WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hays plc, Hays Personal Services Ltd. v. Jordan Group
Case No. D2002-0767
1. The Parties
The Complainants are two British companies, of Hays House, Millmead, Guildford, Surrey, United Kingdom, represented by Shireen Peermohamed of Willoughby & Partners.
The Respondent is Jordan Group, whose address is given on the Melbourne IT WhoIs database, as 5 Blackhorse Lane, Walthamstow, London E17 6DN, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <haysexecutive.com>. The Registrar is Melbourne IT Ltd., of Level 2, 120 King Street, Melbourne 3000, Australia.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center on August 15, 2002. No response was received from the Respondent. George R. F. Souter was appointed Sole Panelist on October 2, 2002.
4. Factual Background
The first Complainants, Hays plc, is the parent company of the second Complainants, Hays Personal Services Ltd.
Hays plcís Annual Report 2001 lists "recruiting permanent and temporary skilled and professional staff" among its activities, and the company is the owner of a number of trade mark registrations of the word HAYS in the United Kingdom and the European Community which, inter alia, cover employment agency services, and recruitment and employment advisory and consultancy services. Hays plcís annual turnover in 2001, was in excess of £2 billion, of which its "Personnel" division accounted for £146 million.
Hays Personal Services Ltd. operates an executive personnel recruitment service under and by reference to the name "Hays Executive." The Complainants have provided samples of literature which clearly shows the use of "Hays Executive" as a trading style. The turnover in attributable to the "Hays Executive" services in the years 1999 to 2002, is claimed to be in excess of £2.8 million, associated with approximately £50,000 of advertising expenditure.
The Complainants operate the websites <hays-executive.co.uk> and <hays-executive.com>, both of which are active sites relating to the Complainantsí executive recruitment business.
5. Partiesí contentions
The Complainants contends that they enjoy protectable trademark rights to the "Hays Executive" trading style, that the Respondent has no legitimate interests in respect of the domain name at issue, and that the domain name was registered and is being used in bad faith.
The Complainants allege that they became aware of the existence of the domain name at issue on or about June/July 2002, when their solicitors contacted the website expecting it to belong to the Complainants, and were directed to a web site ostensibly operated by the Irish political party, Sinn Féin. The Complainantsí solicitors wrote two "cease and desist" letters to the address, mentioned above, of the Respondent, the first, sent by mail, on July 2, 2002, and a second, by courier, on July 9, 2002. The courier service, City Sprint Couriers, reported to the Complainantsí solicitors that the Respondent was not listed at that address. The Complainantsí solicitors state that no reply was received to either letter (although it is not clear to the Panel that the second letter was actually delivered).
The Complainantsí solicitor then attempted to contact the Respondentís "administrative contact" as appearing in the above-mentioned "WhoIs" database, a certain Mark Morton, of Dublin, Ireland, to no result. In particular, they state that the telephone number appearing on the above-mentioned "WhoIs" database turned out to be fictional.
The Complainants drew to the Panelís attention to previous WIPO Arbitration & Mediation Center decisions in the cases D2000-1297, re <nilfiskonline.com>, in which Mark and Marie Claire Morton were co-Respondents, D2000-1504, re <easyjetonline.com>, in which "Marie Claire & [Unknown])" were Respondents, and D2001-0034, re <dolphinexpress.com>, in which Mark Morton was a co-Respondent. (In case D2000-1504, in which Mark Morton was not named as a co-Respondent, there is reference to a "Mark Morton", and the passage: "Mr. Morton or Marie Claire is the contact person for a large number of domain names which comprise famous trademarks including <financialtimesonline.com>, <smirnoffonline.com>, <baccardionline.com>, <btinternetonline.com>, <saatchiandsaatchiplc.com>, <saatchisaatchi.com>, <budwassup.com>, <suzukiireland.com> and <uniroyal.com>".
The Complainants submit that "the Mark Morton in these three decisions is the same as the Respondentís administrative contact in these administrative proceedings and that Mark Morton has clearly engaged in a pattern of registering domain names comprising or including famous names and/or trademarks, either on his own account or using a variety of aliases and/or alter egos. The Complainants submit that Mark Morton is the alter ego of the Respondent in this administrative proceeding. The Complainants submit that the Respondent is likely to be yet another fictitious organisation created by Mark Morton in an attempt to conceal his identity."
The solicitors for the Complainants approached the company who were listed at the Respondentís address in the above-mentioned WhoIs database, SSR Personnel Services Limited, and spoke to one of their directors, a certain Mr. Hunter. Mr. Hunter apparently told them that "Jordan Group had registered <ssrpersonnel.com> and had asked SSR to pay Jordan Group an excessive fee for transferring the name to SSR". Mr. Hunter said that he ultimately paid a reduced fee to Jordan Group.
The Complainants "note that the administrative contact for the <ssrpersonnel.com> domain name is Del Hunter, the director of SSR. As stated above, Mr. Hunter has said that Jordan Group transferred ownership of this domain name to SSR for a fee. The Complainants do not know whether this is the truth, whether Mr. Hunter is in fact connected to the Jordan Group (despite what he said to the Complainantsí solicitors) or whether the domain name registration details have not been updated subsequent to the alleged transfer of the domain name to SSR.
The Complainantsí contend that "the Respondent appears to be an unidentifiable entity", and draw the Panelís attention to "three decisions which indicate that bad faith can be inferred where the Respondent uses the name of a non-existent business entity (Visit America Inc v. Visit America NAF FA0006000095093) or provides incomplete details to the Registrar (McNeil Consumer Brands Inc v. Mirweb, Case No D2000-0612 and Video Direct Distributors Inc, FA 94724).
The Complainants contend that: "in view of the controversy that surrounds Sinn Fein, the Respondent must have known that the Complainantsís reputation could be tarnished by association with this organisation"
The Respondent did not respond to the Complaint.
6. Conclusions and findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three tests which a Complainants must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 in bad faith and is being used in bad faith.
In connection with the first test, the Complainants have registered trade mark rights to the word HAYS in relation to personnel recruitment services. In connection with the expression "Hays Executive", the panel takes the view that the mere addition of the word "Executive" to the word "Hays" in connection with recruitment services is not sufficient to remove it beyond the reach of the law on similarity grounds.
Further, the material provided to the Panel on actual use of the trading style "Hays Executive", particularly the Complainantsí operation of its <hays-executive.co.uk> and <hays-executive.com> websites, leads to the Panelís view that there would be a possibly successful case of passing-off in England and Wales if a competitor were to adopt the trading style in competitive trading, which has been a test applied in previous cases.
The Panel accordingly finds that the Complainants have satisfied the first test.
In connection with the second test, the Complainants have asserted the Respondentís lack of legitimate interest in the domain name and the Respondent has not taken the opportunity accorded to it under these proceedings of justifying its adoption of the domain name. In these circumstances, the Panel decides that the Complainants, whose Complaint was transmitted to the Respondent under the procedure, has satisfied the second test.
The third test is, in reality, a dual test, requiring the Panel to be satisfied both that the domain name has been registered in bad faith and used in bad faith.
The finding that a domain name has been registered with no demonstrable rights or legitimate interests leads, in this case, in the Panelís opinion, to a finding that the domain name has been registered in bad faith. That, of course, leaves the further test of use in bad faith to be confronted.
Use in bad faith has, in the previously decided cases, usually been on the basis that the Respondent has taken some positive step towards unfairly profiting from the registration. There is no evidence to that effect in the current case.
There is, however, ample authority in the previously decided cases that a pattern of abusive behaviour is sufficient to satisfy this dual test.
The decided cases drawn to my intention by the Complainantsí solicitors concerning the mysterious Mark Morton, in all of which the decision was to transfer the domain name at issue to the Complainants, are persuasive to a decision to the effect that the third test, relating to a pattern of abusive behaviour, has been satisfied.
The role of Mr. Hunter, incidentally, is perplexing, as he claims to have purchased the <ssrpersonnel.com> domain name from the Jordan Group, which would argue that it is an identifiable concern, but the Panel has received no evidence as to how the payment to Jordan Group was made. The Panel concurs in the Complainantsí solicitorsí doubts about the veracity of Mr. Hunterís claim in this respect. If, however, Mr. Hunter were to be believed, the attempt by the Respondent to profit unfairly from registration of a domain name potentially injurious to the commercial interests of Mr. Hunterís companyís would, in the Panelís opinion, have been sufficient to establish a pattern of behaviour by the Respondent sufficient to find in favour of the Complainants in connection with the third test in the present case.
The Complainantsí argument to the effect that automatic direction of those who contact the domain name at issue to the Sinn Féin website, and is, therefore, damaged by possible association with the political party operating the website, has to be confronted. The Panel takes the view that any potential customer for a companyís products or services accessing a web site which he, with good cause, believes to be associated with a specific trader, and who is diverted automatically to the website of a political party of whatever hue, is unfairly disappointed in his legitimate aspirations, and might be thereby misled in his opinion of the expected owner of the website, to the commercial detriment of the expected owner (see, for example, by analogy, the reasoning in the decision in case D2000-1314, Skattedirektoratet v. Eivind Nag).
The specific instance of "tarnishment" came before the Panel in case No D2000-0102, Nokia Corporation v. Nokiagirls.com, in which the Panel found that the domain name website at issue could be regarded as an adult-oriented site, to the detriment of the Complainants. In that case, the Panel decided that that this was an "aggravating element" in the assessment of bad faith. In that case, there were "other circumstances" leading to a finding of use in bad faith, in the absence of which the Panel in this case believes the "tarnishment" argument should have been alone sufficient in justifying a finding of use in bad faith.
In the light of the above, the Panel in this case feels that the combination of the peculiar circumstances of this case is sufficient for a decision that the domain name at issue was registered and used in bad faith.
The Panel finds that the Complainants have satisfied the three tests of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, and, accordingly, requires that the domain name <haysexcutive.com> be transferred to the Complainants.
George R. F. Souter
Dated: October 11, 2002