WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bremner Capital LLP v. Ahsan Manzoor
Case No. D2014-1977
1. The Parties
The Complainant is Bremner Capital LLP of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Keltie LLP, United Kingdom.
The Respondent is Ahsan Manzoor of Birmingham, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bremnercapitalllp.com> is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2014. On November 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2014, 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 November 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2014. The Respondent did not file a formal Response.
A communication was received from the Respondent on November 21, 2014. On November 24, 2014, the Center wrote to the Parties to enquire whether the Complainant wished to request a suspension of the proceeding to explore any possible settlement. The Complainant replied on November 25, 2014, declining to do so. A further communication was received from the Respondent on November 26, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 12, 2014. 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 London investment firm named after its founder, Dr. Christopher Bremner. The Complainant appears to have started business in March 2013 and according to the Financial Services Register was granted certain authorisation with effect from April 4, 2013.
The Complainant has recently filed an application for a Community Trademark as follows:
BREMNER CAPITAL MANAGEMENT, word mark, Office for Harmonization in the Internal Market (OHIM), filed October 30, 2014, filing number 13417647, class 36.
The Complainant has a website at “www.bremnercapital.com”.
Nothing of substance is known about the Respondent except for the content of his emails of November 21, 2014, and November 26, 2014. From these it is evident that he is a person who believes he has a grievance, unrelated to domain names, against the Complainant.
The disputed domain name was registered in the name of the Respondent on August 2, 2014 and resolves to a website upon which the Respondent has expressed his opinions of the Complainant.
5. Parties’ Contentions
The Complainant contends that it has acquired substantial reputation and goodwill in the trademark BREMNER CAPITAL MANAGEMENT, for which it has lodged a trademark application with the OHIM. The Complainant says the trademark has been used in the United Kingdom since 2012, and has provided a Witness Statement signed by a member of the Complainant Company and dated November 6, 2014, stating the firm’s inception date as March 2013. The Complainant states that its founder has over 20 years of experience in the financial industry, that it is well known and has been the subject of comment in the financial press.
The Complainant contends that it has unregistered trademark rights in BREMNER CAPITAL MANAGEMENT through use. It has owned the website “www.bremnercapital.com” since August 18, 2012, on which its trademark has been displayed since shortly thereafter. The Wayback Machine (“www.archive.org”) shows the trademark to have been displayed on “www.bremnercapital.com” at least as early as April 4, 2013.
The Complainant contends that the disputed domain name <bremnercapitalllp.com> comprises essentially the distinctive first two words of the trademark BREMNER CAPITAL MANAGEMENT in which the Complainant claims to have rights, and is confusingly similar to the trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not associated with the Complainant and is not authorised to use the Complainant’s trademark.
The Complainant further contends that the disputed domain name was registered in bad faith and is being used in bad faith. The address of the disputed domain name is similar to the Complainant’s own website “www.bremnercapital.com”. The disputed domain name and the display of the Complainant’s trademark on the corresponding website amount to passing off and misrepresent the origin of the website, on which Internet visitors will be exposed to the Respondent’s statements about the Complainant. The Complainant says the Respondent’s email communications have shown an intention to damage the Complainant’s business.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not submit a formal Response.
In an email to the Center dated November 21, 2014, the Respondent acknowledged receipt of the Complaint and briefly stated the existence of a substantial financial dispute with the Complainant. The Respondent said he had resorted to his actions, but did not intend to keep the disputed domain name in the event of a suitable settlement of the financial dispute. A further email from the Respondent to the Center dated November 26, 2014, added nothing of relevance.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent’s email communication to the Center of November 21, 2014, was before the due date for a formal Response. In all the circumstances, the content of the email will be taken into account by the Panel. The Complainant’s communication of November 25, 2014, and the Respondent’s communication of November 26, 2014, were essentially procedural and need not be taken into consideration.
A. Identical or Confusingly Similar
The disputed domain name was registered by the Respondent on August 2, 2014, and the application to the OHIM for registration of the trademark BREMNER CAPITAL MANAGEMENT was filed by the Complainant on the later date of October 30, 2014. Nevertheless, the wording or paragraph 4(a)(i) of the Policy is in the present tense, requiring that the Complainant presently has rights in a trademark. For the purposes of this proceeding, the Complainant is found to have sufficient rights in the unregistered trademark BREMNER CAPITAL MANAGEMENT through usage as its company name and in company business dating back to at least as early as April 4, 2013.
The two most distinctive words in the disputed domain name, “Bremner” and “Capital”, are found to create confusing similarity to the Complainant’s trademark BREMNER CAPITAL MANAGEMENT in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name and has not been authorised to use the Complainant’s trademark.
Paragraph 4(c) of the Policy provides for the Respondent to counter the Complainant’s assertion and to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are without limitation and rights or legitimate interests may be established by the Respondent in any alternative way satisfactory to the Panel.
Notwithstanding the Respondent’s omission to submit a formal Response, decisions under the Policy are not made by default and it is necessary to examine whether the Respondent may have requisite rights or legitimate interests in the disputed domain name.
The Respondent’s informal email made clear that he has a grievance against the Complainant and that he established the website of the disputed domain name in order to publicise his grievance. Such an activity does not fall within the intentions of paragraphs 4(c)(i) or 4(c)(ii) of the Policy. Tribute or criticism websites, as they are usually called, may be permitted, in certain circumstances, in the terms of paragraph 4(c)(iii) of the Policy. Clearly the disputed domain name has been in use for a criticism website.
Any question of the veracity or otherwise of what may be stated in any tribute or criticism website is typically outside the scope of the Policy. Except as constrained by law, the principles of freedom of speech allow someone to say what they wish, subject to their ability to pay for any damages and costs. One consideration in domain name jurisprudence has been that the website at the tribute or criticism domain name, if it is to incorporate a trademark, must at least be immediately and obviously not confusable with any authentic activity of the trademark owner. There are other recognised provisos, including that the tribute or criticism website must essentially not conduct commercial activity.
The disputed domain name, by relying on the key words “Bremner” and “Capital” as its shopfront, does nothing to alleviate any confusion with the Complainant; on the contrary, the disputed domain name is found to create the near-certainty of being attributed confusingly to the Complainant in the minds of Internet users. The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Paragraph 4(b)(iii) of the Policy is pertinent. The Complainant has produced in evidence screenshots of the Respondent’s website. Whilst it is not appropriate to repeat their content or to examine the Respondent’s grievance, it is nevertheless entirely clear from the vituperative language displayed on the website that the Respondent’s avowed intention is primarily to damage the business of the Complainant and the reputations of its partners or staff. The Respondent confirmed as much in his email of November 21, 2014, in which he stated his view of the “issue” and that he had “therefore resorted” to, in effect, publicising his opinions about the Complainant and its partners or staff on the website of the disputed domain name.
Paragraph 4(b)(iii) of the Policy refers to disruption of the business of a competitor. The interpretation of the word “competitor” under the Policy is wide (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word “competitor” is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”). In any event, the above circumstances are without limitation and based on the record, this Panel finds the disputed domain name to have been registered and used in bad faith within the meaning of paragraph 4(a)(iii) 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 <bremnercapitalllp.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: December 23, 2014