WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Middletons Lawyers, MMB Legal Pty v. Administration Local
Case No. D2003-0785
1. The Parties
The Complainants are i) Middletons Lawyers and ii) MMB Legal Pty, Melbourne, Victoria, Australia. They are represented by Mr. Stuart Gibson of Middletons Lawyers of Melbourne, Victoria, Australia.
The registration of the disputed domain name is in the name "Administration Local, Manage Technical", Hong Kong, SAR of China. The Respondent is unrepresented and has made no submissions.
2. The Domain Name and Registrar
The disputed domain name, <middletons.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003. On October 7, 2003, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On October 8, 2003, Fabulous.com 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").
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 October 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was November 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2003.
The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in this matter on November 12, 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.
On November 13, 2003, the Complainant sought the leave of the Panel pursuant to Rule 12 to file a supplemental submission on the grounds that new pertinent facts had arisen since the filing of the complaint. The Panel agreed to this request but requested that notice be given to the Respondent which was given until November 25, 2003, within which to comment. The Respondent failed to file any document in response to this invitation.
4. Factual Background
The Complainant, MMB Legal Pty Ltd ("MMB") is a limited company owned and controlled by the Complainant, Middletons Lawyers, an Australian partnership of lawyers practicing in Sydney and Melbourne. The trademark held by MMB is considered partnership property.
MMB Legal Pty is the registered owner of the Australian Trademark 893975 for the words MIDDLETONS LAWYERS in respect of legal and other services in Classes 35, 36, 41 and 42. The trademark was registered with effect from November 2, 2001, whereas the disputed domain name was registered on April 3, 2001. From 1970-78, from 1991-92 and from 2001 to the present, the law firm has been known simply as "Middletons". Since 1946, the word "Middleton" or "Middletons" has been part of the names of the law firm’s previous incarnations. Both Complainants have been registered as business names under Victorian legislation since May 1997.
In October 2001, one Henryk Kobylanski from EPublishing (on behalf of Middletons Lawyers) contacted the Respondent (using the email address provided by Fabulous.com at the time of registration) to enquire about a transfer or sale of the domain name to Middletons Lawyers. The Respondent replied by email on October 23, 2001, and offered to sell the domain name to Mr. Kobylanski for US$14,000.
When the offer to sell the domain name to Middletons Lawyers was made, the firm was unaware that it could apply under the UDRP for the return of the domain name. It therefore made no further attempts to acquire the domain name or to have the registration cancelled until a new marketing manager was appointed at Middletons Lawyers in 2003.
On August 12, 2003, Middletons Lawyers sent a letter of demand requiring the immediate transfer of the domain name to the Respondent, using the address details provided by fabulous.com at the time of registration of the disputed domain name.
The same letter was sent to the registrant’s e-mail address. On August 12, 2003, an email "bounce back" message was received, stating that the message was unable to be delivered. Middletons Lawyers have received no response to their letter dated August 12, 2003.
5. Parties’ Contentions
The Complainant, Middletons Lawyers, is known throughout Australia as "Middletons". Middletons Lawyers have gained a reputation throughout Australia and the world for providing legal services to a wide variety of clients.
The Complainant Middletons Lawyers has a common law mark for the word "Middletons" MMB Legal Pty Ltd, owned and operated by the Complainants is the owner of Registered Business Name 1329818V in Victoria, Australia for "Middletons" and has used this name for some time. MMB Legal Pty is also the owner of Registered Business Name B1601618K in Victoria, Australia for "Middletons Lawyers".
As with many law firms, Middletons Lawyers relies on its mark for its reputation and recognition throughout the legal profession and with its clients. The disputed domain name is confusingly similar to the trademark owned by the Complainants.
"Middletons" is not a word in use in the English language. It is a distinctive word which would not have been legitimately chosen for use by the Respondent, unless it were attempting to trade off the Complainants’ rights in the mark.
The Complainants are not aware of any pending or registered trademarks in the USA, Europe, or Hong Kong for the word "Middletons". This supports the Complainants’ submission that there is no other business in these countries trading under the Middletons name.
Although the registered trademark contains the word "Lawyers", the domain name is confusingly similar to the trademark. The word "Lawyers" contributes in a subordinate manner to the overall impression of the trademark. The word "Lawyers" is merely descriptive of the services provided under and by reference to the Trademark and should only to a very small extent be taken into account in comparing the trademark with the domain name. Previous UDRP case law has followed this approach by reducing the extent to which a descriptive adjunct of the trademark should be taken into account when assessing the overall impression of the trademark: Eltec Elektronik AG v. Eltec Domain Hostmaster, (WIPO Case No. D2000-0406); Time Warner Inc and EMI Group v. CPIC Net (WIPO Case No. D2000-0433).
Australians and people from other countries would expect that the disputed domain name would be owned by the Complainants, especially given that the <middletons.com.au> domain name is owned by the Complainants. Any person who omits the suffix ".au" when attempting to access the domain name owned by the Complainants will be directed to the Respondent’s domain.
The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent does not have any rights or legitimate interests in respect of the domain name. The Respondent is not commonly known by the domain name nor is there any evidence of the Respondent’s use of the domain name in connection with a bona fide offering of goods and services.
The Respondent is also clearly not making a legitimate non-commercial use of the domain name. The domain name originally has links to various sites in specified categories including viagra, BBQ grills, debt consolidation, hair loss and adult sites.
UDRP case law has clearly established that when users are presented with links to sites where they can purchase products and follow links to pornographic websites, this does not constitute a legitimate offering of services. For example, in EZ Pittsburgh, Inc. v. James M. Van Johns, WIPO Case No. D2001-0612 the Panel found that the resolution to a site offering multiple promotional banners and click-through ads was not a legitimate non-commercial use of the domain name, but suggested use by the Respondent for some type of commercial gain.
The domain name was registered and is being used in bad faith by reason of the following:
(a) the contact details given by the Respondent to the Registrar at the time of registration were false and have not been updated;
(b) the domain name contains links to a number of websites including but not limited to a pornographic website; and
(c) the domain name was registered for the purpose of selling to domain name to the Complainant for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name.
The details provided by the Respondent are false and misleading. A proper name has not been provided and the Respondent is no longer contactable by the postal or email addresses provided. The postal address is in Hong Kong, with the post code or zip code of 00000, which the Complainants do not believe to be a legitimate code. The Complainants have received "bounce back" emails when attempting to contact the Respondent by email at the address listed with the Registrar.
The Complainants note that while the Respondent gave a Hong Kong address for the Whois search when registering the domain name, the Registrar is in fact an Australian company which had its registered office, at the time when the domain name was registered, in Melbourne, Victoria, Australia. This is the city where the principal office of the Complainant is located.
In previous cases, registrants who provide incorrect details and intentionally fail to maintain accurate contact information have been found to have registered the domain name in bad faith: Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111.
Following the sending of the letter of demand by Middletons Lawyers on August 12, 2003. The front page of the Respondent’s website was changed so that it no longer referred to adult material. Prior to this date, the website had consistently referred to adult material linked off the front page of the website. The printouts show that, when users clicked on the "adults only" section of the website, they were taken to other pages which continued to be displayed under the URL "www.middletons.com". It was only when a user clicked on one of the links on one of these sub-pages that users actually left the domain.
The linking of pages does not occur at either the old or new website displayed at "www.middletons.com". Users continue to see the URL "www.middletons.com" displayed whether they are looking at adult material, finding mp3 websites or purchasing consumer goods.
This phenomenon serves to tarnish the Complainants’ reputation and the MIDDLETONS LAWYERS trademark and is of particular concern to the Complainants. A user who enters the disputed domain name website expects to arrive at a website belonging to the Complainants. Users are likely to be misled or confused as to the Complainants’ relationship to, affiliation with or endorsement of the pornographic websites which can be accessed through the domain name. The Respondent has attempted to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainants’ trademark. This is evidence of the Respondent’s use of the domain name in bad faith.
Offering pornographic material has frequently been found to be a basis for bad faith: Pfizer, Inc. v. Individual, WIPO Case No. D2003-0419. UDRP case-law indicates that the offering of pornographic material from a domain name incorporating a trademark serves to tarnish the existing trademark and reputation of the owner of that trademark and is therefore evidence of bad faith: CCA Industries, Inc. v. Bobby R Dailey, WIPO Case No. D2000-0148; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205.
Further, paragraph 4(b) of the Policy states that, where a Respondent acquired the domain name for the purpose of transferring or selling it to the owner of the trademark for valuable consideration, this will be evidence of bad faith.
On October 23, 2001, the Respondent offered via email to sell the domain name to Henryk Kobylanski (who was acting on behalf of the Complainants) for US$14,000. This is clearly in excess of the Respondent’s out-of-pocket costs relating to the domain name. The relevant email from the Respondent indicated that the domain name had at the time been recently acquired from its previous owners. The Complainants submit that because the Respondent has no legitimate rights or interests in the domain name and it is being used merely as a "gateway" site, the domain name was acquired from its previous owners for the purpose of selling it for an inflated sum to the Complainants.
Even if the Respondent did not acquire the domain name primarily for the purpose of selling the domain name to the Respondents at an inflated price, the offer to sell the domain name for US$14,000 in conjunction with the Respondent providing false details and offering pornographic material from the domain is sufficient for the Panel to conclude that the Respondent registered and is using the domain name in bad faith.
(a) middletons.com is the owner and operator of an online tobacco advertising and information website portal located at "www.middletons.com";
(b) middletons.com supports all youth smoking prevention programs and campaigns conducted throughout the world;
(c) "middletons.com" is a trademark and service mark of middletons.com; and
(d) an individual by the name of Justin Russom was corporate counsel of middletons.com. The address given was "Level 23, 12 Creek Street, Brisbane" – the same address as the Registrar, fabulous.com.
The website for Dark Blue Sea Limited, located at "www.darkbluesea.com" states that the company operates "pay-per-rank: or performance based web portals which charge advertisers only for the click-throughs that are received to their advertised site. The Complainants submit therefore that Dark Blue Sea Limited receives revenue in accordance with the volume of traffic directed to sites advertised on the "www.middletons.com" website.
On October 21, 2003, the Complainant’s representative wrote to the President of the Queensland Law Society and enquired as to whether Mr. Russom was indeed admitted to practice as a solicitor in Queensland. On October 31, 2003, a response was received to this letter which stated that:
"Justin Russom held a corporate practicing certificate until June 30, 2003. At that stage he was employed by Dark Blue Sea Limited. He has not renewed his practicing certificate since that date and therefore cannot now call himself corporate counsel for any company."
On October 23, 2003, the Complainants discovered that the disputed domain had again been modified, removing references to the site being a portal for online tobacco advertising.
The Complainants submit that the above facts provide a further basis for the assertion that the domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to other online locations by creating a likelihood of confusion with the Complainants’ mark.
The Complainants submit that Dark Blue Sea Limited is a company whose business it is to gain revenue based on the volume of users clicking on advertisements displayed on the "www.middletons.com" site. Internet users are misled into thinking that they are visiting a website belonging to the Complainants and by accessing the disputed domain inadvertently generate revenue for the Respondent and its associated entities. The Complainants therefore submit that the element of bad faith has been made out.
On November 3, 2003, the Complainants’ letter of demand dated August 12, 2003, was returned to the Complainants’ address marked with a Hong Kong stamp stating "RETURN TO SENDER: PO BOX CLOSED".
The Complainants submit that the new facts which emerged after the complaint had been filed are pertinent to the issue of whether the Respondent has made a legitimate non-commercial use of the website. In addition, the Complainants consider that the facts form the basis of a new ground on which they may allege that the Respondent has registered and used the domain name in bad faith.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
The Panel has considered the submissions and evidence and largely agrees with the Complainants’ submissions as outlined above.
Confusingly Similar to Complainants’ Mark
In the view of the Panel, the disputed domain name <middletons.com> is identical to the name "Middletons" by which the Complainant, Middletons Lawyers, is commonly known.
The Complainant, Middletons Lawyers, has clearly demonstrated a common law mark by the use of the word "Middletons" in its firm name for many years, buttressed by the registered business name.
The firm is commonly known by the name "Middletons" – a reflection of the trend – particularly in Australia and New Zealand law firms – for short names instead of the poly-syllabic multi-surname nomenclature of a decade or so ago.
Consequently, in the Panel’s view, the first criterion of the Policy has been met.
Legitimate Right and Interest
The Complainants gave no rights to the name to the Respondent who has not attempted to set up one of the defenses under para 4(c) of the Policy. The second criterion is made out.
The Tribunal notes with interest that a Mr. Justin Russom who, as "corporate counsel" for the Registrar – operating out of an address in Brisbane, seems to be the same person who purports to be "corporate counsel" for <middletons.com> despite the information from the Queensland Law Society that Mr. Justin Russom does not hold a practicing certificate. The Tribunal also notes that he appears to operate from the same address as the Registrar of the disputed domain name.
Bad faith registration and use is established by:
(a) The offer in 2001 by the Respondent to sell the disputed domain name for $14,000.
(b) The lack of proper identification details for the Respondent – particularly giving Hong Kong particulars for what seems to be an Australian enterprise.
(c) The linkages of the website for the disputed domain name to pornographic sites and/or to sites promoting tobacco products.
(d) The spurious claim on the current website that <middletons.com> is "a trademark and service mark of "middletons.com"".
(e) The likelihood of confusion of Internet users – particularly in Australia, seeking information about Middletons Lawyers by the website accessed through the disputed domain name.
The then criterion is proved and the Complaint of Middeltons Lawyers is upheld.
For the foregoing reasons, the Panel decides:
(a) That the domain name <middletons.com> is identical to the mark in which the Complainant Middletons Lawyers has rights; and
(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.
Pursuant to the wishes of the Complainant and according to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <middletons.com> be transferred to the Complainant, MMB Legal Pty.
Hon. Sir Ian Barker QC
Dated: December 3, 2003