WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Birketts LLP (OC317545) v. Joe Nie
Case No. D2013-1080
1. The Parties
The Complainant is Birketts LLP (OC317545) of Suffolk, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Joe Nie of Jiyuan, Henan Province, China.
2. The Domain Name and Registrar
The disputed domain name <birketts.com> (the “Domain Name”) is registered with Mountain Domains Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 19, 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 June 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2013. The Response was filed with the Center on July 10, 2013.
The Center appointed William P. Knight as the sole panelist in this matter on July 16, 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 is a firm of solicitors made up of some 400 staff based in the United Kingdom, who trade under the name “Birketts Solicitors”. The firm and its predecessors have used the name or been referred to as “Birketts” since its formation by its eponymous founder in 1863. Since 1995, the Complainant has maintained a registered trade mark BIRKETTS in the United Kingdom with a priority date of March 1995. The Complainant possesses the domain name <birketts.co.uk>, and previously owned the Domain Name before its expiry on February 2, 2013.
The Domain Name was registered to the Respondent on April 30, 2013. The Respondent’s website purports to be dedicated to The Birkett Family History, while also being a repository for communication between users who share the Birkett name. The content on the Respondent’s website is minimal, constituted by five short posts made over four days during May, 2013. There is no other substantive content on the website.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Name is identical to its BIRKETTS trade mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant asserts that the Domain Name is identical to its BIRKETTS trade mark as the Domain Name fully incorporates the registered trade mark.
When the Complainant discovered that it had lost the Domain Name to the Respondent, it made contact with the Respondent, at first anonymously through an agent, to inquire as to whether it could acquire the Domain Name from the Respondent. After an initial response from a person purporting to represent the Respondent, the Complainant’s agent offered payment of GBP 50 per year for use of the Domain Name, and when this was rebuffed as being insufficient, offered one payment of USD 2,000. The Respondent’s representative requested USD 5,500 for the transfer of the Domain Name.
The Complainant subsequently notified the Respondent on May 17, 2013 that its intellectual property rights were being infringed and that it required the Domain Name be transferred to it in exchange for payment of reasonable administration costs. On the same date of this particular correspondence, the first content was uploaded onto the Respondent’s website.
The Complainant notes that the Respondent did not make use of the Domain Name until the Complainant contacted it on May 17, 2013. The Respondent’s non-use before correspondence with the Complainant is relied upon to support the Complainant’s claim that the Respondent’s subsequent use of the Domain Name was not bona fide, and was instead a hollow attempt to demonstrate legitimate use. The Complainant also notes the limited nature of the blog posts in further support of a lack of a legitimate interest on the part of the Respondent.
The Complainant references the Respondent’s request for a sum of USD 5,500 in exchange for the Domain Name to corroborate the presence of bad faith. The Complainant alleges that the Respondent’s offer of sale for USD 5,500 evidences bad faith under paragraph 4(b)(i) of the Policy, as it purportedly exposes that the purpose of the Respondent’s acquisition of the Domain Name was to transfer registration to the trade mark owner for valuable consideration in excess of directly related out-of-pocket expenses.
The Respondent contests the application for transfer of the Domain Name by the Complainant and requests a finding of reverse domain name hijacking.
The Respondent observes that the name “Birkett” is a common family name and asserts that, at the time of registration, he had a genuine interest in providing a Birkett family website. He states that this shows that he had a legitimate interest in respect of the Domain Name, and that registration was in good faith. He points to four other domain names that he says are family surnames and which he has registered with the same purpose. The Respondent insists that the blog dedicated to chronicling the Birkett family history is legitimate.
The Respondent also observes that there are a number of other top level domains incorporating the family name “Birketts” with no connection to the Complainant.
The Respondent observes that, during the period that the Complainant was the registrant of the Domain Name from 2000 until February 2013, it made no use of the Domain Name, though the evidence provided to support this allegation is not wholly conclusive. The Respondent says that the Complainant has no real need for the Domain Name as it already has <birketts.co.uk>.
The Respondent also says that the Complainant’s trade mark does not exist in China and that the mark is not very popular, at least in China, where the Respondent is located.
The Respondent notes that the Complainant initiated correspondence in respect of the sale of the Domain Name and that the Complainant was persistent in pursuing this correspondence.
6. Discussion and Findings
A. Identical or Confusingly Similar
As per paragraph 4(a)(i) of the Policy, the Complainant is required to show that the Domain Name is identical or confusingly similar to its trade mark. The Panel finds that it is self-evident in this case that the Domain Name is confusingly similar to the BIRKETTS trade mark, as the Domain Name and the Complainant’s BIRKETTS trade mark are wholly identical.
B. Rights or Legitimate Interests
The Panel is mindful that the Respondent is self-represented and that English is not his first language, whereas the Complainant is an English firm of solicitors.
However, the Respondent’s claim to a legitimate interest in the name “Birketts” as a family website for the Birkett family/ies of the world lacks credibility in this Panel’s view. The Respondent says nothing to indicate that he has any such family connection. The website that he has created under the Domain Name is extremely insubstantial and he only created it a few days after the Complainant revealed its interest in the Domain Name. The Respondent says his interest in family name websites is established by four other domain names that he has registered, and which he has held for a considerably longer period in each case, up to two years. Yet each of these domain names has a website which is identical to the “Birketts Family” website that he created, including referring to the Birkett family name, not the surname the subject of the domain name in each case, with the same five posts professing the same interest in the family name “Birkett”).
The facts that the Complainant did not use the Domain Name over the period that it controlled it, that “Birkett” is not a trade mark in China, and is a common surname are of no significance in this case.
Despite the assertions made and the evidence provided by the Respondent, the nature of the material presented on the Domain Name is cursory at best, and cannot be properly construed as constituting fair use of the Domain Name under paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent’s offer of sale of the Domain Name to the Complainant for USD 5,500 further invalidates a claim of legitimate noncommercial use. Additionally, while the Respondent’s purported interest in the Domain Name, chronicling the history of a family name, is not prima facie illegitimate, the fact that the Respondent has not given any evidence of a personal or other connection to the Birkett name renders this purported interest substantially weakened.
In such circumstances, and given the use made of the Domain Name by the Respondent referred to under the next section relating to bad faith, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may indicate registration and use in bad faith. Paragraph 4(b)(i) of the Policy provides that evidence of the registration and use of a domain name in bad faith includes “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
On the evidence, the Panel finds that the selling of the Domain Name was the primary purpose of the registration and use of the Domain Name by the Respondent. This is evidenced by the demand for USD 5,500 by the Respondent in order to transfer the Domain Name registration, which greatly exceeded the out-of-pocket expenses relevant to the Domain Name and was much more than, and in no way prompted by, the amounts offered by the Complainant. The Panel accepts the Respondent’s evidence that the Complainant initiated correspondence relating to the sale of the Domain Name, however the offer of sale for USD 5,500 came solely and wholly from the Respondent. In combination with the posting of what must be regarded as a sham family website use and the timing of the content posted on the Respondent’s website all a few days after the Complainant’s request for transfer, it can only be construed from the evidence that the sale of the Domain Name formed the Respondent’s primary purpose in its registration.
As a result of these circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
For the same reasons, the Panel rejects the Respondent’s application for a finding of reverse domain name hijacking.
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, <birketts.com>, be transferred to the Complainant.
William P. Knight
Dated: July 22, 2013