WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bank of Scotland Plc v. Shelley Roberts, Diversity Network
Case No. D2015-2310
1. The Parties
The Complainant is Bank of Scotland Plc of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Crowell & Moring, LLP, Belgium.
The Respondent is Shelley Roberts, Diversity Network of Cardiff, Wales, United Kingdom, represented by UDRP POLICE DBS, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <halifaxcarfinance.com>, <halifax.com> and <halifaxliving.org> 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 December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 18, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. On January 4, 2016, the Respondent requested an extension of the due date for Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time to submit a Response until January 14, 2016. The Response was filed with the Center on January 14, 2016. On January 22, 2016, the Complainant filed a Supplemental Filing with additional annexes. This supplemental filing is discussed below.
The Center appointed Andrew D. S. Lothian, Matthew S. Harris and The Hon Neil Brown Q.C. as panelists in this matter on February 1, 2016. The Panel finds that it was properly constituted. Each member of 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 Scotland’s oldest bank and provides a wide range of financial services. The Complainant is the holder of a variety of registered trade marks for the word mark HALIFAX including, for example, Community Trade Mark registered number 042788, registered on October 19, 1998 in international classes 9, 36 and 37. The Complainant’s HALIFAX mark and brand derives from the Halifax Building Society, created in 1928, whose history itself dates back to 1852 when one of its predecessor entities was founded in Halifax, West Yorkshire, United Kingdom. The HALIFAX mark is well-known in the United Kingdom and is a high street brand in respect of various financial services including banking and mortgage lending.
The disputed domain name <halifax.com> was originally created on October 11, 1995. According to screenshots from “www.archive.org” and “www.domaintools.com”, between 1997 and August 2015, the associated website had been operated by its several registrants in various different ways. In 1997 and again in 2004, it featured a directory site for Halifax county, Virginia, United States of America (“USA”), In 1998, it was the website of an Internet service provider in South Boston, Virginia, USA. In 2012 it was a city portal for the city of Halifax, Nova Scotia, Canada and also a pay-per-click site featuring advertisements unrelated to financial services. Similar pay-per-click use resumed in 2014. In 2015, the city portal was reinstated and a screenshot of the corresponding website dated August 23, 2015 shows the site describing itself as a “dual city business directory” relating to the city of Halifax, Nova Scotia, Canada and to the town of Halifax, West Yorkshire, United Kingdom. The said disputed domain name was offered for general sale by its previous registrants, initially in 2012 and 2013 via the pay-per-click websites which stated that it “may be for sale” and more directly by a listing on a domain name auction website in July 2013 when the sale price was listed as USD 325,000, although the domain name did not reach its reserve price before the auction ended.
The Respondent is a private limited company which states that it specialises in the development and marketing of online and offline businesses. By a contract dated September 3, 2015, the Respondent acquired the disputed domain name <halifax.com> from its previous registrant. According to a screenshot from an escrow service website, the acquisition price of USD 175,000 changed hands and the transaction closed on September 4, 2015. The two remaining disputed domain names, <halifaxliving.org> and <halifaxcarfinance.com> were created on September 5, 2015 and entries on the respective WhoIs records show that the creation times were just under an hour apart.
On September 29, 2015, a representative of the Respondent initiated correspondence by email with internal representatives of the Complainant with reference to the disputed domain name <halifax.com>. In this and subsequent emails, both to internal and external representatives of the Complainant, the Respondent stated variously that it had acquired <halifax.com> to redevelop the website or to use the traffic for “starter sites” or “drop ship” sites. It also stated that the said domain name was to be auctioned. The Respondent raised an issue with the Complainant which it said arose from a large volume of email received by the Respondent relative to problems with logins to the Complainant’s service and added that this must be a security concern for the Complainant. The Respondent enquired as to whether the Complainant would be interested in purchasing or renting the said domain name or “for us to set up an affiliate site to sell Halifax bank products on it”. In later correspondence, the Respondent also mentioned the disputed domain name <halifaxcarfinance.com> as available for sale along with another domain name <halifaxcarloans.co.uk>. The Respondent followed up its correspondence with messages stating that it had received offers for <halifax.com> from foreign investors “but would like to give you the chance before it is sold at auction”.
On October 13, 2015, the Complainant replied to the Respondent that it did not respond to speculative or unsolicited requests about domain purchases and invited the Respondent to make contact with its external advisers. The said advisers initially enquired as to who the Respondent was, mentioning that the Respondent was the fourth or fifth company to make an approach with regard to selling the said domain name over the previous two years. The advisers then concluded their correspondence with the Respondent on October 16, 2015 stating that they would respond again should the Complainant wish to discuss anything further.
A screenshot of the website associated with the disputed domain name <halifax.com> dated October 29, 2015 shows that the site had been changed from the directory site as shown on the screenshot of August 23, 2015 and now was titled “Halifax Financial Services Business Listings”, soliciting enquiries for car, home or life insurance, cash advances, mis-sold PPI (an acronym for payment protection insurance), and from advertisers seeking targeted leads and online exposure. Under the heading “About Halifax.com” the site stated inter alia “We are Halifax.com the official financial services directory for the UK”. The site also featured a banner stating “Helping you build connections for a stronger financial future”.
On December 19, 2015, in an informal email to the Center, a representative of the Respondent stated inter alia “I am offering to take down any financial or any other trademark infringements as its not working for me anyway. I am fully aware of trademarks that are currently under halifax.com. My main purpose for halifax.com was to start a gay fetish website as that’s my hobby and what I love in life. The reason I purchased halifax.com was it had 85,000 direct page views. I purchased it for 175k knowing all the traffic was direct. I feel when I start my new site you will understand you will be wasting your time and money trying to take this any further as it won’t infringe on any trade marks. Please let me know if you would like to see my images for the new halifax.com site. I would also like to offer you the chance to have a link on the new site. Price negotiable.”
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to a trade mark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names have been registered and are being used in bad faith.
The Complainant submits that its HALIFAX trade mark is very well-known all over the world and that its broad use is confirmed in the recent case of Bank of Scotland Plc v. Giovanni Laporta, Yoyo.Email, WIPO Case No. D2014-1539. The Complainant states that it has used its HALIFAX trade mark since 1992 and asserts that the disputed domain name <halifax.com> is identical to such mark while <halifaxcarfinance.com> and <halifaxliving.org> incorporate such mark in their entirety with the addition of generic words “car”, “finance” and “living” and are therefore confusingly similar to such mark. The Complainant adds that “car finance” increases confusion as it refers to specific financial services provided by the Complainant and that “living” is confusing in view of the Complainant’s charitable activities via a partnership with a family support charity that helps parents creating a better living for their children.
The Complainant refers to the Respondent’s offers to sell the disputed domain name <halifax.com> and states that the other two disputed domain names, <halifaxcarfinance.com> and <halifaxliving.org>, redirect to the website associated with <halifax.com> offering a so-called “financial services directory” which contains links to websites of the Complainant’s competitors.
The Complainant asserts that it need only make a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It adds that the Respondent is not commonly known by the disputed domain names, has not acquired trade mark rights therein and that its use or registration thereof is not authorised by the Complainant. The Complainant contends that in the absence of any licence or permission from the Complainant to use its trade mark, no actual or contemplated bona fide legitimate use of the disputed domain names could reasonably be claimed. The Complainant asserts that the use of the disputed domain names for a website resolving to the Complainant’s competitors does not constitute a legitimate use according to the Policy.
The Complainant asserts that at the time the Respondent registered <halifax.com> it must have known of the Complainant and its trade marks. The Complainant states that this is demonstrated by the fact that the Respondent contacted the Complainant offering to sell two of the disputed domain names, by the well-known nature of the Complainant’s trade marks, by the use of the Respondent’s website for links to financial services, and by the fact that a simple trade mark search would have revealed the Complainant’s presence. The Complainant submits that such knowledge suggests bad faith and adds that the disputed domain names suggest an endorsement or affiliation with the Respondent’s service by the Complainant. The Complainant adds that the impression of an endorsement is proven by the fact that the Respondent states that it has received “a high level of emails in regard to Halifax bank problems with logins” thus showing that Internet users are confused by the Respondent’s website. The Complainant states that such confusion has been used by the Respondent to attempt to sell the disputed domain names to the Complainant with pressure sales tactics relative to security concerns and alleged offers from third parties. The Complainant submits that this shows that the disputed domain names have been acquired primarily for the purpose of selling, renting or otherwise transferring them to the Complainant for valuable consideration in excess of documented out-of-pocket costs, referencing an email in which the Respondent indicates that it would be unlikely to accept offers for <halifax.com> below USD 1,000,000.
The Complainant asserts that the registration of the three disputed domain names evidences that the Respondent has engaged in a pattern of preventing the Complainant from reflecting its mark in corresponding domain names. The Complainant concludes that it cannot be excluded that the Respondent may use the disputed domain names for fraudulent activity and adds that the Complainant operates in a regulated sector where there is a high risk of such activities and that the Respondent itself alluded to security concerns.
In its supplemental filing, the Complainant asserted that new factual allegations and issues had been raised by the Respondent which could not have been anticipated at the time of filing the Complaint and that submissions had been made by the Respondent which called into question the integrity of evidence submitted by the Complainant. The Complainant therefore sought leave of the Panel to submit the supplemental filing which sought to respond to certain key allegations.
The Complainant referred to the Respondent’s email of December 19, 2015 in which the Respondent claims that it will start a “gay fetish” website. The Complainant notes that the Respondent does not prove that it made preparations to modify the associated website and states that in fact the Respondent kept the infringing site in place which it submits created a likelihood of confusion for a prolonged period. The Complainant asserts that the Respondent’s proposed change of use would damage its trade mark still further and adds that it is a threat to inflict damage on the Complainant in an attempt to extort money for a voluntary transfer of the disputed domain names.
The Complainant submits that the previous use of the website associated with the disputed domain name <halifax.com> is irrelevant and misleading as it relates to third party use of the disputed domain name before its acquisition by the Respondent, adding that the Respondent never made or contemplated a bona fide use thereof. The Complainant states that the Respondent deleted the direct reference to the United Kingdom from its website after being notified of the Complaint but states that this does not diminish the Respondent’s bad faith and adds that the fact that Halifax is the name of a Canadian city is of no relevance as the Respondent is using the disputed domain name to create confusion with the Complainant’s trade mark without any connection to the name of a city.
The Complainant asserts that the Respondent cannot claim that it did not target the Complainant and its mark at the time of registration because of the dates of acquisition and registration of the respective disputed domain names and because the Respondent contacted the Complainant during the same month with an unsolicited offer to sell the disputed domain names. The Complainant adds that the Respondent provides no proof that it offered the disputed domain names for sale to third parties and submits that this would in any event be irrelevant due to the Respondent’s targeting of the Complainant via the registration and use of the disputed domain names.
The Respondent does not contest the identity or confusing similarity between the disputed domain names and the Complainant’s trade mark but adds that the Complainant’s burden requires more than the existence of such mark. The Respondent asserts that this is not a case of abusive registration or trade mark infringement but of the Complainant’s belief of a better or superior right to the disputed domain names.
The Respondent asserts that it has rights or legitimate interests in the disputed domain name <halifax.com> and notes that previous owners have enjoyed uninterrupted use thereof since October 1995. The Respondent notes that the screenshot history shows that the website has always been used as a portal and directory to various establishments, financial and non-financial in nature and that over time the site developed into a portal for the city of Halifax, Nova Scotia, Canada, offering information and links to hotels and service providers. The Respondent adds that previous owners have always offered <halifax.com> for sale.
The Respondent asserts that sale and purchase of generic/descriptive and geographic domain names is sufficient to confer a legitimate interest on a respondent and produces its purchase agreement and escrow transfer statement in evidence, adding that it purchased the disputed domain name <halifax.com> for a considerable sum, due to its prior use as a successful directory and its value as a geographical indicator, with the purpose of continuing the business directory for a site which claimed 6.2 million exact match Google searches and 2,500 to 3,000 direct type-in unique visitors daily. The Respondent notes that the significant value of the said domain name has been evident in the past when it reached USD 325,000 at auction in 2014 while failing to meet its reserve price.
The Respondent produces a screenshot from August 23, 2015 which it says shows that it improved the site associated with <halifax.com> visually but continued its primary operation as a dual city directory together with developing a premium package to businesses for featured listings. The Respondent adds that Halifax, West Yorkshire, United Kingdom is the place from which the Complainant’s mark is derived.
The Respondent asserts that the businesses listed on the website associated with the disputed domain name <halifax.com> which the Complainant says are its competitors are businesses with offices both in the United Kingdom and Halifax, Nova Scotia, Canada. The Respondent produces screenshots showing business entries on its directory for financial services and estate agency businesses having addresses in Nova Scotia, Canada. The Respondent indicates that it has a right to register and use the said disputed domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase even where the domain name is identical or confusingly similar to the Complainant’s trade mark provided it has not been registered with such trade mark in mind.
The Respondent says that the disputed domain names <halifaxcarfinance.com> and <halifaxliving.org> were registered after acquisition of <halifax.com> in order to complement it as it provides a directory of businesses engaged in various industries including car finance and estate agents. The Respondent produces search engine results which it says indicate that the term “halifaxliving.org” makes no mention of the Complainant but refers to living in the town or city of Halifax, hence the Respondent’s connection with estate agents.
The Respondent concedes that mistakes were made within its organisation as to the manner in which the Complainant was contacted but maintains that its initial registration was with a pure motivation, although executed somewhat awkwardly. The Respondent notes that <halifax.com> was purchased at significant expense and has continued to function as a business directory for the remainder of its ownership and adds that the decision in this case rests on the inference which the Panel takes from the Respondent’s behaviour, noting that the Respondent asserts that the disputed domain name was offered for sale in good faith. The Respondent states that the disputed domain name was not exclusively offered for sale to the Complainant but was first offered to a variety of service providers using the term “Halifax” in trade or which were based in Halifax (whether West Yorkshire, United Kingdom or Nova Scotia, Canada). The Respondent adds that there are over 171 trade marks worldwide for HALIFAX, the majority of which are not owned by the Complainant and therefore could be prospective owners. The Respondent notes that it decided to open up the sale as a public auction due to interest that was generated from these companies and explains that it contacted the Complainant directly as a gesture of goodwill to see if the disputed domain name would be of any interest to Halifax Bank. The Respondent says that it made the Complainant aware that the use of the domain name was for a directory site and adds that the Complainant invited it to discuss matters with the Complainant’s domain name portfolio manager.
The Respondent submits that as the Complainant’s portfolio manager specialises in domain name acquisitions it was able to negotiate openly without detriment to its existing ownership of the disputed domain name, adding that at no point did the Complainant raise the issue of trade mark infringement and noting that the portfolio manager led the Respondent to believe that they had discussed the prospect of purchasing the disputed domain name with previous owners in the past. The Respondent acknowledges that its representative may have made exaggerated claims as to the value of the disputed domain name but believed that these were being made in the context of a negotiation.
The Respondent denies that that the disputed domain name <halifax.com> disrupts the Complainant’s business or prevents it from reflecting its mark in a corresponding domain name, noting that the domain name has co-existed alongside the Complainant for over 20 years and has changed hands three times. The Respondent adds that the Complainant has not taken action against the previous owners for offering the said domain name for sale to the public and that such lack of objection provided the Respondent with reasonable grounds to believe its registration was lawful. The Respondent contends that the Complainant has failed to put forward evidence of targeting at the time of registration and that the benefit of the doubt favours the Respondent, noting that it is ludicrous to suggest that the Respondent would acquire a domain name for a considerable figure with the intention of abusing a specific trade mark owner.
The Respondent asserts that following the purchase for a considerable sum the Respondent is within its rights to sell its domain name and in a good faith effort to offer it for sale to a party who may have an interest in it, submitting that it the Respondent cannot have shown bad faith when it was offering the disputed domain name to anyone who might be interested. The Respondent states that the Panel should not infer the Respondent’s state of mind when registering the disputed domain name from later acts and asserts that the significant investment in the domain name and its continued use as a directory site prior to the correspondence with the Complainant point towards a good faith registration. The Respondent adds that it does not share the qualities of a prototypical cybersquatter.
6. Discussion and Findings
To succeed in respect of each of the disputed domain names, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary issue: Complainant’s Supplemental Filing
In terms of paragraph 10 of the Rules a broad power is conferred upon the Panel to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules provided that the Parties are treated with fairness and the proceeding is conducted with expedition. This power extends to the decision to admit supplemental filings and, if necessary, to invite a response thereto from the other party.
Having reviewed the Complainant’s supplemental filing in the present case the Panel decided to admit this on the basis that it was confined to matters which the Complainant could not reasonably have anticipated arising from the Response. Although panels typically allow a party to reply to an admitted supplemental filing made by the other party, in this case the Panel determined that a reply was not necessary. The Respondent had received a full opportunity to state its case in the Response and, due to the restricted nature of the Complainant’s supplemental filing, there was nothing raised which in the Panel’s opinion called for further comment or submissions from the Respondent.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the registered trade mark HALIFAX and that this is confusingly similar to each of the disputed domain names <halifax.com>, <halifaxcarfinance.com> and <halifaxliving.org>, the latter two disputed domain names containing in the second level the Complainant’s mark in its entirety coupled with generic words, while the former disputed domain name in the second level is alphanumerically identical to the Complainant’s mark. The Panel also notes that the Respondent expressly states in the Response that it does not contest this point.
In these circumstances, the Panel finds that the first element under the Policy has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in each disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark 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 trade mark or service mark at issue.”
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, based on its submissions that the Respondent is not commonly known by the disputed domain names, has not acquired trade mark rights therein and has not received permission from the Complainant to use its trade mark in domain names, together with its assertion that the use of the disputed domain names in the manner contended does not constitute a legitimate use according to the Policy. In these circumstances, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain names (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Respondent asserts that it acquired the disputed domain name <halifax.com> because of its geographical associations with the city of Halifax, Nova Scotia, Canada and the town of Halifax, West Yorkshire, United Kingdom. In the Panel’s opinion, had the evidence shown that this disputed domain name was acquired and used in connection with such a purpose then this would have been sufficient to demonstrate the Respondent’s rights and legitimate interests under the Policy. However, the present record shows that having acquired the disputed domain name the Respondent changed the directory site content in a manner which was targeted to the Complainant’s trade mark. The Respondent renamed the site “Halifax Financial Services Business Listings”, inserted a claim to be “the official financial services directory for the UK”, solicited enquiries for car, home or life insurance and sought the public’s interest in cash advances or mis-sold payment protection insurance. These are all activities which have nothing to do with any geographic location named Halifax and everything to do with the Complainant and its trade mark. Accordingly, even if some form of demonstrable preparation to use this disputed domain name in connection with a continuation of the geographic directory site had been produced by the Respondent in evidence, which has not been forthcoming, the Panel would not necessarily have found this to be credible as it would have run entirely contrary to what actually transpired and to the use actually made of the domain name after it came under the Respondent’s control. The fact that the Respondent has produced screenshots of the revised site showing directory entries for financial services advisers and estate agents based in the area surrounding Halifax, Nova Scotia, Canada is nothing to the point. This may represent the original use of the site but it does not necessarily represent the continuation of such original use by the Respondent or demonstrate the Respondent’s intent to continue with such use. More importantly, the listings do not make any sense in the context of the change in emphasis of the entire site to an “official” financial services directory for the United Kingdom brought about by the Respondent.
With regard to the two remaining disputed domain names, <halifaxcarfinance.com> and <halifaxliving.org>, the record shows that these were registered by the Respondent approximately an hour apart and within a day of its acquisition of <halifax.com>. As described by the Complainant and not denied by the Respondent, both such domain names were then pointed into the Respondent’s site as described above. As this site was changed to reference UK financial services, the Panel does not consider that the Respondent may claim rights or legitimate interests in either of these domain names for the same reason outlined above concerning <halifax.com>. Both of the domain names are capable of referencing the Complainant’s trade mark even if “Halifax living” is potentially a phrase that might also suit a geographic directory for a place named Halifax. Neither of the domain names was exclusively used in a manner referencing geographic locations and the Respondent cannot sensibly argue the contrary. The Respondent pointed these domain names to a site which had been changed to reference UK financial services. Furthermore, the Respondent has failed to produce any evidence of its own preparations to use the site as a geographic directory site, other than pointing to the fact that it acquired the copy from the original site owner.
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case against it and accordingly the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names and, therefore, that the requirements of paragraph 4(a)(ii) of the Policy have been met.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
As a preliminary matter on this topic, the Panel requires to consider the appropriate date for the test of registration in bad faith in respect of the disputed domain name <halifax.com>, a domain name which has been in existence since 1995 but which was acquired by the Respondent from its previous registrant in 2015. The Parties appear to be agreed that the correct date for the bad faith test is the acquisition date, being September 3 or 4, 2015 and the Panel is of the same view. See also paragraph 3.7 of the WIPO Overview 2.0 which deals with and distinguishes acquisitions of existing domain name registrations from renewals.
The Complainant’s case discloses an unsolicited approach from the Respondent with an invitation to the Complainant to purchase or rent the disputed domain names <halifax.com> and <halifaxcarfinance.com> or to provide access for the Respondent to the Complainant’s affiliate programme. As the sums referenced by the Respondent exceeded its out of pocket costs related to these disputed domain names, the Complainant argues that this constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy. Secondly, the Complainant focuses on the fact that all three disputed domain names were pointed into the changed website described above which referenced UK financial services, submitting that this is evidence of bad faith registration and use in terms of paragraph 4(b)(iv) of the Policy. These submissions are well supported with evidence of correspondence between the Respondent, the Complainant and the Complainant’s representatives, together with screenshot evidence of the revised website following the acquisition of <halifax.com> by the Respondent.
Dealing with the revised website first, the Panel is satisfied that this constitutes use of the disputed domain names directed to the line of business of the Complainant, namely financial services, and thus to the trade mark value of the term HALIFAX and not the geographic value. The title, banner, description in the “About Halifax.com” section and links soliciting enquiries for multiple financial services on the website to which the domain names were pointed are individually and collectively supportive of that notion. The Panel accepts that the HALIFAX mark is a well-known high street name in the UK for banking and financial services and furthermore notes that the Respondent does not seek to deny knowledge of the mark at the time when it acquired the disputed domain names. Indeed, it expressly acknowledges the trade mark value of the term in its email to the Center of December 19, 2015. In the Panel’s opinion, the nature of the revised website to which the disputed domain names were pointed after the Respondent’s acquisition of <halifax.com> and its registration of <halifaxcarfinance.com> and <halifaxliving.org> is on its own sufficient to constitute use in bad faith.
As regards registration in bad faith, the Respondent would have the Panel believe that it acquired the disputed domain name <halifax.com> in good faith, in part because it paid a lot of money for it and the corresponding website copy, and that the various actions of the Respondent’s representatives post-acquisition as regards website content and approaches to the Complainant were merely “mistakes” or awkward handling within its organisation which have no bearing on the question of bad faith registration.
The Panel cannot accept the Respondent’s case of an alleged good faith motivation as credible. In the first place, the Respondent’s assertions in the correspondence and Response as to its intended use for the disputed domain name <halifax.com> are various and contradictory. These are first that it plans to run the original directory site – the Panel pauses to note that this is the only explanation given in the Response – secondly, that it plans to use the traffic for starter sites or “drop ship” sites, thirdly that it plans to put the domain name <halifax.com> to public auction, and fourthly and finally that it was always the Respondent’s plan to use that domain name for a “gay fetish” website. A fifth use, not discussed by the Respondent in the correspondence, is the actual use of the website to feature various financial services in reference to the United Kingdom as outlined above.
Nor can the Panel overlook the proximity in time between the Respondent’s acquisition of <halifax.com>, its registration of <halifaxcarfinance.com> and <halifaxliving.org>, and its unsolicited approach to the Complainant. On the Respondent’s account, it began with a good faith motivation to acquire and continue a non-financial services geographic directory site yet within a day of the acquisition it registered the financial services focused domain name <halifaxcarfinance.com> and within a further 24 days, it initiated correspondence with the Complainant seeking to invite an offer to purchase the domain name <halifax.com>. It continued to push hard in correspondence for a response with what could be described as a relatively high pressure approach of contact and follow-up, for example referring to the shortness of time available for a decision and to other offers having been received from interested parties. To the Panel’s mind this timeline fits most probably with the Respondent having formed an intention to target the Complainant at the date of acquisition of <halifax.com>, whether or not it also planned to continue the previous directory site.
The Panel is unconvinced by the Respondent’s assertion that its actions were to any extent justified because it believed it was in open negotiations for the sale of <halifax.com>. The correspondence shows that it was the Respondent who made the approach to the Complainant, which was entirely unsolicited, and that the Respondent continually pushed for an answer from the Complainant and its representative in a high pressure style, neither of whom gave the Respondent any encouragement whatsoever for that behaviour. Indeed, the Panel considers that no negotiations ever took place between the Parties, merely a sequence of contact and chasing initiated by the Respondent beginning with the Complainant and, as requested by the Complainant, transferring to the Complainant’s representative. The Complainant and its advisers did not enquire for example regarding the proposed terms or cost of any sale, as would be typical in a negotiation, and merely gave an indication that the Complainant’s advisers had received similar contact in the past. Even had they done so, this would in no way affect the Panel’s conclusion regarding the Respondent’s intent in approaching the Complainant.
The Respondent asks the Panel not to make any inference from the Respondent’s later actions in order to inform its opinion of the Respondent’s intention at the time of acquisition and registration of the disputed domain names. The Panel considers that it is entirely appropriate to make such inferences. Indeed, such subsequent actions may be all that is available to a panel to help inform its decision on registration in bad faith, particularly where, as here, a respondent has provided no contemporaneous material other than an acquisition contract to vouch for its intentions. Contrary to the Respondent’s submissions regarding mistakes and awkward handling, its actions post-acquisition of <halifax.com> strike the Panel as those of a prototypical cybersquatter, in the absence of any evidence to the contrary which, if it existed, could have been adduced by the Respondent. The fact that the Respondent may have paid a large amount of money to acquire the domain name <halifax.com> does not necessarily mean that the acquisition must have been made in good faith. On the contrary, where the domain name concerned has been swiftly made the subject of an unsolicited offer of sale to the owner of an identical and very well-known trade mark in the Respondent’s location, coupled with a change of content to target the business of such mark owner, the inference to be drawn from the evidence is of a bad faith registration with the aim of making a quick profit.
The Panel is unconvinced by the Respondent’s submission that it cannot have shown bad faith when it was offering the disputed domain name <halifax.com> to anyone who might be interested. There is simply no evidence before the Panel that the Respondent ever made such a general offer or that it contacted various third parties. Furthermore, the Respondent’s offer of sale post-acquisition of the disputed domain name cannot be viewed in isolation from the change of content of the corresponding website which the Panel has found was targeted, in the UK financial services context, to arguably the single party who would most likely be interested, namely the Complainant.
In seeking to understand the factual circumstances in this case and to weigh the evidence which the Parties have placed before it, the Panel has also found certain of the Respondent’s submissions in the Response unhelpful to say the least. The Panel is left with the distinct impression that the Respondent took the view that obfuscation, rather than clarification, would be the best way to address the Complainant’s case. For example, the Respondent states that following acquisition its website was “improved visually but continued its primary operation as a dual city directory”. However, the screenshot produced to evidence this is dated August 23, 2015, in other words pre-dating the acquisition of the disputed domain name by the Respondent. There is no evidence before the Panel that the dual city use continued for any particular length of time after the Respondent’s acquisition of <halifax.com>. Likewise, the screenshot produced to evidence an alleged bona fide offering of services of a premium package for businesses is dated January 11, 2016 and thus postdates the commencement of proceedings. The Respondent thus seeks to gloss over the period between acquisition/registration and commencement of proceedings despite the fact that clear evidence has been provided by the Complainant of the UK financial services directory incarnation of the website. These matters in themselves have a negative impact upon the Respondent’s protestations of good faith.
In all of these circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met.
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 <halifaxcarfinance.com>, <halifax.com> and <halifaxliving.org> be transferred to the Complainant.
Andrew D. S. Lothian
Matthew S. Harris
The Hon Neil Brown Q.C.
Date: February 15, 2016