WIPO Domain Name Decision D2000-1249 for cadburyland.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cadbury Limited v. Jonathan Harris

Case No. D2000-1249

 

1. The Parties

The Complainant is Cadbury Limited a company incorporated under the laws of the United Kingdom with its registered office at P O Box 12, Bournville Lane, Bournville, Birmingham B30 2LU. It is represented in this matter by Dawn Osborne of Willoughby & Partners, London, United Kingdom.

The Respondent is named as Mr. Jonathan Harris, although the Response was filed by Mr. Alan Harris who claims to be his father. The address of both of them is 293 Prince Regent Lane, Custom House, London E16 3JL, United Kingdom and they will hereinafter jointly be referred to as "the Respondents".

 

2. The Domain Name and Registrar

The domain name upon which this Complaint is based is .

The Registrar of the domain name as at the date of the Complaint is Easypace limited of International Administration Center, Rosemount House, Rosemount Avenue, West Byfleet, Surrey, KT14 6LB, United Kingdom ("Easypace").

 

3. Procedural History

On September 21, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on September 22, 2000.

The Complainant stated that a copy of the Complaint had been sent or transmitted to the Respondents by special delivery post and that a copy had also been sent by electronic mail and courier to the Registrar, who was incorrectly named as Network Solutions Inc. This was corrected and a copy sent to Easypace on October 4, 2000.

Payment of US $1500 was made to the Center by bank transfer in two instalments.

Upon receipt of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on September 25, 2000 by email, with a copy being sent to the Respondents by post/courier, facsimile and email.

The Center sent a Request for Registrar Verification to Easypace on October 5, 2000. Easypace responded to the Center�s request by email on October 9, 2000 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain name in dispute, (3) that the Respondent Jonathan Harris was the current registrant of the domain name in dispute, (4) that the Respondents� contact details were correct, (5) that the Policy applied in relation to the domain name , and (6) that the current status of the domain name was �register locked�.

The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondents and to the Complainant on October 11, 2000.

On October 30, 2000, the response was received by the Center.

The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondents and the Complainant on November 16, 2000 via email. A copy was also sent to the Panel on the same date by email.

The Center dispatched a Transmission of Case File to the Panel, to the Respondents and to the Complainant on November 16, 2000. The Panel received hard copies of this material on November 19, 2000.

On November 20, 2000, at the Panel�s request, the Center sent a request to the Respondents for further information, in accordance with Rule 12 of the Rules.

Mr. Allan Harris replied to this request on November 28, 2000.

All other procedural requirements appear to have been satisfied.

 

4. Factual Background

Activities of the Complainant

The following information was asserted as fact by the Complainant and remains uncontested:

- That it is a leading UK based confectionery company with turnover in 1999 of over �659 million.

- That it and its predecessors in business have been trading under the name �Cadbury� since at least 1855; that this name and trade mark have long been a household name in the U.K; and that �Cadbury� is one of the Complainant�s most valuable assets.

- That it launched CADBURYLAND as an umbrella brand in 1998 for a range of children�s chocolate confectionery, desserts, and cake mix; that these are widely promoted through the creation of a range of characters appealing especially to children; that �Cadburyland� trucks containing soft play areas for children tour England during the summer months; that within the Complainant�s Cadbury World theme park there is a special interactive play area called CADBURYLAND for younger children; and that total turnover in 1999 under the name CADBURYLAND exceeded �58 million.

- That is registered as a domain name and that at a website of this name can be found games, tricks, jokes etc. for children

The Complainant�s trade marks

The Complainant claims to have registered CADBURY as a trade mark in many countries of the world, including three registrations in the U.K. dating from 1886, 1909 and 1993 respectively. A Schedule is attached to the Complaint which is said to give details of all these registrations, but since not one of the 10 columns of this Schedule is identified, the Panel can only guess as to their meaning. Copies of the three U.K. registrations are also attached to the Complaint, which show that the two earliest are for the word CADBURY in plain block capital letters and the third is in the form of a signature. No renewal certificates of these marks have been included as evidence that these marks are still in force, but it seems inconceivable that a company of the size of the Complainant should allow what they describe as �one of their most valuable assets� to lapse. The Panel is therefore prepared to accept that the Complainant has rights in the trade mark CADBURY.

The Complainant also claims that CADBURYLAND is registered as a trade mark in various formats, in the U.K. and Ireland, with the earliest registration dating from 1998. The schedule of these marks which is attached to the Complaint is at least capable of interpretation, but the Panel notes that there is no registration of CADBURYLAND as such; that only two (out of four) of the trade marks on the list were registered at the time of the Complaint; and that, contrary to the Complainant�s assertion, there is no registration in Ireland.

Activities of the Respondents

The following information was asserted as fact by the Respondents and remains uncontested:

- That they have been operating a successful world-wide business for over 21 years as risk management consultants, involving nearly every major bank and insurance company in the world.

- That details of their main business can be found on the website and details of its business association with Defcom Internet Security on the website .

- That they required a .com web site for their business and that �� suited their needs.

- That they have spent time and money in anticipation of the launch of this business which included a Children�s Independent Television personality and which would involve many branded products involved in the entertainments field.

- That none of their products have the remotest connection with the products of the Complainant, and that the only area common to both is that its market place is from children aged 6 and upwards.

- That they are also contemplating creating websites for a model agency and a casting agency for extras in the film, advertising and marketing industries.

 

5. The Parties� Contentions

The Complainant asserts:

That the domain name which is the subject of this dispute is either identical or confusingly similar to its trademarks.

That the Respondents have no rights or legitimate interest in the disputed domain name, and that when questioned, the Respondents indicated that it had "snapped up" the domain name, along with several others.

That the Respondents asked the Complainant to make an offer for the disputed domain name, and that when �500 was offered this was rejected with contempt.

That when the disputed domain name was registered the Respondents was aware: of the Complainant; of its considerable fame as a confectioner; that CADBURYLAND was a brand; that the disputed domain name was of considerable value to the Complainant; and that it would be particularly attractive to children.

That the disputed domain name has been registered and is being used in bad faith because:

- it was registered primarily for the purpose of selling it to the Complainant or one of its competitors for valuable consideration;

- the Respondents intended to attract Internet users to its website for commercial gain, thus either creating a likelihood of confusion with the Complainant�s trademarks as to the source, sponsorship, affiliation, or endorsement of its website, or to tarnish the Complainant�s reputation;

- at no time have the Respondents been commonly known by the disputed domain name;

- at no time have the Respondents used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services;

- the Respondents have made no legitimate non-commercial use or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant�s trademarks.

The Respondents allege:

That Mr. Allan Harris, who in this dispute has responded to all the communications from the Center, is the father of the Mr. Jonathan Harris, the registrant of the disputed domain name.

That the initial contacts from the Complainant were through an agent who refused to identify himself or confirm in writing that he was acting on behalf of the Complainant, and that as a result Mr. Allan Harris concluded that he was an opportunist trying to acquire the Respondents� websites at a price which was considerably less than the money already expended, for example, on the creative work done in preparing and designing a site. Furthermore, this agent was less than forthcoming and acted in a very unprofessional manner.

That, on receiving a formal offer of �500 on behalf of the Complainant, Mr. Allan Harris replied that he now preferred to keep the site, which was currently under construction.

That they had of course heard of the Complainant, but that they were not aware of any development of a Cadburyland brand.

That the disputed domain name was not acquired in bad faith, that it was not done to extort money from the Complainant, that the Respondents�s products have no relation to those of the Complainant, that any suggestion that it would tarnish the Complainant�s reputation is total fantasy, that the Complainant does not have "world exclusivity to a name"; and that the Complainant should have acquired the ownership of the disputed domain name. Furthermore, the Respondents confirm that they have as yet not made any use of the disputed domain name as it is still under development.

That the Respondents have acted throughout with honour and fidelity and that the Complainant is a big corporation just threatening and using its power to pressurise companies such as themselves.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint.

The Panel will now consider in detail each of the three elements in paragraph 4(a):

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

It is clear that the disputed domain name is not identical to the Complainant�s trademark CADBURY, whether with or without the suffix .com. In any case, it is now established through many Decisions under the ICANN Policy that for purposes of comparison, the Panel may ignore the common suffixes .com, .net or .org. The Respondents allege that the Complainant "does not have world exclusivity to a name". It is unclear whether this is meant to refer to any name or the name CADBURY. But in any case it is to misunderstand the meaning of a trade mark registration. In the United Kingdom, the registration of a trademark is governed by the Trade Marks Act, 1994 and Section 2(1) of that Act reads as follows: A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act."

Whether the disputed domain name is confusingly similar to CADBURY is open to question. There is no doubt that the trademark CADBURY is, by itself, distinctive, but the addition of the generic term LAND does, in the opinion of the Panel, make a rather different trademark.

However this may be academic as the Complainant also claims to have rights in the trademark CADBURYLAND. An examination of the four trademarks produced as proof of this claim clearly shows that none of them is identical to the disputed domain name , and that the question of confusing similarity gives rise to some doubts and deserves a closer examination.

The pending Irish trade mark application No. 213689 consists of a dark rectangle enclosing a shaky outline which surrounds the word NOBBLE and, much smaller and hardly visible to the naked eye, the CADBURY signature over the word LAND in block capital letters over a �Splash� device. U.K. registered trademark No. 2189896 is very similar to the above, but it consists only of the word NOBBLE and the CADBURY LAND �Splash� device. U.K. pending trademark No. 2242513 consists of the three words CADBURY LAND and SHUSH in block capital letters. U.K. registered trademark No. 2173016 consists of a dark rectangle enclosing the word CADBURY in script over the word LAND in block capital letters, over the same �Splash� device.

Confusing similarity, in trademark law, is a somewhat subjective test. What is similar to one person may not be so to another. It was held by the European Court of Justice in the SABEL/PUMA case (C-251/95 of November 11, 1997) that: "In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components".

The above test is applicable in the United Kingdom, which is where both the Complainant and the Respondents are domiciled, and it is the opinion of the Panel that when applying it in this case, the disputed domain name is confusingly similar to the Complainant�s trademark No. 2173016 for the words CADBURY and LAND plus the �splash� device, but that is not confusingly similar to any of the Complainant�s other three CADBURYLAND trademarks.

However, to fulfil the requirements of Paragraph 4(a) a Complainant�s trademark does not need to be registered. Having a reputation in it will suffice, and it is clear from the evidence submitted by the Complainant, coupled with the massive turnover figures, that it has acquired a substantial reputation in the word CADBURYLAND per se.

As a final remark the Panel notes that the Complainant has registered � and is using � the domain name which is, in effect, identical to the disputed domain name. Similarity with existing domain names is not an offence under the ICANN Policy, but in these circumstances for the Respondents to chide the Complainant for not having previously registered is plainly unfair.

In conclusion, the Panel finds that paragraph 4(a)(i) has been proved.

Paragraph 4(a)(ii) provides:

"(ii) you have no rights or legitimate interests in respect of the domain name."

The Respondents claims to be operating a responsible and respectable business and that it required a .com website for its new business venture offering branded products in the entertainments field, for which the disputed domain name was suitable. It also claims to developing websites for a model agency, and a casting agency.

In its response the Respondents said that it could supply "references about the integrity of our business style." On request for more information, the Panel was simply directed to three websites. On one of them, which is the disputed site, and where, it was claimed designers had "set up examples of the business profile that we intend to use on this site", the Panel was confronted only with a legend reading: "Welcome to CADBURYLAND.COM. the site is currently under development so watch this space." The second was , but the Panel was unable to find any reference on this site to either Mr. Jonathan or Mr. Allan Harris or to their business (WBK International). The same applies to the third site . This describes a flourishing business in risk management analysis and control with an address in London, but no reference to either Mr. Harris could be found. Nor were any references supplied, as promised. The site says only that "our client list is confidential". Nevertheless it is noted that the e-mail address for Mr. Allan Harris on the message he sent to the Center of November 28, 2000 in which this information was provided, is aharris@, so it can be assumed that Mr. Harris senior does work for this company.

According to its website, the services of WBK International are said to be:

Internet Security Technology Assessments Contingency Planning

Corporate Security Investigative services Loss control

Personnel Assessment Risk Management Training Disaster Recovery

Systems Security IT Systems Physical Security

Fraud investigations Risk Management Audits Client investigations

E-Commerce Systems Strategic networking Loss Adjustments

Both the original and the subsequent response make it clear that it is the business which required the disputed domain name. However if, in 21 years, the company has not strayed any further from the above core businesses, then the Panel finds it difficult to credit that it is now contemplating branching out into such completely diverse areas of business as branded products for the entertainment industry, a model agency or a casting agency. Nor, it should be said, is the name a particularly apt or suitable name for any of them. While the above activities might be more suited to a personal venture by Mr. Jonathan Harris or Mr. Allan Harris, this cannot be the case for WBK International.

Accordingly the Panel finds that paragraph 4(a)(ii) has been proved and that the Respondents have no rights or legitimate interests in the disputed domain name .

Paragraph 4(a)(iii) provides:

"(iii) the domain name has been registered and is being used in bad faith."

With regard to �bad faith�, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive.

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad

faith AND use in bad faith. In some cases decided under the Policy it has been found

that it is unnecessary to consider the two limbs of this provision separately, as the

"use" requirement has been found not to require positive action, inaction being within

the concept. However, although bad faith use can be found to follow bad faith

registration, it is still necessary for the Complainant to prove registration

in bad faith.

Paragraph 4(b) of the Policy, provides that a number of different circumstances can be

evidence of bad faith registration and use, namely:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of you web site or location or of a product or service on your web site or location."

What actually occurred in the initial exchanges between the Complainant�s agent and the Respondents is disputed. Mr. Jonathan Harris can hardly complain that his holiday was interrupted by a telephone call from the Complainant�s agent since the latter only had his mobile number as a contact. Whether or not he said that he had "snapped up" the disputed domain name is probably irrelevant, as in the next conversation Mr. Allan Harris does appear to have initiated the offer to sell it to the Complainant. He was rightly suspicious of the provenance of the approach he received, but the evidence does show that the Complainant�s agent, Mr. Ian Barnett, did confirm in writing that he acted on behalf of the Complainant, although admittedly not on the headed paper that Mr. Harris was insisting upon. In passing it can be said that business correspondence via e-mail is by no means unusual these days. However it seems surprising that an experienced business man should have responded quite so rudely to what appears on the surface to be a perfectly reasonable approach.

The Panel concludes that the Respondents would have been quite happy to part with the disputed domain name � at the right price. However although the circumstances in which Mr. Jonathan Harris acquired the domain name are suspicious, the Panel concludes that this was not the primary purpose for which it was acquired, and that although the Complainant has come close to proving Paragraph 4(a)(i), it has not done so to the complete satisfaction of the Panel.

Since the Respondents are clearly not cybersquatters, Paragraph 4(a)(ii) does not apply, and indeed has not been claimed by the Complainant.

Although the Respondents say that they have not used the domain name, the fact that the Panel was referred to the site as evidence of the Respondents� intentions, and the fact that it is stated to be currently under development, does indicate a degree of use. In any case in the Decision in the domain name dispute No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows it was held that if other elements of paragraph 4(a)(iii) are present � which they are in this case, see below � then "inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith."

The Respondents say that their proposed site would be directed at children. They further state that it would have no connection with the Complainant and "no relation whatsoever to any Cadbury trademark or products". The Panel notes in passing that for Paragraph 4(a(iii) to apply, it is not necessary for the parties to be in direct competition.

However given the fame of the Complainant (which the Respondents acknowledge), given the huge appeal of the Complainant�s products to children of all ages, and given the fact that �Cadburyland� products are specifically targeted at a children�s audience, it is difficult to imagine how the use which the Respondents� propose to make of this site would not disrupt the business of the Complainant. Young children are particularly susceptible to outside influences, and of course would not be not capable of distinguishing a �Cadburyland� site operated by the Complainant from one of the same name operated by the Respondents. Furthermore any activity under the name CADBURYLAND that did not directly compete with the Complainant�s activities under this name, must dilute the reputation which the Complainant has acquired in the name over a very short period of time.

Without some more precise information as to the projected products to be offered by the Respondents on their site, the Panel cannot go so far as to say that it would �tarnish� the reputation of the Complainant. Nevertheless, there is sufficient evidence for the Panel to conclude that Paragraphs 4(a)(iii) and 4(b)(iv) have been proved.

The Panel therefore concludes that the Respondents have registered and used the disputed domain name in bad faith.

 

7. Decision

For these reasons, the Panel decides that the domain name registered by the Respondents is confusingly similar to the mark in which the Complainant has rights, and that the Respondents have no rights or legitimate interests in respect of the domain name, and that the Respondents� domain name was registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the domain name be transferred to the Complainant.

 

8. Final Remarks

The Panel has, in this Decision, attempted throughout to justify its conclusions as comprehensively and as fully as possible, and so to clarify that the Decision is based solely upon trade mark law and practice, and upon the ICANN Policy and Rules.

The Panel has not seen this case as one when an unscrupulous large company has bullied a smaller company into giving up its rights. It must have been clear from the outset that Cadbury Limited would take exception to someone else owning their name.

Apart from making some unsubstantiated claims about its trademark rights, the Complainant has acted professionally and properly throughout the proceedings. Mr. Allan Harris has had at least 20 years experience in business and, judging from its website, his company is by no means a small one. He has nothing to complain about on this score.

 

 

David H Tatham
Sole Panelist

Dated: December 6, 2000

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