WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C Williams, Sussex Motorcycles v. Sussex Motorbikes / Bike Smart / Pan Motorcycles / South East Bikerfest
Case No. D2014-2153
1. The Parties
The Complainant is C Williams, Sussex Motorcycles of West Sussex, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented.
The Respondent is Sussex Motorbikes / Bike Smart / Pan Motorcycles / South East Bikerfest of West Sussex United Kingdom, represented by Peter Karmios, United Kingdom. See further the discussion below as to the precise identity of the Respondent.
2. The Domain Names and Registrar
The Disputed Domain Names are <sussexmotorbikes.com>, <sussex-motorbikes.net>, <sussex-motorcycles.net>, <sussexmotorcycles.net>, <sussexmotorcycle.com>, <motorcyclesussex.com>, <motorbikesussex.com>, <motorbikesussex.net>, <motorcyclesussex.net> and <sussexmotorcycle.net> are all registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 12, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 20, 2014. The Complainant filed a further amended Complaint on December 23, 2014.
The Center verified that the Complaint together with the amended Complaints 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 December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Response was filed with the Center on January 9, 2015. Following the notification of the Complaint on December 23, 2014, and subsequent filing of further material by both the Complainant and the Respondent, the Complainant addressed a communication via email to the Center, on January 16, 2015, requesting the addition of the domain names <sussexmotorcycle.com>, <motorcyclesussex.com>, <motorbikesussex.com>, <motorbikesussex.net>, <motorcyclesussex.net> and <sussexmotorcycle.net> (the Additional Domain Names).
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 23, 2015. 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.
The Panel by Procedural Order No. 1, dated January 29, 2015, granted permission to the Complainant to file an amended Complaint to include the Additional Domain Names, subject to compliance with certain formalities and payment of the requisite additional fee given the number of domain names which would then be the subject of the Complaint. The Panel also allowed the Respondent to file a Supplemental Response dealing with the Additional Domain Names. The Complainant, having complied with the necessary formalities and paid the relevant fee, filed an Amended Complaint on February 3, 2015 and the Respondent on February 19, 2015 filed a further Response in relation to the Additional Domain Names.
4. Factual Background
Evidence has been filed by the Complainant. The Respondent has commented briefly upon some of this evidence and filed some evidence of its own. The Respondent for the most part does not produce any evidence that directly contradicts that of the Complainant. In this section the Panel (i) summarizes the factual background based upon the evidence that is uncontested; and (ii) also includes facts which the Panel is satisfied are established on the balance of probability on the basis of the filed evidence. All of these facts and factual background are of importance to the Panel’s reasoning in this case, so are set out below in some detail.
Sussex is a geographic area in the south of England, comprising two counties, East Sussex and West Sussex. The Complainant is a sole trader based in Henfield, West Sussex. He is not an incorporated business but trades (as is permissible under English law) under a trading name of “Sussex Motorcycles”. He has done so for over 10 years. The Complainant sells used motorcycles, with about half of his business being small 50cc and 125cc motorcycles which are often sold to younger and first time riders. The Complainant also services and repairs motorcycles, supplies motorcycle spare parts and accessories and undertakes motorcycle engine rebuilds and motorcycle modifications. The Complainant has incorporated a company called Sussex Motorcycles Limited. It was incorporated on March 11, 2013, but to date it has remained a dormant company and does not trade.
The Complainant trades from premises which he rents on a farm. These premises are not visible from the public highway nor is there any significant signage or the like advertising the Complainant’s business on the site. The Complainant’s customers are derived from his online marketing, his advertising in the local Yellow Pages, and by repeat customers and word of mouth. His advertising does not always contain his address, because he has suffered robberies at his premises in the past, but does contain his website address and his telephone number. Customers who contact him are given directions to his premises.
The Complainant has sold hundreds of motorcycles during the time he has been in business, most of these to customers who reside within 30 miles of his premises. At any one time he has about 20 motorcycles in stock for sale. He sells motorcycles of many makes but he avoids dealing in certain types of motorcycles that he believes to be of inferior quality.
The Complainant registered <sussex-motorcycles.co.uk>, <sussexmotorcycles.com> and <sussex-motorcycles.com> in 2008 and <sussexmotorcycles.co.uk> in 2010. The Complainant uses <sussex-motorcycles.co.uk> and <sussexmotorcycles.co.uk> for a website for his business which has operated since 2008 (these domains all resolve to the website at “www.sussexmotorcycles.com”).
The Complainant has advertised his business under the name Sussex Motorcycles in the local Yellow Pages directory, Motorcycle and Scooter Dealers section, since 2004. The Complainant has since 2008 also given his web address as “www.sussexmotorcycles.co.uk” in his advertisements.
The Respondent (and see further the discussion in section 6 below as to the precise identity of the Respondent) is located in the town of Haywards Heath, West Sussex which is about nine miles from the Complainant’s location. The Respondent has traded for a number of years (it seems since 2004) using up until 2012 the trading name “Bike Smart”. It used a website at “www.bike-smart.net”, to promote this business. The domain name <bike-smart.net> was registered in 2004. Its business comprised the provision of motorcycle rider training, together with a shop and workshop offering the sale of motorcycles and accessories, servicing and related services. Amongst the motorcycles it sells are some lower cost Chinese motorcycles. The website “www.bike-smart.net” is still active and promotes a business of that name offering motorcycle training. The telephone number for that business is the same as the telephone number provided on the Pan Motorcycles website (see below).
At some stage in 2012 the Respondent started using the name “Sussex Motorbikes”. It started a second website using the domain names <sussexmotorbikes.com> and <sussexmotorbikes.co.uk>. That website promoted the business as “Sussex Motorbikes” and offered identical services to those still promoted as “Bike Smart” on the Respondent’s original website. It also continued to use its previous trading name “Bike Smart.” A company called Sussex Motorbikes Limited was incorporated on 30 August 2012. This company is also discussed further in section 6 below.
So far as the Disputed Domain Names are concerned <sussexmotorbikes.com> was registered on August 24, 2012. The Registrant Name is recorded as being “David Seale” and the Registrant Organisation as being “Sussex Motorbikes”. At the time of this registration the company called Sussex Motorbikes Limited did not exist so it cannot have been the registrant. At the time of this decision, attempting to access a website at this domain name redirects to a generic landing page with no details of any business, and no links on it. The domain name <sussexmotorbikes.com> is referred to in this decision as the “2012 Disputed Domain Name”. All the other Disputed Domain Names were registered on October 30, 2014 and record the Registrant Name as being “Peter Karmios” and the Registrant Organisation as being “South East Bikerfest”. Attempting to access a website at any of the Disputed Domain Names redirects to “www.panmotorcycles.co.uk” which contains the Pan Motorcycles website (see below). All of these other Disputed Domain Names are referred to in this decision as the “2014 Disputed Domain Names”.
At some stage in 2013, the Complainant became aware of the website operating at the 2012 Domain Name and at the corresponding “.co.uk” domain name. On 14 October 2013, the Complainant emailed an enquiries email address at <sussexmotorbikes.com>. The Complainant said he had recently become aware of trading in second hand motorcycles and servicing under the name “sussexmotorbikes”; he believed that the previous/normal company name was Bike Smart Motorcycle Training; he stated that he had been trading under “Sussex Motorcycles” for several years; and demanded that the Respondent’s use of “sussex motorbikes” cease.
The Respondent declined. It said it did not see any confusion as the Complainant’s website did not show any trading address or premises, the Respondent had made enquiries and no-one knew where the Complainant traded from whereas Sussex Motorbikes Limited had advertised premises in Haywards Heath with ten staff, a test bay and a training school. The Respondent stated Sussex Motorbikes Limited had been trading longer than Sussex Motorcycles Limited and that in the event of legal action it would launch a counterclaim.
In 2014, the Complainant lodged a complaint with Nominet (the organisation responsible for domain names within the “.uk” namespace) in accordance with Nominet’s Dispute Resolution Service (“DRS”) alleging that the registration of <sussexmotorcycles.co.uk> was an Abusive Registration under Nominet’s Procedure. The respondent in that case was Peter Karmios. On October 1, 2014, an expert appointed pursuant to Nominet’s DRS Procedure, ruled in favour of the Complainant, and held that <sussexmotorbikes.co.uk> was an abusive registration and should be transferred to the Complainant. This case is referred to as “the Nominet Case” in this decision. The policy and procedure applicable to Nominet’s DRS are not the same as the Policy and Rules applicable to this decision although there are broad similarities between them.
After a decision in the Nominet Case in the Complainant’s favour on October 3, 2014, the Respondent’s “Sussex Motorbikes” business as marketed at the website using the 2012 Disputed Domain Name was renamed “Pan Motorcycles.” On October 30, 2014, the Respondent registered all of the 2014 Disputed Domain Names.
On November 19, 2014, the Complainant telephoned the Respondent and sought to come to an agreement about the dispute. At this date the Complainant was only aware of the 2012 Disputed Domain Name and three of the 2014 Disputed Domain Names. He spoke to Mr. Karmios who invited him to make an offer to buy the four domain names in question, and to put it in an email. The Complainant then offered GBP 250 for the four domain names in question by email. On November 21, 2014 the Complainant telephoned Mr. Karmios to discuss this offer and Mr. Karmios indicated he wanted GBP 1000 each for the domain names, and said that in the absence of agreement he would continue to use them to promote the Bike Smart/Sussex Motorbikes/Pan Motorcycles motorcycle business.
The Complainant has experienced examples of confusion where customers of the Respondent, who have purchased motorcycles from the Respondent, have contacted the Complainant believing he was the organisation they had dealt with. Specific examples of this confusion have been provided by the Complainant.
The Complainant has also provided evidence in the form of a recording of two telephone calls made to the Respondent which are as the Panel understands it intended to establish how the Respondent dealt with callers who thought they were contacting the Complainant. In the first call the telephone is answered “Sussex Motorbikes.” The caller a woman then has a conversation enquiring about 125cc motorcycles. She then asks “That is Sussex Motorcycles isn’t it?” and the response is “Sussex Motorbikes yeah.” In the second call the caller the phone is again answered “Sussex Motorbikes” and the caller says says “Me again. Is that Sussex Motorcycles?” and the reply is “Yes Sussex Motorbikes in Haywards Heath.” Later in the call the caller goes on to say she is confused as she was not sure whether she was dealing with “Sussex Motorcycles” or “Sussex Motorbikes.” At that point in the conversation the person she is speaking to then says “Sussex Motorcycles” were a different web based dealer but he didn’t know where they were and he didn’t know much about them.
5. Parties’ Contentions
The Complainant does not claim to have any registered trade mark rights. He says that in summary, he has an active motorcycle business and has been actively trading under, and investing in promoting the name “Sussex Motorcycles” for over ten years. He says he has been trading online under the name “sussexmotorcycles.com” since 2008. He says he has many existing customers in Sussex, having sold hundreds of motorbikes, and an existing reputation and goodwill for quality service. He says that this history shows a business with goodwill, and that this is sufficient to prevent a business that is located a very short distance away from him from adopting the very similar name “Sussex Motorbikes”, and that such a name is confusingly similar to his trading name and is leading to actual confusion. He also says that the Respondent is selling certain types of lower quality motorcycles, which he does not deal with. He says this further damages his reputation and goodwill. He further relies on the Nominet Decision and says that all of the 2014 Disputed Domain Names are also confusingly similar to his trading name and have been registered in bad faith.
It is convenient to set out the substantive text of the Respondent’s original response verbatim. It reads as follows:
“Dear Sirs, I dispute the complainant’s allegations that I have registered the specified domain names in bad faith. Sussex Motorbikes Ltd. Is a UK registered company with several employees, an MOT station and a main road location. The domains reflect our legal entitlement to trade as Sussex Motorbikes Ltd. The Nominet decision was granted against us purely because we made the mistake of not replying in time for the resolution process. Sussex Motorcycles has no legal rights in regard to the trading name. It is not a legal entity and has no copyright or Trademark for “Sussex” or “Motorcycles”. Mr. C. Williams pretends to run a reputable business under the name of Sussex Motorcycles. However, at the time of incorporating Sussex Motorbikes Ltd., Mr. Williams had no identifiable business premises and despite carrying out research, no-one knew where he traded from. All he has is a website and contact number. He also pretends to trade as Kent Motorcycles from the same website and the same telephone number. Clearly, he is not giving an honest impression of where he trades from. He is not the long established or reputable business that he portrays in his complaint. Since this dispute was instigated, we have found that Sussex Motorcycles trades from a tin shed hidden on a farm with no signage or means of finding it to the public. We have spoken to three people who have visited his premises and all three are willing to go on record that they would not buy a bike from there or do business with him. In his submission, Mr. Williams claims confusion over our trading names and cites examples of our customers calling him by mistake. These appear to be examples of his benefitting from our trading name as no-one that I am aware of has phoned us looking for him. Mr. Williams has shown signs of paranoia in regards to our trading names, to the extent that he has set up and secretly recorded several telephone conversations hoping to prove that we are “passing off” as Sussex Motorcycles. In every recording, we clearly state that we are Sussex Motorbikes, which is our legal trading name and we have every right to use this name. In the recording where we recommend Get Bike in London, the woman pretending to be a customer said she was calling from south west London. I regularly deal with Get Bike and knew that they had exactly the bike she was asking for and they are located near her. To any rational person, this would be considered good customer service! Further in his complaint, Mr. Williams does not seem to understand that several businesses can trade from the same premises and share resources. Bike Smart is a training school and Sole Trader, Sussex Motorbikes is a limited company running a successful workshop and MOT station. In summary, there is no demonstration of bad faith on our part and there is no intention by us to pretend we are Sussex Motorcycles. There is no benefit whatsoever to us in “passing off” as a small amateur operation working from a farm shed. I believe Mr. Williams is envious of our success as a workshop and MOT station and is hoping to benefit from our investment by gaining our domain names.”
It is also convenient to set out verbatim the Respondent’s further submissions in relation to the Additional Domain Names, as follows:
“Please accept this submission as further response to the complainant’s inclusion of the following domain names; sussexmotorcycle.com, motorcyclesussex.com, motorbikesussex.com, motorbikesussex.net, motorcyclesussex.net and sussexmotorcycle.net.
1. Mr. Williams trading as Sussex Motorcycles does not have any intellectual property rights or copyright to the names Sussex, Motorcycles or Motorbikes – or any combination thereof. The domain names he is disputing do not cause confusion and I believe do not constitute any deception, either intended or accidental.
2. Mr. Williams asserts that Sussex Motorcycles trades from physical premises and that we are passing off as his business to profit from his reputation. I attach photographs from Google Maps showing that Sussex Motorcycles does not have any visible presence, they are a tin shed hidden on a farm with no signage to indicate any form of motorcycle business. Their own website even denies that they have premises. This is an extract from their site;
‘Postal Address for Sussex Motorcycles: Blacklands Farm, Wheatsheaf Road, Henfield, Sussex, BN5 9AT.
There are no motorcycles or equipment kept at this address’
3. I attach an image of the Sussex Motorbikes property, showing clear signage and a main road presence. It is not possible to mistake the two businesses.
4. There are several other motorcycle related businesses with combinations of Sussex and Motorcycle in their domain names, such as westsussexmotorcyclehire.co.uk and scootersussex.co.uk. We have good relations with these other businesses and do not resent any success enjoyed by them. Failing businesses such as Sussex Motorcycles often blame others for their failure rather than look to themselves.
5. In his submission, Mr. Williams confuses the distinction between our businesses and their online presence. Bike Smart is a training school and not a limited company, therefore I cannot be a director of this business. It is also not owned by Sussex Motorbikes Ltd., which is an MOT station and workshop. They are independent businesses with different owners working together and sharing operating costs and premises.
In summary, I believe Mr. Williams has a paranoid obsession with our success and is attempting to benefit from our investment in marketing and reputation for excellence in training and motorcycle services.”
6. Discussion and Findings
Nature of the Party’s cases
As a preliminary matter, the Panel notes that this is dispute between two relatively small businesses which are engaged in substantially the same line of business and which are located within ten miles of each other. Neither party is legally represented and the way the various arguments have been advanced, and the material which has been deployed as evidence in support of these arguments, is in significant respects difficult to follow and unsatisfactory. Also, significant evidence the Panel would have found helpful to see (such as financial information and more detail of sales figures) has not been provided. The Panel has done its best to understand all of the arguments and material and has made allowance for the status of the parties in trying to determine what it is each party is advancing as its case.
Identity of the Respondent
The precise identity of the Respondent is unclear. The Response has been filed in the name of an individual, Peter Karmios. The Disputed Domain Names (see above) are with one exception registered with the Registrant Organisation given as “South East Bikerfest” and with Mr. Karmios given as the Registrant Name. One of the Disputed Domain Names is registered with the Registrant Organisation given as “Sussex Motorbikes” with a David Seale given as the Registrant Name. The Response also refers to a company named “Sussex Motorbikes Limited.” Mr. Karmios in correspondence with the Complainant has referred to this company as “my company.” This company was incorporated on August 30, 2012. In all but one cases, the websites located at the Disputed Domain Names now redirect to a website at “www.panmotorcycles.co.uk” which promotes a business now trading as “Pan Motorcycles” but beyond this trading name no details as to the precise legal identity of the business are provided on this website. In all cases addresses in Haywards Heath, West Sussex are associated with the Disputed Domain Names and it appears the same telephone number is provided in every case, being the same as that shown on the Pan Motorcycles website. With the exception of Sussex Motorbikes Limited no other corporate entities are involved and the various names are presumably trading names used by a person, probably Mr. Karmios. The Respondent’s explanation of the exact identity of the legal person or persons running this business or businesses is extremely unclear, but the Panel is satisfied this material shows either a single business or a group of related businesses operating as a common venture and sharing premises and facilities, and all being either owned or at least managed by Mr. Karmios. In these circumstances, the Panel proposes to treat these various businesses (other than the company called Sussex Motorbikes Limited which is discussed separately below) as a single Respondent, referred to in this decision as “the Respondent”.
Sussex Motorbikes Limited was incorporated on August 30, 2012, so cannot have been the registrant of the 2012 Disputed Domain Name as that was registered on August 24, 2012. Mr. Karmios in his responses refers to this company as being “our legal trading name” but it is not clear to the Panel what he means by that. There is no proper evidence of what (if any) business this corporate entity undertakes – neither the Pan Motorcycles nor the Bike Smart websites carry any indication that they are websites operated by that company (English company law requires that a company’s name shall appear on any website it operates). The Panel is left in the dark as to exactly how this company is associated with the Respondent. Assuming (in the Respondent’s favour) that it is a company controlled by the Respondent, the question of whether its corporate name gives the Respondent legitimate rights and interest in using the name “Sussex Motorbikes” as a trading name is discussed further below.
The decision in the Nominet Case
As described above the same parties to this dispute have in effect previously been parties to a dispute under Nominet’s DRS Policy. In her decision in that case the independent expert appointed by Nominet found in favour of the Complainant. That decision is not binding upon the Panel in this case nor is it even a precedent the Panel should attach significant weight to, not least because Nominet’s DRS Policy differs from the Policy applicable to this case. The decision is however of some relevance, not least because the Respondent chose to register all of the 2014 Disputed Domain Names after the decision in the Nominet Case, and when the expert in that case had explained her view that the Complainant had established he had enforceable rights under English law in relation to the name Sussex Motorcycles. In those circumstances it might have been expected that the Respondent would explain why it nevertheless thought it was still entitled to register the 2014 Disputed Domain Names. It has not done so. In its original Response (above) the Respondent sought to minimise the decision in the Nominet Case, saying it had only been reached in the Complainant’s favour as the Mr. Karmios failed to file his response in time. That seemed to the Panel to be wholly incorrect – the decision in the Nominet Case clearly addresses and considers points that the respondent had made in that case, and the Complainant in the present case has exhibited in evidence the material the respondent lodged in the Nominet case. It is clear from reading the expert’s decision in the Nominet Case that submissions lodged by Mr. Karmios were considered by that expert. In an effort to clarify this apparent inconsistency, the Panel’s Procedural Order of January 29, 2015 also provided as follows:
“The Respondent is also invited in its Further Response to explain to the Panel what is meant by its statement in its present Response that ‘The Nominet decision was granted against us purely because we made the mistake of not replying in time for the resolution process’ having regard to (i) paragraphs 5.5 to 5.10 of the Nominet decision in question (Annex 22 to the Complaint in this proceeding) and (ii) the contents of the document entitled ‘Response to Nominet Complainy [sic]’ (Annex 23 to the Complaint in this proceeding).”
The Respondent did not avail itself of the opportunity provided by this invitation, and its further Response (above) was wholly silent on this subject. In the circumstances the Panel concludes that (a) the decision in the Nominet Case was reached by the expert after she had considered the Mr. Karmios’s arguments in that case; and (b) the Respondent’s characterization of the decision in the Nominet Case as having been reached simply because it did not file its response in time was untrue and misleading. The relevance of the decision in the Nominet Case is considered further below.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Disputed Domain Names are identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
(i) Identical or Confusingly Similar
The Complainant has no registered trademarks. However English law recognises unregistered trademark rights which can be enforced by legal action under the tort known in English law as “passing off.” A required ingredient for such an action is for a trader to show that it has recognizable goodwill in the name in question. It is permissible for such goodwill to exist within a limited geographic area. In order to establish goodwill in the name in question it is in practice necessary to show the name in question is distinctive and associated in the minds of at least some of the relevant public with the trader in question. In this regard the Panel agrees with the consensus view set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) under section 1.7:
“What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?: Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark.”
In the present case the name “Sussex Motorcycles” is not in the opinion of the Panel particularly distinctive, combining as it does a generic term for two wheeled motorized vehicles, with a geographic area. Such a name is unlikely to be inherently distinctive when initially adopted and unlikely to have attached to it any goodwill when first used. Such a name can however acquire distinctiveness through use and can, as a result of such use, also build up goodwill. Whilst in the present case the Respondent has made a number of disparaging remarks about the Complainant and his business it has not made any serious attempt to challenge the Complainant’s evidence. That evidence is sufficient in the Panel’s view to establish that the Complainant has been trading and advertising as Sussex Motorcycles over a period of 10 years and has built up a modest but ongoing business under the name “Sussex Motorcycles” which sells motorcycles and spare parts and provides servicing and related services. The Panel has not been provided with financial information but confirmation of advertising over this period, and the payment of rent to his landlord has been provided. The Complainant has also provided a photograph showing his current stock for sale, which shows around twenty motorcycles. In the absence of any evidence from the Respondent to counter this evidence, the Panel also accepts the Complainant’s statement that during the period he has been in business he has sold “hundreds” (which the Panel takes to mean at least two hundred) motorcycles. The Panel concludes on the evidence before it, that the goodwill which subsists in this business gives the Complainant rights to bring proceedings to protect the name “Sussex Motorcycles”, at least in relation to infringements in the same geographic area in which the Complainant’s goodwill exists, namely Sussex (or a part of it). The Panel also notes that whilst the Respondent has made a number of disparaging remarks about the Complainant, for example describing him as a “failing business” it has not produced any evidence to substantiate those remarks, which the Panel therefore discounts.
The Panel is not persuaded that the other examples the Respondent provides of what it says are similar domain names used by third parties indicate that the Complainant lacks rights in his trading name. The Respondent refers to <westsussexmotorcyclehire.co.uk> and <scootersussex.co.uk> in this regard. The first name clearly includes “hire” in the name which seems to the Panel to indicate a materially different business to that of the Complainant and the Respondent. The second name clearly includes “scooter” in the name which is a different type of two wheel motorized vehicle from that dealt with by the Complainant and the Respondent. These examples are not in the view of the Panel sufficient to show that the Complainant’s name is not likely to be recognised by at least a proportion of the relevant public as relating to his business.
Accordingly the Panel concludes that each of the Disputed Domain Names is similar to the name in which the Complainant has rights. Each of the disputed Disputed Domain Names combines a variation of a term referring to a motor bike with the geographic area “Sussex.” All of these are in the opinion of the Panel similar to the Complainant’s name.
Accordingly, the Panel finds that each of the Disputed Domain Names is similar to a trade mark in which the Complainant has rights. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
(ii) Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The only one of these of possible relevance in the present circumstances is (i) in relation to the 2012 Disputed Domain Name. However the Panel does not consider the offering of goods and services under the 2012 Disputed Domain Name was bona fide. Nowhere has the Respondent attempted to explain what it was that caused it, in 2012, to suddenly adopt “Sussex Motorbikes” as a trading name and to register and start using the 2012 Disputed Domain Name and then to incorporate a company called Sussex Motorbikes Limited. The expert in the Nominet Case drew attention to the same omission in that case but the Respondent has made no attempt in the present case to rectify that omission. In all the circumstances the Panel infers that the Respondent adopted the 2012 Domain Name knowing of the existence of the Complainant’s business, which was in a substantially identical field and based only nine miles away, and which had been in existence for eight years, and which advertised in the same Yellow Pages as covered the Respondent’s location. In the circumstances the Panel concludes that the Respondent in August 2012 lacked any rights or legitimate interests in the name “Sussex Motorbikes” given that it was confusingly similar to the Complainant’s name.
The position is even clearer in relation to the 2014 Disputed Domain Names. The Respondent having been ruled against in the Nominet Case decision simply went and registered nine more domain names all of which were similar in nature to that which had been found by the expert in the Nominet Case to be abusive. The Respondent at this stage manifestly knew of the Complainant, his business and the dispute, and had already had one finding against it that it lacked legitimate interests in a name very similar to each of the Disputed Domain Names. It similarly lacked legitimate interest in each of the 2014 Disputed Domain Names.
The Panel is reinforced in its conclusion in that once the Complainant has established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case the Respondent has failed to produce evidence to displace this prima facie case. As indicated above the Panel notes the Respondent has made no attempt to explain how or why it chose in 2012 to adopt Sussex Motorbikes as its trading name. It has also mischaracterised the decision in the Nominet Case, and made no attempt to explain why, despite that decision, it considered it was entitled to register the 2014 Disputed Domain Names.
So far as legitimate interests are concerned the Panel understands the Respondent to be advancing a case that it has legitimate interests in the Disputed Domain Names because of the incorporation of the company Sussex Motorbikes Limited in 2012. The Panel is prepared to assume (see above) in the Respondent’s favour that this company is associated with the Respondent. It is apparent from the correspondence passing between the Complainant and the Respondent, and the Responses filed by the Respondent, that the Respondent appears to consider that the existence of this company gives it automatic rights to use the company’s name in trade irrespective of any prior third party rights. The Respondent also appears to consider that the Complainant as a trading individual, rather than an incorporated entity, cannot acquire rights in his trading name, or in any event these are inferior to rights associated automatically with an incorporated company’s name. In addition, the Respondent also appears to believe that because the incorporation date of Sussex Motorbikes Limited is earlier than the incorporation date of Sussex Motorcycles Limited (the dormant company incorporated by the Claimant in 2013) the Respondent has superior rights. None of these arguments are correct. Registration of a company name under English law does not give any automatic right to use that name as a trade mark, and such use may amount to trade mark infringement or passing off in circumstances where relevant prior third party rights exist. Such rights can be owned by an individual or an incorporated entity. The registration process that takes place when incorporating a company under English law does not involve any check for prior rights – as a general rule registration is automatically allowed providing no earlier precisely identical company name exists on the relevant register, and providing the chosen name does not contain certain prohibited terms. So the Respondent’s incorporation of a company called Sussex Motorbikes Limited in 2012 did not give it an automatic legitimate interest to use that company’s name in the course of trade. Given that relevant superior prior rights did exist (see above) the Panel concludes that the Respondent obtained no legitimate interest of its own.
Accordingly the Panel finds that the Respondent has failed to establish its rights or legitimate interests in each of the Disputed Domain Names. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in each of the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
(iii) Registered and Used in Bad Faith
The Panel concludes the registration and use of each of the Disputed Domain Names was in bad faith. It does so for the following reasons:
- It seems highly likely to the Panel that the Respondent knew in 2012 when it registered the 2012 Disputed Domain Name of the Complainant and his business, that business being in a substantially identical field and based only nine miles away and both businesses having been in existence for some eight years.
- The Respondent has been conspicuously silent about its knowledge in this regard. That silence was commented on in the Nominet Case but the Respondent has maintained it in the present case. The Panel infers that if the Respondent had a case of innocent adoption it would have advanced it, with appropriate evidence.
- It may be the Respondent has a bigger business than that of the Complainant (at least in terms of premises and number of staff) but it seems to the Panel it nevertheless still thought it likely there was advantage to be gained from the adoption of a name very similar to that of the Complainant. In this regard the Panel notes that the Complainant has presented evidence of customer confusion and has also stated that his sales fell following the adoption by the Complainant of the name “Sussex Motorbikes.” Such an attempt to take advantage of the Complainant’s reputation by adoption of a confusingly similar name amounts to bad faith.
- The Panel also takes into account the two telephone calls placed in evidence by the Complainant. The Respondent describes these as showing paranoia on the part of the Claimant (the Panel disagrees) but does not dispute their authenticity or seek to provide any further explanation as to what is said in the calls. The Panel has listened to them carefully several times. In each call the caller clearly enunciates the question “Is this Sussex Motorcycles?” and in each case the response is “Yes this is Sussex Motorbikes.” While the reply of course literally gives the name “Sussex Motorbikes” it does so in a way which conveys to the caller she is dealing with the organisation she was seeking and is to that extent inaccurate and misleading. It is also clear later in the second call that the person answering (who sounds as though it is the same person who answered the first call) was aware of the Complainant and his trading name, and the Panel concludes he could have given a correct and accurate answer had he wanted to.
- The Respondent’s conduct in registering each of the 2014 Domain Names after the decision in the Nominet Case. It had at that stage been given a clear decision as to the relative merits of its arguments as against the Complainant’s, but clearly thought it would continue to register further similar domain names in any event. It has not explained why it has done so, nor why at about the same time it nevertheless changed its trading name as promoted on the relevant website from “Sussex Motorbikes” to “Pan Motorcycles.”
- The offer by the Respondent to sell four of the Disputed Domain Names for GBP 1000 each – the fact the Respondent was prepared to sell the names suggests to the Panel that it did not consider them as central to its business and demonstrates an opportunistic approach. It also seems to the Panel that the failure of the Respondent in that exchange to reveal it had also registered the other 2014 Disputed Domain Names is further evidence of bad faith. The Complainant clearly thought he was negotiating a conclusion to the dispute and the Respondent was remaining silent as to the fact that it had registered further relevant domain names not covered by the negotiations.
The Panel has considered the arguments advanced by the Respondent. The Panel accepts that persons who visit each party’s premises would realize these are two different businesses and not be confused. That is beside the point. The likely confusion here occurs online and on the telephone, when persons seeking the Complainant are, as a result of imperfect recollection and/or search engine results and/or the similarity between the names in question diverted from the Complainant to the Respondent. The Panel is also not persuaded by the Respondent’s arguments that the Complaint’s premises are located in a rural location, difficult to find, and that the Complainant does not actively publicize his address, and indicates on his website he does not keep motorcycles on his premises. None of these assertions dispute the Complaint’s key point – that he has been running his business in this way for 10 years and as a result has developed goodwill in that business. He has also explained he does not publicize the address of his business because of problems with thefts in the past – given his rural location this is an explanation the Panel accepts, and this also explains the statement on the Complainant’s website that no vehicles are kept at the address in question.
As a result, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <sussexmotorbikes.com>, <sussex-motorbikes.net>, <sussex-motorcycles.net>, <sussexmotorcycles.net>, <sussexmotorcycle.com>, <motorcyclesussex.com>, <motorbikesussex.com>, <motorbikesussex.net>, <motorcyclesussex.net> and <sussexmotorcycle.net> be transferred to the Complainant.
Nick J. Gardner
Date: March 6, 2015