WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Which? Limited v. Michael K-Addo and Which?Media Group
Case No. D2012-2210
1. The Parties
The Complainant is Which? Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wedlake Bell LLP, UK.
The Respondents are Michael K-Addo and Which?Media Group of London, UK.
2. The Domain Names and Registrar
The disputed domain names, <whichestateagency.com> (the “First Domain Name”) and <whichmediagroup.com> (the “Second Domain Name”) (together the “Domain Names”), are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that Michael K-Addo is listed as the registrant of the First Domain Name and that Which?Media Group is listed as the registrant of the Second Domain Name and providing the contact details. Both registrants have the same address and there is no dispute between the parties that Mr K-Addo is the prime mover behind Which?Media Group, the registrant of the Second Domain Name.
The Panel is satisfied that for current purposes it is appropriate that Mr K-Addo and his businesses, Whichestateagency.com Limited and Which?Media Group, be treated as one and that the Domain Names are both dealt with in this same Administrative Proceeding. All references to the “Respondent” are references to them jointly and/or severally as the context requires.
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 November 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2012. The Response was filed with the Center on November 15, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 26, 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.
On November 23, 2012, the Complainant submitted to the Center an unsolicited Supplemental Filing commenting upon certain matters in the Response and attaching a copy of an email received from the Respondent on November 10, 2012, the day following the filing of the Complaint. The Panel read the submission and its attachment, found their contents relevant and on November 30, 2012, issued Administrative Panel Procedural Order No. 1, inviting a response from the Respondent. The Respondent responded on the same day.
On December 5, 2012, the Panel issued Administrative Panel Procedural Order No. 2, seeking from the Complainant clarification of aspects of paragraph 50 of the Complaint. Both parties filed responses to that order on December 6, 2012.
Finally, on December 10, 2012, the Panel issued Administrative Panel Procedural Order No. 3, seeking from the parties clarification of aspects of their responses to Administrative Panel Procedural Order No. 2. Both parties filed responses to that order on December 11, 2012.
Insofar as is necessary those procedural orders and the parties’ responses thereto are dealt with in sections 4, 5 and 6 below.
4. Factual Background
The Complainant is a very well-known publisher in the UK. It was incorporated on December 13, 1960, to become the trading arm of the unincorporated The Consumers’ Association, which was founded in 1957. It adopted its current corporate name in April 1995, previously having been “Consumers’ Association Limited”. The Complainant is best known for its Which? Magazine and its lobbying activity on behalf of consumers, which it undertakes under the “Which?” name.
The Consumers’ Association is a registered charity and exists to promote and protect the interests of consumers. The Complainant’s trading profits are used for those charitable purposes.
There is no dispute between the parties as to the Complainant’s “long standing history” (as the Respondent puts it). Nor is there any dispute that the Complainant is the registered proprietor of UK trade marks comprising and/or including the word “Which” (with and without a “?”), many of which pre-date by some years the dates of registration of the Domain Names (see below). The marks are numerous and include in addition to WHICH? AND WHICH, COMPUTING WHICH? (with and without the question mark), MONEY WHICH?, (with and without the question mark), MOTORING WHICH?, (with and without the question mark), WHICH BEST BUY, WHICH MAGAZINE, WHICH? CAR, WHICH? MORTGAGE ADVISERS (logo), WHICH? ONLINE and WHICH?LOCAL (words, series of 4).
The core of the Complainant’s business activity is the evaluation and recommendation of goods and services for the benefit of consumers. As part of this activity the Complainant operates “Which?Best Buy” and “Which? Recommended Provider” licensing schemes whereby manufacturers of consumer products and suppliers of consumer services pay a licence fee to the Complainant for the right to use the relevant WHICH? BEST BUY logo or WHICH? RECOMMENDED PROVIDER logo on their packaging or in their advertising material.
The Complainant’s publishing and advisory services range across a wide variety of manufacturing and service industries of interest to consumers. The property sector is no exception. Much of the Complainant’s service in this sector is (and/or has been) provided through its Which? Magazine, its other WHICH? publications, such as its “essential guides” and its websites at “www.which.co.uk” and “www.whichmortgageadvisers.co.uk”.
The First Domain Name was registered on May 30, 2011, and is connected to a website that represents “WhichEstateAgency.com” to be “The National Register of Estate and Letting Agents”. The homepage features a description of that register, being a searchable list of “every operating Estate and Lettings Agency in the UK” and a note reading: ”The Register will officially be published on 1st January 2013 and updated annually. In the meantime please use the services below.” There then follow testimonials from a landlord, a vendor and a “property applicant” certifying how they use the register. The alphabetical list of estate agents is currently disabled pending official launch of the register.
On October 6, 2011, the Respondent (in the person of Mr K-Addo) incorporated Whichestateagency.com Limited in the United Kingdom. From the UK Companies Registry records produced in evidence by the Complainant it can be seen that Mr. K-Addo is 23 years of age and describes himself as a “web entrepreneur”.
On November 1, 2011, the Respondent sent an email via the Complainant’s website entitled “WhichEstateAgency.com” and reading as follows:
“I have just started this website and it is not yet complete. We are currently receiving 4000 hits a week simply because the name is perfect and does what it says on the tin. I feel that it fits into what your company offers and was wondering if you would like to take over the business completely. We estimate a ?440,000 turnover every 6months. If this is of interest to you please let me know and we can discuss this further.”
The Second Domain Name was registered on August 1, 2012, and was connected to a website that attracted the attention of the Recruitment & Employers Association (“REC”). On August 14, 2012, the REC issued a press release in the following terms:
“REC has written to Which?Media Group Ltd today to relay the concerns of REC members about ‘The Recruitment App’.
REC members have contacted the REC with concerns about information they have received from Which?Media Group inviting them to place a listing in ‘The Recruitment App’, claiming that the application has been commissioned by the REC and offering REC members a discounted listing rate. The REC can confirm that ‘The Recruitment App’ was not commissioned by the REC and that there is no relationship, commercial or otherwise, between the REC and Which?Media Group. The REC will be reporting this matter to the police and other appropriate authorities.”
Following publication of this press release the Complainant was contacted by a journalist from The Recruiter, a magazine for the recruitment profession in the UK, seeking a comment on the press release. It was at this stage that the Complainant first became aware of the Second Domain Name.
The website connected to the Second Domain Name features a “Welcome” message which on August 30, 2012 read; “Which?Media Group is a consumer focused media business with an extensive portfolio of digital publications and websites. Our focus is on the accessibility of information to the consumer market and the effectiveness of simplicity.” Currently, the message is the same save that “Whichmediagroup.com” has been substituted for “Which?Media Group” and two sentences have been added; “Which media group will your company use? Click media groups in the nav bar to find out more. At one time the website gave as one of its contact email addresses as “firstname.lastname@example.org”. That address has now been removed.
On August 31, 2012, the Complainant wrote to the Respondent drawing the Respondent’s attention to its trade mark rights, objecting to the Respondent’s registration of the Second Domain Name and seeking inter alia transfer of the Second Domain Name.
On September 1, 2012, the Respondent replied denying the Complainant’s allegations, accusing the Complainant of bullying and indicating a willingness to come to a “mutual agreement” along the lines of either: (a) maintenance of the status quo, with the Complainant notifying its consumers that it has nothing to do with Which?MediaGroup; or (b) purchase by the Complainant of the Respondent’s business “and all its similar websites” and cessation by the Respondent of “all plans for the release of [its] portfolio of multi-media publications.” The Respondent’s letter went on to say that if the Complainant rejected this proposal, the Respondent reserved the right inter alia to publicise “this incident”. The sign-off to the letter identifies “Which?MediaGroup” as a business name of WhichEstateAgency.com Limited.
On September 6, 2012, the Complainant’s in-house lawyer acknowledged receipt of the Respondent’s letter and said that he was taking instructions. That same day the Respondent replied saying, “Thank you for letting me know. Out of respect for the situation I have kept communication between Which?Media Group and its clients to a minimum. However, I cannot financially afford to do this for much longer. I look forward to your next communication.”
On September 10, 2012, the Respondent emailed the Complainant saying, “This email is to inform you that Which?Media Group intends to resume normal business on Tuesday, September 11, 2012. We feel that 10 days leaves appropriate enough time to respond and come to a conclusion. I would welcome and appreciate an update by close of business today.”
On September 14, 2012, the Respondent emailed the Complainant again expressing frustration at the delay in getting a response, referring to the damage this was causing his business and again reserving its right to publicise the situation in all “forms of media communication.”
The same day the Complainant’s external lawyers sent a cease and desist letter reiterating the Complainant’s allegations as set out in the Complainant’s letter of August 31, 2012, complaining about the content of the Respondent’s subsequent emails to the Complainant and inter alia seeking transfer of both the Domain Names.
On September 15, 2012, the Respondent sent two emails to the Complainant, the second containing “a new and reviewed [sic] proposal”, a variant of that made in the first. The essence of the emails was that the Respondent denied that the Complainant’s trade mark rights extended to the names “WhichEstateAgency” and “Which?Media Group”, the Respondent would not be changing the name of WhichEstateAgency.com Limited and would not cease to use the names “WhichEstateAgency.com” and “whichmediagroup.com”. The Respondent had however “authorized the change for the company name to become “whichmediagroup” from “Which?Media Group.” The purpose behind that change was said to be “to avoid further harassment and to immediately cut short any conquest to unlawfully force the transfer of [the respondent’s] domain names.” The emails indicated that the Respondent would be willing to discuss a financial offer or merger in respect of each of the disputed domain names, <whichmediagroup.com> and <whichestateagency.com>.
On September 26, 2012, the Complainant’s external lawyers again wrote to the Respondent explaining what they saw as fundamental misconceptions on the part of the Respondent as to the law of trade marks and repeating the demand that the Respondent accede to the demands made of the Respondent in their letter of September 14, 2012.
That same day the Respondent provided a detailed response answering the previous letter point-by-point and refusing to accede to the Complainant’s demands.
On November 10, 2012, the day following the filing of the Complaint, the Respondent emailed the Complainant indicating that he had found a newspaper willing to run a story on the dispute, assist the Respondent to obtain a lawyer to represent him and run a poll to see if consumers are deceived. The letter descended into an emotional and unrestrained rant about the Complainant and its directors.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered the Domain Names and is using them in bad faith.
The Respondent’s case is set out variously in the Response, the Respondent’s responses to the Administrative Panel Procedural Orders, referred to in section 3 above, and the numerous email exchanges referred to in section 4 above. The Respondent denies the Complainant’s allegations and accuses the Complainant of reverse domain name hijacking.
The Respondent accepts that the Complainant has trade mark rights, but denies that the Domain Names are confusingly similar to the Complainant’s trade marks. The Respondent denies that the Complainant’s trade mark rights cover names such as the Domain Names.
The essence of the Respondent’s case is that “which” is an ordinary dictionary word and that the Respondent has a legitimate interest in using websites connected to the Domain Names to assist consumers in finding the appropriate estate agency or media group for their needs. The Respondent contends that all he (Mr. K-Addo) is doing (or planning to do) is to answer the questions; “which estate agency?” and “which media group?”.
The Respondent contends that there are hundreds of domain names in existence featuring the word “which” combined with a descriptive term and which have nothing to do with the Complainant. The Respondent cites one example, <whichpropertyagent.co.uk>.
The Respondent states that he was working as an estate agent when he registered the First Domain Name and was passionate about setting up a website dealing with the frequently asked question; “which estate agency?” He gave up his job to work on the website. He then ran out of money and it was this circumstance, which prompted him to send the message to the Complainant on November 1, 2011. It is quoted in full in section 4 above. He states that the Complainant was not the only entity to which he wrote. He cites also both “Rightmove.co.uk” and “Zoopla”.
The idea of setting up a website connected to the Second Domain Name came to him when, still short of money, he decided to set up an office in Canary Wharf, London. He states that one has to spend money to make money. His purpose was “to assist companies with all the different forms of new media available.” His dispute with the REC (see section 4 above) stemmed from a desperate need to get recruitment companies to place their advertising with him. He recognizes that this was a mistake.
The Response concludes:
“Moving forward, I am fully appreciative of the long standing history what Which? Limited has, however, they do not offer any dedicated property agent advice service, nor do they have an estate agency. I will never go out of my way to cause harm to another company especially a company of that size. I feel that this case is only so unique because of the fact that the trademark is a very very common word used in the English language 'Which' I feel that Which? Limited are trying very hard to hold a monopoly over this word and in my opinion this is wrong. I agree that there are limits to trademarks and how far they stretch but I do not agree that their trademark of the word 'Which' can now stretch as far as using it within domain names. I only pray that the panel takes a very close look into this situation and if possible take the time to genuinely study the companies in question especially my websites. They have never ever just been registered and left blank in the hopes of financial offers coming along nor have they copied any of the services of Which? Limited, nor have they confused any single person into believing that our companies are linked.”
The Respondent’s claim in relation to Reverse Domain Name Hijacking reads as follows:
“I believe that Which? Limited are guilty of reverse domain name hijacking. When they first contacted me on the 31st August 2012 they made the complaint about my newly registered whichmediagroup.com and stated that at my own expense I would need to cease trading with that domain name and cease registering in the future any domain name that contains the word 'Which'. At a later date they then found out that I own the domain name Whichestateagency.com which has been registered since may 2011 (Over 1 year prior to whichmediagroup.com) and has been an active website since October 2011 before being re-edited. When they found out that I owned the website they accused me of registering in bad faith without any prior research into my website, design, function and my reasons for setting it up. They immediately suggested in their next correspondence that I would need to also transfer the domain name along with whichmediagroup.com This is evident in the complainants annex 27 of their complaint. I can fully understand the attempts to take whichmediagroup.com but I cannot comprehend the idea of taking whichestateagency.com which is a completely separate company providing a service completely separate to anything that Which? Limited does. Whichmediagroup.com/ Which media group has never been a subsidiary or a trading name of Whichestateagency.com Limited there is no evidence to show this and I have never publicly announced to anyone that the two companies are the same or in fact working together.”
6. Discussion and Findings
The background facts upon which this decision is based are set out in extenso in section 4 above.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
Where appropriate, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
The Domain Names each comprise the word “which” followed by a descriptive term (“estateagency” and “mediagroup”) and the generic “.com” top level domain identifier. It is well-established that it is permissible for panels to ignore the top level domain identifier when assessing identity/confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant’s primary trade mark is the word “which”, which is registered both with a “?” and without a “?”. Moreover, the Complainant has over the years made substantial use of its “which” trade mark (with and without the “?”) in combination with terms descriptive of offerings of goods and services. As can be seen from section 4 above, many of those combinations are registered trade marks of the Complainant in the United Kingdom.
The Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent has no rights or legitimate interests in respect of the Domain Names. This can often be a very difficult matter to establish in circumstances where, as here, the Respondent is a stranger to the Complainant. Whether or not the Respondent has rights or legitimate interests in respect of the Domain Names is a matter peculiarly within the knowledge of the Respondent.
Paragraph 2.1of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0”) deals with this issue as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant’s case is that the Respondent registered the Domain Names with knowledge of the Complainant and its trade mark rights and with the intention of either selling them to the Complainant at a profit, or for the purpose of exploiting them for commercial gain on the back of the fame of the Complainant, its trade marks and its service offerings. The Complainant relies in part on the nature of the Domain Names themselves, the fact that the Respondent offered the First Domain Name for sale to the Complainant, the use that the Respondent is making of the Domain Names (competing with the services offered by the Complainant), the Respondent’s propensity for dishonesty (e.g. the false claims made in respect of the REC) and the fact that the Complainant has given the Respondent no permission to use its trade marks for this or any other purpose.
The Panel is satisfied that the Complainant has made out a prima facie case, a case calling for an answer.
Paragraph 4(c) of the Policy, which is addressed to Respondents, is headed “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint” and sets out (on a non-exhaustive basis) three sets of circumstances any of which, “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 the purposes of paragraph 4(a)(ii) [of the Policy]”. They are:
“(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 First Domain Name (<whichestateagency.com>).
The Respondent has been using the First Domain Name to create a website which, on its face, appears to be intended to assist Internet users to find an estate agency that suits their needs. The Respondent asserts that at one time the website was active, but has produced no evidence to support that claim. Currently it is inactive and a message on the homepage indicates that it will not be going “live” until January 1, 2013. The Respondent has also used the First Domain Name for the name of a company, which he (Mr. K-Addo) incorporated in 2011.
Thus, insofar as the First Domain Name is concerned the Respondent can potentially pray in aid paragraph 4(c)(i) relying on the work he has done to create his website connected to the First Domain Name and he can pray in aid paragraph 4(c)(ii) in respect of his company’s corporate name, “WhichEstateAgency.com Limited”. But has the Respondent been acting in good faith? Is the website all that it appears to be or is it a sham? Is the company, “WhichEstateAgency.com Limited” a genuine commercial venture or is it a sham designed to take advantage of paragraph 4(c)(ii) of the Policy?
The Complainant contends that the choice of name is itself an indication of bad faith in that it inevitably cuts across the Complainant’s trade mark rights. That may or may not be so. While it is without doubt the case that the Complainant’s “Which?” trade mark is a household name in the UK, it is also true that nobody can acquire a monopoly in the UK of the word “which” in all forms and across all fields of commercial endeavour. Accordingly, the term “which estate agency” is potentially capable of legitimate use by third parties unconnected with the Complainant. Under UK law it is well-established that if a brand owner chooses to adopt a trade mark comprising a descriptive term, he is likely to have to accept that there will be scope for confusing use of that term by third parties about which he cannot complain. In this regard it is pertinent to note that there is in existence a website connected to the domain name, <whichpropertyagent.co.uk>, which does not appear to be connected to the Complainant and which performs a similar task to that claimed/planned by the Respondent for the website connected to the First Domain Name. The Respondent puts himself in the same position as the operator of that website.
Here, under the Policy, much turns on the Respondent’s motivation for having selected the First Domain Name. Was it selected by the Respondent for the purpose he claims (to assist consumers/companies in finding the appropriate estate agency for their needs) and in the honest and reasonable belief that in so doing he was not infringing the Complainant’s trade mark rights or was it selected for no bona fide purpose and with the intention of exploiting the First Domain Name on the back of the reputation and goodwill of the Complainant’s trade marks? The latter is “cybersquatting” the vice at which the Policy is directed, whereas the former is not.
The factor, which casts doubt on the Respondent’s claim is that 5 months after having registered the First Domain Name the Respondent approached the Complainant with a view to selling it to the Complainant. The Respondent says that the approach he made to the Complainant was not the only approach he made. He states (without producing any supporting evidence) that he also approached other organizations. Those approaches were occasioned by a desperate shortage of money. Selling the First Domain Name was not his plan when he registered it.
Is he to be believed?
The Second Domain Name (<whichmediagroup.com>).
While it is true that theoretically the Respondent can pray in aid the same sub-paragraphs of paragraph 4(c) of the Policy in relation to the Second Domain Name, the circumstances surrounding the registration of the Second Domain Name are very different. The business name that the Respondent selected for operation of the website connected to the Second Domain Name was “Which?Media Group. First, the Complainant is a media group and, secondly, the addition of the “?” makes it absolutely plain (insofar as this Panel is concerned) that the Respondent had the Complainant in mind when selecting the name. The Respondent will have been well aware when designing the website connected to the Second Domain Name that the Complainant “is a consumer focused media business with an extensive portfolio of digital publications and websites.” If the Respondent had any honest basis for using those words in relation to his business, he has produced nothing to support the claim, yet those are the words he used to describe “Which?Media Group”.
That was not the only unsupported statement to appear on that website. The Respondent made the following false claim; “The Recruitment App is commissioned by The Recruitment & Employment Confederation and created by Which?Media Group Canary Wharf”. No explanation has been provided for this claim save that the Respondent was desperate to raise money from recruitment companies by getting them to advertise with him.
It was this claim or rather a press release from the REC, which it provoked (see section 4 above), which led a journalist to contact the Complainant and question the Complainant about it.
In the view of the Panel the selection of the business name “Which?Media Group” was calculated to cause confusion with the Complainant and the Panel is not surprised that confusion resulted.
The Panel finds that the Second Domain Name was selected with the Complainant in mind and with a view to exploiting the fame of the Complainant and its trade marks. Nothing that was done in relation to the Second Domain Name can be said to have been done in good faith and none of it can give rise to any rights or legitimate interests in respect of the Second Domain Name.
The First Domain Name (continued).
To what extent if at all should the above finding in respect of the Second Domain Name have a bearing upon whether or not the Respondent’s claims in respect of the First Domain Name are to be believed?
The Respondent claims to have been an estate agent when he selected the First Domain Name. The Panel has no means of knowing whether that was in fact the case. The Companies Registry file on WhichEstateAgency.com Limited describes the Respondent as a web entrepreneur. True, he may have become a web entrepreneur after having acted as an estate agent, but there is a lingering doubt in the mind of the Panel.
The Panel notes that the Respondent’s case depends entirely on (a) assertions made in the Response and the inter-party correspondence and (b) what one sees when one visits the Respondent’s websites. The Respondent has come forward with no independent hard evidence to support his contentions. In general, it is for the Complainant to prove each element of paragraph 4(a)(ii) of the Policy, but where the Panel is looking for an answer to the Complainant’s prima facie case, something more than bare assertions is necessary.
The Respondent is keen to distance the business he runs under the First Domain Name from his Which?Media Group (or whichmediagroup.com) business. In the Response the Respondent states:
“I can fully understand the attempts to take whichmediagroup.com but I cannot comprehend the idea of taking whichestateagency.com which is a completely separate company providing a service completely separate to anything that Which? Limited does.
Whichmediagroup.com/ Which media group has never been a subsidiary or a trading name of Whichestateagency.com Limited there is no evidence to show this and I have never publicly announced to anyone that the two companies are the same or in fact working together.”
The Complainant has demonstrated to the Panel that that statement is quite untrue. In his email correspondence with the Complainant he has expressly stated that Which?Media Group is a business name of WhichEstateAgency.com Limited and on one iteration of his website connected to the Second Domain Name he has used for a contact email address the address “email@example.com”. The Respondent has not responded to the latter point, but in relation to the former he has said that he only used that form of words, not because it was true (it was untrue), but because it made his business sound bigger than it was.
If this dispute was solely about the First Domain Name and there was nothing to call into question the Respondent’s honesty and integrity, the Panel might well have taken the view that this case was more suited to the courts than the Policy. However, the Respondent’s behaviour in relation to the Second Domain Name and in the course of the subsequent correspondence (more fully detailed in section 4 above) has led the Panel to conclude that it would be unsafe for him to accept any of the Respondent’s statements which are not supported by independent evidence and/or are not independently verifiable.
In the result, the Panel finds on the preponderance of the evidence that the Respondent registered the First Domain Name with a view to selling it to the Complainant at a profit and that the Respondent’s email to the Complainant on November 1, 2011, was consistent with that plan. As a web entrepreneur the Respondent is likely, in the view of the Panel, to have been familiar with the terms of the Policy and designed the website and registered the company, WhichEstateAgency.com Limited, with a view to defeating a complaint under the Policy. It may also very well be that the Respondent’s back-up plan was to trade under the name if a sale to the Complainant failed to materialize.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
By the same reasoning as laid out under the element above, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) and (iv) of the Policy.
The Panel concludes that the evidence supports the Complainant’s contentions that the Respondent registered the First Domain Name, created a website to connect to it and sent the November 1, 2011, email to provoke an offer from the Complainant. When that failed to elicit any response from the Complainant, the Respondent created Which?Media Group as a business name and domain name along with an associated website more obviously designed to provoke the Complainant.
The preponderance of the evidence supports the Complainant’s contentions that the Respondent was hoping to sell the Domain Names to the Complainant if the Complainant made a satisfactory offer and, if no satisfactory offer was received, intended to conduct trade under and by reference to the Domain Names, relying on the benefit to be derived from the perceived association of the Domain Names with the Complainant.
E. Reverse Domain Name Hijacking
The Complaint has succeeded and there is nothing in the evidence before the Panel to suggest that the Complainant has pursued this complaint for any reason other than to protect its trade mark rights.
The Respondent contends that the Complainant deliberately delayed raising complaint with the Respondent about the First Domain Name until after the Respondent had devoted large amounts of time and money developing the website connected to the First Domain Name in order to cause the Respondent maximum damage. The Panel accepts the Complainant’s explanation, namely that the existence of the First Domain Name did not come to the attention of the Complainant’s legal team until after the Second Domain Name had been brought to its attention. Why the Complainant did not respond to the Respondent’s email of November 1, 2011, is not explained, but the Panel sees nothing sinister in the absence of a response.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <whichestateagency.com> and <whichmediagroup.com>, be transferred to the Complainant.
Date: December 19, 2012