WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NBTY Europe Limited v. Simon Barnes, High Street Hottie ltd
Case No. D2015-0068
1. The Parties
The Complainant is NBTY Europe Limited of Nuneaton, Warwickshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Eversheds, LLP, United Kingdom.
The Respondent is Simon Barnes, High Street Hottie ltd of Taunton, Somerset, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <juliangravesltd.com> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2015, 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 January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 19, 2015.
Shortly after Notification of Respondent's Default, the Center noted that it appeared that the document entitled "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint (including annexes) were not copied to the email address […]@juliangravesltd.co.uk provided by the Complainant in the Annex 5 to the Complaint. Accordingly, on February 24, 2015, the Center sent an email to that email address with attachment of the email of Notification of Complaint and Commencement of Administrative Proceeding dated January 19, 2015, and invited the Respondent to indicate to the Center whether it would intend to participate in these proceedings or otherwise within five days. The Center did not hear from the Respondent by the specified due date.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 3, 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.
4. Factual Background
Factual background information is taken from the Complaint.
Julian Graves Ltd., ("Julian Graves"), United Kingdom registered company number 02109178, operated a chain of specialised food shops, at one stage numbering over 300, from 1987 until July, 2012. The shops and signage were distinctively green and gold in colour. The business and assets of Julian Graves were acquired by the Complainant in 2008.
In 2005 Julian Graves registered the following trademarks, which are currently registered in the name of the Complainant, to which they were assigned in 2012:
- JULIAN GRAVES, word mark, Community Trademark, Office for Harmonization in the Internal Market, registered March 2, 2005, registration number 3334091, classes 29, 30, 32;
- figurative, Community Trademark, Office for Harmonization in the Internal Market, registered July 1, 2005, registration number 3344967, classes 29, 30, 32.
In July 2012, Julian Graves went into administration.
The disputed domain name <juliangravesltd.com> was registered in the registrant name Simon Barnes, organisational name High Street Hottie ltd, on August 8, 2014. The disputed domain name was found to resolve by automatic redirection to the website "www.juliangravesltd.co.uk" (hereafter the "ultimate website"), the domain name for which was registered on the same date of August 8, 2014 in the registrant name High Street Hottie ltd.
It was also discovered that the day before, on August 7, 2014, a United Kingdom company was registered with the name Julian Graves Ltd, company number 9166414, of which a Simon Barnes was appointed a director on September 3, 2014. This is not the Complainant's company and will be referred to, for the avoidance of confusion, as the "Respondent's Julian Graves company".
The ultimate website purported to portray a synthesis of the Complainant's original Julian Graves business in terms such as "We are now working to bring Julian Graves Ltd back to the high street and online". The ultimate website, indicated in part to be under construction, extended to several pages with photographs depicting foods such as nuts and dried fruits, a liveried original Julian Graves vehicle, and photographs of original Julian Graves shops. Packets of merchandise were illustrated in a dummy layout with explanatory details and an indication that several more such pages could be perused. Purported branch stores in 45 locations and their email addresses were listed, and telephone numbers were provided for the ordering of products.
The Complainant knew nothing of this until it became aware of the disputed domain name and has had no involvement in the activities of the Respondent.
The Respondent has not provided any information about itself except for the details provided for the purpose of registration of the disputed domain name.
5. Parties' Contentions
The Complainant has produced copies of the trademark registrations listed in Section 4. above, showing them to be current and presently registered in the name and address of the Complainant. It is asserted that the trademark JULIAN GRAVES has not been abandoned, embodies substantial goodwill created between 1987 and 2012, that the goodwill continues to reside in the name after the cessation of business and is an asset the Complainant is entitled to exploit in the future.
The Complainant contends that the disputed domain name <juliangravesltd.com> is confusingly similar to the trademark JULIAN GRAVES.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant says the Respondent has no connection with it and has no authority to use the Complainant's trademarks or name.
The Complainant sets out an inter-relationship between three entities: (1) the disputed domain name; (2) High Street Hottie ltd; and (3) the Respondent's Julian Graves company registered on August 7, 2014. Copies of registration and Companies House documents have been tendered to show that Simon Barnes was the personal name of the registrant of the disputed domain name on August 8, 2014; a person of the same name, with date of birth August 15, 1968, became a director of High Street Hottie ltd, being the organisational registrant of the disputed domain name, on October 20, 2014; and a person of the same name, date of birth also August 15, 1968, was appointed a director of the Respondent's Julian Graves company on September 3, 2014. Companies House records show that High Street Hottie ltd and the Respondent's Julian Graves company have, or had, another director in common.
The Complainant states that High Street Hottie ltd is the common registrant of the disputed domain name; of the domain name and ultimate website "www.juliangravesltd.co.uk" to which the disputed domain name resolved; and of the website "www.highstreethottie.co.uk", an adult website offering a chat-line and adult pictures. The Complainant contends that the business of the Respondent indicates that it does not have any rights or legitimate interests in the disputed domain name. Since the image projected by the ultimate website to which the disputed domain name resolved would deceive visitors into considering that a connection existed with the Complainant, it cannot have been in use for a bona fide offering of goods or services.
The Complainant contends that the Respondent cannot claim to be commonly known by the disputed domain name since it does not have any rights in the name Julian Graves.
The Complainant further contends that the disputed domain name was registered and is used in bad faith. Someone, on October 13, 2014, who the Complainant presumes acted on the Respondent's behalf, edited the Wikipedia entry about the original Julian Graves company by adding the incorrect statement that it is now trading again and provided a link to "www.juliangravesltd.co.uk". The Complainant refutes that the Respondent, or the Respondent's Julian Graves company, could legitimately have re-launched the company of which the Complainant holds the JULIAN GRAVES trademarks.
A telephone call on behalf of the Complainant to a number provided on the ultimate website was answered and the caller was told that the stores were being refitted as Julian Graves stores, opening within the next 10 days.
On October 15, 2014, the Complainant sent a letter to the Respondent by special delivery, by fax, and to various Respondent email addresses, drawing attention to the Complainant's trademarks, setting out its position, and listing its expectations including the cessation of use of the disputed domain name and its transfer to the Complainant. Shortly thereafter the disputed domain name resolved to a holding website but no reply to the letter was received. A follow-up letter in similar terms was sent to the Respondent on October 28, 2014, without reply. By November 20, 2014 the disputed domain name did not resolve to any website.
The Complainant contends that the Respondent intended to take advantage of the Complainant's rights in the trademark JULIAN GRAVES and the goodwill it embodies by misleading members of the public into believing that the Respondent and the Complainant are related.
The Complainant further contends that the disputed domain name has been registered and is being used in bad faith.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
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.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence satisfactory to the Panel to the effect that it is the registered owner of, and has rights in, the JULIAN GRAVES word and figurative trademarks.
The disputed domain name <juliangravesltd.com>, given the limited alphanumeric character set and punctuation available in ".com" domain names, reproduces as closely as is possible the Complainant's trademark JULIAN GRAVES and also reads as closely as is possible to "Julian Graves Ltd". The generic Top-Level Domain (gTLD) designation, in this instance ".com", may generally be disregarded in the determination of confusing similarity. The addition of the abbreviation "ltd", universally understood to mean a limited liability company, is found not to be distinguishing but to make the disputed domain name more likely to appear to belong to a company than to a natural person. The Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark JULIAN GRAVES and finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it is not in any way connected with the Respondent, which has not been licensed or authorised to use the Complainant's trademark.
Paragraph 4(c) of the Policy provides for the Respondent to seek 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 illustrative and rights or legitimate interests may be established alternatively by the Respondent to the satisfaction of the Panel.
Superficially, the Respondent has projected a major commercial presence by means of the ultimate website to which the disputed domain name has resolved. The Respondent has not, however, stated its position, made any supporting submissions, or replied at all. It is necessary therefore to examine the evidence, which the Respondent has chosen not to challenge, surrounding the reality of this presence.
The Respondent has attempted to create the image of a substantial business comprising a chain of 45 specialised food shops and an online supply service, named "Julian Graves Ltd". In doing so the Respondent has evidently attempted to cloak itself in the name, trademark and identity of the former business named Julian Graves Ltd, now owned by the Complainant, which operated from 1987 until ceasing to trade in 2012. The Respondent's Julian Graves company has produced a verbose website about its claimed activities and has used photographs of the Complainant's former company's shops, delivery vehicle and products in order to bolster the illusion. The Respondent's website went so far as to claim explicitly that it was "now working to bring Julian Graves Ltd back to the high street and online", which leaves no room for doubt that the Respondent was well aware of the name, nature and trademark of the company as which it was apparently attempting to masquerade. A modification of the Wikipedia entry for Julian Graves provided readers with an active hyperlink to the Respondent's website "www.juliangravesltd.co.uk", to which the disputed domain name also redirected automatically.
The Complainant states in its uncontested evidence that it has not as yet authorised any re-creation of its former business under the JULIAN GRAVES trademark and the actions of the Respondent in purporting to effect such a re-creation were unauthorised. The Panel is satisfied by the evidence on the balance of probabilities that the Respondent has not made any use of the disputed domain name in bona fide trade; has never been commonly known by the disputed domain name within the meaning of the Policy; and that the use of the disputed domain name has not been noncommercial or fair. The Panel cannot conceive of any other circumstance in which the Respondent could have rights or legitimate interests in the disputed domain name and accordingly finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. The fact that the disputed domain name has not been actively used since November, 2014 is further evidence of the Respondent's lack of rights or legitimate interests in the disputed domain name.
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 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."
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
Questions of rights or legitimate interests, and of bad faith, are to an extent interrelated. The findings above in respect of rights or legitimate interests in this case bear also upon the discussion of bad faith below. Conversely a finding of registration in bad faith and use in bad faith would preclude a respondent from being able to establish rights or legitimate interests in a disputed domain name(Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127).
The purpose of the Respondent's investment of time and resources in the creation of a superficially convincing but evidently phantom company is not immediately obvious. It is evident, however, that the name of Simon Barnes appears as the registrant of the disputed domain name, as a director of the Respondent's Julian Graves company registered on August 7, 2014, and as a director of High Street Hottie ltd which is in the business of an adult website offering a chat-line and adult photographs. On the evidence and on the balance of probabilities it is reasonable to conclude that the Simon Barnes in these three entities is one and the same. Also evident is that High Street Hottie ltd is the corporate registrant of the disputed domain name and of the domain name and ultimate website "www.juliangravesltd.co.uk" to which the disputed domain name resolves. Thus the Respondent's Julian Graves company, the disputed domain name and High Street Hottie ltd are intertwined.
Given the impossibility realistically of the Respondent effecting any enduring reincarnation of the Complainant's authentic Julian Graves company, the inescapable conclusion is that the disputed domain name and its convincing ultimate website had an altogether different purpose, the nature of which might be indicated by the Respondent's association with the adult website "www.highstreethottie.co.uk", the operation of which would doubtless benefit from referrals of Internet traffic.
The true purpose of the disputed domain name is of little consequence, however. It is sufficient to observe that, in the terms of paragraph 4(b)(iv) of the Policy, the ultimate website to which it resolved projected a clearly commercial nature with products for sale and could not have been intended to do otherwise than attract the interest of Internet visitors. The website projected a concerted effort to cause visitors to be confused into thinking, at least initially, that they were viewing the online presence of a company proclaiming to be the Complainant's original Julian Graves Ltd, about to trade again under the JULIAN GRAVES trademark. On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been used in bad faith and to have been registered for the purpose for which it has been used, constituting bad faith registration and use under paragraph 4(a)(iii) of the Policy.
The fact that the disputed domain name ceased to be used actively in November 2014 does not affect the foregoing findings. The criterion in paragraph 4(a)(iii) of the Policy, that the disputed domain name "is being used in bad faith", may reasonably be interpreted as referring to the time when such use happened, and in any case the criteria of paragraph 4(b) of the Policy are without limitation.
The Respondent had a duty to reply to the Complainant's cease and desist letters of October 15, 2014 and October 28, 2014, in which it was notified of the Complainant's trademark rights, and its failure to do so is found to be an aggravating factor in the Respondent's bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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 <juliangravesltd.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 17, 2015