WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bumi Plc. v. BUMIPLC
Case No. D2011-1249
1. The Parties
The Complainant is Bumi Plc. of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin, United Kingdom.
The Respondent is BUMIPLC of Subang Jaya, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <bumiplc.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July22, 2011, the Center transmitted by email to Fabulous.com (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On July 25, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2011, 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 amendment to the Complaint on August 4, 2011.
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 August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. Although the Respondent did not submit a formal Response by that date, a representative of the Respondent did submit several informal email communications.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 7, 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.
On September 19, 2011, the Panel issued the following Administrative Panel Procedural Order:
“As the Center’s communications with the Complainant and the Respondent reflect, there have been a number of disputes as to the identity of the proper parties to this proceeding. Accordingly, to provide greater clarity, and to ensure that all parties have a fair opportunity to present their arguments to the Panel, the Panel issues this Procedural Order.
When the Complainant first filed its Complaint, it named the then-listed registrant, WHOIS Privacy Services Pty Ltd, a privacy shield that hid the identity of the true registrant in interest. After the Complainant filed and served its Complaint, the privacy service lifted the shield and disclosed in the public WhoIs database that a person or entity known as BUMIPLC was the registrant.
At that point, consistent with its standard procedures, the Center gave the Complainant the option of amending its Complaint to reflect this new information. The Complainant did amend the Complaint, but instead of adding as a party the listed registrant (‘BUMIPLC’), the Complainant named as an additional Respondent Anwar Hossain, who the Complainant alleged was the operator of the email address email@example.com.
The Center informed the Complainant that the amendment was improper, as Hossain is not a listed registrant and there was not a sufficient showing as to why he should be listed as a Respondent. The Complainant thereafter filed a second amendment, this time naming (in addition to WHOIS Privacy Services Pty Ltd) ‘Anwar Hossain (holding himself out as BUMIPLC).’
The Center noted that this amendment also was inconsistent with the Rules and the Registrar’s verification as to the registrant of the domain name. Nevertheless, in the interests of expediency, the Center treated the Respondents as WHOIS Privacy Services Pty Ltd and BUMIPLC, and proceeded to notify Respondents of the Complaint and the Commencement of the Proceeding. As a courtesy, the Center also provided notice to Hossain, even though the Center made a preliminary determination that he was not a proper Respondent.
On August 11, 2011, Wan Mahadi, an individual, sent an email to the Center from the email address firstname.lastname@example.org. The email responded in part to the Complaint, as amended, and indicated Mahadi’s view that he and BUMIPLC were not properly named as Respondents in the proceeding. On August 12, 2011, Mahadi sent another email to the Center from the email@example.com email address requesting that the ‘complaint be re-issued with the correct registrant named as the Respondent’ (emphasis in original). On August 30, 2011, in response to an email from the Center requesting confirmation that BUMIPLC’s August 11 email constituted a complete response, Mahadi stated in part: ‘I have not been named as a responder [sic] and so cannot give full response, but please give my document/evidence that I sent to the panelist and the email in which I have advised you that I cannot give full response because I am not named as responder [sic] and complainer [sic] know this very well as should your office also.’
The Respondent appears to be elevating form over substance. The Complainant clearly intended to name BUMIPLC, and the Respondent appears to have received actual notice, as demonstrated by the various submissions from Mahadi.
Nevertheless, some of the Respondent’s confusion can fairly be laid at the Complainant’s door step. The Complainant filed numerous amendments to the Complaint. Each time, it filed supplemental documents instead of restating the Complaint in its entirety. Moreover, even with its last amendment, the Complainant continued to name an improper party.
The Panel also notes that the Respondent has indicated that it would like the opportunity to submit a formal Response, once it is properly named. Mahadi also raised several points that appear not to have been anticipated by the Complainant, which likely would warrant a request by the Panel for supplemental submissions.
In light of the foregoing, the Panel rules as follows:
1. The Complainant in this proceeding is Bumi Plc.
2. The potential Respondents in this proceeding are WHOIS Privacy Services Pty Ltd (the registrant at the time that the Complaint was filed) and/or BUMIPLC (which is the name under which the registrant registered the domain name). The Complainant may elect to name one or both of the these Respondents, but it may not name any other parties (e.g., Hossain, Mahadi) as Respondents since, under the Rules, only the registrant is the proper Respondent.
3. For the sake of clarity, the Complainant is instructed to file a new amended Complaint, restating in its entirety, all of the Complainant’s allegations as to the named Respondent(s), and reattaching any exhibits on which the Complainant intends to rely. That amended Complaint shall be filed with the Center, with a copy served on the Respondent(s), by noon Greenwich Mean Time on September 23, 2011.
4. To avoid the need for any supplemental submissions, the Complainant should anticipate and address in the Amended Complaint the points raised by Mahadi’s August 11, 2011 email, including but not limited to Mahadi’s allegation that ‘Bumi’ is a common word in Malaysia (which presumably was intended to suggest that Bumi should not be protectible as a trademark or that Respondent is making a fair use of that term), and that the Respondent claims to have been using the name BUMIPLC as a legitimate business name (Bumi Pipe Lining Company). The Panel further notes that the Complainant has alleged that the Disputed Domain Name ‘was previously being offered for sale via Fabulous.com until June 18, 2011. If the Complainant has any documentary evidence to substantiate that allegations, and establish that the Disputed Domain Name was being offered for sale for a price in excess of its registration costs, the Complainant should include that evidence with its Amended Complaint. Finally, the Complainant should explain the legal and factual bases for its allegation that the Respondent has registered and used the Dispute Domain Name in bad faith because the Respondent registered the Disputed Domain Name as a ‘blocking registration.’
5. If the Respondent elects to submit a Response, that Response must be filed with the Center, and served on the Complainant’s representative, no later than noon Greenwich Mean Time on October 7, 2011. Whether the Complainant elects to name WHOIS Privacy Service Pty Ltd or BUMIPLC or both parties, Respondent must understand that this Panel will thereafter adjudicate the ownership of the Disputed Domain Name. The Respondent is therefore encouraged to submit its formal Response by that date, including all arguments the Respondent intends to make, and any points the Respondent wishes to make in light of the issues the Panel identified in paragraph 4, above. The Panel invites the Respondent to consult the model response, which may be found at “http://www.wipo.int/export/sites/www/amc/en/docs/response-eudrp.doc”, and to attach documentary support to substantiate its factual allegations (including the allegation that Respondent(s) used the name BUMIPLC prior to the registration of the Disputed Domain Name).
6. The date by which the Panel will transmit its decision to the Center is hereby extended to October 21, 2011.”
On September 23, 2011, the Complainant filed an Amended Complaint with annexes; on October 3, 2011, the Respondent submitted a Response with exhibits.
4. Factual Background
The Complainant Bumi Plc is an Indonesian coal mining company listed on the London Stock Exchange, with its registered office located in London, United Kingdom. The Respondent is BUMIPLC, located in Malaysia.
The Complainant Bumi Plc was formed on November 16, 2010 when Vallar Plc changed its name to Bumi Plc, following the acquisition of holdings in PT Bumi Resources Tbk and PT Berau Coal Energy Tbk (collectively the “Bumi Entities”). (Annex 4 of the Amended Complaint). On December 3, 2010, the Complainant incorporated in United Kingdom.
The Complainant has applied to register the word mark BUMI in various jurisdictions; those applications were pending as of July 18, 2011. (Annex 10 of the Amended Complaint).
The Respondent registered the disputed domain name <bumiplc.com> on November 16, 2010, later the same day as the Complainant’s announcement that it had changed its name to Bumi plc.
5. Parties’ Contentions
The Complainant claims that, at the time the disputed domain name was registered, it had unregistered trademark rights in BUMI and BUMI PLC in the United Kingdom under the common law tort of passing off, and as a “well known mark” under section 56 of the Trade Marks Act of 1994. The Complainant also claims that the disputed domain name is identical to the Complainant’s registered company name.
The Complainant argues that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also alleges that the Respondent has not been commonly known by the disputed domain name.
Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent registered the disputed domain name for the purpose of blocking the Complainant from registering the same domain name, and that the Respondent had offered the disputed domain name for sale. The Complainant also suggests that the Respondent’s registration of the disputed domain name on the same date that the Complainant announced that it was changing its name to Bumi Plc evidences the Respondent’s bad faith.
The Respondent argues that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent asserts that none of the Complainant’s trademark applications conflict with the Respondent’s use and intended use of the disputed domain name, and thus that the disputed domain name is not confusingly similar to any rights the Complainant may have. The Respondent also argues that the Complainant did not yet have trademark rights at the time the Respondent registered the disputed domain name.
The Respondent argues that it has rights or legitimate interests in the disputed domain name. The Respondent states that the disputed domain name has not been fully utilized as of yet, but asserts that it is utilizing an email address associated with the disputed domain name. The Respondent concludes, therefore, that it is making a fair use of the disputed domain name.
Finally, the Respondent argues that it is not using the disputed domain name in bad faith. The Respondent asserts that it has not registered the disputed domain name to attract any business of the Complainant and has not sought to sell the disputed domain name. Rather, according to the Respondent, the disputed domain name corresponds to “bumi,” a popular Malaysian word meaning “native” which is used by numerous third parties. As for “plc”, the Respondent now states in its Response that it is a common abbreviation for “public limited company.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must establish by a preponderance of the evidence that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant argues that it has unregistered trademark rights in “Bumi” and “Bumi Plc” under the English law of passing off. As explained in prior cases: “The [English] law of passing off does not protect an unregistered mark as such, but instead protects the goodwill of the business in which the mark has been used and in respect of which business the mark has, by use, become distinctive. The owner of the goodwill does not have an absolute monopoly in the mark, but merely has a right to prevent others from damaging the trading reputation of his business by means of misrepresentations (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the owner of the goodwill.” First National Telecom Services Limited v. Richard Gibbs, WIPO Case No. D2004-0363.
To establish its rights in “Bumi” and “Bumi Plc,” the Complainant relies on the goodwill generated by the Bumi Entities that the Complainant acquired on November 16, 2010. In support of the contention that the Bumi Entities have generated goodwill, the Complainant provides a sample of news articles ranging from 2003 through 2010 highlighting the commercial activities of the Bumi Entities, all of which used the BUMI mark. (Annex 3 to the Amended Complaint). As further evidence of goodwill, the Complainant points to its November 16, 2010 press release that the Complainant was changing its name to Bumi Plc and that it would seek to trade its shares on the London Stock Exchange. (Annex 4 to the Amended Complaint). The Complainant submits that this activity was enough to generate sufficient goodwill to give rise to rights in passing off under English law.
The Panel accepts that activity of this kind is sufficient to generate goodwill in the name “Bumi Plc.” See Acenden Limited v. Neil Mansfield, WIPO Case No. D2010-2012; First National Telecom Services Limited v. Richard Gibbs, supra. (“The Panel concludes that a Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of a passing off action has ‘rights’ in the trade mark or service mark in question for the purposes of paragraph 4(a) of the Policy.”).
As for the Respondent’s arguments that the Complainant’s trademark rights arose after the Respondent’s registration of the disputed domain name on November 16, 2010, those arguments are not relevant to the question under the first element of the UDRP. That is because, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, the date of registration (or first use) is “irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview 2.0, paragraph 1.1 (available at “www.wipo.int/amc/en/domains/search/overview/index.html#11”). Rather, for purposes of the first element, the question is only whether the Complainant had trademark rights at the time of the Complaint was filed. Questions related to the timing of the acquisition of trademark rights are more properly considered under the third element, with relation to bad faith. Id.
The Panel accordingly finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must make a prima facie showing that the Respondent possesses no rights or legitimate interests in the disputed domain name. Moroccan Financial Board v. Abdullah Riahi, WIPO Case No. D2011-0751. Once the Complainant makes such a prima facie showing, the burden of production shifts to the Respondent, though the burden of proof always remains on the Complainant. If the Respondent fails to come forward with evidence showing rights or legitimate interests, the Complainant will have sustained its burden under the second element of the UDRP.
The Complainant has provided evidence that, as of July 15, 2011, the Respondent was not operating a functional website at the disputed domain name. (Annex 11 to the Amended Complaint and Annex 5 to the original Complaint). The website at the disputed domain name appears to have been a page with Bengali text. An English translation of the text refers to an entity called “Common Sense Herald” and refers to textiles and garments. The English translation states: “Our website is under construction and will be available at Common Sense Herald.” (Annex 11 to the Amended Complaint). The Complainant also provides evidence that the website at the disputed domain name was previously a parked domain, and featured sponsored links. (Annex 14 to the Amended Complaint). It is not clear what Common Sense Herald is, nor is it clear that the Respondent is operating a website that is offering bona fide goods or services. Accordingly, the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may demonstrate rights or legitimate interests in the disputed domain name, under paragraph 4(c) of the Policy by showing either:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These articulated rights or legitimate interests are not exclusive; the Respondent is also free to attempt to show rights or legitimate interests in the disputed domain name on other bases as well.
The Respondent has alleged that the word “bumi” means “native” in Malaysian. Although its arguments are not articulated with complete clarity, it appears that the Respondent means to suggest that, because “bumi” is a common word, it has a legitimate interest in using that term. The problem with any such argument, though, is that the Respondent has not explained how its use of the term “bumi” (such as for emails, which is the use that the Respondent states it is making of the disputed domain name) is a fair or other legitimate use in relation to the actual use to which the Respondent is putting the disputed domain name or has demonstrable preparations to put the disputed domain name. The Respondent has not, for example, articulated any way in which the use to which it puts the disputed domain name has any relevance to the dictionary meaning of the term “native.” As the WIPO Overview 2.0, explains: “If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include […] whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).” WIPO Overview 2.0, paragraph 2.2 (available at “www.wipo.int/amc/en/domains/search/overview/index.html#22”).
In a submission to the Center on August 11, 2011, the Respondent asserted that it operates an entity known as Bumi Pipe Lining Company, under the name BUMIPLC. (Exhibit D to the Response). The Respondent, however, has not provided any documentary evidence that it operates such a business. To the contrary, the Complainant has provided evidence from searches conducted on “www.google.co.uk”, “www.google.com” and “www.google.com.my” yielding no results for the search term “Bumi Pipe Lining Company.” (Annex 12 to the Amended Complaint). Additionally, the Complainant performed an existence search for a company called “Bumi Pipe Lining Company” on the Companies Registry in Malaysia, which yielded no results. (Annex 12A to the Complaint).
In its more recent Response, and after seeing the Complainant’s evidence undermining the assertion that the Respondent has rights in the name “Bumi Pipe Lining Company,” the Respondent changed its arguments and now asserts that “bumi” means “native” and “plc” means “public limited company,” both of which are common terms. Whether common terms or not, in this Panel’s view the Respondent has not shown that it has rights or legitimate interests in the use of these common terms on any of the bases listed in the UDRP, or any other bases.
Accordingly, the Panel finds that the Complainant has established that the Respondent possesses no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the Respondent has registered, and is using the disputed domain in bad faith. The Complainant argues that the Respondent has registered the disputed domain name in bad faith (i) for the purpose of selling, renting or otherwise transferring the disputed domain name registration for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, and (ii) as a blocking registration, which has prevented the Complainant from registering and using the disputed domain name. The Complainant also suggests that bad faith is shown by the fact that the Respondent registered the disputed domain name within “mere hours” of the announcement of the name change of Vallar Plc to Bumi Plc on November 16, 2010.
The Panel finds that the evidence of the Respondent’s attempted sale of the disputed domain name is thin. The Complainant avers that the disputed domain name was offered for sale via Fabulous.com, but offers no specifics of the offer (e.g., what exactly was said on the website?) and notes that no screen shot was taken of the offer. Although the absence of documentary evidence is not necessarily fatal to this Complaint, the absence of such evidence combined with the lack of any detail around the purported offer for sale leaves the Panel with an insufficient record on which to find bad faith.
Also unpersuasive is the Complainant’s argument that the Respondent registered the disputed domain name to prevent the Complainant from registering and using the disputed domain name. As noted in the Administrative Panel Procedural Order, such conduct constitutes bad faith under paragraph 4(b)(ii) of the Policy only in circumstances where the Respondent has been shown to have engaged in a pattern of such conduct. The Complainant has not provided evidence that the Respondent has engaged in a similar pattern of conduct.
The Complainant’s third argument – that bad faith is shown by the fact that the Respondent registered the disputed domain name within “mere hours” of the announcement of the name change of Vallar Plc to Bumi Plc on November 16, 2010 – does support a finding of bad faith registration and use. The highly suspicious timing of that registration, coupled with the Respondent’s inherently incredible (and shifting) stories about why it registered and how it is using the disputed domain name, gives rise to an inference that the Respondent registered the disputed domain name for nefarious purposes.
As noted above, the Respondent has raised the argument that the Complainant lacked trademark rights at the time the disputed domain name was registered. The Panel rejects that argument on the facts of this case. It is clear based on the news reports submitted by the Complainant that the Complainant’s predecessor had trademark rights in the mark BUMI since long prior to the registration of the disputed domain name, and those rights alone are sufficient to establish relevant trademark rights. Further, even if the Panel were to consider only the Complainant’s rights in BUMI PLC, the WIPO Overview 2.0 makes clear that rights are established for the purposes of the Policy when a respondent registers a domain name in anticipation of the creation of trademark rights. As the WIPO Overview 2.0 explains:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)” WIPO Decision Overview 2.0, paragraph 3.1 (available at “www.wipo.int/amc/en/domains/search/overview/index.html#31”).
The suspicious timing of the disputed domain name registration, which was registered within hours of the announcement that Vallar plc was changing its name to Bumi plc, raises a serious question as to the bona fides of the Respondent’s registration. The Respondent could, of course, refute bad faith by showing some good faith or legitimate reason for the registration. Instead, the Respondent in this case offered the pretextual assertion that he registered the disputed domain name <bumiplc.com> because it corresponded to the name of his company, Bumi Pipe Lining Company. The Complainant has persuasively shown that assertion to be untrue, and the Respondent essentially conceded the point by abandoning the argument in its Response, which powerfully supports the inference that the Respondent registered the disputed domain name in bad faith and intends to use it in bad faith.
For these reasons, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, the Panel orders the disputed domain name <bumiplc.com> to be transferred to Complainant.
David H. Bernstein
Dated: October 21, 2011