Complainant is Verridian Plc of Bristol, United Kingdom, represented by Clarke Willmott, United Kingdom.
Respondent is Nadine Leech of Randburg, South Africa, appearing pro se.
The disputed domain name, <verridian.com>, is registered with Register.IT SPA.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2008. On October 9, 2008, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the domain name at issue. On October 10, 2008, Register.IT SPA transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2008. The Response was filed with the Center on October 25, 2008.
On November 4, 2008, Complainant made a supplemental filing in connection with this case.
On November 7, 2008, Respondent made a supplemental filing in connection with this case.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 6, 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.
Complainant Verridian Plc is a public limited company in the United Kingdom of Great Britain and Northern Ireland (“UK”), incorporated in 2007 that provides recruitment and management consulting services. Its business was established in 1991 and, since 2000, has been operated by Complainant's affiliates and/or predecessors-in-interest under the name “Verridian.” For the sake of simplicity, Complainant, its affiliates, and its predecessors-in-interest will hereinafter be referred to as “Complainant.”
Complainant owns two UK trademark registrations: one for the word mark VERRIDIAN (Trade Mark 2222950A) and one for a design mark including the word VERRIDIAN (Trade Mark 2222950B). Both marks were registered in 2000 and cover recruitment consultancy (Class 35) and outplacement services (Class 42). Assignment of the marks to Verridian PLC was published on August 17, 2007.
Complainant registered the domain name <www.verridian.co.uk> on March 27, 2000 and operates a website at that address, through which it markets its services.
On February 18, 2004, Mr. Tony Jacobs, then an agent of Complainant, registered the disputed domain name, <verridian.com>, which he used for a time for business purposes. In September of 2004, Mr. Jacobs ended his association with Complainant and began working for Grosvenor Recruitment, a competitor of Complainant. Thereafter, the site at times promoted Grosvenor Recruitment, and contained a link to “www.rbs.eu.com”, a domain name owned by Mr. Jacobs.
Attached to the Complaint are several pieces of correspondence between Mr. Jacobs and Complainant's attorney. On November 30, 2005, Complainant's attorney sent a letter to Mr. Jacobs stating that Mr. Jacobs was using the <verridian.com> domain name in bad faith to divert Complainant's potential customers to Grosvenor Recruitment, and demanding that the domain name be transferred to Complainant. In a reply dated December 6, 2005, Mr. Jacobs stated that he registered the domain name with Complainant's “full knowledge and approval,” denied that he used the domain name in bad faith, asserted that he had discussions in October and November 2005 with Complainant's managers about transferring the domain name to Complainant [which transfer never occurred], and informed Complainant that it should contact the new owner of the domain name (namely, Respondent) regarding the registration. Further correspondence ensued, but it did not result in any resolution of Complainant's dispute with Mr. Jacobs. Rather, throughout these letters, Mr. Jacobs continued to insist that he sold the domain name to Respondent in 2005 (who had a South African company that included the word “Verridian” in its name) and no longer had any interest in or control of the domain name.
Complainant subsequently turned its attention to Respondent. In a letter to Respondent dated August 18, 2008, Complainant's attorney stated: “Whilst we have advised our client that they are entitled to file a Complaint against you under ICANN's Uniform Domain Name Dispute Resolution Policy (“UDRP”), in the interests of avoiding protracted legal proceedings it is prepared to offer you the sum of £2,000 in return for the transfer of the domain name www.verridian.com.”
Respondent says it attempted to respond to the letter in an email dated September 2, 2008, but this email was not received because of a typographical error in the email address to which Respondent tried to send the response. In the email (which Complainant later received as part of the Response that Respondent filed in this case), Respondent stated that “we have been trading for the last few years with the Close Corporation registered as Verridian Investments”, that there is no conflict with Respondent's use of the name “Verridian” under South African law, and that Complainant's settlement offer was inadequate.
Complainant asserts that it owns the VERRIDIAN marks and that it has been conducting its recruitment and management consultant business under the name “Verridian” since 1991. Complainant asserts that it has established “substantial goodwill and reputation under and in accordance with the use of its VERRIDIAN trade marks”, and notes turnover of £2.5 million or more in the last three financial years.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant's marks. It asserts that the top-level “.com” domain “does not distinguish the domain name in issue with the Complainant's trade mark.”
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, in that the <verridian.com> domain name currently resolves to an error page and, “on information and belief, the Respondent has no apparent connection with the domain name”. Complainant alleges that there is no evidence that Respondent has used or is preparing to use the domain name for legitimate non-commercial or commercial purposes. Complainant further alleges that, at an unspecified time prior to notice of the dispute, the domain name resolved to “www.rbs.eu.com”, which contained sponsored links to financial institutions and a search box that, when a user entered “Verridian,” returned sponsored advertisements for Complainant's competitors. Complainant further notes that, although pay-per-click (“PPC”) advertising related to a generic domain name can be a bona fide use in appropriate cases (citing Terroni Inc. v Gioacchino Zerbo, WIPO Case No. D2008-0666), that principle is inapposite here because (1) “verridian” is not a generic term; (2) the “www.rbs.eu.com” website is not related to the term “verridian”; and (3) most of the links on the “www.rbs.eu.com” website refer to Complainant's competitors, and “the real value of the domain name is based on the value of the Complainant's trade mark and that the Respondent has profited from the domain name at issue in this regard.”
Complainant notes that a search for third parties in South Africa returned one entity using the name “Verridian”, Verridian Investments CC, a corporation registered on December 15, 2005, which is 50% owned by Paul Leech (who shares Respondent's surname). Complainant attaches this entity's registration certificate and notes that its address differs from the address given by Respondent for purposes of registering the <verridian.com> domain name. Complainant states that it has not given Respondent permission to use the “Verridian” name, there is no evidence that Respondent has been commonly known as “Verridian”, and “Verridian” is an invented word used extensively by Complainant since 1995. Complainant further alleges that a Google South Africa search results are in no reference to Respondent.
Complainant argues that Respondent registered and is using the domain name in bad faith. Complainant says that Tony Jacobs, “the first registrant and owner” of the domain name, was using the domain name in bad faith. According to Complainant, Mr. Jacobs was Complainant's recruitment consultant from January 1, 2004 to September 24, 2004; thereafter, he joined Complainant's competitor, Grosvenor Recruitment. Complainant asserts that it did not authorize Mr. Jacobs to register the domain name, but rather asked Mr. Jacobs to transfer the name to it upon learning of his registration. In support of this, Complainant cites a March 29, 2004 email from Complainant's previous director, Graham Archer, to Mr. Jacobs, in which Mr. Archer states: “Much as I appreciate your thinking (& initiative) we cannot agree to one Consultant having a monopoly on a ‘generic' title such as: email@example.com, firstname.lastname@example.org, or email@example.com clearly these call into the same category as info@verridian or admin@verridian & this format if deployed, should rightly be as a corporate benefit for all – indeed part of the benefit of registering Verridian as a Service Mark & developing the ‘Brand' is to both promote & protect it for the benefit of all.”
Complainant alleges that, from April 12, 2004 to February 7, 2005, the domain name resolved to a number of sites related to Grosvenor Recruitment,1 including “www.rbs.eu.com”. Complainant alleges that the “www.rbs.eu.com” site “contained sponsored links to a number of competing third party recruitment agency websites.” From this, Complainant concludes, Respondent has created a likelihood of confusion with Complainants mark, to attract Internet users to the “www.verridian.com” site for commercial gain.
Complainant further notes that its efforts to contact Respondent were unfruitful.
Respondent alleges that Complainant has not been trading under the name “Verridian” as long as Complainant alleges, but does not dispute that Complainant owns the VERRIDIAN marks and uses these in connection with its recruitment business. Respondent notes that Verridian PLC was registered in 2007 some time after Respondent acquired the disputed domain name.
Respondent argues that she is not in conflict with Complainant's mark, as Complainant is a “specialized localized recruitment company” in the UK, with no known South African registration, and whose business differs from Respondent's property and estate management business.
Respondent states that the <verridian.com> domain name is not identical or confusingly similar to Complainant's marks, relying on Mutuelle d'Assurance du Corps de Sante Français v. SA CHA REBK LLC, WIPO Case No. D2000-0450, for the proposition that, when a trademark is protected only against use for similar products or services, a likelihood of confusion “is presumed only where both mark and goods or services are identical.”
Respondent asserts that she has rights or legitimate interests in respect of the domain name. Respondent states that “verridian” is a variant on the word “veridian”, which has been used in several other contexts. Respondent say that she intends to use the domain name to promote the business of Verridian Investments CC, a South African company which is owned by Respondent's husband, Mr. Paul Leech, and Ms. Marion Doron. As evidence of the business activities of Verridian Investments CC, Respondent cites: a South African registry certificate for Verridian Investments CC, giving a registration date of December 15, 2005; an undated “mail drop” leaflet advertising Verridian Investments CC's estate management services; an unstamped, undated, handwritten South African “Application for registration as a taxpayer”, indicating that N.R. Leech (Respondent) is manager of Verridian Investments; Respondent's assertion that she also registered “www.verridian.co.za” in connection with the business activities of Verridian Investments CC, prior to receiving notice of this dispute; and a “null” tax return for 2008, showing no income for the year because Ms. Doran, one of the partners, was injured and unable to work. Respondent contends that Verridian Investments CC filed prior tax returns, but these are not in the record.
Respondent gives somewhat conflicting statements on the role of the <verridian.com> domain name in her business plans. At one point, she states that Verridian Investments CC will “loose [sic] three years of hard work in the marketing” of its business, and that a website is part of the business plan; elsewhere, she states that, because of Ms. Doron's injury, it is not clear how the business will proceed, if at all. Respondent cites High-Class Distributions S.r.l. v. Onpne Entertainment Services, WIPO Case No. D2000-0100, for the proposition that the inactivity of the <verridian.com> website does not alter her legitimate interest in the name.
Respondent argues that she has not used the disputed domain name in bad faith. She says that she has never been connected to or profited from the “www.rbs.eu.com” website, which was owned by Mr. Jacobs and has been inactive since “at least January 2007”. She states that Complainant's allegations about the bad faith use of the disputed domain name are attributable to Mr. Jacobs, not to her. In any event, she also calls into question Complainant's assertion that it did not tolerate Mr. Jacobs' use of the disputed domain name.
In Complainant's supplement submission, it argues that (1) Respondent's evidence of an ongoing business is deficient and possibly fraudulent; (2) Complainant did not receive Respondent's reply to Complainant's offer to purchase the disputed domain name, due to Respondent's making a typographical error in Complainant's attorney's email address; and (3) Respondent has in effect admitted that an Internet presence is not important to her business, but nonetheless contends that Complainant's settlement offer is deficient. To the extent Complainant's supplemental submission was responding to factual assertions that it could not have anticipated (including the assertions involving the extent of Respondent's business in South Africa and the email Respondent allegedly sent to Complainant, which Complainant did not receive prior to receipt of the Response), the Panel has elected to accept Complainant's supplemental submission. See, e.g., Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023.
Because the Panel accepted a supplemental submission from Complainant, the Panel would have granted Respondent a right of reply, id., and indeed, Respondent has submitted a supplemental submission, which also is accepted (in part) by the Panel. In her supplemental submission, Respondent states that (1) the “mail drop” circular it submitted was not an after-the-fact forgery, as Complainant suggested in its supplemental filing; (2) Complainant's supplemental filing contains no allegations that could not have been made at the time the Complaint was filed; (3) Complainant should have received Respondent's response to the settlement offer, despite the typographical error in the email address, because Respondent sent a copy of the letter by post as well; and (4) the use of the domain name is of primary importance to Respondent's business, though operating a website at that name is not. The Panel accepts those aspects of Respondent's supplemental submission that are directly responsive to the new points made in Complainant's supplemental submission and that have been accepted by the Panel.
To prevail in this UDRP proceeding, Complainant must prove all of the following elements listed in paragraph 4(a) of the Policy:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) Respondent registered and has used the domain name in bad faith.
Complainant owns the VERRIDIAN trademarks and has registered those marks in the UK. These supported assertions are sufficient to establish that Complainant owns rights in this mark.
The domain name consists of Complainant's trademark and the gTLD “.com”. When comparing a trademark to a domain name to determine identicality or similarity under the Policy, the gTLD may be disregarded. See Mobile Communication Service, Inc. v. WebReg, RN, WIPO Case No. D2005–1304 (February 24, 2006). Applying these principles to the facts of this case, the domain name <verridian.com> is obviously identical to the Complainant's VERRIDIAN trademarks.
Respondent's argument that the <verridian.com> domain name is not identical or confusingly similar to Complainant's VERRIDIAN marks because Complainant's trademarks are limited to international classes 35 and 42 is unavailing. In considering the similarity between a domain name and a trademark, the only issue is whether the letter strings are identical or similar; the Panel should not consider extraneous factors such as the types of goods or services on which the mark is used or the contents of the website to which the domain name resolves. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Indeed, even the Mutuelle d'Assurance du Corps de Sante Francais v. SA CHA REBK LLC, WIPO Case No. D2000-0450, on which Respondent relies does not support Respondent's argument; in that case, the panel considered the class of goods only in connection with the legitimate interest inquiry, and not in connection with determining identicality or confusing similarity.
Paragraph 4(c) of the Policy lists several ways in which a respondent may demonstrate rights or a legitimate interest a domain name:
(i) before any notice of the dispute, Respondent's use of, or demonstrable preparations to use, the domain or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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 trademark or service mark at issue
Although the Policy places the burden on complainants to establish the absence of rights or legitimate interest in the disputed domain name, panels long have recognized the inherent difficulties of proving a negative. Accordingly, the consensus view is that a complainant need only put forward a prima facie case that the respondent lacks rights or a legitimate interest, whereupon the burden of production shifts to the respondent to allege specific facts establishing rights or a legitimate interest. See, e.g., World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001); WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1. The burden of proof, however, always remains on the complainant.
Here, Complainant has sufficiently pled a prima facie case of illegitimacy. Respondent, however, has come forward with assertions that she has rights in the domain name because her and/or her husband's business has commonly been known by the name “Verridian” and because of her demonstrable preparations to use the domain name in connection with her business.
In support of these arguments, Respondent has submitted very little documentary evidence. Although Verridian Investments CC appears to have been registered in December 2005, Respondent has produced no evidence that the business ever produced income, transacted business, owned a bank account, or printed stationary. Respondent has also made somewhat inconsistent statements about the importance of the disputed domain name to her future business activities. Nevertheless, Respondent has produced evidence that, prior to notice of this dispute, Verridian Investments CC performed some advertisement which the Panel has no reason to believe was a forgery and has filed at least one tax return, albeit one showing no income. If nothing else, Respondent's business does appear to have been known by the name Verridian.
Complainant nevertheless questions the legitimacy of Respondent's evidence. Although Respondent's evidence is thin, Complainant has not submitted evidence that Respondent's evidence is fraudulent or otherwise inaccurate. On the record as submitted to the Panel, the Panel thus finds, by a preponderance of the evidence that Complainant has not succeeded in proving that Respondent lacks rights or a legitimate interest in the domain name.
Complainant has also not met its burden of proving that Respondent registered and has used the domain name in bad-faith.
Respondent makes a compelling showing that Mr. Jacobs used the domain name in bad faith. However, Mr. Jacobs is not the Respondent. Rather, Mr. Jacobs is a prior owner of the domain name, and all of the evidence in the record suggests that he is unaffiliated with Respondent, to whom he sold the domain name in 2005. Because there is no reason to believe that Mr. Jacobs and Respondent are in collusion, Mr. Jacobs' conduct is irrelevant for purposes of this proceeding; rather, in assessing the Respondent's good or bad faith under the third factor, it is Respondent's conduct that needs to be examined. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. This interpretation of the Policy is supported by paragraph 4(b) of the Policy, which enumerates non-exclusive circumstances which, “if found by the Panel to be present, shall be evidence” of bad faith. Each of these examples refers to circumstances in which “you [the respondent] have registered” the disputed domain name, indicating that a respondent's registration, not that of a prior owner, is the relevant registration.
Furthermore, to the extent Complainant's evidence of bad faith revolves around the domain name's linkage to the “www.rbs.eu.com” website, there is no evidence that the domain name ever resolved to that site during the time when Respondent owned the domain name. Accordingly, Complainant's assertion that Respondent profited from the “www.rbs.eu.com” website is without evidentiary basis.
When the allegations concerning Mr. Jacobs and the “www.rbs.eu.com” are disregarded, there remain no allegations in the Complaint of bad faith registration or use by Respondent per se. Thus, Complainant has failed to allege (let alone establish) any basis for a finding of bad faith registration and use against Respondent.
For all the foregoing reasons, the Complaint is denied.
David H. Bernstein
Dated: November 20, 2008
1 The Panel has reviewed the archived materials cited in the Complaint, from “www.archive.org”. Although some of the archived pages do advertise Grosvenor Recruitment, others appear to advertise Verridian Recruitment.