WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Digital Channel Partners Ltd. v. Bilham Solutions and Marlies Bilham
Case No. D2000-1246
1. The Parties
The Complainant is Digital Channel Partners Limited a company incorporated in Ireland in July 1999, and with places of business either directly or through wholly owned subsidiary companies in Dublin, New York, Los Angeles, San Francisco, Hong Kong and Singapore.
The first Respondent is Bilham Solutions whose address is given as PO Box 3860 Salt Lake City 89140, Utah, United States. The second Respondent is Marlies Bilham whose address is given as PO Box 29140, London, SW1X 9ZR, United Kingdom.
2. The Domain Names and Registrar
The domain names that are the subject of the dispute are ""; ""; ""; ""; ""; "" ("the domain names"), which were first registered on July 2, 2000.
The Registrar with which the domain names are registered is Melbourne IT Limited, Level 2, 120 King Street, Melbourne 3000, Australia ("the Registrar").
3. Procedural History
On September 21, 2000, a Complaint by Digital Channel Partners Limited was received by email.
On September 22, 2000, the Complaint was received by WIPO in hard copy.
On September 27, 2000, a formal requirement compliance checklist was completed.
On September 27, 2000, the Registrar responded to a request for Registrar verification of September 26, 2000.
On September 28, 2000, a formal notification of Complaint and commencement of administrative proceeding was sent to the Complainant, the Communication Records being forwarded to the Respondents on September 30, 2000.
On October 18, 2000, a Respondent Default Notification was issued.
On November 2, 2000, a Notification of Appointment of Administrative Panel and projected decision date was sent to the Complainant and Respondents together with transmission of case file letters.
On November 21, 2000, the Administrative Panel issued an order requesting the Complainant to confirm whether it wished to place before the Sole Panelist pursuant to Rule 12 any further statement or documents in support of its Complaint and if so to do so within 7 days, with the Respondents providing any response within 7 days thereafter.
On November 23, 2000, the Respondent Marlies Bilham forwarded an explanation.
On November 29, 2000, the Complainant forwarded its further evidence and submissions.
No other evidence or submissions have been forwarded by the Respondents.
4. Factual Background
A. The Complainant
Digital Channel Partners Limited ("DCP") was established in July 1999, in Ireland. Currently it has places of business and operates from Dublin, London, New York, San Francisco, Los Angeles, Dallas, Hong Kong and Singapore.
DCP is a business, which has grown substantially and dramatically in a relatively short space of time. It describes itself as an e- business company offering its services to businesses seeking to build digital enterprises using the Internet, GSM or digital TV technology. It provides to its clients and customers all the services needed to launch major e- business operations specializing in financial services, entertainment, publishing and retail sectors. It also provides services to establish businesses looking to exploit new digital channels to build new service and sales capability.
DCP's clients include global financial service companies, entertainment, publishing, news media and sport/lifestyle related ventures. One of its main clients is Forbes. As of August 2000, DCP became a member of the international World Wide Web Consortium (W3C). It has established business partnerships with global promoters of e-commerce/online content solutions (Eg Art Technology Group, a company which is at number 88 of the IT 100 companies as maintained by Business Week's InfoTech 100 Annual Report). It also has an alliance with Vignette Corp, a company at number 89 of the InfoTech 100.
The Complainant's business is centered on a number of locations in Ireland, England, the United States, Hong Kong and Singapore. In totality its turnover to end August 2000, was IR 5,000,000 pounds with staff of over 170, projected to a turnover for year 2000, of IR 25,000,000 pounds plus and staff of 250. Its Hong Kong and Singapore operations are maintained by a staff of six as of August 2000.
The Complainant has no registered trade or service marks in any jurisdiction.
B. The Respondents
The First Respondent is registered as the owner of the domain name "". The Second Respondent is registered as the owner of the remaining domain names.
The administrative contact for all domain names registered to the respondents is Territer Bilham of Salt Lake City, Utah, United States. The postal details for the First Respondent are the same as for the Second Respondent. The Second Respondent uses a postal address in London and an email address the same as that for the First Respondent.
The Complainant until June 5, 2000, employed one Mark Townsend as Engagements Director. His employment was terminated on June 5, 2000, and the Letter of Termination was sent to the same postal address as that of the Second Respondent. By invoice dated June 6, 2000, an entity describing itself as Telmex Management Services Inc of the British Virgin Islands invoiced DCP for the services of Mark Townsend under invoice MT006 and asked for the cheque to be forwarded to W97 Limited, PO Box 29140, London (being the same address as that for the Second Respondent). The invoice states that W97 Limited has an address of PO Box 29140 London and is a wholly owned subsidiary of Telmex Management Services Inc.
There is a clear commonality between the individuals, entities, contact details and addresses sufficient to establish that the First and Second Respondents together with Mark Townsend should be treated as, in effect, one entity for the purposes of any factual determinations relevant to this decision.
Moreover, in the reply of November 23, 2000, Marlies Bilham refers to "my business partner Mark Townsend". Further, in an earlier email of July 8, 2000, Mark Townsend stated "my girlfriend has a business that she has registered these domains for. I suggest you contact her at Marlies at "B"".
5. The Parties' Contentions
A. Complainant
The Complainant claims that it is the owner of all goodwill in and associated with the acronym DCP and therefore any domain names containing DCP will be associated with the Complainant by the relevant sector of the public. Accordingly, any persons seeking to contact DCP, and locating any of the disputed domain names, would logically think they had contacted the Complainant's site or the Complainant.
The Complainant further asserts it has established goodwill beyond Ireland, the United Kingdom and Europe. So far as the United States is concerned the evidence satisfies the panel that such goodwill does exist. Whilst in the case of the United States such goodwill can only have been created over a matter of relatively few weeks before registration of the domain names in dispute, the common law of passing off and the case law thereunder shows that goodwill can, in appropriate cases, be created in a relatively short period of time. This principle no doubt applies with even greater force in the case of e- technology and e- business companies.
As for goodwill in Asia and the Pacific, the evidence shows that the Hong Kong and Singapore presence of the Complainant has been extant only since August 2000. The domain names were registered in July 2000.
B. The Respondents
The Respondents defaulted and placed before the Panel no evidence nor any submissions in answer to that of the Complainant. The Panel then embarked upon a preliminary assessment of the Complaint resulting in the Panel's order of November 21, 2000, requesting further evidence.
The Respondents did not provide any response to the primary issue under Rule 4(a)(i) that their domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant under Rule 4(a)(i) therefore goes unanswered.
The Second Respondent did forward an email on November 23, 2000, which the Panel is prepared to treat as a submission. It says no more on the relevant issues under the Rule than that the domain names were registered for an (unidentified) client of the Respondents.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its complaint. The Respondent is given full opportunity to respond. In this case the Respondents have elected to place minimal evidence or submissions before the Panel, and then only by the second Respondent.
Notwithstanding any default by the Respondents, it is still incumbent on a Complainant to make out its case.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name: and
(iii) Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a complainant to warrant relief.
The Complainant submits that it has established by its evidence the first ground required to be made out under Rule 4(a)(i) of the Policy.
The Complainant relies on the decision in America Online Inc v Dolphin@Heart, Case No. D2000-0713. Reference is made in particular to the statement at page 7 of that decision. That case establishes that the addition of a place name to a service mark such as the addition of France to AOL is simply the common method of specifying the location of the business services provided under the service mark. The addition of the place name generally does not alter the underlying mark to which it is added.
At page 7 of the decision, the Panelist in America Online said: "A consumer or user of the Internet viewing the address "" is likely to assume that Complainant is the sponsor of or associated with the website identified by the disputed domain name, particularly in light of the fact that Complainant routinely uses its "aol" service mark in combination with country names in its advertisements on the internet."
With respect to the Panel in America Online, this Panel agrees. But that was said against a background of evidence establishing overwhelming recognition and use of the acronym AOL in a number of jurisdictions worldwide. The decision refers to evidence establishing that AOL operates the most widely used interactive online service in the world. It had, as at the date of its Complaint, over 22 million subscribers, with advertising spent being measured in the millions of dollars. The Panel considers that what was said in the AOL case must be understood against that background recital of fact.
In this regard it is pertinent to note and always remember that the Complainant has no registered trade or service marks in any jurisdiction. The Rule does not require that the trade or service marks be registered. But if they are not the Complainant must rely upon its common law rights as made clear in various decisions of the common law Courts. The most recent pronouncement is that of Sir Richard Scott V-C in the English Court of Appeal in Dawnay Day & Co Ltd v Cantor Fitzgerald International [2000] RPC 669 at 701:
"Fundamental to considerations of that sort is the proposition that, in English law, there is no right of property in an unregistered trademark. In Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 181 the Privy Council was faced with an argument that a passing off action could be brought to protect an unregistered mark whether or not there existed some business or goodwill in connection with which the mark was being used. Lord Diplock, at page 271, firmly rejected the argument. Millett LJ in Harrods Ltd v Harrodian School Ltd [1996] RPC 697 did the same. He said, at page 711:
"Passing-off is a wrongful invasion of a right of property vested in the plaintiff, but the property which is protected by an action of passing-off is not the plaintiff's proprietary right in the name or get-up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation."
This is important in the present case. "Dawnay Day" is not a registered mark. So there is no right of property in the name. There are rights of property only in the goodwill associated with the name."
The Panel finds that the issues relating to the domain names "", "" and "" finely balanced. On balance it is probable that any person with an interest in and seeking to contact or communicate with DCP would locate any or all of these three domain names and in so doing assume he or she had located the complainant. Thus, although the case is not nearly as strong in the case of these three domain names than as with the other three domain names, the Panel finds that the Complainant has made out a case with respect to these three domain names. So far as "" is concerned it is said this arose out of a rebranding of DCP's R & D facility to DCP Labs as was known to Mr. Townsend. The Panel also notes that exhibit 2 of the Complainant's supplementary submissions (the big charts website) shows the Complainant's membership of W3C by reference to DCP Labs.
The remaining criteria requiring to be made out under Rule 4(a)(ii) and (iii) are:
- the respondent has no rights or legitimate interest in respect of the domain names
- the domain names were registered and are being used in bad faith.
Both of these must be established by the Complainant.
As to the rights or interests in respect of the domain names, the Respondents initially defaulted and put before the Panel no evidence nor any submissions as to the legitimate interests they claimed in the domain names in dispute.
In the submission of November 23, 2000, the Second Respondent stated that the domain names were purchased by her and with the knowledge of her business partner Mark Townsend. The electronic message appears to confirm knowledge by the Respondents of the domain name and knowledge of the intention on the part of the Complainant to register those domain names. The message ends by stating "when Mr. Townsend's relationship with DCP expired he registered the name for a client we have, a USA charity".
No evidence has been put forward to substantiate this claim, nor is the USA charity identified. It is an explanation by the Respondents that has surfaced only very much at the last minute.
When confronted with the registrations in July 2000, Mark Townsend claimed that the second respondent had registered the domain names for a business she has. No such business has been identified save perhaps the late revelation of the unidentified US charity in the email message from the second respondent of November 23, 2000. Ground two is made out.
As to the remaining ground, namely that the domain names were registered and are being used in bad faith, the Complainant alleges that the Respondents are squatting on the domain names.
Nor have the Respondents replied specifically to the Complainant's case under Rule 4(a)(iii). The evidence from the Complainant establishes that at the beginning of July 2000, it had an intention to register a total of seven domain names (the seventh being ""). There was internal email traffic concerning equivalent URLs as well. The emails contained confidentiality notices. It is alleged that Mark Townsend became aware of the complainant's intentions with respect to these domain names. As much seems to be confirmed by the Second Respondent's email message to the Panel of November 23, 2000.
In his email of July 8, 2000, Mark Townsend said to the Chief Executive of the Complainant "as you are well aware my associated companies and I register hundreds of domains every single day".
A search of the Network Solutions WHOIS database shows some 50 domain names registered in the name of Mark Townsend. Some of these can have no direct or legitimate link with Mark Townsend (eg "TheHyattH" and "Harvey-Jones. Com", to take just two).
The policy indicates that certain circumstances may in particular but without limitation be evidence of bad faith. Among these circumstances are that the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in the corresponding domain name provided that the Respondent has engaged in a pattern of such conduct.
Whilst there is no evidence that either of the Respondents has sought to sell the rights to the domain names to the complainant, it is perfectly clear that the Respondents have no legitimate interest in them and are squatting on the name registrations to the prejudice of the complainant.
The Panel therefore finds that the third ground has been made out.
7. Decision
For the reasons set out above the Panel finds:
(a) That the domain names registered by the Respondents are identical or confusingly similar to trade marks to which the Complainant has rights;
(b) The Respondents have no rights or legitimate interests in respect of the domain names;
(c) The Respondents' domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names ""; ""; ""; ""; ""; "" be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: December 14, 2000
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