WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Shires (GP) Limited v. Mel Gordon (Leics Techs)

Case No. D2007-0866

 

1. The Parties

The Complainant is Shires (GP) Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Nabarro, of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mel Gordon (Leics Techs), of Leicester, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <highcrossquarter.com> (the “Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 13, 2007, and in hard copy on June 15, 2007.

The Center transmitted its standard request for registrar verification to the Registrar by email on June 20, 2007. The Registrar responded by email on June 21, 2007 confirming that the Domain Name was registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied, that the Domain Name would be locked during this proceeding, and that the registration agreement was in English and contained a jurisdiction submission as provided in the Policy; and providing the contact details in respect of the registration on its Whois database.

The Center verified that the Complaint satisfied the formal requirements of 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 July 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2007.

The Response was filed by online submission without exhibits on July 25, 2007. On July 26, 2007, the Respondent requested an extension of time until August 3, 2007, for filing the hard copy of the response and exhibits on account of difficulties caused by serious flooding in the United Kingdom. The Center granted this request on July 27, 2007.

The Center acknowledged receipt of hard copy of the Response on August 9, 2007, and requested electronic copies which were sent to the Center and the Complainant on August 10, 2007.

The Center appointed Jonathan Turner as the sole panelist in this matter on August 20, 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. Factual Background

The Complainant is the general partner of a partnership formed between two major property companies for the purpose of operating and managing a shopping center in Leicester in the United Kingdom. A major development of this shopping center is being carried out which is intended to transform it into one of the United Kingdom’s leading shopping and leisure destinations.

The Complainant announced on July 14, 2006, that the new shopping center would be called “Highcross Quarter”. The Complainant thereafter used the name in advertising and promotional literature. The Complainant’s choice of this name for the new shopping center was also covered in the press.

The Complainant applied to the UK Intellectual Property Office on June 12, 2006 to register HIGHCROSS QUARTER as a trademark for a variety of goods and services. The application was granted on April 13, 2007.

The Respondent registered the Domain Name and its “.co.uk” equivalent, <highcrossquarter.co.uk>, on July 14, 2006. The Complainant (or one of the partners in the development, hereinafter for convenience referred to as the Complainant) became aware of the Respondent’s registration on July 19, 2006, when it applied to register the Domain Name.

The Complainant contacted the Respondent, who informed the Complainant that he had registered it on behalf of a client whose identity he could not disclose and who was on holiday. The Respondent said that he would ascertain his client’s intentions following his client’s return on July 30, 2006. The Respondent subsequently informed the Complainant that his client intended to establish a website relating to sabbats (i.e. wiccan festivals).

By email of August 30, 2006, the Respondent informed the Complainant that his clients were minded to proceed with their website as planned but were not entirely averse to a proposal from the Complainant. By email of September 4, 2006, the Complainant offered to pay 2500 for the transfer of the Domain Name and its “.co.uk” equivalent, together with assurances that the Respondent’s client would not seek any other domain names incorporating “Highcross Quarter” or any similar name, and would not use “Highcross Quarter” or any similar name for or to promote sabbat or related activities.

The Respondent replied on September 5, 2006, informing the Complainant that his clients had declined this offer. In response to a request by the Complainant to give an indication of the figure his clients were looking for, the Respondent informed the Complainant on September 6, 2006 that they would only consider serious offers in excess of a million pounds for each domain name.

The Domain Name now resolves to a website relating to wiccan rites. This website was developed after December 14, 2006.

Reports in the press between July 19 and July 25, 2007, have stated that the Complainant’s shopping center will now be called “Highcross Leicester”. However, the Complainant has not withdrawn its Complaint.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical to its registered trademark HIGHCROSS QUARTER.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has been unable to find any evidence of use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to the Complaint. According to the Complainant, the website is a sham created in a spurious attempt to demonstrate fair use of the Domain Name.

The Complainant alleges that the Domain Name was registered and is being used in bad faith, in that it was registered primarily for the purpose of sale to the Complainant for consideration in excess of the costs of registration and in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Complainant also alleges that the Respondent has engaged in a pattern of such conduct.

The Complainant draws attention to the fact that the Domain Name was registered on the same day that the Complainant announced its choice of name for its new shopping center. The Complainant points out that the Respondent or his firm have registered other domain names corresponding to the names of major proposed developments in the United Kingdom, viz. <minerva-tower.co.uk>, <minerva-building.co.uk>, <london-bridge-tower.co.uk> and <walkersstadium.co.uk>, in each case on the same date as articles about the proposed development appeared in the press. The <london-bridge-tower.co.uk> domain name resolves to a web page offering it for sale for 20,000.

The Complainant requests the transfer of the Domain Name.

B. Respondent

The Respondent states that he owns and runs a website design and internet consultancy under the name “Webwordwizards.com” as part of his “Leics Techs” business, and that he frequently registers domain names for clients as part of that business. He also acquires domain names for personal use, including a voluntary website for his deprived neighbourhood covering issues of concern to residents.

The Respondent says that he has no recollection or record relating to the registration of <walkersstadium.co.uk>. He claims that he registered the other domain names corresponding to major developments identified in the Complaint with a view to creating websites comparing these developments with his neighbourhood. He says that the offer for sale of one of these domain names for 20,000 was not intended and posted in error, pointing out that another of his domain names, <our-neighbourhood.co.uk>, was also offered for this price, which could not have been intentional.

The Respondent maintains that the Domain Name was registered on the instructions of his clients who wanted a website relating to wiccan festivals. Several months before the Complainant’s announcement of the new name of the shopping center, his clients chose the name “Highcrossquarter”. This name refers to days of special significance in the wiccan calendar and is used in a book which they were looking at to help them choose a suitable domain name. The relevant page of the book is exhibited.

The Respondent states that he was waiting to receive a deposit from the clients before registering the corresponding domain name. However, one of those involved drew his attention to the Complainant’s announcement of its choice of the same name on July 14, 2006. The Respondent immediately registered the Domain Name and the corresponding “.co.uk” domain name.

The Respondent says that he suggested a seven figure price for the Domain Name and the corresponding “.co.uk” domain name in order to get the Complainant to go away.

The Respondent exhibits what purports to be email correspondence between himself and his clients. In view of its significance, relevant parts of this material are set out in some detail below.

The Respondent accuses the Complainant of asserting expansive rights and of bad faith in trying to seize the Domain Name despite having been informed of the longstanding meaning of the phrase “High Cross Quarter” in Wicca and the Respondent’s entitlement to use it. He adds that the shopping center is now not even being called “Highcross Quarter”.

C. Correspondence exhibited by the Respondent

According to the material exhibited by the Respondent, a person called Aeshia Wisecraft wrote to the Respondent on December 23, 2005, inquiring if he had asked “morry” about getting the website done yet and stating that she knew that morry really wanted to do it this coming year. The Respondent replied that he would ask her about it.

The Respondent sent an email to “Morrigan” later that day with the subject line “website?”. The continuation of this email (apparently misplaced in the annex) said that Aeschia had “pointed out to me that you might be in the market for a website now?” and asked “Want me to pop round a do a presentation when you next got everyone together there? I have been working on some great ideas for it.”

Morrigan Wisecraft replied on December 29, 2005, that she did feel the time was now right to all meet and discuss this, but her preference was to meet with Vic and Aeshia beforehand. She asked the Respondent if he could come over on Saturday. The Respondent replied the following morning (a Friday), saying that he could come over on Saturday and would bring a notebook to show wicca and occult sites from the kitchen table. He had been looking at them again last night and there was nothing very well designed, so theirs would be the first.

Later on December 30, 2005, the Respondent sent a further email to Morrigan suggesting that they go through some domain name options in advance of the meeting and asking if she had ideas of domain names she would like to use. He pointed out that it was possible to have more than one and suggested she make a shortlist for him to check. Morrigan replied with various suggestions including the name “Morrigan”, “circleofrites” and “goddessworship”.

The Respondent replied copying the email string to Aeshia for comment. A little later, the Respondent sent a further email to Aeshia saying that Morry was now suggesting either “goddessimmortal” or “priestessimmortal”, but that he thought that some wizards (but not him) might be alienated by a feminine name and spelling might be an issue. Aeshia responded saying “Not you mel but other wizards do need to cast off this misogyny thing … [and] get in touch with your mother earth side”. She went on to acknowledge, perhaps sarcastically, that there might be a spelling problem.

A later email from Morrigan to the Respondent with copy to Aeshia said that they would have to rebook the meeting for some other time since Vic was not 100%, and suggesting the end of January, since she had to prepare for Imbolc (a wiccan festival).

The Respondent wrote to Aeshia with copy to Morrigan on February 4, 2006, stating that they still had to thrash out the name and music ideas. He said that they needed to give up with any name that had “ess” on the end as Vic would not wear it. He suggested they took advantage of the fertility and productivity of Beltaine (the wiccan May day festival) to do the name and sound planning.

Morrigan wrote back on February 5, 2006 saying this was a wonderful idea, but asking if they could do it a week before. She apologized for messing the Respondent around and went on: “Victor wants us to discuss the name again. We need to reconsider the crossquarter idea or the Highcrossquarter idea from the gmt book. He thinks we were drawn to it by the priestess one. And so he feels inclined to do it. What do you think mel? I know you are going to curse us but he may be right.”

Morrigan wrote again on February 8, 2006, saying “I am not really ok with renaming the site once we have started. It has to be right to begin with. It would bring bad luck and calamity upon us if we were to rename the site. It like a house. You would not rename a house or a baby one you named them. My gut feeling is that we should use highcrossquarter, there is something about it I can sense and feel. Can’t you lot sense something about it too? It’s sort of right. I know it.”

On July 14, 2006, at 11.36 am, Aeshia wrote to the Respondent: “Mel can you call me urgently please. I just found out they are naming the shires shopping center “Highcross quarter” You have got our domain names haven’t you?”

Subsequently, on September 5, 2006, the Respondent forwarded to Morrigan and Aeshia the Complainant’s email of that day requesting him to ask his client to give an indication of the figure they were looking for. The Respondent’s covering message said: “Ladies, He is back again for more. They want a figure. What is your tradition and religion worth to you ladies? I think the only way this guy will leave us in peace is if we at least give the impression of a reasoned assessment and evaluation. Recommend we bear in mind he was to buy your freedom of religion and the high cross quarter sabbats themselves and quote accordingly. I think he will eventually get the message and bugger off. Is that what you want us to do?”

Morrigan replied, “Mel can you quote a serious serious figure so he gets the message he can’t afford our faith”.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (A) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (C) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Mark in which Complainant has Rights

It is clear that the Complainant has rights in the mark “Highcross Quarter” by virtue of its registration at the United Kingdom Intellectual Property Office. It is also clear that the Domain Name is identical or confusingly similar to this mark. The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel is unimpressed by the Respondent’s explanation of his registration of the domain names <minerva-tower.co.uk>, <minerva-building.co.uk>, <london-bridge-tower.co.uk> and <walkersstadium.co.uk>. However, the Respondent’s case in relation to the Domain Name is fully substantiated by the exhibited correspondence set out above. Either this material is an elaborate forgery or the Respondent’s case regarding the registration and use of the Domain Name and the offer made to the Complainant is true.

The Panel is not able on the material available in this proceeding to conclude that the correspondence exhibited by the Respondent is a forgery. The Panel must therefore proceed on the footing that the Domain Name was indeed selected by a group of wiccan enthusiasts for a proposed website about wiccan festivals before the Complainant adopted the name “Highcross Quarter” for its shopping center; that the Respondent registered the Domain Name in order to secure it for the wiccan group when he heard that the Complainant had adopted this name; and that the seven figure price was proposed to put the Complainant off.

The website at the Domain Name obviously has nothing to do with the Complainant and there is no suggestion that members of the public will be misled by it into believing that it is connected with the Complainant or its shopping center. The Panel considers that it is fair and legitimate for the Respondent’s wiccan group to use the Domain Name for this website, given that the Domain Name is appropriate for this use and had been selected by them prior to the Complainant’s choice of a similar name.

There is no evidence that the website has been used commercially or that the Respondent has been paid for preparing the website. The Panel considers that paragraph 4(c)(iii), rather than 4(c)(i), of the Policy is relevant. However, the Panel is satisfied that by the date of the Complaint, the Respondent was making legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark.

On this basis, the Panel considers that the Respondent has rights or legitimate interests in respect of the Domain Name. Accordingly, the Complaint fails on the second element of the Policy.

C. Registered and Used in Bad Faith

In the light of the evidence discussed above, the Panel is not able to hold that the Domain Name has been registered and is being used in bad faith.

In particular, it has not been shown that the Domain Name was registered primarily for the purpose of sale to the Complainant or a competitor of the Complainant. If the correspondence exhibited by the Respondent is authentic, the Domain Name was registered for the purpose of the proposed wiccan website and the Complainant’s proposal to acquire it was not greeted with enthusiasm.

It does appear that the Domain Name was registered together with the “.co.uk” equivalent to secure these domain names for the wiccan group and to prevent the Complainant from acquiring them. However, in the light of the wiccan group’s previous selection of this name for their proposed website, and its appropriateness in their eyes, the Panel does not regard this as involving bad faith.

The Complaint therefore fails on the third element of the Policy.

D. Reverse Domain Name Hijacking

Although the Panel rejects the Complaint, the Panel does not accept the Respondent’s suggestion that the Complaint was made in bad faith. There is no evidence that the Complainant saw the correspondence between the Respondent and his wiccan group before filing the Complaint. Without sight of this correspondence, the Complainant had every reason to believe that its Complaint was justified and would succeed. Accordingly, the Panel declines to find that the Complainant has engaged in reverse domain-name hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Jonathan Turner
Sole Panelist

Dated: August 30, 2007