WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Involve Group Limited v. Stuart Allum

Case No. D2008-0473

 

1. The Parties

The Complainant is Involve Group Limited of Stroud, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Stuart Allum of London, United Kingdom of Great Britain and Northern Ireland (“UK”).

 

2. The Domain Name and Registrar

The disputed domain name <involvegroup.com> (the “Domain Name”) is registered with Tucows (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) through its website on March 26, 2008, and in hard copy on April 2, 2008. The Center transmitted its request for registrar verification by email to the Registrar on March 28, 2008. The Registrar replied the same day, confirming that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the Domain Name, that it would remain locked during this proceeding subject to expiry of the registration on March 8, 2009, that the registration agreement was in English, and that the Respondent had submitted in that agreement to the jurisdiction at the location of its principal office for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar also provided the contact details in respect of the Domain Name on its Whois database and stated that it had not yet received a copy of the Complaint.

By email of April 11, 2008, the Center notified the Complainant that the Complaint was deficient in failing to specify the mark relied upon and the manner in which the Domain Name was alleged to be identical or confusingly similar to that mark. The Complainant submitted an amendment to the Complaint by email on April 15, 2008, and in hard copy on April 22, 2008.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on April 23, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 13, 2008. The Response was filed with the Center by email on May 13, 2008, and in hard copy on May 16, 2008.

The Center appointed Jonathan Turner as the sole panelist in this matter on May 27, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant has carried on a business of providing software and consultancy under the name “INVOLVE” for four years and has achieved a turnover of more than 500,000 since February 2005. Stationery bearing the Complainant’s “INVOLVE” logo has been used since December 2005. 3,000 leaflets advertising the Complainant under this name have been distributed in or about September 2006 and February 2008. The Complainant used Google AdWords to promote its website at “www.involvegroup.com” from January 2007, spending roughly 200 per month. The Complainant’s clients include a number of well-known public companies.

The Domain Name was registered on the instructions of the Respondent on March 8, 2006 in the name “How2 Direct”. At that date the Respondent was a director of How2 Direct Limited and the Complainant (then called Involve Partnership Limited) was in the process of acquiring that company’s assets. The Complainant completed the purchase of “all and sole ownership of How2 Direct Ltd assets and copyrights” on March 22, 2006.

The Respondent was employed by the Complainant from March 22, 2006, with responsibilities which included oversight of the Complainant’s technical infrastructure and websites. On April 12, 2006, the Complainant changed its company name to Involve Group Limited. A website of the Complainant was established at the Domain Name.

By May 31, 2007, the registrant of the Domain Name had been changed to “Mccallumcare”. The Respondent was dismissed by the Complainant on June 7, 2007 on the ground of “gross misconduct”. On June 14, 2007, the Respondent commenced a legal action to recover 10,000 invested in the Complainant.

On July 10, 2007, the Complainant’s solicitors wrote to the Respondent’s solicitors offering to pay him 1,000 in full and final settlement of any claims which the Respondent might seek to bring against the Complainant, and stated that any settlement involving payment of this sum would have to include the “return” of, inter alia, “domain name registration details for [the Complainant’s] website”.

By July 18, 2007, the Domain Name was registered in the name of the Respondent. By letter dated July 23, 2007, the Respondent’s solicitors informed the Complainant’s solicitors that the Respondent currently owned the Domain Name which was being used by the Complainant and that he wished to sell it, asked whether the Complainant wished to buy it, and stated that if they did not hear within 14 days, the Respondent would assume that it was no longer required by the Complainant.

The Complainant’s website using the Domain Name remained operational on August 3, 2007, but the Respondent redirected the Domain Name on August 6, 2007. This disrupted the Complainant’s services to its clients and forced it to migrate its applications, services and websites to an alternative domain name, <involvegroupltd.com>.

On August 28, 2007, the Complainant’s solicitors received a letter from the Respondent’s solicitors dated June 28, 2007 confirming that the Respondent sought 10,000 for the Domain Name and inquiring as to the Complainant’s solicitors’ instructions.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to its company name, Involve Group Limited, and the name “INVOLVE” under which it has carried on business and sold products.

The Complainant further submits that the Respondent has no rights or legitimate interests in the Domain Name and that he registered and is using it bad faith. The Complainant alleges that the Respondent is holding the Domain Name as a means to disrupt the Complainant’s business and has used it to blackmail the Complainant into paying him 10,000.

The Complainant asks the Panel to issue a decision that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent denies that the Respondent uses “Involve Group” as a brand name and contends that its use of the name “Involve” has been insufficient to confer rights in it. According to the Respondent, he was told by the UK Intellectual Property Office that unregistered trademark or service mark rights for a name are only normally considered applicable after five years’ use, whereas the Complainant has only been using the name “Involve” for four years.

He further states that he purchased the Domain Name using his personal debit card and personal account at the Internet service provider, Fasthosts. According to the Respondent, he was not asked to purchase it by or for How2 Direct Ltd and he entered “How2 Direct” as the name of the registrant solely for his personal reference.

He points out that the Complainant has not provided evidence that the Domain Name was included in the assets sold by How2 Direct Ltd to the Complainant. He says that he did not know that the Complainant was to change its name to “Involve Group Ltd” when he registered the Domain Name.

The Respondent claims that he is entitled to the Domain Name since he purchased it. He also says that he has a legitimate interest in it since he has used it for private email. He submits that the Complainant has provided no evidence that he registered the Domain Name in bad faith. He also states that he has not used it in bad faith and, indeed, allowed the Complainant out of goodwill to use it without charge.

He asks the Panel to reject the Complaint and to make a finding of reverse domain name hijacking, in particular on the basis that the Complainant was aware that the Domain Name had not been registered in bad faith.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

Each of these requirements will be considered in turn below.

A. Identical or Confusingly Similar

The Panel is satisfied by the evidence that the Complainant has used the name “Involve” sufficiently as a brand to acquire unregistered rights in it as a mark under the UK law of passing off. Such rights can be established by limited sales over a relatively short period: see, e.g., Trucklife Limited v. Truckstop Supply Co. Limited, WIPO Case No. D2003-0947. The Panel considers that the Respondent must have misunderstood the advice which he received from the UK Intellectual Property Office on this point.

The Panel is also satisfied that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the widely-used, descriptive term, “group” and the generic top level domain suffix. In the Panel’s view, Internet users familiar with the Complainant’s “INVOLVE” brand would assume that the Domain Name refers to the business which provides the “INVOLVE” products and services.

The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

On the evidence, the Panel considers that the Domain Name was originally registered on behalf of How2 Direct Ltd. At that date, the Respondent was a director of that company and had a fiduciary duty to further its business and interests. The Domain Name was registered in the name of that company; the Panel does not accept that a distinction is to be drawn between “How2 Direct” and “How2 Direct Ltd”. However, even if the Domain Name had been registered in the name of the Respondent, it would still have belonged to How2 Direct Ltd by reason of the Respondent’s fiduciary duty: see the decision of the English High Court in Ball v. The Eden Project Limited [2002] FSR 43. As is clear from that case, the fact that the registration was made on the instructions and at the expense of the director is irrelevant. In these circumstances, the Panel considers that the Respondent cannot claim any rights in the Domain Name arising out of his original registration of it.

Nor can the Respondent claim any rights arising out of any use of the Domain Name by him for a bona fide offering of goods or services. The Domain Name has only been used commercially in connection with the goods and services of the Complainant.

The Respondent is not commonly known by the Domain Name. Furthermore, in the circumstances of this case, the Panel does not regard any use by the Respondent of the Domain Name for private email as legitimate non-commercial or fair use. Given the similarity of the Domain Name to the Complainant’s name, Involve Group Limited, and its brand “INVOLVE”, and the use and promotion of the Domain Name for the Complainant’s website, any use of this Domain Name by the Respondent for email without the Complainant’s consent would not be legitimate or fair or such as to give rise to rights or legitimate interests within the meaning of the Policy.

The Panel finds that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

It is clear from the wording of the Policy and has been confirmed in numerous decisions that the two parts of the third requirement of the Policy are cumulative conditions: the Complainant must show that the Domain Name both was registered and is being used in bad faith: see, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, Substance Abuse Management, WIPO Case No. D2000-0026; and, Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.

However, it is also clear that from paragraph 4(b)(i) of the Policy that registration on acquisition qualifies as registration for the first part of the third requirement of the Policy.

In this case, the Respondent acquired the Domain Name by registering it in his own name between May 31, 2007 and July 18, 2007. The Respondent subsequently offered through his solicitors’ letter of July 23, 2007 to sell it to the Complainant. That offer was accompanied by a statement that if the Complainant did not make an offer to buy it within 14 days, the Respondent would assume that it was no longer required by the Complainant. In the circumstances, that statement conveyed a threat that if the Complainant did not purchase the Domain Name, the Respondent would redirect it and/or sell it to a third party. That threat was carried out on August 6, 2007, 14 days after the letter was sent.

In these circumstances, the Panel finds that the Respondent acquired the Domain Name by having it registered in his own name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his out-of-pocket expenses directly related to the Domain Name. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy.

There is nothing in the file which displaces this evidence. On the contrary, it is clear from the facts that the Respondent had the Domain Name registered in his own name and is seeking to retain it in order to force the Complainant to pay him 10,000.

The Panel concludes that the Domain Name was registered and is being used in bad faith.

D. Reverse domain name hijacking

Since the Panel has concluded that the Complaint is well-founded, the allegation of reverse domain name hijacking must be rejected.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <involvegroup.com>, be transferred to the Complainant.


Jonathan Turner
Sole Panelist

Date: June 10, 2008