WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Duke of Edinburgh’s Award (DofE) v. Richard Weremiuk, Beyond Marathon Ltd
Case No. D2019-0061
1. The Parties
The Complainant is The Duke of Edinburgh’s Award (DofE) of Windsor, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Maucher Jenkins, United Kingdom.
The Respondent is Richard Weremiuk, Beyond Marathon Ltd, of Telford, Shropshire, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name, <dofe-tracking.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Response was filed with the Center on February 7, 2019. The Center notified the Parties of the commencement of the Panel appointment process on February 7, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 12, 2019. 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 charity based in England, which is the operator of The Duke of Edinburgh Award, a youth achievement award scheme. The Complainant was founded in 1956 and seeks to help young people develop life skills such as leadership, teamwork, and communication skills, through a variety of physical, skills-based, and expedition-based programmes.
The Complainant operates its main website connected to the domain name, <dofe.org>, which was created on April 10, 2001.
The Complainant is the registered proprietor of three trade mark registrations of or including the expression “D of E”, one of which is European Union Trade Mark Registration No. 006642251 D OF E (word mark) registered on April 25, 2013 (application filed February 4, 2008) for a wide variety of goods and services in classes 4, 5, 6, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 28, 29, 30, 32, 36, 38, 39, 41, and 43.
The Domain Name was registered on June 10, 2017, and is currently connected to a website of the Respondent offering for sale or hire GPS trackers for expeditions. The home page states that the devices are for Duke of Edinburgh, Scouting and Personal challenges. The page gives an email address [...]@beyondmarathon.com and features a disclaimer stating “We hire and sell GPS Trackers and are not affiliated to Duke of Edinburgh Awards”.
On October 18, 2018, the Respondent emailed an Approved Activity Provider for Duke of Edinburgh expeditions stating, “I’m from a company called Duke of Edinburgh tracking”. The email went on to promote the Respondent’s GPS tracking devices saying “We are delighted to offer you Duke of Edinburgh tracking – a simple, affordable and reliable device that will track your pupils at each and every stage of their expedition, keeping them safe and giving you absolute peace of mind”.
At the base of the email is a passage reading:
“Duke of Edinburgh Tracking is brought to you by Beyond Marathon Ltd. which was established in 2009. We hire and sell GPS tracking devices for use in DofE and Scouting Expeditions, hiking, cycling and walking events all over the world. We also organize many of our own UK events in association with organisations including The National Trust, Forestry Commission and Peak District National Park”.
On October 24, 2018, the Complainant contacted the Respondent by telephone and followed up the call with an email purporting to record what had been discussed. The email records that the Complainant drew to the Respondent’s attention the Complainant’s concerns regarding the October 18, 2018, email and that it was likely to deceive recipients into believing that the Respondent was in some way associated with or authorized by the Complainant. Similar concerns were expressed in relation to the Domain Name and certain text on the website.
On the same day, the Respondent replied apologizing for the terms of the October 18 email, which had been sent out by a new employee. The Respondent confirmed that all recipients of that email would receive another email within the next 24 hours making it clear that the Respondent is not associated with the Complainant. However, the Respondent was not willing to drop use of the Domain Name and expressed doubts as to the validity of the Complainant’s D OF E trade marks.
The correspondence continued with a further exchange on November 13, 2018, in which the Complainant acknowledged that some of the textual elements of the website about which it had complained had now been sorted, but reiterated concern about the continuing use of the Domain Name. The Respondent replied stating that “DofeA” was a more appropriate trade mark given that the Complainant’s name is “Duke of Edinburgh Awards” not “Duke of Edinburgh”. The Respondent contended that, “[y]ou will find hundreds of webpages that use dofe in context. All of these uses of ‘dofe’ pre-date your application to trademark it in 2008, and I am sure you are aware ‘dofe’ has been in common use for decades previous. I am advised that by that measure, your registration of ‘dofe’ can be challenged”. He concludes that he does not propose to challenge the trade marks immediately, but reserves the right to do so in the future. He believes that the improvements that have been made to the wording are reasonable and sufficient to dispel any risk of confusion.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its D OF E trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and, that the Domain Name has been registered and is being used in bad faith.
The Respondent acknowledges that the Complainant has trade mark registrations featuring the expression “D of E”, but challenges the validity of the registrations on the basis that the expression was widely in use as an acronym in common parlance for several decades prior to the Complainant’s application in 2008 for registration of the mark. The Respondent has raised the matter with the United Kingdom Intellectual Property Office and, according to the Respondent, the ball is in the Complainant’s court, a response being required from the Complainant by March 25, 2019.
The Respondent contends that the Complainant has sat back and allowed numerous infringements of its trade mark for over 10 years, suggesting that the only reason that the Complainant is taking action in this case is because of the commercial arrangement that the Complainant has with its supplier of tracking devices.
The Respondent further contends that “a more appropriate trade mark for the [Complainant’s] organization would be DofEA, since his [sic] organization Duke of Edinburgh ‘Awards’ and the acronym they have trademarked is short for ‘Duke of Edinburgh’”.
The Respondent proposes that this administrative procedure be suspended pending the outcome of the Respondent’s challenge to the validity of the Complainant’s trade mark. If the challenge is successful, the Respondent can continue to use the Domain Name. If it is unsuccessful, the Respondent “will cancel the domain in question, on assurance from the Duke of Edinburgh Awards that it will not be used by anybody else, due the [sic] confusion that it would cause to our existing customers”.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name at the second level comprises the Complainant’s trade mark, D OF E (albeit without the spacing), a hyphen and the word “tracking”. For the purposes of the assessment under paragraph 4(a)(i) of the Policy the “.com” generic Top Level Domain may be ignored.
Normally the first issue to be addressed is whether the Complainant has a relevant trade mark registration on which to base the Complaint. However, in this case, given the Respondent’s challenge to the Complainant’s trade mark registration, the Panel finds it more convenient to start with the issue of confusing similarity working, in the first instance, from the assumption that the Complainant’s trade mark registration is valid.
The test for confusing similarity is explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the opening paragraphs of which read as follows:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
In this case the Complainant’s trade mark is clearly recognisable in its entirety in the Domain Name. The Panel sees no reason to depart from the norm and finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark.
However, as indicated in section 5 above, the Respondent contends that the Complainant’s trade mark is invalid. While there are no papers in the Case File relating to the Respondent’s challenge to the validity of the D OF E trade mark, the Respondent appears to be arguing (a) that the trade mark is non-distinctive on the basis of numerous of other uses of the expression by third parties going back several decades; and, (b) the trade mark is deceptive in that it is an abbreviation of “Duke of Edinburgh”, the Complainant not being the Duke of Edinburgh. The Respondent argues that a more appropriate abbreviation/trade mark would be DofEA (Duke of Edinburgh Awards). The Panel dismisses this latter point. The Panel notes that the Respondent felt it appropriate to use “dofe” and not “dofea” in the Domain Name to identify the Complainant’s award scheme.
Section 1.2 of the WIPO Overview 3.0 asks, “[d]o registered trademarks automatically confer standing to file a UDRP case?”, and answers, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
Had the Respondent produced any evidence to support his case on the invalidity of the Complainant’s trade mark, the Panel might have felt it necessary to look behind the prima facie position, but the Respondent has produced nothing in the way of evidence to support his case. The Panel therefore has no reason to doubt the validity of the Complainant’s registered trade mark and declines to suspend this administrative proceeding pending the outcome of the United Kingdom Intellectual Property Office proceeding. The Complaint succeeds under paragraph 4(a)(i) of the Policy.
For completeness it is worth adding that if, as the Panel strongly suspects, the multitude of prior “dofe” usages to which the Respondent refers are most (if not all) references to the Duke of Edinburgh’s Award scheme, that evidence, if it had been produced, would merely have underlined the fact that the Complainant is likely to own unregistered or common law rights in respect of the abbreviation “D of E”. That is a finding that the Panel would have made anyway on the basis of the evidence filed by the Complainant. As is clear from section 1.1 of the WIPO Overview 3.0, “the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks”.
C. Rights or Legitimate Interests
The Respondent contends that he has rights or legitimate interests in respect of the Domain Name as he is using it “in connection with a bona fide offering of goods or services” as laid down in paragraph 4(c)(i) of the Policy. He points out that his website features a disclaimer reading: “[w]e hire and sell GPS Trackers and are not affiliated to Duke of Edinburgh Awards”, which accurately states the position.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name primarily on the basis that the Domain Name and the use that the Respondent has made of it is likely to lead Internet users to believe that the Respondent and his tracker devices are associated with or authorized by the Complainant. The Complainant contends that such a use cannot constitute “a bona fide offering of goods or services”. The matter appears to be of particular concern to the Complainant, because the Complainant has an agreement with a third party supplier of tracking devices for its expeditions, devices which the Complainant has verified as being fit for purpose. No other tracking device has been tested by the Complainant and verified as suitable.
Insofar as the Policy is concerned (and it is worth underlining that the Panel is required to decide cases by reference to the Policy and not necessarily any particular national law), third party uses of another’s trade mark may in certain circumstances constitute a fair use for the purposes of paragraphs 4(a)(ii) and 4(c) of the Policy, even where the use is a commercial use and unauthorized by the trade mark owner. However, as stated in section 2.5.1 of the WIPO Overview 3.0, “even where a domain name consists of a trade mark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement”.
In substance, the Domain Name comprises the Complainant’s trade mark and the additional term “tracking”. To the eye of the Panel, the message delivered by the Domain Name is that the website to which it connects concerns tracking for the Complainant’s expeditions programme. In that context, at first sight, it indicates a service operated by the Complainant. Indeed, in the Panel’s view it replicates in substance the message of the October 18, 2018, email (see section 4 above), “I’m from a company called Duke of Edinburgh tracking” and “[w]e are delighted to offer you Duke of Edinburgh tracking …”. The Respondent retracted that message, but in the view of the Panel, the message lives on in the Domain Name.
Fair use of a third party’s trade mark is addressed in section 2.8 of the WIPO Overview 3.0, which poses the question: “[h]ow do panels assess claims of nominative (fair) use by resellers or distributors?”. Strictly speaking, the Respondent is neither a reseller nor a distributor of the Complainant’s goods or services. The Respondent provides tracking devices, which he says are suitable for tracking performance in the Duke of Edinburgh Awards expeditions, but which have not been verified as suitable by the Complainant.
While section 2.8 of the WIPO Overview 3.0 is not precisely on point, the Panel has looked to it for guidance. Section 2.8.1 states:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”
The Panel concludes that even if it were appropriate to apply the so-called “Oki Data Test” to a case such as this, the Respondent would fail that test at the second hurdle, “the respondent must use the site to sell only the trade marked goods or services”. The website is not devoted exclusively to tracking devices for the Complainant’s expeditions. The home page contains an “About Us” passage reading:
“[w]e are Beyond Marathon Ltd, a company incorporated in 2009. We hire and sell GPS tracking devices for use in Duke of Edinburgh Expeditions, Scouting Expeditions, Hiking, cycling and walking challenges and events all over the world. We also organise long distance hiking, navigation, and running challenges all over the UK in association with The National Trust, Forestry Commission, Peak District National Park and many other national organisations. The [sic] are licensed partners of Ordnance Survey.”
Moreover, the Panel is far from convinced that the disclaimer is sufficiently prominent to alert visitors to the site that the Respondent and its tracking devices are not authorized by the Complainant.
The Panel finds that, in context, the Domain Name is inherently deceptive and that there is nothing about the use to which the Respondent is making of the Domain Name, which gives rise to fair use for the purposes of paragraph 4(a)(ii) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
While the Respondent has attacked the validity of the Complainant’s D OF E trade mark, it is noteworthy that the Respondent found it to be a suitable identifier for use in the Domain Name and makes prominent use of it on his homepage for the same purpose, stating: “[w]e have many years of experience as D of E trainers and assessors”.
The Respondent manifestly selected the Domain Name precisely because the expression “dofe” is such a well-known identifier and which on the evidence filed by the Complainant is so highly rated and trusted by parents and employers alike.
The Panel finds on the evidence before him and on the balance of probabilities that the Respondent registered the Domain Name hoping and anticipating that the use of the Complainant’s trade mark in the Domain Name would encourage visitors to his website, relying on the reputation attached to the trade mark, and thereby promoting sales of his tracking devices for a wide variety of expeditions, not merely those associated with the Complainant. True, some may notice the disclaimer and realize that the Respondent is not associated with the Complainant. However, the Panel has been unable to find anything on the Respondent’s website (apart from the disclaimer relating to the lack of association between the businesses) indicating that the trackers themselves are not trackers of or authorized by the Complainant. Indeed, on the “More Info” page of the Respondent’s website there is a prominent statement: “[w]e can help with Duke of Edinburgh Trackers”. What does that mean? At best, in the view of the Panel, the statement is unhelpfully ambiguous.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, <dofe-tracking.com>, be transferred to the Complainant.
Date: February 18, 2019