WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

MFI UK Limited and MFI Furniture Group plc v. Mr. Raymond Jones

Case No. D2003-0102

 

1. The Parties

1.1 The Complainants are MFI UK Limited and MFI Furniture Group plc of London, United Kingdom of Great Britain and Northern Ireland ("U.K. "), represented by Michael Coyle of Lawdit Solicitors of Southampton, U.K.

1.2 The Respondent is Mr. Raymond Jones of Liverpool, U.K. represented by Liser Jones.

 

2. The Domain Name and Registrar

2.1 The disputed domain name is <mfiuk.com> (the "domain name") which is registered with Easyspace Limited, U.K. (the "Registrar").

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2003. On February 12, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On February 13, 2003, Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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").

3.2 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 February 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was originally set at March 6, 2003.

3.3 It is convenient to state at this stage that an issue has been raised in these proceedings as to the mental health and capacity of the Respondent to deal with the matters which have been alleged against him. This matter is first raised in the Complaint itself which annexes supporting evidence including copies of e-mail correspondence between the Complainantsí solicitors and Ms. Jones, representing the Respondent. The Panel takes the view that the nature of this evidence is personal to the Respondent and should not form part of the published Decision which is non-confidential. Given that all of the parties are aware of the details of the evidence the Panel does not propose to repeat those details in this Decision.

3.4 For present purposes it is sufficient to say that Ms. Jones in her e-mail of August 5, 2002, raised questions as to the ability of the Respondent to deal with the matters that were alleged against him. In due course, as indicated above, the Complaint was filed and these proceedings were commenced. On February 17, 2003, Ms. Jones responded to the Center indicating again that the Respondent was unable to deal with the matters alleged against him. On March 4, 2003, the Respondent sent an e-mail to WIPO indicating that he would like to represent himself but was unable to do so for medical reasons and enclosed supporting medical evidence. The Center treated that e-mail as a request for an extension of time and asked the Complainantsí solicitors for their views. The Complainantsí solicitors on March 5, 2003, made clear they thought this was a decision for the Center to make but indicated that they believed the Respondentís condition had been ongoing for some time and thought that it was unlikely that the position would change in the near future. They suggested an extension of 14 days. The Center then granted an extension of time until March 20, 2003. A further e-mail was received from the Respondent indicating that he was still unable to deal with the matter within the time allowed. Further medical evidence was attached to that e-mail.

3.5 On March 18, 2003, the Center indicated that it could not grant an indefinite extension of time as this was incompatible with the expedited process created by ICANN but it would, however, grant an extension of time until March 31, 2003. On March 28, 2003, Ms. Jones sent a further e-mail to the Center indicating that having taken further medical advice the Respondent was still unable to deal with matters alleged against him. It was alleged in this e-mail that the cause of the Respondentís condition was the "fabricated and untruthful complaints that had been submitted against him." In this e-mail Ms. Jones asked for a further two week extension to allow her time to file a Response and stated that she was aware that two extensions had already been given but "I can assure you this is the last request." It was also alleged in this e-mail that the Complaint which had been submitted was "defamatory, untruthful, fabricated and rather damagingÖ." The Center on March 28, 2003, again asked the Complainantís solicitors as to their views in relation to this request. In response on March 28, 2003, the Complainantís solicitors indicated that they had been dealing with a parallel Complaint in the United Kingdom being made via Nominet and stated that Ms. Jones had been acting diligently on behalf of Mr. Jones in those proceedings and could not see why a further extension was necessary in these proceedings. On March 28, 2003, the Center sent an e-mail to Ms. Jones declining the request for a further extension and indicating the date for filing a Response remained at March 31, 2003.

3.6 Again, on March 28, 2003, Ms. Jones responded to the Centerís notification objecting to the refusal to grant a further extension. In this e-mail Ms. Jones requested details of the Centerís "own regulatory body." In reply the Center provided references to various formal documents explaining how the Policy operated. A further e-mail from Ms. Jones followed again on Friday, March 28, 2003, with further complaints about the way the Policy was being implemented. Yet a further e-mail followed on March 28, 2003, from Ms. Jones with reference to matters which were taking place in the Nominet proceedings. On Monday, March 31, 2003, Ms. Jones sent an e-mail to ICANN complaining about what she said were "unfair proceedings against a very sick man."

3.7 On April 1, 2003, the Center sent a further e-mail to Ms. Jones indicating that a Response had not been received but "in light of the circumstances surrounding this case" a final extension was being granted until April 4, 2003. On April 2, 2003, Ms. Jones replied indicating that these matters were all subject to a mediation in the Nominet proceedings. On April 3, 2003, the Complainantsí solicitors sent an e-mail to the Center indicating that the Nominet mediation had no bearing on the WIPO UDRP. On April 3, 2003, Ms. Jones sent a further e-mail to the Center complaining about the procedure and stating that there were exceptional circumstances and that the Complaint "has been submitted to harass the Respondent." On April 3, 2003, Ms. Jones sent yet a further e-mail to the Center complaining about the way the Complainantsí solicitors had handled further matters and indicating that had she been given "the two week extension that I asked for, I could have proven that the Complaint was submitted in bad faith Ė but because WIPO took the word of the person who submitted it in bad faith, the Respondent was allowed to be harassed and punished yet again." On April 3, 2003, the Complainantís solicitors sent an e-mail to Ms. Jones, copied to the Center, apologising if anything they had done had caused offense but indicating that all they were doing was referring to the medical evidence that had been exhibited by the Complainant.

3.8 On April 7, 2003, the Center sent an acknowledgement of Response to Ms. Jones indicating that it considered the e-mail exchange that had taken place between March 31, 2003 and April 4, 2003, to constitute the Response of the Respondent.

3.9 The Center appointed Nick Gardner as the Sole Panelist in this matter on April 24, 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. A Decision is due to be provided by May 8, 2003.

3.10 It is clearly not the function of the Panel in these circumstances to seek to evaluate the competence or otherwise of the Parties to deal with matters that are alleged against them. Medical evidence has been adduced which appears to indicate that the Respondent is unable personally to deal with the matters alleged against him. However, it does not seem to be disputed that Ms. Jones acts as the Respondentís representative and is in a position to deal with matters on his behalf and with his authority. In these circumstances the Panel concludes that it is proper to proceed with this determination. Although no formal Response has been received, the Panel proposes to treat the various matters raised in the lengthy e-mails filed by Ms. Jones as setting out the Respondentís case. The Panel will endeavour to summarise these in Section 5 below, although the e-mails are very long and in many cases go into areas that are completely irrelevant to any matters to do with this determination. The Panel will also seek to identify any matters that assist the Respondentís case even if they have not been expressly identified by Ms. Jones.

 

4. Factual Background

4.1 MFI is the leading manufacturer and retailer of furniture in the UK. It has over 200 retail outlets under the name "MFI." The first Complainant is the trading company; the Second Complainant is its parent company and owner of registered trademarks for "MFI."

4.2 The Respondent was employed by the first Complainant as a security officer until his employment was terminated at the beginning of April 2002. The domain name was registered in January 2002, whilst the Respondent was still employed by the first Complainant. He also registered the domain names <mfiuk.co.uk> and <mfi-uk.co.uk>. A separate Nominet complaint is proceeding in relation to these domain names.

4.3 The Respondentís website contains various items of text highlighting Mr. Jonesí case and alleging that he was "bullied and sacked by management after he tried to whistle blow on his incompetent supervisor." The site appears under a headline banner of "Manufacturers Fighting Injustice UK." Whilst parts of the site purport to anonymise the company that had employed Mr. Jones, various other pages from the site, which have been exhibited, clearly refer to "MFI Furniture."

 

5. Partiesí Contentions

Complainant

5.1 The Complainants asserts that the domain name in dispute is identical to the terms MFI UK and MFI UK Limited. Although neither of the Complainants has registered marks for MFI UK, they do own registered trade mark rights for MFI and assert that the commonplace addition of UK provides unregistered rights in those terms as trademarks.

5.2 The Complainants assert that the website is not a genuine "protest" site and has not been produced in good faith. In this regard they note that the domain names were registered before the Respondent was dismissed from his employment and therefore before he can have had any genuine grievance in this respect.

5.3 The Complainants go on to identify evidence that approaches have been made to the Complainant seeking to adduce payment for the return of the site. In this regard an e-mail of July 31, 2002, from a Mr. Paul Murphy (paulmurphy@carebar.co.uk) has been exhibited. Mr. Murphyís e-mail describes himself as being a member of the "Care Bar Legal Department." Care Bar (according to later evidence filed by Ms. Jones in her e-mails) appears to be some sort of support organization for carers, although details are not clearly given. The <mfiuk.com> domain name resolves to the website described above which is hosted under a Care Bar domain name. The e-mail concerned states "You might be interested to know that Mr. Jones has stated that he would like to sell all of his Manufacturers Fighting Injustice UK domains Ö if you would like to offer him a sensible offer, you will be able to get your mail. He is also willing to handover the websiteís content as part of the purchase agreement."

5.4 The Complainantsí solicitors also exhibit evidence of a telephone conversation with Ms. Jones. In this conversation the Complainantsí solicitors offered £500 for the domains plus the administrative costs of transferring the names. They also offered to fund the cost of purchasing domain names which would accurately reflect Mr. Jonesí continued campaign. They indicated in this conversation they had no instructions to deal with employment related issues between the Respondent and the Complainants. Ms. Jones in this conversation indicated that cases had gone to court which resulted in "the victim" receiving £100,000. To be fair to Ms. Jones it is not clear whether she is quoting this figure in relation to amounts that may arise out of employment law issues or in relation to the domain name. In any event the discussions did not proceed further.

5.5 Further evidence has been filed by the Complainantsí relating to offensive e-mails sent from a hotmail address which appear to make reference to the website hosted at the Domain (and the fact that that site was "taken down" after correspondence to the ISPs concerned). The Panel does not, in all the circumstances, propose to rely upon these e-mails as whilst the Complainantsí seek to draw an inference that they originated from the Respondent, the Panel declines to find the evidence sufficiently clear in this regard.

Respondent

5.6 The Respondentís case, so far as it can be discerned from the lengthy e-mails that Ms. Jones has produced is as follows:

a) Mr. Jones is doing no more than representing himself as what he is, a Manufacturer who is Fighting Injustice in the UK.

b) The site name is not identical to the Complainantsí name.

c) Mr. Jones is carrying on activities as MFI UK not MFI Limited and is operating a legitimate site with a legitimate title and a legitimate purpose.

d) Mr. Jones does not seek to sell furniture he simply wants to highlight a loophole in the UK legal system whereby employees do not get protected rights until they have been employed for a certain length of time.

e) The complaint is libelous and damaging (no clear details are given as to why this is said to be the case).

f) The proceedings are unfair and constitute the bullying of a sick man (again, no real details are given as to why this is said to be the case).

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.

6.2 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the ICANN Rules applicable to the Policy so as to prevent this Panel from determining the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy and the Panel will treat Ms. Jonesí e-mails as setting out the Respondentís case.

6.3 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:

(i) that domain name is identical to or confusingly similar to the "MFI" trademark;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name is registered and is being used in bad faith.

Identical or Confusingly Similar

6.4 The Panel accepts that the Complainants are the proprietors of the registered trademark MFI and have extensive reputation and goodwill, by reason of their very well known activities, in the term MFI. In those circumstances the Panel concludes that the domain name (which involves only the addition of the common designation UK identifying the United Kingdom) is confusingly similar to a trademark in which the Complainants have rights.

Rights or Legitimate Interests

6.5 The Respondent has not demonstrated any rights or legitimate interests in the term MFI UK. Indeed the Respondentís purported interest in the term makes no sense. Assuming, in the Respondentís favour, that the website at the domain name is being operated as a genuine grievance site whereby the Respondent wishes to express his objections to the way either he has been treated individually by the Complainants, or employees generally are treated in the UK as a matter of law, the supposed title of the site "Manufacturers Fighting Injustice in the UK" makes no sense whatsoever. The logical name for the site would be "Employees Fighting Injustice in the UK." The Panel agrees with the Complainantsí submissions that the name has been "obviously contrived" in this regard. Accordingly the Panel concludes that the Respondent has not shown any rights or legitimate interests in the domain Name.

Registered and Used in Bad Faith

6.6 Accordingly, the critical question is whether the registration by the Respondent and subsequent use of the domain name has been in bad faith. It is well known that there are a range of ICANN decisions relating to "protest sites" where decisions have been rendered one way or another depending upon the particular facts of the case and the nature of the site concerned.

6.7 In this case the Panel stresses that it expresses no views whatsoever upon the merits or otherwise of the Respondentís claim in relation to how he has been treated by the Complainants. The Panel also has no remit to consider the contents of the site and any complaints the Complainants may have in that regard. Alternative legal remedies are available to the Complainants should they choose to follow those and it is not the function of the Panel to take such matters into account.

6.8 The Panel will assume in the Respondentís favour that the site at the domain names contains details of grievances which are genuinely held by the Respondent.

6.9 It accordingly follows that the question is whether the Respondentís registration and use of the domain name as a vehicle for a website intended to express his complaints was or was not in bad faith. In the particular circumstances of this case the Panel has concluded that the registration and use was in bad faith, for the following reasons:

a) Unchallenged evidence is filed that the Respondent registered the domain name before he was dismissed. It is difficult to see how that could be a registration in good faith given that, at that time, he could not have had the grievances which the site is now being used to express.

b) He has registered a range of other domain names clearly relating to the Complainantsí business. It is difficult to see why those are needed.

c) As indicated above, the purported name of the site "Manufacturers Fighting Injustice" bears no relation to the nature of the complaint the Respondent is seeking to make and appears to have been artificially derived to correspond to the Complainantsí name.

d) There is at least some evidence of correspondence and discussions taking place in which the Respondent, or those representing him, have been seeking to attract offers from the Complainants in respect of the domain names.

e) It may be legitimate to combine a parties name with some other term to indicate a legitimate protest (see various of the decisions relating to "sucks" in this context). In this case, however, what is used is merely a clear and obvious variation of the Complainantsí name.

f) The Complainants in any event offered to pay the Respondentís representative £500 plus reimbursing any administrative costs involved, plus the costs of obtaining an alternative domain name which would allow the Respondent to continue his campaign. This offer appears to have been rejected out of hand.

6.10 In all the circumstances the Panel takes the view that the combined effect of the above matters is to indicate that the registration of the domain name was not in good faith and its subsequent use has not been in good faith.

6.11 Accordingly the Panel concludes the domain name was registered and is being used in bad faith. The Panel therefore concludes that the Complainants have established each of the elements of paragraph 4a of the Policy.

 

7. Decision

7.1 In the light of the above findings, the Panelís decision is as set out below.

7.2 The domain name is identical or confusingly similar to the trademarks in which the Complainants have rights within the meaning of paragraph 4(a)(i) of the Policy.

7.3 The Respondent has no rights or legitimate interests in respect of the domain name within the meaning of paragraph 4(a)(ii) of the Policy.

7.4 The domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7.5 Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the first Complainant.

 


 

N. J. Gardner
Sole Panelist

Dated: May 8, 2003