WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electrocoin Automatics Limited v. Ian Jewitt
Case No. D2006-0088
1. The Parties
The Complainant is Electrocoin Automatics Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Wilson Gunn, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ian Jewitt, Platinum Promotions Ltd, Nottingham, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bar-x.com> is registered with Schlund + Partner and was registered on March 27, 2000.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2006. On January 20, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On January 20, 2006, Schlund + Partner 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 February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2006.
The Center appointed Isabel Davies as the sole panelist in this matter on March 2, 2006. 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.
Although no Response was filed in this proceeding, potential ownership issues were brought to the attention of the Panel on March 2, 2006. So as to allow the Respondent an opportunity to make representations dealing with ownership, to the extent relevant, a deadline of March 14, 2006, was set for further submissions. In the event, no submissions were made by the Respondent before the deadline or otherwise. On March 15, 2006 submissions were received from a Mr Ian Mardell claiming “actual” ownership of the domain name despite not being named as the Registrant.
4. Factual Background
The Complainant is Electrocoin Automatics Limited, a UK company whose registered address is in London. It is a provider of gaming equipment such as video and arcade machines. The Complainant owns various trade marks in classes 9, 40 and 41, related to the gaming and entertainment/amusement machines industry. More specifically, these are:
- BAR-X Registered UK Trade Mark 2,001,614 (Class 9) – applied for on November 1, 1994, and registered on May 24, 1996;
- BAR-X Registered Community Trade Mark 1,822,238 (Classes 9 and 41) – applied for on August 17, 2000, and registered on February 4, 2002; and
- BAR-X Registered UK Trade Mark 2,266,140 (Classes 40 and 41) – applied for on April 3, 2001, and registered on September 21, 2001.
Further, the Complainant is the registered owner of the domain name <bar-x.net>.
The Complainant has used and is using its BAR-X mark in conjunction with its gaming machines and has acquired substantial goodwill in relation to its BAR-X machines.
The domain name the subject of the Complaint, <bar-x.com>, was registered on March 27, 2000.
5. Parties’ Contentions
The domain name which is the subject of the Complaint incorporates the BAR-X registered trade mark of the Complainant in its entirety.
The Complainant states that it has been using the BAR-X trade mark, in relation to its gaming machines, and has, as a result, become widely known. The domain name in dispute uses BAR-X, which is identical to the registered trade marks belonging to the Complainant which the Complainant also uses.
In addition to advertising unapproved “upgrades” to the Complainant’s machines, the Complainant states that the “www.bar-x.com” website has previously contained defamatory statements criticising the Complainant’s BAR-X products.
Further, the Complainant submits that the use of the Complainant’s BAR-X trade mark will cause Electrocoin customers to be directed to the “www.bar-x.com” site during their attempts to find information relating to legitimate BAR-X products or their corresponding internet gaming sites. The Complainant states that the Respondent’s ownership of <bar-x.com> must cause a great deal of confusion to customers searching for the Complainant’s website at “www.bar-x.net” but instead being directed to that of the Respondent.
The Complainant has produced evidence that the website at the <bar-x.com> domain name appears to be used by Electro Conversions Limited in its promotion of upgrades to the Complainant’s BAR-X products. The Complainant states that it appears the domain name is being held by the Respondent for use by this company and accordingly the Respondent has no legitimate rights in the domain name in any event. Further, the Complainant contends that the domain name may have been acquired for the sole purpose of renting the domain name to a third party for valuable consideration and, as such, the registration and use by the Respondent is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is identical to the UK Registered Trade Mark 2,001,614 belonging to the Complainant and which, the Panel notes, pre-dates the registration of the domain name. From the domain name, internet users would have reason to believe that any linked site may be that of the Complainant, or be licensed by or in some way authorised by the Complainant, in particular, given that the products promoted therein are specifically for use on the Complainant’s BAR-X gaming machines. For this reason, the Panel considers that the domain name is identical with the Complainant’s registered trade marks and that the first element of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent has no connection with the Complainant, nor is there any evidence that the Respondent is in any way licensed or authorised to use the Complainant’s trade mark. The Respondent has failed to assert any rights in the domain name. In the absence of any such evidence, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
Only the Respondent has standing to make representations in these proceedings. Indeed, the Respondent was openly invited by the Panel to make submissions in relation to certain issues of ownership that had been brought to the Panel’s attention late in the proceedings. In the event, no such submissions were made by the Respondent.
Representations were made (albeit out of time) by a third party, Mr. Ian Mardell. Mr. Mardell submitted that he was the “actual owner” of the domain name and that the Respondent was only providing a hosting service.
Although Mr. Mardell has no standing in these proceedings and although submissions were made after the relevant deadline, none of Mr. Mardell’s representations indicate that he would have any more right to retain the <bar-x.com> domain name than the Respondent, even if Mr. Mardell was the named registrant in place of the current Respondent. Accordingly, it is not necessary to investigate further the precise details of ownership of the <bar-x.com> domain name.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
It is clear that the owner of the domain name was aware of the Complainant’s BAR-X machines at the time the domain name was registered, given the considerable reputation of the BAR-X gaming machines in that industry and the Complainant’s identical prior registered UK trade mark covering goods including Class 9 for game, entertainment, recreational and amusement machines and apparatus, the nature of the goods offered on the site. Further, there is little doubt that the prior use of the domain name demonstrates an intention to attract for commercial gain internet users to the website at “www.bar-x.com” by creating a likelihood of confusion with the Complainant’s mark as to its source, even though, the Panel notes, there no longer appears to be continuing use of the domain name in the way complained of and that a holding notice is currently posted at the “www.bar-x.com” website. In the absence of any relevant submissions from the Respondent, the Panel accepts the Complaint.
The Panel concludes that the domain name has been 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 <bar-x.com> be transferred to the Complainant.
Dated: March 23, 2006