WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ricoh Company Ltd and Arena Coventry Limited v. Paul Edwards
Case No. D2007-0513
1. The Parties
The Complainants are Ricoh Company Ltd of Tokyo, Japan and Arena Coventry Limited of Coventry, United Kingdom, represented by Wragge & Co LLP of Birmingham, United Kingdom.
The Respondent is Paul Edwards of Coventry, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <coventryricoharena.com> (the “Domain Name”) is registered with Schlund + Partner AG c/o 1&1 Internet Limited of Slough, United Kingdom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on April 3, 2007 and in hard copy on April 5, 2007. The Center transmitted its request for registrar verification to the Registrar on April 5, 2007. The Registrar replied on April 12, 2007, providing the contact details held by it in respect of the registration and confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the current registrant, that the Domain Name was locked, and that the registration agreement was in English, incorporated the Uniform Domain Name Dispute Resolution Policy (the “Policy”) and contained a submission to the jurisdiction of the courts at its principal office and at the registrant’s address.
The Complaint as filed contained a submission by the Complainant to the jurisdiction “of the courts in England”. By email of April 16, 2007, the Center notified the Complainant that the Complaint had a formal deficiency in that it did not include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction in accordance with paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Complainant filed an amended Complaint by email on April 19, 2007, and in hard copy on April 23, 2007, stating that the Complainant submitted to the jurisdiction of the courts at the location of the registrant’s address as shown in the Registrar’s Whois database at the time of submission of the Complaint to the Center.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 April 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2007. The Respondent did not submit any response by this date. On May 14, 2007, the Respondent sent the Center an email which responded to some aspects of the Complaint, although it did not comply with various requirements for a Reply in paragraph 5 of the Rules, including certification and signature. By email of May 15, 2007, the Center acknowledged the Respondent’s communication and stated that in the absence of any request for extension of time, it would be treated as a supplemental filing which would be brought to the Panel’s attention for consideration at the Panel’s discretion. The Center subsequently gave formal notice of the Respondent’s default on May 22, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 22, 2007. 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. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Ruling
The Panel has decided to admit the Respondent’s email of May 14, 2007. Since it was only one day late and the Panel was not appointed until May 22, 2007, the fact that it was out of time has caused no prejudice to the Complainant or the procedure. The Panel will, however, take into account the Respondent’s failure to comply with paragraph 5 of the Rules and will discount the weight of his contentions on disputed factual issues since they are not certified, signed or supported by documentary or other evidence.
5. Factual Background
The First Complainant is a well-known designer, manufacturer and supplier of office equipment. Its annual sales exceed £8 billion. It has registered the trademark “RICOH” in the United Kingdom for a variety of goods and services.
The Second Complainant was formed in August 2002 to build and manage a new stadium for Coventry City Football Club, incorporating a hotel and events and conference facilities. The First Complainant acquired the sponsorship and naming rights to the new stadium, which is now called “the Ricoh Arena”. The First Complainant has applied to register “RICOH ARENA” as a trademark in the United Kingdom; this application has been opposed and has not yet been granted. The domain names <ricoharena.com> and <ricoharena.co.uk> have been registered by a company in the First Complainant’s group and are used to promote the venue.
The stadium opened for business in summer 2005. As well as its regular use for football matches, the venue has hosted concerts by well-known artistes and has had more than a million visitors. Many of the events at the stadium have been covered by television and/or radio.
The Respondent registered the Domain Name on August 24, 2005. The Respondent has also registered the domain name <coventryricoharena.co.uk>. Both domain names are pointed to a website whose home page carries the heading “A warm welcome to the unofficial site about what’s happening in and around The Ricoh Arena”. The website contains information about events at the Complainants’ stadium and news about the Coventry City Football Team. Further down, this page contains a link under the heading “Book a hotel”, accompanied by the description “Search and book online hotels convenient for the Ricoh Arena”. This links to a website selling rooms at hotels in Coventry other than the “Arena Hotel” at the Complainant’s complex.
The Complainant wrote a letter of complaint to the Respondent on November 8, 2006, to which the Respondent did not reply.
6. Parties’ Contentions
The Complainants contend that the Domain Name is very similar to the First Complainant’s registered trademark RICOH and the trademark RICOH in which the Complainants have unregistered rights. According to the Complainants, the Respondent has no rights or legitimate interests in respect of the Domain Name since he is not known by the name “ricoh arena” or “coventryricoharena” or anything similar to or derived from these names, and the Complainants have not authorized, licensed or consented to his use of the Domain Name.
The Complainants further contend that the Domain Name was registered and is being used in bad faith. They submit that a substantial number of internet users seeking information about the Second Complainant will be confused by the Domain Name and diverted to the Respondent’s website. They say that the disclaimer is inadequate to dispel the initial interest confusion which diverts internet users to the Respondent’s website. They point out that the main use of the Respondent’s website is to generate advertising revenues, that it includes a page which seeks to attract advertisers and that it hosts sponsored links. They also note that it includes provision for and indicates an intention on the part of the Respondent to develop a list of conference facilities in the Coventry area other than those provided by the Complainants. Finally, the Complainants allege that the registration of the Domain Name by the Respondent has prevented the Complainants from reflecting their mark in a corresponding domain name.
The Complainants request a decision that the Domain Name be transferred to the Second Complainant.
The Respondent says that this case has been brought because “the big boys” are put out that his site is more used that their official one. He submits that his site does not make any claim to RICOH, RICOH ARENA or any other trademarks of the Complainants and that he does not gain any advantage from pretending that he is the Complainants. He accepts that he has some affiliated advertising on his website, but says that this can be taken off if it is a problem. However, he feels that the ability to book a hotel off the site is an advantage to the user and that there is no law against it.
He says that his website gives more information than the official website and includes RSS feeds from the BBC’s website updating the information about Coventry City Football Club. He adds that he gets many emails from grateful users of his website. He alleges that the Complainants have copied a lot of his ideas from his website in their own website.
He claims that he does not gain financially from using the Complainants’ name. He submits that it is not against the law to provide a guide to something and asks whether other sites about the Ricoh Arena or other attractions have been challenged in this way.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove (A) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (C) that the Domain Name has been registered and is being used in bad faith.
Each of these requirements will be considered in turn:
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel is satisfied that the Complainants have unregistered rights in the mark RICOH ARENA as a result of the extensive commercial use and publicity of this mark in relation to their stadium complex in Coventry.
The Panel is also satisfied that the Domain Name is confusingly similar to this mark, taking into account the association of the stadium with Coventry City Football Club as well as its location in Coventry. The Panel agrees with the Complainant that a significant number of internet users are also likely to seek to access a website of the Complainants regarding the Ricoh Arena stadium using the Domain Name.
The possibility that internet users may be disabused of confusion on further examination of the Respondent’s website does not avoid this conclusion. It has been repeatedly held that the first requirement of the Policy is based on a comparison between the disputed domain name and the complainant’s mark, and that the content of the respondent’s website cannot affect this assessment: see, for example, Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic WIPO Case No. D2000-1698, BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR WIPO Case No. D2001-1480, The Vanguard Group, Inc. v John Zuccarini WIPO Case No. D2002-0834, Kirkbi AG v Michele Dinoia WIPO Case No. D2003-0038, NFL Properties LLC and New York Jets LLC v. Link Commercial Corp. WIPO Case No. D2004-1087 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. WIPO Case No. D2006-0451.
The Panel finds that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has used the Domain Name for a website providing information connected with the Complainants’ Ricoh Arena stadium. However, the Respondent’s website also advertises competing services, in particular hotels.
It is well established that the use of a domain name corresponding to a complainant’s mark for a website relating to the complainant or its goods or services will not be regarded as being for a bona fide offering of goods or services such as to give rise to rights or legitimate interests protected under the Policy if it also promotes competitors of the complainant and/or their goods or services: see, for example, Oki Data Americas, Inc v. ASD, Inc. WIPO Case No. D2001-0903, Deutsche Telekom AG v. Mighty LLC/Domain Admin WIPO Case No. D2005-0027 and Lilly ICOS LLC v. Ivan Petrov WIPO Case No. D2005-1177.
In line with these and other cases, the Panel considers that the Respondent’s use of the Domain Name in the circumstances of this case cannot be regarded as a bona fide offering of goods or services such as to give rise to rights or legitimate interests protected under the Policy.
The Respondent does not appear to dispute that he has not been commonly known by the Domain Name or any corresponding name.
Although the Respondent asserts that he does not gain financially from using the Complainant’s name, the Panel considers that his use of the Domain Name is of a commercial character, in that his website carries and solicits advertising. Furthermore, the Panel finds that the Respondent is using the Domain Name to divert internet users to his website through confusion with the Complainant’s mark with the intent of obtaining commercial gain, even if this has not as yet been realised. Even if the use could be regarded as non-commercial, the Panel considers that it is not legitimate or fair, given that the Respondent’s website promotes services competing with the Complainants’ services to internet users who have been diverted to it through confusion between the Domain Name and the Complainants’ mark.
Having reviewed the file and the parties’ submissions, the Panel is satisfied that there is no other basis on which the Respondent can claim rights or legitimate interests in the Domain Name or a corresponding name. The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
As mentioned above, the Respondent’s website carries and solicits advertising of services competing with those provided by the Complainants at their stadium complex. The Panel is satisfied that by using the Domain Name the Respondent has intentionally sought to attract internet users to his website by creating a likelihood of confusion with the Complainants’ “RICOH ARENA” mark in order to obtain advertising revenue. Furthermore, it is likely that the Respondent registered the Domain Name with the intention of using it in this way.
In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence that the Domain Name was registered and is being used in bad faith. This is so even if (as suggested by the Respondent) no commercial gain was in fact achieved: Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC WIPO Case No. D2005-1052.
Even though internet users arriving at the Respondent’s website may realize, in particular as a result of the emphasized reference to “unofficial site”, that it is not the official site which they were originally looking for, some of them are liable to be tempted by the competing offerings advertised on it. The Respondent is thereby able to gain commercially from attracting internet users to his website by his use of the Domain Name and the fact that it is likely to be taken, at least initially, for a domain name of the Complainants. Such diversion has been recognized and regarded as indicating bad faith use in numerous cases, for example Bass Hotels & Resorts, Inc. v Mike Rodgerall WIPO Case No. D2000-0568, ACCOR v. Mr. Young Gyoon Nah WIPO Case No. D2004-0681, L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc WIPO Case No. D2005-0623 and Immunex Corporation and Amgen Inc. v. Domain Active Pty. Ltd WIPO Case No. D2005-0882.
The Panel concludes that the third requirement of the Policy is 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, <coventryricoharena.com>, be transferred to the Second Complainant.
Dated: June 5, 2007