WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LLOYDS TSB BANK PLC v. PAUL BRITTAIN
Case No. D 2000 -0231
1. The Parties
The Complainant is Lloyds TSB Bank Plc., a company incorporated under the laws of England and Wales, with its principal place of business at 71 Lombard Street, London EC3P 3BS, England.
The Respondent is Paul Brittain of 3 Hogarth Close, Pheasey, Birmingham B43 7 UL, England.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name . The registrar with which the domain name is registered is Network Solutions Inc. (hereinafter referred to as "the Registrar".
3. Procedural History
On 30 March 2000, the Complaint was filed by the Complainant with the WIPO Arbitration and Mediation Center (hereinafter the "Center") pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999.
On April 3, 2000, the Center acknowledged receipt of the said Complaint and on the same date, in response to a request from the Center, the Registrar confirmed inter alia that it was in receipt of the Complaint sent by the Complainant, that the Registrar is the registrar of the said domain name, that the Respondent is the registrant of the said domain name, that the Network Solutions 5.0 Service Agreement is in effect and that the said domain name is on "hold" status.
On April 14, 2000, having satisfied itself that the said Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"), and that payment in the required amount had been made by the Complainant, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.
On May 4, 2000, the Center received the Respondent's Response. On May 23, 2000, the Complainant having elected to have a three member administrative panel, the Center appointed a three person administrative panel consisting of Mr. James Bridgeman, Justice Austin Amissah and Mr. Frederick Mostert, having received a Statement of Acceptance and Declaration of Impartiality and Independence from each of them.
This Administrative Panel is satisfied that it has been properly appointed under the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the owner of a series of UK registered trademarks for the mark , registered in class 36 under No. 2148403 as of October 17, 1997, in respect of a detailed list of services in that class. The colour blue (Pantone 2747) is claimed as an element of the third mark in the series.
The Complainant was established on June 28, 1999, by the merger of two banks namely Lloyds Bank Plc. and the Trustee Savings Bank Plc. Lloyds Bank Plc had existed in some form since 1865 and since then Lloyds Bank had used the trademark extensively in connection with the provision of financial and insurance products and services.
The Trustee Savings Bank Plc. had used the acronym TSB as a service mark in connection with the provision of financial services and products.
Since the date of the said merger the Complainant has been carrying on business under the trading name and since that date the Complainant has used the said trademark in connection with its provision of financial products and services.
The Complainant has approximately 15 million customers and in 1999, the Complainant's profits before tax were approximately �3.6 billion.
The Complainant is the owner of a number of domain names including: , , , , , and where its principal sites can be found.
The Complainant is licensed to use the service mark in relation to the provision of financial services and does in fact supply financial services under this mark.
The Complainant is a retail bank established on June 28, 1999, by the merger of Lloyds Bank and the Trustee Savings Bank. Lloyds bank had an established goodwill in the financial services industry going back to 1865. The Trustee Savings Bank had carried on business for a number of years using the acronym TSB as its trade name and had an established goodwill under that name in the retail banking industry. Since the merger the Complainant has been trading under the name Lloyds TSB.
The Respondent was formerly a customer of the Complainant but is no longer so. The Respondent is in dispute with the Complainant with regard to a small sum of money which he alleges is not due and owing as claimed by the Complainant. The Respondent uses the www site accessible via the said domain inter alia to vent his spleen.
5. Parties� Contentions
A. Complainant
The Complainant requests this Administrative Panel to issue a decision that the said domain name be transferred to the Complainant because
(i) it is alleged that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) it is alleged that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) it is alleged that the said domain name was registered and is being used in bad faith.
As regards the issue of whether the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights, the Complainant makes the following submissions:
The Complainant is the registered proprietor of the above referenced UK registered trademark. In addition to the said United Kingdom registration, the Complainant is the proprietor of pending applications for the said trademark in Argentina, Australia, Brazil, Colombia, Ecuador, Hong Kong, Japan, New Zealand, Panama, Paraguay, SE Asia, Switzerland and Uruguay and has a pending application for a Community Trade Mark.
The Complainant is also the proprietor of the trademark and has registrations and pending applications for this trademark in the following jurisdictions: Argentine, Australia, Benelux, Bahamas, BVI, Cayman, Ecuador, Gibraltar, Guatemala, Guernsey, Hong Kong, India, Japan, Jersey, Macao, Monaco, New Zealand, Panama, Paraguay, Portugal, Spain, Switzerland, Taiwan, UAE, United Kingdom, Uruguay, USA, Venezuela and is the proprietor of pending applications for this mark in CTM and Ireland.
The Complainant is also the proprietor of the trademark and has registrations for said trademark in the following jurisdictions: Guernsey, Italy, Jersey, Spain, United Kingdom. In addition the Complainant has pending applications for this trademark in CTM and Japan.
The Complainant has not furnished any evidence of its registrations or pending applications for these marks other than a copy of the Registration Certificate for the United Kingdom series.
The Complainant submits that the said domain name is confusingly similar to the Complainant's registered service mark.
As regards the rights or legitimate interest of the Respondent in the said domain name, the Complainant has submitted a print out of the Respondent's site and submits that it is apparent from the www site, that the Respondent has no rights or legitimate interest in the said domain name, that the Respondent was aware of the Complainant's rights in the trademark and has registered the domain name with the intention of publicising offensive comments about the Complainant, to embarrass the Complainant and to divert customers away from the Complainant.
As regards the allegations that the Respondent registered the said domain name and is using the said domain name in bad faith, the Complainant submits that the Respondent is a former customer of the Complainant and that he bears a grudge arising out of this relationship.
It is alleged that the Respondent's www site contains material which is untrue, defamatory and offensive. It is further alleged that the Respondent has used copyright material taken from the Complainant's site at and another www site that is leased by the Complainant. The Complainant submitted extracts from these www sites as evidence in support of its contentions. The Complainant submits that this is evidence of bad faith in that it establishes that the Respondent has the intention of confusing the Complainant's customers.
Furthermore the Complainant alleges that the Respondent has published on the www site a letter purporting to be further criticism of the Complainant's service mark made by a third party, which is expressed in highly offensive language. The Complainant has submitted a copy of said letter and alleges that it has been incorporated into the site with the intention of harming the Complainant's reputation and to tarnish the Complainant's trademark.
The Complainant further alleges that the Respondent has incorporated various links in this site which lead to the sites of the Complainant's principal competitors, namely Barclays Bank, HSBC and Virgin One. It is alleged that in providing these links the Respondent deliberately intended to harm the Complainant's business, to deter prospective customers and to divert existing customers to the Complainant's competitors.
B. Respondent
The Respondent submits that there is no company trading under the name , that the name was registered for the purpose of displaying factual material that the respondent legitimately received, that the domain name was legitimately linked to other material and that the domain name was registered and is being used in good faith.
The Respondent submits that the Complainant has sought to mislead the Administrative Panel in alleging that the Respondent is in debt to the Complainant.
The Respondent makes a number of submissions relating to the content of his www site, in particular that his allegations that the Complainant has a customer intimidation policy which is operated through debt collecting agencies. He submits that the statements on his www site are not defamatory or untrue.
It is also submitted that customers would not be confused into believing that his www site was connected with the Complainant because of the use of "blue" language on the site.
The Respondent submits that he removed a black horse logo from his site as soon as he became aware of the Complainant�s concerns in this regard. Similarly the Respondent removed all links from the site once he became aware of the Complainant's concerns
6. Discussion and Findings
This Administrative Panel accepts that there is an ongoing dispute between the parties in relation to a small sum of money. The Respondent would appear to see this as an issue of principle. It is obvious that the Complainant is correct is stating that the Respondent holds a grudge in respect of this dispute. The Complainant has alleged that the subject matter of the Respondent's www site is untrue, defamatory and offensive. This dispute and the allegations of the Complainant are outside the jurisdiction of this Administrative Panel.
In accordance with paragraph 4 of the Policy, the Complainant is required to satisfy this Administrative Panel:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark 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 said domain has been registered and is being used in bad faith. As regards the Complainant's trade marks, the Complainant has established that it is the registered proprietor of , registered in the United Kingdom in class 36 under No. 2148403. Furthermore this Administrative Panel is satisfied that it has common law rights in the mark. Furthermore the Complainant submits that it is licensed to use the trademark and has established that its predecessor in title, Lloyds Bank, has held such licence since 1987. This Administrative Panel must therefore decide as to whether the said domain name is identical or confusingly similar to the Complainant's service mark. Since both Parties are resident in England it seems appropriate that the laws of England and Wales should be applied to this question. In Pianotist Co's Application (1906) 23 R.P.C. 774 at 777 Parker J. set out what has become the standard test for comparison: "You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for goods of the respective owners of the marks." Applying this test, this Administrative Panel is satisfied that the domain name is confusingly similar to the Respondent's service marks.The next question this Administrative Panel must address is whether the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4 (c) of the Policy provides some examples of how the Respondent can have such rights and interests viz. (i) if he can show 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 before any notice to him of the dispute; or(ii) if he (as an individual, business, or other organization) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or(iii) if he 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 trademark or service mark at issue.The Respondent has not made any claim to have used or prepared to use the domain name in connection with a bona fide offering of goods or services. Neither does he make any claim to have been commonly known by the domain name. The domain name is a combination of the Complainants service mark and the service mark which the Complainant is licensed to use. It is inconceivable that the Respondent could satisfy any of the criteria set out in paragraph 4(a)(ii) of the Policy.The Respondent has submitted that he has a right to comment on the Complainant's services. This is quite distinct from the right in the name/domain. The Respondents right to complain is not a matter for this Administrative Panel.This Administrative Panel is satisfied that the Respondent is using the domain name with the intention of diverting consumers from the Complainant and to tarnish the Complainant's reputation. It is not necessary for us to decide whether such use may be classified as commercial or noncommercial for the purposes of the policy. We therefore conclude that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the domain name.As to whether the Complainant has registered the domain name in bad faith, it is common cause that the Respondent registered the domain name to establish a www site primarily to publish critical comments about the Complainant, to publicize his dispute with the intention of disrupting the Complainant's business.Since registration, the Respondent has established such a www site and inter alia by using copyright material of the Complainant, has given this site an appearance, at least initially, (akin to initial interest confusion) giving the impression that there is some connection between the site and the Complainant. It is all the more unacceptable that he has used what has been described as "blue" language on this site. Furthermore he has created links to the www sites of the Respondent's competitors and in the view of this Administrative Panel these links were established to divert custom away from the Complainant.Paragraph 4(b) of the Policy sets out certain activities which an Administrative Panel may accept as evidence of registration and use in bad faith. One of the examples given is that the domain name has been registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent is not a competitor of the Complainant, however in the view of this Administrative Panel, his use of the Complainant's copyright material, the fact that he registered the domain name and is using the domain name with the sole intention of publicising focused critical comment about the Complainant and has provided links to the Complainant's competitors with a view to actively diverting custom away from the Complainant, taken together is sufficient to allow this Administrative Panel to conclude that the domain name has been registered and is being used in bad faith.
7. Decision
With reference to Paragraphs 4(i) of the Policy and rule 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name which is identical or confusingly similar to the Complainant's trade mark, that the Respondent has no rights or legitimate interest in respect of said domain name and that said domain name has been registered and is being used in bad faith by the Respondent. This Administrative Panel therefore decides that the said domain name should be transferred to the Complainant.
James Bridgeman
Presiding Panelist
Justice Austin Amissah Frederick Mostert
Panelists
Dated: 6 June 2000
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