WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Computer Risk Management Limited v. F1 Help Limited
Case No. D2007-1892
1. The Parties
The Complainant is Computer Risk Management Limited, Altrincham, United Kingdom, represented by Marks & Clerk Intellectual Property, United Kingdom.
The Respondent is F1 Help Limited, Kingsley Court, Lincoln Fields, Lincoln, Lincolnshire, United Kingdom, represented by Loven Patents & Trade Marks, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <printerland.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on December 17, 2007 and received in hardcopy on December 19, 2007. On December 21, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 16, 2008. The Respondent did not submit any response by this deadline. Accordingly, the Center notified the Respondent’s default on January 17, 2008.
On January 21, 2008, the Respondent’s representatives submitted a late Response, which was received by the Center by fax only. A second copy, evidently amended to remove certain draft comments, was also received by fax by the Center on January 23, 2008. The Center acknowledged receipt of the late-filed Response on January 24, 2008 and informed the representatives of the requirement for email and hardcopies also to be provided. The Center noted that as the Response was filed out of time, it would be at the Panel’s discretion whether or not to admit the Response for consideration. Hardcopies were received, but the Respondent’s representatives failed to provide electronic copies.
The Center appointed Keith Gymer as the sole panelist in this matter on January 25, 2008. 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.
The Panel has reviewed the Respondent’s reasons for late submission of its Response, which was reportedly due to the absence from the office of the Registrant’s named Administrative Contact to whom the paper copy of the Complaint was addressed. The Panel notes that the Response was eventually submitted barely two working days after the relevant contact’s return to the office, only three working days after the Center’s deadline, immediately after the intervening weekend, and before the Panel had been appointed. Oddly too, although the Registrar’s WHOIS record identified the contact’s email address as firstname.lastname@example.org, and the Center correctly notified the hard copy of the Complaint, the Panel could find no evidence that either the Complainant or the Center had actually sent an electronic copy of the Complaint to the Respondent at this email address. In any case, despite the Respondent’s representative’s failure to fully comply with the Center’s formal requirements, the Panel is prepared to accept the Respondent’s reasons for the five day delay in responding, and, also in the interests of having all available information before it, admits the Response for due consideration.
4. Factual Background
The Complainant is Computer Risk Management Limited, a UK company, originally incorporated in 1993. It trades as Printerland.co.uk in the supply of computer printers and related goods from a website at www.printerland.co.uk. (The domain name <printerland.co.uk> was evidently registered for the Complainant on July 2, 2004.)
The Complainant is the registered proprietor of a UK Trade Mark registration 2385571 for the mark PRINTERLAND in class 35. This was filed on February 26, 2005 and registered on September 23, 2005. It is also the proprietor of a Community Trade Mark application 6327845 filed on October 2, 2007 for PRINTERLAND in classes 2, 9 and 16. This application is presently still pending.
The Respondent, F1 Help Limited is also a UK company, originally incorporated in 1999. It provides IT solutions and support and trades as F1 Group operating a website for its services under this name at “www.f1g.co.uk”. (The domain name <f1g.co.uk> was evidently registered for the Respondent on March 16, 2006.)
According to the Tucows WHOIS record, the Domain Name, <printerland.com> was first registered as of July 23, 2002. The WHOIS record also shows that it was “last updated” on October 9, 2007, but there is no indication as to what update was made at that date.
5. Parties’ Contentions
The Complainant made a number of submissions in support of its claim, edited extracts of which are provided below:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant is the proprietor of the following trade marks:-
1) UK Trade Mark Registration No. 2385571 PRINTERLAND in Class 35
2) Community Trade Mark Application No. 6327845 PRINTERLAND in Classes 2, 9 and 16
The earlier existing registration and application belonging to the Complainant are for the trade mark PRINTERLAND. This is identical to the domain <printerland.com> to which this complaint relates.
(b) The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is aware of the Complainant and its activities under the registered and unregistered trade mark PRINTERLAND. The Respondent is aware of the significant use that has been made by the Complainant of the trade mark PRINTERLAND and that its registration of the domain name <printerland.com> is likely to lead to severe confusion on the part of the public. The trade mark PRINTERLAND is a distinctive and well-known trade mark belonging to the Complainant. The trade mark has no real meaning in ordinary trade, other than as the distinctive trade mark of the Complainant. The Respondent can have no legitimate commercial reason for seeking to use and register the domain name <printerland.com>. The Respondent has never previously been known by the <domain printerland.com>, has never before made use of the domain <printerland.com> in relation to a bona fide offering of goods and/or services, and is not making legitimate non-commercial or fair use of the domain name <printerland.com>.
(c) The domain name has been registered and is being used in bad faith
The Complainant has already contacted the Respondent with a view to having the domain name <printerland.com> transferred to the Complainant without the need to launch formal proceedings. However, the Respondent failed to provide a satisfactory response regarding the transfer of the domain name <printerland.com>, and has now put the domain up for sale to the “highest bidder”. [A printout from the website at “printerland.com” displaying this offer of sale was annexed to the Complaint.]
The Respondent was alerted to the rights of the Complainant but failed to take the correct and appropriate course of action in transferring the domain name to the Complainant. Rather, the Respondent now seeks to sell the domain name for as high a price as possible - this clearly demonstrates that the domain was obtained in bad faith, and that the Respondent simply seeks to make a profit from its registration of the domain name <printerland.com>.
Despite being alerted to the rights of the Complainant on December 7, 2007 and again on December 14, 2007, the Respondent has failed to transfer the domain to the Complainant, and instead seeks to make a profit from its bad faith registration of the domain. [Copies of the letters sent to the Respondent on December 7, 2007 and December 14, 2007 were annexed to the Complaint.]
It should be noted that the Respondent clearly knows that use of the domain name <printerland.com> would amount to infringement of the Complainant's registered trade mark, as it provided a brief response indicating that it would "not infringe" the Complainant's UK Trade Mark Registration and then proceeded to immediately put the domain name <printerland.com> up for sale to the “highest bidder”. This demonstrates that the Respondent had sought to register the domain in bad faith, and is now attempting to dispose of the domain name at a high price. [A copy of the Respondent's letter dated December 11, 2007 was annexed to the Complaint.]
The Respondent made the following submissions in reply to the Complainant’s contentions:
(a) Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Respondent does not deny that the domain name includes a trademark for which the Complainant has a UK Trademark Registration and which is the subject of a Community Trade Mark Application.
(b) Whether the Respondent has rights or legitimate interests in respect of the domain name
The Respondent purchased the domain name registration with a view to furthering its interests in the United States of America. It had no intention of using the domain name within the European Community. It stated in its letter of December 18, 2007 to the Complainant’s representative that “we have no intention of infringing the UK Trade Mark Registration No. 2385571”. The Respondent is currently actively exploring the establishment of a subsidiary company in the USA and the domain name was acquired to prepare the way for new business activities within the US.
Respondent submits that the scope of a “.com” domain name, while not strictly a country-based domain, nevertheless is the top level domain most readily recognised in the USA as appropriate to trade within the USA. There are many examples of “.com” domains that are used solely in the course of trade within the USA, and are not directed to attracting sales from other countries.
(c) Whether the domain name has been registered and is being used in bad faith
The domain name was not registered in bad faith. The Respondent was unaware of the Complainant’s registered trade mark when it purchased the domain name in the USA, but in any event the purchase was made with a view to entry into the US market, where it is submitted the Complainant has no rights in relation to the trade mark. The Respondent has made it clear throughout that it was not intending to use the domain name in the UK and thereby infringe any rights of the Complainant.
When the existence of the Complainant’s interest in the name Printerland was drawn to the Respondent’s attention, in a letter from the Complainant’s representatives, Marks & Clerk, dated December 7, 2007, it wrote to say that it would not infringe the Complainant’s registered trade mark. It then decided to dispose of the domain name in view of the potential conflict, and created an offer page on its web site. Marks & Clerk then wrote on December 14 demanding transfer of the domain name to the Complainant at no cost and lodged its complaint with WIPO on December17 before the Respondent had had an opportunity to reply. Respondent wrote to Marks & Clerk on December 18 saying that it would transfer the domain name to the Complainant at the cost it had paid for it, but this was ignored. The offer to assign to the Complainant was repeated in an e-mail message sent on January 18, 2008.
Since the offer for sale of the domain name was in no way limited to purchasers in the UK or Europe, it is unreasonable to say that it was in bad faith. The transfer of the domain could quite properly have been to a potential user in the USA, or indeed elsewhere in the world, who could have made full use of it in relation to domestic sales and services which would in no way impinge on the business of the Complainant.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 Complainant has demonstrated that it has registered trade mark rights in the mark PRINTERLAND, which is identical to the distinctive element “printerland” in the Domain Name <printerland.com>. It is well established that the GTLD suffix “.com” is to be disregarded in any comparison.
Accordingly the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights, and the requirements of Paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, use 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 trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
The Complainant asserts that the Respondent knows of the business and alleged reputation of the Complainant’s business under the PRINTERLAND mark and that the Respondent has not been known by the Domain Name, nor has it made a prior bona fide use, nor is it making a legitimate non-commercial or fair use of the Domain Name.
Certainly, following the Complainant’s demand letter of December 7, 2007, which was exhibited to the Complaint, the Respondent will have been aware of the Complainant’s claims. However, even in that letter, the Complainant’s claims were all based on assertions of acts that would constitute infringement of the Complainant’s rights if such actions were to be carried out by the Respondent in the UK. No claims were made and no evidence was produced then or in these proceedings to show that the Respondent had actually done any of such acts in relation to the Domain Name.
In its letter of December 7, 2007, the Complainant sought various undertakings from the Respondent, including not to infringe the UK Trade Mark registration 2385571, along with other requirements to cease doing things that there was no apparent evidence the Respondent was doing anyway, and a demand to assign the Domain Name to the Complainant.
The Respondent replied by letter of December 11, 2007 expressly confirming that: “We will not infringe UK Trade Mark Registration No. 2385571 PRINTERLAND in Class 35 in the name of Computer Risk Management Limited.”, but offering no other comments or commitments, and making no demands itself in relation to the Domain Name.
Subsequently, by December 14, 2007, in what would appear a rather ill-considered reaction to the Complainant’s demands, the Respondent also created a web page at www.printerland.com, provocatively offering the domain name “for sale to the highest bidder”.
Unsurprisingly, the Complainant immediately wrote again to the Respondent in strong terms, reiterating its demand that the Respondent transfer the Domain Name to the Complainant “at no cost” and threatening to launch “WIPO proceedings” or event to apply for “an interim court injunction”.
The Complaint was duly filed on December 17, 2007.
In the late-filed Response, the Respondent offers the defence that it does have at least a potentially legitimate interest in the Domain Name, because “The Respondent is currently actively exploring the establishment of a subsidiary company in the USA and the domain name was acquired to prepare the way for new business activities within the US.”
However, it provided no supporting evidence (for example, correspondence it might have had with US lawyers or other advisors about setting up such a subsidiary) to back-up this claim. The seriousness of the Respondent’s commitment to such a proposed venture is also rather called into question by the Respondent’s evident haste to divest itself of the Domain Name, when faced with what the Respondent acknowledged was the Complainant’s UK-centred claim.
There are thus grounds for some scepticism about the Respondent’s claims, but apart from the ill-judged offer for sale following the Complainant’s demands, there is also no evidence that the Respondent has made any attempt to use the Domain Name either to divert traffic or mislead web-users seeking the Complainant’s business, nor to tarnish the PRINTERLAND mark. And, in the Panel’s view, it is the evidential deficiencies – on both sides – which are most obvious in this case.
In the event, the Panel considers the question of whether the requirements of Paragraph 4(a)(ii) have been met to be moot and takes no decision on this point as, for the reasons given below, this Complaint fails on other grounds.
C. Registered and Used in Bad Faith
It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.
Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:
(ii) [Respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.
The fundamental problem for the Complainant in this case, which would apply irrespective of whether the late-filed Response was admitted, is that the WHOIS record for the Domain Name indicates that, on the face of it, the Domain Name was first registered in 2002, well before the Complainant itself established any use or registered rights in PRINTERLAND. Clearly, that original registration cannot have been made in bad faith relative to the Complainant’s rights. While there may be certain limited situations in which bad faith could conceivably be found, for example where there was clear evidence of the original registrant’s knowledge and intent to benefit from Complainant’s likely rights in the mark, no such evidence is before the Panel in the present case. (Compare e.g. ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, and other cases cited in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.) Moreover, the Complainant itself has not argued that the Respondent was not the original registrant, and there is no evidence before the Panel to establish that the original registrant of the domain name was not the Respondent.1
Otherwise, the Complainant’s assertion of bad-faith use of the Domain Name by the Respondent is based on the Respondent’s refusal to immediately comply with the Complainant’s demands to assign the Domain Name to the Complainant without compensation, and the Respondent’s subsequent offer of the Domain Name for general sale. That offer might be characterised as imprudent and possibly even impudent, but it does not of itself establish that the Respondent acquired the Domain Name with the Complainant’s mark in mind. Indeed, in the Panel’s opinion the timing and subsequent removal of the offer looks rather more like an unduly hasty reaction by an inexperienced Respondent not used to dealing with the sort of threatening demands it had received from the Complainant’s representatives. However this may be, the offer had been removed from the website when the Panel checked, and only an invisible “StatCounter” appeared to be operating. The Respondent has also claimed to have offered to transfer the Domain Name to the Complainant at cost (but again, failed to provide evidence of this in the form of copies of the correspondence concerned).
As observed in Section 6 B above, and significantly in this case, it is striking that there is a distinct absence of evidence of parasitic, bad-faith exploitation by the Respondent of the Domain Name – for example, by setting up click-though links to mislead or divert surfers and to skim-off income by trading off the reputation established by the Complainant, which would typically have been expected from anyone who was really involved in the abusive registration and misuse of a domain name. There does not even appear to have been so much as a parking page set up by the Respondent. While it is well established that there may be certain circumstances in which the passive holding of a domain name may amount to bad faith, where for example there is evidence that the Complainant’s trademark is well-known, the Respondent has engaged in deliberately misleading contact and has submitted no Response, and there is an absence of any conceivable legitimate use to which the domain name could be put (see e.g. Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003), these factors have not been demonstrated in the present dispute.
Consequently, the Panel considers that the evidence is inadequate to show that the Domain Name has been registered and is being used in bad faith.
In these circumstances, therefore, the Panel finds that the Complainant has failed to prove that the requirements of Paragraph 4(a)(iii) of the Policy have been met and the Complaint must fail on this ground.
For the foregoing reasons, the Complaint is denied.
Dated: February 7, 2008
1 1. As noted above, the WHOIS record does show that it was most recently updated in October 2007. It may be that the Respondent only acquired its interest at that time – perhaps picking the name up using a drop-catching service or through a purchase from an earlier registrant. However, the update could also simply have reflected a change in name server addresses, and the Respondent might have acquired the Domain Name on a different date altogether. Neither the Complainant nor the Respondent has given any evidence as to the actual date of acquisition of the Domain Name by the Respondent.