WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halifax plc v. Ian Hicks
Case No. DTV2001-0012
1. The Parties
The Complainant in this administrative proceeding is Halifax plc, a company registered in the United Kingdom.
The Respondent is Ian Hicks of Mordant Music, Flat B, Sutton Wick Lane, Drayton, Oxford, United Kingdom.
2. The Domain Name and Registrar
This dispute concerns the domain name <halifax.tv> ("the Domain Name").
The registrar with whom the Domain Name is registered isThe .TV Corporation International, a Delaware corporation.
The Domain Name was registered on November 29, 2000.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on May 11, 2001, and in hardcopy on May 15, 2001. Payment in the required amount to the Center has been made by the Complainant.
On May 14, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On June 6, 2001, the administrative proceeding began.
On June 21, 2001, a response was received from the Respondent.
On, July 19, 2001, notification of appointment of an administrative Panelist and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott.
4. Factual Background
The Complainant has various registrations for trademarks comprising the word "Halifax" and "The Halifax". It has also registered its trademark in conjunction with a device mark. The registrations are in the United Kingdom and more recently in the European Community. The primary focus is on financial services but more recent registrations cover a wide range of goods and services, but there is an endorsement on the register that certain of the services do not include those provided within a five-mile radius of Halifax Piece Hall.
Some of the certificates of registration are in the name Halifax Building Society, the predecessor in title to Halifax plc. On conversion from building society to plc status, all trademarks were transferred to Halifax plc.
The Respondent has for the last two years run a music publishing company called Mordant Music which is an umbrella for the Respondentís musical productions. The Respondent is also said to be creating a culture magazine called Nijmegen and a surrealist website called <halifax.tv>.
5. Partiesí Contentions
The Complainant states the Respondent registered the Domain Name on November 29, 2000, and shortly thereafter contacted the Complainant asking if it wished to oppose his use of the Domain Name.
The Complainant says that it does not believe that the Respondent has at any time been commonly known by the Domain Name.
The Complainant states that the Respondent wrote to it on a number of occasions using the name <halifax.tv> in his sign-off and heading his letters with a large HALIFAX TV logo. The Halifax portion of this logo is in blue block capitals, which the Complainant claims is similar to the Complainantís trademarks and uses the Complainantís colour scheme.
The Complainant says that despite the Respondent stating on numerous occasions that the web site was under preparation, at the time of the presentation of this petition, the web site has not gone live and the page showing is the .TV Corporation holding page.
The Complainant provides the following summary to the correspondence between the parties relating to the Domain Name.
Following the Respondentís first approach, Mark Banks, the New Media Marketing Manager of the Complainant, responded by letter to the Respondent, stating that the Complainant could not state that it would not oppose his use of the site without knowing what his intentions were.
A further response was received from the Respondent by e-mail dated August 28, 1956. (This e-mail was actually received by Mr. Banks on February 2, 2001). In this e-mail, the Respondent set out the alleged reason for his use of the name "halifax" in the domain name.
Later that day, Mr. Banks made a deliberately non-committal response to the Respondentís e-mail as the Complainant believed that the Respondent was actually wishing to sell the domain name to the Complainant and wished to see whether, once given a perceived go-ahead by the Complainant, the Respondent would set up his site as suggested or whether further correspondence would then be received.
On February 16, 2001, the Complainant received a letter from the Respondent on paper headed Halifax TV, with the name Halifax shown in blue, block capitals (a font said to be confusingly similar to the Complainantís trademarks).
On February 21, 2001, Mr. Banks replied to the Respondent clarifying the Complainantís position regarding the Domain Name. The Complainant asserts that at that stage, its intention was to explore further why the Respondent was so concerned as he had alleged that his use of the site would not be connected to the Complainant.
On March 9, 2001, the Respondent replied that a "group decision" had been made to offer the Complainant the opportunity to acquire the domain name. The second paragraph of the Respondentís letter is said to suggest that his action was taken in anticipation of legal action being brought. The Complainant contends that the Respondentís statement was intended as a further lever in the bargaining tactics by suggesting that the future of the Internet is TV based and therefore that the Complainant would be prevented from using its trade mark in conjunction with that top level domain name by the registration of the Domain Name by the Respondent.
On March 14, 2001, Mr. Banks replied stating that the Complainant would only be willing to pay the standard costs of purchasing a domain name. The Respondent asked for further clarification of this by e-mail. This clarification was given by the Complainant by letter of March 26, 2001.
On April 11, 2001, a further letter was received from the Respondent, setting out what the Respondent believed the Domain Name to be worth to him, this figure being allegedly £200,000 over ten years.
The Complainant contends that none of the alleged uses of the web site justify the use of the name Halifax and that the Respondentís real intention was to make financial gain by using a domain name identical to the Complainantís trade mark thereby confusing internet users wishing to find the Complainantís web site and an attempt to force the Complainant to pay in excess of the nominal value for a domain name in which the Complainant has a trade mark and the Respondent has no legitimate interests.
It is also noted by the Complainant that the Respondentís sign off uses the term <halifax.tv> written in blue, the Complainantís main colour scheme. The Complainant regards this as further evidence that the Respondent wished to keep dialogue ongoing and indeed had deliberately used a font and colour identical to the Complainantís trade mark in an attempt to persuade the Complainant that a risk existed of people being confused as to the identity of the web site owner.
The Respondent states that as a matter of courtesy he contacted the Complainant to find out if they would oppose the site. The Complainant requested further details, which The Respondent supplied. The Respondent states that he continued ongoing correspondence with the Complainant and assumed that there was no problem with continuing to develop his web site because the Complainantís letter said the legal department were involved and the general demeanour was that they would not oppose the Respondentís request.
The Respondent claims the colours on the letterhead are not the same as the Complainants. He states that the Complainant only uses blue figurative letters whereas the Respondent uses red, blue, brown and white letters rendered in 3D.
The Respondent alleges that development and completion of the web site has been on hold because he has been waiting for the consent issue to be clarified.
The Respondent says that Halifax.tv is to be a site for culture, sights, sound, art and literature based on things that would be seen and heard on TV.
The Respondent denies that he has asked for money for this website. The Respondent claims the Complainant has mis-interpreted the contents of the correspondence between them regarding the transfer of the Domain Name.
The Respondent also points out that the Complainant allegedly announced on May 4, 2001, that it will be known as HBOS as they have merged with the Bank of Scotland. The Complainant has registered <hbos.tv>. The Respondent also points out that the Complainant has not registered <halifax.com> which would be a more likely commercial name for the Complainant to register.
Finally, it is noted that the Complainant does not own Halifax.footballclub, Halifax town, Halifax (in Australia), Halifax county (USA), Halifax Bluesox R.L.F.C. or the Halifax historic museum.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to the trade mark; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical to or Confusingly Similar
It is clear from the evidence that the Complainant has registered its various trademarks in at least the United Kingdom (where both parties reside) and that such registrations pre-date the registration of the Domain Name. Likewise, it is clear that the Complainant is a long established and well known institution in the United Kingdom and one of its larger banks. It can be reasonably inferred that as one of the largest United Kingdom banks the Complainant has a valuable goodwill in the name/trade mark Halifax, notwithstanding its geographic significance.
In view of the above it is found that Halifax is a trademark in which the Complainant has rights and that the Domain Name (save for the suffix "tv") is identical thereto.
No Right or Legitimate Interest
The question of passive holding may be relevant. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO February 19, 2001), (finding no rights or legitimate interests in the domain name where the Respondent was merely passively holding the domain name). However, in the present case the Respondent has said that he has endeavoured to resolve the question of consent before incurring expense and this explanation could potentially be a reasonable one, on the facts of the case.
It seems from the evidence that the Complainant has no real interest in the field of television. It has not sought protection for television or entertainment services and does not assert a right or reputation in relation to this area. Likewise, it is common ground that Halifax is a name with relatively widespread geographical significance. Thus, if the Halifax rugby league club had sought to register a domain name containing the word Halifax the Complainant would no doubt have had to accept that this was legitimate and it could not really object.
The Complainant seems to have accepted the limitation on its claim to the Halifax name when it enquired of the Respondent what his areas of interest might be. Presumably, if they had been in relation to financial services they would have objected immediately. They did not and however the correspondence is interpreted, it is fair to say that the Complainant was equivocal about any possible objection and the Respondent was entitled to take some comfort from this stance and the statement Ė "hope things go well with your development". However, this factor cannot be determinative.
Is the Respondentís purported reason for choosing the Domain Name believable? He says he wished to develop a site focusing on music and surrealist culture. Why then choose the name Halifax? Further, why tell the Complainant that the site will include "specialist columns dedicated to more underground practices such as fetishism as well as a section for deceased pets" (because of a long since passed on cat by that name)? Is this the real reason?
The Respondent is not, on the evidence, commonly known by the Domain Name, and arguably not making a non-commercial or fair use of the domain name, see Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum February 5, 2001), (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds the merits reasonably evenly balanced on this issue. See further discussion below.
Domain Name Registered and Being Used in Bad Faith
In answering this question one has to look at the whole picture. The Complainant has not acted with alacrity and precision in objecting to the Respondentís proposed use of the Domain Name. Even so, the Respondent seems to have skilfully raised the ante and the Panel cannot help feeling that the whole exercise has been a clever and premeditated one to extract money from the Complainant so as to rid itself of a nuisance it does not need.
The Panel has deliberated long and hard over this matter but concludes that at the end of the day the Respondentís explanation for registering the Domain Name is questionable and his conduct in ramping up the stakes was arguably designed to ultimately sell the Domain Name to the Complainant.
The Panel feels that the Complainant should not be punished for its indecision, just as the Respondent should not be rewarded for his guile. The question of "bad faith" has an important element of motive involved and at the end of the day the Panel feels it is able to draw an inference that the motive for registering and offering the Domain Name to the Complainant was to make a windfall profit. This is evidence of bad faith and sufficient to make out the ground.
It also informs the Panel as to the question of right or legitimate interest. If the purpose was to profit from the Complainants name and trade mark and to manoeuvre the Complainant into a position of needing or wanting to pay additional money for the Domain Name, this would not be a fair or legitimate use.
Accordingly, all three grounds are made out, when considered separately and cumulatively.
The Domain Name should be transferred to the Complainant.
Clive L. Elliott
Dated: August 16, 2001