WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pickfords Limited v. Blackcat, Blackcat
Case No. D2003-0186
1. The Parties
The Complainant is Pickfords Limited, Heritage House, 345 Southbury Road, Enfield, Middlesex, EN1 1UP, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant of the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Blackcat, Blackcat, 570 Fosse Way, Leicester, Leicestershire, LE7 4TR, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names are <pickford-removals.com> and <pickfordremovals.com> (the "domain names"). They are registered with Tucows, Ontario, Canada (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in hard copy on March 6, 2003.
On March 6, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On the same day, Tucows transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the domain names and providing the contact details for the administrative, billing, and technical contacts. The Registrar also confirmed that the domain names are registered with Tucows.
On March 7, 2003, the Center notified the Complainant of formal deficiencies, because the Complaint was not submitted by email and the Complainant did not submit four copies of the Complaint. On March 10, 2003, the Complainant submitted its Complaint by email. The Center received four hard copies of the same on March 12, 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 March 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 2, 2003.
On March 24, 2003, the Center received a copy of a one-page letter from the Respondent to the Complainantís representative, in which the Respondent disputed the Complainantís claims. On March 25, 2003, the Center notified the Respondent that the Response should be communicated in accordance with the Rules.
On April 1, 2003, the Center received an unsolicited supplemental filing from the Complainant.
Many panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission or arguments by the Respondent that the Complainant could not reasonably have anticipated (Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113 and cases cited).
Here, the Complainantís submission does not contain evidence that was unavailable at the time of the filing of the Complaint, nor evidence related to any argument raised by the Respondent which the Complainant could not reasonably have anticipated. There are no exceptional circumstances that would otherwise justify its admission into evidence. Accordingly, the Panel will not take the unsolicited submission into account in making its determination.
On April 7, 2003, the Center notified the Respondent that the latterís communication of March 24, 2003, could not be considered as a due Response, since it did not comply with any of the formalities required by UDRP. The Center further informed the Respondent that it would proceed with the appointment of the Administrative Panel and that the Respondent still had the possibility to file a late Response before such appointment.
The Center appointed Fabrizio La Spada as the Sole Panelist in this matter on April 16, 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
The Complainant is the owner of several trademarks consisting of or including the word "Pickfords," registered in the United Kingdom and throughout the world. Most of the registrations are in international class 39 for, amongst others, transportation and delivery of goods, removal services, packing and crating of goods, guarded storage and guarded transport of goods and valuables, warehouse storage of goods, etc.. The Complainant has produced evidence from the United Kingdom Patent Office establishing its trademark rights in several "Pickfords" trademarks. According to these documents, the first "Pickfords" trademark was filed as a word mark in the United Kingdom on October 1, 1986, in international class 39, for the services mentioned above.
The domain names were registered by the Respondent on January 18, 2001. The Respondent is listed as registrant, and as administrative and technical contact for the domain names. On March 13, 2003, date of commencement of the proceedings, the domain names were inactive.
On January 24 and 29, 2003, the Complainantís representative sent two cease and desist letters to the Respondent and requested, amongst others, the transfer of the domain names. The Respondent did not reply to these letters.
In these letters, the Respondent referred to a previous UDRP decision rendered by a WIPO Administrative Panel on June 22, 2001, in connection with the domain name <pickfordremovals.com> (Case No. D2001-0333). In that decision, the Administrative Panel found that Black Cat, although not the registrant of the domain name, was the initial registrant and the "factual owner" of the same. The Administrative Panel gave Black Cat the possibility to respond to the Complainant. Black Cat provided an answer. In that decision, the Administrative Panel found in favour of Pickfords Limited and ordered that the domain name be transferred.
5. Partiesí Contentions
The Complainant alleges that it has continuously used its famous mark "Pickfords" in connection with moving services since at least the mid-1600ís.
The Complainant submits that the domain names are identical to the "Pickfords" mark in combination with the common trade word for household moving services.
The Complainant also contends that the Respondent has no rights or legitimate interest in respect of the domain names, because it is in no way connected with the Complainant and has no authority, license, or permission from the Complainant to use the latterís trade name, trademarks, or service marks. The Complainant submits that the Respondentís primary motivation for registering a domain name incorporating the "Pickfords" mark is to draw upon the goodwill associated with such mark, to prevent the Complainant from registering this domain name for its own use and/or to use the domain name "at some point to attract potential customers" by causing them to believe that it is affiliated to or sponsored by the Complainant.
The Complainant further alleges that there is no evidence of any actual or contemplated good faith use of the domain names by the Respondent. It submits that the trademark "Pickfords" is widely known in the United Kingdom and in the United States and that the Respondent would have been aware of it. According to the Complainant, registration of a domain name with actual awareness of prior registration of a mark and no claim of superior rights has been held to be evidence of bad faith. In this respect, the Complainant contends that the Respondentís passive holding of the domain names and failure to respond to the letters mentioned above strongly suggest that the Respondent was aware of the Complainantís reputation and goodwill and that it registered the domain names for the purposes of preventing the Complainant from reflecting the "Pickfords" trademarks in a corresponding domain name.
The Complainant also points out that it already succeeded in obtaining the transfer of the domain name <pickfordsremovals.com> from the Respondent, which was the original registrant of such domain name (see Pickfords Limited v. Shop Shop Shop, WIPO Case No. D2001-0333).
The Complainant seeks the transfer of the domain names.
The Respondent did not file an official response. However, it transmitted to the Center a copy of a letter sent to the Complainantís representative on March 21, 2003. This communication was received by the Center on March 24, 2003, within the deadline set for a Response. The Panel considers that this communication must be taken into account, as it contains the position of the Respondent in relation to the Complaint.
In this letter, the Respondent stated that it is the rightful owner of the domain names, "based on the prudent purchase in advance of the two [Ö] domains." It also pointed out that the Complainantís trademark has an "s" at the end of the word "Pickford," whereas the domain names do not.
The Respondent also submitted that it registered the company Pickford Removals in Gibraltar as a Limited company, Nr. 87683. It produced (as an attachment to its letter to the Complainantís representative) a Certificate of the Incorporation of a Company, dated March 17, 2003, showing that the company Pickford Removals Limited is registered in Gibraltar.
According to the Respondent, the domain names will be used legitimately for a removals company operated from Gibraltar. Moreover, the Respondent states that it has not offered the domain names for sale, nor cybersquatted, used in bad faith, or passively held them.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) are the domain names identical or confusingly similar to such trademark or service mark.
As regards the first question, the Complainant has provided satisfactory evidence that it is the owner of several trademarks, including "Pickfords" trademarks registered in the United Kingdom. In particular, the Complainant is the owner of the word mark "Pickfords" registered in the United Kingdom in class 39 under Nr. 1285669 (filing date October 1, 1986).
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainantís trademarks. First, prior panels consistently have held that domain names that contain obvious misspellings or close variants of a trademark ownerís mark are identical or confusingly similar to that mark (see, e.g., Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428; AltaVista Co. v. Fairbairn, WIPO Case No. D2000-0849; Aurora Foods, Inc. v. David Paul Jones, WIPO Case No. D2000-0274). In this case, the Panel considers that "Pickford" is confusingly similar to "Pickfords."
Second, prior panels have found that the addition of a generic word or modifier to a trademark in a domain name does not eliminate confusion (see, e.g., Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428; Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246; Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; GA Modefine SA v. Armani International Investment, WIPO Case No. D2000-0305). This is in particular the case when, as in this matter, the generic word that is added to the trademark is descriptive of the activity and business of the Complainant.
The Panel therefore finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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."
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name, for the following reasons.
First, there is no evidence on record that, before notice of the dispute, the Respondent has used or prepared to use the domain names. The Respondent has alleged that it intended to use the domain names for a removals company operated from Gibraltar. However, there is no indication of any demonstrable preparations for such use. The Panel notes that the Center received a copy of a Certificate of the Incorporation of a Company named Pickford Removals Limited, incorporated in Gibraltar. The question whether this document could be considered sufficient evidence of a preparation to use the domain names need not be answered, since the certificate is dated March 17, 2003, and is therefore subsequent to the notice of the dispute to the Respondent. The Panel further notes in this respect that there is no indication on record that this company Pickord Removals Limited is related to the Respondent.
Second, there is no evidence that the Respondent has been commonly known by the domain names.
Third, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names. On the contrary, it appears from the record that the Respondent does not use the domain names.
Finally, the Panel notes that the Respondent is not connected to the Complainant and has no authority, license or permission from the Complainant to use the latterís trademarks.
In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4(b)(iii) and (iv) provide as instances of registration and use in bad faith circumstances in which:
"(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor.
"(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be stressed that the circumstances listed in Paragraph 4(b) of the Policy are not exhaustive.
For the reasons set out below, the Panel is satisfied that the Respondent has registered and used the domain names in bad faith.
First, the Panel finds that the Respondent was aware of the Complainantís trademarks when it registered the domain names. Indeed, as set out above, there has already been a dispute between the parties, concerning the domain name <pickfordsremovals.com> (Pickfords Limited v. Shop Shop Shop, WIPO Case No. D2001-0333). This domain name was registered in 1999. In December 2000, the Complainantís representative (which already was Boult Wade Tennant) sent a cease and desist letter to Black Cat. This letter was received by Black Cat on or before January 9, 2001, that is shortly before registration of the domain names (on January 18, 2001).
The Panel considers that registration of a domain name incorporating a third partyís trademark with actual knowledge of such partyís trademark rights is evidence of bad faith (see, e.g., PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561; Amazon.com, Inc v. Sung Hee Cho, WIPO Case No. D2001-1276; see also Fiber-Shield Industries, Inc. v. Fiber Shield Ltd., NAF FA0092054). Moreover, in the Panelís opinion, registration (only a few days after receiving a cease and desist letter) of a domain name almost identical to a previous domain name which was found to be held in bad faith is itself further evidence of bad faith.
In addition, the Panel finds that there is no justification in the statements and documents submitted for the use of the Complainantís trademark in the domain names, other that the attempt to attract, for commercial gain, Internet users to the Respondentís website, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondentís website. It should be stressed that the addition of the word "removals" to the Complainantís trademark supports this finding, since it is a descriptive term which corresponds exactly to the core business of the Complainant.
The Panel notes that the Respondent has produced a Certificate of the Incorporation of a Company certifying that, on March 17, 2003, a company Pickford Removals Limited was registered in Gibraltar. As set out above, the Panel considers that this document cannot relieve the Respondent from its bad faith: the date of the document is posterior to the notice of the dispute to the Respondent and there is no evidence that this company is related or affiliated to the Respondent. In addition, the Panel notes that in the previous case referred to above (WIPO Case No. D2001-0333), the Respondent had alleged as a defense that the domain name was registered for a Mr. A. Pickford. This defense, which was dismissed by the previous Panel, was not reiterated in the present case.
Finally, as previous Panels have held, the failure to develop a website for the domain names can support the bad faith inference (Amazon.com, Inc v. Sung Hee Cho, WIPO Case No. D2001-1276). Moreover, in this case, the Respondent has stated that it intended to use the domain names for a removals company. The Panel considers that this is further evidence of bad faith, inasmuch as it would disrupt the business of the Complainant, which would be a competitor, and would attract users to the Respondentís website, due to the likelihood of confusion with the Complainantís mark.
On the basis of the elements set out above, the Panel finds that the domain name was registered and used 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 names, <pickford-removals.com> and <pickfordremovals.com> be transferred to the Complainant.
Fabrizio La Spada
Dated: May 13, 2003