WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Powergen UK Plc and The Power Generation Company Limited v. John Chamberlain, c/o Key Net
Case No. D2004-0001
1. The Parties
The Complainants are Powergen UK Plc and The Power Generation Company Limited, both of Coventry, Warwickshire, United Kingdom of Great Britain and Northern Ireland ("the Complainants"), represented by Wragge & Co. of Birmingham, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Chamberlain, c/o KeyNet of Leicester, Leicestershire, United Kingdom of Great Britain and Northern Ireland ("the Respondent")
2. The Domain Name and Registrar
The disputed domain name <powergen.tv> ("the Domain Name") is registered with Tucows Inc. ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 7, 2004. It indicated that the Domain Name was registered with 123 reg / Host Europe Internet Limited. On January 9, 2004, the Center transmitted by email to 123 reg / Host Europe Internet Limited a request for registrar verification in connection with the Domain Name. On January 12, 2004, 123 reg / Host Europe Internet Limited replied identifying the Registrar as being the registrar to contact. On January 15, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2004, the 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.
In response to a notification by the Center that the Complaint was administratively deficient in two respects, neither of which is relevant to this decision, the Complainants filed an amendment to the Complaint by e-mail on February 6, 2004. A hardcopy of the Amendment was received by the Center by fax on March 9, 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 March 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2004.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 29, 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.
4. Factual Background
The Complainants are member companies of the group of companies headed by Powergen Limited. The group is engaged in the field of power generation and distribution. The group's turnover for 2002, was over £6,000,000,000. Powergen UK Plc is one of the main operating companies within the group. The Power Generation Company Limited is the proprietor of various trade mark registrations of the word POWERGEN, some of which date back to the late 1980s. The Power Generation Company Limited licenses Powergen UK Plc to use the POWERGEN trade marks.
While the Complainants are distinct legal entities performing different functions, for all practical purposes insofar as this Complaint is concerned, they are as one. The Panel treats them as one.
Powergen is a household name in the United Kingdom and not least because for about 15 years the Complainants have sponsored the national weather bulletins on one of the main national television channels.
The Respondent is an individual who resides in Leicester. He registered the Domain Name on July 4, 2002.
The parties have been in dispute off and on since July 7, 2000, when the Respondent contacted the Complainants to inform them that he had succeeded in accessing the Complainants' payment files on the Complainants' website at "www.powergen.co.uk," which contains several thousand addresses and credit card details for Powergen customers. Eventually, on October 28, 2002, the Complainants obtained a High Court Order against the Respondent restraining him from, inter alia, dealing in any way with the confidential information, which he had obtained as a result of accessing the Complainants' website.
On another front, in 2002, the Respondent began threatening one of the Complainants' employees and his family. This resulted in another High Court action and further Orders against the Respondent restraining him from harassing the employee concerned.
Domain Names have formed the basis of another area of dispute between the parties. On September 9, 2001, the Respondent registered <powergensucks.com>. On February 27, 2002, the Respondent acquired <powergen.me.uk> and then on July 4, 2002, the Respondent registered the Domain Name. The Complainants acquired <powergen.me.uk> from the Respondent by agreement following the launch of the Complaint under the Nominet UK DRS. As part of that Agreement, the Complainants paid the Respondent £750, being the fee that the Complainants would have had to pay to Nominet UK in the event that settlement was not reached and the dispute had to be put to an adjudicator for a decision.
The Complainants did not become aware of the Domain Name until September 2003. On accessing the website to which it was connected, the visitor was re-routed to a site at "www.johnchamberlain.net." At that time the site contained no reference to the Complainants.
The Complainants' representatives visited the site on October 3, 2003, and found that it contained material critical of the Complainants, claiming that they abused individuals, customers, the environment and wildlife. The site also contained material calling into question the conduct and honesty of the Complainants' employee referred to above. An exchange of emails ensued and the site was changed.
On October 15, 2003, one of the Complainants' representatives visited the site again and found on the homepage an invitation reading "click here to explore further." He duly clicked there and found that he was taken to the contents of his own C drive. The site currently resolves to a homepage containing links to a number of files showing home video excerpts of various bicycle races.
5. Parties' Contentions
The Complainants contend that the Domain Name is identical to their POWERGEN trade marks.
The Complainants refer to the facts and matters set out under "Factual Background" above and contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainants contend that none of the examples set out in paragraph 4(c) of the Policy are applicable in this case.
Similarly, the Complainants contend that the facts and matters set out above demonstrate that the Domain Name was registered and is being used in bad faith. The Complainants point out that the Respondent registered the Domain Name in the course of his dispute with the Complainants and in so doing has impersonated the Complainants. The Complainants contend that "by selecting a domain name which is identical to the Complainants' marks, the Respondent has attempted to disrupt unfairly the Complainants' business by diverting users seeking information about them. Users attracted to the site are likely to be users seeking information about the Complainants, not users seeking information about the Respondent. The Respondent has thereby used the Complainants' trade marks for illegitimate purposes, including attacking the Complainants and members of its staff, as part of a sustained campaign against the Complainants ..."
The Complainants further contend that the Respondent's intention is to use the Domain Name to disrupt the Complainants' business. They also contend that the Respondent registered the Domain Name to prevent the Complainants from reflecting the mark in a corresponding domain name. They point to the other Powergen domain name registrations of the Respondent. They contend that the registration of the domain name <powergensucks.com> is corroborative evidence of the Respondent's intentions to use the Domain Name in bad faith.
Finally, the Complainants contend that the Respondent has used the Domain Name to tarnish the reputation of the Complainants and their trade mark, having diverted users to his site.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainants must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
POWERGEN is a registered trade mark of the Complainants. The Domain Name comprises the Complainants' trade mark and nothing else apart from the generic domain suffix, which may be ignored for this purpose.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainants have rights.
B. Rights or Legitimate Interests
The facts and matters set out above under the heading of "Factual Background" all come from the Complaint, but are supported by the documentary exhibits. It is clear that by the time the Respondent registered the Domain Name in July 2002, the Respondent had been in a heated dispute with the Complainant for two years. On the face of it, it seems plain that the registration of the Domain Name was simply another means of provoking the Complainants and had nothing whatever to do with any rights or legitimate interests of the Respondent.
Paragraph 4(c) of the Policy which is addressed to Respondents reads as follows:
"How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.
When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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."
The Complainants have contended that none of the examples set out in paragraph 4(c) is applicable here. The Panel is inclined to agree.
The Complainants having made out a prima facie case, it is for the Respondent to answer it. The Respondent has had the opportunity to do so, but has not taken it up.
The Panel can think of no reason why the Respondent might reasonably be said to have rights or legitimate interests in respect of a domain name comprising the Complainants' trade mark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The third element to be proved by the Complainants is that the Domain Name was registered and is being used in bad faith. A non-exclusive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy. Paragraph 4(b) reads as follows:
"Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
Strictly, none of the above applies. As to (i), while the Respondent has previously sold a domain name to the Complainants at a profit, the Complainants do not allege that the Respondent registered the Domain Name primarily for that purpose. As to (ii), while the Complainants allege that the Respondent has registered the Domain Name in order to prevent the Complainants from reflecting the mark in a corresponding domain name, there is no evidence before the Panel that the Complainants have ever had any desire to register a domain name in the `.tv' domain, nor is there any evidence to suggest that blocking the Complainants was the Respondent's purpose; as to (iii), it is plain to the Panel that the Respondent registered the Domain Name to cause disruption to the Complainants and their business, but the Complainants are not competitors of the Respondent. Finally, as to (iv), while what the Respondent has done has inevitably given rise to a risk of confusion among Internet users, if only to the extent of initial interest confusion (i.e., confusing those Internet users who have assumed that a website connected to a domain name comprising the Complainants' name is an official website of the Complainants), there is nothing before the Panel to suggest that the Respondent's behaviour has been motivated by commercial gain.
However, the fact that the Respondent's behaviour does not fall four square within the terms of any of the examples set out in paragraph 4(b) of the Policy is not the end of the matter. The list of examples in paragraph 4(b) of the Policy is expressed to be a non-exhaustive list.
In the First WIPO Domain Name Process, the report which formed the basis for the Policy, abusive registration/cybersquatting was defined as the practice of registering as domain names for oneself the trade marks of other persons or enterprises. In this case the Respondent has certainly taken the Complainants' trade mark for the Domain Name; and this is not the first time that he has done it (<powergen.me.uk>). There can be no doubt that he did so deliberately and with a view to provoking the Complainants and causing the Complainants as much disruption as possible.
While it may be true that not every registration of another's trade mark for a domain name will constitute bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy, the circumstances surrounding the registration of the Domain Name are exceptional. The Panel refers to the factual background set out in Section 3 above. The Respondent's use of the Domain Name in the past and his behaviour towards the Complainants generally satisfy the Panel that if the Domain Name is left in the hands of the Respondent, the Complainants have every reason to believe that at some stage it will be used for an abusive purpose. In other words, it represents a continuing threat hanging over the head of the Complainants.
Finally, it is to be noted that the Respondent has not responded to the Complaint; he has not contradicted any of the allegations of the Complainants.
Taking all these matters into account, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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, <powergen.tv>, be transferred to the Complainant.
Dated: May 10, 2004