WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lancashire Mortgage Corporation Limited v. garybush co uk/Gary Bush
Case No. D2013-0659
1. The Parties
The Complainant is Lancashire Mortgage Corporation Limited of Cheadle, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stuart Bean, UK.
The Respondent is garybush co uk/Gary Bush of Middlesex, UK.
2. The Domain Name and Registrar
The disputed domain name, <lancashiremortgage.com> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Response was filed with the Center on May 8, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 23, 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.
In responding to the Center’s registrar verification request, the Registrar identified the Respondent as “garybush co uk”, that being the registrant name appearing on the Registrar’s Whois database. However, it is plain from the pre-Complaint correspondence and from the Response that the person behind the Domain Name registration is one Gary Bush. The Panel takes them to be one and the same and all references to the “Respondent” in this Decision are to be taken as references to both.
On reading the case file, the Panel felt the need for clarification of certain aspects of the Parties’ cases and on May 28, 2013 issued an Administrative Procedural Panel Order (“Procedural Order”) to which the Parties responded in timely fashion. As will be seen below, the registration of the Domain Name preceded the trade mark registration upon which the Complainant relied in the Complaint and the Respondent has contended for a finding of abuse of process. The Panel wished to understand the basis for the Complainant’s contention before making any such finding. Moreover, there were aspects of the story on the Respondent’s side, which did not seem to the Panel to stack up. The Complaint exhibited correspondence between the Parties, which appeared to show that the Respondent was willing to transfer the Domain Name to the Complainant in 2006, notwithstanding the Respondent’s current position that the Complaint is wholly misconceived and that the Respondent has been using the Domain Name for a legitimate bona fide business since 2003. The Parties’ responses went some way to clarifying the position.
4. Factual Background
The Respondent claims to “have been practising in UK government regulated mortgage and financial services as an intermediary since 1988 and active on the Internet since 1996” and produces some evidence of that, albeit dating from 1995. The Respondent registered the domain name <mortgage-shop.co.uk> on May 28,1997 and the domain name <mortgageshop.com> on November 27, 1998 and the Domain Name on April 12, 2003.
The Respondent exhibits a screenshot from the Internet Archive WayBackMachine showing that on March 25, 2004, the Domain Name redirected traffic to his website connected to one of his domain names, <mortgageshop.com>.
The Complainant is a member of the Blemain Group of companies, a group of companies engaged in the provision of a variety of financial services to individuals and businesses.
On October 14, 2005, Blemain Finance Limited (“Blemain Finance”), another member of the Blemain Group of companies, filed on behalf of the Complainant application for registration of a trademark comprising the words “Lancashire Mortgage Corporation” in a stylized form as part of a logo, which also featured other stylistic elements. On April 21, 2006 the mark matured into UK trade mark registration number 2,404,972 in class 36 for financial services provided by telephone and Internet to intermediaries.
On June 6, 2006, the IT Operations manager of Blemain Finance wrote to the Respondent (a) stating that Blemain Group were “currently consolidating and updating [their] domain registrations” (b) pointing out that “Lancashire mortgage” was a registered trade mark and “part of our group of companies” (c) stating that they “would like to move this domain over to [their] generic company account where [they] can manage and change the domain tags as required”.
On June 22, 2006, the Complainant’s Group Compliance Director, following up on this correspondence, wrote to the Respondent pointing out that (a) the Complainant had been trading under its name for about 20 years; (b) the Complainant had a website connected to its domain name, <lancashiremortgage.co.uk>, and (c) if the Respondent did not agree to transfer the Domain Name (GBP 250 was offered), a complaint would be filed with the Center under the Policy1.
On August 16, 2006, the Respondent faxed to the Complainant’s parent company a form of “Domain name purchase Contract” under which the Respondent agreed to transfer the Domain Name to the Complainant’s parent company “upon cleared payment of the funds indicated above”, namely GBP 15002.
On October 26, 2006 an account manager at Netnames, a registrar, emailed the Respondent on behalf of the Blemain Group seeking the co-operation of the Respondent in moving the Domain Name from Fasthosts, another registrar, to Netnames. On November 3, 2006, the Respondent replied in terms indicating a willingness to co-operate.
On November 23, 2006, the Respondent emailed the IT Operations manager of Blemain Finance stating “I can confirm that this domain has been unlocked twice for Netnames to transfer this. I have advised them that we have requested twice that they simply follow the usual procedure ….”. The correspondence appears to have ended there. At that stage the transfer had not been completed in light of a technical issue involving an authorization code
On April 19, 2013, the Domain Name resolved to a website at <mortgageshop.com> featuring information about mortgages including the offer of quotes in relation to a variety of mortgage products including discount mortgages. In style and content the website is not dissimilar to that in use in 2004 (see above).
5. Parties’ Contentions
A.1. Complainant (Complaint)
The Complainant contends that it has a trade mark registration of the words “Lancashire Mortgage Corporation” and variously that the Domain Name is identical and confusingly similar to that trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, not being known by the Domain Name, never having operated a bona fide business offering under or by reference to the Domain Name and having been given no permission by the Complainant to use its trade mark.
The Complainant contends that the Respondent registered the Domain Name with a view to diverting business from the Complainant and registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
A.2. Complainant (response to Procedural Order)
The Lancashire Mortgage Corporation has been trading under its name since September 1986 when it was first incorporated and that its website is at “www.lancashiremortgage.co.uk”, the “.co.uk” equivalent of the Domain Name.
The inter-party correspondence annexed to the Complaint and detailed in Section 4 above is incomplete. It fails to show that on August 16, 2006 the Complainant’s parent company, Jerrold Holdings, entered into an agreement with the Respondent for transfer of the Domain Name and in accordance with that agreement paid the Respondent GBP 1,500. The Respondent never honoured the agreement and the Domain Name was not transferred.
B.1. Respondent (Response)
The Respondent denies the Complainant’s claims. He majors throughout the Response on the fact that his registration of the Domain Name predates the Complainant’s trade mark registration, the trade mark right upon which the Complaint was based.
He claims to have been engaged in the mortgage business since 1988 and to have been trading online since 1996, first through provider space and then through his first domain name, <mortgage-shop.co.uk>, which he registered on May 28, 1997.
He points out that the Domain Name is a generic descriptive term and denies that anyone can monopolise the name of a county in this way. He contends that he is making (and has since 2003 been making) legitimate use of the Domain Name redirecting members of the public in Lancashire to his main trading website connected to his domain name <mortgageshop.com> which he registered on November 27, 1998.
The Respondent denies that he is in competition with the Complainant. He claims that since 1988 he has rarely transacted any “Commercial First Charges, Second Charges or Bridging Finance”, the Complainant’s specialist area, but specializes in residential mortgages and re-mortgages for individuals.
The Respondent contends that the Complainant has not launched this Complaint for any proper purpose, but is seeking to harass the Respondent and deprive him of his lawfully acquired and lawfully used domain name by making false claims of abuse.
B.2. Respondent (response to Procedural Order)
The Respondent contends that in June 2006 when the Complainant approached him, threatening him with proceedings, he felt vulnerable and ill-equipped to defend his position, hence his willingness to transfer the Domain Name at that time.
As to the contract and the purchase price of GBP 1,500 he says: “I have seen no evidence of a signed contract as stated to transfer or payment of monies for the transfer of this domain name if this was the case why has this been left for so long and until outside the UK statute bar period3 to bring this to my attention again, its nearly 7 years later?!”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel must have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
The Complainant contends that “Lancashire Mortgage Corporation” is registered as a UK trade mark and, in one place in the Complaint, that the Domain Name “is identical to this trade mark”.
Self-evidently that contention is misconceived. The trade mark features the word, “Corporation”, whereas the Domain Name does not.
No trade mark registration certificate was exhibited to the Complaint nor was there exhibited any extract from the UK Intellectual Property Office (“UKIPO”) database, so the Panel visited the UKIPO website and conducted a trade mark search online. The search revealed that, contrary to the impression given in the Complaint, the registration (No. 2,404,972) is not a word mark, but a device mark. The device is a logo featuring prominently the words, “lancashire mortgage CORPORATION”, and above those words a pair of artistic flashes seemingly symbolizing mountain peaks. The mark as registered appears in two shades of blue.
The Domain Name comprises the word(s) “lancashiremortgage” and the generic ‘.com’ top level domain identifier, which the Panel may ignore for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy. It does not contain any of the other distinctive features of the registered trade mark such as the word, “Corporation” and, of course, the particular colouring and the artistic embellishments.
It being widely acknowledged that this, the first element in paragraph 4(a) of the Policy, is a low-threshold test, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark. The Panel reaches that result with some reluctance given the significant differences between the Domain Name and the registered trade mark and the failure of the Complainant to represent in the Complaint the true nature of the trade mark.
Before leaving this section of the Decision, it is appropriate that the Panel should make clear the following:
1. The date of the Complainant’s trade mark registration, which post-dates registration of the Domain Name, is not a material factor under this element of the policy, but may of course be a significant factor under one or both of the other two elements.
2. While it may be that the Complainant also has unregistered, common law trade mark rights in respect of its name acquired over continuous use of that name since its incorporation in 1986, the Panel has no information enabling it to make any positive finding to that effect. Extraordinarily, the Complaint made no mention of the Complainant’s date of incorporation or its claimed 20 years of prior use of the name, “Lancashire Mortgage Corporation”. This information only materialized in the Complainant’s response to the Procedural Order in the form of a bare assertion and was not accompanied by any supporting evidence.
3. The Panel has ignored the Respondent’s contentions to the effect that the Parties are engaged in differing areas of the mortgage business. For the purpose of this element of the Policy, the test is ordinarily nothing more than an alpha-numeric character string comparison of the Domain Name on one hand and the trade mark on the other.
4. The Panel rejects the Respondent’s assertion that it is impossible for an entity to acquire trade mark rights in respect of a name so descriptive as “Lancashire Mortgage”. It is perfectly possible for a user of such a name to establish by way of long and continuous, extensive use of the name a secondary meaning displacing the primary descriptive meaning and giving rise to trade mark rights (whether registered or unregistered). Obvious examples familiar to UK citizens are “British Airways”, “British Gas” and “Iceland” to name but three. The problem for the Complainant in this case is that it failed to produce a shred of evidence to support such a contention.
C. Rights or Legitimate Interests
While it is for the Complainant to prove each element of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires a complainant to prove a negative in respect of matters, which will often only be known to the respondent. In recognition of this difficulty, UDRP panels will be satisfied if a complainant comes forward with a prima facie case. It is then incumbent upon the respondent to answer that case.
The original Complaint failed in limine. It asserted a trade mark right which post-dated registration of the Domain Name and there was nothing in the Complaint to demonstrate how the Respondent could possibly have had the Complainant in mind when registering the Domain Name. On top of that, the Respondent was able to come up with evidence to demonstrate that he had been engaged in the mortgage industry since 1995 and that he was using the Domain Name in relation to a legitimate mortgage business linked to his website at “www.mortgageshop.com”, a domain name which he registered in 1998.
The Complainant’s response to the Procedural Order presented the possibility of a much stronger case, namely:
(1) The Complainant has been trading under and by reference to its name, the principal element of which are the words “Lancashire Mortgage”, since incorporation in 1986.
(2) The Complainant has been using the domain name, <lancashiremortgage.co.uk> for its trading website since registration of that domain name in August 1998.
(3) The Complainant has become well-known under its Lancashire Mortgage name.
(4) The Complainant applied for registration of its name as part of a device trade mark in 2005 and the registration came through in 2006.
(5) On learning of the Domain Name, the Complainant wrote to the Respondent in June 2006, drawing attention to the above and seeking transfer of the Domain Name. The Complainant offered the Respondent GBP 250 and threatened the Respondent with a complaint under the UDRP, if he did not agree to the transfer.
(6) Negotiations followed resulting in an agreement issued by the Respondent (in a form used by the Respondent) providing that the Domain Name would be transferred to the Complainant on the purchase price of GBP 1,500 entering the Respondent’s bank account.
(7) The Complainant paid the Respondent the GBP 1,500 agreed upon, but the Respondent put technical obstacles in the way of a transfer and it never happened.
If the Complainant had been able to support a case of that kind and the Complainant had been able to explain its delay in taking any action, then the Panel would have regarded the case as being a strong one. If on top of that the Complainant had been able to demonstrate that the Domain Name in the hands of the Respondent was one of a kind (i.e. the Respondent held no other similar domain names featuring the names of counties), then it would not be difficult to accept (absent some other explanation emanating from the Respondent) that the Respondent was targeting the Complainant.
However, the Complainant has produced nothing to support (1) to (3) above. Nor has the Complainant established that it paid GBP 1,500 to the Respondent. The only evidence produced is an internal cheque requisition form. The Respondent denies having received the money and observes with some justification that it would be somewhat remarkable if the money had in fact been paid and the Complainant had left it another 6 or 7 years before taking any action. While delay in taking action is not of itself a bar to success under the Policy, there are circumstances such as those obtaining here where some sort of explanation would have been very helpful.
While the Panel is by no means certain that the full story has been told in the case file, the onus is on the Complainant to prove its case, not for the Respondent to prove his defence.
The Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
By the same reasoning the Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith.
E. Reverse Domain Name Hijacking
Were it not for the Complainant’s response to the Procedural Order, the Panel would have had no hesitation in making a finding of Reverse Domain Name Hijacking based on a combination of (a) the fact that registration of the Domain Name preceded the Complainant’s trade mark registration; (b) the failure of the Complainant fairly to describe its registered trade mark; (c) the fact that the Respondent had been using the Domain Name for his mortgage business; (d) the delay of over 6 years before launching this Complaint, all of which meant that the Complainant must have known that it had no viable case under the Policy and was prepared to “wing” it. On that basis the Complainant would clearly have been abusing the process.
The Complainant’s response to the Panel’s procedural order threw new light on the matter. True, the fact that much of it was bare assertion (e.g. as to the date of incorporation of the Complainant and its continuous use of its trading name since 1986), but the Respondent has not seriously challenged the email and fax communications exhibited to that response, which make the claim to use of the name since 1986 and which include a form of domain name purchase contract emanating from the Respondent showing that the Respondent was prepared to transfer the Domain Name for GBP 1,500. Had all this information, properly supported by exhibits, been before the Panel, it is not inconceivable that the result might have been different.
The Panel believes that the Complainant might have been able to establish a case along the lines of that set out in C above. The Complaint was seriously defective, but the Panel is not satisfied that the defects were actuated out of malice, more likely they resulted from sheer incompetence. It seems inconceivable to the Panel that a Complainant hell-bent on abusing the process would fail to provide evidence of trade under the name over a period of 27 years and with an online presence at the domain name <lancashiremortgage.co.uk>, the “.co.uk” equivalent of the Domain Name, registration of which preceded registration of the Domain Name by several years.
It may be that that evidence was simply not available. The Complainant’s claimed 27 years trade under the name never happened. While the Panel has no satisfactory basis for making a positive finding that it did happen, the Panel has sufficient doubts in the matter to be concerned that a finding of abuse of process in the form of Reverse Domain Name Hijacking is not justified and would serve no useful purpose.
In some cases incompetence on the part of a complainant can lead to a finding of Reverse Domain Name Hijacking and particularly where it ought to have been apparent to the complainant that the factual background never merited a complaint being filed. In this case, however, the Panel believes it possible that the Complainant reasonably had a bona fide belief in the justice of its case, but failed to present its case properly.
The Panel declines to make a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Date: May 31, 2013
1 The Complaint contained no reference to this email or its content. It was only provided subsequently as an annex to the Complainant’s response to the Procedural Order.
2 The Complaint contained no reference to this fax or to the agreement to which it refers. It was only provided subsequently as an annex to the Complainant’s response to the Procedural Order.
3 The Panel does not propose to deal with the allegation that the complaint is statute-barred, a contention that has no place under the Policy.