World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

hibu pIc v. Stephen Whiteley

Case No. D2012-1614

1. The Parties

The Complainant is hibu pIc of Reading, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Bristows, United Kingdom.

The Respondent is Stephen Whiteley of Swinton, Manchester, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <hibuplc.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 10, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2012, 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.

On August 14, 2012, the Center received an email communication from the Respondent. The Center acknowledged receipt and informed the Respondent as to how he may respond to the Complaint. On August 15, 2012, the Center received another email communication from the Respondent and the Center replied accordingly.

The Center verified that 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on September 7, 2012.

The Complainant sent an email communication to the Center on September 10, 2012, requesting that a certain email chain be forwarded to the attention of the panel on appointment.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on September 20, 2012. 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 Panel has reviewed the email chain referred to above. The chain contains the following emails:

(a) Email from the Center to the Complainant’s representative (with the Respondent on copy) timed at 14:49 GMT on August 15, 2012. The Center asks the Complainant to confirm that email transmission of the Complaint has been effected in accordance with paragraph 2(b) of the Rules;

(b) Email from the Respondent to the Complainant’s representative (with the Center on copy) timed at 15:07 GMT on August 15, 2012. The Respondent thanks the Complainant’s representative for the electronic copy Complaint and requests that the Respondent’s new postal address and other contact details [which are different from those in the WhoIs of the disputed domain name] be noted;

(c) Email from the Complainant’s representative to the Respondent (with the Center on copy) timed at 15:51 GMT on August 15, 2012. The Complainant’s representative states that the postal service attempted to deliver an item [presumably a copy of the Complaint] to the Respondent while the Respondent was out and that the Respondent should arrange redelivery or pick-up; and

(d) Email from the Complainant’s representative to the Center timed at 18:31 GMT on August 15, 2012. The Complainant’s representative states that the Complaint was originally provided to the Respondent by letter and has now been sent by email.

In addition to the above email chain, the Panel notes that the Center issued Written Notice of the Complaint by courier both to the Respondent’s new postal address as specified in the email described at (b) above and also to the postal address provided for the Respondent in the WhoIs data for the disputed domain name. The courier’s tracking information relating to both packages shows that they were each signed for by a person with the Respondent’s surname. Accordingly, the Panel is satisfied that the Respondent received due notice of the Complaint in accordance with the Rules.

4. Factual Background

The Complainant is a United Kingdom Public Limited Company incorporated on March 15, 2001. The Complainant changed its name from Yell Group PLC to HIBU PLC on July 27, 2012. The Complainant is a long-standing business conducted previously under and by reference to the name “Yellow Pages” as part of BT Group PLC in the 1980s and subsequently under and by reference to the name “Yell” and “Yell.com” as brands of Yell Group Limited (later Yell Group PLC). The Complainant employs more than 13,000 employees worldwide and had a turnover of GBP 1.88 billion worldwide in 2011.

On May 22, 2012, the Complainant, then named Yell Group PLC, announced its financial results for the year ended March 31, 2012. On page three of its said announcement, the Complainant stated that as part of its transformation into a predominantly digital business, the Complainant would be adopting a new brand named “hibu” which had been developed over the preceding five months, subject to shareholder approval.

In support of the Complainant’s intended adoption of “hibu” as its brand name, the Complainant’s related group company Yell Limited had made multiple applications for registered trademarks in the period leading up to the Complainant’s said announcement, namely (1) United Kingdom trademark application number 2621840 for HIBU dated May 21, 2012 (claiming priority of April 19, 2012) in classes 09, 16, 35, 36, 38, 39, 41, 42, 43 and 45; (2) Community trademark application number 010900521 for HIBU dated May 21, 2012 (claiming priority of April 19, 2012) in classes 9, 16, 35, 36, 38, 39, 41, 42, 43 and 45; (3) Canadian trademark application number 1578352 for HIBU dated May 18, 2012 for a variety of goods and services; and (4) United States of America (USA) trademark application number 85630993 for HIBU dated May 21, 2012 (claiming priority of April 19, 2012) for a variety of goods and services. Yell Limited also applied for a registered trademark in Monaco in respect of the word HIBU in classes 9, 16, 35, 36, 38, 39, 41, 42, 43 and 45 on April 19, 2012 and this application was duly granted under registration number 12.29095 on May 18, 2012.

The disputed domain name was created on May 22, 2012. On July 17, 2012, the Complainant’s representatives wrote to the Respondent requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant as a matter of urgency. On July 21, 2012, the Respondent sent the following email to the Complainant’s representatives:

“Good morning. With regard to your letter concerning the domain name www.hibuplc.com. As a shareholder holding over 2 million shares I am very aware of the background and turnover of the company. I am also accutely [sic] aware of the 60 million pound advertising campaign due to be rolled out by the Engine group and next week’s AGM . As the name change needs the approval of the shareholders and the fact Hibu is a name already in use throughout the world, it’s a band a university etc. I feel I have every right to own the domain. The Icann dispute resolution can take up to 60 days and the outcome is by no means guaranteed. I would be willing to transfer the name to any interested party but this would be a financial transaction at an agreed price.

Many thanks”

On July 25, 2012, the Complainant’s representatives wrote to the Respondent in reply to the Respondent’s said email stating that the Respondent had no legitimate interest in the name “hibu” and that the Respondent’s recent email confirmed the Complainant’s assertion that the Respondent had registered the disputed domain name in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that it has used or (by its related group company Yell Limited) applied to register the mark HIBU in a number of forms in the United Kingdom, European Community, Canada and the USA primarily for goods and services in international classes 9, 16, 35, 36, 38, 39, 41, 42, 43 and 45. The Complainant also notes that Yell Limited has registered the mark HIBU in Monaco.

The Complainant states that it intends to use the mark HIBU for all goods and services for which it has sought trademark registrations and also notes that it uses the domain name <hibu.com> which is owned by Yell Limited to provide its services and promote its business online. The Complainant states that the stock or “ticker” code used to identify the Complainant on the London Stock Exchange is “HIBU”. The Complainant asserts that it has generated substantial goodwill in the mark HIBU since its announcement on May 22, 2012 that it would be changing its name. The Complainant states that such goodwill includes that generated in its corporate name HIBU PLC. The Complainant states that it has been in a position to generate such substantial and immediate goodwill on account of its long-standing business dating back to the 1980s.

The Complainant submits that the disputed domain name is identical to the Complainant’s registered corporate name and should be considered identical to the Complainant’s trading style and/or trademark applications as it differs from the latter only by the addition of the non-distinctive and/or descriptive suffix element “plc” (which the Complainant states is an abbreviation well known to refer to a company’s status as a public limited company). The Complainant asserts alternatively that the disputed domain name is identical to the Complainant’s registered corporate name and confusingly similar to the Complainant’s trading style and/or trademark applications in that the addition of the suffix element “plc” does not distinguish the disputed domain name in any (or any material) way from the Complainant’s trading style and/or trademark applications, such that confusion is inevitable.

The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent has used or made preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or has commonly been known by the disputed domain name, or is using the disputed domain name in a legitimate noncommercial or fair way.

The Complainant states that the Respondent does not purport to have any rights or legitimate interests in respect of the disputed domain name, noting that the Respondent’s email, which referred to the need for approval from the Complainant’s shareholders, appeared to contain a denial of the Complainant’s legitimate rights. The Complainant notes that it obtained approval from its shareholders before changing its name. The Complainant asserts that even if it is correct that “Hibu” is legitimately used by others elsewhere, which the Complainant does not admit, this does not provide the Respondent with any rights or legitimate interests to own or use the disputed domain name as the Respondent’s intention in registering and/or using the disputed domain name relates solely to its association with the Complainant.

The Complainant submits that the content of the Respondent’s email indicates that the Respondent has a high level of interest and awareness of the Complainant and its plans, in particular the fact that the Respondent is a holder of over two million shares of the Complainant and acutely aware of its advertising campaign. The Complainant notes that the disputed domain name was registered by the Respondent on the same day as the Complainant announced its intended name change and that the press release announcing such changes was issued by the London Stock Exchange’s Regulatory News Service. The Complainant states that it is highly likely that the Respondent received notice of the intended name change by this means. The Complainant submits that it would be inconceivable for the Respondent to not have been aware of the Complainant’s impending name change at the time of registering the disputed domain name and that the disputed domain name was registered because of the Complainant’s publicized intentions for its trading and corporate name.

The Complainant states that the Respondent’s email of July 21, 2012 indicates that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or a member of the Complainant’s group of companies for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, referencing the Respondent’s words that this would be a financial transaction at an agreed price. The Complainant also submits that the Respondent’s conduct prevents the Complainant from reflecting its rights in a corresponding domain name and has the potential to disrupt the business of the Complainant. The Complainant asserts that the Respondent’s registration of the disputed domain name represents passing off under English law, in that the Respondent’s details are represented on the WhoIs database, and constitutes a false representation that the Respondent is the Complainant or is authorized by or connected to the Complainant. The Complainant alternatively submits that the representation on the WhoIs database has created an instrument of deception and is liable to be prevented at law and that such registration and/or use by the Respondent is, in any event, in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements provided in paragraph 4(a) of the Policy have been satisfied, namely 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of Yell Limited’s ownership of the Monaco registered trademark for the word mark HIBU. The Panel notes that the Complainant describes Yell Limited as “its related group company” and that as such the Complainant is not the owner of the trademark on which it seeks to rely for the purposes of the administrative proceeding. This situation has been addressed within the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.8 which provides as follows:

“1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?

Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”

The Panel respectfully adopts the consensus view. The Complainant in the present case does not provide actual evidence of authorization of the principal trademark holder, nor has the trademark holder been included as a co-complainant. The Panel notes that Yell Limited filed the application for the Monaco trademark on which the Complainant seeks to rely in this administrative proceeding on April 19, 2012 and that the said trademark was granted on May 18, 2012. This action was shortly followed by the Complainant’s announcement of its intended name change on May 22, 2012. It is evident to the Panel that both the Complainant and Yell Limited were closely involved in the steps taken by the Complainant’s corporate group to create, and obtain intellectual property protection for, the Complainant’s proposed new name and brand. In these circumstances the Panel considers it entirely reasonable to infer the existence of authorization by Yell Limited in favour of the Complainant in respect of the bringing of the present Complaint.

The only difference between the trademark HIBU on which the Complainant relies and the disputed domain name is the addition of the letters “plc” in the latter, disregarding the top level domain as is customary in cases under the Policy. The Panel agrees with the Complainant that the letters “plc” are commonly used to denote a public limited company in the United Kingdom. As such, the addition of these letters to the trademark relied upon by the Complainant does nothing to distinguish the disputed domain name from that trademark and arguably serves to increase the potential for confusion since the words “hibu” and “plc” taken together denote the Complainant’s corporate name.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests. In the present dispute, the Complainant submits that there is no evidence that the Respondent has used or made preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or has commonly been known by the disputed domain name, or is using the disputed domain name in a legitimate noncommercial or fair way. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon these submissions. The burden of production accordingly shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.

The Respondent did not file a Response in the present proceeding. The Panel nevertheless notes that in correspondence with the Complainant’s representatives, the Respondent argued that it had a right or legitimate interest in the disputed domain name on the basis that “Hibu” is a name already in use throughout the world. The Panel takes this as an assertion on the part of the Respondent that the disputed domain name is comprised of generic words.

The Panel considers that when the words “hibu” and “plc” are used together, as in the disputed domain name, “hibu” takes on the sense which it derives from the trademark on which the Complainant relies and is not being used in any generic manner. The word combination also denotes the Complainant’s present corporate name, which it announced its intention to adopt on May 22, 2012. This is a matter which could not be lost on the Respondent as it claims to be a substantial shareholder of the Complainant and aware of the Complainant’s background and proposed advertising campaign. As such, the Panel considers that the Respondent's intentions regarding the disputed domain name related solely to its anticipated association with the Complainant and in these circumstances the Respondent cannot claim rights or legitimate interests on the grounds that the disputed domain name is comprised of one or more generic words.

In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

The Complainant’s case focuses principally upon paragraph 4(b)(i) of the Policy. On this topic, the Panel notes that the disputed domain name mirrors the Complainant’s corporate name and that it was registered on the date of the Complainant’s public announcement of its intention, subject to shareholder approval, to adopt that name. In addition, the Panel notes that the Respondent is avowedly a shareholder of the Complainant such that it is likely to have access to, and to follow, the Complainant’s announcements. The Panel has also considered the terms of the Respondent’s email of July 21, 2012 in which the Respondent appears to indicate a prior awareness of the Complainant and its rebranding plans, and proposes “a financial transaction at an agreed price” in respect of the disputed domain name.

In the Panel’s opinion, it is reasonable to infer from all of the above facts and circumstances that the Respondent registered the disputed domain name with the Complainant in mind, with intent to target the Complainant’s then existing and anticipated rights in the name and trademark HIBU, and primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s directly related out-of-pocket costs in terms of paragraph 4(b)(i) of the Policy.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

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 <hibuplc.com> be transferred to the Complainant.

Andrew D.S. Lothian
Sole Panelist
Dated: October 4, 2012

 

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