WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scottish & Newcastle plc. v. Domain Admin
Case No. D2002-1142
1. The Parties
The Complainant is Scottish & Newcastle plc. of United Kingdom of Great Britain and Northern Ireland, represented by Linklaters of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admin of Tuvalu. The previous Registrant of the domain name was Scottishandnewcastle.com of Kuwait.
2. The Domain Name and Registrar
The disputed domain name <scottishandnewcastle.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2002, by email and by hard copy on January 15, 2003. On December 18, 2002, the Center sent by email an acknowledgement of receipt of the Complaint.
3.2. On December 18, 2002, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue.
3.3. On December 18, 2002, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response which revealed that the Registrant contact details as listed in the Complaint were incorrect.
3.4. The disputed domain name was originally registered in the name of Scottishandnewcastle.com of Mishref, Kuwait, as were the details of the Administrative, Technical and Contact details. However a WHOIS search conducted in October 2002, revealed that the Registrantís name had been deleted and replaced by the message "Domain Admin, No valid address as domain is pending transfer." The Administrative, Technical and Contact details are now listed as Admin, Domain and the only other contact detail provided is the telex number 11 000 111 222, which is also incorrect.
3.5. The Registrar is stated as Intercosmos Media Group, Inc D/B/A directnic.com. The WHOIS search stated that the "record was last updated on July 17, 2002," which is 13 days after Linklaters wrote to the Respondent threatening legal action. The Respondent did not send a reply and the letter was returned and had been opened and re-sealed by adhesive tape. On August 30, 2002, Linklaters sent a copy of its letter of July 17, 2002, by email, to the email address supplied for Domain Admin, and asked for full details of the pending transfer of the domain name, but again no reply was received
3.6. From the procedural history described above, the panel concludes that the previous and present Registrants of the domain name are in fact the same entity.
3.7. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 19, 2002, by email, and January 6, 2003, by hard copy. 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).
3.8. 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 January 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on February 6, 2003.
3.9. The Center appointed Pravin Anand as the sole Panelist in this matter on February 12, 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
4.1. The Complainant is one of the largest brewing groups in the world, a FTSE 100 company and has traded under the name incorporating the words SCOTTISH & NEWCASTLE since 1960. A printout from Hoovers Online, which provides evidence on businesses, evidences the Complainantís history, its current position as Europeís largest brewer and its range of international brands. A printout from the Scottish Brewing Archive gives evidence that the Complainantís first use of SCOTTISH & NEWCASTLE was in 1960, and that it employs 40,000 in the United Kingdom and Europe.
4.2. The Complainant is the owner of trademark registrations, covering the United Kingdom and the European Community, for the words SCOTTISH & NEWCASTLE:
UK Trademark Registration 2000885
Community Trademark Registration 191890
4.3. The Complainant is also the owner of a number of domain names:
5. Partiesí Contentions
5.1. The Complainant contends that the use of the domain name by the Respondent will signify a business connection with the Complainant, which does not exist. The Respondent should be considered as having no legitimate interest in respect of the domain name as there is no evidence of a bona fide connection of the Respondent with the disputed domain name.
5.2. The domain name is identical or in the alternative very closely similar to and infringes the rights of the Complainant in the trademark SCOTTISH & NEWCASTLE. The use of the disputed domain name by the Respondent, whether as a website or for correspondence, will set up a false assumption with Internet users that the Respondent is in some way connected with the Complainant thereby causing confusion to such users and therefore the domain name was registered in bad faith.
5.3. The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1 The Complainant is the owner of the United Kingdom Trademark under No. 2000885 in class 32 for "SCOTTISH & NEWCASTLE." The Complainant is also the owner of European Community Trademarks under No. 191890 in classes 18, 25, 28, 32, 33 & 42. The Complainant has also been using SCOTTISH & NEWCASTLE as its trademark and tradename from 1960. The Complainant is also the owner of a number of domain names which help it in reflecting its mark and carrying out its business online.
6.2. The disputed domain name is phonetically identical and visually similar to the Trademark in which the Complainant has rights and confusingly similar to the domain names owned by the Complainant.
6.3. Further, the use of the domain name by the Respondent would signify to Internet users business connections between the Complainant and the Respondent when none exist. Therefore the impugned domain name is confusingly similar to that of the Complainantís trademark/tradename.
B. Rights or Legitimate Interests
6.4. In the instant case there is no bona fide offering of goods and services on the website to which the impugned domain name resolves. The Respondent is situated in Kuwait and/or Tuvalu and does not seem to trade in any goods or services, nor does it have any connection with Scotland or Newcastle. Therefore it is appropriate to conclude that the Respondent does not have any legitimate interest or rights in the impugned domain name.
C. Registered and Used in Bad Faith
6.5. Any use of the domain name by the Respondent whether as a website or for correspondence creates a false assumption amongst Internet users that the Respondent is in some way connected with the Complainant, thereby causing confusion to such users and therefore such use would be in bad faith.
6.6. The Complainant conducted a domain name investigation through Net Searchers and the report revealed that the Respondent registered several top-level domain names including the well-known trademark of another brewer. In 2000, a UDRP proceeding was taken against "70 Consulting," an entity with the same address as that of the original Registrant in this proceeding, "scottishandnewcastle.com," indicating abusive registration. The Center ruled in favour of Foreign and Colonial Trust PLC and transferred the name <foreignandcolonial.com> from the same Respondent as in the instant case (Foreign & Colonial Investment Trust PLC v. 70 Consulting, WIPO Case No. D2000-1383 (December 17, 2000)).
6.7. In this case the registration details appear to be deliberately elusive. Previously the Registrant and the domain name were the same and only a P.O. Box address was provided. Further after the Complainant sent a letter to the Respondent notifying it of the Complaint the details of the domain name were changed from a P.O. Box address in Mishref, Kuwait to a message "Domain Admin, No valid address as domain is pending transfer." Therefore it is a valid conclusion that the said domain name has been registered 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 domain name <scottishandnewcastle.com> be transferred to the Complainant.
Dated: February 26, 2003