WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd

Case No. D2003-0654

 

1. The Parties

The Complainant is Mentor ADI Recruitment Ltd, trading as Mentor Group, of Stockton, United Kingdom, represented by The Endeavour Partnership, LLP of Stockton, United Kingdom.

The Respondent is Teaching Driving Ltd of Pontefract, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name <letsdrive.com> (the "Domain Name") is registered with Moniker Online Services, LLC (the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on August 20, 2003, and in hard copy on August 25, 2003. The Center transmitted its request for registrar verification to the Registrar by email of August 20, 2003. The Registrar responded by email of August 21, 2003, confirming that it was the registrar of the Domain Name, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the registration, that the Domain Name would remain locked during this proceeding, and that the Respondent had submitted in the registration agreement to the jurisdiction of the courts at the location of the Registrarís principal office. The Registrar also provided the contact details of the Respondent.

In response to the question whether it had received the Complaint, the Registrar stated "No were are not in receipt of the supplement". The Panel interprets this as meaning that the Registrar had received the body of the Complaint but not the Appendices, as would be normal since the body of the Complaint would be sent by email and the Appendices would arrive later with the hard copy. The Complaint itself confirms that it had been sent to the Registrar by post. If there has been any irregularity in this regard, the Panel waives it under its general powers.

In response to the question asking what was the language of the registration agreement, the Registrar simply provided the url of the relevant page of its website. Such responses do not assist the efficient operation of the Policy, but the Panel has confirmed that the page displays a registration agreement in English and has no reason to doubt that the registration agreement in respect of the Domain Name was in English.

The Center verified that the Complaint satisfied the formal requirements of 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 August 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2003. The Response was filed with the Center on September 12, 2003.

The Center appointed Jonathan Turner as the sole panelist in this matter on September 19, 2003. 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.

The Complaint identifies the Complainant as "The Mentor Group" and claims that it is a limited company incorporated in England and Wales. However, the registered trademark relied upon in the Complaint is in the name of "Mentor ADI Recruitment Limited". The Annex to the Complaint includes a brochure in which "Mentor Group" is used as a trading name and a footing in small type refers to "Mentor ADI Recruitment".

The Response states that "The Mentor Group" is only a trading/marketing title which has been used by various loosely associated companies and individuals and is not a legal entity. This appears to be confirmed by an email in the Annex to the Response. The Response contends that the Complaint should have been filed in the name of "Mentor ADI Recruitment Ltd" and states that the Respondent does not object to the matter proceeding as if this company and other companies considering themselves to be part of the Mentor Group are the Complainant, provided that the Center ensures that they are all bound by the decision.

The Panel considers that the Respondent is right to criticize the Complainant for inaccuracy in the identification of the Complainant. However, the Panel considers that the Complaint was intended to be and should be interpreted as made in the name of Mentor ADI Recruitment Ltd trading as Mentor Group. The Panel has no reason to doubt that this company exists and that, so interpreted, the Complaint was properly made in the name of an existing company.

Having reviewed the file, the Panel considers that the Complaint complied with the applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant and/or associated persons provide training courses for driving instructors and grant franchises to driving instructors so trained. The Complainant registered a logo containing the words "lets drive" as a trademark in respect of driving instruction in the UK Trademarks Registry with effect from February 16, 2002.

The Respondent also franchises driving instructors under the name "Learner Driving Centres". The Domain Name was registered by a third party on March 12, 2000, and acquired by the Respondent on March 14, 2003. Since then, the Respondent has pointed the Domain Name to its website which promotes its franchised operations and also contains a page about ORDIT, a government sponsored register of approved driving instructor training services. This page states that Mentor Group is not approved by ORDIT.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that it has registered rights in the trademark "LETS DRIVE", that it has incurred expenditure amounting to over £5 million promoting this brand, and that the Domain Name is identical to it.

The Complainant goes on to say that the Respondent has no rights or legitimate interests in respect of the Domain Name since it has never been known under this name and is now using it to lead directly to its competing website.

Finally, the Complainant contends that the Domain Name was registered and is being used by the Respondent in bad faith in order to prevent the Complainant from reflecting its name in a corresponding Domain Name, and/or to disrupt the Complainantís business by displaying defamatory material regarding the Complainantís relationship with ORDIT (which the Complainant says is excellent), and/or to attract potential customers to its competing offering by creating a likelihood of confusion.

The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent accepts that Mentor ADI Recruitment Ltd has some rights in the registered trademark but denies that this company is using the mark itself and disputes the Complainantís contention that £5 million has been spent promoting this brand. The Respondent further denies that the Domain Name is confusingly similar with the graphical device which is the registered trademark.

The Respondent states that it acquired the Domain Name because it is a useful, relatively short Domain Name which the Respondent may use for possible future ventures, and that it is currently pointed at its main website pending the development of a more specific use. The Respondent contends that as a large driving school, it has a legitimate interest in this Domain Name, which may be useful in developing its business.

The Respondent acknowledges that it was aware that the Mentor Group had been promoting a driving school called Letís Drive since its inception in 2001. The Respondent contends that it was reasonable to assume that the Complainant did not want the Domain Name since the Complainant had done nothing to acquire it since 2001. The Respondent suspects that the Complainant is only interested in the Domain Name because it is being used to inform people that the Complainant is not approved by ORDIT. Finally, the Respondent denies that there has been any confusion, pointing out that its website has received only 65 hits via the Domain Name since it acquired the name on March 14, 2003.

The Respondent requests that the Complaint be rejected.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to establish a valid complaint, the Complainant must prove (A) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (B) that the Respondent has no rights or legitimate interests in respect of the domain name; and (C) that the domain name has been registered and is being used in bad faith. These requirements are considered in turn below.

A. Identical or Confusingly Similar to Mark in which Complainant has Rights

It is clear on the evidence and accepted by the Respondent that the Complainant is the proprietor of registered trademark No.2293068 which consists of a logo incorporating the words "lets drive". Although the Respondent alleges that the mark is not being used by the Complainant, it appears that it was used in the brochure annexed to the Complaint and is being used by at least some franchisees. The evidence does not establish that the mark is invalid and in accordance with the Rules, paragraph 15(a), it is appropriate to apply the presumption of UK trademark law that a registered trademark is valid unless shown otherwise.

The Panel does not agree with the Complainant that the Domain Name is identical to this registered trademark. As the Respondent rightly points out, the registered trademark is a logo, not a word mark. However, contrary to the Respondentís submission, the Panel is satisfied that the Domain Name is confusingly similar to this trademark. The words "lets drive" are a prominent feature of the logo and an Internet user familiar with the logo would reasonably suppose that the Domain Name is connected with the logo and its owner.

The Panel finds that the first requirement of the Policy is satisfied.

B. No Rights or Legitimate Interests

The Respondentís potential future ventures using the Domain Name do not constitute a present legitimate interest in the Domain Name within the meaning of the Policy. Indeed, the Policy, paragraph 4(c)(i), specifies that a legitimate interest is demonstrated by, inter alia, use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before notice of a dispute. Although this is only an example in a non-exhaustive list, it clearly indicates that a Respondent should not be able to claim a legitimate interest by identifying a future legitimate use if it has not yet commenced at least demonstrable preparations for this use prior to notice of the dispute. If it were otherwise, the protection afforded by the Policy against misuse of the domain name system would readily be evaded.

Nor does the Respondentís present use of the Domain Name by pointing it to the Respondentís own website qualify as a bona fide offering giving rise to any right or legitimate interest; it is not bona fide to use a domain name confusingly similar to another personís mark to divert Internet users to a competing website.

The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Domain Name was originally registered by a third party prior to the Complainantís adoption of the "lets drive" logo. However, it was acquired by the Respondent subsequent to, and with knowledge of, the adoption of the logo by the Complainant or associated entities.

Although the Policy requires both registration and use in bad faith, it is clear that for the purpose of the Policy "registration" may include registration on acquisition by a new holder. This is evident from the Policy, paragraph 4(b)(i) which refers to circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling it to the Complainant. Although this example of bad faith is not directly in point in this case, it confirms that acquisition in bad faith is to be treated on a par with original registration in bad faith.

The Panel is not persuaded that the Domain Name was acquired by the Respondent to prevent the Complainant from reflecting its mark in a corresponding domain name, and in any case there is no evidence of a pattern of such conduct on the part of the Respondent. Accordingly, the Panel cannot accept the Complainantís contention that the case is an example of bad faith of the kind specified in the Policy, paragraph 4(b)(ii).

However, the Panel is satisfied that, in the circumstances of this case, the pointing of the Domain Name to the Respondentís competing website is evidence that it was acquired and has been used to disrupt the Complainantís business and to attract Internet users to the Respondentís website by creating a likelihood of confusion. Even if, as appears from the Respondentís evidence, the Respondent has not been very successful in attracting users to its site through the Domain Name, the Panel finds on the balance of probabilities that the Domain Name was acquired and has been used for this purpose.

Although the Domain Name has a descriptive connotation, it is not a simple description of the subject-matter and it would be unlikely to be keyed in except by a person seeking information about the Complainant or its associated entities. Therefore, even if only a fairly small number of Internet users have accessed the Respondentís website via the Domain Name, the Panel considers that it is likely that all or most of them were seeking information about the Complainant or its associated entities, and that at least some of them were confused into believing that the website was connected with the Complainant. Such confusion would not be likely to be dispelled by the material on the Respondentís website, unless the user read to the end of the page about ORDIT. Indeed the confusion would be reinforced by the fact that the Respondentís initials, "LDC", which are used prominently on the website, can be taken to be an abbreviation of "letsdrive.com".

The Respondent is fully entitled to publish critical statements regarding the Complainantís accreditation as a driving school, as long as they are true. The Respondent is not entitled to acquire a domain name which is likely to be taken to be that of the Complainant and, by means of such confusion, to use it to divert Internet users seeking the Complainant to the Respondentís own commercial website.

The Panel finds that the third requirement of the Policy is satisfied.

 

7. Decision

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 Name, <letsdrive.com> be transferred to the Complainant.

 


 

Jonathan Turner
Sole Panelist

Dated: September 29, 2003