WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stop Go Networks Limited v. Silent Register / William Ellis Sinclair / Sinclair Technology Solutions Limited / The Lending Platform Limited
Case No. D2012-2086
1. The Parties
The Complainant is Stop Go Networks Limited of Glasgow, United Kingdom of Great Britain and Northern Ireland, represented by BTO Solicitors, United Kingdom.
The Respondent is Silent Register / William Ellis Sinclair / Sinclair Technology Solutions Limited / The Lending Platform Limited, of Canada and the United Kingdom, internally represented.
2. The Domain Name and Registrar
The disputed domain name <thepaydaypig.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the amended Complaint on October 30, 2012.
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 on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent filed the Response on November 22, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 28, 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 Complainant filed email communications to the Center on November 22, 23, 26, and 27, 2012. The Respondent filed an email communication to the Center on November 26, 2012.
The Complainant sought to file submissions in reply to the Response and sent these to the Center and the Respondent without having made any application to the Panel for these to be admitted. The Panel decided in the exercise of its discretion to admit these submissions by Panel Order dated December 7, 2012. The same Order gave the Respondent three working days within which to comment on these submissions. Submissions were received from the Respondent on December 13, 2012.
On December 21, 2012, after the Panel had forwarded the Decision to the Center, the Complainant once more forwarded to the Center an unsolicited further submission. The Panel declines to receive this submission which had not been sought by the Panel. The Panel notes that the Complainant had already received the indulgence of having had one unsolicited submission considered by the Panel. In any event, the proposed further submission does not relate to paragraph 4(a)(i) of the Policy which the Panel has determined not to have been established by the Complainant.
4. Factual Background
The Complainant, a Scottish company, operates a loan-broking business using inter alia a website called “Payday Pig” accessed at <paydaypig.co.uk>. It has registered the trading name “Payday Pig” with the United Kingdom Office of Fair Trading. The Complainant has no registered trademarks.
According to the Complainant, the disputed domain name was first registered on May 25, 2012 to Sinclair Technology Solutions Ltd (STL). It was transferred to Mr. A. Franco of Panama on October 4, 2012 and shortly afterwards transferred to Webfusion and thence to Enom, Inc. As at October 19, 2012, when the Complaint was filed, the registrant was the “Silent Register”. The Respondent’s given address was firstname.lastname@example.org. The Respondent’s address was later email@example.com.
As at October 4, 2012 the website accessed by the disputed domain name and also by the domain name <thepaydaypig.co.uk> stated that it was run by the Respondent, The Lending Platform Ltd (TLP). This website advertised loans of the sort offered by the Complainant, i.e. short-term advances. The same website expanded on these services and stated inter alia: “Don’t listen to Payday Pig spam from our competitors…”.
At the foot of this website, there is a statement advising persons seeking the Complainant’s website to click “here”. This link is not functional.
TLP was incorporated in August 2012 and thereafter registered several domain names relating to payday loans.
The Complainant gave the Respondent no permission to reflect its trading name in a domain name.
On October 5, 2012, the Complainant obtained an interdict against TLP and the Respondents, Sinclair Technology Solutions Ltd (STL) and William Ellis Sinclair (WES) from the Scottish Courts preventing the visibility of the Respondent’s website in Scotland. Contempt proceedings have been issued against the Respondents for alleged disobedience of the interdict. The interdict was served on TLP, STL and WES on October 4, 2012.
Mr. Franco registered the domain names <paydayparrot.com> and <pigpayday.co> on October 7, 2012. On October 4, 2012, TLP transferred the domain name <thelendingplatform.com> to Mr. Franco. TLP likewise transferred to Mr. Franco <fastcheckfinancedirect.com> on October 18, 2012.
The Respondent’s website frequently refers to “Payday Pig” without the definite article.
5. Parties’ Contentions
The Complainant has operated its loan-broking business in several websites over 2 years. Its website, “PayDay Pig”, accounts for about half of its turnover. The Complainant has a consumer credit license in the United Kingdom’s Office of Fair Trading with which the Complainant has registered the trading style PAYDAY PIG. Its business is turning over in excess of GBP 200,000 per month.
Around September 26, 2012, a customer advised the Complainant that the customer had sought to apply for a loan through PayDay Pig but had actually interacted with another website of the same name with a similar-looking website. This website was accessible at two addresses – i.e. the disputed domain name and <thepaydaypig.co.uk>. This website contained the reference “PayDayPig spam”.
Whereupon, the Complainant telephoned WES requiring that he and associated bodies cease passing off any connection between the Complainant and the Respondent and to cease infringing the Complainant’s rights.
On October 4, 2012, the disputed domain name website stated on its home page that it was “run by TLP” and advised that it had consumer protection and data protection licensing. Neither TLP, STL nor WES holds a current consumer credit license despite that statement. The Respondents, through the disputed domain name website, are passing off a connection between their business and the established business of the Complainant. There is a substantial risk of confusion. This is causing damage to or taking advantage of the goodwill enjoyed by the Complainant. This misrepresentation is made to actual and prospective customers by the use of a near-identical domain name. The Respondents do not have any consumer credit license. TLP has applied for one, naming WES as the person running TLP.
After a director of the Complainant had spoken with WES complaining that he, TLP and STL were acting illegally and damaging the Complainant’s brand and customers, the Scottish Court of Session issued an interdict against WES, STL & TLP restraining them from displaying within the jurisdiction of the Court, any website using the name “the payday pig” or any name or expression similar thereto.
The disputed domain name is confusingly similar to the unregistered trademark of the Complainant. The Respondent has no rights or legitimate interests in respect to the disputed domain name, which is not being used for fair commercial use.
The disputed domain name was registered and is being used in bad faith. It is disrupting the business of the Complainant for commercial gain and directing customers away from its website. The two websites are similar and could create confusion.
An application for sanctions for breach of the interdict has been submitted to the Crown Office in Scotland. Approval which was granted and submitted to the Quarter Session of the Court on October 29, 2012 with a view to seeking punishment of the Respondents for contempt of court.
The true Respondent is claimed to be Marlia Business SA (Marlia) acting through Mr. A. Franco at the Panama address referred to earlier. No telephone or fax number is shown. The Respondent says that those named as Respondents by the Complainant are not such.
The amended Complaint was notified to the Respondents named in the amended Complaint. This is because the original registrant was “Silent Registrar”. The Complainant has not yet established who actually operates the website. It says that WES, STL and TLP are the current website operators but this evidence is based on inaccurate WhoIs database information.
Marlia is the website operator and has been since September 27, 2012 “after pressure by the Complainant was put on STL”. There is said to have been an administrative transfer of the registration but official ownership and operation of the disputed domain name never ceased to be with Marlia.
The Complainant provides no evidence in support of the assertion that the website “Payday Pig” accounts for half of its revenue. A consumer credit license does not provide exclusive intellectual property rights but is merely an entry on a register of approved regulators and brands. Any goodwill that the Complainant may have in the brand PAYDAY PIG has been generated by the Respondents.
Since the disputed domain name was registered in May 2012, the Respondent has engaged in significant market activities on its United Kingdom website. The Complainant has not provided evidence of trading or of goodwill in the brand. There exist other registered domain names such as <paydaypig.com> (registered to an unknown registrant in November 2011) and <paydaypiggy.com>. The words “payday pig” are common in domain name registrations in the United Kingdom. Consumer search demand for “payday pig” began around May 2012 when the Respondent’s website went live.
The conversations with WES referred to by the Complainant did not prompt changes to the content of the website. These changes were coincidental and part of a “wider search engine optimization strategy”. Database information is easily changed and is not guaranteed to be 100% accurate.
The Respondent does have a legitimate interest in the disputed domain name. It operates several pay-day loan websites in the United States of America (United States), United Kingdom and Australia.
As at September 27, 2012, there was no statement on the website that it was run by TLP. A number of intermediary transfers were made in order to facilitate the official domain name transfer to the chosen registrar “Silent Register”. There was no passing-off between the Complainant’s and the Respondent’s business. The graphic designs are different, as are the coloring, font and logos. There is no evidence that at the time of registration of the disputed domain name, the Complainant had any rights to an unregistered mark for PAYDAY PIG.
The two businesses are not connected. The logos are different, the caricature of the pig is different, the color scheme comes from a different palette, the fonts used are different. The loan application is different. The Respondent has targeted several localities, including the United States and Australia, whereas the Complainant has targeted only the United Kingdom. The loan products on offer are different and have different interest rates.
As at the date of registration of the disputed domain name, the Respondent had no knowledge of the Complainant’s business or of any potential claims, despite having made a search into the database of registered marks in the United Kingdom.
The Respondent was not aware of the Complainant’s claim to a mark when the Complaint was filed. The interdict in the Scottish Court against WES is irrelevant because the Respondent is in Panama where the Scottish Court has no jurisdiction.
As to being identical or confusingly similar to a mark in which the Complainant has rights, the Complainant has provided no evidence that it has been using the mark for two years previously.
The search keyword history for the term “pay day pig” proves that consumer search demand existed only after the Respondent’s website and extensive marketing activities commenced.
In May 2012, the Complainant had no registered trademark although it has subsequently applied for one for PAYDAY PIG on September 2, 2012. This application is still under consideration and may be contested.
The Complainant’s use of the Respondent’s mark is an abusive use of the site, and is a “free ride” on the success of the Respondent’s marketing activities. The complaint of confusing similarity is refuted because the Complainant is specifically targeting United Kingdom Internet users whereas the Respondent is targeting worldwide users. The fact that the Respondent makes use of the “Pay Day Pig” parts of its content is merely a search engine optimization tactic. The Respondent has rights in the disputed domain name.
In three territories named, i.e. the United Kingdom, the United States and Australia, the number one search result for the term “pay day pig” is the Respondent. As at May 2012, there was no consumer demand for the key words. The Respondent had never heard of the Complainant up until the time of the Complaint. The mark is not famous enough. The Respondent has been making legitimate use of the mark PAY DAY PIG since May 2012. The Complainant is a trademark infringer and is specifically targeting the Respondent’s domain name.
Reference was made by the Respondent to a number of similar domain names with the .uk suffix. The disputed domain name has not been registered nor is being used in bad faith. It is legitimately being used in the three identified territories. Thousands make use of the disputed domain name to obtain pay-day loans. It is being used for fair commercial use, given the lack of demonstrable protectable rights on the part of the Complainant.
The Complainant cannot prove that it was using the mark at the time the disputed domain name was registered. The Respondent does not agree that the domain name registration was undertaken in bad faith. The Complainant is attempting unlawfully to divert traffic from other established pay-day loan brands. The loan products offered by the websites of the Complainant and Respondent are inherently different – with different lending conditions and different interest rates and different terms.
The Respondent made allegations concerning the Complainant’s alleged infringement of the websites of third parties which are not repeated since the Panel considers that the allegations should not have been made and are irrelevant to the Panel’s decision.
C. Complainant’s Further Submissions
The Complainant submitted that an objective examination of the data did not support the proposition that the Respondent was trading prior to the date of registration of the disputed domain name. The Complainant analyzed various graphs of activity prior to the launch of the Complainant’s site in July 19, 2011. The Respondent’s graph showed demand for “payday pig” began in February 2012. By April 2012, this search term had achieved 35% of its peak search volume.
The Complainant’s figures showed significant numbers of loans rejected, processed or accepted by it in July 2011 on its then fully-operational website. It did not, however, produce details of its financial activities from July 2011 to October 2012.
There is no evidence of the Respondent’s activities in the United States or Australia. A simple Google search would have revealed the Complainant’s website, as would a search on the Office of Fair Trading Consumer Credit Licence Database. The Respondent is trading illegally in the United Kingdom without such a license.
The Respondent’s main website, “www.thelendingplatform,com” was first registered by TLP in July 2012 and transferred to Mr. Franco before October 4, 2012. Mr. Franco and the named Respondents are inter-connected.
Related domain names such as <lendingpartnership.com> were also transferred to Mr. Franco in Panama. Each of the sites used an application form that is loaded from another site. This means that the engine of the site is provided by another engine which captures the application details and processes them before sending them to external lending organizations.
The Complainant produced a statement from its accountant indicating that its turnover exceeded GBP 200,000 in October 2012. On a monthly basis, the loan applications that have been submitted to the Complainant have varied between GBP 8,000 to GBP 32,000 with a drop at about the time the Complainant became aware of the Respondent’s application. TLP’s website is being run by Mr. Franco. TLP has in its Consumer Credit Licence application nominated several trading styles which are the same as domain names registered to Mr. Franco. The disputed domain name was an i-frame loaded from the domain name <pdln.co> which was originally registered to Mr. Franco.
The Complainant claims that the Respondent abused the UDRP process by advancing defamatory accusations against the Complainant about infringement of other parties’ websites and intellectual property.
D. Respondent’s Further Submissions
Like the Response, the Respondent’s further submissions adopted a scatter-gun approach and consisted mainly of a series of assertions. The following is a summary of the main points distilled with some difficulty from a diffuse document.
Because other websites used the mark PAYDAY PIG before the Complainant’s usage, the result of any search demanded prior to the Respondent’s use of the mark cannot be attributed solely to the Respondent. Any Google search shows worldwide demand, whereas the Complainant operates only in the United Kingdom (UK).
The Respondent did a UK trademark search before registering the disputed domain name in May 2012. The Respondent had no knowledge then of the Complainant.
The Respondent claimed that the Complainant’s screenshot could be manipulated: Search results by site “pp” do not necessarily relate to “payday pig”. The data shows loan applications from July 2011 and not demand from February 2012. There is no evidence that the Complainant generated demand around July 2011. Google is not an authorative source of information on intellectual property registration. A sponsored advertisement is available to the highest bidder and can be manipulated.
The Complainant has offered no evidence to back up its various allegations about illegal trading by the Respondents and various IP addresses. No certification was produced for its various exhibits.
Marlia and/or Mr. Franco is (are) an agent(s) of the named Respondents. Ownership and transfers of domain names is different to ownership and status of companies. The fact that the Respondent is listed as WhoIs owner is irrelevant to these proceedings. Quintessential Finance has no connection with the Respondent.
The letter from the Complainant’s accountant does not make it clear whether the Complainant had turned over GBP 100,000 in October 2012 or since the website began.
The Respondent repeated its allegations against the Complainant of various involvements in the rights of third parties.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(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 and is being used in bad faith.
A. Identity of Respondent
There appears to have been several transfers and different registrants of the disputed domain name over a short period of time culminating in a registration to the “Silent Register” which presumably holds the registration under some privacy arrangement on behalf of the true owner(s). The Complaint appears to have been served on the three entities named in the Amended Complaint as well as on Silent Register and Marlia Business SA. Those three entities were presumably nominated as the true registrants or administrative or other contacts by Silent Register. This made the filing of an Amended Complaint necessary.
The Panel considers it unnecessary to determine exactly who is the current technically beneficial registrant. It must be one of the above and/or Marlia who all seem to be inter-connected. The various iterations of domain name registrations detailed in the Complainant’s pleadings give rise to this inference. Moreover, there is too much of a timing coincidence between the Complainant’s dialogue with WES and the transfers of the disputed domain name.
B. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to “Payday Pig” which is the brand used by the Complainant and for which it has approval from the Office of Fair Trading in the United Kingdom. The only difference is that the disputed domain name has the definite article before the brand name.
Approval of a trade name does not equate to trademark rights for purposes of the Policy however. The Complainant has no registered trademark although it has apparently applied for one (This information comes only from the Respondent). The Complainant cannot rely on any registered trademark rights. Domain names are not necessarily to be treated as substitutes for unregistered trademarks.
The Complainant can only succeed under this head of paragraph 4(a) of the Policy if it can establish on the balance of probabilities that it has a common law trademark or service mark.
The consensus view of WIPO UDRP panelists reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicates the following requirements to demonstrate common law or on-registered trade marks (see paragraph 1.7 of the WIPO Overview 2.0). This summary has been accepted in many decisions under the Policy.
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.” [Emphasis added]
An alternative way of looking at the issue can be seen from cases such as Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058. The panel - a distinguished English intellectual property lawyer - stated:
“Under English law a registered trade mark or service right marks exist where the putative rights owner can successfully restrain a competitor from using his mark (or something similar to it) by way of a passing off action.
To succeed in a passing off action one must be able to prove:
(a) goodwill of the name at issue,
(b) a misrepresentation, (e.g. the defendant is in some way associated with the plaintiff); and
(c) consequential damage or a likelihood of such damage
The courts will ordinarily infer damage or a likelihood of damage if the first two elements are established.”
“Plaintiffs able to establish those three elements (known as the “classic trinity”) may nonetheless be refused relief by the Courts if the goodwill is in a wholly descriptive term, the rationale being that nobody should be permitted to monopolise ordinary English words or expressions, which other traders might reasonably wish to describe their goods and services.”
The name “Payday Pig” is not a combination of words one would normally expect to encounter. The words do not happily sit alongside each other in common parlance.
The Complainant’s evidence of goodwill is limited and its evidence of an unregistered trademark is not strong. Far more evidence of its trading activities should have been shown, more than the rather bald statement from the accountant. This statement covers a period after the Complaint had been filed. Evidence of pre-October 19, 2012 trading should have been supplied. There is a snapshot of loan applications on July 2011 but nothing much else in the way of accounting evidence. Google analyses are no substitute for ordinary business records.
The fact that a superior court in Scotland has granted the Complainant an interdict against the Respondents preventing them from using the disputed domain name in Scotland is in the Complainant’s favor. It is unlikely that such an order would have been made if the Court had not thought there was an arguable case that the Complainant had unregistered trademark rights in the name “Payday Pig”. However, the Complainant in these Policy proceedings has not disclosed the evidence that persuaded the Court to make the interdict decree. Whilst the test in most common law jurisdictions to justify the issue of an interim injunction is that there is a “serious question to be tried”, there is no evidence of the basis on which the Scottish Court made a similar kind of order. The Panel understands also that Scottish law is based on civil law, not the common law. In any event, nor was the Panel advised whether the decision was made on an undefended basis. It is on its face an interim order. A finding of “serious question to be tried” does not necessarily equate with a finding of a common law trademark.
Whilst one could infer that a Court has acknowledged rights of the Complainant in the disputed domain name, one would need to view the evidence that had been placed before the Court in order to ascertain that the Complainant’s brand name would be elevated to common law trademark status.
The Panel considers that there is insufficient evidence of a common law trademark produced by the Complainant in these Policy proceedings. This is not a case where the Complainant had been in business for a long time: there is insufficient evidence of the sort noted in paragraph 1.7 of the WIPO Overview 2.0 noted earlier. There is, for example, no evidence of consumer surveys, media recognition, advertising or trading details from July 2011 onwards.
It may be that should the Complainant’s trademark application be granted in the United Kingdom, having withstood any opposition, then the Complainant will be much better placed to mount a fresh complaint under the Policy on the basis of changed circumstances (see WIPO Overview 2.0, paragraph 4.4). Defended trademark applications provide a far better forum for resolving where the truth lies than proceedings under the Policy. Moreover, court proceedings have already been issued in Scotland which will provide more certainty about the allegations made by either side.
The Panel treats with some skepticism the Respondent’s claim of activities in the United States and Australia. No supporting documentation was produced. The registration details of the disputed domain name and the clear association of the Respondent with payday lending raises questions about the Respondent’s conduct.
The Panel also notes that the Response clearly raised the adequacy of the Complainant’s claim to an unregistered mark. Yet, the Complainant did not take full advantage of the opportunity to provide more convincing evidence of an unregistered mark.
Had the Complainant satisfied the first criterion, the Panel could see an arguable case under the other two criteria of paragraph 4(a) of the Policy. However, no decision on those criteria is required, since the Complaint fails at the first hurdle.
Accordingly, the first limb of paragraph 4(a) of the Policy has not been established and the Complaint in these present Policy proceedings must be denied.
For the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Date: December 21, 2012