WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brown Thomas Group Limited v. Domains By Proxy, LLC / John Thewlis
Case No. D2013-0139
1. The Parties
The Complainant is Brown Thomas Group Limited of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domains By Proxy, LLC of Arizona, United States of America / John Thewlis of Dublin, Ireland.
2. The Domain Name and Registrar
The disputed domain name <brownthomas.mobi> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 24, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Response was filed with the Center on February 13, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on February 25, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, a company incorporated in the Republic of Ireland in 1962, is a well-known Irish department store retailer which operates a chain of up-market stores under the name “Brown Thomas”. The brand has been in existence for some 160 years.
The Complainant’s flagship Brown Thomas outlet is one of Dublin’s main department stores, located on Grafton Street in the city’s leading shopping district. The Complainant also operates stores in Cork, Limerick and Galway. The Complainant’s shops offer luxury goods and services including designer clothing and accessories, fine jewellery, cosmetics, gifts, homeware as well as bridal and beauty services.
The Complainant owns a range of registered trade marks for the words BROWN THOMAS including five Irish Trade Mark Nos. 131955-59, in classes 3,16, 20, 24 and 25 respectively and all filed on July 11, 1988.
The disputed domain name was registered on September 21, 2011 in the name of “John Thewlis”.
On October 23, 2012, a letter was sent to the Complainant’s managing director by John Thewlis, described as a director of “MessageMail Mobile Marketing”, with an address in Dublin. The subject line of the letter was “Brownthomas.mobi Mobile Website”. Mr. Thewlis claimed that his company had developed the website as a mobile site for a client who wished to use it to promote their range of high quality hand-made fashion accessories but that the client had recently indicated that it wished to move its business in an entirely different direction “so we are evaluating whether this mobile domain might be of benefit to you”. Mr. Thewlis provided the Complainant with log-in details so that it could view a sample mock-up of the mobile site and stated that his company was most interested in developing a long-term relationship with the Complainant whereby the company would host and maintain the disputed domain name as well as providing expertise with mobile marketing campaigns. Mr. Thewlis concluded by saying that, if the Complainant was not interested in availing of the disputed domain name, the company would proceed to develop it for its own use.
At some point thereafter (the Complainant’s screenshots are undated) the disputed domain name was used for a publicly-available website bearing the title “Brown and Thomas Unique Fashion Handbags & Purses”. The home page stated: “Brown And Thomas Handbags & Purses are the creation of Cathy Thomas and Valerie Brown. Cathy and Valerie met when both were fashion design students in New York. Each of their creations are completely unique as each item is individually crafted for each client and no two are identical”.
The “Contact” page on the website stated: “We welcome visitors when we travel to the major US cities. We can arrange for you to come, view and order one of our commissions when we are in, or close to, your city or town. Please contact us to arrange an appointment. You can contact us by email at email@example.com.”
There was also a “Products” page which listed images of four bags, described as follows:
“Cathy’s Evening Clutch Bag – Approx $900
Valerie’s Evening Bag – Approx $650
Cathy’s Rose Evening Clutch Bag – Approx $370
Valerie’s Trigonometry Evening Clutch Bag – Approx $275”.
The Complainant sent a cease and desist letter to the Respondent on November 7, 2012, and a chaser was sent on November 22, 2012. The Respondent replied on November 22, 2012, stating that the Complainant might be best advised to contact the owners of the disputed domain name “which is US based”. He went on to say that as the disputed domain name operated exclusively in the United States, there appeared to be no risk to the Complainant as the disputed domain name was not making any attempt to pass itself off as associated with, or having any relationship with, the Complainant.
By December 3, 2012, the disputed domain name had been switched into the name of a proxy service.
The Respondent owns a range of other domain names reflecting the trade marks of well-known Irish retailers including <clerys.mobi>, <dunnes.mobi> and <musgrave.mobi>.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is confusingly similar, if not identical, to Complainant’s registered trade marks.
Rights or Legitimate Interests
The Respondent has never been licensed by Complainant or authorized in any way to use the Complainant’s trade mark.
The Respondent has not made use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as the Respondent’s use of the disputed domain name intentionally trades on the fame of the Complainant.
The Respondent’s intent is manifest from its creation of a domain name incorporating and consisting of Complainant’s mark in its entirety and the Respondent’s attempted use of the disputed domain name as leverage in soliciting business from the Complainant. The Respondent was clearly aware of the Complainant. The Respondent cannot credibly claim that the disputed domain name was intended to be used for any legitimate purpose.
The Respondent has set up the website in order to give the pretence of legitimate rights and interests in the disputed domain name.
The Respondent has fabricated a cover story. It is highly unusual that a hosting provider or website developer would be in a position to offer a client’s domain name to a third party and so the Complainant has strong suspicions as to the veracity of the facts contained in the letter. The letter states that the client was planning to move its business in an entirely different direction but, within two weeks of contacting the Complainant, the website had been updated to state that the Respondent’s client had just launched a new range of handbags and purses and that these items were “unique, individual creations”. The Respondent updated the site in order to prompt a response from the Complainant. The site changed from a mock-up requiring login access to one which was publicly accessible. Furthermore, the disputed domain name was now being used to promote the kinds of goods which the Complainant already provides for sale through its stores. As such, the Respondent appears to be using the disputed domain name as “bait” to attract traffic to the Respondent’s site and this is indicative of Respondent’s acute awareness of Complainant and its business.
The so-called “unique” products displayed on the website are not unique items created by Respondent’s client. Rather, three of the four products listed for sale on the site are in fact images of third party, branded designer goods.
The Respondent was listed as the legal owner of the disputed domain name up until September 25th, 2012. Between then and December of 2012 after the Respondent had initiated contact with Complainant and was issued with a cease and desist letter, the disputed domain name was moved into proxy. This was deliberately undertaken to frustrate Complainant’s efforts to ascertain the identity of the legal owner of the disputed domain name and is indicative of the Respondent’s lack of legitimate rights and interests in the disputed domain name.
To the best of Complainant’s knowledge, Respondent has not been commonly known by the disputed domain name.
So far as the Complainant is aware, the Respondent does not own any trade marks for BROWN THOMAS.
The use of the disputed domain name to resolve to a website which promotes similar goods to those which the Complainant makes available for sale through its own stores is likely to create confusion amongst consumers and consumers are likely to be misleadingly diverted to a website which they believe to be associated with Complainant when in reality no such relationship exists. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, let alone a bona fide use of the disputed domain name as Respondent is clearly looking to make some manner of commercial gain.
Registered and Used in Bad Faith
Given the renown of the Complainant’s brand, it is highly unlikely that the Respondent was unaware of it at the time of registration of the disputed domain name. Indeed, Mr. Thewlis’ listed residence is in relative close proximity to Complainant’s landmark Dublin store, which is less than a 20-minute drive away. The Respondent’s conduct in sending unsolicited correspondence to the Complainant’s managing director and its use of the disputed domain name for a website offering handbags and fashion accessories, which are also sold in the Complainant’s stores, is further evidence of the Respondent’s awareness of the Complainant’s brand and registration and use of the disputed domain name in bad faith.
Although the Respondent indicated that the disputed domain name was registered on behalf of a client and the website states that it is to be used to promote the products of “Cathy Thomas” and “Valerie Brown”, the Complainant believes that this is a fabrication on the part of the Respondent.
The Respondent’s thinly veiled attempt to solicit business from the Complainant by using the disputed domain name as leverage evidences the Respondent’s bad faith.
Although the Respondent has not specified any monetary value, the consideration demanded by the Respondent is obviously more than any out-of-pocket costs that the Respondent might have incurred directly in relation to the disputed domain name. The proposed long term business relationship with the Complainant is suggestive of some sort of monetary remuneration in the long term. Such conduct clearly falls under paragraph 4(b)(i) of the Policy as the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name.
The Complainant also relies on paragraph 4(b)(ii) of the Policy. The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name that utilizes the “.mobi” generic Top Level Domain (“gTLD”). The Respondent has engaged in a pattern of blocking registration against other well-known brands.
Identical or Confusingly Similar
The Complainant has no trade mark or service mark in the United States, which is where the Respondent “entirely operates her business”.
The Respondent’s website is “Brown and Thomas”, not “Brown Thomas”. This is made very clear on the home page of the Respondent’s website.
Rights or Legitimate Interests
The Complainant has no rights whatsoever in the disputed domain name, which is “for Brown and Thomas”. The Complainant does not operate in the location of the Respondent and does not deal in any of the items which comprise the Respondent’s range of products and service. The Respondent offers single, personalized, unique handmade purses and handbags for customers exclusively located in the United States and does not offer any of her services or products outside the United States. There is no possibility of the Respondent passing off her website as that of the Complainant as they operate in totally different jurisdictions, offering entirely different products and services.
The Respondent registered the disputed domain name well in advance of any notification from the Complainant. The Respondent has been trading as “Cathy Thomas and Valerie Brown” for a number of years exclusively in the United States. The Respondent is entitled to use the disputed domain name as it represents her trading name and is a combination of her and her partner’s surnames.
The Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name.
The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark at issue.
Registered and Used in Bad Faith
The Respondent cannot comprehend why the Complainant is seeking to acquire her domain name and thus destroy her business and livelihood as there is no attempt being made to pass off the disputed domain name as that of the Complainant. The Respondent is entitled to use the disputed domain name for the reasons stated above. No attempt was ever made to impugn the good name of the Complainant or its business.
The letter from the Respondent’s web developers was sent in error to the Complainant, when it should have in fact been sent to an entirely different entity. The Respondent’s web developers never had the Respondent’s authority to send any material on their behalf to the Complainant. An explanation has been provided.
The disputed domain name was not registered or acquired primarily for the purpose of selling to the Complainant. The disputed domain name is an integral part of the Respondent’s business and is an essential component of the Respondent’s daily operations.
The disputed domain name is used for the Respondent’s own business, which operates entirely in the United States. The Complainant has no trade marks in the United States, nor does it operate its primary business there. The Complainant does not offer the highly personalized products that are the basis of the Respondent’s business, nor is there any similarity in the appearance of the Complainant’s or Respondent’s websites.
The Complainant and the Respondent are not competitors in any sense of the word, not in terms of geographic location, nor in terms of product or service range, and the Respondent has absolutely no intention of disrupting, or harming the Complainants business in any way.
The disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. This is evident from the geographic location of the Respondent’s business, its product offering, its lack of any business operations in the Complainant’s area of operations and the absolute dissimilarity in the range of products and services offered.
6. Discussion and Findings
A. Preliminary Issue
The Response purports to be filed in the name of “C. Thomas” although she is not named as the Respondent. The Response claims that the disputed domain name was registered by John Thewlis, a named Respondent, on behalf of “C. Thomas” and “V. Brown”. As explained below, the Panel is skeptical of this claim but in any event, unless the context requires otherwise, any references below to “the Respondent” should be treated as including whoever is in fact the beneficial owner of the disputed domain name.
B. Identical or Confusingly Similar
The Complainant has rights in the mark BROWN THOMAS by virtue of its registered trade marks as well the extensive use of the name over many years.
The Respondent objects and states that the Complainant has not demonstrated trade mark rights in the United States, where the Respondent’s business is allegedly located. However, the location of trade mark rights is irrelevant for the purposes of the first element of paragraph 4(a) of the Policy. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”.
The disputed domain name is identical to the Complainant’s trade mark, disregarding the domain name suffix, as per the consensus of other UDRP panels. See paragraph 1.2 of the WIPO Overview 2.0.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, as discussed further below, the Panel has concluded below that the Respondent has registered and used the disputed domain name to intentionally profit from the fame of the Complainant’s mark. Such use of the disputed domain name could not be said to be bona fide.
The Respondent relies on paragraph 4(c)(ii) of the Policy, claiming that the disputed domain name is referable to a trading name reflecting the surnames of a “V. Brown” and a “C. Thomas”. However, the Respondent has produced no evidence in support of this claim despite the Complainant having placed it squarely in issue. See further below under Section D.
There is no evidence that paragraph 4(c)(iii) of the Policy applies as the Panel is of the view that the disputed domain name was clearly registered for the purpose of commercial gain.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Respondent’s justification for registration of the disputed domain name is that it was allegedly acquired on behalf of a business operated by a “.C. Thomas” and a “V. Brown”, who allegedly produce “single, personalized, unique handmade purses and handbags for customers exclusively located in the United States”. The Respondent also claims that the October 23, 2012 letter sent to the Complainant was a mailshot error.
The Panel considers that the Respondent’s version of events is implausible for the following reasons:
1. The Complainant’s trade mark is very well-known in the Republic of Ireland and indeed the Respondent does not deny that it was aware of the trade mark at the time of registration of the disputed domain name.
2. It is, at least on the face of it, unlikely that the disputed domain name was genuinely registered for two persons carrying on business together whose surnames happen to equate to the Complainant’s well-known trade mark and who also happen to be engaged in fashion industry offering handbags and fashion accessories. It is equally unlikely that a letter sent to that same retailer inviting interest in the disputed domain name was sent by mistake.
3. The Complaint asserted that the Respondent’s version of events was a fabricated “cover story”. If this were not so, one would have expected the Respondent to respond to such a serious allegation with a degree of indignation, backed up with some evidence verifying the business activities of the two ladies concerned and/or the relationship between John Thewlis and that business and/or at least establishing that the two ladies actually exist. Yet the Response does not even mention the Complainant’s assertion and produces no evidence whatever other than the alleged letter from John Thewlis to C. Thomas dated October 29, 2012, which is referred to below.
4. The Response claims that the letter to the Complainant dated October 23, 2012 was some sort of mailshot error but there is no evidence demonstrating that the letter was really part of a mailshot or that such an error actually occurred. The letter does not look like a standard-form marketing letter and there is no explanation as to why a mailshot would be sent in such terms. Also, the explanation for the error given in the above-mentioned alleged letter from John Thewlis to C. Thomas is neither clear nor convincing. It simply claims that “[f]or some reason, the computer system selected your business details from the internal customer database, then did its usual contacts lookup and merged the details together before emailing and printing…”.
5. The Complainant has provided evidence with the Complaint that three of the four products shown on the website at the disputed domain name appeared to be exact replicas of products shown on third party websites despite the website claiming that the products were “completely unique” and “individually crafted”. The Response does not even mention this claim by the Complainant, let alone attempt to address it, but simply reiterates that the products allegedly offered by Ms. Brown and Ms. Thomas are “single”, “personalized” and “unique”.
6. The Response does not address the Complainant’s claim that there was no public website at the disputed domain name at the time of the letter of October 23, 2012, and that the Respondent’s website offering the handbags and fashion accessories was only added thereafter in order to prompt a reaction from the Complainant.
7. The Response does not explain why the disputed domain name was switched into proxy despite the Complainant having asserted that this was done to frustrate Complainant’s efforts to ascertain the identity of the legal owner of the disputed domain name.
8. The Response does not attempt to justify, or even mention, the Respondent’s ownership of other “.mobi” domain names reflecting trade marks of well-known Irish retailers.
Accordingly, based on the evidence presented to it, the Panel is of the view that:
- the registration of the disputed domain name reflecting the Complainant’s well-known trade mark;
- the subsequent October 23, 2012 letter inviting the Complainant’s interest in the disputed domain name and warning that otherwise the company would develop it for its own use; and
- the later use of the disputed domain name for a website offering handbags and fashion accessories.
were all part of a scheme to pressure the Complainant to buy the disputed domain name for a substantial sum or to solicit business from the Complainant or otherwise to intentionally profit from the fame of the Complainant’s mark.
In the Panel’s view the foregoing amounts to registration and use of the disputed domain name in bad faith and it is not necessary to apply any of the non-exhaustive provisions in paragraph 4(b) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <brownthomas.mobi> be transferred to the Complainant.
Date: March 11, 2013