WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Which? Limited v. James Halliday
Case No. D2000-0019
1. The Parties
The Complainant is Which? Limited (a subsidiary of Consumers� Association). It is a company organized under the laws of the United Kingdom, with its principal place of business located in London in the United Kingdom.
The Respondent is James Halliday, 46 Alexandra Road, Morecombe, Lancashire, LA1 2DP, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").
3. Procedural History
The Complaint submitted by Which? Limited was received on January 27, 2000 (electronic version) and February 1, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). Following the issuance by WIPO Center on February 1, 2000 of a Complaint Deficiency Notification to the Complainant, a rectified Complaint was submitted to WIPO Center on February 4, 2000.
On or about January 28, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated January 29, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration .
James Halliday is the current registrant of the said domain name. His relevant information is shown as follows:
Address: 46 Alexandra Road
Morecombe
Lancashire LA1 2DP
United Kingdom
Email: enquiries@
Administrative, Technical and Zone Contact:
Douglas Mills (DM 23638)
support@WEBNETICS.CO.UK
Phone: 07050 694 255
Fax: 01524 380 500
Billing Contact:
Stuart Foster (SF 3596)
sales@VNETUK.COM
Phone: 01524 380200
Fax: 01524 380500
NSI�s 4.0 Service Agreement is in effect.
The domain name registration is in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI�s Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on February 7, 2000 transmitted by post, courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by February 26, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On February 11, 2000, the Respondent through his agent, Ms Annette Glazier, sought an extension of time for filing a Response. On February 14, 2000, he requested that the Panelist be from outside the United Kingdom. After receiving comments on both requests from the Complainant�s solicitor, on February 18, 2000, WIPO Center granted to the Respondent an extension of the deadline for filing a Response until March 11, 2000. It deferred a decision on the Respondent�s other request.
On March 3, 2000, the Respondent�s solicitors filed by facsimile a Response on the Respondent�s behalf.
On March 14, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On March 14, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On March 17, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on March 22, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 27, 2000.
On March 16, 2000, the Panelist advised WIPO Center pursuant to Rule 12 that he required further submissions from the parties as specified within 2 working days. These submissions were received by the Panelist from the Respondent on March 22, 2000. On March 23, 2000, the Complainant requested an extension of 2 days for filing its submissions as required by the Panel. On March 23, 2000, the Panel, acting through WIPO Center, granted this request. The Complainant�s solicitors filed further submissions on March 24, 2000. The Respondent then sought to reply to two points raised by the Complainant�s further submissions. The Panel allowed a further day for the filing of these which, because of transmission difficulties, were not received by the Panel until March 27, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. FACTUAL BACKGROUND
The Complainant has provided evidence of the registration of the following marks:
Trademarks: THE GOOD FOOD GUIDE. These are owned by the Complainant and were registered as United Kingdom trademarks in 1991 and 1992 under Nos 1318234 and 1459533. The registration of these trademarks is current.
There was no evidence that registration of these trademarks had been effected in any other country.
The trademarks are in Class 42 in respect of the provision of information and advice relating to the provision, preparation and consumption of food and drink and in Class 16 in respect of printed matter, books, periodicals etc. concerning the provision, preparation and consumption of food and drink.
According to the WHOIS information supplied by the Complainant, the Respondent registered the domain name on March 11, 1999. The Respondent is not a licensee of the Complainant, nor is he authorized otherwise to use the Complainant�s mark. There is no evidence to show that the Respondent is commonly known as "The Good Food Guide".
5. PARTIES� CONTENTIONS
The Complainant submits that it is a well-known British independent consumer organization devoted to improving consumer goods and services. It is the publisher of a series of annual publications under the name of "The Good � Guide". One such publication is "The Good Food Guide", first published in 1951. The mark has been used continuously since then. This publication can be accessed by subscription to the Complainant�s on-line services where its website attracts around 1.4 million hits per week. Companies allied with the Complainant sought an injunction in the High Court of Justice, Chancery Division, on 25 May 1994 prohibiting the registration of a company called "Consumer Good Food Guide Limited". The order made by the Court (annexed to the Complainant�s case) showed that the defendants there undertook inter alia not to infringe any trademark, not to offer, advertise or promote for sale restaurant and/or hotel guides and/or entries therein or certificates of quality or endorsement under or by reference to the name "Consumers� Good Food Guide" or any other name confusingly similar to "The Good Food Guide". The effect of the undertakings was similar to the grant of an injunction restraining use by those defendants of the name "Good Food Guide". There is no evidence showing any connection between the Respondent in this case and the defendants in that case.
The Complainant was alerted to the use by the Respondent of the domain name by a restaurant proprietor whom the Respondent had approached to advertise on his website. According to the Complainant (it not being disputed by the Respondent) this restaurateur, when discovering that the Respondent�s proposal had no connection with the Complainant, warned the Complainant of the Respondent�s activities.
The Respondent admits that the domain name is confusingly similar to the Complainant�s registered trademarks. He claims a legitimate interest in respect of the domain name because it is descriptive, consisting of three English words which describe the service the Respondent offers. As such, he claims there is a defence under s. 11(2)(b) of the UK Trade Marks Act 1994 which provides:
"A registered trademark is not infringed by �
(b) The use of indications concerning the kind, quality, quantity, intended purpose, geographical origin, the time of production of goods or the rendering of services or other characteristics of goods and services."
The Respondent�s website at the time of the Complaint read as follows (a few words at the end of each sentence did not appear in the version supplied). However, the sense is apparent.
"Welcome to Good Guide.Net
Good Guide is the most comprehensive guide to the hospital (sic)
on the net. We have guides for everyones needs so all you ne (sic)
simply click on your chosen guide below to be transported to (sic)
directories
Attention hospitality industry if you would like more
information on how to appear on one of our guides.
Contact us on: 01524 381609 or 01524 400843
or email us at: enquiries@"
It seems clear from this website that the Respondent solicits entries into its guides (including "Good Food Guide") from businesses in the hospitality industry.
Correspondence attached to the Complaint (and not disputed by the Respondent) discloses the following information:
(a) The Respondent has registered the domain names and .
(b) The Respondent, trading as "The Good Guide � your guide to good hospitality on the Internet", had registered the following domain names:G/.com G/.com G G G
(c) In registering these domain names, the Respondent claimed to safeguard at least one generic name for each of his listings. From the generic terms unavailable at the time of purchase, only one "was offering a similar service to ourselves, that being . Therefore we felt we had found a gap in the Internet market to establish a possible successful website offering a "Good Guide to Hospitality on the Internet"."
(d) The Respondent "purchased the names we needed to achieve our business plan, and registered the available names".
(e) The Respondent would be open to negotiation about "reasonable compensation". The response in the first two weeks of trading exceeded �1,400. The Respondent�s directory "will be based on annual granted continuations plus, having registered a world-wide suffix, we would not be limited to the United Kingdom".
(f) On September 7, 1999, the Respondent�s agent stated in a letter to the Complainant inter alia:
(i) The Respondent registered the available generic terms only in order to maximise his success on the search engines.
(ii) No other suffix-bearing good food guide was offering a similar service.
(iii) The Respondent bought the names from Internic.
(iv) The Respondent would not give up "our property g and will continue trading".
The Respondent further submits that a website does not, by its existence on the World Wide Web, offer goods and services to the entire world. He relied on dicta in Flowers Inc v Phonenames Ltd [2000] IP&T 325, a decision of Jacob J on an appeal against the dismissal of an opposition to the registration of a trademark. The Respondent offers "not to offer any goods and services under the domain name within the United Kingdom" in the event that the Panel is inclined to transfer or cancel the domain name.
The Respondent denies that he is using the domain name in bad faith by virtue of the above submissions.
6. DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Respondent has no rights or legitimate interests in respect of the domain name.
The domain name has been registered and used in bad faith.
As acknowledged by the Respondent, the domain name is identical or confusingly similar to the Complainant�s trademarks. The Panel so decides.
It is also clear that the Respondent has no licence or other legal right in respect of the domain name, unless his usage is permitted at law. The Panel also decides that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant�s reply submissions claimed that when access to the site in question was attempted on March 22, 2000, there was no website able to be accessed. The Respondent in his final reply claimed that there was a good explanation for this, as follows. When the Respondent first began trading through his website, the Complainant requested him and his website provider to desist. Under threat of litigation from the Complainant, the website provider downloaded the website. Other website providers declined to upload the website. Only recently has a willing provider been found. The Respondent needs time to rebuild the database before relaunching the site. The Respondent affirms its intention to continue trading "unless the Panel requires the Respondent to undertake to trade only outside the UK".
However, apart from the Respondent�s suggestion of willingness to negotiate a sale of the domain name in its letter to the Complainant of September 1, 1999 (which can in itself be evidence of use), the correspondence as a whole makes it clear that the Respondent has used the domain name. For example, the same letter speaks of the first two weeks of trading. The last reply from the Respondent affirmed an intention of using the domain name.
Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:
"the following circumstances � shall be evidence of the registration and use of the domain name in bad faith:
(iii) You have registered the domain name primarily for disrupting the business of a competitor.
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, 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 incident alleged by the Complainant of a restaurateur who was approached by the Respondent to advertise on his website demonstrates the applicability of Rule 4(1)(iv) to this situation. This incident was not denied by the Respondent in his Response or further submissions. The very use of the Respondent�s website constitutes an attempt intentionally to attract Internet users who, possibly familiar with the Complainant�s trademarks, could easily be confused into thinking that the Complainant had endorsed the use of a website bearing the name Good Food Guide. The sheer number of hits on the Complainant�s website (which gives access to its publication "The Good Food Guide") demonstrates the wide public knowledge of the Complainant�s publication. It is an easy inference to make that many of those hits are from persons outside the United Kingdom who plan a visit to that country and wish to be informed about restaurants there.
Whilst the Respondent avers that he had registered the domain name to further his legitimate business, it is not hard to draw the conclusion that the registration must have been known to him as likely to disrupt the Claimant�s business. The Panel does not find it necessary to make a conclusion under Paragraph 4(b)(iii) since the case under paragraph 4(b)(iv) is so strong.
The Panel accordingly determines that the Respondent has registered and used the Complainant�s mark in bad faith.
7. PRINCIPLES OF LAW APPLICABLE
It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent is domiciled in the United Kingdom, and any legal action would have to be taken against him in that country, the Panel considers principles of law set out in decisions of Courts in the United Kingdom. I do so in deference to the legal submissions in the Response. It is not strictly necessary to do so, because I find that the Complainant succeeds in terms of the Policy. However, I believe that the case law in the United Kingdom supports the view I have taken.
The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. This is the situation envisaged by paragraph 4(a)(i) of the Rules.
The English position is similar to that taken in other common law jurisdictions. In the United States there are cases noted by Panelists in other WIPO Center decisions, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998). The British Telecom case was followed by the High Court of New Zealand in New Zealand Port Ltd v Leng [1999] 3 NZLR 219. The British Telecom case was concerned mainly with the tort of passing-off. However, the judgment of Aldous LJ (who gave the principal judgment of the Court), stated the trademark position at pages 925-6 thus:
"British Telecommunications Plc. did not press their claim that the defendants had infringed their trade marks by carrying out acts falling within section 10(1) of the Trade Marks Act 1994. The case of the plaintiffs was that the acts of the defendants were threats of acts falling within section 10(3) of the Act of 1994 and therefore injunctive relief was appropriate.
Section 1 of the Act of 1994 defines a trade mark as �any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.� Section 9(1) states:
�The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.�
Section 10(3) is in these terms:
�A person infringes a registered trade mark if he uses in the course of trade a sign which � (a) is identical with or similar to the trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.�
Mr Wilson submitted that to infringe there had to be use of the trade mark as a trade mark and that the use had to be a trade mark use in relation to goods or services, in the sense that it had to denote origin. He also submitted that the use had to be confusing use.
I am not satisfied that section 10(3) does require the use to be trade mark use nor that it must be confusing use, but I am prepared to assume that it does. Upon that basis I am of the view that threats to infringe have been established. The defendants seek to sell the domain names which are confusingly similar to registered trade marks. The domain names indicate origin. That is the purpose for which they were registered. Further they will be used in relation to the services provided by the registrant who trades in domain names.
Mr Wilson also submitted that it had not been established that the contemplated use would take unfair advantage of or was detrimental to the distinctive character or reputation of the plaintiffs� trade marks. He is wrong. The domain names were registered to take advantage of the distinctive character and reputation of the marks. That is unfair and detrimental.
I conclude that the judge came to the right conclusion on this part of the case for the right reasons."
This excerpt shows that the Complainant might expect the grant of an injunction against the Respondent by the Courts of the United Kingdom based on trade mark infringement. However, any order of those Courts would be purely territorial in its operation.
Dealing with the Respondent�s submissions under s11(2)(b) of the Trade Marks Act 1994, it is difficult to see how this provision can assist the Respondent�s argument, given that the Complainant has been using its registered marks for some time. The Respondent did not elaborate on this submission and cited no authorities for the proposition that because of s11(2)(b), the Complainant�s mark was not infringed. Such authority as the Panel has found as a result of his own research within the limited time available, show that references by English Courts to this statutory provision do not seem to assist the Respondent�s argument. For example, in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 299, Jacob J said:
"I am, of course, concerned with the word "Treat" alone. I cannot see even a hint that anyone regarded this alone as a trade mark. Mr Young says no matter, once it is incorporated into a phrase which has trade mark significance, i.e. "Toffee Treat" that is enough. If I accept that the whole phrase is indeed a trade mark, I think Mr Young must be right. Section 11(2) does not cover the case where a word, outside the context of the use, is descriptive if, in context, it is part of trade mark use for the defendant�s goods."
The Respondent�s suggestion that it would not offer goods and services in the United Kingdom through its domain name is just not practical. First, any such undertaking could not sensibly be policed. Secondly, even if the Respondent had only non-UK restaurants on the website, persons in the United Kingdom might still wish to access the site and think that the use of the name was some endorsement by the Complainant. Besides, the Panel has no jurisdiction to make such an order. The Panel�s jurisdiction under paragraph 4(i) of the Rules is limited to requiring either the cancellation of a domain name or the transfer of registration to a complainant.
Next, I deal with the Respondent�s quotation from the judgment of Jacob J in the 1-800 Flowers case at 332-3, relied upon by the Respondent and referred to in paragraph 8 of the Respondent�s submissions:
"Reliance is also placed on internet use of 1-800 FLOWERS. This name (with the addition of Inc.) is used for a website. Mr Hobbs submitted that any use of a trade mark on any website, wherever the owner of the site was, was potentially a trade mark infringement anywhere in the world because website use is in an omnipresent cyberspace: that placing a trade mark on a website was �putting a tentacle� into the computer user�s premises. I questioned this with an example: a fishmonger in Bootle who put his wares and prices on his own website, for instance for local delivery, can hardly be said to by trying to sell fish to the whole world or even the whole country. And if any web surfer in some other country happens upon that website he will simply say �this is not for me� and move on. For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world."
As noted earlier, the 1-800 Flowers case was an appeal to the High Court from a Registrar�s decision on an opposition to the registration of a trademark. A full reading of the case shows that the Judge found that the mark in question had not established a secondary meaning such as to acquire distinctiveness. I find little in that case to assist the Respondent�s argument.
The Panel has determined that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the limited relief which this Panel is empowered to give. The Panel�s decision is based primarily on the terms of the Policy cited earlier. The Panel finds nothing in United Kingdom trademark law which suggests a contrary indication to the decision which it now makes.
8. DECISION
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Hon Sir Ian Barker QC
Presiding Panelist
Dated: March 27, 2000
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