WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fomento De Construcciones Y Contratas S.A. v. eden environmental trading by Jonathan Carr / Eden Environmental Limited
Case No. D2011-1245
1. The Parties
Complainant is Fomento De Construcciones Y Contratas S.A, Madrid of Spain, represented by Walker Morris Solicitors of Leeds, United Kingdom of Great Britain and Northern Ireland.
Respondent is eden environmental trading by Jonathan Carr / Eden Environmental Limited of Neath, West Glamorgan, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <fccenvironment.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to Tucows Inc., a request for registrar verification in connection with the disputed domain name. On July 22, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center noted that the Complaint did not properly identify the registrar with which the domain name was registered at the time the Complaint was filed, as required by Rules, Paragraph 3(b)(vii). Consequently, on July 27, 2011 the Center notified said deficiency and invited Complainant to submit an amendment to the Complaint and Complainant filed an amended Complaint on the same day.
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 Complaint to the Respondent, and the proceedings commenced on July 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2011. The Response was filed with the Center on August 16, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 26, 2011. 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.
4. Factual Background
Complainant carries on business as an international environmental service company, operating in 50 countries and producing annual revenue in excess of USD 20 billion. Complainant owns Community Trademark registrations (Nos. 000597302 and 003669868) for the FCC trademark, the earliest of which was filed in 1997. Use of the FCC trademarks has been continuous for more than 50 years. Complainant and its subsidiary Waste Recycling Ltd. (hereinafter "WRG") operate websites under the domain names <fccenvironmental.com> and <fccenvironmental.co.uk> respectively.
Respondent Jonathan Carr trading as "eden environmental" resides in the United Kingdom, and serves as a director of the Respondent Eden Environmental Limited. Mr. Carr has a law degree. Eden Environmental Limited operates an environmental consulting business.
On June 29, 2011, Complainant issued a press release announcing that it was integrating its United Kingdom business (including WRG) under the name “FCC Environment”. Respondent "eden environmental" registered the domain name in dispute on that same day.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant claims that it owns trademark rights in FCC, and that the disputed domain name is confusingly similar to its registered trademark. Complainant submits that the addition of the word "environment" is descriptive of the nature of its business and serves to increase the likelihood of confusion.
Rights or Legitimate Interests
With respect to the Respondent's lack of rights or legitimate interests in the disputed domain name, Complainant asserts that Respondent has never been known by the domain name in dispute, and has never been authorized by Complainant to use the FCC trademark in any form.
Registered and Used in Bad Faith
In terms of bad faith, Complainant claims that Respondent operates a business in the environmental field and that it therefore must have known about the FCC business and trademark. Complainant notes that the timing of Respondent's registration is compelling evidence of bad faith, in that the registration was made on the same day the Complainant announced the integration of its United Kingdom business under the name “FCC Environment” (in the United Kingdom where Respondent resides). Complainant provides evidence that its representatives had two telephone conversations with Respondent, Mr. Carr, on June 30 and July 1, 2011, where Mr. Carr admitted that he had seen the press release prior to requesting the domain name in dispute, and that his purpose was to sell the name to Complainant. Respondent is said to have requested £ 5000 for the disputed domain name.
Respondent claims that it has rights and a legitimate interest in the disputed domain name, as the term "FCC" serves as an abbreviation of the phrase "Forecasting Climate Change", which fairly characterizes the nature and content of its newly created website.
Respondent expressly denies that it had any awareness of Complainant's business and its rights in the FCC trademark, (although it admits knowledge of WRG) and accordingly denies that it has adopted the disputed domain name in bad faith. Respondent provides a very different account of his telephone conversations with Complainant's representative, stating that he insisted to Complainant that the disputed name was not for sale, “not even for five thousand pounds”.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In this matter, Respondent has filed a formal response explicitly denying that it was aware of Complainant's trademark rights at the time when it registered the domain name in dispute. In spite of this denial, for the reasons set out below, the Panel does not accept Respondent's arguments and is prepared to make adverse findings against Respondent's credibility in this matter. The Panel is aware that findings of credibility, based solely on a written record, are problematic in most cases. However, in the circumstances of this particular case, the Panel is satisfied that the surrounding circumstances support the Panel's conclusions.
A. Identical or Confusingly Similar
The Panel finds that Complainant owns registered trademarks for FCC and also owns common law rights in the trademark FCC ENVIRONMENTAL. The evidence shows that Complainant's business is well known in association with its FCC trademarks, and that it has a broad footprint in the environmental industry across many countries, particularly in the European community.
Respondent's adoption of FCC in combination with "environment" in the disputed domain name represents a confusingly similar choice of name. The addition of the second element "environment" does not serve to diminish the likelihood of confusion but rather to increase it, in that the word "environment" is clearly descriptive of the field of endeavor of the Complainant. The Panel is prepared to find that the disputed domain name <fccenvironment.com> is confusingly similar to trademarks in which the Complainant has rights.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent claims rights or legitimate interests in the disputed domain name <fccenvironment.com>, on the basis that it is developing a website around the concept of "Forecasting Climate Change", and that the term “FCC” serves as an acronym for this concept. The Panel views these claims with considerable skepticism.
Respondent has not provided any history or background which would confirm its prior interests in this concept or any independent development of the project prior to registering the disputed domain name. In the absence of this sort of background evidence, and considering the evidence discussed below in connection with bad faith, the Panel is not prepared to find that any right or legitimate interest in the disputed domain name exists in the hands of Respondent.
Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
The evidence with respect to bad faith is somewhat contradictory, to say the least. Certain exchanges occurred immediately after Complainant discovered Respondent's registration of the disputed domain name and the recollections of the parties to those conversations are widely divergent in a number of respects. In the absence of any contemporary document or recorded version of those conversations, it is impossible for this Panel to be certain as to what occurred. One central theme emerges from the submissions filed by each party: the Complainant asserts that Respondent must have known full well about its trademark rights in FCC and FCC ENVIRONMENT at the time in question, and Respondent flatly denies that it was aware of Complainant's rights. In some cases, the denial of the knowledge on the part of the Respondent will be determinative of the bad faith issue. However, for the reasons set out below, the denial of knowledge in this case is not sufficient to support Respondent's position or to allow Respondent to prevail in these proceedings.
The single most important piece of evidence in this matter is the press release dated June 29, 2011 which was issued by Complainant to let the public know about its corporate reorganization and renaming. In particular, as of this date, Complainant announced that it was now going to be operating in the United Kingdom under the name “FCC Environment”, combining its existing business divisions, which included WRG. On the same day of the announcement, Respondent registered the disputed domain name, which incorporates exactly the same two elements of Complainant's new business style. Given that Respondent also operates in the environmental field in the United Kingdom, it is inconceivable to this Panel that Respondent was unaware of the new name chosen by Complainant. It cannot be mere coincidence that Respondent chose to adopt and file the identical ”FCC Environment” name so soon after Complainant's announcement. Respondent's explanation that the name “FCC Environment” is an appropriate abbreviation for "forecasting climate change effects on the environment" is unconvincing. On balance, the Panel accepts Complainant's account of the exchanges between the parties to be the more accurate version of events.
Accordingly, the Panel finds that Complainant has satisfied the requirements under paragraph 4(c) under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <fccenvironment.com>, be transferred to Complainant.
Mr. Christopher J. Pibus
Dated: September 1, 2011