WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Laurel Pub Company Limited v. Peter Robertson / Turfdata
Case No. DTV2004-0007
1. The Parties
The Complainant is The Laurel Pub Company Limited, Luton, Bedfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Peter Robertson / Turfdata, Birmingham, West Midlands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <hogshead.tv> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2004. On July 1, 2004, the Center transmitted by email a request for registrar verification in connection with the domain name at issue. On July 8, 2004, Tucows 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 July 9, 2004. In accordance with the Rules, paragraph 5(a), following one extension of time granted by the Center, the due date for Response was August 5, 2004. The Response was filed with the Center on August 5, 2004.
The Center appointed Dawn Osborne as the sole panelist in this matter on August 13, 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 Complainant operates 75 public houses under the HOGSHEAD brand in the UK and is the owner of UK trademark registrations for HOGSHEAD for, inter alia, restaurant and inn services.
The Respondent is a former employee of the Complainant and registered the <hogshead.tv> domain name on February 3, 2004.
5. Parties’ Contentions
The Complainant’s relevant contentions can be summarized as follows:
1. The Complainant operates 75 public houses under the HOGSHEAD brand in the UK. This division of the Complainant’s business is responsible for £70M contribution of the Complainant’s turnover.
2. The Respondent was employed by the Complainant between January 13, 2003, and October 29, 2003. The Respondent filed an employment tribunal application against the Complainant after his employment was terminated.
3. On February 8, 2004, the Complainant received an e mail from “Arnie Barney” the content and subject line of which stated simply “www.hogshead.tv.”
4. On February 12, 2004, the website attached to the domain name provided a company profile of <hogshead.tv> as being “ a new innovation for service in the pub retailing industry.” It stated a corporate mission “to bring high standards to the pub retailing industry.”
5. The Complainant’s representatives contacted the Respondent by telephone on February 17, 2004, to find out the Respondent’s reasons, rights and interests in the Domain Name. The Respondent confirmed he had not considered the Complainant when registering the Domain Name and denied knowledge of The Laurel Pub Company or its HOGSHEAD brand. The Respondent claimed that he had chosen the Domain Name entirely independently on the basis that he was a “larger than life person” and that “hogshead means 54 gallons.” The Respondent stated he was a pub manager who had moved into marketing and that the Domain Name was to be used for a business concerned with film, tv, and matters related to public houses including messaging services to public house customers and staff. The Respondent also indicated that he might make his business plan available to the Complainant. The Complainant’s representatives offered to settle the Respondent’s out of pocket expenses in return for a transfer of the Domain Name and the Respondent stated he wished to “talk to some people” about this.
6. On February 20, 2004, the Respondent contacted the Complainant’s representatives to advise that he would be interested in discussing terms for the sale of the Domain Name. The Respondent added that he had another domain name for sale <robinhoodlive.com> and would be willing to talk about both domains. The Complainant’s representatives asked again if the Respondent was willing to transfer the name for out of pocket expenses and the Respondent declined to comment beyond directing the Complainant’s representatives to his legal advisers. The Robin Hood public house Dagenham, Essex, UK is part of the Complainant’s estate and was the Respondent’s place of work and residence when employed by the Complainant.
7. On February 25, 2004, the Complainant’s senior management received an e mail as follows:
There is a new website dedicated to improving the licence trade it is called “www.hogshead.tv.”
The aim of the website is to bring high standards to the pub retailing business. The website will point out all good practise’s (sic) and more importantly all bad practise’s (sic). We will then make recommendations on area’s (sic) which will improve a particular pub or company.
‘www.hogshead.tv’ will look at contentious issues such as training and the relevance to the licence trade. Some companies see training as an excuse to abuse staff and gain free labour, with no academic accreditation at the end of it. We will condemn such practice’s (sic) and highlight companies that use such dodgy practise’s (sic).
Equal opportunities is also something we will look at. We all know of companies where sexism, racism, ageism, homophobia and snobbery are rife. We will aim to stamp out these extremely bad practice’s (sic) and encourage these companies to behave themselves.”
8. A further e mail was received by one of the Complainant’s staff from “Robin of Loxley” on March 21, 2004. The content of this e mail was:
Just to let you know that “www.hogshead.tv” is now hosted on the ‘www.robinhoodlive.com’ server Since Laurel has decided it does not want to go back to the old days. On the site there is a message board so you can air views and opinions and link up people who take equal opportunities seriously.
robin of loxley.”
9. A further e mail was received by one of the Complainant’s staff from “Robin of Loxley” on March 28, 2004. The subject line of this e mail was “Imitation and Flattery” and the content was:
There is a famous phrase that ‘imitation, is the sincerest form of flattery’ so we feel collective pride that Laurel pub company has taken on board the fact there is discontent within the company over double standards and discrimination.
The fact that Laurel has adopted ‘www.hogshead.tv’ example and now have a message board for managers to express their feeling about the direction and implementation of a (sic) equal opportunity policy shows that present and ex-members of Laurel who developed the website were right that these beliefs need to be discussed in an open forum, and that in a modern pub company sexist, racist, homophobic and snobbish behaviour has no place in the motivation of frontline staff members. Maybe the next stage for Laurel would be to make it open to other front line workers such as bar and kitchen staff.
It is a pity that the powers that be had to be drag (sic) screaming and kicking into the 21st Century.
R of L.”
The content had also been published at ‘www.hogshead.tv’ on or about the same date as the site had been configured to forward to ‘www.robinhoodlive.com.’ On March 30, 2004, the Complainant’s representatives made representations to the Respondent’s web hosting company that the content of the website was defamatory of the Complainant. The web hosting company accepted the validity of this complaint and by March 31, 2004, the website had been taken down.
10. On April 14, 2004, the Complainant’s trademark attorney received a telephone call from the Respondent in which the Respondent indicated that his primary concern was to sell the Domain Names to the Complainant and he referred to previous negotiations with the Complainant’s representative on this point.
11. On April 26, 2004, the Complainant’s representative telephoned the Respondent. The Respondent indicated again that he believed he was negotiating a sale of the domain names and the Complainant’s representative informed him that this was not the case. The Complainant’s representative again offered to settle the Respondent’s out of pocket expenses but the Respondent stated he was not interested in this proposal. During the call, the Respondent indicated that his reason for registering the Domain Name was in honour of his late friend, who had had the nickname “Hogshead.”
12. On May 4, 2004, the website at “www.hogshead.tv” was reactivated by the Respondent. The revised site contained material that was highly critical and defamatory of the Complainant and, accordingly, the Complainant’s representatives issued a second take down notice which was duly complied with on May 10, 2004.
13. At the time of the Complaint the Respondent’s website stated in a company profile that it was a “provider of information for the license” (sic) trade and a corporate mission of “building new website.”
14. The Complainant owns UK registered trademarks for HOGSHEAD for, inter alia, restaurant and inn services. The Domain Name is an exact representation of the Complainant’s brand and is identical to its registered trademarks. The “.tv” country code top level domain is generic and, as is customary in UDRP proceedings, may be disregarded for the purposes of comparison.
15. The Respondent has no affiliation with the Complainant and the Complainant has not given the Respondent permission to use its HOGSHEAD mark whether by licence of any of its trademarks or otherwise.
16. The Complainant submits that the Respondent’s motivation in registering the Domain Name was either (1) to sell it to the Complainant together with the domain names <robinhoodlive.com> and <robinhoodlive.co.uk>; (2) to establish a business directed to the licensed trade and in so doing to trade off the goodwill and reputation of the Complainant’s brand in that market sector and to cause consumer confusion; or (3) to tarnish the Complainant’s trademarks, to disrupt the Complainant’s business and generally to provoke the Complainant by publishing material critical of the Complainant’s business practices. None of these reasons could be interpreted as conferring rights or legitimate interests on the Respondent. Furthermore, there are no circumstances by virtue of paragraph 4(c) of the Policy under which the Respondent can demonstrate any such rights or interests.
17. It is well established in UDRP proceedings that registration of a domain name in the knowledge of the trademark holder’s rights either (1) with intent to sell that domain name to such holder (2) with intent to establish a business which trades off the goodwill and reputation of such holder which causes customer confusion; or (3) with intent to use that domain name for non commercial criticism or protest, is not a bona fide offering of goods or services.
18. The Respondent was already in dispute with the Complainant by the date of registration of the Domain Name and had been so since at least October 29, 2003, when his employment was terminated. With reference to the Respondent’s explanation of his choice of the Domain Name as the name of his business, the Panel may infer that, given that the Respondent had been an employee of the Complainant, the Respondent was fully aware of his employer’s brand portfolio and had actual notice of its trademarks.
19. The Respondent has not been commonly known by the Domain Name and has provided inconsistent reasons for its adoption. The Complainant submits that these are not genuine reasons for the registration of the Domain Name and that this may be reasonably inferred from the inconsistency of the Respondent’s reasoning and from his actions and use of the Domain Name.
20. The Respondent is not making a legitimate non commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Both registration of the Domain Name for the purpose of selling it to the Complainant and for the purpose of conducting a business for the licensed trade are representative of commercial activity, while in the latter case the Respondent’s site is also likely to misleadingly divert consumers. Internet users would be confused as the Domain Name represents the Complainant’s HOGSHEAD public house brand without addition or modification and the site expressly states that it is directed at the licensed trade. Furthermore the Respondent has not published any form of disclaimer on the site indicating that it is not connected with the business of the Complainant.
21. Sale of the Domain Name and reference to a business connected with the licensed trade shows that the website was not registered for bona fide non commercial criticism, but even if the Panel infers this, the Domain Name is identical to the Complainant’s mark and so its use for criticism and review would not satisfy paragraph 4(c)(iii) of the Policy.
22. The Domain Name was registered and used in bad faith.
23. The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his out of pocket costs. The Respondent both enquired about potential sale of the Domain Name and declined out of pocket expenses on three occasions.
24. The Respondent has registered the Domain Name to disrupt the business of a competitor. The Respondent’s website is aimed at the licensed trade and the Respondent has experience in this trade. It is likely that his activities, particularly the proposed messaging services to public house staff will conflict and potentially compete with the activities of the Complainant leading to customer confusion.
25. The Respondent has registered and used the Domain Name in order to prevent the Complainant from registering the mark in a corresponding domain name. The Domain Name is a direct match for the Complainant’s mark in a top level domain popularly used by mark owners for microsites relating to television advertising campaigns and the like. By virtue of his registration of the robin hood domain names it is also clear that the Respondent has engaged in a pattern of such conduct.
26. The Respondent has intentionally attempted to attract for commercial gain internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such website. The Respondent refers to his activities as a business and has a business plan, an e mail address, a company profile and mission statement and it is clear that the Respondent is active in the licensed trade. It appears that the Respondent intends to provide consultancy services to the licensed trade relating to the use of equal opportunity policies as a motivational tool. The Respondent must be concerned in activity for commercial gain. Given the prominence of the Complainant’s HOGSHEAD mark in the licensed trade such activities are likely to cause confusion.
27. The Respondent has used the Domain Name to conduct activities designed to damage the Complainant’s HOGSHEAD brand and to disrupt the Complainant’s business. The Respondent’s behaviour and motivation related to his employment dispute are highly suggestive of bad faith both in the registration and the use of the Domain Name.
The Respondent’s relevant contentions can be summarized as follows:
1. In August 2002, the Complainant wanted the Respondent to run the Robin Hood pub. It was an East End pub with a history of Nazi activity and a drugs problem and was a meeting place for soccer thugs. In December 2002, the Respondent said that the only way he would accept the job is if he could implement a business plan involving as a central role the usage of the Internet to stop drug dealing and violence and to encourage new less anti-social customers. In January 2002, the Respondent joined the Complainant and part of the business plan was to bring in a team of workers skilled at conflict resolution. The Respondent wanted to bring in a close friend and colleague Mr. Stewart, also known as Hogshead, but he turned the post down.
2. In February 2003, the Respondent learned from the licensing officer that Laurel Pub Company had signed an agreement with the police and local magistrate called a Contract of Responsible Management (“CRM”) which had not been honoured. The Respondent undertook to make sure the CRM was adhered to and to use the Internet to do so. He purchased the domain name <robinhoodlive.com> with the full knowledge of the Regional Director of the Complainant and the police. The Regional Director did not object because it was not costing the company any money as the Respondent was paying for the Domain Name and the Regional Director thought the Internet was overhyped. The Complainant had full knowledge that the Respondent bought and paid for the hosting of “www.robinhoodlive.com” and the Complainant used it to publicise the entire pub’s activities including use on promotional materials, flyers, posters, newspaper adverts and a logo on staff uniforms. All uniforms have to be approved by the Business Development Manager and Regional Director of the Complainant, so the Complainant had full knowledge of what was going on. The website was also publicized on Capital Gold FM. The deal struck with Laurel was that the Respondent would do the work on “www.robinhoodlive.com” and any income derived from it would be split 50/50.
3. There were then a number of disputes between the Complainant and the Respondent about the way the Robin Hood pub was to be run, mostly unrelated to the Internet. In October 2003, the Respondent was sacked and then in February 2004, evicted.
4. In September 2003, the Respondent’s father and also his friend Mr. Stewart died. The Respondent’s father had talked about his days in Montserrat when he spent time at “Hogs Head Hall” which was the nickname of Tuitts Hill. Mr. Stewart had several nicknames all to do with hog, including “JD Hog” after the TV series “The Dukes of Hazard” and “The Hogs Head” due to the fact that he was the best “boozer” amongst the Respondent’s friends, therefore, <hogshead.tv> came into being.
5. The Respondent had the idea to turn “hogshead.tv” into a site for not so beautiful people where the Respondent would take pictures of interesting looking people with their permission and get people to text in their favourite original picture. The Respondent then received a letter from the Complainant’s representative asking the Respondent to contact him. The Respondent did but he was out and so left a number. When the Complainant’s representative contacted the Respondent he sounded desperate to have the Domain Name and the Respondent said it depended what he was offering. He said costs and expenses and the Respondent said he would think about it.
6. Then a number of instances occurred where the Respondent believed the Complainant was unfairly discriminating against its staff. The Respondent thought that if enough people discussed these issues then companies such as the Complainant would have to take notice. Accordingly, the Respondent set up its message board.
7. The Respondent did not purchase the Domain Name to sell to the Complainant. He purchased it as a tribute to his father and his friend.
8. The word “hogshead” is a common word and is used all around the English speaking world. There are several companies/individuals who use the word hogshead in domain names or on the net including <hogshead.com> and <hogshead.net>.
6. Discussion and Findings
A. Identical or Confusingly Similar
The indication “.tv” officially designates a domain name registered in the country code top level domain for Tuvalu. Unofficially it has come to refer to “television” in the context of the Internet. In either sense it is generic. Absent the top level domain “.tv”, the Domain Name is identical to the Complainant’s HOGSHEAD registered trademark.
B. Rights or Legitimate Interests
Although the Respondent was employed by the Complainant there is currently no affiliation between them. The Complainant has not given the Respondent any permission to use its HOGSHEAD mark whether by licence of any of its trademarks or otherwise. The Respondent has not been commonly known as “Hogshead.”
The Respondent says he purchased the Domain Name as a tribute to his father and friend and to post pictures of interesting looking people. However, the site does not appear to have been used directly for this purpose.
The Respondent was an employee of the Complainant and therefore must have been aware of the Complainant’s rights in the trademark HOGSHEAD for services related to public houses. Accordingly his use in relation to matters related to public houses cannot be said to be bona fide in the sense that the name cannot have been chosen and used in such circumstances without any knowledge of the Complainant’s rights.
The Respondent has been using the site for criticism of the Complainant. The Complainant alleges that the Respondent is using the site for a business concerned with film, tv and matters related to public houses and as such cannot be making a non commercial legitimate fair use of the site within the Policy. In fact there appears to be little in the way of real commercial use on the Respondent’s site.
However, the Complainant’s trademark has a significant reputation in its field. The Respondent has no rights or legitimate interests in respect of the Domain Name which consists essentially of one of the Complainant’s main brands and its registered trademark. The Panel recognizes that the Respondent has a right to free speech and a legitimate right to host a complaint site about the Complainant on the Internet. However, in the view of the Panel this is a completely different thing and should not be confused with having a legitimate right to the Domain Name in question in this case.
Accordingly the Panel holds that the Respondent has no rights and legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:
(i) the respondent has registered or has 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 its 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 its website or location or of a product or service on its website or location.
There is a dispute over whether or not the Respondent was seeking to sell the name to the Complainant. There is no hard documentary evidence either way and the Respondent says he was approached by the Complainant and only said he would think about selling.
There does not appear to be any evidence that the Respondent has engaged in a pattern of activity relating to blocking trademark owners from registering their trademarks as domain names. The Respondent says he registered the robin hood domain names with the permission of the Complainant and it is not alleged that he has engaged in blocking activity in relation to any other domain names.
The Respondent does not appear to actually be engaging in any commercial activity and so cannot be an actual competitor of the Complainant.
The recent content on the Respondent’s website which criticized the Complainant is not in the view of the Panel confusing, although it is not unknown for businesses to provide public forums for comments about themselves and it appear the Complainant has done just that itself recently. The Panel agrees with the Complainant that it was not at all clear from the initial content on the Respondent’s site that the Respondent was not affiliated with the Complainant. However, it is not clear what commercial gain the Respondent was obtaining from the site per se.
The Panel recognizes that the conduct of the Respondent in this case does not fall strictly within the four criteria listed in Paragraph 4(b) of the Policy which are expressed to be evidence of registration and use in bad faith. However, these criteria are also expressed to be non exclusive and it is open to any panel to determine that the actions of the Respondent have in fact amounted to registration and use of the domain name in question in bad faith.
As indicated in the section on rights and legitimate interests the Panel believes that the Respondent has every right to conduct its campaign against the Complainant on the Internet, but the Respondent does not have any rights to register and use a domain name which directly reflects the Complainant’s trademark for that purpose.
The fact that the Respondent has chosen a domain name reflecting the Complainant’s trademark suggests that the Respondent intended to disrupt the business of the Complainant and to divert traffic intended for the Complainant’s site to his own. Members of the public looking for the Complainant’s site searching for “hogshead” may arrive at the Respondent’s site instead by mistake. In the opinion of the Panel this is in no doubt due in large part to the fact that the Domain Name directly reflects the Complainant’s brand name. The Respondent could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have been likely to disrupt and divert the Complainant’s business.
Accordingly the Panel is of the view that the Respondent has registered and used the name 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 <hogshead.tv> be transferred to the Complainant.
Dated: August 26, 2004