WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ben Sherman Group Limited v. Alan Sugarman
Case No. D2006-0624
1. The Parties
The Complainant is Ben Sherman Group Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Page White & Farrer, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Alan Sugarman, Sussex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <benshermanmerchandising.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2006. On May 19, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same day, 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. On June 12, 2006, the Complainant transmitted an amended version of its Complaint. The Center verified that the Complaint as amended 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 June 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2006.
The Center appointed Adam Samuel as the sole panelist in this matter on July 24, 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.
4. Factual Background
The Complainant has owned the trade mark BEN SHERMAN since 1969. It has registered the domain names <bensherman.com>, <benshermanusa.com> and <bensherman.co.uk>. These allow customers to buy the Complainant’s goods which range from clothing and fashion accessories to related merchandising items.
The Complainant is the brother of the late Ben Sherman. (Mr. Sherman changed his name from Sugarman to Sherman.)
5. Parties’ Contentions
The existence of the Respondent’s website at the domain name address in issue is likely to lead to confusion amongst the public. The Complainant’s trade mark is being used as if the Respondent has the right to license the trade mark BEN SHERMAN MERCHANDISING. The United Kingdom Trade Marks Registry refused to register the trade mark BEN SHERMAN MERCHANDISING.
The Respondent has no rights or legitimate interests in respect of the domain name in issue. The resulting website has been set up to benefit from the goodwill built up by the Complainant. The Respondent intends to create a link in the mind of consumers accessing the website concerned between the Complainant and Respondent. The risk is gain for the Respondent and the tarnishment of the Complainant’s trademark.
The associated website indicates that the Respondent can freely use and license the trade mark BEN SHERMAN MERCHANDISING. It creates a likelihood of confusion with the Complainant’s trademark BEN SHERMAN as to the sources of products which might be available through the Respondent’s website.
The Respondent did not reply to the Complaint. However, he seems to have sent in a document to WIPO by way of response dated July 11, 2006, after the notification of the Respondent’s default. He alleges that all documents are either incorrect or legally worthless. The Ben Sherman Trust is apparently continuing its legal dispute with the Complainant in relation to the Respondent’s attempt to have BEN SHERMAN MERCHANDISING registered as a trade mark in the United Kingdom of Great Britain and Northern Ireland. It claims that the domain name is the personal legal property of the late Ben Sherman and the Ben Sherman Trust.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark 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 in issue is identical to the Complainant’s trademark except for the addition of the generic word “merchandising”. As the Panel in Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. D2001-1245 said in relation to the addition of the word “sales” to a trademark name:
“The domain name <philipssales.com> is not identical with the trademark “Philips” in which the Complainant has rights. However, the domain name integrates in its entirety the word mark PHILIPS, followed by the descriptive term “sales” (the generic tld indicator “.com” cannot be taken into consideration when judging confusing similarity). Such combination of the trademark PHILIPS with the term “sales” is under trademark law principles likely to be understood by consumers as being a variation of the trademark PHILIPS and, when used as a domain name, it is likely to be understood as providing a link to a website belonging to a sales department of the Complainant or to a website of an authorized sales agent of the Complainant. The domain name <philipssales.com> is therefore confusingly similar with the trademark PHILIPS in which the Complainant has rights.”
The same principle must apply to the addition of the word “merchandising”. For that reason, the Panel concludes that the domain name is confusingly similar to the Complainant’s trademark BEN SHERMAN.
B. Rights or Legitimate Interests
The Respondent is not called “Ben Sherman” and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized the Respondent to use the trademark. The United Kingdom Trade Marks Registry refused to register the trade mark BEN SHERMAN MERCHANDISING. The appeal against this refusal was dismissed. The Panel has no reason to doubt the legitimacy of the appellate decision in question. For these reasons, on the basis of the case file, and in view of the absence of a response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Mr. Sugarman clearly knew of the Complainant’s trademark when he registered the domain name. He believes that he and his family are entitled to register BEN SHERMAN MERCHANDISING as a trademark. However, in two decisions in 2005, the Hearing Officer and then the Appointed Person to deal with the appeal in the United Kingdom both rejected his arguments on this. The Hearing Officer made a finding of bad faith which was reversed by the Appointed Person only because the Hearing Officer applied the wrong test. The Appointed Person did not challenge the Hearing Officer’s findings of fact.
The Hearing Officer’s view of the evidence of bad faith is worth setting out in detail.
“89. Mr. Sugarcane’s evidence is not particularly forthcoming about his plans for the mark and the nature of any existing activities save for what can be gleaned about the Trust to which it appears to be the intention to assign the mark.
90. I note that a letter received by the Office on 19 October 2004 contains what I take to be written submissions. It says “We are advertising our wares on the world markets with a full explanation of operating roles and conditions together with business class categories (UK Classes 35 & 41) when and if demanded or required by the public”. That contrasts with the findings of the investigators’ report commissioned by the opponent (and dated September 18, 2003), but may simply reflect the fact that the applicant’s plans were further advanced a year or so later. Even so it is notably short of any illuminating detail as to the nature of the business or the way in which it is to be conducted.
91. In view of the absence of evidence about any actual trade conducted by the applicant it is appropriate to look at what Mr. Sugarman has said about the planned activities of the Ben Sherman Trust. The following is an extract from his letter (undated but probably from about December 2003/January 2004) to the Group enquiring as to the Group’s possible interest in a license (Exhibit AS1):
“Would your Company be interested in licensing the Ben Sherman Merchandising TM from the Ben Sherman Trust (to be formed shortly) for the pacific [sic] purposes to publish Books magazines and films about Ben Sherman and other purposes (terms to be negotiated) this would allow your Company to take control and regulate the growth of Ben Sherman Merchandising and for your Company to put their own best interests and that of the general public first we would lay down strict business procedures on all future Licences issued by us and include any reasonable recommendations of your Company in the legal rules of the Trust and if any of this was abused such Licenses would be revoked immediately such legal provisions will be compulsory to all Trustees and beneficiaries of the Ben Sherman Trust”.
92. Exhibit AS5 is a draft page from the Trust document which puts the position as follows:
“ALL TRUSTEES AND BENEFICIARIES FOR THE DURATION OF THE TRUST MUST PRETECT (sic) AND ASSIST THE FINANCIAL GROWTH OF THE BEN SHERMAN GROUP IN THE BEN SHERMAN GROUPS AREAS OF COMMERCE AND CLASSES OF THEIR REGISTRATION THE TRUSTEES AND BENEFICIARIES MUST PRETECT THE BEN SHERMAN GROUP IN THEIR FINANCIAL EXECUTION OF LICENSING USE OF THE BEN SHERMAN MERCHANDISING TRADE MARK.
ALL TRUSTEES AND BENEFICIARIES FOR THE DURATION OF THE TRUST CANNOT SELL ONLY LICENSE THE BEN SHERMAN MERCHANDISING TRADE MARK.”
93. There is no documentary evidence to suggest that the Trust Deed was ever executed or, if it was, whether it was in the same terms as the draft.
94. The opponent has filed evidence in the form of a webpage advertisement suggesting that the applied for mark is for sale or available for licensing (Exhibit NS1 to a witness statement by Nicola Shackleton of Page White & Farrer). Beneath a depiction of the mark (or a very closely similar mark) is the text:
“My Marketing Matters
The Ben Sherman Merchandising trademark is for sale or licensing
For inquiries please send fax to this number in England: 44-0-1273-299236
Ben Sherman Merchandising has no connection with the Ben Sherman
Group of companies trading in shirts, clothing and other goods.
Pictures are property of the Sherman Family.
All rights reserved worldwide.”
95. The conclusions I draw from the evidence before me are as follows:
(i) Mr. Sugarman is a member of the Sherman Sugarman family and will have been well aware of the activities of the Ben Sherman Group. That is not to suggest that he would have been privy to precise details of their turnover and trading activities but it is reasonable to infer that he would have been aware in general terms of the Group’s area of trade and the fact that it is a company of some substance. Exhibit NS1 acknowledges the Group’s trade in “shirts, clothing and other goods”;
(ii) as Mr. Sugarman initiated the approach to the Group on the subject of possible licensing he clearly considered the Group might have an interest in such an arrangement;
(iii) Exhibits AS1 and 5 contain various references to the need to control and regulate the activities of Ben Sherman merchandising in such a way as to protect the Ben Sherman Group and to avoid public confusion (as regards the latter see the letter at Exhibit AS1 and paragraph 1b of Mr. Sugarman’s witness statement of 9 August 2004);
(iv) no concluded Trust document has been filed so the claims made by Mr. Sugarman in relation to the activities of, and control over, the Trust remain matters of mere assertion;
(v) no mention is made of approaches to specific companies other than the Ben Sherman Group;
(vi) the advertisement at NS1 exhibited by Ms. Shackleton suggests that the mark at issue is now for sale or licensing;
(vii) apart from a suggestion in Exhibit AS1 that any licensing arrangement might be directed at publishing books and films about Ben Sherman no explanation has been offered as to why Mr. Sugarman chose to apply for the services in question which on the face of it are not the most obvious candidates for licensing/merchandising deals.
96. As there has been no hearing in this case and no cross-examination it has not been possible to explore the issues raised by the evidence in this case. I should, however, record Mr. Sugarman’s expressed wish as regards the activities of the Ben Sherman Group and the business to be conducted under the applied for mark. The following is from Exhibit AS1:
“I would like to see Ben Sherman Merchandising as a new business run by his brother and children and completely separate from your company where practical and running along side trading on their own reputation but in mutual respect of each other.”
97. His belief that the two businesses would be operating in different areas of trade also finds expression in paragraph 4 of his 9 August 2004 witness statement. It is also his position that the photograph of Ben Sherman appearing in the mark is the property of the family (as I have said strictly there is no evidence on the point but it is not, I think, disputed by the Group).
98. Mr. Sugarman’s underlying beliefs and motives have not been tested in crossexamination. I can only take at face value the claims he has made. I am, however, obliged to consider all the circumstances of the case in reaching a view….
100. I have found in relation to the passing off claim and for the reasons given in respect of that claim that the BEN SHERMAN brand enjoys a high reputation certainly in relation to shirts and increasingly in relation to other items of apparel. Although the applied for mark is tendered for registration in respect of services that are not directly related to those goods I have little doubt that the applicant was fully aware that a connection would be made with the Group. Hence the disclaimer of any such connection in NS1 and the references elsewhere in the evidence to steps that might need to be taken to avoid public confusion.
101. It is also to be noted that the applied for mark contains not just the words BEN SHERMAN (in script or signature form) but also the word MERCHANDISING. The latter seems to me to be calculated to convey the impression that the organisation behind the mark is a merchandising arm of the well known BEN SHERMAN brand.
102. It should, therefore, have been apparent to Mr. Sugarman that use of the applied for mark in relation to the services in question had the clear potential to impact adversely on the opponent’s long established business.
103. In all the circumstances I consider that Mr Sugarman’s action in applying for the mark fell short of the standards of acceptable commercial behaviour that were to be expected. In reaching that decision I am not imputing any conscious impropriety and I accept too that Mr. Sugarman may not have taken professional advice about the course on which he had embarked. But I am of the view that, knowing what he did, he should have made further enquiries of the Ben Sherman Group prior to filing his trade mark application and that his failure to do so resulted in his behaviour falling short of the standards that would be observed by reasonable and experienced men.”
The Panel is not bound by these findings. However, they were submitted by the Complainant as part of its evidence and no evidence has been put forward to contradict the views expressed by the Hearing Officer. The Appointed Person reversed the finding on bad faith on the basis that the Hearing Officer had not made a finding as to whether “the applicant knew that what he was doing would be regarded as falling below such standards even if he himself saw nothing wrong in what he was doing.” However, the Appointed Person went on:
“In saying this, I wish to make it clear that that I am not dismissing the opponent’s objection under section 3(6). If it were necessary to determine the objection I would either determine it myself or remit it to the hearing officer for determination. Given that the opposition has succeeded on other grounds, however, it is unnecessary to do so.”
The website to which the domain name in issue resolves contains a photograph of the late Mr. Sherman marked “TM” suggesting that the owners of the domain name have proprietary rights to a trade mark incorporating the name Ben Sherman. This is incorrect.
Below the photograph appears the statement:
“The Ben Sherman Merchandising trademark is available for licensing
For inquiries please send fax to this number in England: 44-0-1273-299236
Ben Sherman Merchandising has no connection with the Ben Sherman
group of companies trading in shirts, clothing and other goods.”
Again, the first statement is incorrect. In fact, the statement is almost identical to the one referred to by the Hearing Officer.
The Panel has to conclude whether the domain name both was registered and is being used in bad faith. It accepts the Hearing Officer’s conclusion that the Respondent knew perfectly well about the Complainant’s trademark rights and that his behaviour fell short of what was acceptable. The only remaining question is whether the Respondent knew that his behaviour was unacceptable.
The only apparent purpose of developing the domain name was to license a trademark which the Respondent knew he did not have. He knew this before applying to register the trademark and again after his application was dismissed. The Respondent’s subsequent behaviour in not changing the website following the Hearing Officer and the Appointed Person’s decisions provides evidence of a lack of interest in the legality of his own activities. The Respondent did not respond to the allegations of bad faith in this Complaint except by blanket allegations which are clearly not true about documents filed by the Complainant in this case. All this makes the Panel conclude that the Respondent knew that his conduct fell below acceptable standards.
In the circumstances, the Panel concludes on balance that the domain name was registered in bad faith because its purpose was to license a trademark to which the Respondent knew he had no rights. He continues to use the domain name in issue in bad faith in that it is now clear that he has no right to the trademark in question.
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, <benshermanmerchandising.com>, be transferred to the Complainant.
Date: August 7, 2006