WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Trustees of The British Museum, The British Museum Company Limited v. British Museum Resources, Limited
Case No. D2007-0142
1. The Parties
The Complainants are The Trustees of the British Museum, and the British Museum Company Limited, London, United Kingdom of Great Britain and Northern Ireland, both represented by Tony Doubleday, London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is British Museum Resources, Limited, West Bay, George Town WB, KY, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <britishmuseum.org> is registered with Signature Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2007. On February 2, 2007, the Center transmitted by email to Signature Domains, LLC a request for registrar verification in connection with the domain name at issue. On February 3, 2007, Signature Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant contact details. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 12, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 4, 2007. In accordance with paragraph 5(d) of the Rules, the due date for Response was extended until March 18, 2007 as per the request of the Respondent with the approval of the Complainants. Still, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 28, 2007. 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 paragraph 7 of the Rules.
4. Factual Background
The First Complainant, The Trustees of the British Museum, is one of the oldest and best known publicly funded museums in the world. It was established in 1753 as the British Museum and has continuously operated with that name ever since. The First Complainant incorporated the Second Complainant, The British Museum Company Limited, in 1972 as its wholly owned commercial undertaking.
The Second Complainant owns various registered trademarks worldwide incorporating the words “British Museum” (the “BRITISH MUSEUM Marks”). The priority of the first registration dates back to 1989.
The Respondent registered the disputed domain name on December 27, 2001.
5. Parties’ Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(i) The domain name is almost identical with the name of the First Complainant and a natural business identifier for the British Museum, which is well-known all over the world. Due to the extensive use and the promotion of the name British Museum, the First Complainant asserts its proprietary rights to such name as its common law mark. The Complainants also contend that the Second Complainant has used the British Museum Marks continuously since 1972.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name: It is neither a British institution, domiciled in Britain, nor a museum. The Complainants further contend that the Respondent has no reasonable connection with the British Museum or the domain name. The Respondent is not making a legitimate noncommercial or fair use of the domain name either, as it is using the domain name to attract web traffic to commercial websites, thereby misleading the public and diverting traffic from the Complainants’ websites.
(iii) The domain name was registered and is used in bad faith: The Complainants contend that it is implausible that the British Museum was unknown to the Respondent when it registered the domain name 250 years after the name British Museum was adopted by the First Complainant. Therefore, such registration was primarily intended to prevent the Complainants from reflecting their marks in the corresponding domain name. Moreover, the Respondent appears to have used the domain name to attract for commercial gain Internet users to the website in order to lead them to other online commercial locations.
The Complainants ask that the domain name be transferred to the First Complainant.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The second level of the domain name <britishmuseum.org> is identical to the name BRITISH MUSEUM, in which the Complainants have exclusive common law and registered trademark rights. Furthermore, the specific top level domain is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainants’ marks and the disputed domain name. As a result, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy,
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Complainants assert that neither of them has authorized the Respondent to use the BRITISH MUSEUM Marks. The Respondent does not deny these assertions. The Panel thus finds that the Complainants have made a prima facie case of showing that the Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates the Complainants’ marks.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. In particular, the Respondent’s use of the domain name in order to redirect Internet users to websites apparently for the purpose of earning click-through-revenues from third parties’ ads and thus capitalizing on the Complainants’ marks is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the domain name in bad faith, including
(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 the Respondent’s website or location or of a product or service on its website or location.
The Complainants’ marks are long established and known all over the world. It is therefore unlikely that the Respondent registered the domain name unaware of the Complainants’ rights in its marks. Furthermore, the website at the domain name is used by the Respondent for hyperlinking, amongst others, to several business sites that contain advice to tourists (<enjoyengland.com> and <londontown.com>) and thus reveal a topical connection with the British Museum. This can be taken as further evidence that the Respondent knew about the British Museum and the Complainants’ trademark rights when it registered the domain name.
The nature of the website maintained by the Respondent makes it clear that its purpose is to divert traffic intended for the Complainants’ site to its own, and thus to capitalize on the Complainants’ marks. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore concludes that the Respondent registered and is using the domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied.
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 <britishmuseum.org> be transferred, as requested, to the Complainant The Trustees of The British Museum.
Date: April 11, 2007