WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSBC Holdings Plc v. Philip McCarthy MCG/First Direction Mortgages Limited
Case No. D2002-0644
1. The Parties
The Complainant in this administrative proceeding is HSBC Holdings Plc, a company incorporated in England and Wales.
The Respondents in this administrative proceeding are Philip McCarthy MCG, an individual, and First Direction Mortgages Limited, a company registered in England and Wales.
2. The Domain Name and Registrar
The domain name in this administrative proceeding is <firstdirectmortgages.com> (hereinafter "the Domain Name").
The registrar with which the Domain Name is registered is Tucows, Inc. (hereinafter the "Registrar").
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on July 11, 2002, and in hard copy on July 15, 2002.
On July 15, 2002, the Center sent an acknowledgement of receipt of complaint to the Complainant. On July 15, 2002, the Center sent a Request for Registrar Verification to the Registrar and the Registrar responded on July 15, 2002, confirming that it is the registrar of the Domain Name, <firstdirectmortgages.com>, that the First Respondent is the current registrant of the Domain Name, providing details of the Administrative Contact and Technical Contact for the registration, that the Policy applies in respect of said registration, that the language of the Service Agreement is English, and that the said registration was active at that time.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On June 16, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondents. The Notification was sent to the Respondents by courier (with enclosures), by facsimile (Complaint without enclosures), and by email (Complaint without attachments). A copy of the Notification was sent to the authorised representative of the Complainant by email. Further copies of the Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by email (without enclosures).
The Notification advised the Respondents that, inter alia, the Administrative Proceedings had commenced on July 16, 2002, and that the Respondents were required to submit a response to the Center on or before August 5, 2002.
The Respondents failed to submit a Response.
On August 7, 2002, the Center sent a Notification of Respondent Default to the Respondents by email with copies of the Notification of Default being sent to the Complainant, the Registrar and ICANN.
On August 19, 2002, the sole member of the Administrative Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence in accordance with paragraph 7 of the Rules. The Center proceeded to appoint Charters Macdonald-Brown as the sole panelist for the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the registered proprietor of a number of trade marks in the UK incorporating the name FIRST DIRECT including the following marks which pre-date the date of registration of the Domain Name:
- the series FIRST DIRECT and FIRSTDIRECT, registered in the UK with effect from March 29, 1989, in class 36 (registration number 1378030);
- FIRST DIRECT - registered in the UK with effect from December 23, 1999, in class 36 (registration number 2218238);
- FIRST DIRECT BUSINESS - registered in the UK with effect from January 26, 1996, in class 36 (registration number 2054144);
- FIRST DIRECT BUSINESS TO BUSINESS - registered in the UK with effect from November 18, 1996, in class 36 (registration number 2116004);
- FIRST DIRECT.COM - registered in the UK with effect from December 23, 1999, in class 36 (registration number 2218165).
The Complainant is also the registered proprietor of a further 55 trade marks in various territories throughout the world which compromise the mark FIRST DIRECT (either alone or as a series with FIRSTDIRECT). The Complainant and its subsidiary HSBC Bank Plc (under its trading names First Direct Bank and First Direct) have registered <firstdirect.com>, <first-direct.com>, <firstdirect.net>, and <first-direct.org> as domain names.
The Second Respondent, First Direction Mortgages Limited, is alleged by the Complainant to have used the Domain Name, <firstdirectmortgages.com>. The First Respondent Philip McCarthy MCG is the registered proprietor of the <firstdirectmortgages.com> domain name.
5. Parties' Contentions
The Complainant claims that the Domain Name, <firstdirectmortgages.com>, is identical or confusingly similar to a trade mark in which the Complainant has rights; that the Respondents have no rights or legitimate interest in respect of said Domain Name; and that the Domain Name was registered and is being used in bad faith. The Complainant requests the Administrative Panel to direct the Domain Name be transferred to the Complainant.
The Complainant submits that the trade mark FIRST DIRECT is used by the Complainant in connection with banking and financial services, including mortgages. The Complainant has provided the Administrative Panel with copies of First Direct (the Complainant's subsidiary, HSBC Bank Plc, has a division which trades in the UK under the name First Direct) interest rate leaflets sent to prospective and new customers in 1990 and 1996, a copy of an advertisement placed in "What Mortgage" magazine in 1999, a statement insert sent to customers in 1999, a copy of a flyer sent to prospective mortgage customers in 2000, and an extract from First Direct's website in 2000 referring to First Direct Mortgages.
The Complainant submits that it has established a strong reputation in relation to the provision of mortgages having been recognised as the best centralised lender and by "What Mortgage" magazine each year for the period 1995 to 2001. The Claimant's group is also submitted to have an operating income for the year ended 2001 of $25,888,000,000 and operating profit of $7,153,000,000, and First Direct's pre-tax profits for the financial year ended 2001 are stated to be £33 million.
The Complainant claims to have invested significant resources in establishing a prominent internet presence, including First Direct's on-line advertising spend of £220,000 from January to June 2000, prior to the registration of the Domain Name.
The Complainant claims that the Domain Name, <firstdirectmortgages.com>, is identical to the Complainant's trade mark because the distinguishing element of the Domain Name is "FIRST DIRECT" and "mortgages" is said to be merely descriptive of the services provided by the Complainant. Reference is made to Quixtar Investments, Inc v. Denis Hoffman, WIPO Case No. D2000-0523, where the addition of the generic terms "mortgage" and ".com" were held to have little if any effect on the identity between the Domain Name and the Complainant's trade mark "QUIXTAR". Alternatively, the Domain Name is said to be confusingly similar to the Complainant's trade mark as the term "mortgages" refers directly to the services offered by the Complainant under the trade mark.
The Complainant submits that the First Respondent registered the Domain Name in order for the Second Respondent to trade on and commercially profit from the Complainant's goodwill and reputation. Reference is made to Madonna v Dan Parisi, WIPO Case No. D2000-0847. Although the Second Respondent was initially registered under the name First Direct Mortgages Limited, its name was subsequently changed to First Direction Mortgages Limited following a complaint by the Complainant. The Complainant submits that the Respondents have effectively admitted that they have no rights or interests in the Domain Name by rendering the Domain Name unavailable. The Complainant also submits that there is no relationship between the Complainant and the Respondent which would give rise to any licence, permission or rights by which the Respondents could use the Complainant's trade marks or the Domain Name.
The Complainant submits that the Domain Name should be considered as having been registered and used in bad faith by the Respondents because of their intention to trade on and commercially profit from the Complainant's goodwill and reputation. Further the Complainant submits that it should be inferred that the First Respondent was aware of the Complainant's reputation at the time of the registration of the Domain Name. The Complainant also relies on the First Respondent's unwillingness to transfer the Domain Name, despite the fact that it was no longer in use, except for payment of £10 million as a further indication of the First Respondent's bad faith. Reference is made to Scholastic Inc v Applied Software Solutions, WIPO Case No. D2000-1629 and American Online Inc v Yateck Communication Inc, WIPO Case No. D2001-0055.
The Complainant also refers to correspondence between the Complainant's representative and the Respondents. The Complainant has provided the Administrative Panel with an attendance note of a conversation and various open correspondence. The Complainant has also provided the Administrative Panel with copies of pages from the website to which the Domain Name resolved, which were downloaded on December 12, 2001, and May 8, 2002.
As stated above, the Respondents did not provide a response to the Complaint.
6. Discussions and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondents is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have 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.
(i) Identical or confusingly similar
The Administrative Panel accepts the Complainant's submission that the Domain Name, <firstdirectmortgages.com>, is identical to the Complainant's FIRST DIRECT trade mark. "FIRST DIRECT" is the dominant element of the Domain Name and the addition of the word "mortgages" to the trade mark is merely descriptive of the services provided by the Complainant. In any event, even if the Domain Name was not identical it would still be confusingly similar to the trade mark and the addition of the word "mortgages" would not reduce any risk of confusion among internet users.
(ii) Rights or legitimate interest
The Administrative Panel accepts that the Respondents must have known of the Complainant's reputation and goodwill in relation to the FIRST DIRECT trade mark. While the Respondents have established a website offering mortgage services, it cannot be bona fide use of the Domain Name in connection with the offering of the services because the Respondents were aware of the Complainant's reputation and goodwill and they have adopted the Complainant's trade mark for their own use, in order to benefit from the Complainant's goodwill and reputation without the authority or licence of the Complainant.
(iii) Bad Faith
The Administrative Panel accepts that the Respondents must have known of the Complainant, its goodwill and its trade mark FIRST DIRECT prior to registering the Domain Name, <firstdirectmortgages.com>. The use of the identical mark and the creation of a likelihood of confusion, affiliation or endorsement of the website is sufficient to support the allegation of bad faith.
Further, the Administrative Panel regards the offer to assign the Domain Name for £10 million as further evidence of the Respondents' bad faith because although the number itself may be a "throwaway" remark, it clearly evidences that the Respondents were not prepared to transfer the website for an amount to cover their out-of-pocket costs, despite the fact that the website was no longer in use.
With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules, it is the decision of the Administrative Panel that the Complainant has established that the Domain Name, <firstdirectmortgages.com>, is confusingly similar to the trade mark FIRST DIRECT in which the Complainant has rights, that the Respondents have no rights or legitimate interest in the Domain Name and that the Respondents have registered and are using the Domain Name in bad faith.
The Administrative Panel therefore directs that the Domain Name, <firstdirectmortgages.com>, shall be transferred to the Complainant.
Dated: September 3, 2002