WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thames Water Plc. v. Thames Water Meter Company Ltd.
Case No. D2002-1071
1. The Parties
The Complainant is Thames Water plc of Reading, Berkshire U.K and it is represented in this case by Edward Evans Barker of London, U.K.
The Respondent is Thames Water Meter Company Ltd., of London, U.K.
2. The Domain Name and Registrar
The disputed domain name <thameswater.com> is registered with Melbourne IT trading as Internet Name Worldwide ("Melbourne IT") having been first registered on August 14, 1997.
3. Procedural History
An original Complaint, naming Mr. Peter Colman as the Respondent, was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2002. On November 26, 2002, the Center transmitted by e-mail to Melbourne IT a request for registrar verification in connection with the domain name at issue. On November 27, 2002, Melbourne IT transmitted by e-mail to the Center its verification response providing the contact details for the administrative, billing, and technical contact, but noting that the registrant had changed.
In response to a notification by the Center that the Complaint was administratively deficient the Complainant, on December 5, 2002, filed an amended Complaint in which the Respondent was named as Thames Water Meter Company Ltd. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2003.
The Center appointed Mr. David H. Tatham as the sole Panelist in this matter on January 30, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Activities of the Complainant
The Complainant is the registered proprietor of the Community trademark registration No. 1603026 dated August 21, 2001, details of which were appended to the Complaint and which consists of the words "Thames Water" sandwiched between three wavy lines and enclosed within a circle. The Complainant states that, for administrative reasons, this Community trademark registration stands in the name of its wholly owned subsidiary, Thames Water Utilities Limited.
The Complainant was incorporated in April 1989, as a public limited company and it is the largest water and sewerage company in the United Kingdom, serving a population of approximately 51 million domestic and sewerage customers worldwide. This includes thirteen million customers in London and across the Thames Valley. The Thames Water Group provides water supply and sewerage services, international water and waste water process design, development and manufacture of products for treatment of water and waste water, waste management and environmental services, and other trading activities, including property development and commercial business such as insurance. The turnover of the Company for the nine month period to December 2001 was £1,205,400,000 sterling, for the financial year 2000 was £1,385,200,000 sterling, and for the financial year 1999 was £1,367,800,000 sterling.
Activities of the Complainant
In the absence of any response, the activities of the Respondent are not known, although according to one of the Annexes to the Complaint, he is a London restaurateur.
5. Parties’ Contentions
As noted above, the Complainant’s representative had filed a copy of an original Complaint, naming Mr. Peter Colman as the Respondent, on November 22, 2002, and it was sent by e-mail to WIPO, to Mr. Colman and to the Registrar, Melbourne IT Ltd. However the Complainant contends that, although, as at November 22, 2002, the contested domain name <thameswater.com> was registered in the name of a Mr. Peter Colman, of London U.K, he arranged for the ownership of the domain name to be transferred to the present Respondent, "Thames Water Meter Company Ltd." shortly after he had received the Complaint, i.e. on November 23, 2002.
The Complainant contends that the company, "Thames Water Meter Company Ltd.", does not exist and, as proof thereof, attached to the Complaint copies of pages taken from the website of Companies House, which is the British Government organisation responsible for English and Welsh private limited liability and public limited liability companies. These copies consisted of:
· a page listing currently registered English and Welsh companies and recently dissolved companies, from which it can be seen that the only company with a name like Thames Water Meter Company Ltd. is the company, Thames Water Meter (TWMCL) Company Ltd.
· further details of Thames Water Meter (TWMCL) Company Ltd. showing that it was formed in August 1997 with an address of 148 Field End Road, Pinner, Middlesex HA5 1RT, England.
· a list of "Previous Names" of companies registered at Companies House from which it can be seen that the list, which is alphabetical, goes directly from Thames Water Environmental Systems Ltd. to Thames Water Plumbing Services Ltd. In other words, there is no company whose previous name was Thames Water Meter Company Ltd.
· an extract from the list of dissolved companies maintained by Companies House from which it can be seen that a company with registration number 1887797, Thames Water Meter Company Ltd., was dissolved on May 4, 1999.
· a printout of a page which confirms that the above mentioned company was dissolved and that the papers relating to it had been archived.
The Complainant contends that not only does the Respondent company, Thames Water Meter Company Ltd., not exist, but the address of the company is no more than an accommodation address. An investigation of the Respondent’s address, London W.C.1 reveals this to be Monomark House, the address of British Monomarks Ltd., a company providing Poste Restante and U.K. post box services.
The Complainant contends further that the address of "Domain Admin" is just as spurious and it also filed a printout from the website of the Royal Mail, which is responsible for delivering post in the United Kingdom, which shows the results of carrying out a search on the post code W1A 7WU. From this it can be seen that the address given for the post code W1A 7WU is the "The Name", PO Box 4280, London W1A 7WU, in other words, no more than a mere address of convenience and by no means a real address.
The Complainant contends that the non-existent entity, "Thames Water Meter Company Ltd." is the creation of Mr Peter Colman, is the figment of Mr Peter Colman’s imagination and, insofar as it has any substance, is entirely controlled, organised and guided Mr Peter Colman.
At the date of registration of the contested domain name <thameswater.com> (August 14, 1997), Peter Colman was living within the London W12 area for which the Complainant is the exclusive supplier of water supply and sewerage services. There is therefore no possibility that the Respondent was unaware of the Complainant at the date of his creation of the domain name in dispute.
The Complainant contends that the domain name was registered by Mr Peter Colman primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant. It annexed to the Complaint the copy of an e-mail from Mr Peter Colman to the Complainant dated July 19, 1999, in which Mr. Peter Colman states:
"I am sure you are aware there are other organisations with similar names who could practically use this domain name as a website, without there being any likelihood of confusion with your own organisation. I have recently been in touch with one of these companies, who confirm they are wholly unconnected with yourselves."
and the Complainant contends that this paragraph is a subtle threat to assign the domain name to a third party if the Complainant did not buy the domain name from Mr Peter Colman.
The Complainant contends that the contested domain name was registered by Mr. Peter Colman in bad faith and that, although it now stands in the name of "Thames Water Meter Company Ltd.", it is still registered in bad faith and with the connivance of Mr Peter Colman. In this connection, the Complainant points to Mr Peter Colman’s previous conduct in relation to domain names, as exemplified by Decisions in three UDRP cases, copies of which were annexed to the Complaint, and in all of which Mr. Peter Colman was the Respondent.
For example, the Complainant contends that in the Decision in Skipton Building Society v. Peter Colman WIPO case No. D2000-1217 (December 1, 2000), involving the domain names <laurentperrier.com> and <laurent-perrier.com>, the following paragraph appears:
"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 football clubs and other substantial commercial 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."
However in fact this paragraph does NOT appear in this Decision but in the WIPO case No. D2000-1217, which involved Mr. Peter Colman and the domain name <skipton.com>.
Nevertheless, in the Laurent Perrier case, as in the present case, not only did the transfer of the domain names at issue "coincidentally" occur when legal problems arose but also the purported new registrants appear never to have existed.
The Complainant also refers to the following sentence in the Decision in Espirito Santo Financial Group S.A. v. Peter Colman WIPO case No. D2001-1214 (January 22, 2002) concerning the domain name <espiritosanto.com> and involving Mr. Peter Colman:
"Registration as domain names of other substantial commercial entities, such as: thameswater.com (Thames Water Plc), rimmel.com (Rimmel)."
The Complainant further contends that Mr. Peter Colman affected a transfer of a disputed domain name <whsmith.com> when legal problems arose in a case in the English High Court involving this domain name in which the plaintiff was W.H. Smith Ltd., a well-known U.K. high street stationers and newsagents. Brief details of this case were annexed to the Complaint, from which it would appear that Mr. Peter Colman transferred the domain name to a William Harold Smith with a purported address in the Bahamas.
The Complainant also annexed lists of 94 ".com" and 15 ".co.uk" domain names all in the name of Mr. Peter Colman among which were a number containing the names of well-known British football clubs which the Complainant contends cannot in any sense be said to be the property of Mr Peter Colman. These domain names include: <bristolcity.com>, <glasgowceltic.com>, <astonvillafc.com>, <aberdeenfc.com>, <westham.com>, <arsenalfc.com>, <rangersfc.com>, <glasgowrangers.com>, <astonvilla.com>, <norwichcity.com>, <exetercity.com>, <bradfordcity.com>, <tranmere.com> and <portvale.com>.
Mr. Peter Colman is also the registrant in respect of the following domain names:
· <eaglestar.com>, Eagle Star being a well-known British insurance company;
· <wincanton.com>, Wincanton being the name of a town in the English county of Somerset with a well-known race course for horses;
· <jamesons.com> which is a clear reference to the well-known Jamesons Irish Whiskey;
· <britishair.com>, which is a clear reference to the well-known airline, British Airways.
· <rivegauche.com>, which is a clear reference to the well-known perfume produced by third parties unconnected with Mr Peter Colman.
· <rimmel.com> which is a clear reference to the well-known cosmetics company unconnected with Mr Peter Colman.
· <oxfordscientific.com> and <oxfordscientific.co.uk> which are clear references to the well-known company, Oxford Scientific Films, producers of ground-breaking scientific and natural history television programmes.
· <jean-lucpicard.com>, which is a clear reference to the fictional captain of the Starship Enterprise, featuring in the well-known television series, Star Trek.
· <lecaprice.co.uk> and <theivy.co.uk>, both being exceptionally famous London restaurants, and in this context the Complainant refers to the fact that, according to the report of the ‘W.H. Smith’ case referred to above, Mr. Colman’s occupation is that of a restaurateur.
The Complainant contends that all of this is clear evidence of a pattern of conduct by Mr. Peter Colman involving the speculative registration of domain names.
In conclusion, the Complainant contends that the Respondent is not making any legitimate non-commercial or fair use of the domain name and that although the domain name has been registered since 1997, no registrant in respect thereof has made any attempt to use the domain name at issue for a bona fide purpose.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a Response, not only does the Panel have no alternative but to accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint. Nevertheless, even though there has been no Response, the Panel must still, under paragraph 14(a) of the Rules, "proceed to a decision on the Complaint" which the Panel will now do.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Before examining the above requirements, the Panel must deal with the issue of the identity of the Respondent. The disputed domain name was owned by Mr. Peter Colman between its original registration in 1997, and the receipt of the Complaint, i.e. for over 6 years, it. It cannot be a coincidence that, on the very day following his receipt of the Complaint, Mr. Colman transferred his ownership of the name to a company with a name closely resembling that of the Complainant but which probably does not exist. It would appear that this may be something of a habit of Mr. Colman, who is a prolific registrant of domain names. He did the same thing with the disputed domain names <laurentperrier.com> and <laurent-perrier.com> in Club Monaco Corporation v. Charles Gindi, WIPO case No. D2000-0396 (October 17, 2000), and he apparently did so again with a disputed domain name <whsmith.com> which was the subject of an action in the English High Court.
As the Respondent filed no reply, the Panel could be entitled to take the view that the true Respondent is indeed Thames Water Meter Company Limited. However the Complainant has filed evidence to indicate that this company does not exist, namely: extracts from the records at Companies House, and information from the Royal Mail that the one of the addresses given for Thames Water Meter Company Limited is merely an accommodation address. Also, included among the case file of papers sent to the Panel by the Center, there is a copy of a communication from a Mrs. Dilys Alban-Moore who had received copies of the Complaint and its accompanying Annexes at her mailing address at London U.K, which is one of two addresses given for the ‘Thames water Meter Company Limited’, the new owner of the disputed domain name. In an e-mail to the Complainant’s representatives Mrs. Alban-Moore says:
"My company Thames Water Meter (TWMCL) Co Ltd., has nothing to do with a domain site/name called THAMESWATER.COM. Indeed, I do not have an email address or website to do with the company. I have never heard of or had any dealings with a Mr Peter Coleman, nor do I have any connection with a company in Australia!
In the early eighties, my husband Mr Peter Alban-Moore, set up a water metering company. In 1997 he died and I, his wife, took over the company. It is now a very small concern and only a handful of clients remain."
She was clearly distressed and annoyed to receive, with no prior warning or knowledge, the bulky papers relating to the present dispute none of which had any relevance to herself.
As if this were not enough, the Complainant has filed copies of three UDRP disputes which throw some light on the activities of Mr. Peter Colman who, if he had attempted to sell the disputed domain name, could be said to fit the classic description of a cybersquatter.
In the event, the Panel has no hesitation in concluding that the ‘Svengali’ behind the stated Respondent is in fact Mr. Peter Colman, and in agreeing with the Complainant that Thames Water Meter Co. Ltd. "is the creation of Mr Peter Colman, is the figment of Mr Peter Colman’s imagination and, insofar as it has any substance, is entirely controlled, organised and guided Mr Peter Colman."
The Panel will therefore proceed on that basis.
Identical or confusingly similar
The Complainant provided proof of a Community trademark registration of a figurative trademark which includes the words ‘Thames Water’. Taken as a whole, this trademark is not identical to the disputed domain name <thameswater.com> because of its figurative element. However in the opinion of the Panel the only part of it that can be verbalised (i.e. the words ‘Thames Water’) is identical to <thameswater.com> - leaving aside the ‘.com’ suffix, which is usually ignored in UDRP proceedings when comparing a domain name and a trademark. The Panel therefore finds that the mark is confusingly similar to the disputed domain name.
However there are two other matters that need to be considered in the trademark context, namely the date and the ownership of the Complainant’s trademark.
The only trademark referred to by the Complainant is a CTM registration that is dated August 21, 2001, and this date is almost exactly 4 years after the contested domain name was first registered. However it can be assumed that the Complainant has common law rights in the name THAMES WATER as the company was incorporated under that name in 1989. Also, as the Complainant points out, Mr. Peter Colman must have been familiar with its name, as it has been supplying him, the original registrant of the disputed domain name, with water and sewerage services at his address in London W12 since the disputed name was registered. Thus, the Panel has concluded that the discrepancy in dates is not an issue.
However the CTM is owned, not by the Complainant, but by Thames Water Utilities Ltd. The Complainant states that this is "for administrative reasons" without enlarging on what these are. However annexed to the Complaint were copies of the Annual Report and Accounts of the Complainant, Thames Water PLC, for the year ending March 31, 2000, and of the Annual report and Financial Statements of its wholly owned subsidiary company Thames Water Utilities Limited for the year ended March 31, 2002. In the former, the latter is referred to as "the UK Utility" and it would appear that, following the privatisation of all of the water and wastewater utilities in the United Kingdom, this is the entity which operates this business for the Complainant, under an Instrument of Appointment from the UK Water Regulator, OFWAT. Thames Water Utilities Limited’s turnover in 1999/2000 was £1,126 million out of a total Group turnover of £1,367.8 million, so it is thus the most important part of the Group by a very long way.
Like Mr. Colman, the Sole Panellist also lives in the catchment area wherein all water services are supplied on behalf of the Complainant and it is therefore within the Panel’s knowledge that all correspondence regarding water supplies carries the ‘Thames Water’ trademark and, on the reverse of all bills appears the legend: "Thames Water Utilities Ltd.…part of the Thames Water plc Group."
The burden is on the Complainant to prove that it has rights in the trademark ‘Thames Water’, not necessarily that it owns it. It has been held in previous UDRP Decisions that nothing turns on a divergence between the ownership of the trademark rights and the Complainant, provided there is a parent/subsidiary or other similar close relationship.
The Panel therefore concludes that there is such a close connection between the Complainant and the owner of the trademark that the two operate virtually as one, and the fact that the owner of the trademark is not the same legal entity as the Complaint is, in this case, of no consequence.
Rights or Legitimate Interest
Paragraph 4(c) of the Policy contains three different circumstances through which a Respondent can demonstrate his "rights to and a legitimate interest in the domain name." Any one would be sufficient.
In this case, both Mr. Colman and the Respondent had the opportunity to respond and, had they done so, they might have been able to justify their rights to the disputed domain name and the Panel could have taken their comments into account. As it is, the Panel can only assume that none of the ‘defences’ in paragraph 4(c) apply in this case, and that the Respondent has rights or legitimate interest in the disputed domain name
Paragraph 4(b) sets out a non-exclusive list of four circumstances which, if present, could indicate that the registration and use if the domain name is in bad faith.
By its default, Respondent has not responded directly to the allegation of the Complainant that the Respondent registered the domain names in bad faith. The burden of proof for doing so is on the Complainant which, in the opinion of the Panel, it has fully discharged.
The Panel will now deal with each of the sub-paragraphs of 4(b) individually, but in reverse order.
4(b)(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location.
This sub-paragraph has not been claimed by the Complainant, nor has it filed any evidence so it is not relevant.
4(b)(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor.
There is no actual evidence of any disruption or any intention to disrupt the Complainant’s business. Indeed, the Complainant’s turnover figures, quoted in the Complaint, indicate a year-on-year increase, which is hardly evidence of any disruption. Therefore this sub-paragraph has not been proved. It could be said that Mr. Colman’s habit of registering as domain names the names of existing and relatively well-known UK entities, both in the business and sporting arenas, might cause some or any of them some annoyance and could, possibly, deprive them of the ability of registering their names in either the ‘.com’ or ‘.co.uk’ TLDs. However in this case there is no evidence of disruption to the Complainant.
4(b)(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.
This is the main thrust of the Complaint, for the evidence shows that Mr. Colman is indeed a ‘serial’ registrant of other people’s names as domain names. In September 2002, the Complainant identified over 100 such names. Also, the three UDRP cases referred to by the Complainant, as well as the ‘W.H. Smith’ case in the English High Court, provide further evidence of Mr. Colman’s activities in this regard. The comment by the Panel in the ‘Skipton’ case that "there can be no legitimate geographical or other justification" for the registration, inter alia, of <thameswater.com> is particularly telling.
Thus, in the opinion of the Panel Mr. Peter Colman easily qualifies under the both parts of this sub-paragraph in that he registered the disputed domain name in order to prevent the Complainant from registering it, and he has engaged in a pattern of registering other people’s names as domain names.
The fact that this sub-paragraph might not apply to the current owner of the disputed domain name is not relevant, for the reasons given above under "Preliminary Remarks", plus the fact that the name was in the ownership of Mr. Peter Colman for over 6 years, and in the ownership of the current registrant only after the first Complaint had been filed.
4(b)(i) 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 trademark 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 says that the paragraph quoted above, under 5A, from the e-mail dated July 19, 1999, from Mr. Colman to it is an indication of Mr. Colman’s intention of selling the disputed domain name. However this paragraph makes no mention of selling, it names no price. It may, as the Complainant contends, be a subtle threat, but the Panel cannot agree that it is any indication of an intention or a willingness to sell the disputed domain name.
However, it should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith and, as has already been said above, the examples given in Paragraph 4(b) are not exclusive. It has, for example, been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The WIPO case of Telstra Communications v. Nuclear Marshmallows No. D2000-0003 (February 20, 2000) was one of the earliest Panel decisions, and it established (at paragraph 7.9) that "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." The question that must always be asked in these circumstances is: what are those ‘certain circumstances’, and this can only be answered by reference to the facts of a specific case, and to the Respondent’s behaviour.
Four of the circumstances referred to in the Telstra case also apply in the present case, namely:
· the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use;
· the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
· the Respondent has taken active steps to conceal it true identity; and
· it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being passing off or infringement of the Complainant’s rights under trademark law.
Taking all of the above points into consideration, the Panel has had little difficulty in concluding that the disputed domain name was registered in bad faith.
These proceedings were binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular, Respondent has not denied that it registered or is using the domain name in bad faith.
The Panel therefore concludes that the Respondent did indeed register and has used the domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name <thameswater.com> be transferred to the Complainant.
David H. Tatham
Dated: January 7, 2003