WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Greg Lloyd Smith v.None, Harry Carr a.k.a Raymond McDonald and/or Gerald McDonald
Case No. D2002-0844
1. The Parties
Complainant is Greg Lloyd Smith, Mykonos, Greece.
For the reasons discussed below under Discussions and Findings, the Panel has established that as Respondent is to be considered "None, Harry Carr a.k.a. Raymond McDonald and/or Gerald McDonald". The address for "Harry Carr" is Glasgow, United Kingdom. According to Complainant, the address of Messrs McDonald is Renfrewshire, Scotland.
2. Domain Names and Registrar
The domain names at issue are <gregglloydsmith.com>, <greglloyd-smith.com> and <greglloydsmith.com>
Registrar is Intercosmos Media Group, Inc.dba directNIC.com, 650 Poydras Street, Suite 2311, New Orleans, La 70130, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received a Complaint in electronic form on September 9, 2002. Hard copies of the Complaint were received by the Center on September 16, 2002.
On September 12, 2002, the Center received, upon request, two Registrar Verifications, of which one concerned the domain names<greglloyd-smith.com> and <greglloydsmith.com> and the other one concerned the domain name <gregglloydsmith.com>.
According to the first Registrar Verification:
- Registrant for the two domain names is Harry Carr, 45 Iona Court Govan, Glasgow, UK G51 2EY, Great Britain;
- Administrative Contact and Technical Contact is for both domain names "Carr, Harry "mailto email@example.com" with the same mail address as for Registrant;
- the Registrarīs record was created March 7, 2002, for the domain name <greglloyd-smith.com> and February 10, 2002, for the domain name <greglloydsmith.com>;
- the Uniform Domain Name Dispute Resolution Policy (the Policy) applies to the domain names;
- the domain names are active and paid in full;
- the domain names will remain locked during the pending administrative proceeding;
- English is the language of the registration agreement, and
- the agreement shall be governed by the federal laws of the United States and the laws of the State of Louisiana, without regard to any conflict of laws provisions; any action relating to or arising out of the agreement and Registrantīs or its Agentīs use of Registrarīs services shall be brought exclusively in the Federal or State Courts of Orleans Parish located in New Orleans, Louisiana.
The second Registrar Verification, relating to the domain name <gregglloydsmith.com> indicates the following:
- Registrant: "None, 45 Iona Court, Glasgow, UK G51 2EY, Great Britain";
- Administrative Contact and Technical Contact: "Wybrew, Simon "firstname.lastname@example.org" with the same mail address as for Registrant;
- Registrarīs record was created April 29, 2002;
-the Policy applies to the domain name;
- the domain name is active and paid in full;
- the domain name will remain locked during the pending administrative proceeding;
- English is the domain name of the registration agreement, and
- as regards the governing laws the same applies as indicated in the other Registrar Verification.
The Registrar also confirmed that it was in receipt of a copy of the Complaint sent by Complainant.
The Center issued a notification of Complaint and Commencement of Administrative Proceeding on September 17, 2002. This indicated Respondent as "None, Harry Carr a.k.a. Raymond McDonald and or Gerald McDonald" and was communicated by e-mail to "mailto:email@example.com and to the postmasters at the three domain names as well as to Administrative Contact Simon Wybrew, and also to Complainant, the Registrar and ICANN. Furthermore, the Complaint, with attachments, was sent by courier service (DHL Shipment Airwaybill 4999204361) to "Harry Carr AKA, 45 Iona Court Govan, Glasgow" and was not returned.
As no response had been received from Respondents, the Center issued a Notification of Respondent Default dated October 8, 2002. This was, as regards Respondent, sent by e-mail the same recipients as the notification of September 17, 2002.
The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on October 22, 2002, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr Olsson as sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was duly communicated to the Parties.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
The Panel notes in this context that Complainant, according to the Complaint, is an international businessman dealing with, inter alia, mergers and acquisitions in the United States, the United Kingdom and Continental Europe.
Nothing is known in this case about Respondentsī activities.
In accordance with Paragraph 3(b)(xiii), Complainant agrees to submit only with respect to any challenge that may be made by Respondents to a decision by the Administrative Panel to transfer or cancel the domain names that are the subject of the Complaint, to the jurisdiction of the courts at the location of the principal office of the Registrar.
5. Partiesī Contentions
Complainant first contends that the dispute concerning the domain names at issue is properly within the scope of the Policy and that the Administrative Panel has jurisdiction to decide the dispute; the registration agreement pursuant to which the domain names at issue are registered incorporates the Policy.
The Complainant states that it is the owner of the trademark "Greg Lloyd Smith" in the United Kingdom under No 2296692 in Class 35, and has also applied for a trademark registration in the United States under Serial No 78117117, which has been published and is intended to be registered with priority as from the mark registered in the United Kingdom.
According to Complainant, the domain names are identical or confusingly similar to the trademark in which Complainant has rights.
Furthermore, according to Complainant, Respondent has no rights or legitimate interests in respect the domain names, which have been registered by Respondent "using false or fraudulent names." Respondents then, according to Complainant, pursued a campaign of defamation, publishing libellous content about Complainant and Complainantīs family and businesses beginning in February 2002 until June 25, 2002, when Complainantīs lawsuit in the United States was served on the Registrar causing it to deactivate the domain names.
Complainant also states that the domain names were registered and were being used in bad faith until June 25, 2002, when they were, as just mentioned, deactivated by the Registrar. Complainant alleges that Respondent registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names and to use them in a campaign of defamation that is now the subject of two separate sets of proceedings in the United Kingdom and the United States.
Complainant requests that, in accordance with Paragraph 4(b)(i) of the Policy and for the reasons mentioned, the Administrative Panel issue a decision that the domain names at issue be transferred to Complainant.
In respect of other legal proceedings, Complainant refers to two lawsuits filed in the United States and the United Kingdom, respectively. Thus, on or about June 25, 2002, Complainant filed a complaint in the US District Court of Louisiana (Civil Action No 02-1964) against the Intercosmos Media Group, Inc, d/b/a Direct NIC ("DirectNIC") and another ("John Doe") claiming defamation and libel damages, legal costs and interest and endeavouring to obtain the true identity of the person or persons who had registered the three domain names. This lawsuit resulted in some information provided to Complainant who will amend the details of that claim to include Mr. Raymond McDonald and Mr. Gerald McDonald seeking damages in respect of defamatory websites published by the (three) defendants.
As regards the other lawsuit, Complainant alleges that on or about September 3, 2002, Complainant and Complainantīs wife Katerina Theohari-Smith filed a lawsuit at the High Court in London against six defendants, including NTL, which is one of the largest telecommunications companies in the United Kingdom, George Alan Short, Raymond McDonald and Gerald McDonald, Paul Andrew Todd Taylor and Michael White, who is an employee of NTL. The lawsuit was seeking damages in respect of defamatory websites published by the (six) defendants.
According to Complainant, both cases continue.
According to the Complaint, a copy of the Complaint, together with the cover sheet as prescribed by the WIPO Supplemental Rules was sent by post and by e-mail to Respondent under the address "45 Iona Court Goven, Glasgow, UK &51 2EY GB" and to the e-mail address "mail to:firstname.lastname@example.org". A copy was also sent to the Registrar.
The entity and persons believed to be Respondents and to which the Complaint has been communicated have not submitted any Response. Respondents are therefore in Default.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
The first issue that the Panel has to consider is the identity of Respondents in respect of the domain names at issue. The identity of Respondent as regards the domain names <greglloyd-smith.com> and >greglloydsmith.com> presents less of a problem as the Registrar Verification indicates Harry Carr as Registrant. As regards the domain name <gregglloydsmith.com> the Registrant is indicated as "None" at the same address as Harry Carr, while the Administrative Contact/Technical Contact is "Wybrew, Simon" at the same address. Complainant alleges that the actual Registrant in respect of all the three domain names is Mr. Raymond McDonald and/or Mr. Gerald McDonald, Erskine, Renfrewshire, Scotland.
Complainant has submitted a copy of a sworn statement by an Administrative Assistant at the Intercosmos Media Group stating that, in relation to the domain names at issue, a number of names, pseudonyms etc, and aliases, had been utilised by the Registrant of those domain names, namely Lucky Allen Short, Simon Wybrew, Sammy Sideshed and Harry Carr. The statement also mentions credit card numbers furnished to Intercosmos through the Registrant of those domain names, which credit cards carry the name R McDonald and Gerald McDonald. To the copy of the statement is attached, inter alia, a copy of Intercosmos account information with respect to these domain names as well as copies of e-mail correspondence between Intercosmos and the Registrants of those domain names.
From the Registrar Verifications in this case follows that the mailing address 45 Iona Court Goven for Respondent is the same for all three domain names. In this case all notifications in respect of Respondent has been sent to that mailing address and also to the e-mail addresses for Harry Carr and Simon Wybrew. There are no indications that these communications have not passed. None of the recipients have commented on, or opposed, the indications as to Respondentīs identity in the various communications made, something that would be quite natural in case the recipients had considered that the communications were sent to the wrong persons.
These circumstances and the documentary evidence produced brings the Panel to the conclusion that the proper Respondents in this case are covered by the notion "None, Harry Carr a.k.a. Raymond McDonald and or Gerald McDonald". The communications as issued in this case have consequently been directed towards the entity and the persons who are to be considered as Respondents for the purposes of this case and who are the ones against which the legal effects of this Decision are to be directed.
In the view of this Panel all reasonable efforts have been undertaken to effectively communicate the various Notifications to Respondents. In any event, if a Registrant has elected to conceal its identity, it must bear the consequences of the absence of such information in the context of a UDRP case brought against it. The notion of "None" in respect of the Respondent as regards one of the domain names is, therefore, no obstacle to considering the case.
In the case of Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case no Response has been submitted and none of the contentions by Complainant have been contested, despite the opportunity given to do so. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
The Registrar Verifications confirm that the Policy is applicable in this case and that there is an obligation for Respondents to submit to a mandatory administrative proceeding as now initiated in respect of the domain names at issue.
Paragraph 4.a.of the Policy directs that Complainant has to prove each of the following:
- that the domain names registered by Respondents are identical or confusingly similar to a trademark or a service mark in which Complainant has rights:
- that Respondents have no rights or legitimate interests in the domain names, and
- that the domain names at issue have been registered and are being used in bad faith.
In the following part of this Decision the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect, Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain names at issue are identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain names at issue are <greglloydsmith.com>, <greglloyd-smith.com> and < gregglloydsmith.com>.
Complainant contends that it is the owner of the trademark "Greg Lloyd Smith" registered in the United Kingdom in Class 35 under No 2296692 and has filed an application for registration under Serial number 78117117 in the United States of the same trademark and with priority as from the United Kingdom registration. The Panel notes in this context that Complainant has submitted an extract from the United Kingdom Patent Office Trade Marks Database which indicates that the filing date for the application for registration was April 2, 2002, and the registration date was September 6, 2002. The list of goods and/or services for the trademark is indicated as "Business acquisition and merger consultation." The Panel furthermore notes that, according to a copy of an extract from the Trade mark Electronic Search System (TESS) of the United States Patent and Trademark Office, the application for registration of the word mark "Greg Lloyd Smith" was filed on March 24, 2002, and was given the serial number 78117117.
On the basis of the evidence submitted the Panel considers it established that Complainant has a right under trademark law at least in the United Kingdom - where also Respondents are domiciled - in respect of the trademark "Greg Lloyd Smith.
The domain names and the trademark differ in some respects both as regards the spelling and as regards the way of combining the words which form part of the trademark. Furthermore, the domain names contain the addition of ".com." The overall impression is however, in the view of the Panel, that there is a clear similarity between the domain names and Complainantīs distinctive trademark. The addition of ".com" is an insignificant distinction that does not remove the likelihood for confusion.
On the basis of these findings the Panel considers it established that there exists a confusing similarity between the domain names at issue and Complainantīs protected trademark rights.
Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
In this respect Complainant contends essentially that Respondent has registered the domain names using "false or fraudulent names" and has pursued a campaign of defamation about Complainant and Complainantīs family. Complainant has submitted some evidence in the form of copies of various e-mails exchanged between the Registrar and "Sammy Sideshed" concerning the activities of Complainant and about the various names etc. used by the Registrants; in one of the e-mails the Registrarīs attorney mentions that the indication "Simon Wybrew" is identified in the lawsuit against the Registrar as a factitious name. In the context of his complaints about Complainantīs activities, "Sammy Sideshed" states: "I do not have the cash to fight him in the courts, that is why I have to register the names in the way I have."
Respondents have not, despite the opportunity given, submitted any objections or observations in relation to Complainantīs allegations about Respondentsī rights or legitimate interests in respect of the domain names, something that would have been quite natural in case Respondents had considered Complainant allegations to be unfair or untrue.
On balance, the Panel finds the documentary evidence presented and the absence of any observations from Respondent sufficient to establish that Respondents have no rights or legitimate interests in the domain names at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain names have been registered and are being used in bad faith. Furthermore, Paragraph 4.b sets out some circumstances which, in particular but without limitation, shall, if found by the Panel to be present, be considered as evidence of registration and use in bad faith.
In this respect Complainant has basically contended that the domain names were in fact registered and used in bad faith until June 25, 2002, when the Registrar deactivated them as a consequence of Complainantīs lawsuit in the United States. Complainant alleges that Respondents registered the domain names in order to prevent Complainant from reflecting its trademark in corresponding domain names and to use them in a campaign of defamation which is now the subject of two separate sets of legal proceedings in the United Kingdom and the United States.
Complainant has submitted little specific evidence to support its contentions as to the bad faith of Respondents. The copies of the e-mail correspondence between the Registrar and "Sammy Sideshed" about the identity of the Registrant of one of the domain names contain, however, indications of some importance also in this context, in particular in that "Sammy Sideshed" explains why the domain names were registered. That e-mail correspondence has been referred to under the previous heading.
Also in this respect the Panel has to note that Respondents have not, despite the opportunity given, submitted any comments on the allegations by Complainant.
Taking into account in particular the contents of the e-mail correspondence presented and in the absence of any observations to the contrary from Respondents, the Panel must conclude that the registration of the domain names and their use amounts to registration and use of the domain names in bad faith in the sense of the Policy.
On the basis of the foregoing the Panel finds it to be established that there exists a confusing similarity between the domain names at issue and Complainantīs trademark, that Respondents have no rights or legitimate interests in the domain names and that those have been registered in bad faith and have also been used in bad faith until their deactivation by the Registrar. On the basis of those conclusions Complainantīs request for a transfer of the domain names to Complainant shall be the approved.
In accordance with Complainantīs request and with reference to Paragraph 4.i of the Policy the Panel requires that the domain names <gregglloydsmith.com>, <greglloyd-smith.com> and <greglloydsmith.com> be transferred to Complainant.
Dated: October 25, 2002