WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lloyds Bank Plc v. A. A.
Case No. D2014-2124
1. The Parties
The Complainant is Lloyds Bank Plc of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Crowell & Moring, LLP, Belgium.
The Respondent is A. A. of Gravesend, UK, self-represented.
2. The Domain Name and Registrar
The disputed domain name <lloydsbank.scot> is registered with Mesh Digital Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 December 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2015. The Response was filed with the Center on December 30, 2014. By communication of January 5, 2015 the Center invited the Complainant to submit a Request for Suspension by January 8, 2015 should it wish to explore possible settlement options with the Respondent. The Complainant did not submit a Request for Suspension.
The Center appointed David J.A. Cairns 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.
4. Factual Background
The Complainant is in the business of financial services and is a subsidiary of the Lloyds Banking Group.
The Complainant is the owner of the following word trademarks: (i) LLOYDS BANK registered with the UK Intellectual Property Office (registration no. UK00001286876) in class 36, and with a filing date of October 1, 1986; and (ii) LLOYDS BANK registered with the UK Intellectual Property Office (registration no. UK00002548791) in classes 09, 35, and 36. These trademark registrations predate the registration of the disputed domain name.
The LLOYDS BANK trademark is very well known worldwide. The Complainant actively promotes its LLOYDS BANK trademark through marketing materials and its website linked to the domain name <lloydsbank.com>.
The disputed domain name was registered on September 23, 2014. On October 21, 2014 the disputed domain name resolved to a parking page indicating that the disputed domain name had been suspended. On February 4, 2015 the Panel entered the disputed domain name in his web browser and found no webpage associated with it.
5. Parties' Contentions
The Complainant submits that the disputed domain name is identical to the Complainant's trademarks. The Complainant submits that the disputed domain name incorporates the Complainant's LLOYDS BANK trademark in its entirety.
The Complainant further alleges that it is well established that the addition of a generic Top-Level Domain ("gTLD") such as ".scot" can be disregarded when comparing the similarities between a domain name and a trademark. Moreover, the Complainant submits that the addition of the ".scot" gTLD adds more confusion given that the Complainant is active in Scotland and has a close link to this country through its parent, Lloyds Banking Group and the Complainant owns several other domain names under the ".scot" gTLD.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that it is established UDRP jurisprudence that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of proof to the Respondent. The Complainant further argues that the Respondent is not commonly known by the disputed domain name. Moreover, the Respondent has not acquired trademark or service mark rights and the Respondent's use and registration of the disputed domain name was not authorized by the Complainant. Finally, the disputed domain name resolves to a parking page mentioning that the disputed domain name has been suspended.
The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant alleges that at the time the Respondent registered the disputed domain name it must have known about the Complainant and its trademarks as the Complainant's trademarks are well known all over the world, and especially in the UK, where the Respondent resides; and a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant's trademark registrations. The Complainant alleges that it has previously been held that there is bad faith registration pursuant to the Policy when the respondent knew or should have known the complainant's trademark rights, and nevertheless registered a domain name incorporating a mark, in circumstances where the respondent itself had no rights or legitimate interests in the trademark.
The Complainant submits that the Respondent is using the disputed domain name in bad faith. The Complainant alleges that by registering the disputed domain name the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its trademark in a corresponding domain name affecting the business of the Complainant by attracting visitors looking for information about the Complainant or its trademarks and creating difficulties for persons searching the Internet. The Complainant also alleges that the passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by the Respondent that would be legitimate and not infringing the Complainant's well-known trademark. Moreover, the Complainant alleges that it cannot be excluded that the Respondent may use the disputed domain name for fraudulent activity in view of the regulated sector in which the Complainant is operating.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent alleges in his Response that he did not understand the legal ramifications of his purchase of the disputed domain name. The Respondent states that he "had no fraudulent intentions", that the disputed domain name was not bought in bad faith and that he is "a young graduate engineer who has no interest in pursuing fraudulent ventures, [who] was simply coerced by a colleague, who described the purchase….. as a good investment ahead of the Scottish Referendum".
The Respondent states that he sent an email to the Complainant's representative informing him that he did not purchase the disputed domain name in bad faith and also contacted the registrar who assured him that the disputed domain name had been cancelled.
The Respondent "consents to the remedy requested by the Complainant" and agrees to the transfer or cancelation of the disputed domain name "on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel".
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
The Respondent "consents to the remedy requested by the Complainant," which is the transfer of the disputed domain name to the Complainant. However, notwithstanding the Respondent's consent to transfer there has not been any settlement, and the Complainant did not respond to the Center's invitation to suspend the proceeding to explore settlement. Accordingly, there is no more than a unilateral consent to transfer by the Respondent. The question is the proper course of action for the Panel when faced by a unilateral consent to transfer, and in particular whether a unilateral consent to transfer justifies an order to transfer the disputed domain name without any finding that three paragraph 4(a) elements exist, or whether, notwithstanding the consent, the Panel must be satisfied that the paragraph 4(a) elements are proven. See paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
This Panel also notes that the proper treatment of a unilateral consent to transfer was considered in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 where it was stated:
"A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke PhilipsElectronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer 'deems' proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207)."
For this Panel, the present case is an example of a unilateral consent to transfer with denial of bad faith. This Panel follows the reasoning in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and finds that in these circumstances the Panel can immediately order a transfer pursuant to paragraph 10 of the Rules, and so orders in this case without reaching consideration of the paragraph 4(a) elements.
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 <lloydsbank.scot> be transferred to the Complainant.
David J.A. Cairns
Date: February 4, 2015