely wished to run a business under the name "The Dam on the Hill", to have selected only the three words "dam", "on", and "hill". This is particularly the case when the natural way of pronouncing "damonhill" is "daymonhill". The Respondent has failed to justify his adoption of the Domain Name, and given the fame of the driver Damon Hill, the Panelist concludes that the Respondent has no rights or legitimate interests in the Domain Name.

It may be the case that the Respondent has been developing a business under the name "The Dam on the Hill". No complaint is made about this, and it seems to this Panelist from the aspect of the UDRP, that the Respondent may continue with his plans by a simple change from the Domain Name to, say, <thedamonthehill.com>. The e-mail referred to by the Complainant in paragraph 5.E(ii) above would seem to suggest that the Domain Name as such is not well-known to the Respondentís contacts.

So far as element (iii) is concerned, the onus is on the Complainant to show, on the balance of probabilities, that the Respondent (a) registered and (b) is using the Domain Name in bad faith. Under paragraph 4(b)(i) of the Policy the following shall be evidence of the registration and use of a domain name in bad faith:-

"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"

The Complainant asserts (see para. 5.A.(xiv)) above that the Domain Name was registered for the sole purpose of selling it to the Complainant. The Respondent denies this, and has provided a breakdown of the sum of $14,750 which he said in August, 2000, he required "for all the time and money spent by myself on the projects associated with the domain". That breakdown (unsupported by contemporaneous receipts) includes items which by their very description can in no way be "costs directly related to the domain name", and the cost of which amounts to several thousand dollars. Whether the other costs listed by the Respondent are directly related to the Domain Name cannot be established on the face of a brief description, such as "Logo Design - $500.00", but no doubt many of these costs would not be lost if the Respondent were to adopt "<thedamonthehill.com>" as his domain name.

In the circumstances, the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith.

 

7. Decision

In the light of the findings in paragraph 7 above, the Panelist concludes that:-

- the domain name <damonhill.com> is identical to the trade mark DAMON HILL of the Complainant;

- the Respondent has no rights or legitimate interests in the domain name;

- the domain name has been registered and is being used in bad faith.

Accordingly, the Panelist orders that the Domain Name <damonhill.com> be transferred to the Complainant, Damon Hill Grand Prix Limited.

 


 

Christopher Tootal
Sole Panelist

Dated: March 8, 2002