WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FARROW & BALL LIMITED V ARTWALL

Case No. D2000-1041

 

1. The Parties

The Complainant is Farrow & Ball Limited, a limited company incorporated in England with its principal place of business at Uddens Trading Estate, Wimborne, Dorset BH21 7NL, England. The Respondent is Artwall of 354 Upper Richmond Road, Putney, London SW15 6TL, England.

 

2. The Domain Name and Registrar

The domain name in issue is "farrowandball.com".

The Registrar is Core Internet Council of Registrars ("Core"). Confirmation from Core was received by the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2000, stating that the Complainant had forwarded to it a copy of the Complaint and that the Respondent was the current registrant of "farrowandball.com".

 

3. Procedural History

The Complaint dated August 14, 2000, was received by the Center on the same day.

Notice of the proceedings was served on the Respondent in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy") on September 12, 2000. The Respondent filed a response to the Complaint by way of a letter dated September 21, 2000, which was received by the Center on September 25, 2000, before the October 1, 2000 deadline.

A Panel was constituted on October 3, 2000, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.

The Complainant e-mailed the Center on October 2, 2000, commenting on the Response and again on October 5, 2000. The Panel in its discretion admits and has taken these comments into account.

The date scheduled for the Panel to render its decision is October 17, 2000.

The Complainant is represented by M D Furber & Co, Solicitors, ĎDaglandsí Timber Hill, Lyme Regis, Dorset DT7 3HQ. The Respondent in this proceeding appears to be a business trading under the name Artwall, which is represented by Mr. R. W. Malston, who describes Artwall as being "my company".

 

4. Factual Background

The Complainant manufactures decorative paint and wallpaper and has been trading since 1947. The annual turnover of the Complainant for the year ended March 31, 1999, was approximately £6m. The Complainant currently has 53 stockists of its products in the UK and sells into various other countries. The Complainantís website at www.farrow-ball.co.uk has been operating since December 1999.

The Complainant is the exclusive licensee of a number of trade marks for "FARROW & BALL" registered in the United Kingdom, the European Community, the U.S.A., Australia, Canada and New Zealand; these registrations broadly cover paints and wallpapers (classes 2 and 27 respectively).

The Complainant says it started using the name "FARROW & BALL" in 1947. The date of the earliest trade mark application is November 1994.

It appears from the "uwhois" search dated September 4, 2000, provided by the Center that the Respondent registered the domain name "farrowandball.com" on February 3, 2000. The Respondent has also registered the domain name "farrowandball.co.uk".

On June 1, 2000, the Complainantís solicitors wrote to Mr. Malston insisting that both of the domain names referred to above be assigned to the Complainant without cost to the Complainant. This letter refers to an earlier attempt to sell the names to one of the Complainantís stockists. No details have been put in evidence of this earlier attempt. The Complainantís solicitors stated in their June 1, 2000, letter that if assignment did not take place within 7 days, the Complainant would bring legal proceedings to compel an assignment.

On July 1, 2000, the Complainantís solicitors received an email from domain-4-u@uk2.net stating "if your client is interested in obtaining the names farrowandball.com and farrowandball.co.uk some sensible negotiation would be far more appropriate than legal threats".

On July 10, 2000, the Complainantís solicitors responded to the above email stating that the Complainant was not prepared to pay any more than the Respondentís reasonable costs involved in transferring the domain names (put at a maximum of £250) and seeking a written undertaking not to try to register any other domain names including "farrow" and "ball" in combination.

No response having been received to their July 10, 2000 letter, the Complainantís solicitors commenced these proceedings. On September 21, 2000, the Respondent filed with the Center a letter which referred to and enclosed an earlier letter dated August 18, 2000, from the Respondent to the Complainant. Subsequent correspondence from the Complainant challenges whether this letter was ever actually received by them but, as appears below, the point is unimportant.

 

5. The Claimantís Contentions

These may be summarised as follows:

The domain name "farrowandball.com" is confusingly similar to the FARROW & BALL trade marks used by the Complainant and is phonetically identical;

The Complainant is the exclusive licensee of various trade mark registrations for FARROW & BALL in Europe and other parts of the world for paints and wallpapers;

The Respondent has no rights or legitimate interests in the domain name "farrowandball.com" and the domain name has been registered, and is being used, in bad faith;

The Respondentís registration of the domain name is calculated to deceive the public with a view to passing off the Respondentís goods or services as those of the Complainant or is an attempt to pressurise the Complainant to pay the Respondent a large sum of money;

Since the combination of "farrow" and "ball" is unusual, the name was deliberately chosen by the Respondent; it does not bear any resemblance to any personal or trading name of the Respondent;

Although registered on February 3, 2000, there is no active site under the domain name "farrowandball.com"; the Complainant contends this is evidence that it was not registered for the purpose of a legitimate trade;

The Respondent (or someone acting on its behalf) has offered to sell the domain name in dispute to the Complainant;

The Complainantís offer of July 10 to pay the Respondentís reasonable costs only in return for the transfer of the domain name has gone unanswered.

 

6. The Respondentís Contentions

The Panel notes that the Respondentís letter of September 21, 2000, does not comply with the rules under the Policy and, in particular, with rule 5(b)(i) as it does not respond to the statements and allegations in the Complaint. The Panel exercises its discretion and admits the Response and draws such inferences as it deems appropriate from the Respondentís failure to address specific points in the Complaint. According to the letter of August 18, 2000 annexed to the September 21, 2000 letter:

The Respondent was aware of the prior registration of "farrow-ball.com" and "farrow-ball.co.uk" at the time it registered the domain name in dispute;

The Respondentís business, Artwall, has been trading for twenty years in the interior design business producing interior design and hand painted furniture;

The Respondent contends that it intended to "eventually link the Farrow and Ball names with a site under [its] own name, Ö as a user of the Farrow and Ball product. ThisÖ was in the hope that business would come our way via the Internet, of clients who would be interested in our services using Farrow and Ball products.";

The Respondent stated that it has already gone some way down the line with regard to work constructing [its] site and suggested in its September 21, 2000, letter that if the Complainant still had strong objections to it using the names in this way "then please call me to discuss this further";

The Respondent contends that it cannot be passing off as it is neither a manufacturer nor a retailer of paint. It does however use "a significant amount of Farrow and Ball paint" within its projects.

 

7. Discussion and Findings

The Panel has reviewed the Complaint, the documents annexed to the Complaint, the Response and the emails from the Complainant dated October 2 and 5, 2000. In the light of this material this Panelís finding are set out below.

The domain name is confusingly similar to various of the registered trade marks licensed to the Complainant.

The Respondent has admitted that the name was deliberately chosen and intended as a reference to the Complainantís products.

The evidence does not indicate that the Respondent had any legitimate basis to register the domain name. The Panel in any event regards the lack of any real corroboration of the supposed intended use, when combined with the clear willingness to enter negotiations (as set out in the July 2000 e-mail), as sufficient to show that on the balance of probabilities the registration was in bad faith. The question of whether or not the Respondentís alleged intended use of the name would have been legitimate is dealt with below.

In any event, the Panel considers that, absent the attempted sale, the proposed use declared by the Respondent would amount to an attempt to attract for commercial gain Internet users to the site at the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondentís website or of products or services featured on the website and/or at the Respondentís premises in Fulham. Even the Respondentís declared intended use would constitute use of the disputed domain name in bad faith.

The Panel therefore concludes that the Complainant is correct and that the name was registered in bad faith. Subsequent events constitute use in bad faith.

 

8. Decision

In the light of the above findings, the Panelís decision is as set out below.

The domain name is confusingly similar to the Complainant's trade marks (see paragraph 4(a)(i) of the Policy).

The Respondent has no rights or legitimate interests in the domain name (see paragraph 4(a)(ii) of the Policy).

The domain name was registered and is being used in bad faith (see paragraph 4(a)(iii) of the Policy). It was in all probability registered primarily for the purpose of selling it to the Complainant for consideration in excess of the Respondentís out of pocket costs (see paragraph 4(b)(i) of the Policy). Even if the intended use was for a site concerning the Complainantís products, such use would in all circumstances be use in bad faith. (see 4(b)(iv) of the Policy).

This Panel directs that the domain name be transferred to the Complainant.

 


Nick Gardner
Panelist

Dated: October 16, 2000