The Fine China and Porcelain Companies Limited, and Royal Worcester and Spode Limited v. Domain Admin
Case No. D2005-1015
1. The Parties
The Complainants are The Fine China and Porcelain Companies Limited, Royal Worcester and Spode Limited, of Staffordshire, United Kingdom of Great Britain and Northern Ireland, represented by Martineau Johnson, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admin, of “Charlestown, Nevis, KE”.
2. The Domain Name and Registrar
The disputed domain name <royalworcester.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2005. On September 27, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 6, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 17, 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 October 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2005.
The Center appointed Peter G. Nitter as the sole panelist in this matter on November 21, 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.
4. Factual Background
The Complainants are members of a group of companies first established in 1751, specializing in the design, product development, wholesale and distribution of fine china tableware and goods.
The main brand of the group is ROYAL WORCESTER, which is well-known all over the world.
The First Complainant is the formal owner of a number of national registrations for the trademark ROYAL WORCESTER. The First Complainant owns such marks in the United Kingdom, the United States of America, India, Australia, China, Japan, Sweden, Spain, Pakistan, Norway, New Zealand, Ireland, France, Denmark, Canada, Bermuda, Barbados and Bahamas.
The dates of registration of the marks are unfortunately not listed. However, the Panel has done some limited searches as to registration dates, and found that the Complainants’ have registered trademarks dating back to at least 1949.
The First Complainant is also the owner of the mark ROYAL WORCESTER AND CROWN DEVICE and similar marks in various countries around the world.
The Respondent’s website, connected to the domain name in dispute, is a portal which provides links to various businesses offering products under the ROYAL WORCESTER brand, such as:
“Find Royal Worcester Porcelain on eBay
You can find Royal Worcester porcelain right here. With over 5 million products for sale every day, you'll find the items you're looking for on eBay - the world's online marketplace.”
“Discount Royal Worcester - Free Shipping
Buy Royal Worcester from Dinnerware Etc.com's large selection of inventory. Fast shipping and excellent customer service.”
5. Parties’ Contentions
Since incorporation of the First Complainant in 1958, the Porcelain and Fine China Companies Limited has used and promoted the ROYAL WORCESTER trademark continuously for more than 47 years, with extensive world wide sales, currently exceeding £14 million per year together with marketing, advertising and publicity throughout the world. In doing so, it has carved out a distinctive niche in the world wide market and created the most respected range of fine porcelain products in the world with a brand name that consumers rely on and trust.
Respondent has linked the domain name in dispute to a website “www.royalworcester.com”, which prominently features the ROYAL WORCESTER trademark and is a portal site providing listings and information of third parties who offer for sale products branded or affiliated to the brand, Royal Worcester. Persons accessing this site will be confused into believing that the listings have been approved or endorsed by the Complainants.
The domain name in question is identical and confusingly similar to Complainants’ mark. The public will expect to reach the website of Complainants when using the domain name.
Respondent has no right or legitimate interest in the domain name. Respondent has not licensed the mark. Complainants’ earliest trademark registrations pre-date registration of the domain name on February 23, 2004. Respondent has no business or other reasons for using the trademark. Respondent has been the respondent in several earlier domain name disputes. Respondent has not conducted prior business under the name ROYAL WORCESTER in connection with bona fide offering of goods or services. The content on the website connected to the disputed domain name has varied.
Respondent is not commonly known by the mark, and is not making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain. Respondent’s use of the domain name in conjunction with hosting advertisements for Royal Worcester branded products, falsely gives the impression that Complainants somehow endorse, sponsor or are otherwise affiliated with the Respondent’s website.
The domain name has been registered and used in bad faith. The domain name was created sometime in 2002, and provided a direct link to the First Complainant’s UK website “www.royalworcester.co.uk”. The domain name was subsequently registered by S A Inc. Complainants believe that S A Inc. has also operated previously, and possibly still continues to do so, as mydotcom.com and dotcomemail.com, as all companies are listed to the same address in Jupiter, Florida and have been the respondents in numerous domain name disputes. Complainants’ legal counsel tried to contact Respondent in June 2005 and in August 2005, among other things to get Respondent’s fax number. Respondent did not respond, but changed their contact details for the domain name to Moniker Privacy Services, which offers domain whois privacy to protect the registrant’s personal information.
Given the general awareness of the ROYAL WORCESTER mark, it is inconceivable that the Respondent was not aware of Complainants’ trademark rights upon original registration.
Respondent’s registration of the mark prevents the First Complainant from effectively reflecting the mark in a corresponding top level domain, thereby disrupting the business of the Complainants and the Royal Worcester group of companies. Respondent has been engaged in a pattern of such conduct. The continued likelihood of confusion could result in harm to the business, reputation and trade marks of Complainants’.
Respondent knew or should have known that the registration was likely to violate another’s intellectual property rights. Respondent must have been aware of the Complainants’ existence, as the site is being used as a portal listing details of other companies offering for sale ROYAL WORCESTER products.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The details of the Respondent, S A Inc., given in the Complaint were correct at the time of the filing of the Complaint on September 26, 2005. However, afterwards, there was a change of Respondent and subsequently a change of contact details. The new Respondent given in the Amended Complaint is Domain Admin.
This smacks of “cyberflying”, an attempt to avoid jurisdiction, see Paragraph 8(a) of the Policy.
The Panel will not enter into the rather academic question of whether the transfer from the former registrant (SA Inc.) to the Respondent should be revoked, as it is clear from the below that the Respondent, who is the current registrant, has no legitimate interest in the domain name, and it has registered and used the domain in bad faith.
A. Identical or Confusingly Similar
The domain name in dispute is identical to Complainants’ registered trademark ROYAL WORCESTER, in accordance with Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not provided the Panel with a Response. However, since the Complainant has the burden of proof, according to Paragraph 4(a) of the Policy, the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See Européenne de Traitement de l’Information v. Horoshiy, Inc., WIPO Case No. D2004-0706.
There is no evidence in the case to the effect that the Respondent owns or has acquired any rights in the trademark.
The Panel has visited the website the domain name resolves to, and the Panel has examined the evidence put forward by the Complainants as to what has been the content of the website historically. The Panel has found no evidence that the Respondent has been commonly known by the domain name, in accordance with Paragraph 4(c)(ii) of the Policy, or that the Respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark in question, cf. Paragraph 4(c)(iii) of the Policy.
The website is a portal linking to competitors of the Complainants, offering the Complainants’ ROYAL WORCESTER brand products. The evidence produced by the Complainants, and the Panel’s own limited searches in Internet archives, show that this has been the case also earlier, at least since from sometime in 2004. In 2002 and 2003, the site linked directly to the Complainants’ UK website.
This leads the Panel to conclude that the domain name has not been used in connection with a bona fide offering of goods or services. The Panel makes reference to Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946:
“The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling: (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd, WIPO Case No. D2004-0088.)”
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, cf. Paragraph 4 (c) of the Policy.
C. Registered and Used in Bad Faith
The question is whether the Respondent has registered and used the domain name in bad faith.
The question is thus whether the Respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihoods of confusion with the First Complainants’ mark as to the sources, sponsorship, affiliation, or endorsement of the website or of a product on the website, cf. Paragraph 4(b)(iv) of the Policy.
The Complainants have argued that the Respondent’s website at all times has either provided a direct link to the First Complainant’s UK website or has contained a portal with links to others offering ROYAL WORCESTER products.
The Complaint could have been better drafted; for example, a wrong reference is made to Annex 13 for archive pages in relation to Respondent’s website. The web archive material found in the Complaint’s Annex 8, is rather insufficient. Many of the other annex references in the Complaint are incidentally wrongly numbered.
Be that as it may, the Panel has found that the website connected to the domain name did from creation of the domain name in 2002 provide a direct link to the First Complainant’s UK website, “www.royalworcester.co.uk”. From at least 2004, the website has contained a portal such as described above in section 4.
It is clear from this various content on the website, that both the original and the new registrant must have been familiar with the Complainants and their trademark. The trademark is also generally very well-known around the world.
Both registrants have chosen a domain name consisting of the famous trademark of Complainants, and have at some point in time used and the Respondent is at the present time using the domain name to direct Internet users to a website offering links to providers of products carrying First Complainant’s trademark. In these circumstances, the Panel finds that the Respondent’s choice of domain name was deliberate, with prior knowledge of the First Complainant’s trademark, and with the intention to profit from the reputation and goodwill of the Complainants’ trademark by creating a likelihood of confusion with the Complainants’ mark as to the source or affiliation of the website.
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, cf. Paragraph 4(b) 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, “royalworcester.com” be transferred to the First Complainant.
Peter G. Nitter
Date: December 5, 2005