The Complainant is Transport Exchange Group Limited of London, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Tiriazo Technology Limited of Cambridge, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name, <courierexchange.com> (the “Domain Name”), is registered with NetNames (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2009. On April 24, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 7, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2009. The Response was filed with the Center on May 15, 2009 and confirmed by the Respondent on May 26, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 9, 2009. 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 undisputed facts are sparse.
The Complainant is and has been engaged since 1999 in the business of providing on-line information and support services to the courier and freight industries under the name COURIER EXCHANGE.
It operates a website connected to its domain name, <courierexchange.co.uk>, which was registered on April 26, 1999 in the name of the Complainant's Managing Director, the person who filed the Complaint.
The Domain Name was first registered on December 1, 1999 according to the results of the “whois.internic.net” search exhibited to the Complaint, but the identity of the original owner is in doubt. The Respondent contends that the first owner was the proprietor of a Dutch courier company, SDX, but that information has not been verified.
The Respondent, the current registrant of the Domain Name, claims to be in the business of “designing and licensing online exchange technology for the courier and express freight industries”. The Panel has been pointed to the Respondent's website connected to its domain name, <tiriazo.com>, which appears on its face to bear out that claim. However, the site does not provide any information as the history of the Respondent or the extent of its business.
The Panel has no information as to when the Respondent acquired the Domain Name.
The Panel has been unable to reach the website connected to the Domain Name, but it does not appear to be in dispute between the parties that it is (or was until recently) in use by an entity known as ‘mtvan.com' and that it had previously been used by the Dutch courier company, SDX. The Respondent denies any connection with SDX and claims ‘mtvan.com' to be a licensee of the Respondent's technology.
On May 8, 2008, the Complainant applied for registration in the UK of the mark COURIER EXCHANGE (words) in classes 35 and 39 for courier and freight-related services. That registration came through on April 17, 2009.
On March 25, 2009, following some earlier correspondence which the Panel has not been shown, solicitors acting for the Respondent confirmed in a letter to the Complainant that the Respondent would be seeking £25,000 as consideration for transfer of the Domain Name.
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights. It points to its trade mark registration and to the reputation which it says it has built up under and by reference to the name, “Courier Exchange”, since 1999.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that none of the examples of what shall constitute rights or legitimate interests as set out in paragraph 4(c) of the Policy is applicable. The Complainant contends that the Respondent acquired the Domain Name “solely to confuse and mis-direct potential customers to their competing webservice”, namely the sites operated in the names of ‘mtvan.com' and SDX. The Complainant contends that the Respondent has included the name “Courier Exchange” among the meta-tags and on the visible web pages of the Respondent's website. The Complainant states that the Domain Name is now up for sale.
The Complainant contends that the Domain Name was acquired by the Respondent and is being used in bad faith. The Complainant points to the price being demanded of the Complainant for transfer of the Domain Name, a price which it asserts is disproportionate. The Complainant contends that the Respondent's intentions when acquiring the Domain Name were solely to cause the Complainant damage and loss.
The Respondent does not deny the fact of the Complainant's trade mark registration, but observes that it is very recent and that the rights are restricted to the UK. The Respondent also challenges the validity of the trade mark registration on the basis that the term ‘courier exchange' is a well-known and much used “generic term for an exchange deployed in the courier industry in the UK and elsewhere.”
The Respondent asserts that it has rights and legitimate interests in respect of the Domain Name “in connection with its bona fide business of designing and licensing online technology for the courier and express freight industries” and points to its website connected to its domain name, <tiriazo.com>. The Respondent also points to its website connected to the Domain Name which predates the Complaint and offers the Domain Name “for sale to anyone who is interested in setting up an exchange in the USA, together with the online exchange technology database systems needed to run it.” The Respondent asserts that it has been developing its technology specifically for use in the USA.
The Respondent denies any intent to confuse or mis-direct visitors and stresses that it has created a website specifically designed to avoid confusion with the Complainant's business in the UK.
The Respondent denies that the Domain Name was registered and is being used in bad faith. The Respondent claims to have owned the Domain Name for several years and “out of common respect for the Complainant's business” has always avoided uploading any content aimed at the UK market.
The Respondent goes into some detail over the use of the Domain Name by the Dutch courier company, SDX, which it claims was a courier service, not a service in competition with the Complainant. It observes that that website was entirely in the Dutch language.
The Respondent denies that there has been any confusion and notes that the Complainant has produced no evidence of any confusion. As to the issue of meta tags the Respondent contends that it is difficult not to include generic words such as “courier” and “exchange” for meta purposes when operating in an industry that licenses exchange technology for the courier industry.
The Respondent objects to the fact that the Respondent's price of £25,000 for the Domain Name was put forward by the Complainant as evidence of bad faith, since that price was put forward in response to an approach from the Complainant. Moreover, the Respondent regards it as a fair price given the Respondent's investment in its technology and the potential value in the Unites States.
The Response concludes as follows:
“In summary, the Domain was legitimately obtained by the Respondent, in connection with his bona fide normal business, and the Respondent has acted positively to avoid any possible confusion, mis-direction, diminution, or other damage to the Complainant's business.”
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 in bad faith and is being used in bad faith.
One of the problems with this dispute is that the factual background is far from clear. Very few of the factual assertions in either the Complaint or the Response are supported by any documentation. The Complaint has three exhibits, namely the results of a whois.internic.net search, a trade mark registration certificate and a letter from the Respondent's solicitors. The Response has no exhibits.
The Domain Name was first registered on December 1, 1999 according to the results of the “whois.internic.net” search exhibited to the Complaint. There is no verifiable information before the Panel as to the identity of the original registrant. The Respondent claims that it was the owners of a Dutch courier company, SDX. The Respondent is the current registrant, but it is not known when the Respondent acquired the Domain Name. The Respondent says that it acquired it several years ago.
The Complainant claims to have been in business as a provider of information and online services to the courier and freight industry since 1999 under the name COURIER EXCHANGE and to have used the domain name, <courierexchange.co.uk>, for its website. The Panel has been able to verify from a Nominet whois search against that domain name that it was registered in the name of the Complainant's Managing Director, the person who filed the Complaint, on April 26, 1999. While the Complainant has put nothing before the Panel to establish the nature and extent of its business (save for an invitation to visit its website), clearly the Complainant's business was known to the Respondent at some stage as the Respondent has stressed the lengths to which it has gone to obviate any risk of confusion.
The Respondent claims to be in the business of “designing and licensing online exchange technology for the courier and express freight industries”. The Panel has been pointed to the Respondent's website connected to its domain name, <tiriazo.com>, which appears to bear out that claim. However, the site does not provide any information as to the history of the Respondent or the extent of its business.
It does not appear to be in dispute between the parties that at some stage the Domain Name connected to a Dutch language website operated by a Dutch courier-related company named SDX and that at other times it has been connected to a site operated by a service competing with that of the Complainant named ‘mtvan.com'. However, the Panel has been provided with no information as to the dates and no verifiable information as to the extent to which either SDX or ‘mtvan.com' are connected with the Respondent. The Respondent denies any connection with SDX. The Complainant believes ‘mtvan.com' to be the Respondent under another name. The Respondent claims ‘mtvan.com' to be a licensee of its technology.
Notably, the Panel has been provided with no print-ups of the various web pages referred to in the Complaint and the Response, so it has been impossible for the Panel to assess the various allegations and counter allegations. The Panel has been unable to access the Respondent's website connected to the Domain Name, receiving a message stating that “the server is not responding”.
The Domain Name comprises the Complainant's UK registered trade mark, COURIER EXCHANGE, and the generic domain suffix, which may be ignored for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy.
The Respondent's arguments as to the date of the registration (application filed May 2008 and registered April 2009), the scope of the registered rights (limited to the UK) and the generic nature of the mark are of no relevance under this head. The fact is that the Complainant has what is on its face a valid trade mark registration.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
The Domain Name is identical to the Complainant's trade mark. While it may not have been a registered trade mark at the time when the Respondent acquired the Domain Name (the Panel has no information as to that date), it seems from the Response that the Respondent has at all material times been aware that the Complainant conducted business under and by reference to that name at its website connected to its <courierexchange.co.uk> domain name.
Accordingly, the Respondent must have been aware that there was a risk that Internet users would visit its site connected to the Domain Name in the hope and expectation that they were visiting the Complainant's website. Whether or not the Domain Name is of such a generic nature that the Respondent reasonably thought at the time when it acquired the Domain Name that it was perfectly entitled to use the Domain Name notwithstanding the risk of confusion, the Panel is unable to say.
Moreover, the Panel has nothing before it to demonstrate the nature and extent of the Respondent's business. The Respondent points to its website connected to its <tiriazo.com> website, but that website provides very little in the way of any information of substance.
However, in light of its finding under the next head, it is unnecessary for the Panel to come to a conclusion on this topic.
The onus is on the Complainant to prove its case.
The Complaint fails to establish with any degree of certainty the extent of the Complainant's business under and by reference to the name, “Courier Express”. The Panel has been given no sales figures, no advertising figures and no examples of any business literature or press cuttings. For all the Panel knows, the business may have been miniscule for 6 or 7 years and only developed into a substantial business over the last two or three years. If, as the Respondent claims, it acquired the Domain Name several years ago, it may have been reasonable for the Respondent to have concluded that at that stage, while there was a risk of confusion between the Domain Name and the Complainant's domain name, <courierexchange.co.uk>, this was purely down to the descriptiveness of the two names, not to any secondary meaning acquired by the Complainant through long and extensive use.
Ironically, the best evidence for the Complainant is the Respondent's acknowledgement that it was aware of the Complainant's business and in using the Domain Name set out to avoid confusion with the Complainant's business. However, the Panel is reluctant to make a positive finding of bad faith on the part of the Respondent on the basis of such a flimsy Complaint and in the circumstances highlighted in A above, where so much potentially relevant information is not before the Panel.
A factor which has made the Panel less willing to make assumptions in favour of the Complainant was the Complainant's failure to put before the Panel the full correspondence between the parties, choosing instead to rely upon the final letter in the correspondence, being a demand of £25,000 for the Domain Name made on behalf of the Respondent. If the Respondent is correct, the Complaint fails to make clear that this demand followed an approach from the Complainant. Whether or not this was the case and whether or not it is of any relevance is impossible for the Panel to assess without sight of the full correspondence.
If the Complainant's business has a well-established reputation and goodwill under and by reference to the name “Courier Exchange” such as to have given it a secondary meaning and common law rights in passing off pre-dating the Respondent's acquisition of the Domain Name, it is likely to have a strong arguable case in both passing off and trade mark infringement against the Respondent. This will be an overwhelming case if, in addition, the Complainant can make good its claim that from the outset the Respondent's intention has been to cause damage to the Complainant. The Panel believes that this case is better left to the courts where the disclosure process and the ability to cross-examine witnesses will ensure that all relevant information is before the tribunal.
The Panel is not persuaded on the information before it that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Date: June 15, 2009