WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asprey Holdings Limited v. Filmany Limited

Case No. D2002-1152

 

1. The Parties

The Complainant is Asprey Holdings Limited, with a registered office at London, W1S 4AR, United Kingdom, represented by Dechert, Solicitors of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Filmany Limited, London SW11 6HR, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name is <aspreyscasino.com>, which is registered with NetBenefit plc (doing business as NetNames).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on December 19, 2002, and in hardcopy on December 20, 2002. On December 20, 2002, the Center transmitted by email to NetBenefit plc aka NetNames a request for registrar verification in connection with the domain name at issue. Following two reminders sent by the Center on December 23 and December 31, 2002, NetBenefit plc aka NetNames provided an initial verification response on January 2, 2003, and subsequently confirmed to the Center by email on January 3, 2003, that the Respondent was listed as the registrant. On January 6, 2003, the Center verified that 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 January 6, 2003. In accordance with the Rules, paragraph 5(a), the Respondent was informed that the due date for submissions for consideration in Response to the Complaint was January 26, 2003. No Response was received by the due date. Consequently, the Center issued a formal Notification of Respondent Default on January 28, 2003.

The Center appointed Keith Gymer as the sole panelist in this matter on February 4, 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.

Following an initial review of the Complaint, and for the reasons given below, the Panel subsequently requested the Center to issue an interim Procedural Order No.1, inviting supplementary submissions from the parties on certain specified issues of concern. The Procedural Order No.1 was made on February 13, 2003, with responses requested from the parties by February 20, 2003. A supplementary submission was received from the Complainant by email on February 20, 2003, with additional hardcopy evidence being forwarded by the Center and received by the Panel on February 26, 2003. No supplementary submission was received from the Respondent. The parties both being based in England, the proceedings have been conducted in English.

 

4. Factual Background

According to the Registry WHOIS record, the domain name <aspreyscasino.com> was first registered on May 1, 2002.

As verified in the supplementary evidence provided on its behalf, the Complainant, Asprey Holdings Limited ("AHL"), UK Company No. 103844, was formerly named Asprey & Garrard Limited ("A&GL"), until April 2002.

The supplementary evidence also confirmed from official records the Complainantís ownership (in its current or former names) of the following UK Trade Mark registrations (amongst others) each of which was shown to be in force, and each of which predates the date of the domain name registration.

TM No. Mark Date Classes Reg. Proprietor

972000 ASPREY 08.03.1971 08 AHL
972001 ASPREY 08.03.1971 14 AHL
972002 ASPREY 08.03.1971 16 AHL
972003 ASPREY 08.03.1971 18 AHL
972004 ASPREY 08.03.1971 20 AHL
972005 ASPREY 08.03.1971 21 AHL
972006 ASPREY 08.03.1971 34 AHL
1525530 ASPREY 30.01.1993 03 AHL
1525531 ASPREY 30.01.1993 13 AHL
1525532 ASPREY 30.01.1993 25 AHL
2123002 ASPREY 07.02.1997 28 AHL
2140783 ASPREY 02.08.1997 29 30 33 AHL
2243353 ASPREY 23.08.2000 35 AHL
2293307 ASPREY 20.02.2002 09 11 24 27 A&GL

 

5. Partiesí Contentions

A. Complainant

The Complainant otherwise made assertions as follows:

- The Complainant is the owner of goodwill and reputation and trade mark rights in the name ASPREY and other names incorporating the word ASPREY.

- The Complainant has a history of over 150 years of heritage in the UK as jewelers and manufacturers of luxury goods including leather-ware, fine books, clothing, stationery, furniture and corporate and sporting trophies. Its profile in jewellery has been extended so that the business is now best described as a luxury lifestyle business. It has a world renowned and historic store in Bond Street, London W1, England. The Complainant also has showrooms in the USA and Middle East and further expansion is planned. The Complainant was incorporated as a company in 1909, and through the last 150 years, it has been associated with royalty, the aristocracy, the wealthy and powerful.

- The Complainant has Royal Warrants of appointment by (1) Her Majesty Queen Elizabeth II, (3) Her Majesty Queen Elizabeth the Queen Mother and (3) His Royal Highness the Prince of Wales.

- The Complainant changed its name from Asprey & Garrard Limited to Asprey Holdings Limited on April 22, 2002.

- Some of the trade mark registrations/applications listed in an annex to the Complaint were in the name of companies other than the Complainant. This is because the Complainant was previously called Asprey & Garrard Limited (until April 22, 2002), Asprey Group Limited (until September 1, 1998) and Asprey & Company Public Limited Company (until September 17, 1985).

- In addition the Complainant has acquired reputation and goodwill in the name ASPREY by among other things:

- Its sponsorship since 1996, of the Ferrari Formula One team. The Complainant has hosted a variety of hospitality events around the Formula One Grand Prix.

- Its support of The Royal Windsor Horse Show in Windsor, England. The Complainant is the principal sponsor of the 2001, Royal Windsor Horse Show.

- The public exhibition of His Royal Highness the Prince of Walesí watercolours supported by the Complainant marking the 50th birthday of His Royal Highness the Prince of Wales.

- The design of jewellery by the Complainant for the Oscar winning film Titanic, directed by James Cameron.

- The use of the Complainantís jewellery in the Hollywood movie "The Affair of the Necklace" starring Oscar-winner Hilary Swank.

- Its design of the trophy for the Cricket World Cup and the rugby IRB World Seven Series.

- Its jewellery being worn by the stars of Hollywood. At the 1997 Academy Awards Emily Watson best actress nominee wore one of the Complainantís diamond suites. Sigourney Weaver, a presenter at the 1997 ceremony wore pieces from the Complainantís antique collections. Her co-presenter, Claire Danes, wore the Complainantís Daisy Collection. The Complainantís Daisy Collection was also worn by Keely Shaye-Smith, partner to Pierce Brosnan.

- The Complainant has a website using its ASPREY trade mark at "http://www.asprey-garrard.com". This website gives details about the business of the Complainant. The Complainant also trades using the ASPREY trade mark from a website at "http://www.asprey.com". This website currently displays the contact details for ASPREY worldwide, its product range and its stores. A print out of a selection of pages from this website was annexed to the Complaint.

- The Domain Name at issue is confusingly similar to the name and trade mark in which the Complainant has extensive rights. In particular, the name is (a) phonetically confusingly similar (it contains ASPREY) and (b) visually confusingly similar (it contains the word ASPREY as a prominent and dominant part of the name). The addition of the word "casino" is merely descriptive and not distinctive in its own right. The addition of the letter "s" to the mark ASPREY simply makes it possessive with regard to "casino", operating to render the mark ASPREY in the Domain Name as a badge of origin or indication of the commercial enterprise behind the "casino". It is still ASPREY, which remains the dominant part of the Domain Name.

- The Respondent registered the domain name on May 1, 2002, over a century after the Complainant commenced trading using the Asprey name and a considerable period of time after the Complainantís UK trade mark was registered.

- The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade mark or to apply for or to register any domain name incorporating any such marks.

- The Respondent does not appear to have any legitimate interest in the name ASPREY.

- On July 16, 2002, the Complainantís solicitors wrote to the Respondent in relation to the Domain Name. A copy of the [minimal] correspondence passing between the Complainant and the Respondent was annexed to the Complaint. The Complainant requested that the Respondent give undertakings to (among other things) transfer the Domain Name to the Complainant.

- On August 28, 2002, the Respondentís Fletcher Dhew telephoned the Complainantís solicitors and said that he was willing to transfer the Domain Name to the Complainant. The Complainantís solicitors agreed to pay the Respondent the money, which it had originally paid to register the Domain Name. It was agreed that the Respondent would write to the Complainantís solicitors confirming this arrangement and providing proof of the cost of registering the Domain Name by September 16, 2002. The Complainantís solicitors never received any such letter. On September 18, 2002, the Complainantís solicitors wrote again to the Respondent reminding him of the agreement that had been reached. The Respondent never replied.

- The Respondent has not made any claim to a legitimate interest in the name ASPREY. The Respondent is Filmany Limited and has no apparent connection with the name ASPREY.

- In view of the fact that the Respondent had no legitimate reason for registering the Domain Name and could not in any event have used it without infringing the Complainant's rights, it is submitted that the Domain Name was registered and is being used in bad faith. The Respondentís name and correspondence reveals no legitimate reason for registering the Domain Name. Moreover, it is submitted that the mark ASPREY is sufficiently well known amongst the general public that it is inconceivable that the Respondent was not aware of the Complainantís rights in the mark when it registered the Domain Name.

- Throughout its history, as evidenced above, the Complainant has been associated with royalty, the aristocracy and the powerful - exactly the type of people whom one would associate a casino with and who a casino would be likely to attract.

- The Complainantís solicitors carried out a worldwide Google search on the internet on August 19, 2002, using "Aspreys" and "casino" and no casino or similar business using the name "Aspreys" was revealed. It is submitted that the Respondent does not operate a business called "Aspreys Casino" and that even if it did, such use of the ASPREY mark would infringe the Complainantís rights.

- There is currently no website active at the Domain Name. There is no indication of any future positive use of the Domain Name in connection with an ASPREY branded business or non-commercial organisation. It is submitted once again that any such business would amount to an infringement of the Complainantís trade mark rights.

- The Respondent can only have acquired the Domain Name intentionally to attempt to attract for commercial gain internet users to its intended website by creating a likelihood of confusion with the Complainantís trade marks as to the source, sponsorship, affiliation or endorsement of the website. Consumers and internet users who type <aspreyscasino.com> as an attempt to access any gambling-related activity which the Complainant may be involved in or to see if the Complainant operates any such gambling activity are likely to be confused by any website that may appear there for any products or services of the Respondent.

- In the alternative, it is submitted that the Respondent registered the Domain Name with the intention of selling it to the Complainant or a third party for valuable consideration in excess of the Respondentís reasonable costs of registration and/or transfer.

- It is submitted that in agreeing to transfer the Domain Name to the Complainant, the Respondent was admitting that it had registered and was using it in bad faith. It made no claim to any legitimate interest in the Domain Name or any attempt to justify its registration of the Domain Name.

- The Respondent is using the Domain Name in bad faith because it can only have registered the Domain Name with the intentions alleged above. It has failed to respond to the Complainantís correspondence. Were it to use the Domain Name to host an active site, anyone accessing the Domain Name would reasonably expect the business offering services at such a site to be either the Complainant itself or at the very least, a commercially connected undertaking, contrary to the fact.

- The Complainant relies on the case of Moe Ginsburg , Inc. v Medisys (WIPO Case No. D2001-0021) in which the Panel cited Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), and said that a failure to use a domain name can in itself be evidence that a Respondent is using a domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy:

". . . there has been absolutely no evidence of the Respondentís use of, or demonstrable preparations to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith."

This view of paragraph 4(a)(iii) of the Policy was also accepted by the Panel in the decision in Accord-Mondich v Brown (WIPO Case No. D2000-0004):

- It is therefore not relevant that the Respondent is not operating an active site from the Domain Name and has offered to sell it the Complainant on payment of the registration fee. The Respondent cannot have or have had any bona fide intention with regard to the Domain Name other than to infringe upon the Complainantís trademark and to derive benefit from use of the Complainantís goodwill, either by trying to sell the Domain Name to the Complainant or by using the Domain Name to attempt to attract for commercial gain Internet users to its 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 its website or location or of a product or service on its website or location. The Respondentís failure to proceed on the basis of the agreement reached with the Complainant on August 28, 2002, is evidence that it is using the Domain Name in bad faith.

- By registering the Domain Name the Respondent is also preventing the Complainant from reflecting its trade mark in a corresponding top level generic domain name. As submitted above, a casino is exactly the kind of place that one would expect to find the Complainantís clientele and the kind of activity which would be associated with a luxury lifestyle goods manufacturer and retailer.

B. Respondent

The Respondent did not respond to the initial Complaint.

C. Procedural Order No.1

As noted above, following a preliminary review of the Complaint, the Panel considered that there were a number of issues on which further submissions should be sought from the parties before a decision was taken. A Procedural Order No.1 was issued in the following terms:

"In registered trade mark terms, 'casino services' would fall in Class 41. The Complainant, insofar as it claims to have registered trade mark rights (although it has not provided any current details from an official register - which would be readily available - to formally confirm the legal ownership and current status of the registered marks listed in the Complaint) has not clearly explained which if any, of its alleged registered (or unregistered?) rights are to be considered as extending to render such services an infringement of such rights. Further, the Complaint reports relevant changes of name of the Complainant, but again provides no documentary confirmation from any official source (e.g. Companies House change of name certification) to support this or to clarify which rights are factually now properly recorded in the Complainant's name rather than under some alleged prior identity. Additionally, with respect to the nature of "use", the Panel finds the Complaint confusing - the Complaint states that there is apparently 'no website active' at the domain name. When the Panel checked, there certainly was a webpage, but not relating to any casino services. The nature of the bad faith "use" alleged in this case therefore requires clarification and the Panel is minded to take account of the UK Court of Appeal Decision in "One in a Million" for guidance. However, as neither party has referred to this case in any submissions, the Panel wishes to provide an opportunity for them to do so before proceeding with a decision."

"The Panel therefore invites supplementary submissions (with supporting documentation if appropriate) from the parties as to the extent the rights allegedly owned by the Complainant (whether registered or unregistered) should or should not be taken to potentially extend to 'casino services'; and, with respect to "use", on the relevance or otherwise of the UK Court of Appeal decision in the One in a Million case, the full text of which is available at: http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWCA/Civ/1998/1272.html"

D. Complainantís Supplementary Submission

The Complainant made a supplementary submission in the following terms:

- The Complainant provided a print out of its registered trade marks in the United Kingdom taken from the official website of the UK Patent Office.

- The Complainant provided a print out of the change of name certificate recording the changing of its name on April 22, 2002, from Asprey & Garrard Limited to Asprey Holdings Limited.

- The Complainant does not have registered trade marks in Class 41, in which "casino services" fall.

- The Complainant submits that the provision of "casino services" under the name "ASPREY" or "ASPREYíS" would infringe its registered rights in the mark "ASPREY". Such use of the mark "ASPREY" would be either identical or similar in respect of different services for which the Complainant has the mark "ASPREY".

- As the Complainant set out in the Complaint, the Complainant has traded under the name "Asprey" for over 150 years and has a huge amount of international goodwill in the name "Asprey". "Asprey" is a household brand renowned worldwide for the provision of luxury goods and services and has a distinctive reputation in the UK. Members of the public or users of the internet accessing any website at the Domain Name would expect to see an enterprise connected with, hosted by or sponsored by the Complainant when this would not be the case. Such a use of the Complainantís registered rights would therefore take unfair advantage of the Complainantís registered rights by using these rights to attract users of the internet to a site at the Domain Name.

- It is noted that the Respondent has at no time explained why it used the name "Aspreys" in connection with the Domain Name, nor has the Respondent filed any Response in which it had the opportunity to do so. The Respondent has therefore declined all opportunity to prove why it had due cause to use the name "Aspreys" in connection with the Domain Name.

- The Complainant refers to the case of Visa Trade Mark [2000] RPC 484 [also available at http://www.patent.gov.uk/tm/legal/decisions/appeal1999/o34099.pdf], in which an application for the registration of the trade mark "Visa" in respect of condoms was successfully opposed by the holders of the Visa trade mark in respect of financial services. In the same way that the registration of "Visa" in respect of condoms was held to be detrimental to the existing "Visa" mark, so the registration of "Aspreys" in respect of "casinos" (or the refusal to transfer the Domain Name to the Complainant) would allow the Respondent to take unfair advantage of the Complainantís mark and the goodwill in that mark.

- The Complainant is the owner of substantial goodwill in the name "Asprey" as set out in the Complaint. The Domain Name misrepresents to both users of the internet and to those consulting the Whois Register to check on the ownership of the Domain Name that both the Domain Name and the Respondent are connected or associated with the Complainant when this is not the case. There is a clear likelihood of confusion because the Complainant is involved in the luxury goods business providing goods to the wealthy and the aristocracy.

- As detailed in its Complaint, the Complainant sponsors and hosts hospitality at events such as polo matches and Formula 1 grand prix racing. The Complainant has for many years in the United Kingdom both marketed and sold an exclusive range of products relating to gambling such as roulette wheels, playing cards, backgammon sets and the like. Through the sale of these products and more generally, the Complainantís trade mark has been associated for over 100 years with luxury and the elite, who are likely to frequent casinos in the worldís leading destinations like Monte Carlo and Las Vegas. Casino services are exactly the kind of services, which the Complainantís clients would expect from it.

- Examples of the Complainantís goods related to gambling [in fact in respect of luxury sets of the board game "Monopoly"] were annexed to the supplementary submission.

- The Complainant respectfully submits that in order to succeed, it does not have to prove that it owns rights which "potentially extend to Ďcasino servicesí". The Policy says that a Complainant must prove that the Domain Name is "identical or confusingly similar to a trademark in which the Complainant has rights" (Complainantís italics). The Complainant has to establish that the Domain Name is identical or confusingly similar to any of its trade marks in which it has rights, and not necessarily to a trade mark which extends to services that may or may not be provided at any website at the Domain Name.

- The Complainant has provided evidence both in its Complaint and in this supplementary submission of its trade marks in which it has rights and of its common law rights. The Complainant has also provided evidence that the Domain Name is identical or confusingly similar to those trademarks and the manner in which it infringes those common law rights.

- Nevertheless, the Complainant submits that under s.10(3) of the Trade Marks Act 1994 and the Lanham Act equivalent, its rights potentially extend to casino services. "Casino" is an entirely generic and non-proprietary mark.

- The web page [at www.aspreyscasino.com] is a page designed by the Registrar of the Domain Name and informs a user of the internet that the Domain Name is held by a client of the Registrar. It is clear that the Respondent itself has not designed the web page. The hyperlinks on the web page link to sites operated by the Registrar and associated companies, and not to sites operated by the Respondent. It is submitted that the website at the Domain Name is Ďactiveí only in the sense that it is a generic holding page created by the Registrar on behalf of domain name registrants who have not created or developed a website to be hosted at a domain name.

- In his judgement [in the UK Court of Appeal decision in the "One In A Million" case], Aldous LJ said that mere registration of a domain name could in itself constitute the offence of passing off:-

"The placing on a register of a distinctive name . . . makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name."

Aldous LJ went on to find that the domain names in the hands of the Defendants in that case were "instruments of fraud".

- It is submitted that in the present case, mere registration and possession of the Domain Name by the Respondent is an "instrument of fraud". As with the Claimants in "One In A Million", the present Complainant is a household name. The Complainant has international goodwill in the mark "ASPREY" and the use of the mark in the Domain Name misrepresents to potential users of any site at the Domain Name that such site is authorised by or connected to the Complainant. Alternatively, confusion is likely to arise when an internet user consults the Whois Register to see who the owner of the Domain Name is because they will conclude (wrongly) that the Respondent is in some way connected or associated with the Complainant.

- Given the Complainantís registered trade marks and worldwide goodwill in the name "Asprey", it is inconceivable that there is any use of the Domain Name, which could be in good faith. Moreover, the Respondent has failed to file a Response and the Complainant invites the Panel to draw an adverse inference from that. It is submitted that the reason the Respondent initially agreed to transfer the Domain Name to the Complainant was because the Respondent recognised that it could make no legitimate use of the Domain Name that would not infringe the Complainantís trade mark and common law rights.

- Although in the "One In A Million" case, the domain names were identical to the trade marks of the Claimants in that case, Aldous LJ agreed with the judge at first instance in One In A Million in citing with approval his comments:
"The history of the defendantís activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble (Complainantís italics) the names and marks of other people. . ."

- It is submitted that not only does the present Domain Name "resemble" the Complainantís trade mark, it incorporates it and renders the Domain Name confusingly similar to the Complainantís trade mark "Asprey". The addition of the word "casino" is not sufficient to distinguish it from the Complainantís trade mark. "Casino" is a descriptive word, not a distinguishing one. The possessive "s" in "aspreys" renders the Complainantís Trade Mark the identifying badge of origin of any "casino" services to be provided. It is therefore designed to take advantage of the Complainantís goodwill in the mark "Asprey" and to confuse internet users into believing that the website at the Domain Name is somehow authorised by or owned by or connected to the Complainant. It therefore falls within the definition of an "instrument of fraud" in "One In A Million".

E. Respondentís Supplementary Submission

The Respondent made no submissions in response to the invitation in Procedural Order No.1.

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result, then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

A. Identical or Confusingly Similar to the Mark:

In this case, the Complainant asserts that it the domain name <aspreyscasino.com> is identical or confusingly similar to the mark ASPREY in which the Complainant has rights.

In the original Complaint, the Complainant sought to substantiate claims to registered trade mark rights on the basis of extracts from an unofficial private database (presumably its own or its representativeís record system). In the Panelís experience, use of such records in contentious proceedings is not appropriate because, as in this case, they do not correspond with the official records and frequently do not reflect the complete picture. In this case, for example, details from the official records, provided with the Complainantís supplementary submissions, showed that the actual Registered Proprietorís name did not correspond with the private records in all instances, that a number of relevant registrations had been "Advertised before acceptance" and that the form of mark as registered was stylized and not plain text as the private records implied.

Fortunately for the Complainant, these discrepancies were not of such significance as to adversely affect its case. In fact, the official records actually showed more registrations in the current name of the Complainant than suggested by the private records! However, the Panel has noted misleading differences in other cases which have influenced previous decisions, and would therefore repeat the view that wherever a Complainant seeks to rely on claims to registered rights these should be evidenced from official sources and the reasons for any apparent discrepancies (e.g. changes of name) likewise properly supported by evidence from independent records wherever practicable. In the case of most major trade mark registries and UK companies, for example, the relevant records are readily and conveniently available on line and there is no good reason not to use them.

In the present case, the Panel accepts that, on the evidence, there is no doubt that the Complainant has trademark rights in ASPREY, both registered and unregistered.

However, contrary to the Complainantís assertions, the Panel does not consider that it must automatically follow that the domain name <aspreyscasino.com> is confusingly similar to ASPREY. Whilst "casino" alone is plainly a generic descriptive term, that does not mean that its inclusion in the domain name can be dismissed as of no relevance. It clearly implies a context Ė a field of use Ė of "asprey(s)", which may, or may not lead to confusion with the Complainantís own rights in, and use of, ASPREY. The UK Companies Register shows that the Complainant is not the only company with "ASPREY" in its name. There are at least twenty others. It is possible that these may all be connected to the Complainant, but no evidence has been adduced to that effect. There is also at least one other company with an "ASPREY" trade mark [Asprey Systems] registered in the UK. Again this may be connected with the Complainant, but there is no evidence of this. Consequently, it cannot be assumed that the Complainant is necessarily the only legitimate user or owner of rights in ASPREY in any particular context. To take another British example, Guardian Newspapers, with rights to Guardian in their field, would not be confused with Guardian Insurance were the contextual differences to be reflected domain names incorporating "guardian" with the respective descriptive term (e.g. "guardian-insurance") Ė the context cannot be ignored.

Thus, the Panel believes it is necessary to consider whether or not the Domain Name <aspreyscasino.com>, taken as a whole, can be held to be confusingly similar to ASPREY for the purposes of the Policy. In the Panelís opinion, the potential context is different from the established field of use of ASPREY by the Complainant. (As noted above, in trade mark terms "casino services" would fall in Class 41 and would not normally be cross-searched against the other Classes of goods and services for which the Complainant has registrations of ASPREY.)

However, whilst comparisons with trade mark law can often be helpful, the terminology is not always neatly interchangeable. Where marks are arguably similar but used in different contexts, the relevant trade mark test (s10(3) of The Trade Marks Act 1994) is not of a likelihood of confusion, but of unfair advantage having regard to the reputation of the senior mark. The Complainant has acknowledged this in its own supplementary submissions. It has asserted that the ASPREY mark has a "distinctive reputation in the UK" and that "the present Complainant [sic] is a household name".

The Panel has some doubts that the name of "Asprey Holdings Limited" is likely to trip off the tongue of the average member of the public in most UK households. "Context", however, may come to the Complainantís aid. The Panel can accept that the mark ASPREY certainly has a long-established reputation in the field of luxury goods and sporting goods for the very rich. (Although the Complainant did not refer to them, the judgments in Asprey & Garrard v. WRA (Guns) Ltd ([2002] FSR 30 and 31), for example, show judicial acknowledgement of the facts and the history of the Complainant.) Regardless, of differences in trade mark classifications, the Panel agrees with the Complainantís submissions that its clients would also overlap any likely clientele for a casino.

As a consequence, the Panel is convinced by the argument that use of <aspreyscasino.com> by a party other than the Complainant, would take unfair advantage of the Complainantís reputation in the ASPREY name amongst the wealthy and the aristocracy, such that confusion would be likely to arise.

Accordingly, the Panel concludes that, for the purposes of the Policy, the contested domain name is indeed to be considered as identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests:

Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondentís rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is plain from the facts and the evidence that none of the above factors apply, and the Respondent has made no effort whatever and made no submissions to justify any claim to legitimate use, whether under these criteria or any other. Neither has it sought to challenge or deny any of the allegations made by the Complainant.

Having regard to the Complainantís reputation in ASPREY and the probability of confusion arising (as considered above) in the context of the obvious likely use of the Domain Name <aspreyscasino.com> to refer to casino services, it is not apparent to the Panel that there could be legitimate use of the Domain Name without approval from the Complainant. The Respondent has no such approval.

Consequently, the Panel considers that the Respondent has no rights or legitimate interests in respect of the domain name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith:

It does not necessarily have to follow that the absence of rights or legitimate interests, however, must also automatically lead to a conclusion that the registration has been made and used in bad faith.

Indeed, the Panel finds many of the original submissions made on this point in the Complaint to be unconvincing and self-contradictory in parts. The submissions although making serious allegations of "bad faith" were also for the most part supported by little or no evidence. The Panel does not believe it is appropriate for any Complainant to make such allegations simply for the sake of it, when the allegations are not substantiated.

In particular, the Panel considers that there is no evidence to support the contention that the Respondent registered the Domain Name with the intention of selling it to the Complainant or anyone else for more than its costs. Nor can the Panel accept the assertion that the Respondent must inherently be admitting "bad faith" simply because it reportedly agreed to transfer the Domain Name to the Complainant, but for whatever reason failed to pursue this proposed transfer. The Complainantís evidence in this respect is simply inadequate.

The Complainant also originally sought to rely on some earlier cited decisions under the Policy where it was apparently concluded that failure to actively use a Domain Name could somehow amount to "bad faith" use of the Domain Name. The Panel does not have the benefit of the evidence in those earlier cases, but does not find the logic at all convincing in the present case.

As the Panel observed, however, in the present case, and despite the Complainantís initial representations apparently to the contrary, the Domain Name was certainly operational and a web page could indeed be accessed at "http://www.aspreyscasino.com", albeit a holding page provided by Netnames the hosting ISP. This page prominently stated: "The domain name aspreyscasino.com has been registered by NetNames for one of our clients."

It seems quite conceivable that clients, competitors, celebrity watchers, market watchers and others interested in the business of supplying goods and services to the rich might well be on the watch for apparent developments of the Complainantís business. Advance registrations of domain names prior to the launch of new business ventures and mergers are well known sources of market intelligence. Coming across the web page at www.aspreyscasino.com such watchers might well be led further to investigate who was the relevant Netnames client. Finding the name of Filmany Ltd. (from the WHOIS) they might then import a misleading and non-existent connection between the Respondent and the Complainant.

The Panel, therefore, considers that use of the Domain Name, even passively for an ISP holding page, can amount to a misrepresentation and be in "bad faith" for the purposes of the Policy.

With respect to the issue of "bad faith" registration, there is support for the contention that registration may also inherently be "bad faith" from the judgment of the UK Court of Appeal in the One In A Million case in respect of the registration of distinctive names, that "[t]he placing on a register of a distinctive name [Ö] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name" [British Telecommunications plc. and Others v. One in a Million Ltd. and Others [1999] ETMR 61].

Although the Panel would be wary about applying this analysis to any domain name in general, the Panel is prepared to accept that ASPREY (and ASPREYís or ASPREYS) can be considered as sufficiently distinctive in the relevant field and amongst the likely clientele so that the Courtís conclusion is appropriate in this case and applicable under the Policy. The Respondent effectively misappropriated the Complainant's rights and goodwill by registering the Domain Name and there was no legitimate reason for doing so.

Consequently, the Panel considers that the domain name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.

 

7. Decision

For the reasons indicated at 6 above, the Panel finds for the Complainant and orders that the Domain Name <aspreyscasino.com> be transferred to the Complainant.

 


 

Keith Gymer
Sole Panelist

Dated: March 2, 2003