WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
P C Henderson Limited v. AMP (UK) Plc
Case No. DBIZ2002-00244
1. The Parties
The Complainant in this administrative proceeding is P C Henderson Limited, a company incorporated in the United Kingdom. The Complainantís registered address and main place of business is Durham Road, Bowburn, Durham DH6 5NG, United Kingdom. The Complainant is represented by D Young & Co of Briton House, Briton Street, Southampton, Hampshire SO14 3EB, United Kingdom.
The Respondent in this administrative proceeding is AMP (UK) plc, a company incorporated in the United Kingdom. The Respondentís registered address is AMP Lynch Wood, Peterborough, PE2 6FY, United Kingdom.
2. The Domain Name and Registrar
The Domain Name in this dispute is <henderson.biz> ("the Domain Name").
The Registrar is Melbourne IT of Level 2, 120 Kings Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
The Complaint was received by WIPO in electronic form on May 20, 2002, and a hard copy on May 22, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP Policy"), as well as the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules") relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
On June 6, 2002, WIPO notified the Respondent of the Complaint in the usual manner and a Response was received by WIPO on June 25, 2002, in electronic form, and on June 27, 2002, as a hard copy.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and is due to deliver his Decision by July 26, 2002.
4. Factual Background
(1) The Domain Name was registered by the Respondent on March 27, 2002.
(2) The trade mark "HENDERSON" in which the Complainant alleges it has rights has been registered widely throughout the World. The earliest such registration appears to be UK Registration No. 505814 dated September 5, 1929. The Complainantís registrations are primarily in relation to its well-known business in sliding and folding doors.
(3) The Complainant was incorporated on February 24, 1921.
(4) The Respondent is the holding company of a large group of companies in the financial services sector including Henderson Global Investors (Holdings) plc ("HGI"). HGI is the proprietor, inter alia, of the United Kingdom trade mark HENDERSON protected by Registration No. 2109628 in Class 36, dated September 9, 1996, in respect of a variety of services in the financial sector. HGI has been in business since 1934 and is also very well-known in its field of business.
(5) HGI is also the registrant of the domain name <henderson.com>, registered on June 23, 1994. This domain name has continually been used by HGI.
5. Partiesí Contentions
(i) In the light of the foregoing factual background, the Panelist does not propose to recite the Complainantís contentions, which are directed primarily to establishing the fact (which is indisputable) that the Complainant enjoys a considerable reputation and goodwill in its area of industry. The Complaint is wholly defective in not providing any evidence which might suggest that the Respondent has no legitimate interests in the Domain Name and that it has been acting in bad faith.
The Respondent explains that:
(i) All intellectual property rights in the trade mark HENDERSON are registered in the name of HGI. This registration is for historic reasons. The application for the Domain Name, however, was made in the Respondentís name rather than that of HGI. This was because of changes in the AMP Groupís corporate structure and for the purpose of having one intellectual property central holding company for the ownership of intellectual property rights, such as domain names, within the AMP UK Group. The Respondent and HGI are part of the same corporate group and therefore, while the Respondent is not the registered owner of the HENDERSON trade marks, it is a beneficiary of such trade mark;
(ii) The Respondentís and the Complainantís trade marks are registered in different classes. They have and continue to co-exist on the trade mark register as they relate to different goods. In addition, the marks have been and continue to be used in relation goods on the market without confusion. The registration of the Domain Name by the Respondent will not cause confusion among the end users of the Complainantís goods given the difference in the goods and services provided under the HENDERSON mark by the Complainant compared to those provided under the HENDERSON mark by the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) The Domain Name is identical 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 or is being used in bad faith.
There is no doubt that the Domain Name is identical to the trade mark "HENDERSON" in which the Complainant has rights, and that the Complainant has established (i).
However, given the registration of "HENDERSON" by HGI and the fact that it has been in business since 1934, it is plain that the Respondent has rights and legitimate interests in respect of the Domain Name, and that the Complainant has failed to establish element (ii).
Finally, there is no evidence that the Respondent registered or has used the Domain Name in bad faith. On the contrary, registration of the Domain Name by the Respondent was a wholly legitimate act. It is the Complainantís misfortune that the Respondent "got there first".
The finding that the Complainant has failed to establish either of elements (ii) or (iii) above is sufficient for dismissing this Complaint.
Paragraph 4(l) of the STOP Policy requires the Panelist to decide, in accordance with the criteria there set out, whether to allow any further challenges. Having decided that the Complainant has failed to establish its case, two options are open to the Panelist, as set out in paragraph 4(l)(ii)(2) and (3) of the STOP Policy.
"2. In the event that you [i.e. the Respondent] demonstrate that you have legitimate rights to the domain name, the Panel will dismiss the complaint, and decide that no subsequent challenges under this Policy against the domain name(s) that is/are the subject of the Panelís decision shall be permitted.
3. In the event that you do not, or are unable to demonstrate legitimate rights to the domain name(s), and the Complainant is unable to demonstrate either (a) it has legitimate rights, or (b) the domain name(s) was/were registered in bad faith, the Panel will dismiss the complaint, and decide that subsequent challenges under this Policy against the domain name(s) that is/are subject of the Panelís decision shall be permitted. Such challenges under this Policy, however, may not be brought by the same Complainant."
A finding in accordance with (2) above would exclude any further challenges. The Respondent has clearly demonstrated that it has "legitimate rights" to the Domain Name, and accordingly it is appropriate to order that no subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
The Complaint is dismissed.
In accordance with STOP Policy paragraph 4(l)(ii)(2), the Complainant having failed in the Complaint and the Respondent having proved to the satisfaction of the Panel that it has legitimate rights in respect of the Domain Name, the Panel orders that no subsequent challenges to the Domain Name under the STOP Policy shall be permitted.
Dated: July 22, 2002