WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Associated British Foods plc v. Pacific Game Technology (Holding) Limited
Case No. D2005-0416
1. The Parties
The Complainant is Associated British Foods plc, London, of United Kingdom of Great Britain and Northern Ireland, represented by A.A.Thornton & Co, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Pacific Game Technology (Holding) Limited, NT Kwei Tsing, Hong Kong, of SAR of China.
2. The Domain Name and Registrar
The disputed domain name <ovomaltine.com> is registered with NameScout Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2005. On April 19, 2005, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On May 2, 2005, NameScout Corp. 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, the Complainant filed an amendment to the Complaint on May 12, 2005. 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 May 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2005. The Response was filed with the Center on June 6, 2005.
The Center appointed Martine Dehaut as the Sole Panelist in this matter on June 15, 2005. 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.
On June 27, 2005, the Panel issued Procedural Order No. 1, requesting the Complainant to file additional evidence to substantiate its trademark rights over OVOMALTINE.
The Complainant filed the requested documents with WIPO by June 29, 2005, that is within the deadline set by the Panel which ended on June 30, 2005.
4. Factual Background
According to the statements made by the Complainant, Associated British Foods PLC, is major international food, ingredients and a retail group with annual sales of 5,2 billion pounds sterling and over 35,000 employees. The Complainant claims ownership of numerous worldwide trademark registrations consisting of, or containing, the word OVOMALTINE, in international classes 5, 16, 29, 30, 31 32 and 35. The earliest registration over these marks dates back to 1904.
The website of the Respondent is not accessible to the public. Indeed, when typing the domain name <ovomaltine.com>, Internet users are requested to enter a username and a password.
Little information is available concerning the Respondent, Pacific Game Corporation, which apparently is a website developer.
5. Parties’ Contentions
The Complainant claims that the contested domain name is identical, or at least similar, to its numerous trademark rights.
It further states that the Respondent has no rights or legitimate interests in the domain name. In this respect the Complainant states that the Respondent is not an affiliated company, nor an authorised user of its trademarks, and that the Respondent is not known by the trademark OVOMALTINE and is not making a legitimate non-commercial or fair use of the domain name.
Lastly, the Complainant asserts that the domain name is registered and is being used in bad faith. Precisely, the Complainant states that the domain name was registered in order to prevent it from reflecting the mark in the corresponding domain. It then gives details of the correspondence exchanged between the parties concerning a possible transfer of the domain name for the amount of US$ 8064, which the Complainant considers too high when compared with the costs of registration and maintenance of the domain name. In addition, the Complainant claims that the Respondent registered the domain name for the purpose of disrupting its business, although both parties do not seem to be presently acting in the same fields of activities.
The Respondent claims that the conditions set forth in paragraph 4(a) of the Policy are not met, and that accordingly the Complaint should be denied.
The Respondent asserts that it was not aware of the existence of the Complainant’s trademark rights over OVOMALTINE, at the time of registration of the contested domain name, five years ago. According to trademark searches conducted by the Respondent, trademark OVOMALTINE is not registered in Hong Kong, where its business is located, nor is it in other countries of the region, namely Singapore and Japan.
The Respondent further states that “it is common practice for our website developers to have a secret and unknown password protected domain on the Internet, where development, testing and translation of new websites is carried out. As such, the domain names in question are chosen intentionally not similar to the real website, and access is only granted to developers, testers and other internal staff that has the need to access it (…). Ovomaltine.com has been used as a platform to develop away from the main website”.
As far as bad faith is concerned, the Respondent argues essentially that no trademark infringement has occurred, as again OVOMALTINE is not registered in Hong Kong and is not known to the public and to the Respondent.
Lastly, the Respondent claims that the Complaint was brought in bad faith from the Complainant, and amounts to a reverse domain name hijacking. The Respondent believes, in substance, that as a major corporation, the Complainant should have agreed on the financial proposal made for the transfer of the domain name (the amount proposed would have allegedly allowed the Respondent to purchase a server), or could have registered the domain name <ovomaltine.co.uk> as a suitable alternative to the “.com”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must establish each of the following:
(i) 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Before comparing the trademark rights with the contested domain name, two preliminary issues should be dealt with: firstly, whether the Complainant has duly substantiated its trademark rights over OVOMALTINE, and secondly, whether the trademarks rights of the Complainant should cover the country of incorporation of the Respondent.
Substantiation of Complainant’s rights
As evidence of its trademark rights over the word OVOMALTINE, the Complainant has filed a list of registrations in a number of countries and regions. According to this list, the first application for OVOMALTINE dates back to 1904, in Switzerland (covering goods of classes 5, 30, 32 and 33). The Complainant does not claim the existence of unregistered trademark rights, nor does it claim a high degree of recognition of its mark.
The probative value of a printed list of trademarks, which probably originates from the Complainant’s representative, might be subject to discussion, all the more in the absence of any other corroborating document, like for instance the copy of a certificate of registration.
However, the Panel notes that the Respondent, in its detailed observations, has not questioned in any way the accuracy of the information provided by the Complainant in relation with the ownership of its OVOMALTIME trademarks. Therefore, in the absence of any contention to the contrary from the Respondent, the Panel is prepared to accept the list of registered trademarks OVOMALTINE as prima facie evidence of the trademark rights claimed (concerning the probative value of un-contradicted factual contentions, see for example Enrique Bernat F., SA v Marrodan, WIPO Case No. D2000-0966).
In any case, in order to complete the file, the Panel issued Procedural Order No. 1 requesting the Complainant to substantiate its trademark rights with at least the copy of one trademark registration over OVOMALTINE. In response to this order, the Complainant filed database extracts of the following trademarks over the word OVOMALTINE, both registered in the name of Associated British Foods PLC: international registration No. 319843, designating dietetic substances in class 5, and community trademark registration No. 1 597 814 designating products belonging to international classes 5, 29, 30 and 32.
Geographical extent of Complainant’s rights
Basically, the Respondent argues that the registration and use of the contested domain name does not amount to trademark infringement, nor to bad faith, as trademark OVOMALTINE is not registered in the country where it is incorporated and has its business, namely Hong Kong.
However, while registration of a Complainant’s mark in the country where the Respondent is established might in certain circumstances assist in proving the existence of bad faith, it must be stressed that there is nowhere in the Policy a formal requirement in this sense. See Funskool (India) Ltd v. funschool.com Corporation, WIPO Case No. D2000-0796: “The Policy places no limitation on the operative extent of a mark, which the Complainant must show the disputed domain name to be identical or confusingly similar to. If the intention had been that the Complainant’s right to complain about registration and use of a domain name which is identical or confusingly similar to its trademark had to be limited to a trademark recognized by the law of the Respondent’s country of incorporation or residence, the Policy would have said so expressly”.
Comparison of signs
The contested domain name <ovomaltine.com> is identical to the Complainant’s trademarks. The top level domain “.COM” is absolutely irrelevant for the purpose of the comparison.
B. Rights or Legitimate Interests
Once the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, which it has done, the onus is then on the Respondent to establish that it has indeed said rights or legitimate interests.
As mentioned above, the Respondent argues, in substance, that it registered the domain name <ovomaltine.com> as a “secret and unknown password protected domain”. In the Panel’s view, this is a rather imaginative but really unconvincing argument. Even in the event of the use of secret and password protected domain names being common practice of the Respondent, this latter gives no explanation at all as to why it precisely chose to register the domain name <ovomaltine.com>, while millions of different combinations, including combinations of numbers, can be selected as domain names.
Therefore, the Panelist is of the opinion that the Respondent has no rights or legitimate interests over the contested domain name.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(b) of the Policy, the following circumstances may constitute 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 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 your website or location or of a product or service on your website or location.
Before entering into the analysis of the third criteria established by the Policy, some comments should be made concerning the notoriety of the Complainant’s earlier right.
Notoriety of the Complainant’s mark
The Panel has personal knowledge of the Complaint’s trademark. OVOMALTINE was strongly promoted in France, at least some years ago, in connection with cereal preparations.
However, it must be pointed out that the Complainant does not claim, nor even suggests, in its Complaint, that its trademark OVOMALTINE might be well-known, in some countries, as a result of its long standing use and extensive promotion. The Complaint solely mentions that “the Respondent due to the reputation of the Complainant must have been aware of its company prior to registering the domain name”. Knowledge of a complainant does not necessarily imply knowledge of a complainant’s trademarks.
The Complaint does not mention either which products are designated by the earlier trademark.
While the Panel believes that panelists might prevail themselves, in limited and specific circumstances, of their personal experience, in the present situation it is clear that failing any claim regarding the reputation of the earlier mark, in any country of the world and in particular in Hong Kong or neighbouring countries, the earlier trademark will be considered as an ordinary mark which is not particularly known to the public.
Analysis of bad faith
In spite of the offer made by the Respondent to transfer the contested domain name for the sum of US$ 8,064, the Complainant does not rightfully rely on paragraph 4(b)(i) of the Policy. Indeed, the exchange of correspondence between the parties reveals that it was the Complainant who first contacted the Respondent to purchase the domain name for the amount of US$ 1000, then US$ 2000. As stated, the learned panelist in Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman, Case No. D2005-0410, “with perhaps rare exceptions, every business asset is for sale at some price”. In this respect, the counter-offer made by the Respondent, and amounting to 8,064 United States dollars, does not amount, in itself, to bad faith in the meaning of paragraph 4(b)(i).
The Panel concurs with the Complainant when it states that the contested domain name was registered in order to prevent the Complainant from reflecting the mark in the corresponding domain. The Panel comes to this conclusion on the basis of the unrealistic arguments provided by the Respondent to demonstrate its legitimate interests in the disputed domain name. The Panel has found no remotely convincing reason, for a Hong Kong based corporation, to adopt as a secret and password protected domain name <ovomaltine.com>, while, as mentioned earlier, millions of different combinations are available. The Panel believes that the Respondent has probably been aware, for some reason or other, of the existence of the Complainant’s OVOMALTINE trademark, which is inherently very distinctive. OVOMALTINE is indeed an invented word, and the Respondent did certainly not choose this word by coincidence when registering its domain name.
Now, is it sufficient to register a single domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, to conclude to the bad faith of the Respondent? Indeed, paragraph 4(b)(ii) adds that this conduct amounts to bad faith “provided that (the Respondent has) engaged in a pattern of such conduct”. The Complaint does not mention whether the Respondent has registered other domain names constituted of third parties’ trademark rights, and the Panel is not aware of UDRP decisions involving Pacific Game Corporation. Accordingly, it is not established that the Respondent has engaged in the pattern of registering third parties’ trademarks as domain names.
Some panels have given much weight to the “pattern of conduct” when considering the existence of bad faith. In Efferms AG v. Weitner AG, WIPO Case No. D2000-1433, the learned Panelist mentioned that “Respondent registered at least three domain names identical to protected trademarks of third parties. The Panelist considers that this number is sufficient to find that respondent engaged into a pattern of preventing trademark owners from reflecting their mark into a corresponding domain name”.
However, this Panel is not convinced that the “pattern of conduct” is a necessary condition to conclude to the existence of bad faith as paragraph 4(b) of the Policy lists non-exhaustive examples. The registration of a single domain name in order to prevent a third party to reflect its trademark in the corresponding domain may prove as another circumstance which may indicate bad faith, combined with the little credible explanation from the Respondent on why the Respondent registered the domain name. The Panel finds that the Respondent has registered and used the domain name in bad faith within the meaning of the Policy. Indeed, as mentioned earlier, the Panel conceives no reason for the Respondent to adopt or to use the disputed domain name.
Lastly, the fact that OVOMALTINE is still available under other top level domain names, and under “.co.uk”, is absolutely irrelevant.
7. Reverse domain name hijacking
According to the definitions contained in the Rules, “Reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Little consideration should be given to the claim of reverse domain name hijacking made by the Respondent. Indeed, as established above, the Complainant has legitimate rights to file a Complaint to recover the domain name <ovomaltine.com>.
8. Request for confidentiality of the decision
In its response, the Respondent has expressly requested the Panel not to publish the present decision on a “public accessible website due to the confidential nature of the information contained herein”.
In accordance with paragraph 4(j) of the Policy, “All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision”. Further, pursuant to Rule 16(b), “Except if the Panel determines otherwise, the Provider shall publish the full decision and the date of its implementation on a publicly accessible website”.
The Respondent does not specify in any way why and to which extent the information available in its response, or annexed to its response, is of confidential nature and should accordingly be kept undisclosed. On the contrary, the Panel is of the opinion that the publication of the information available in this decision would by no means affect the Respondent or its business. Besides, the mere fact that the Respondent be adversely affected by the decision does not justify, in itself, restrictions on its publication.
Accordingly, the request for confidentiality of the present decision is dismissed.
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, <ovomaltine.com> be transferred to the Complainant.
Dated: July 8, 2005