WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Julian Barnes ĖV- Old Barn Studios Limited
Case No. D 2001-0121
1. The Parties
The Complainant is Julian Barnes, c/o Denton Wilde Sapte, Five Chancery Lane, Cliffordís Inn, London EC4A 1BU, UK.
The Respondent is Old Barn Studios Limited, 52 Blucher Street, Suite 116 Lonsdale House, Birmingham B1 1QU, UK.
2. The Domain Name(s) and Registrar(s)
The Domain Name is <julianbarnes.com>.
The Registrar is Register.com, Inc.
3. Procedural History
The Complaint was received by WIPO by email on January 23, 2001 and in hard copy form on January 24, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <julianbarnes.com> ("the Domain Name") was registered through Register.com, Inc and that Old Barn Studios Limited ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On February 6, 2001 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was February 25, 2001. On February 26, 2001 (one day out of time) a Response was received by WIPO by email. On February 27, 2001 the Complainant submitted a response to the Response and on March 1 and 3, 2001 the Respondent submitted further information. The Panel admits all these documents into the evidence.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date originally scheduled for the issuance of the Panelís Decision was March 19, 2001.
However, while writing this decision the Panel noticed that the electronic versions of the documents submitted in this procedure by the Respondent were labelled as having been authored by the original registrant of the Domain Name. Since one of the allegations in the Complaint is that the Respondent is simply a Ďfrontí for the original registrant, the Panel decided that the Respondent should be given an opportunity of providing an explanation. The Procedural Order is appended to this decision. It gave the Respondent until
March 23, 2001 to respond. The Respondentís response to the Procedural Order was received by WIPO on March 23, 2001 and is quoted in full in paragraph 5 below.
In consequence of the above the date for the issuance of the Panelís decision has been re-scheduled for March 26, 2001.
4. Factual Background
The Complainant is a very well known author in the UK. This is not disputed by the Respondent.
The Domain Name was registered through the Registrar on February 1, 2000 in the name of one Mark Hogarth.
On March 24, 2000 lawyers representing the Complainant wrote to Mark Hogarth requesting transfer of the Domain Name.
On May 22, 2000 the decision in WIPO Case number D2000-0235 Jeanette Winterson v. Mark Hogarth was issued in which the Panelist in that case found that the domain names in that case <jeanettewinterson.com>, <jeanettewinterson.org> and <jeanettewinterson.net> were all registered by Mark Hogarth and used in bad faith.
At some time between then and June 30, 2000 the Domain Name together with a large number (believed to be in excess of 100) of other domain names featuring the names of famous authors was transferred to the Respondent.
On June 30, 2000 the Complainant wrote to the Respondent seeking transfer of the Domain Name within seven days. The Respondent replied by email on August 10, 2000 stating that the Domain Name had been acquired as part of a package, that the Respondent had no intention of using it and that if they were sent the forms, the Respondent would have the Domain Name transferred without delay.
On August 14, 2000 the Complainant sent the forms to the Respondent for completion, but no response was received.
The Complaint was launched in January 2001.
5. Partiesí Contentions
The Complainant contends as follows:-
The Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The name of the Complainant is JULIAN BARNES (the "Mark"). The Disputed Domain Name is identical to the Mark, save for the addition of the .com TLD suffix. The Complainant is a well-known author.
The Complainant has, under the Mark, achieved international recognition and critical acclaim for such works. He has had many thousands of copies of his works published. He has had works published in different languages and different countries and the use of the Mark has come to be recognised by the general public as indicating an association with works written and produced exclusively by the Complainant. The Complainant therefore has common law trade mark rights in the mark JULIAN BARNES such Mark being the real name of the Complainant.
The Complainant continues to write and produce such works under and by reference to the Mark. Although the Mark is not yet registered the Complainant has common law rights in it due to his extensive reputation and use of the Mark.
Such common law rights have been recognised as being sufficient to establish and succeed in a Complaint under the Rules in the case of Jeanette Winterson Ėv- Mark Hogarth [WIPO Arbitration Mediation Centre Case No. D2000-0235] and in the case of Julia Fiona Roberts Ėv- Russell Boyd [WIPO Arbitration Mediation Center Case No. D2000-0210].
The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has not consented to the use of the Mark by the Respondent and the Respondent has no legitimate interest in respect of the Disputed Domain Name. In particular, the Respondent:-
Has not made any use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Is not (whether as an individual, business or other organisation) commonly known by the Disputed Domain Name; and
Is not making legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain.
The domain name has been registered and is being used in bad faith.
The Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant relies upon paragraph 4(b) of the Policy.
The Respondent has "engaged in a pattern of conduct", "in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name" (Paragraph 4b(ii)). Annexed to the Complaint is a print out of a search conducted on 6 July 2000 which shows that the Respondent has registered in addition to the Disputed Domain Name, 119 famous authorís names as domain names.
It is submitted that all these domain names including the Disputed Domain Name have been registered in order to prevent the Complainant and other famous authors from reflecting their marks in a corresponding domain name.
As noted in the first section of paragraph 4(b) evidence of registration and use in bad faith is not limited to the circumstances outlined in paragraph 4(b)(i) Ė (iv) of the Policy. It is submitted that there is another reason why the Complainant considers that the Disputed Domain Name was registered in bad faith.
Previously the Disputed Domain Name was registered under the name of Mark Hogarth who was the unsuccessful Respondent in Jeanette Winterson Ė-v- Mark Hogarth [WIPO Arbitration Mediation Centre Case No. D2000-0235] (the "Jeanette Winterson decision"). Annexed to the Complaint is a copy of a WHOIS search conducted on 22 March 2000 which lists <julianbarnes.com> as being owned by Mark Hogarth. A subsequent WHOIS search conducted on 19 June 2000 revealed that the name had been transferred to the Respondent, a copy of the print out of this search is also annexed.
The Complainant through Solicitors Denton Wilde Sapte entered into negotiations with Mark Hogarth for the transfer of the Disputed Domain Name to the Complainant.
Following the Jeanette Winterson decision, Mr Hogarth transferred the Disputed Domain Name to the Respondent.
The Complainant wrote to the Respondent on 30 June 2000 requesting that the Disputed Domain Name was transferred to the Complainant within seven days. The Respondent e-mailed the Complainant on 10 August 2000 stating that they were willing to transfer the Disputed Domain Name to the Complainant, and requesting to be sent a copy of the transfer forms.
The Complainant wrote to the Respondent on 14 August 2000 enclosing the transfer forms. No response has been received.
Further, the Complainant conducted a company search of the Respondent on 20 June 2000 and found that the Respondent, Old Barn Studios Limited, had no directors at that time. Its sole director MCS Directors Limited resigned on 26 May 2000. The Complainant also conducted a company search on 3 January 2001 and found that the Respondent, Old Barn Studios Limited, now has one director, Iain Murray Mackay, an IT consultant of 64 Westfield Road, Surbiton, Surrey, KT6 4EJ. The Complainant has been informed by Midland Company Services Limited (which is listed as the Company Secretary of the Respondent) that any documentation sent to the Respondent is forwarded to 12 St Lukeís Street Cambridge, which is Mr Hogarthís home address. Annexed to the Complaint is a print out of the British Telecom phone directory taken on 2 January 2001 showing Mr Hogarthís address as 12 St Lukes Street Cambridge.
The Disputed Domain Name was transferred to the Respondent following the Jeanette Winterson decision in an attempt by Mr Hogarth to prevent the Complainant from obtaining the Disputed Domain Name through the WIPO Arbitration procedure. The Complainant believes that the Respondent is holding the Disputed Domain Name as agent for Mark Hogarth or to his order. This belief is further strengthened by the fact that Mr Hogarth has retained ownership of the .net and .org TLD suffixes of the Disputed Domain Name.
In this respect the Complainant relies upon the Complaint filed in respect of the .net and .org TLD suffixes of the Disputed Domain Name which remain in the possession of Mark Hogarth. A copy of that Complaint is stated to be annexed to the Complaint but is not in fact annexed. The annex appears to be a draft multiple complaint covering the Domain Name and three other domain names.
Mr Hogarth has subsequently agreed to transfer the .org and .net TLD suffixes of the Disputed Domain Name to the Complainant but continues to maintain that he has sold the Disputed Domain Name to the Respondent. Given the Respondentís failure to transfer the Disputed Domain Name to the Complainant despite agreeing to do so in the e-mail of 10 August 2000 the Complainant has had no alternative but to file this Complaint.
In a supplemental submission put in response to the Response, the Complainant stated as follows:
"We note that the Respondent has filed a Response in the above Complaint which is out of time as prescribed by the rules. We request that the Arbitrator does not accept the late service of the Response."
If the Arbitrator accepts, as properly served, the Respondent's Response we must bring to the Arbitrator's attention the fact that the final paragraph of that Response is factually incorrect. In particular the final sentence states as follows:
"No attempt has been made by us to sell the domain name to the writer Julian Barnes or another Julian Barnes or indeed anyone else."
In fact the Respondent has attempted to sell the domain name:
(1) to Julian Barnes, by its e-mail of 21 November 2000 to Mark Le Fanu of The Society of Authors (Mr Barnes' representative). The e-mail offered the name in addition to four other names for £1,000; and
(2) by offering the domain name up for auction to the highest bidder on the website afternic.com. (This fact only came to the Claimant's attention on
22 January 2001 following the commencement of these proceedings).
The Respondent's assertions are therefore manifestly incorrect.
The fact that the Respondent has offered the domain name for sale to the Complainant is evidence enough to prove bad faith on the part of the Respondent. However, this bad faith is compounded by the Respondentís incorrect assertion that no such offer was ever made."
The Respondent recites the terms of paragraph 4(a) of the Policy and contends as follows:-
We maintain that paragraph 4(a)(i) does not hold in this case because the mark JULIAN BARNES is not a trademark (service mark). It is a mark under which the writer Julian Barnes trades, but, as will be argued, the mark cannot stand as a trademark because it lacks the necessary level of Ďdistinctivenessí as set by, e.g. in English Law, the Trade Marks Act of 1938.
The Complainantís case rests on the precedent set by Jeanette Winterson v Mark Hogarth (WIPO, case D2000-0235), in which the panel ruled that the mark JEANETTE WINTERSON was a trademark belonging to the Complainant.
The salient points raised by the panel in that case were (DecisionĖD2000-0235):
(a) Jeanette Winterson is a famous author who trades under the mark JEANETTE WINTERSON;
(b) It is not necessary for a trademark to be registered;
(c) A trademark must possess a suitably high level of distinctiveness (Trade Marks Act 1938).
The panel concluded that the mark JEANETTE WINTERSON is a trademark.
With respect, we question that conclusion. For while (a) and (b) taken together may suggest a possible ruling that JEANETTE WINTERSON is a trademark, the fact that the mark is not distinctive (being an ordinary name, shared by other people) means the mark cannot stand as a trademark without violating the necessary feature of distinctiveness.
Our view here is backed by the English Courts, who ruled that ELVIS PRESLEY could not stand as a trademark exactly because the mark Ďdid not reach the level of distinctiveness set by the 1938 Actí (Elvis Presley Trade Marks (1999) RPC 567(C.A.).)
Moreover, as far as we are aware, no US court or English court has ever ruled that a mark acknowledged as being not distinctive (like an ordinary name of a person) could stand as a trademark.
Turning to the actual case at issue here, like ELVIS PRESLEY, the mark JULIAN BARNES is not a distinctive mark (being an ordinary name, shared by other people). Therefore the mark JULIAN BARNES could not stand as a trademark.
Points (2) and (3) (paragraphs 4(a)(ii) & (iii) of the Policy)
The domain name was registered in good faith. We acquired the domain name in
May 2000 and our plan has always been to use the domain to sign post an English literature web site. No attempt has been made by us to sell the domain name to the writer Julian Barnes or another Julian Barnes or indeed anyone else.
In a response to the Complainantís final submission the Respondent states:
"We respectfully ask that if the panel allows the Denton Wild Sapte document of February 27 2001 to be considered then we are allowed this response.
Referring to their points (1) and (2).
We meant nothing more than we never wanted to sell the domain name. It was only after a series of legal threats from Denton Wilde Sapte that we agreed to settle the matter, without legal recourse, by offering the five domain names they sought for no more than the sum we paid for them from the previous owner, together with notary costs. In doing so, we stood to make no profit whatsoever. The offer was refused. We should have made this point clear in our Response and apologize to the panel for not doing so.
Again, this is grossly misleading. It is true that the domain name is parked at afternic (because afternic provide free parking), but it is not for sale."
The Respondentís response to the Procedural Order reads as follows:
"Old Barn Studios Ltd is not a 'front' for Mark Hogarth. Mr Hogarth has a vested interest in the Company (as part of a settlement for the transfer of some domain names he previously owned), and we call upon him occasionally for advice. He helped draft the Response along with several other people in the Company. But he is not on the payroll, nor is he a Company Director (as can be verified at Companies House). He also has no control over ownership of the Companyís domain names.
With respect, though, we believe this is not the issue. The US and English law courts, and indeed trademark registries worldwide, hold that a trademark must attain a necessary level of distinctiveness. In this case, therefore, there is no question of Ďbad faithí, whoever the owner is, because no one has rights to the mark in question.
In some earlier ICANN decisions, the condition of distinctiveness has been set aside without explanation. We respect these decisions, but would ask that the panel in this case clarify whether or not distinctiveness is necessary. Clarification would be most welcome because currently the law courts and trademark registries are making one kind of decision (non-distinctiveness precludes ELVIS PRESLEY from standing as trademark; a fortiori JULIA ROBERTS), while ICANN are making another (JULIA ROBERTS can stand as a trademark)."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
To succeed under this head the Complainant first has to prove that he has rights in a trade mark or service mark. He then has to prove that the Domain Name is identical or confusingly similar to the trade mark or service mark.
This latter point is straightforward. The alleged trade mark or service mark is the Complainantís name with the addition of the generic <.com> suffix. The Panel finds that for the purposes of paragraph 4(a)(i) of the Policy the Domain Name is identical to the Complainantís name.
Under this head, therefore, the only remaining issue is whether Julian Barnes, the name or mark under which the Complainant trades, constitutes "a trade mark or service mark in which the Complainant has rights".
The Complainantís name is not registered as a trade mark under UK trade mark legislation, so the Complainant cannot claim registered trade mark rights in his name. Instead, the Complainant claims "common law trade mark rights in the mark, Julian Barnes". The Respondent agrees that the name of the Complainant is a mark under which the Complainant trades, but argues that it is not a trade mark or service mark of any description, because it lacks the requisite level of distinctiveness. For that the Respondent relies heavily on the Court of Appeal decision in the Elvis Presley case.
Given the concession by the Respondent that the Complainantís name is a mark under which the Complainant trades, it ought to follow that the Complainantís name is a trade mark. The Respondent says "no" and invites the Panel to deal expressly with the issue of distinctiveness. A further question is whether the Policy extends beyond registered trade marks to common law trade marks.
First it is necessary to understand what is a Ďcommon law trade markí in the UK. This involves understanding what is meant by "passing off", because the easiest way of defining a common law trade mark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to passing off. Passing off is a tort based upon the proposition that it is unlawful to represent contrary to fact that oneís goods or services are the goods or services of another. Commonly, such misrepresentations are made by using a name or mark, which identifies the claimant or is otherwise a symbol of his goodwill.
The clearest example of a common law trade mark is a personís name, which as the Respondent has pointed out may sometimes be difficult to register as a trade mark. So, if the Panel writes a novel and falsely represents that the author is Julian Barnes, the Complainant would sue in passing off and would undoubtedly succeed. In that example "Julian Barnes" is the common law trade mark.
The Panel notes that some panels have discussed the issue of secondary meaning in relation to celebritiesí names. Case No. D2000-1532 Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club is a case in point. Traditionally, in the context of passing off, one only needs to consider the question of secondary meaning where the primary meaning is descriptive and does not indicate the claimant. The claimant has to prove that the descriptive primary meaning has been displaced by a secondary meaning. Where celebrities are concerned the concept seems slightly out of place in that by definition celebrities have famous names, which serve to identify them to the world at large. The issue is only likely to be of any significance where, unlike this case, the Complainant is seeking to show rights going beyond the activity for which he or she is well-known (qv Elvis Presley infra).
The matter does not end there, but it is convenient at this stage to deal with the Respondentís claim that the Complainantís name is not distinctive. As is apparent from the example given above, the fact that a name may be difficult to register as a trade mark does not prevent it being a common law trade mark. Indeed, the previous edition of Kerlyís Law of Trade Marks and Trade Names goes further. Paragraph 16-14 on page 356 reads "It is equally no bar to an action for passing off that the false representation relied upon is imitation of a trade mark that is incapable of registration". The footnote to that sentence reads ""Camel Hair Belting" (Reddaway v. Banham) was such a mark; it was hopelessly descriptive".
The Elvis Presley case, which is relied upon by the Respondent, is particularly inapposite since it concerned the use of the singerís name on memorabilia. The court took the view that the singerís name was not distinctive of the merchandise under discussion in that case. In other words no purchasers would see the singerís name in that context as indicating the source of that merchandise. Nothing in that decision suggests that the singer could not have succeeded in a passing off action against another singer falsely representing himself to be Elvis Presley.
Finally, on the issue of distinctiveness, the Panel cannot resist observing that if the name "Julian Barnes" is not distinctive of the Complainant in the context in which the Respondent claims to have intended using the Domain Name (i.e. to signpost an English literature website) and the same is to be said of all the other writersí names used, the signpost was unlikely to be very effective.
The question still remains as to whether the Policy extends to common law trade marks. On the face of paragraph 4(a)(i) of the Policy there is no limit to registered trade marks or service marks. It simply refers to "a trade mark or service mark in which the Complainant has rights". The problem (if there be a problem) stems from the fact that common law rights in passing off do not, strictly speaking, confer rights in anything. They constitute rights (inter alia) to restrain misrepresentations, which are likely to damage the claimantís goodwill. As indicated above, those misrepresentations are commonly made by use of the claimantís name or something similar to it, the claimantís name being a symbol of the claimantís goodwill. It is for this reason that, loosely, they are often referred to as "rights in" the relevant common law trade mark. Certainly it is fair to describe them as "rights in respect of" the relevant common law trade mark, to borrow the terminology from paragraph 4(a)(ii) of the Policy.
The Complainant has established that he uses his name in the creation and promotion of his work from which he makes his living. His name identifies his work. His work is ordered and called for under and by reference to his name. Further the Domain Name is his name and was intended by the Respondent to refer to him. Clearly, the Complainant has a bona fide reason for making the Complaint.
In the view of the Panel the broader interpretation of paragraph 4(a)(i) of the Policy is to be preferred. It is consistent with the wording of paragraph 4(a)(ii). Moreover, generally, the wording of the Policy is such that a purposive construction is called for. The Panel further notes that the overwhelming preponderance of panels regard common law trade marks as trade marks which qualify under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical to a trade mark/service mark in which the Complainant has unregistered rights.
The Panel notes that the majority of the panel in Case No. D2000-1532 Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club described the reasoning in the Jeanette Winterson case (WIPO Case No. D2000-0235) as flawed in that (inter alia) it "has been credited with establishing the principle that common law rights can arise in a proper name". The decision does not explain where the flaw lies. Unless the flaw relates to the word "in", which the Panel has dealt with above, the Panel can only say that it disagrees. The Panel is reluctant to point up areas of disagreement with other panels dealing with other sets of facts, but in this case the decision in the Jeanette Winterson case has a particular significance and criticisms of that decision, insofar as they may impact on this case, need to be addressed.
Rights or legitimate interest of the Respondent
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present, demonstrate the Respondentís rights or legitimate interest in respect of the Domain Name. The Respondent has produced no evidence of any kind to demonstrate the presence of any of those circumstances. The Domain Name is not connected to any active site. All that the Panel has before it is the bare assertion that "our plan has always been to use the domain to sign post an English literature web site". No evidence to support that assertion has been adduced.
Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panelís view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.
In the absence of anything in support of the bare assertion from the Respondent (an assertion scripted by the original registrant) the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy. The Complainant relies upon 4(b)(i) and (ii), which read as follows:
"Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;"
The Complainantís case has two limbs.
First, the Respondent is holding the Domain Name with a view to preventing the Complainant from registering it and has indulged in a pattern of such behaviour. The evidence of the Ďpatterní is to be found in the fact that the Respondent is sitting on a large number of similar domain names.
The Panel finds it difficult to believe that that is or was the intention of either Mark Hogarth or the Respondent, save as part of a plan to sell the Domain Name for a profit, so all hangs on whether or not the motive of the Respondent was to sell the Domain Name to the Complainant at a profit.
Secondly, the Respondent is simply a Ďfrontí for the original registrant, Mark Hogarth, who registered the Domain Name together with a large number of other similar domain names for the purpose of making money. The allegation is that the transfer of the Domain Name to the Respondent was a sham. The money was to be made by selling the domain names to the authors whose names had been taken.
The evidence to support the claim that the transfer of the Domain Name to the Respondent was a sham is twofold:
1. The Company Secretary to the Respondent has informed the Complainant that all correspondence addressed to the Respondent is forwarded on to Mark Hogarthís address in Cambridge; and
2. The Response and the Respondentís follow-up submission in electronic form are both labeled as having been authored by Mark Hogarth.
The Respondent failed to deal with 1. above in its Response and the Panel accepts it as fact. As to 2. above the Respondentís explanation is that Mark Hogarth has indeed assisted with the drafting of those documents and does indeed have a "vested interest" in the Respondent "but he is not on the payroll, nor is he a Company Director (as can be verified at Companies House). He also has no control over ownership of the Companyís domain names."
While it may be an oversimplification to describe the Respondent as a "front" for Mark Hogarth, the further explanation provided is not as helpful as it might be. The extent of the "vested interest" is not explained. The explanation seeks to downplay Mark Hogarthís involvement, but it is to be noted that the Respondent has not denied that all correspondence addressed to the Company Secretary is forwarded automatically to Mark Hogarthís home address.
The Panel concludes that whatever may be the nature of the association between the Respondent and Mark Hogarth, it is so close that the Respondent cannot be regarded as independent of Mark Hogarth and for the purposes of this Complaint the Panel treats them as one.
On that basis is there any reason why the Panel should come to any conclusion different from that arrived at in the Jeanette Winterson case WIPO Case No. D2000-0235? The Panel cannot conceive of any such reason. The Domain Name, together with those the subject of that case, formed part of the portfolio of 130 writerís names registered by Mark Hogarth in February and March 2000.
In March 2000 Mark Hogarth wrote to 10 authors (or their agents) asking them if they wished to purchase the domain names associated with them. The letter to Joanna Trollopeís literary agent dated March 16, 2000 read as follows:
"Dear Pat Cavanagh
You may have read in last Tuesday's The Independent that I have registered a number of domain names linked to high-profile authors. Joannatrollope.com is among them. Since then there has been considerable media and commercial interest in the venture but I am writing to you because I want to give Joanna Trollope first refusal to buy the relevant domains.
The timetable is a bit tight, partly because I am keen to return to my day job of teaching philosophy and partly because Ginanne Brownwell is running the story in next week's NewsWeek, which is out on Monday. When that story breaks I want to auction the names as a bundle while the public interest is still high. The buyer's aim here will be to set up individual sites corresponding to each name and sell books on a commission basis. (This idea has already been implemented in pop music and sport.) After that, I guess it will become more difficult to obtain the domain.
I won't attempt here to present a case that having the most natural domain name and good website can boost sales. One need only visit, for example, stephenking.com or tomwolfe.com.
The price is set at 3% of the writer's 1999 gross book sales. This includes joannatrollope.com, joannatrollope.net, joannatrollope.org. If this agreeable, then please contact me on [Tel. No.] or via [email address].
In light of that letter it is not surprising that the panelist in the Jeanette Winterson case found bad faith registration and use on the basis that Mark Hogarth was publicizing his intention to sell the domain names within days of registering them.
The Panel finds that Mark Hogarth registered the Domain Name in bad faith and was using it in bad faith for the same reasons that the panelist in the Jeanette Winterson came to that conclusion. The Panel finds that the transfer to the Respondent was not an armís length transaction and was designed to protect the Domain Name and others from the inevitable consequence of the finding in the Jeanette Winterson case. Had the transaction been open and above-board, the Response would have explained it. Instead, and notwithstanding the clear allegation in the Complaint inviting an explanation, the Response was to all intents and purposes silent on the topic.
The Panel finds that the Respondent has been dancing to Mark Hogarthís tune. The Panel finds that, in the name of the Respondent, Mr Hogarth has directly or indirectly been pursuing his original plan to make money out of the Domain Name by selling it to the Complainant at a profit. The Panel finds that the statement appearing in the Respondentís follow-up submission that (a) the Respondent never wanted to sell the Domain Name and (b) the offer to sell the Domain Name was only a response to threats from the Complainantís lawyers and was "for no more than the sum [the Respondent] paid for them from the previous owner, together with notary costs" was a self-serving statement scripted by Mark Hogarth to protect his "vested interest" in the Respondent.
In light of the above the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith. If there had been any doubt as to the Respondentís bad faith, its duplicitous behaviour in this administrative procedure would have removed it. The Respondent (under the pen of Mark Hogarth) was seeking to pretend that it was independent of Mark Hogarth.
The consequence of the deceit is that the Complainant and the others who have filed complaints against the Respondent under the Policy have been put to substantial and unnecessary extra expense.
In the result, the Panel having found that the Domain Name is identical to a trade mark/service mark in which the Complainant has unregistered rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <julianbarnes.com>, be transferred to the Complainant.
It will be observed that this decision is almost identical to the Panelís decisions in parallel cases nos. D2001-0122/0123/0209. The reason is that the facts of each of those cases are substantially identical as are the terms of the submissions, which the parties have made to the Panel.
Dated: March 26, 2001