WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LCIA (London Court of International Arbitration) v. Wellsbuck Corporation
Case No. D2005-0084
1. The Parties
1.1. The Complaint in this administrative proceeding is the LCIA (London Court of International Arbitration), a company limited by guarantee, registered in England, with its principal place of business in London, United Kingdom of Great Britain and Northern Ireland (“Complainant”).
1.2. The Respondent is Wellsbuck Corporation, n/a, United States of America (“Respondent”).
2. The Domain Names and Registrar
2.1. The domain name the subject of this Complaint is (“domain name”).
2.2. The registrar of the domain name is Tucows (“Registrar”).
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on January 25, 2005. On January 26, 2005, the Centre transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 26, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the registrant, administrative, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
3.2. In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2005.
3.3. The Center appointed Andrew Frederick Christie as the sole panelist in this matter on March 15, 2005. The Panel finds that it was properly constituted. 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. Factual Background
4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Complainant is an internationally renowned provider of arbitration and alternative dispute resolution services. Established in 1892, it is one of the longest established international institutions for commercial dispute resolution. Though based in London, the Complainant operates in jurisdictions around the world.
4.2. The Complainant offers it services to the public under the trademark LCIA and it is widely known and recognized by the initials LCIA. All of the Complainant’s marketing materials, stationery, publications, rules and regulations refer to the institution by the initials LCIA, as does its website. In addition, the Complainant is referred to as the LCIA in large numbers of practitioner, academic and legal texts that refer to the institution and its procedures, rules and practices. A selection of these materials is annexed to the Complaint. The Complainant has spent substantial time, effort and money advertising and promoting the LCIA mark throughout the world. As a result, the LCIA mark has become distinctive and the Complainant has developed considerable goodwill in the mark.
4.3. The Complainant purchased the domain name from A, who acted as agent for Mr. Tang Hong, in June 2004 for the sum of USD5,025. A copy of the A transaction summary showing the transfer of the name is annexed to the Complaint. Copies of Whois printouts evidencing the transfer of the domain name from Mr. Tang Hong to the Complainant is annexed to the Complaint.
4.4. The domain name was incorporated into the Complainant’s materials, and extensively publicized. Until January 17, 2005, the domain name resolved to the Complainant’s website. For reasons which remain unclear, the domain name was transferred to the Respondent on or before January 17, 2005, without the Complainant’s authorisation. On January 17, 2005, the domain name resolved to a webpage advertising the domain name for sale for the sum of GBP10,000 through an agent, Sedo in Cologne, Germany. A copy of the printout of that webpage is annexed to the Complaint.
4.5. The Complainant wrote to the Respondent on January 18, 2005, informing the Respondent of the gravity of the situation and attempting to resolve any dispute. The Respondent made no effort to explain or provide proof of acquisition of the domain name, simply replying on January 19, 2005, that “Upon your request, we have suspended our use of temporarily. Nevertheless, whatever you are saying, we are the current legal registered owner of .” Copies of the correspondence between the Complainant and the Respondent are annexed to the Complaint.
4.6. Enquiries made by the Complainant strongly suggest that Mr. Tang Hong and the Respondent are one and the same person. The Respondent is the registrant of the domain name . Historical searches of the Whois records (annexed to the Complaint) for that domain name reveal that Hong Tang and the Respondent were previous joint registrants, and that Hong Tang was the administrative and technical contact. Further, in response to an enquiry from the Complainant as to how the transfer of the disputed domain name to the Respondent could have occurred, the previous Registrar of the domain name, OnlineNIC, stated in an email of January 25, 2005 (a copy of which is annexed to the Complaint):
“domain name was renewed by Hong Tang on Oct-24-2004, the renewal is successful. … When the domain was registered … the domain is managed by Hong Tang all along. It’s registered under his account in year 2002 and kept for 3 years until the domain transferred [to its current registrar].”
5. Parties’ Contentions
A. Complainant
5.1. The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the domain name the subject of this dispute.
5.2. In relation to element (i) of Paragraph 4(a) of the Policy, the Complainant contends that, because of its substantial use of the initials “LCIA”, LCIA is a trademark that is distinctive of the Complainant and is a trademark in which the Complainant has developed considerable goodwill.
5.3. In relation to element (ii) of Paragraph 4(a) of the Policy, the Complaint contends that the Respondent has no rights or legitimate interests in the domain name because (i) there is no relationship between the Respondent and the Complainant, (ii) the Complainant has not licensed or otherwise permitted the Respondent to use its name, (iii) the Respondent is not a customer of the Complainant, and (iv) there is no suggestion that the Respondent is commonly known by the name LCIA or that it has acquired any trademark rights in that name.
5.4. In relation to element (iii) of Paragraph 4(a) of the Policy, the Complainant contends that Mr. Tang Hong and the Respondent are one and the same person, that the Respondent was aware the Complainant had expended considerable money and effort incorporating the recently-acquired domain name into its material and media, that the Complainant is the target of the Respondent’s offer for sale of the domain name at the inflated price, and that the Respondent acquired the domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of reasonable costs.
B. Respondent
5.5. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
6.1. The relevant part of the domain name is “lcia”. By virtue of the Complainant’s long and substantial use of the initials LCIA, LCIA has become distinctive of the Complainant and the Complainant has developed goodwill in LCIA. LCIA is, therefore, a trademark in which the Complainant has rights. Accordingly, this Panel finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
6.2. The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark LCIA or to apply for or use any domain name incorporating that trademark, this Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
6.3. The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts that the Complainant asserts, and (ii) the Respondent does not deny the conclusions that the Complainant asserts can be drawn from these facts. Nevertheless, this Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
6.4. On the basis of the evidence provided by the Complainant and undisputed by the Respondent, this Panel finds it established as a fact that the Respondent acquired the domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket expenses directly related to the domain name. Accordingly, pursuant to Paragraph 4(b) of the Policy, this Panel finds that the domain name was registered and is being used in bad faith by the Respondent.
7. Decision
7.1. For all the foregoing reasons, in accordance with Paragraphs 4(i) or the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrew Frederick Christie
Sole Panelist
Dated: April 2, 2005
Full & Egal Universal Law Academy