WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Financial Times Ltd and The London Stock Exchange Plc v. David Sprake
Case No. DBIZ2002-00059
1. The Parties
The Complainant is The Financial Times Ltd and The London Stock Exchange Plc, FTSE International Ltd., 2 St Alphage House, 2 Fore Street, London, United Kingdom. Complainant is represented in this administrative proceeding by Debrett Lyons, of Berwin Leighton Paisner, Adelaide House, London Bridge, London, United Kingdom.
The Respondent is David Sprake, 53 Taliesin Avenue, Shotton, Deeside, Flintshire, United Kingdom.
2. The Domain Name and Registrar
The Domain Name subject to complaint is <ftse.biz>. The Registrar of the Domain Name is Catalog.com, Inc, 6404 International Parkway, Suite 2200, Plano, Texas 75093, United States of America.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the WIPO Arbitration and Mediation Center (the "Center") by email on April 25, 2002, and in hard copy on May 3, 2002. Amendments by Complainant in respect of the identity of the Registrar and the location of jurisdiction under Paragraph 3 (c)(vii) of the STOP Rules were received by fax on May 28, 2002, in hard copy on June 21, 2002, and by email on June 25, 2002. Since Complainant refers to itself throughout in the singular, the Panel will do so.
3.2. The Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the "STOP"), the Rules for Start-up Trademark Opposition Policy ("STOP Rules"), both as adopted by NeuLevel, Inc. and approved by ICANN and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy ("Supplemental Rules"). The proper fee has been paid and all other procedural requirements have been met.
3.3. Complainant states that on April 25, 2002, a copy of the Complaint was sent to the Respondent by postal or courier service, and that on April 24, 2002, a copy of the Complaint was sent to the concerned Registrar by postal or courier service.
3.4. On May 10, 2002, Complainant forwarded to the Center a copy of email correspondence received from Respondent, which is referred to in the Discussion below (section 6).
3.5. On June 27, 2002, Formal Notification of STOP Complaint and Commencement of Administrative Proceeding was sent by the Center by post/courier (with enclosures) to the Respondent. Email copies without enclosures were sent to Respondent, copied to Complainant, ICANN and the Registrar.
3.6. Respondent filed a Response in hard copy on July 15, 2002, and by email on July 16, 2002.
3.7. On July 31, 2002, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Panel. An electronic copy of the Case File was sent by email to the Panel on July 31, 2002, and the complete Case File was sent by courier.
4. Factual Background
4.1. The Complainant, according to its submission, is the proprietor of the trademark FTSE, which derives from the Financial Times/Stock Exchange series of financial indexes. Numerous European Community, United Kingdom and worldwide trademark registrations and applications are held for the FTSE mark, formerly styled FT-SE, dating back to 1995. The Complainant owns the <ftse.com> Domain Name and corresponding active website.
4.2. The FTSE trademark had been used in many major countries and is well known in the sphere of financial indexes. Complainant's trademark is used on a variety of goods and services including printed matter, business information services, retrieval services, statistical information services, financial information, financial analysis, stock exchange quotations and computer database access.
4.3. Respondent, according to his Response, speaks for a group of persons who are engineers and who operate a service or business in the education sector called First for Training, Service and Education (FTSE).
4.4. Following communications between Complainant and Respondent, the Respondent offered to transfer the disputed Domain Name to Complainant in return for reimbursement of out of pocket expenses.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The dispute is properly within the scope of the STOP. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the STOP by reference.
5.3. The Complainant filed an initial IP claim in August 2001 for the Domain Name <ftse.biz>. The disputed Domain Name <ftse.biz> is identical to the mark FTSE in which Complainant has rights.
5.4. Respondent has no rights or legitimate interests in the disputed Domain Name. Respondent is not the owner or beneficiary of the trademark or service mark FTSE.
5.5. Respondent has registered or used the disputed Domain Name in bad faith in the terms of the STOP. Respondent is not using the Domain Name. Complainant has wanted to acquire the Domain Name and the Respondent has prevented this. Respondent has knowingly used Complainant's trademark and therefore has intended to cause confusion to Internet users as to the origin of goods and services offered. Complainant's trademark is distinctive in being not an ordinary word.
5.6. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant and that the fee paid to the Center should be refunded.
B. Contentions of Respondent
5.7. The contentions of Respondent include (paragraphs 5.8-5.12 below) that:
5.8. Respondent denies the Complaint.
5.9. Respondent (and the group of which he is a member) acted innocently, operates outside the financial sphere and had no prior knowledge of any entity known as FTSE.
5.10. After realization of the extent of the dispute the Respondent decided to sever all connections with the Domain Name, to agree to its transfer to Complainant in return for out of pocket expenses, and to adopt a new name. Complainant was so advised by email. Unsolicited third party offers to buy the Domain Name were declined.
5.11. Respondent concedes that it may be seen that Complainant may have a case under Paragraphs 4(a)(i) and (ii) of the STOP.
5.12. The Domain Name was not registered in bad faith in terms of Paragraphs 4(a)(iii) of the STOP but in good faith. The Domain Name was the acronym of the Respondent's group and was not acquired for sale or to prevent Complainant from having it. Respondent not only has no intention of attracting Complainant's customers to its website, but does not want to be associated with Complainant.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the STOP states:
"You are required to submit to a mandatory administrative proceeding in the event that a Complainant asserts to the applicable Provider, in compliance with the STOP Rules, that:
i. Your domain name is identical to a trademark or service mark in which the Complainant has rights; and
ii. You have no rights or legitimate interests in respect of the domain name; and
iii. Your domain name has been registered or is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the STOP and the Administrative Panel has jurisdiction to decide the dispute.
6.3. Complainant's claim that its fee should be refunded is not provided for in the STOP or the STOP Rules and cannot be entertained.
Whether the Domain Name is Identical to a Trademark or Service Mark in which Complainant has Rights
6.4. Respondent's Domain Name is <ftse.biz>. The gTLD suffix <.biz> is an inevitable part of the Domain Name and does not impinge on the question of whether the Domain Name is identical to Complainant's trademark. The remaining element of the Domain Name is FTSE, which clearly is identical to Complainant's trademark. The Panel finds for Complainant under Paragraph 4(a)(i) of the STOP Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.5. Respondent offers to concede that he may have no rights or legitimate interests in the Domain Name in terms of Paragraph 4(a)(ii) of the STOP. The Panel notes that the Respondent is unrepresented whilst Complainant is professionally represented. In accordance with STOP Rules 10(b) and the principles of natural justice, the Panel must strike a balance that ensures both Parties are treated with equality but that a less resourced Party is not disadvantaged.
6.6. The thrust of Complainant's claim under this heading is that Complainant alone owns the FTSE trademark and Respondent does not. However, Paragraph 4(a)(ii) refers to a Respondent's rights or legitimate interests in a Domain Name, not a trademark. The STOP under Paragraphs 4(c)(i), (ii) and (iii) recognizes certain circumstances whereby a Respondent may establish rights or legitimate interests in a Domain Name. Paragraph 4(c)(ii) refers, once again, specifically to a Domain Name rather than a trademark and recognizes a Respondent's rights or legitimate interests where Respondent can show, before any notice of the dispute, use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The present Respondent may have at least an arguable case under Paragraph 4(c)(ii) (ECT Euro Continental Transit v. John D. Coryat, WIPO Case No. DBIZ2002-00171, in which the relevant Respondent conceded having no rights to a trademark but relevant Complainant failed to prove bad faith or lack of legitimate interests). Complainant retains the burden of proof and in the absence of further argument this Panel finds it doubtful if Complainant has proven its case under Paragraph 4(a)(ii). However it is not essential for this point to have been argued since Respondent has presented a strong argument under Paragraph 4(a)(iii), which deals with bad faith.
Whether Domain Name Has Been Registered or Is Being Used in Bad Faith
6.7. Complainant is required to prove that Respondent has registered or used the Domain Name in bad faith. Complainant can establish bad faith generally on the evidence or by reference to the illustrative circumstances provided in Paragraphs 4(b)(i) - (iv) of the STOP, which are without limitation.
6.8. Respondent in his evidence, certified to be true and correct, claims in effect to have acted entirely in good faith and relates a chain of events in support of this claim. Respondent says he and a group of colleagues formed a small informal business group known as First for Training, Service and Education and registered the corresponding Domain Name <ftse.biz> to be the website of the group. They did not previously know of Complainant's acronym FTSE and indeed found the connotation unwelcome once advised. Their reaction when first appraised of this impending dispute was to change their group name, abandon use of the Domain Name, and reply to Complainant and Complainant's legal representatives with what Respondent describes as an "apologetic" email of May 6, 2002, offering to part with the Domain Name in return for "out of pocket expenses". The letter included the following extract:
"After taking advice and all things in to consideration, I can reluctantly see that the best and right thing to do is to come to an amicable agreement with you.
If we can come to an amicable agreement (taking into account my out off (sic) pocket expenses etc) I will sign the name over to you lock stock and barrel, drop all plans I have to name this project ftse, and keep all settlement details strictly confidential."
The letter was later signed "Kind Regards, David Sprake".
6.9. There was no reply from Complainant, although enquiries by Respondent to his email service provider confirmed there had been uneventful delivery of the emails and Complainant's legal representatives unquestionably received the letters since they forwarded them to the Center (see 3.4 above). Some seven weeks later this Proceeding was formally served.
6.10. The Panel finds the tone and demeanour in writing of the Respondent to be entirely credible and can scarcely conceive of a more conciliatory response or a better sign of good faith than Respondent's letter to Complainant. No specific sum of money was mentioned at that time and the payment of "out of pocket expenses" in return for a Domain Name registration is specifically provided for in Paragraph 4(b)(i) of the STOP. Whereas Respondent's conciliatory reply concerns more the use of the Domain Name than its registration, it projects a strong message that Respondent was a reasonable person not intent on acquiring an abusive registration.
6.11. Although not spelt out in detail in Complaint or Response, it can be surmised in the light of Paragraph 1 of the STOP that after Respondent applied to register the Domain Name, the existence of a conflicting IP Claim was brought to his attention. Conversely the IP Claim is no more than a claim and the Registrar can make no comment on its strength or relevance having regard to the actual circumstances. There is no suggestion that Respondent is a competitor of Complainant within the ordinary meaning of the word, nor indeed by any stretch of the imagination. Even if Respondent was notified of or took reasonable steps to inform himself of the existence of Complainant's trademark, he need not have thought that his use of his own group's initials in an unrelated and bona fide context infringed Complainant's trademark. To quote from the Decision in Domain Bank, Inc. v. Sonic Co., Ltd., WIPO Case No. DBIZ2001-00014, "Merely because the Complainant has a series of <.com>, <.org> and <.net> domain name registrations does not entitle the Complainant to succeed in a domain name dispute over the corresponding <.biz> domain name, absent any evidence of bad faith."
6.12. Complainant's assertions under the heading of bad faith include: that it filed an IP Claim because it was "entitled to acquire" the Domain Name; that it "wanted to acquire" the Domain Name to preempt any cybersquatter; and its prior trademark rights. These assertions do not even come close to proving on the balance of probabilities that Respondent's registration or use of the Domain Name was in bad faith. Specifically there is not one iota of evidence, nor reason to infer from what has been placed before the Panel, that Respondent ever intended to sell the Domain Name to Complainant or to anyone else (Paragraph 4(b)(i) of the STOP); or attempted to prevent Complainant from reflecting its trademark in a corresponding Domain Name (Paragraph 4(b)(ii)); or attempted to disrupt the business of the Complainant (Paragraph 4(b)(iii)); or wanted to divert Internet users to Respondent's website by confusion (Paragraph 4(b)(iv)). Nor is there any suggestion of bad faith outside these illustrative circumstances.
6.13. As found in 6.4 above, the disputed Domain Name is identical to Complainant's registered trademark. As summarized in 6.12 above, there is no evidence that the disputed Domain Name was registered or used in bad faith. The Panel decides for Respondent and dismisses the Complaint.
The Decision of the Administrative Panel is that the disputed Domain Name <ftse.biz> is identical to Complainant's trademark FTSE. However, the Domain Name has not been registered or used in bad faith. The Complaint is dismissed and accordingly the disputed Domain Name <ftse.biz> shall not be transferred to Complainant.
Dr. Clive N. A. Trotman
Dated: August 14, 2002