WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Project Blue Limited v. Mark Brooks

Case No. D2015-1326

1. The Parties

The Complainant is Project Blue Limited of Jersey, Channel Islands, represented by Berwin Leighton Paisner, the United Kingdom of Great Britain and Northern Ireland (the “UK”).

The Respondent is Mark Brooks of Oldham, UK, self-represented.

2. The Domain Names and Registrar

The disputed domain names <chelseabarracks.com>, <chelsea-barracks.com> and <chelseabarracks.info> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 2015, 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.

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 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2015. The Response was filed with the Center on August 23, 2015.

The Center appointed Steven A. Maier as the sole panelist in this matter on August 31, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a real estate development company registered in Jersey, Channel Islands. In 2007 or 2008 the Complainant acquired a development site located at and known as Chelsea Barracks, London, which was a former British army barracks dating from the 1860s.

The Complainant is the proprietor of the Community Trade Mark number 012619839 for the mark CHELSEA BARRACKS registered on September 22, 2014 for numerous classes of goods and services.

The Respondent is a private individual resident in the UK. The Respondent registered the disputed domain names on the following dates:

<chelseabarracks.com> on September 6, 2005

<chelsea-barracks.com> on September 6, 2006

<chelseabarracks.info> on February 13, 2007

The Respondent has used the disputed domain names in connection with websites, further details of which are described below.

5. Parties’ Contentions

A. Complainant

The Complainant states that the Chelsea Barracks site is a landmark development site in London which it acquired for in 2007 for GBP 959m. This followed a UK Government announcement on September 6, 2005 that the site was to be sold. The site is to be redeveloped to include residential units and substantial amenities for which planning permission was granted in 2012. The site is located in one of London’s most expensive residential areas and the redevelopment plans have garnered significant publicity and also controversy. The Complainant exhibits examples of press coverage concerning the redevelopment plans. The Complainant refers to hoardings it has erected around the site that prominently display the Chelsea Barracks name and to publicity on its website at “www.chelseabarrackspartnership.com”. The Complainant submits that, owing to extensive publicity and public consultations, the name Chelsea Barracks has become distinctive of the Complainant and its business.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant refers to the trademark CHELSEA BARRACKS referred to above and submits that each of the disputed domain names wholly incorporates that trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant submits that the Respondent has never been commonly known by any of the disputed domain names.

The Complainant points out that the Respondent registered the disputed domain name <chelseabarracks.com> (and also the domain name <chelseabarracks.co.uk>) on September 6, 2005, which was the very same day that the UK Government announced the sale of the site for redevelopment.

The Complainant disputes that the Respondent has ever used or prepared to use the disputed domain names in connection with any bona fide offering of goods or services.

The Complainant exhibits a letter from solicitors for the Respondent dated May 11, 2015 stating “Our client has not used the domains…” but that he registered them in good faith as potential information websites. The letter adds that “Domain names are “allocated on a first come, first served basis.” It also states that the Respondent was prompted to register the disputed domain names when he noticed an article concerning the closure and possible future sale of the Chelsea Barracks’ site.

The Complainant submits evidence by way of screen prints that each of the disputed domain names has been used to resolve to a web page offering an image and two hyperlinks. The first hyperlink is entitled “Contact the owner of this domain” or “Enquire about this domain” and the second “Privacy Policy”. The first hyperlink resolves to a facility upon a different website allowing the user to enter their contact details, and in the case of the disputed domain name <chelseabarracks.info> there appear to be additional links relating to real estate services. The “Privacy Policy” states that the site permits the placement of cookies for advertising purposes. The Complainant states that if the user does not click on either hyperlink, then each of the sites redirects to third party promotional websites which vary on each occasion. The Complainant states that, while it is unclear whether the Respondent is in direct control of the relevant links, it is concerned that some of these third party websites may relate to scams.

The Complainant states that the Respondent’s use of the disputed domain names for parking or landing pages does not confer any rights or legitimate interests in respect of the disputed domain names. The disputed domain names do not comprise dictionary words and phrases and do not in any event correlate to the promotional offers to which the websites ultimately connect.

The Complainant submits that it is difficult to see how the Respondent could possibly demonstrate any rights or legitimate interests in respect of the disputed domain names and that his solicitors’ reference to allocation on a “first come, first served” basis suggests that he does not recognize the need to do so.

The Complainant contends that the disputed domain names have been registered and are being used in bad faith.

The Complainant states that its is clear that the Respondent registered the disputed domain names as a result of the public announcement on September 6, 2005 of the sale of the Chelsea Barracks site for development. The earliest of the disputed domain names, <chelseabarracks.com>, was registered on the same date as the announcement and the Complainant’s legal advisers have confirmed that the registrations were prompted by an article concerning the sale.

The Complainant submits that a finding of bad faith is not precluded by the Respondent’s registration of the disputed domain names prior to the Complainant’s registration of its trademark. Bad faith can be found in a case where there has been substantial media attention of which the respondent is aware and the respondent registers a domain name in order to take advantage of the complainant’s likely rights in a mark: see e.g. 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567. The Complainant also cites SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston, WIPO Case No. D2003-0642 in which the respondent registered the domain name <sbclaboratories.com> on the same day the complainant issued a press release stating that this was to be the name of its new laboratory. Similarly, the respondent in General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 registered the domain name <provotownecentre.com> on the same day a new shopping centre of that name was announced.

The Complainant submits that there is no plausible reason for the Respondent to have registered the disputed domain names other than with the intention of selling the names to the future owner of the Chelsea Barracks development site and/or for using the disputed domain names to attract Internet users for commercial gain.

The Complainant says that the disputed domain names have been used in bad faith in the manner described above. The “Contact the owner of this domain” pages are intended to invite enquiries for the sale of the disputed domain names and the links to promotional websites take unfair advantage of the Complainant’s goodwill because Internet users who visit the websites linked to the disputed domain names will assume they will be visiting the Complainant’s own website.

The Complainant also refers to a Nominet UK domain name case, Mahindra and Mahindra Ltd v. Mr Mark Brooks, Nominet UK Case No. D011298. The Complainant submits that the Respondent was found in that case to have made an abusive registration reflecting a well-known trademark, similarly having argued that he intended to provide an information site.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent states that Chelsea Barracks is a geographical area of London and that an area of that name is recognized in current maps. The Respondent exhibits a map which includes this term.

The Respondent states that the Complainant’s name is Project Blue and not Chelsea Barracks and that there has never been a company named Chelsea Barracks. Furthermore, the Complainant did not have any reputation connected with the name Chelsea Barracks in 2005, 2006 or 2007 when the disputed domain names were registered. The Respondent contends that the Complainant’s joint venture company had no interest in the development site until 2008. The Respondent states that the hoardings to which the Complainant refers have only recently been erected and that, in any event, the Complainant appears to use the name “chelseabarracksSW1”. The Respondent adds that the name Chelsea Barracks has always been displayed at the site and the Complainant’s hoardings are therefore of no significance.

The Respondent submits that two businesses can register the same trademark provided that their areas of business do not overlap.

The Respondent confirms that he registered the disputed domain name <chelsebarracks.com> on the same day that the sale of the development site was made public. The Respondent states that his wife operates a home and pet minding business named Saddleworth Home Minders which has traded since April 2005 and is primarily used by wealthy clients in luxury homes. The Respondent and his wife believed that the development of the Chelsea Barracks site into luxury housing would be an ideal fit with this business, possibly as a franchise, and registered the first of the disputed domain names accordingly.

The Respondent states that he is not a domain broker and has never attempted to sell the disputed domain names. He states that decided to park the disputed domain names until a decision had been made concerning the Chelsea Barracks development and that parking is a legitimate means of keeping a domain name in an active state. The Respondent states that none of the websites linked to the disputed domain names has ever produced any pay-per-click revenue and he exhibits spreadsheets to that effect. He states that he had no control over the websites to which the disputed domain names linked but believed they would attract sponsored links related to the Chelsea area and military themes.

The Respondent states that he included a contact facility out of courtesy and to facilitate a means of communication with the owner of the disputed domain names. He has not taken advantage of the “for sale” option offered by the provider of the parking pages to which the disputed domain names are linked.

The Respondent submits that owing to the time taken to redevelop the Chelsea Barracks site it would have been foolish to develop the home minding business or franchise as originally intended. Instead, the Respondent has decided to compile historical information concerning Chelsea Barracks and to use this as a temporary information page. The Respondent exhibits the content of the proposed historical information, comprising text and images, which he states would already have gone live but for the filing of this administrative proceeding.

The Respondent refers to and exhibits correspondence with the Complainant’s solicitors. The correspondence is marked “without prejudice”. The Respondent refers to this correspondence as evidence that it has refused offers of GBP 1,000 and subsequently GBP 2,500 for the disputed domain name <chelseabarracks.com> and the domain name <chelseabarracks.co.uk> and submits that it is clear from this that he has not attempted to sell the disputed domains names. The Respondent reiterates that he purchased the disputed domain name (sic, the Panel will assume the Respondent intends to refer to all three of the disputed domain names) for the purposes of his family home minding business and that it has never been his intention to sell the disputed domain name(s).

The Respondent disputes the Complainant’s allegations concerning the Nominet UK proceeding referred to by the Complainant.

The Respondent submits that it is clear from the correspondence referred to above that he has not acted in bad faith. The Respondent submits that the Complainant is making an attempt at reverse domain name hijacking and seeks a finding to this effect. Specifically, the Respondent contends that the Complainant has failed to make full disclosure of its dealings with the Respondent is using this administrative proceeding as a device to secure the disputed domain names after commercial negotiations have broken off.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the mark CHELSEA BARRACKS by virtue of its Community Trade Mark registered on September 22, 2014. This element under paragraph 4(a) is a threshold test intended only to establish the standing of the Complainant to bring an administrative proceeding and is not therefore material to this element that each of the disputed domain names was registered before the date of the Complainant’s trademark registration (although that consideration could certainly be relevant to the remaining elements under paragraph 4(a)).

Each of the disputed domain names is identical, or virtually identical, to the Complainant’s trademark CHELSEA BARRACKS, but for the space between the words comprising the trademark, the hyphen in one of the disputed domain names and, in the case of each of the disputed domain names, the generic Top-Level Domain (“gTLD”) “.com” or “.info” which is typically to be disregarded for the purposes of comparison. Accordingly, the Panel finds that all three of the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

As a preliminary matter, the Panel does not accept that the name Chelsea Barracks is merely a geographical identifier or a dictionary term. It is the name of a specific site and buildings of some historical notoriety. Furthermore, it was identified on September 6, 2005 as a site to be sold by the UK Government for commercial redevelopment. In the view of the Panel, therefore, the name and mark CHELSEA BARRACKS was capable from at least that date (if not before) of commanding valuable commercial goodwill in the nature of unregistered trademark rights.

As discussed in paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a domain name registrant may in certain circumstances have rights or legitimate interests in a domain name comprised of dictionary words where the domain name is used to trade in goods or services genuinely reflected by those dictionary words and not to trade of third party rights in the relevant words. In this case, as stated above, the Panel is not of the view that the name and mark CHELSEA BARRACKS is only a dictionary term (or a mere geographical identifier). Nor does the Panel find that the Respondent has used the disputed domain names in connection with any goods or services genuinely connected with the CHELSEA BARRACKS name and mark.

The Respondent admits that he registered the first of the disputed domain names on the same day as the UK Government announcement of the sale of the Chelsea Barracks site for redevelopment and as a direct result of that announcement. However, the Panel regards as highly implausible the Respondent’s claim that he registered the disputed domain names in connection with his wife’s home and pet minding business (located over 200 miles away) or a potential franchise of that business to be conducted at the Chelsea Barracks location. Each of the disputed domain names comprises the name and mark CHELSEA BARRACKS in its entirety and without adornment and none of the disputed domain names contains any indication of any home minding or any other business to be conducted by reference to that location. Nor has the Respondent produced any evidence of any preparations to use any of the disputed domain names in connection with the business referred to.

The Respondent also submits that, owing to delays in the Chelsea Barracks site being redeveloped, he later decided to use the disputed domain names for the purpose of historical information websites. While the Panel notes the proposed web content which the Respondent has submitted in connection with these proceedings, the Respondent accepts that the content has never been displayed on any of the websites in question and the Panel is not persuaded that the content in question was developed for any purpose independent of the present dispute. In any event, the Respondent states that any such historical information pages would have been temporary holding pages only, pending the use of the disputed domain names for the home minding business.

In the circumstances, the Panel is not of the view that the Respondent has shown any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with any bona fide offering of goods or services (paragraph 4(c)(i) of the Policy) or that he is making any legitimate noncommercial or fair use of the disputed domain names (paragraph 4(c)(iii) of the Policy).

The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain names for the purpose of parking pages which have offered both the facility to contact the domain name owner and links to various promotional websites. While these activities may not be objectionable in themselves, they do not of themselves confer any rights or legitimate interests in respect of the domain names in question (see paragraph 2.6 of the WIPO Overview 2.0). There being no other evidence of any relevant rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

It is common ground in this case that the Respondent registered the disputed domain names with knowledge of and by reference to the Chelsea Barracks real estate site and as a result of the UK Government announcement that the site was to be sold for commercial redevelopment. As stated above, the Panel finds that as a result that announcement (if not before) the name and mark CHELSEA BARRACKS was capable of commanding commercial goodwill in the nature of unregistered trademark rights. The Panel also takes note of the previous UDRP cases cited by the Complainant in which bad faith registration was found of newly announced trading names in which a trademark owner was likely to have rights: see 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567; SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston, WIPO Case No. D2003-0642; General Growth Properties, Inc., and Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

The Panel accepts the Respondent’s contentions that the Complainant did not exist at the date that any of the disputed domain names was registered, that the Complainant is not named Chelsea Barracks and that much of the publicity connecting the Complainant with the Chelsea Barracks name is recent. However, in the view of the Panel, none of these matters precludes a finding of bad faith in this case. The name and mark CHELSEA BARRACKS having commanded unregistered trademark rights from at least September 6, 2005, the identity of the owner of those trademark rights at any particular time is unimportant. Such earlier owner or owners were merely the Complainant’s predecessors in title and the Panel finds that the Complainant is the party currently entitled to the trademark in question. The Panel having found that protectable goodwill exists in the name and mark CHELSEA BARRACKS, which is owned by the Complainant, it is not necessary that the Complainant has itself been known by the name in question. In the Panel’s view, a party may take unfair advantage of the goodwill in a name or mark by misrepresenting an association with the “official” trademark owner, and it is unimportant in this case that the consumer knows the identity of that trademark owner other than as the originator of the goods or services supplied under the name or mark.

In this case, each of the disputed domain names comprises the CHELSEA BARRACKS name and trademark without any additional terms that might distinguish the disputed domain names from the mark in which commercial goodwill subsists. In the absence of any legitimate explanation, this is plainly to take unfair advantage of the goodwill in the mark because, as the Complainant submits, Internet users are likely to be misled into believing that the disputed domain names are owned by, authorized by or otherwise connected with the Complainant. This is the case even if it becomes clear on visiting connected websites that they are unconnected with the Complainant, as the Internet user will have been drawn to those websites, and any commercial offerings to which they themselves link, by virtue of the Respondent’s misleading use of the disputed domain names.

The Respondent insists that it was never his intention to sell the disputed domain names to the Complainant and that the “without prejudice” correspondence between the parties makes this clear. The Panel is satisfied that the “without prejudice” correspondence constituted a genuine attempt by the Complainant to resolve the dispute without resort to these administrative proceedings and was legitimately intended by the Complainant to constitute privileged communications. Accordingly, the Panel will disregard the “without prejudice” communications and rejects the Respondent’s claim that the Complainant has improperly concealed the fact of these communications. However, the Panel notes that, even if there were admissible evidence of the Respondent having rejected offers of GBP 1,000 and subsequently GBP 2,500 for one or more of the disputed domain names, this would be far from persuasive that the Respondent did not intend to sell the domain names to the Complainant (for a higher price).

Nor does the Panel consider it of assistance to the Respondent that he has received no pay-per-click revenue from the parking pages to which the disputed domain names have connected. On the contrary, it is reasonable to infer that one of the Respondent’s intentions in using the disputed domain names has been to derive such revenue if possible, although he has not succeeded to date in the regard. In the view of the Panel, for the reasons set out above, the use of the disputed domain names to connect to commercial third party websites constitutes taking unfair advantage of the Complainant’s goodwill in the CHELSEA BARRACKS name and mark.

The Panel does not consider the prior Nominet UK dispute concerning an unrelated domain name to have any significance in the present proceedings.

Based on the considerations set out above, the conclusion of the Panel is that the Respondent registered and has used the disputed domain names in a manner that takes unfair advantage of the Complainant’s goodwill in the name and mark CHELSEA BARRACKS. Each of the disputed domain names comprises an unadorned appropriation of the Complainant’s name and mark and in the view of the Panel such disputed domain names are inherently abusive in the absence of any legitimate explanation. Furthermore, the Panel finds that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his websites (paragraph 4(b)(iv) of the Policy). In the circumstances, it is unimportant whether or not the Respondent’s primary motivation was to sell the disputed domain names to the trademark owner for a sum in excess of his documented out-of-pocket costs (paragraph 4(b)(i) of the Policy), although the Panel accepts the Complainant’s submission that this is the most likely explanation for the Respondent’s conduct.

The Panel finds in the circumstances that the disputed domain names have been registered and are being used in bad faith.

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 names, <chelseabarracks.com>, <chelsea-barracks.com> and <chelseabarracks.info> be transferred to the Complainant.

There is no basis for a finding of reverse domain name hijacking.

Steven A. Maier
Sole Panelist
Date: September 7, 2015