WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Legal & General Group Plc v. Image Plus
Case No. D2003-0603
1. The Parties
The Complainant is Legal & General Group Plc, Surrey, of United Kingdom of Great Britain and Northern Ireland, represented by Eversheds Solicitors.
The Respondent is Image Plus, Rockville, Maryland, of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2003. On August 1, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On August 4, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 August 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response, was on or before August 26, 2003. The Response was filed with the Center August 18, 2003.
The Center appointed Ross Carson, David Perkins and Richard W. Page as panelists in this matter on September 9, 2003. The Panel finds that it was properly constituted. Each member of 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. Preliminary Issues
Prior to filing of this Complaint, the Complainant herein issued a previous Complaint against the Respondent in relation to the same domain name in dispute between the parties in the current Complaint. The decision of the Administrative Panel in the previous Complaint is contained in WIPO Case No. D2002-1019 dated December 30, 2002.
There have been a number of decisions in disputes commenced under the UDRP Policy in which a Panel has either refused to hear or decided to hear a subsequent Complaint between the same parties relating to the same domain name.
In Administrative Panel Decision Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 dated November 10, 2000, Sir Ian Barker QC was the Sole Panelist. The Panel referred to Paragraph 15 (a) of the Policy which states that a Panelist is required to "decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". The Panel found that there were no rules relating to "reapplication", "rehearing" or "reconsideration" of a Complaint and concluded that: "It is therefore appropriate to consider by analogy well-understood rules and principles of law relating to the re-litigation of cases determined after a defended hearing."
The Panel reviewed circumstances in which courts have entertained a rehearing application. One of the circumstances which may warrant a rehearing "is the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing�"
Sir Ian Barker QC cited with approval decisions of the English Court of Appeal and the New Zealand Court of Appeal which stated as follows:
"�first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible."
The Panel in Grove Broadcasting refused to entertain the fresh Complaint on the grounds that the Complainant failed to show that the fresh evidence could not have been obtained with reasonable diligence for use when the first Complaint was filed.
In Creo Products Inc. v. Website In Development , WIPO Case No. D2000-1490, dated January 19, 2001 Sole Panelist Andrew Christie cited and followed the principles relating to fresh evidence stated by Sir Ian Barker in the Grove Broadcasting Case, WIPO Case No. D2000-0703.
The Panel in the Creo Products Case stated that in determining the circumstances in which a Refiled Complaint should be entertained a distinction should be drawn between (i) Refiled Complaints that concern the act which formed the basis of the original Complaint and (ii) a Refiled Complaint that concern acts which have occurred subsequent to the decision on the original Complaint. The Panel stated that the principle of res judicata does not apply where the acts have occurred subsequent to the decision on the original Complaint. However the Complaint based on the subsequent acts must relate to new acts which "should not be, in substance, the same as the acts on which the previous Complaint was based."
In determining whether a subsequent Complaint should be entertained based on fresh evidence this Panel must review the evidence referred to by the original Panel in deciding the original Complaint. Secondly, this Panel must assess whether the fresh evidence meets the three standards approved by Sir Ian Barker in the Grove Broadcasting Case. In evaluating new acts which occurred after the original decision, the original decision need only be referred to for the purpose of determining if the Panel in the original decision considered similar acts not differing in substance from the new acts.
The Panel in the Creo Products Case stated the following general principles among others: "First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint need to be clearly identified by the refiling complainant.
Decision in First Complaint between the Parties, WIPO Case No. D2002-1019
In considering the three issues raised by paragraph 4 (a) of the UDRP Policy which the Complainant must prove, the original Panel held that the domain name in dispute is identical or confusingly similar to trademarks belonging to the Complainant. On the issue of Rights or Legitimate Interests the majority of the Panel found that the Complainant had not proven that the Respondent did not have rights or a legitimate interest in the domain name. The dissenting Panelist found that the Respondent did not have rights or a legitimate interest in the domain name.
The majority stated that "the difficult issue to be decided here is where the disputed domain name is virtually identical to the Complainant�s trademark, can the Respondent still rely on paragraph 4(c)(iii) of the Policy?" Paragraph 4(c)(iii) of the Policy on which the Respondent relied states: "you are 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 majority of the Panel stated that there are two conflicting approaches taken by prior Panels in deciding whether a Respondent can rely on paragraph 4(c)(iii) of the Policy.
First the "Domain Name itself is misleading approach." This line of cases states that the wholesale appropriation of the complainant�s trademark in a domain name, without any distinguishing material in the domain name, creates confusion with the complainant�s business and is not fair use merely for the purpose of criticism.
The second approach to determine if the Respondent can rely on paragraph 4(c)(iii) is the "Complaints Site" approach. This line of decisions focus on the content located at the website accessible via the disputed domain name.
If the website is a genuine "Complaints" website, then paragraph 4(c)(iii) may be satisfied. The majority of the Panel preferred the "Complaint Sites" approach and applied that approach to the facts. The dissenting Panelist preferred the "Domain Name itself is misleading" approach and found that the Respondent could not rely on
paragraph 4(c)(iii).
The Respondent�s submissions and evidence of the Respondent referred to by the majority of the original Panel includes the following:
1. The Respondent submitted that "as a show of good will the Respondent has removed all references on the website to any trademarks of the complainant.
2. A web search under "legal and general" on Google returned the Complainant�s websites in the top spots but did not list the Respondent�s website in the first ten results.
3. A web search is unlikely to easily find the Respondent�s website: Respondent�s meta-tags relate to the sale of Jewish religious items.
4. A user who stumbles upon the Respondent�s site while looking for the Complainant�s official site need only click the "back" button to return to his or her search.
5. There is no evidence that the Respondent is promoting the disputed domain name.
The majority Panelists in the original decision applied the "Complaint Sites" approach and made the following findings based on the evidence submitted in the original case. The findings are summarized as follows:
1. The Respondent�s website is non-commercial and use of the disputed name is non-commercial.
2. The website is not misleading, and the only content on the website relates directly to the Complainant.
3. It would be clear to most users that the Respondent�s website was not controlled or authorized by the Complainant, and that the website was a third party criticism website.
4. That one user may have been confused does not change the character of the website.
5. The fact that some internet users might initially be confused into thinking that, because of the use of the Complaint�s trademark in the disputed domain name , the website is the Complainant�s official website is of no moment. First, any such confusion would immediately be dispelled by the content of the Respondent�s website.
Second, in any such event, such level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. Third, there is no evidence that the Respondent is promoting the disputed domain name, or using the domain name other than on the associated website.
Newly Filed Complaint
The newly filed Complaint includes both new acts of the Respondent occurring since the first decision and fresh evidence not available prior to the first decision. The new acts relate to the Respondent changing the Respondent�s website to include new meta-tags incorporating the Complainant�s trademarks. The new meta-tags are attached as Annex D to the Complaint. The new meta-tags include first "LEGAL & GENERAL", second "LEGAL AND GENERAL" and third "legal-and-general." Further on in Annex D is the meta-tag "L&G" by which the Complainant is also known as seen in attached press coverage shown in Annex E to the new Complaint. Additional new meta-tags of the Respondent include "legal and general uk" and "l&g unit trusts."
The fresh evidence on which the Complainant relies in the new complaint relates to results returned by internet search engines conducted after the decision on the original Complaint and following the substitution by the Respondent of the new meta-tags reviewed immediately above. The results returned by the internet search engines in May and June 2003, are attached as Annex F to the Complaint. A Google search conducted on May 21, 2003, for "legal and general" now returns the respondent�s website in fifth place as does a Yahoo search conducted June 17, 2003. An Excite search conducted June 17, 2003, returns the Respondent�s website in 9th place.
Additional new evidence relates to new postings to the Respondent�s website since the original decision. The evidence shows that six persons posting messages mistakenly concluded that the Respondent�s website is the Complainant�s website. Copies of the postings relied on are attached as Annex G to the Complaint. The first fresh posting evidencing confusion is a posting dated March 10, 2003, a posting by a Mr. Varney. Mr. Varney gives personal details of his name, address, and details of the lives assured under the policy with the Complainant and asks for a response to letter written to the Complainant concerning a change of address. Other evidence of confusion is shown in a posting dated March 27, 2003, addressed to "Dear Complaints Department". Postings dated March 28, 2003, from "MGBPY" and dated April 16, 2003, from "Dick Turpin" both refer to "you" (i.e. the Complainant) and show confusion. The Complainant submits that there is now evidence of six postings in which the poster is confused as to the operator of the website.
Newly Filed Response
The Respondent made the following submissions in relation to the new acts and fresh evidence. The Respondent states he removed meta-tags referred to in the earlier decision as the meta-tags are unrelated to the website. Respondent substituted the new meta-tags which Respondent submits are relevant to the website purpose and content. Respondent submits that he is not aware of any improper wording in the meta-tags. Respondent submits that if there is anything improper with the meta-tags, Respondent asks the Panel for appropriate wording for meta-tags and pledges to make changes (if any) independently of the outcome of this case. Respondent states that from a reading of the earlier decision the new evidence is only a minor issue relating to facts that the Panel chose to place in parenthesis in the original decision.
In respect of confusion apparent from the postings on the Respondent�s website the Respondent submits that there are 3 confused customers out of 43 entries which seem to be a low level of confusion. Respondent submits that none of the "new pieces of evidence" is relevant to this case and therefore asks the Panel to dismiss this case.
Decision on Entertaining the Fresh Complaint
The Panel concludes that the new acts and new evidence could not have been obtained with due diligence for use prior to the decision in WIPO Case No. D2002-1019. The new acts and new evidence are such that they would probably have an important influence on the result of the case, although they may not be decisive. The new evidence is not challenged by the Respondent. The new acts were not in existence at the time of the earlier decision and were not considered by the majority of the Panel in reaching the earlier decision. The Panel finds that the Refiled Complaint should be entertained.
5. Factual Background
The Complainant is a financial services company, offering a wide range of savings and protection products, both on an individual and corporate basis. The product range includes term assurance, mortgage protection, household insurance, private medical insurance, saving for retirement, annuities, unit trusts and ISAs
The Complainant is one of Britain�s top 50 companies, as measured by the FTSE, with over 4.5 million customers and employing approximately 7,800 staff. As of December 31, 2002, total funds under management world-wide exceeded �116 billions.
Although the business of the Complainant focuses primarily on the UK, the Complainant has established operations in the Netherlands, France, Germany and the USA. In the USA, the Complainant has a strong market position in the area of term assurance, with Legal & General America, Inc. being one of the top ten largest life assurers in the USA (measured by sums assured).
The Complainant has recently received numerous industry awards, including:
1. Life Insurer of the Year Award (the "British Insurance Awards");
2. Pooled Pension Provider of the Year Award ("Professional Pension Awards")
3. Best Direct Pensions Provider ("Your Money" Awards); and
4. Top Centralised Mortgage Lender ("What Mortgage Magazine")
The Complainant is the registrant of a number of .com domain names containing the words "legal and general" (or similar) including:
1.
2.
3.
The Complainant is the owner of trademark registrations in the Benelux, France, Italy, Portugal and Spain which include Legal General or Legal and General with an umbrella device. The Complainant is the owner of the trademark LEGAL & GENERAL registered under the Trademark Act 1938, of Great Britain and Northern Ireland as Registration No. 1303797 as of the date March 13, 1987, in respect of: Class 36: Insurance, Investment and Pension Services; all included in Class 36. The Complainant is also registered as the owner of Registration No. 1299109 for the trademark LEGAL & GENERAL and umbrella device registered in Class36 in respect of Insurance, Investment and Pension Services. Further details on the above and other registrations are included in Annex H to the Complaint. The Complainant�s company is referred to in the press frequently as L&G. Annex E to the Complaint includes samples of press coverage referring to the Complainant as L&G.
6. Parties� Contentions
A. Complainant
The Complainant submits that Complainant has proven each of the three elements set out in Paragraph 4 (a) of the Policy, as approved by ICANN on October 24, 1999, namely:
(i) the 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 domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complaint relies upon its registered and common law trademark referred to in the Factual Background above and the extensive use of the Complainant�s trademarks for many years in many countries. The Complainant submits that the domain name in dispute is identical or confusingly similar to the Complainant�s trademarks. The Respondent does not contest that the domain name is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights.
Respondent�s Rights or Legitimate Interest in the Domain name
Paragraph 4(c) of the Policy provides that the following circumstances may constitute evidence of a Respondent�s right or legitimate interest to a domain name:
(i) before any notice of the dispute, the Respondent�s use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if they have acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain or to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The Complainant submits that none of these grounds applies to the Respondent.
With regard to paragraph 4(c)(i) of the Policy, the Respondent is not offering any goods via the Domain Name and any service that is being provided is not bona fide.
As far as paragraph 4(c)(ii) is concerned, the Complainant notes that the Respondent�s name is Image Plus and there is no evidence to suggest that the Respondent is commonly known by the Domain Name, the Mark or any similar name or has any trademark or service mark rights in the Domain Name.
With regard to paragraph 4(c)(iii) of the Policy, the Respondent is using the domain name for the purpose of providing a complaints site, where users are encouraged to lodge complaints about the service provided by various specified sections of the Complainant�s business in both the UK and the US. The Complainant acknowledges that the critical issues for the Panel to decide are the two elements of paragraph 4(c)(iii), namely (I) whether the Respondent�s website is a legitimate noncommercial or fair use of the Domain Name and, if so (II) whether the Panel should nonetheless find against the Respondent because the Respondent intends to misleadingly divert customers or tarnish the Mark.
(I) The Respondent�s website is not a legitimate non-commercial or fair use of the Domain Name
The Complainant acknowledges the general right of the Respondent to comment and enable others to comment on the services and products offered by the Complainant and the importance of freedom of speech. However, it does not automatically follow that use of this particular domain name to do so is either a legitimate or fair use of the Domain Name. The Complainant submits that in using and selecting a domain name which is so closely identical to the Mark, the Respondent has not chosen a domain name which makes fair use of the Mark.
The Complainant acknowledges that there are two conflicting approaches taken by Panels in considering �complaints� sites. The Complainant will develop below its submission that the "Domain Name itself is misleading" approach adopted by the minority in the Decision is to be preferred to the "Complaints Sites" approach. Before doing so, the Complainant will first submit that, particularly in light of the new evidence referred to above, the Respondent cannot show a legitimate interest in the Domain Name even if the "Complaints Sites" approach is followed.
The "Complaints Site" approach focuses on the content of the web site in dispute and the way that it is used. If this approach is preferred, in considering whether the Respondent has a legitimate interest in the Domain Name, the Panel should take account of the following facts:
The Domain Name is effectively identical to the Complainant's Mark.
The Respondent has, with the comfort of the Decision, changed its meta-tags to use the Complainant�s Mark in its meta-tags, in a number of different formats. (Annex D to the Complaint).
There are repeated examples of customers of the Complainant being confused by the Respondent�s website and either posting confidential information, or at the very least demonstrating that they are comprehensively confused.
The Respondent has put no disclaimer on its website whatsoever.
Searches for "Legal and General" on various internet search engines return the Respondent�s web site in high positions. (Annex F to the Complaint).
The Respondent is using a .com domain name, thereby indicating that it regards the website as commercial, and indicating to users of the website that it is indeed official, given that almost all businesses use .com domain names as their official sites (see WIPO Case No. D2000-0190, Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers).
The Complainant submits that there is now a not insignificant pattern of confusion amongst users. The Complainant refers the Panel to the following postings:
July 17, 2002 - a Mr. Moon posts confidential details of his plan and his e-mail address on the Respondent�s website;
October 26, 2002 - a John Hillier says that he will not be investing in "your company", indicating that he thinks that he is addressing himself to the Complainant�s website;
March 10, 2003 � Mr. Vamey posts confidential details of his policy, address and phone number onto the Respondent�s website;
March 27, 2003 - a "Nigel" addresses himself to "Dear Complaints Department", indicating that he thinks he is addressing the Complainant;
March 28, 2003 - a "MGBPY" makes another posting addressed to the Complainant ("please give us some hope by telling us that these shortfalls have been overestimated", "large and highly respected companies such as yourselves");
April 16, 2003 - a "Dick Turpin" makes a posting addressed to the Complainant ("you can advertise your endowment policies" "you know that these returns", "your past record", "by your estimate", "how can you justify", "the advertising hype that you currently give", "customer of yours", "no recourse from you" etc.).
Of the 43 postings on the "Legal and General (UK)" section of the Respondent�s website (this being the only section of the site which attracts any significant use), 6 postings are confused, i.e. roughly 1 in 7. Given this significant level of confusion, the Complainant submits that it is simply no longer open to the Panel to find that it is likely that any initial confusion caused by the domain name would be dispelled once the user has accessed the website. The facts support the opposite conclusion.
In summary, even if the "Complaints Sites" approach is followed, the Complainant submits that in circumstances where (i) the Respondent is using the Mark in a nearly identical form in the Domain Name, (ii) a not insignificant level of customer confusion has been generated and, (iii) instead of taking steps to reduce the level of confusion (for example, by including a disclaimer) the Respondent has in fact (iv) taken steps to increase the level of confusion (by the change in the meta-tags) which has resulted in (v) the Respondent�s website being ranked highly in internet searches for Legal and General, the Complainant submits that is no basis for any finding that the Respondent is making a legitimate or fair use of the Domain Name.
In any event, the Complainant submits that the "Domain Name itself is misleading" approach is to be preferred. In the Complainant�s submission the nearly identical use of the Complainant�s registered, and extremely well known, mark to attract internet users to its complaints site can never be "fair". As is clear from the postings on the Respondent�s website, any use of a mark on its own in a domain name will cause a not insignificant level of confusion amongst internet users. Whether or not the Respondent happens to be making a profit from his free speech is irrelevant - the Complainant is losing goodwill (for example through posted complaints going unanswered) and thus there is inevitably a commercial aspect to the Respondent�s use of the mark. As the facts show, the use of a domain name identical to the Complainant�s Mark is bound to cause confusion.
(II) The Respondent intends to misleadingly divert custom and tarnish the Complainant�s Mark
In the event that the Panel finds against the Complainant�s submission that the Respondent�s website is not a legitimate non-commercial or fair use of the domain name, the Panel must consider the second limb of paragraph 4(c)(iii). The Complainant submits that the Panel should find in its favor in this regard because it is clear that the Respondent intends to misleadingly divert custom from the Complainant. The most significant piece of evidence in this respect is the change to the meta-tags for the Respondent�s website. If the Respondent wished only to attract to its website users who wished to complain about the Complainant, then the Respondent would have limited itself to meta-tags such as "legal and general complaints". The deliberate use of the Complainant�s Mark, in varying forms, on its own in the meta-tags can only indicate that the Respondent is hoping to attract people to its website who are trying to find the Complainant�s website. There is no possible interpretation of this act (particularly given its timing, after the Decision in WIPO Case No. D2002-1019) other than that the Respondent is intending to divert traffic from the Complainant. On the facts, he has succeeded. Of particular note is the Respondent�s claim in the original response that, "as a show of goodwill, Respondent has taken out all references in the web site itself to any Complainant trademarks". The Respondent�s subsequent departure from this position is clear evidence of an intent to divert.
Secondly, the Complainant relies on the fact that the Respondent has taken no steps whatsoever to remove the source of the significant level of confusion now exhibited by people making postings onto the Respondent�s website. If the Respondent did not intend to divert custom then it would be appalled by users providing their confidential details to it, and would take steps to ensure that this never happened again. Instead of doing this (by posting a prominent disclaimer for example) the Respondent has made the situation worse by changing its meta-tags.
Bad Faith
The Complaint relies on the acts and evidence referred to immediately above in respect of the issue relating to Respondent�s rights or legitimate interest in respect of the domain name.
The Complaint states that the circumstances set out in Paragraph 4 (b) of the Policy are without limitation and that is therefore expressly recognized that other circumstances can be evidence that a domain name has been registered and is being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003.
The Complainant submits that the Respondent as a former employee who left the Complainant employ was well aware of the Complainant�s goodwill and reputation represented in the Complainant�s trademarks. The Complainant states that the Respondent�s addition of new meta-tags confusingly similar to Complainant�s trademarks was for the purpose of attracting persons looking on search engines for Complainant�s websites to Respondent�s website. Further the Complaint relies on the fact that a not insignificant number of persons posting on the Respondent�s website mistakenly believe their inquiries are being posted on a complainant�s website. The Complaint submits that the Respondent�s primary intent is to damage the goodwill in the Complainant�s business in bad faith as opposed to operating a genuine complaint site. The fact that receiving the postings on the Respondent�s website shows the Respondent that inquiries intended for the Complainant are confusingly being posted on Respondent�s website and the Respondent�s failure to deal with the problem is also evidence of use in bad faith.
A. Respondent
The Respondent provided no information about his previous employment with the Complainant.
The Respondent makes no comment as to whether the disputed domain name is identical or confusingly similar to the Complainant�s trademark.
The Respondent asserts that he has rights and a legitimate interest in using the disputed domain name to establish a website for publishing complaints about the Complainant.
The Respondent states that the original meta-tags which were unrelated to the website were left over from a previous project. The Respondent states that when Respondent realized the error he corrected the meta-tags and made them relevant to the website purpose and content.
Respondent is not aware of any improper wording in the meta-tags. Also Complainant has never contacted Respondent concerning meta-tags.
Respondent states if there is anything improper in the meta-tags, Respondent asks the Panel for appropriate wording for meta-tags and pledges to make the changes (if any) independently of the outcome of this case. This should satisfy Complainant.
The Respondent agrees that there are three confused customer�s out of 43 customers entries on website.
The Respondent submits that none of the "new pieces of evidence" is relevant to this case and therefore asks the panel to dismiss the case.
In the Response the Respondent reviews and relies on the findings of the majority in the original decision. The Respondent submits that the new acts and new evidence relate to minor issues which the original panel put in parenthesis.
The Respondent has no comments with respect to the issues that the domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. (Policy, para 4 (a)(i))
In respect of the issue as to whether the Respondent has rights or legitimate interest in respect of the domain name (Policy, para 4 (a)(ii)) and in respect of the issue whether the domain name has been registered and is being used in bad faith (Policy,
para 4(a)(iii)), the Respondent states: "same as in the original case."
The Respondent concludes that:
1. Complainant completely ignores Paragraph 4 of the UDRP as well as the original decision by the panel and introduces non-relevant information as "new pieces of evidence."
2. Respondent has shown clearly that none of the "new pieces of evidence" is relevant and therefore asks the panel to dismiss this case.
7. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the Policy, namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
A. Identical or Confusingly Similar
The Complainant owns the registered trademark "LEGAL & GENERAL" in the United Kingdom, as well as "LEGAL & GENERAL" together with the umbrella device in the United Kingdom, France, Portugal and Spain. The Panel finds that the disputed domain name is confusingly similar to the Complainant�s "LEGAL & GENERAL" trademark. The use of hyphens and the word "and" instead of "&" does not change this. The Respondent does not make assertions to the contrary.
B. Rights or Legitimate Interests
The Respondent asserts a legitimate interest, relying on paragraph 4(c)(iii) of the Policy, which states:
"you are 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"
Paragraph 4(c) of the Policy places the onus on the Respondent to rebut the Complainant�s assertion of lack of rights or legitimate interest in the domain name.
As set out in Mission KwaSizabantu v Benjamin Rost, WIPO Case No. D2000-0279, to succeed under paragraph 4(c) (iii), the Respondent must establish:
1. the Respondent�s use is legitimate noncommercial or fair use of the domain name;
2. this use is without intent for commercial gain;
3. this use is without intent to misleadingly divert consumers; and
4. this use is without intent to tarnish the trademark of the Complainant.
The Respondent�s website is a complaint site at which complaints concerning the Complainant�s products and services may be posted. The issue is whether the website accessible via the disputed name is a genuine "Complaints" website. If so, then paragraph 4 (c) (iii) may be satisfied.
The Respondent�s website does not include an express disclaimer that the Respondent�s website is not associated with the Complainant. To whom is the Respondent�s website directed? The respondent has attached meta-tags to its website incorporating trademarks used by and belonging to the complainant including: "LEGAL & GENERAL", "LEGAL AND GENERAL" and "LEGAL-AND-GENERAL". Further on in the meta-tags is found "L&G" by which the Complainant is also known (The meta-tags are attached at Annex D to the Complaint.)
Searches for "Legal and General" on various search engines return the Respondent�s website in high positions. A Google search conducted on May 21, 2003, for "legal and general" returns Respondent�s website in fifth place, as does a Yahoo search (June 17, 2003). An Excite search (also on June 17, 2003) returns the Respondent�s website in 9th place and describes the site as "the place to go for complaints relating to Legal and General". (Annex F to the Complaint)
A result of use of the meta-tags is that persons conducting searches for "Legal and General" will return the Respondents website in high positions. A significant portion of visitors to the Respondent�s website will make the visit under the misapprehension that the site is the site of the Complainant.
Some of those visitors interested in the Complainants products and services will read the content of Respondent�s web site and be deterred from having anything further to do with the Complainant.
The Complainant has also filed evidence that a not insignificant number of persons with postings on the Respondent�s website are confused and believe that the website is the Complainant�s website and not the Respondent�s website. (Copies of the postings are attached as Annex G to the Complaint).
This Panel finds that the Respondent�s use of meta-tags incorporating the Complainants trademarks is for the purpose of misleading and diverting consumers conducting searches on various search engines for information about the Complainant�s products and services to the Respondent�s website. The intent of the Respondent is to tarnish the goodwill in the Complainant�s products and services identified by the Complainant�s trademarks.
The Panel has reached a different conclusion applying the "Complaint Site" approach than the majority of the Panel in the original decision. The new acts of the Respondent since the earlier decision and the fresh evidence occurring since the original decision which are relevant to the issue of rights or legal interest were not available to the original Panel.
The new acts had not occurred and fresh evidence was not in existence at the time of the original decision. In Creo products Inc. v. Website In Development, WIPO Case No. D2000-1490, the Panel at Paragraph 6.14 stated the following: "In relation to the second type of Refiled Complaint, namely, those that concern acts which have occurred subsequent to the decision on the original complaint, it seems to the administrative Panel that a different approach is warranted". With a refiled Complaint of this type, the concept of res judicata does not arise.
Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy.
The Complainant submitted that the "Domain Name Itself is Misleading" applied by the minority in the earlier decision should be followed in this case. Members of this Panel have followed the "Domain Name Itself is Misleading" line of cases in earlier decisions. Bett Home Limited and Bett Brothers PLC v. Bill McFadyen, WIPO Case No. D2001-1018 and continue to support that approach. The majority of the original Panel decided the original case on the basis of the "Complaint Site" approach. This Panel finds in favor of the Complainant on both the "Domain Name itself is misleading" approach and the "Complaint Site" approach.
C. Domain Name has been Registered and is Being Used in
Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which the Panel may rely on, in particular but without limitation, as evidence of the registration and use of a domain name in bad faith:
(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 trademark 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; or
(ii) You have registered the domain name in order to prevent the owner of the trademark 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 your web site or location or of a product or service on your web site or location."
The Administrative Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at paragraph 7.10 of its decision, noted that the circumstances identified in paragraph 4(b) of the Policy are stated to be "without limitation" and that it is therefore expressly recognised that other circumstances can be evidence that a domain name has been registered and is being used in bad faith.
In the earlier case between the parties, WIPO Case No. D2002-1019, the Respondent submitted that: as a show of goodwill the respondent has removed all references on the website to any trademarks of the Complainant�s.
After the decision in the original case the Respondent added the meta-tags incorporating the Complainants trademarks.
The use of the meta-tags incorporating the Complainant�s trademarks to misleadingly attract persons searching the web for information on Complainant�s products and services to Respondent�s website as opposed to a legitimate complaint website is evidence of use in bad faith. The Respondent states that its original meta-tags were irrelevant and the new meta-tags incorporating the Complainant�s trademarks are said to be relevant to the website purpose and content. (Response, III. A. Refiled Complaint, at last paragraph on page 3 of the Response.)
The Panel finds that the Respondent�s intention at the date of registration of the domain name confirmed by Respondent�s addition of the meta-tags after the decision in the earlier case was to mislead persons searching for Complainant�s website to the Respondent�s website resulting in damaging the goodwill in the Complainant�s products and services reflected in Complainant�s trademarks. The evidence is that a substantial number of the postings on the Respondent�s website show that the persons posting the information believe that the website is the Complainant�s website. The panel finds that the Respondent has registered and is using the domain name in bad faith.
8. Decision
8.1 This Administrative Panel decides that the Refiled Complaint is admissible under the Policy and that the Complainant has proven each of the three elements in Paragraph 4 (a) of the Policy in relation to the domain name which is the subject of this Complaint.
8.2 Pursuant to Paragraph 4 (i) of the Policy and Paragraph 15 of the Rules, and in accordance with the request in paragraph 17 of the Refiled Complaint, this Panel requires that the Registrar, Network Solutions Inc. transfer the disputed domain name to the Complainant
Ross Carson
Presiding Panelist
David Perkins
Panelist
Richard W. Page
Panelist
Dated: September 23, 2003
Full & Egal Universal Law Academy