WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veterinary Business Development Limited v. Moniker
Privacy Services / Anne Barker
Case No. D2010-1592
1. The Parties
The Complainant is Veterinary Business Development Limited of Peterborough, Cambridgeshire, United Kingdom of Great Britain and Northern Ireland, represented by Urquhart-Dykes & Lord of United Kingdom of Great Britain and Northern Ireland.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America and Anne Barker of Derby, Derbyshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, <veterinarytimes.com> (the “Domain Name”), is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2010. On September 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 22, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 28, 2010.
The Center verified that the Complaint together with the amended 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 September 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response October 19, 2010. The Response was filed with the Center on October 18, 2010.
The Center appointed Tony Willoughby, David E. Sorkin and Isabel Davies as panelists in this matter on November 17, 2010. The Panel finds that it was properly constituted. Each member of 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 invitation from the Center to the Complainant to amend the Complaint stemmed from the fact that Anne Barker, the second-named Respondent, had been making use of the privacy service provided by the first-named Respondent and the former’s identity only became known to the Complainant following the Registrar’s response to the Center’s verification request. The Panel proposes to treat Anne Barker, the person who filed the Response, as the Respondent.
Had the Complainant selected the jurisdiction at the location of first-named Respondent’s address as the Mutual Jurisdiction, the addition of the second-named Respondent would have given rise to an issue as to which jurisdiction (Florida or England) applies. However, the Complainant selected the jurisdiction at the location of the Registrar’s principal office for this purpose and the Registrar remains the same.
4. Factual Background
The Complainant is a member of the Wolters Kluwer publishing group. In 1990 it acquired the title, Veterinary Times, a weekly publication devoted to veterinary matters and circulated free of charge to veterinary professionals, academics and final year students and on subscription currently to in excess of 18,000 subscribers. The Veterinary Times is a leading (if not the leading) veterinary journal in the United Kingdom.
The Complainant acquired the Veterinary Times from its predecessor in title in 1990. In the years 2005 – 2009 the average circulation per issue of the journal was in excess of 17,000.
The Complainant is the proprietor of UK Trade Mark registration number 2117862 dated December 6, 1996 (registered May 29,1998) VETERINARY TIMES (words) in class 16 for “printed publications for the veterinary profession”.
The Domain Name was registered on March 20, 2010. The Domain Name is connected to a website operated by Medi-Cruit Limited. The Respondent is Chief Executive Officer of Medi-Cruit Limited. In the Response the Respondent describes her business as “a medical recruitment agency and a medical estate agency”. The Respondent’s website, which is devoted to veterinary matters, features inter alia the following passage:
“www.VeterinaryTimes.com is owned and operated by Medi-Cruit Limited. We have a lot of experience in the healthcare and dental sector. We have started our site here at VeterinaryTimes.com as a resource for news and what is going on in the Veterinary Sector. We look forward to building relationships and providing a useful popular service. Please feel free to get in touch with us at VeterinaryTimes.com so that we can improve your experience using our site.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to its VETERINARY TIMES United Kingdom registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
The Complainant contends that prior to launching the Complaint it wrote to the Respondent’s privacy service (then the identified registrant on the Registrar’s WhoIs database) drawing attention to its rights and seeking transfer of the Domain Name. It received no response to that communication.
The Respondent states that her business is a well-respected business, which has been in operation primarily as a medical recruitment agency and medical estate agency for nearly 10 years. She draws attention to her company’s 2009 “MediCruit” trade mark registration for goods and agency services in the medical, dental, pharmacy, care home and veterinary fields.
The Respondent produces evidence to show that in September 2009 she registered <dentaltimes.co.uk> and around the time that she registered the Domain Name she also registered <carehomestimes.com>, both of which are in use for online publications apt for the domain names. She states that as with these domain names, the Domain Name was registered with a view to using it for an online publication appropriately focussed.
The Respondent points out that the Respondent’s publication is an online publication, whereas the Complainant’s trade mark registration is for printed matter, not online publications. The Respondent contends that there is no risk of any confusion as “veterinarytimes.com” is a distinctive brand, distinct from that of the Complainant. The Respondent contends that the parties’ different methods of delivering their products to their readers militates against any risk of confusion. The Respondent contends that nobody visiting the Respondent’s website could be deceived into believing that they were at a website of the Complainant.
The Respondent objects to the Complainant’s claim that its publication is a famous title. She says that she had never heard of it prior to the Complaint. She also observes that the Complainant’s claimed circulation of 18,000 is only a tiny proportion of the United Kingdom’s population.
The Respondent contends that all three subparagraphs of paragraph 4(c) of the Policy are applicable. She states that her website was up and running in April 2010 and that the Domain name has been their trading name since then for this aspect of the business. She states that when she registered the Domain Name she was unaware of the existence of the Complainant and of the Complainant’s product and trade mark. She contends that her use of the Domain Name has been a fair, legitimate use in relation to a bona fide offering of goods and services.
On the same basis, the Respondent denies that the Domain Name was registered and is being used in bad faith. In response to the Complainant’s specific allegations she contends that insofar as paragraph 4(b)(iii) of the Policy is concerned her purpose in registering the Domain Name was for use in relation to her online publication and not to disrupt the business of the Complainant, a business of which she was unaware at that time. Moreover, she denies that her business is in competition with the Complainant. As to paragraph 4(b)(iv), she reiterates that she was unaware of the Complainant, its journal and its trade mark at the time the Domain Name was registered and, as indicated above, she denies that there is any risk of Internet users being confused or deceived. She draws attention to the fact that she has been unable to find anywhere on the Complainant’s website connected to its domain name, <vbd.co.uk>, any reference to the Complainant having a trade mark (registered or unregistered).
The Respondent says that she never received any communication from the Complainant prior to receipt of the Complaint and having spoken to her privacy service (to whom the communication was addressed) believes it likely that it was rejected as spam. She states that the reason she uses the privacy service is to filter out spam. She also comments adversely on the Complainant having approached the privacy service when it could so easily have located her through the website to which the Domain Name is connected.
She contends furthermore that the Complainant has been less than candid with the Panel and should be found guilty of Reverse Domain Name Hijacking. She has conducted research using ‘webarchive.org’ (TheWayBackMachine) and DomainTools.com. She has discovered that in 2004 the Domain Name resolved to the Complainant’s website connected to its <vbd.co.uk> domain name. She concludes from this that the Complainant owned the Domain Name back in 2004, but let it lapse because it was of no interest to the Complainant and must have taken the view that it had no objection to anybody else registering and using the Domain Name. She has also discovered that between 2004 and her acquisition of the Domain Name, there were other proprietors of the Domain Name. She has also discovered that someone other than the Complainant is the proprietor of the ‘.co.uk’ equivalent of the Domain Name and she cannot find any trace of anyone having attacked that domain name registration.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
B. Identical or Confusingly Similar
The Domain Name comprises the name “Veterinary Times” (albeit without the space) and the generic ‘.com’ domain suffix. The Complainant has a UK trade mark registration of VETERINARY TIMES (see section 4 above).
It is now well-established that for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, panels may ignore the lack of spaces or ampersands, etc., in domain names and may also ignore the generic domain suffix. Thus, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 2 of the Policy contains a warranty on the part of the Respondent that “the registration of the Domain Name will not infringe upon or otherwise violate the rights of any third party”. The paragraph concludes: “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
In the view of the Panel any commercial use of a domain name which is likely to constitute a violation of a complainant’s trade mark rights will generally preclude the respondent acquiring a right or legitimate interest in respect of that domain name.
In this case, the parties are both publishers of material of interest to people engaged in the veterinary field and both are effectively using the same name. They both trade in the United Kingdom. The Complainant’s publication is a printed publication. The Respondent’s publication is an online publication. The only difference between the two titles is that the Respondent’s title, <veterinarytimes.com>, is an online version of the Complainant’s title, “Veterinary Times”.
The Panel, which includes two UK trade mark lawyers, believes it very likely that the Respondent’s use of the Domain Name, which commenced long after the Complainant had (a) established its product as a leading journal in the specialist field to which it is directed and (b) acquired a trade mark registration of its title, constitutes infringement of the Complainant’s trade mark rights. The Panel agrees with the Complainant that Internet users seeing the Domain Name are likely to believe that the website to which it is connected is a website of or authorized by the Complainant. On reaching the website and seeing that it is what it claims to be, namely “a resource for news and what is going on in the Veterinary Sector” (see section 4 above for the full quote), the Panel believes it to be probable that a substantial number of visitors will believe it to be in some way associated with the Complainant.
From the Complainant’s point of view, a potentially damaging aspect of the Respondent’s website is that it appears somewhat static in that the format appears incomplete and the stories appear dated, one of the lead stories relating to the month of June. Indeed, the website seems to be precisely as it was on September 29, 2010, as per the case record.
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel is satisfied that if the Respondent registered the Domain Name for her online publication with knowledge of the Complainant’s printed publication, she will have registered the Domain Name fully appreciating the probability of resultant confusion among Internet users and with a view to deriving a benefit from that confusion.
In the Response the Respondent denies all knowledge of the Complainant, its journal and its trade mark prior to registering the Domain Name.
The Panel is unable to accept that denial. The Respondent’s business is an established business which, according to the Respondent, has been trading for nearly 10 years and has 40 employees. The Respondent is an experienced businesswoman. She is also familiar with the trade mark system in the United Kingdom, having registered her company name as a trade mark. In such circumstances is it conceivable that the Respondent can have embarked on a new venture (away from the company’s traditional area of medical and dental recruitment and estate agency services) without (a) reviewing what other publications were in the marketplace and (b) first having checked the trade mark register? While the Panel believes it just possible that the Respondent may have been reckless enough not to have conducted a trade mark search, the Panel cannot believe that the Respondent was not aware of the Complainant’s journal, which on the evidence before the Panel (and not challenged by the Respondent) is one of the leading journals in the veterinary field.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
E. Reverse Domain Name Hijacking
The Complaint having succeeded, it is unnecessary for the Panel to deal with this allegation by the Respondent. However, while the Panel appreciates that the fact (if it be a fact) that at some time in the past the Complainant allowed the Domain Name to lapse is of itself no evidence that the Complainant was happy for third parties to take up the name and use it for an online publication directed to matters veterinary, the Panel is nonetheless surprised that the Complainant did not mention the history.
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, <veterinarytimes.com>, be transferred to the Complainant.
David E. Sorkin
Dated: November 27, 2010