WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vista Computer Services Limited v . Ankostuff Limited
Case No. D2002-0759
1. The Parties
The Complainant is Vista Computer Services Limited an English registered company whose registered address is at Valency House, Batchworth Lane, Northwood, Middlesex, HA6 3HD, United Kingdom. It is represented by Messrs Memery Crystal of 31 Southampton Row, London WC1B 5HT, United Kingdom.
The Respondent is Anko Stuff Limited a company registered in England whose registered office is at 20-22 Bedford Row, London WC1R 4JS, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <vistacomp.net>. The registrar with whom the domain name is registered is Tucows Inc of 96 Mowat Avenue, Toronto, ON, M6K 3M1 Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the the Center") on August 14, 2002, by email. Acknowledgement of receipt of the Complaint was also given on August 14, 2002. A request for registrar verification was made to the Registrar by email on August 14, 2002. On the same day the Registrar confirmed that the domain name was registered by the Respondent Ankostuff Limited with an administrative contact Robin Tobin of 20-22 Bedford Row, London London WC1R WC1R 4JS.
Notification of the Complaint and Commencement of Administrative Proceedings was given to the Complainant on August 26, 2002, by post and by email. No Response was received from the Respondent and accordingly Notice of Respondent's default was given by email to the Respondent on September 18, 2002. It would appear that nothing further has been heard from the Respondent.
On October 2, 2002, an administrative panel consisting of a single member Mr. . Clive Clive Thorne was appointed with a due decision date of October 16, 2002. The Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that the appropriate fees have been paid by the Complainant. No interim orders have been made by the Panel. The language of the administrative proceedings is English.
4. Factual Background
The Complainant is a UK subsidiary of VISTA International, an American company which has built up a substantial reputation and goodwill as a worldwide provider of software services and solutions in the book publishing industry. Both the UK and US companies trade as "VISTA". Such services and solutions are provided by a relatively small number of companies, of which VISTA is the largest and most significant provider.
VISTA International was founded in 1977 and provides global support to its international customer base from offices in the UK, mainland Europe, North America and Asia Pacific region. The Complainant was incorporated on May 14, 1992, as a wholly owned subsidiary of Vista International to market and sell VISTA International Services and Solutions in the UK. It has offices in Buckinghamshire, England employing between 60 to 70 staff and contractors. VISTA turned over £5.4 million in 1998 to 1999, £6.6 million in 1999 to 2000 and £6 million in 2000 to 2001.
The Complainant has marketed its services and solutions at the VISTA website at "http://www.vistacomp.com" since 1997. The Complainant relies on the ".com" domain name to attract business and spends very substantial sums annually promoting its services and solutions.
It apparently places great value on the relationships it builds with customers, industry associations and other technology leaders. It enhances its presence in this highly specialised industry by conducting extensive publishing industry research. The Complainant actively participates in publishing industry communities such as the Book Industry Council, Book Industry Study Group and international standards bodies. The Complainant is a sponsor of the British Book Award for supply chain performer of the year. It services book and journal publishers worldwide in all publishing sectors including many of the largest publishers in the world such as Harper Collins, Holtzbrinck Publishers, Macmillan and divisions of Reed Elsevier and Wolters Kluwer. According to the Complainant it is established as a company with a strong reputation and an established and well known goodwill worldwide. It submits that part of its reputation and goodwill attaches to and is derived from the ".com" domain name.
The Panel notes that evidence of the Complainant's reputation and goodwill is set out in testimonials given by the Complainant's customers, recent press releases, media coverage and case studies, copies of which are exhibited at Annexes I, J, K and L to the Complaint.
The Complainant is also the registered proprietor of two trademarks for the word VISTA in the United Kingdom. Trademark registration number 1210742 registered on March 16, 1990, for goods and services in class 9 and registration number 1231798 registered on May 13, 1994, for goods and services in class 16. Copies of these registrations are exhibited at Annex M to the Complaint.
The Complainant has also been involved in previous proceedings with the Respondent relating to the domain name "vistacomp.co.uk under the terms of the Nominet UK Dispute Resolution Service. A decision of the Nominet expert ordering a transfer of this domain name from the Respondent to the Complainant is exhibited at Annex F to the Complaint. The Panel notes that the Nominet independent expert found that the Complainant had rights enforceable under English law by reason of the Complainant's reputation and build up of goodwill since 1997 in the name "VISTACOMP".
Taking into account that there is no submission from the Respondent the Panel accepts the above evidence of the Complainant's trading rights.
According to the Complainant the Respondent is a new entrant to the publishing market. Its services and solutions are illustrated in printouts from its website which are annexed to the Complaint at Annex E. It should be noted that the Respondent's website has changed a number of times and the extracts set out at Annex E1, E2 and E3 differ. The Panel notes that at Annex E1 the Respondent describes its "mission statement" as; "we intend to produce cross platform publishing solutions which reflect the way publishing actually works and are within the reach of all". At Annex E there is simply a reference to the Respondent being in the process of adding new content to its site, "so please check back later".
At the end of 2001 the Respondent apparently notified the Complainant of its intention to use images taken from the Complainant's website and subsequently printed materials and comments about the Complainant. The Complainant alleged these defamed it and its products and services. The Complainant responded through its solicitors requesting that the Respondent cease and desist using such images and printing such statements.
The Respondent then registered the domain name "www.vistacomp.co.uk" and redirected Internet users to its website. This was the subject of Nominet proceedings referred to above. The Panel has been directed by the Complainant to paragraph 11 of the Nominet decision for a full chronology of the events relating to the .co.uk dispute.
Following the Nominet decision the Complainant registered a portfolio of domain names incorporating its trade and service marks in an attempt to avoid a repetition of the dispute. A copy of the portfolio of the Complainant's names is set out at Annex G to the Complaint.
On June 24, 2002, the Complaint received an email from the Respondent stating that it intended to proceed with the publishing forum it had been working on and which is referred to at paragraphs 37 to 40 of the Nominet decision. Further the Respondent announced that it had registered the ".net" domain name to use as an address for this forum.
On July 3, 2002, the Complainant through its solicitors replied stating that although it had no objection to the principle of a "publishing forum" it would not consent to such a forum being run from the ".net" domain name and have its intellectual property misappropriated. The Complainant made an offer to the Respondent for transfer of the domain name vistacomp ".net" on terms involving out of pocket expenses and that the Complainant would prepare the necessary documents for the transfer and the Complainant would pay £100 to a charity of the Respondent's choice. The Respondent apparently replied making a counter offer requesting a payment of £3,000 to charities of its choice.
The Complainant then proceeded with the current Complaint. It indicates in the Complaint that it has no objection to the principle of the Respondent's publishing forum but that it does object to the use of its domain name being used as part of the Respondent's business.
5. Discussion and findings
In order to succeed in its request for an order to transfer the domain names to it the Complainant the Complainant has the burden of proof in ensuring that each of the elements set out in paragraph 4(a) of the Uniform Domain Names Dispute Resolution Policy ("the Policy") are present. These are as follows:-
(i) The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name;
(iii) The Respondent's domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn
(i) The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Panel has already found that the Complainant has trading rights in respect of the name VISTA. The Panel also takes note that the name of the Complainant is VISTA Computer Services Limited an abbreviation of which is "VISTACOMP". The Panel therefore finds that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Although the Panel reaches this conclusion on the basis of the evidence before it in this case it notes that it is supported in this view by the decision of the independent expert in the Nominet decision referred to above.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant submits as follows:-
(a) There is no evidence of the Respondent's use of or preparation to use the domain name in connection with a bona fide offering of goods or services. Rather the name is used to promote its own business and disrupt the Complainant's business by "unfairly denigrating the Complainant and its products by "free-riding" on the .not domain name in which it has no rights or legitimate interest."
(b) The Respondent has never been known by the ".net" domain name.
(c) The Respondent used the .co.uk domain name to direct Internet users to its website advertising its goods and services and that it is now repeating this behaviour. It refers in the Complaint to wording on the website advertising and marketing the Respondent's services.
(d) The intention to host a publishing forum would tarnish the reputation and goodwill of the Complainant.
The Panel finds no evidence to support that the Respondent has any rights or legitimate interest in respect of the ".net" domain name. Rather it accepts the Complainant's submissions support a finding that the Respondent is in fact trying to usurp the Complainant's rights and legitimate interest in respect of the domain name for its own use. In reaching this conclusion the Panel takes into account that there are no contrary submissions from the Respondent.
Accordingly the Complainant succeeds in proving this element.
(iii) The domain name has been registered and is being used in bad faith
In support of this submission the Complainant submits:-
(a) The ".net" domain name is a blocking registration in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name. It relies upon the following:-
(i) The tone and use of language by the Respondent in correspondence which it describes at "flippant and carefree"
(ii) The domain name currently directs Internet users to the Respondent's website thereby attracting the Complainant's customers and confusing people or businesses into thinking that the ".net" domain name was registered by, operated by or sponsored by the Complainant.
(iii) The retaliatory, vexatious and mischievous nature of the registration of the ".net" domain name following the.co.uk Nominet decision.
(b) The ".net" domain name was registered primarily for the purpose of disrupting the business of the Complainant. In support of this submission the Complainant relies upon the following:-
(i) The Complainant has not given permission to the Respondent to use the ".net" domain name as a publishing forum.
(ii) It relies upon the correspondence referred to in the .co.uk Nominet decision and subsequent correspondence which demonstrates the true intention behind the registration of the domain name was and is to gain advantage over the Complainant by publishing materials on the Internet.
(iii) Suggests that the Respondent does not intend to launch the publishing forum.
(iv) The Respondent admitted in the .co.uk Nominet decision correspondence that it's broadcast of the facts of that dispute to the Complainant's customers ie to denigrate the Complainant.
(v) The Respondent has expended time and energy checking the extent of the Complainant's domain name portfolio to find domain names incorporating the word VISTACOM which the Complainant has not registered.
In the Panel's view the Respondent's actions in registering the domain name support the Complainant's submissions. The Panel accepts that the correspondence that has passed between the parties demonstrates, as is put by the Respondent, at least "a flippant and carefree approach" to the Complainant's rights. It also demonstrates an intention to "aggressively market" under the domain name at the expense of the Complainant. In particular the Panel takes note of the email of 11 July sent by Mr Tobin of the Respondent.
In all the circumstances and taking into account that the Respondent has chosen not to defend this Complaint the Panel finds for the Complainant in respect of this element.
It follows that the Complainant has succeeded in relation to all three elements that are required to be proved by it under the terms of paragraph 4(a) of the Policy.
The Complaint requests that the Panel issues a decision that the domain name <vistacomp.net> be transferred to the Complainant. The Panel having found for the Complainant orders the domain name <vistacomp.net> be transferred to the Complainant by the Respondent.
Clive Duncan Thorne
Dated: October 16, 2002