WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edward Nugee QC and the other members of Wilberforce Chambers v. Administrator System
Case No. D2004-0780
1. The Parties
The Complainants are Edward Nugee QC and the other members of Wilberforce Chambers, London, United Kingdom of Great Britain and Northern Ireland, represented by Declan Redmond, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Administrator System, of the Ukraine.
2. The Domain Name and Registrar
The disputed domain name <wilberforce.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2004. On September 29, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On September 29, 2004, eNom transmitted by email to the Center its verification response, confirming that the Domain Name is in “locked status” and providing a link to the WHOIS report. The WHOIS report confirmed that the Respondent is listed as the registrant, and provided a telephone number and email address for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 27, 2004. The Center verified that the Complaint together with the amendment to 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 November 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2004.
The Center appointed Warwick Smith as the sole panelist in this matter on November 24, 2004. 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.
In the absence of any Response from the Respondent, the Panel has considered whether the Center has discharged its responsibility to forward the Complaint to the Respondent (paragraph 2(a) of the Rules). The Complaint was transmitted to the appropriate email addresses, including <firstname.lastname@example.org>. It appears from the transmission reports supplied by the Center that neither of the email transmissions was successful. The WHOIS details supplied by the Registrar did not contain a valid or complete address to which the Center could send a hard copy of the Complaint, nor was a fax number supplied.
The Center’s obligation is “to employ reasonably available means calculated to achieve actual notice [of the Complaint] to the Respondent” (paragraph 2(a) of the Rules) (my emphasis). Achieving actual notice is sufficient under the Rules, but if that cannot be done, Rule 2(a)(ii) sets out a number of notification steps which are deemed to be sufficient. One of those steps requires that the Complaint be sent in electronic form to any email address shown on any active web page to which the domain name resolves.
In this case the Complaint showed that the Domain Name has recently resolved (at different times) to at least two active web pages containing email addresses. The Complaint was not sent to those email addresses, and by Procedural Order and request made on December 8, 2004, the Panel sought further information from the Complainant as to any email address to which the Domain Name might presently resolve.
In response to that request, the Centre advised that, at the time the Complaint was notified, the Domain Name no longer resolved to any of the web pages referred to in the Complaint. Instead it resolved to a web page on the website of the United States Federal Bureau of Investigation, which apparently did not contain an email address. The Complainants confirmed in response to the Panel’s request, that on September 27, 2004, they sent a copy of the Complaint to the Registrant’s email address provided in the WHOIS Report on the Domain Name, and that they have not since received any notification of delivery failure.
Rule 2(a)(ii) does not require notification of the Complaint to email addresses on web pages to which a domain name used to resolve but no longer resolves, and the FBI web-page did not provide any email address. It appears also that the Respondent did receive an electronic copy of the Complaint, and therefore had actual notice of the Complaint.
In all those circumstances, the Panel is satisfied that the Center has pursued all means reasonably available to it to achieve actual notice of the Complaint to the Respondent, and has therefore satisfied its obligation under paragraph 2(a).
4. Factual Background
The Complainant is a group of barristers practising in London, headed by Edward Nugee QC. Although each barrister operates as a sole practitioner, they have been known collectively as WILBERFORCE CHAMBERS since about 1990. Permission was given to use the name “Wilberforce” by the eminent Law Lord and former member of Chambers, Lord Wilberforce.
The Complainant’s Trademarks
The Complainants are registered proprietors of United Kingdom trademark no 2203633 in respect of the mark WILBERFORCE CHAMBERS (word and device) registered with effect from July 22, 1999, in class 42 in respect of “legal services provided by barristers in barristers chambers”.
The Complainants also claim common law service mark rights in the terms WILBERFORCE and WILBERFORCE CHAMBERS. The Complainants maintain that they have used the name WILBERFORCE, with or without the term CHAMBERS, consistently and extensively in connection with the provision of legal services to English solicitors, overseas lawyers and clients, both within the United Kingdom and abroad, since 1990. They have used these terms:
(i) on signs outside the Complainants’ premises;
(ii) on letterhead, faxes, compliments slips and other stationery;
(iii) in brochures and on other marketing and promotional material issued to solicitors, clients, journalists and other contacts;
(iv) in advertisements for job applicants.
The Complainants also registered the domain name <wilberforce.co.uk> on August 26, 1997. The website to which this domain name resolves has featured the names WILBERFORCE and WILBERFORCE CHAMBERS on every page, both in its previous and present incarnations.
In support of the reputation and goodwill accrued in the names WILBERFORCE CHAMBERS and WILBERFORCE, the Complainants cite:
(i) the fact that WILBERFORCE CHAMBERS is named in all of the significant directory listings of English barristers, including those published by Legal 500 and Chambers, and achieves high ratings in relation to many areas of practice;
(ii) the fact that WILBERFORCE CHAMBERS and/or WILBERFORCE is regularly mentioned in independent press editorial in national newspapers and legal journals.
The Complainants have also provided evidence of substantial annual turnover generated whilst operating under the names WILBERFORCE CHAMBERS and WILBERFORCE, and significant sums spent by the chambers over the last three years on advertising and promotion.
The Domain Name was first registered on December 20, 2000. According to a WHOIS search conducted by the Complainant on December 12, 2003, the Registrant of the Domain Name was John Hall, residing in Southampton in the United Kingdom. When checked by one of the Complainants in December 2003, the Domain Name did not resolve to a live website.
The WHOIS report shows that the registration details for the Domain Name were updated on August 26, 2004, which, according to the Complaint, is the date on which the Respondent acquired the Domain Name.
On around September 10, 2004, an individual who had been acting as a design consultant for the Complainants tried to access the Complainant’s website by typing in “www.wilberforce.com”, and was diverted to a pornographic site.
During the period from September 10, 2004 to September 18, 2004, the Domain Name resolved to pay-per-view pornographic material situated on at least two websites. The web addresses for these websites included “http://olilivio.parkyourporn.com” and “http://freehost.freehost.byron.xxx-goto.net”. According to the Complainants’ investigations, the material on this first website comes from a pornographic website operated by a Russian organization called PARKYOURPORN, while the material on the second website originates from a website operated by Matlock Business Corp, based in Belize.
On September 10, 2004, the Senior Clerk to the Complainants sent an email to the Respondent at the email address currently listed in the WHOIS report. In this email the Senior Clerk explained the nature of the Complainants’ practice, and complained of the use to which the website to which the Domain Name resolved was being put. The email required that the Respondent immediately cease use of the Domain Name and transfer the Domain Name to the Complainants, offering to pay the Respondent’s reasonable registration and transfer expenses up to a maximum of US$500 if the transfer was effected by September 17, 2004. No response was received to this email, nor was any delivery failure message received.
On around September 20, 2004, the Domain Name was found to divert Internet traffic to the website “http://wilberforce.net”. A printout of the relevant page taken on September 20, 2004, shows a plate of food, underneath which is the following text “‘Your senseless drivel is never wasted on me. I read it, take it on board and discard it appropriately.’ – bellerz”
5. Parties’ Contentions
1. The Domain Name is identical and/or confusingly similar to trademarks in which the Complainants have rights:
(i) The Domain Name is identical to the Complainant’s unregistered rights in the name WILBERFORCE;
(ii) The Domain Name is confusingly similar to the Complainant’s unregistered rights in the name WILBERFORCE CHAMBERS, bearing in mind that the word WILBERFORCE is inherently distinctive, whereas CHAMBERS is descriptive of a group of barristers;
(iii) The Domain Name is confusingly similar to the Complainant’s registered trademark, comprising the logo form of WILBERFORCE CHAMBERS, having regard to the fact that WILBERFORCE is the most distinctive and dominant element of the trademark as depicted in the Registration.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) The false and inadequate information provided by the Respondent on the WHOIS record has made it impossible for the Complainant to ascertain whether the Respondent might have any legitimate interest in the name WILBERFORCE.
(ii) The actions of the Respondent make it unlikely that it would be able to satisfy the requirements of paragraph 4(c) of the Rules.
3. The domain name was registered and is being used in bad faith:
(i) The use of the Domain Name to divert or attract internet users to pornographic websites is indicative that the Domain Name was registered and is being used in bad faith;
(ii) The Respondent has used the Domain Name to divert Internet traffic to pornographic sites for its own commercial gain. At the time when the Domain Name resolved to pornographic websites, full access to the sites could only be gained through the payment of a fee. The Respondent has therefore been diverting users originally aiming to enter the Complainant’s website to pornographic websites, thereby generating revenue from click-through advertising and mouse-trapping.
(iii) The Respondent’s actions have been calculated to disrupt the Complainant’s business. Although the Complainants can cite only one instance of a potential client being diverted to the Respondent’s site (a result, they claim, of acting quickly), it is likely that others will be diverted at the “whim of the Respondent” to a pornographic website or other site of the Respondent’s choosing.
(iv) The fact that the Domain Name now resolves to a website at “www.wilberforce.net” does not detract from the conclusion that the Respondent is using the Domain Name in bad faith. Potential visitors to the Complainants’ website will still find themselves in an “unexpected and bizarre place”. The Respondent has given no undertaking that he will not redivert Internet traffic to pornographic websites.
(v) Although the Respondent is not the original registrant of the Domain Name, he should be treated has having “registered” the Domain Name in bad faith.
(vi) On acquiring the Domain Name, the Respondent made the following representation and warranty, found in the standard eNom registration agreement:
“It is your responsibility to know whether or not the domain name(s) you select or use infringes legal rights of others. We might be ordered by a court to cancel, modify, or transfer your domain name; it is your responsibility to list accurate contact information in association with your account and to communicate with litigants, potential litigants, and governmental authorities. … By registering a domain name or applying for Services you also represent that the statements in your application are true and you also represent that the domain name is not being registered or the Services being procured for any unlawful purpose. You acknowledge that providing inaccurate information or failing to update information promptly will constitute a material breach of this Agreement and will be sufficient basis for suspension or termination of Services to you. You further agree that your failure to respond for over ten (10) calendar days to inquiries by us concerning the accuracy of account and WHOIS contact information shall constitute a material breach of this Agreement and will be sufficient basis for suspension or termination of Service(s) to you.”
(vii) The fact that the Respondent has given false contact details and/or contact details which do not properly identify him or his address, is evidence that the Domain Name was registered in bad faith and in contravention of the registration agreement entered into between the Respondent and the Registrar.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] 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.
Paragraph 15(a) of the Rules requires 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”.
Paragraph 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By Paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of the Rules.
A. Identical or Confusingly Similar
The Complainants have established their rights in a device mark, which features prominently the words WILBERFORCE CHAMBERS enclosed within a dark background. The word WILBERFORCE forms the distinctive element of the word component of mark, CHAMBERS being a generic term for a group of barristers. The Panel is satisfied that there is a real likelihood of confusion between the registered mark and the Domain Name, and therefore the Complainant has shown that the Domain Name is confusingly similar to a mark in which it has registered rights. Having come to this finding, it is not strictly necessary for the Panel to determine whether or not the Complainant enjoys common law trademark rights in the words WILBERFORCE and/or WILBERFORCE CHAMBERS. However the Panel finds that, on the evidence produced in the proceeding, WILBERFORCE and WILBERFORCE CHAMBERS have become distinct identifiers of the Complainants and the services the Complainants provide, at least in the United Kingdom. The unregistered mark WILBERFORCE is of course identical to the Domain Name. The Complainant has therefore satisfied its burden under paragraph 4(a)(i) of the Policy.B. Rights or Legitimate Interests
The Complainants have not licensed or otherwise permitted the Respondent to use their trademarks, or to register or use any domain name which incorporates those marks. In itself, that factor would be regarded by many panelists as sufficient to move the evidentiary burden to the Respondent to show that it comes within one of the examples of a right or legitimate interest set out in paragraph 4(c) of the Policy or that it otherwise has a legitimate right or interest in the Domain Name. Much of the Complainants’ arguments against the Respondent having rights or legitimate interests in the Domain Name are dealt with under the heading of bad faith, which will be addressed by the Panel below. For the purposes of this head of the enquiry, the Panel is satisfied that, the Complainants having proved that the Domain Name is confusingly similar to their marks, and that the Respondent has not been authorised to use those marks or the Domain Name, the Complainants have made out a prima facie case for the Respondent to answer. The Respondent has chosen not to provide any answer, so the Complainants have therefore fulfilled the requirements of the Policy under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) requires that the Complainant must prove that the Respondent has both registered the domain name in bad faith, and is using the domain name in bad faith.
In terms of bad faith registration, the Complainant makes the following submission:
“Although the Respondent is not the original registrant of the Domain Name, he should be treated as having “registered” the Domain name in bad faith in addition to having “used” it in bad faith, given that the offending use so closely followed the acquisition of the Domain Name. “Registration” extends beyond the original act of registration and covers subsequent acquisitions of the Domain Name: Dixons Group Plc v Abu Abdullah (WIPO Case No. D2000-1406) and cases cited therein”.
It is well established that the transfer of a domain name to a third party constitutes a fresh act of registration. It is that act of registration by the new registrant that must be examined for the requisite bad faith motivation, although in certain circumstances it may be relevant to look into the registration history of the domain name.
The difficulty for the Complainants in proving bad faith registration, is that the WHOIS report for the Domain Name appears to suggest that Ukraine is the Respondent’s country of domicile, and the “yahoo.it” email address provided in the WHOIS report appears to indicate some link with Italy. The Complainants have registered rights in the device mark WILBERFORCE CHAMBERS, and have satisfied the Panel that they have unregistered rights in WILBERFORCE and WILBERFORCE CHAMBERS, but they have not shown that the reputation associated with those marks has achieved such international significance that a person situated in Ukraine or in Italy should be deemed to have knowledge of them, at least in the absence of any supporting factors. However, the Panel is required to look at the totality of the evidence in the case, and the Panel is satisfied that the following factors are, taken in combination, sufficient for the Complainants to prove bad faith registration and use:
1. The Respondent has not claimed any right or legitimate interest in the Domain Name.
2. The websites to which the Domain Name has resolved are all in the English language.
3. The material supplied in the Complaint suggests that the Respondent has some level of engagement with the United Kingdom market. Printouts from the website at “http://freehost.freehost.byron.xxx-goto.net” show that, although the website operator appears to be based in Belize, the price for entering the website is expressed in Great British pounds rather than in Belize dollars (or in United States dollars or some other currency commonly used in international transactions). The Panel also notes that the previous registrant of the Domain Name was located in Great Britain.
4. Although it cannot be said that the Complainants’ marks enjoy international recognition, the facts that the Domain Name has been linked to two or more pornography websites, and has recently resolved to a website at “www.wilberforce.net”, suggest that the Respondent is a sophisticated business user of the internet, unlikely to have taken up the registration of the Domain Name without some investigation into the possible connotations the Domain Name would hold. The Complainants have maintained a presence on the internet since 1997, at the website <wilberforce.co.uk>, and in the Panel’s view it is improbable that a sophisticated business user of the internet (who has English connections and an apparent interest in more than one “wilberforce” domain name), would not have ascertained who owned <wilberforce.co.uk> before registering the domain name.
5. “Wilberforce” is not an obvious title for a pornography site, or a food site. It is a well-known English family name, and the Panel is not aware of any other meaning the word may have other than as a reference to that English name. The fact that the Respondent diverted the Domain Name to the site at “www.wilberforce.net” suggests a knowledge of, or association with, the name going beyond mere chance selection.
6. The foregoing factors persuade the Panel that, on the balance of probabilities the Respondent was aware of the Complainants when the Domain Name was acquired.
7. Linking a domain name to a pornographic website does not constitute bad faith registration in and of itself, without further evidence that the link was made with bad faith intent to ride on the back of the complainant’s trademark rights: see Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743. However the confusing similarity between the Complainant’s marks and the Domain Name, and the fact that the Respondent must have appreciated the obvious concern a set of barristers chambers would have at the prospect of those looking for it on the Internet being led to a pornography site, does add to the overall “flavour” of bad faith suggested by the other matters contained in this list.
8. The Panel accepts the Complainants’ contention that the diversion of the website to the address at “www.wilberforce.net” after the Complainants’ clerk contacted the Respondent on September 10, 2004, and the posting of the message on that site, was a deliberate response to the Senior Clerk’s email. The Senior Clerk’s letter gave the Respondent a clear opportunity to state its position – it scorned the opportunity, referring to the Complainant’s letter as “drivel”. The Respondent of course was entitled to reply or not reply as it saw fit, but the Panel is equally entitled to draw such inferences from the response (or lack of one) as it considers appropriate. The manifestly inadequate response on the “www.wilberforce.net” website tends to support an inference of bad faith registration and use.
9. The Respondent has supplied minimal information on the WHOIS record, and, at the time the case was officially notified, was apparently uncontactable. This suggests a desire on the Respondent’s part to create a covert position, and is again consistent with bad faith intentions.
10. In the absence of any response, the Panel infers that the Respondent’s intention was to attract Internet users looking for sites associated with the Complainants, to other websites with which the Respondent is associated. In the Panel’s view the Respondent’s probable purpose in misleadingly diverting internet browsers in that way was either commercial gain, or to embarrass the Complainants or interfere with their business, and so provoke from them a substantial offer to purchase the Domain Name. Those circumstances may not fit precisely within any of the subparagraphs of Paragraph 4(b) of the Policy, but those are only examples of bad faith registration and use. In the Panel’s view, the apparently deliberate intention to embarrass the Complainants, and damage their reputations or interfere with their business, is a stronger indicator of bad faith.
All these factors, taken in combination, and in the absence of a Response, are in the Panel’s view sufficient for the Complainants to discharge their onus of proving that that the Domain Name was registered and is being 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 name, <wilberforce.com>, be transferred to the Complainants.
Dated: December 15, 2004