WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Whitstrand Investments Limited T/A DataDirection v. Direction Research Group Limited
Case No. D2005-0101
1. The Parties
The Complainant is Whitstrand Investments Limited T/A DataDirection, Dublin, Ireland.
The Respondent is Direction Research Group Limited, Dublin, Ireland.
2. The Domain Names and Registrar
The disputed domain names and are registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on January 28, 2005. On February 1, 2005, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain names at issue. On February 2, 2005, BulkR 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 18, 2005. The Center verified that the Complaint, together with the amended 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 on February 23, 2005. Due to a clerical error, the hardcopies of the Complaint and the amended Complaint were not forwarded by the Center to the Respondent on February 23, 2005. The hardcopies of the Complaint and the amended Complaint were subsequently sent to the Respondent by the Center on March 16, 2005, and the deadline for filing the Response was extended to March 22, 2005. Upon the request of the Respondent, the deadline to file the Response was extended to April 1, 2005. Hardcopies of the Complaint and the amended Complaint were again sent to the Respondent by the Complainant on March�23, 2005 and the deadline for filing the Response was further extended to April�8, 2005. The Response was filed with the Center on April 9, 2005.
The Center appointed James Bridgeman as the sole panelist in this matter on April�19,�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
The Complainant is an Irish company and claims to have established a protectable reputation and goodwill in the unregistered trademark DATADIRECTION in relation to the provision of market research services.
The Complainant carries on business under the name Datadirection. The Complainant has registered ‘Datadirection’ as a Registered Business Name in Ireland pursuant to the Registration of Business Names Act, 1963. A statement of particulars in support of the application to register said Registered Business Name was filed by the Complainant at the Companies Registration Office, Dublin on November 15, 2002.
The Complainant is the owner of the following domain names: and and has established a website to which these domain names resolve.
The Respondent is also an Irish company engaged in the field of market research and data analysis, however the Respondent claims to be engaged in a field of activity that is different from that of the Complainant’s business activities. In this regard, the Respondent also claims to be active in different markets from the Complainant.
The Respondent registered both of the domain names in dispute herein on July�27,�2004. Said domain names in dispute presently resolve to the Respondent’s website at the address.
Neither Party has registered, or applied to register the DATADIRECTION trademark.
5. Parties’ Contentions
A. Complainant
The Complainant requests that the domain names in dispute be transferred to the Complainant.
The Complainant states that it was established in the year 2000, to provide market research services to businesses and public bodies including telephone surveys, web surveys, face-to-face surveys, mystery shopping, data analysis, data entry, report writing, presentation writing, sales lead generation, consultancy and charting to the Irish and world markets. Using the unregistered mark DATADIRECTION the Complainant has succeeded in attracting business from some of the best known enterprises operating in Europe, including Vodafone, Bank of Ireland, Taylor Nelson Sofres, AT&T Wireless and AXA. The Complainant has not provided any supportive evidence whatsoever of these contracts.
Nonetheless, the Complainant claims that its said mark DATADIRECTION is recognised by all its clients and the mark is used by the Complainant in all its advertising and correspondence with customers, potential customers and potential employees. The Complainant has submitted a print out of numerous pages from its website at its said address. These pages appear to have been printed on February 18, 2005. These pages and some of the other documents provided as an annex to the report are of little or no value to the Panel for the purposes of determining the Complainant’s goodwill at any material time as they were generated after the date when the Respondent registered the domain names.
The Complainant has also provided a copy of a business proposal made by the Complainant to a potential client dated August 2004, together with other marketing material including copies of letters dated April 24, 2001, and April 25, 2001, from the Complainant to third party firms on the Complainant’s letterhead that incorporated the DATADIRECTION mark.
More importantly, the Complainant has provided evidence of a Sunday newspaper article that states that the Complainant, referred to as “DataDirection” in the article “was launched in 2000 after identifying a gap to provide leading edge solution for independent market research”. This was provided as a print out of a web page posted at “”. While the print out itself was dated February 20, 2005, it nonetheless referred to the article published in the Sunday Tribune newspaper on February 24, 2002. The Complainant has further provided a small number of documents illustrating its marketing activity, general dealings with clients and evidence of its use of the DATADIRECTION name in its recruitment activity.
The Complainant submits that apart from their respective ‘.org’ and ‘.info’ suffixes, the domain names and are identical to its common law trademark DATADIRECTION.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names.
The Complainant states that a certain Mr. C., a former director, shareholder and employee of the Complainant company sold his interests in the Complainant in the month of April 2004, and joined the Respondent company.
Soon thereafter in the month of July 2004, said domain names and were registered by the Respondent. The Complainant submits that the Respondent is merely using said domain names and in order to disrupt the business of the Complainant and to redirect Internet users to the Respondent’s website at said address through which the Respondent also offers market research services from Ireland.
The Complainant submits that the Respondent has registered and is using the domain names in bad faith. The Complainant alleges that said domain names were purchased in order to withhold them from the Complainant with full knowledge that they are identical to the trademark and business name of the Complainant who is a competitor in the same market and the Respondent intended to thereby profit from potential customers who are looking for the Complainant’s website on the Internet. The Complainant submits that it is significant that said domain names were registered only after said Mr. C. terminated his connections with the Complainant and joined the Respondent company.
The Complainant submits that said Mr. C. signed a legally binding contract on April�8,�2004, in which he agreed to release all administrative passwords regarding the domain name to the Complainant. The Complainant alleges that as of the date of submission of the Complaint, said Mr. C. had failed to honour this contract. The Complainant has provided a redacted copy of said contract to this Panel and a relevant provision states as follows:
“6.3 It is further agreed that on execution of this agreement by both parties [said Mr. C.] shall provide [the principal of the Complainant company] with the password needed in connection with the domain name “”, and hereby assigns all and any rights that he may have in said domain name to [the Complainant] and will provide a (sic) to [the Complainant] as set out in schedule 2 of this agreement.”
Schedule 2 has not been provided in the annex to the Complaint.
B. Respondent
The Respondent requests that the application to have the domain names transferred to the Complainant be refused.
As to whether the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent accepts that the words “data” and “direction” in combination in the domain names are identical to the trademark DATADIRECTION, claimed by the Complainant, but contests the right of the Complainant to the exclusive use of the words “data” and “direction” separately or in combination.
The Respondent points to the fact that there are other identical domain names e.g. and registered by third parties that are not owned by either of the Parties in these Administrative Proceedings.
The Respondent completely refutes that it is confusing customers who are trying to visit the Complainant’s website.
The Respondent submits that the Complainant has not provided any evidence of its claimed trademark rights. The Complainant has not registered DATADIRECTION as a service mark. The Complainant has only provided the Panel with a copy of a “Certificate of Registration” for a Business Name and registration of a business name does not confer any trademark rights. The Respondent submits that a Registered Business Name does not give protection against duplication of the name, neither does it imply that the name will necessarily prove acceptable subsequently as a company name and nor does it authorise the use of the name if such use could be prohibited for other reasons.
The Certificate of Registration of the Business Name included in the Complaint was dated December 22, 2004, whereas in fact, the name was first registered on October�4,�2000 – at a time when Mr. C. was neither a director, shareholder nor employee of the Complainant. The application for registration of a Business Name by the Complainant was first made by said Mr. C. - a person formerly associated with the Complainant and presently associated with the Respondent.
The Respondent submits that it is significant that in the application form filed in the course of making the application for registration of the Business Name the general nature of the Complainant’s business was stated to be “Computers, Information Technology” and there was no reference to “market research services” or “market research solutions and consultancy”.
The Respondent submits that the words “data” and “direction” are words in common usage in many business areas, as such the Complainant has no exclusive rights to the use of these words.
The focus of the Response then turns to the issue of whether there has been any actual confusion or any risk of confusion. The Respondent submits that any auditable calculation of the number of visits to its website by visitors accessing the website using either of the domain names in dispute in these proceedings (excluding visits from the Complainant and its agents) would be miniscule.
The Respondent submits that the Complainant has not adduced any evidence of the alleged confusion or the alleged disruption to the Complainant’s business.
The Respondent submits that the Complainant makes a wrong and misleading assumption that the Respondent and the Complainant are engaged in the same business. This assumption is unfounded. The Complainant incorrectly reached that conclusion based on the fact that said Mr. C. terminated his links with the Complainant and certain other information posted on the Respondent’s website. In fact the Complainant has absolutely no idea of what the Respondent’s business entails.
With regard to the goodwill and reputation claimed by the Complainant, the Respondent comments that in the Complaint as originally filed, the Complainant claimed to carry on business with “Irish Industry” whereas in the amended Complaint the Complainant extended its claimed scope of operations to include “Europe”. The Respondent submits that the Complainant’s business is in the Irish domestic market and the extravagant claim to operating overseas was made only to strengthen the Complainant’s case.
The Respondent submits that Internet users in Ireland are not likely to use the domain names and . In Ireland, .ie and .com are the domain extensions of choice for companies that have a web presence and consequently these tend to be the extensions which Internet users in Ireland tend to use.
The Response argues that the fact that the Complainant has only registered the domain names and is therefore indicative of the scope of the Complainant’s business activities. The Respondent further submits that the Complainant is only interested in operating in the Irish market and this was clear from the Complaint as first filed in these Administrative Proceedings. The alteration of this aspect in the subsequently filed Amended Complaint in order to claim a ‘European’ dimension to the Complainant’s reputation and goodwill was incorrect and only made to strengthen its case in these Administrative Proceedings.
In terms of marketing, the Respondent refers to itself as “Direction Research Group” and/or “Direction Research” and submits that in doing so, there is no likelihood of confusion with the Complainant. In particular, the Respondent does not refer to itself by the business name “DataDirection”,
While the Respondent is registered in Ireland, and operates in the Irish market, most of the Respondent’s business comes from outside Ireland and primarily from the United Kingdom, continental Europe and Asia. The Respondent submits that any use of .info and .org domain names is more likely to take place outside of Ireland. The Respondent submits that no confusion exists among customers of the Complainant outside of Ireland.
As to whether the Respondent has rights or legitimate interests in respect of the domain names, the Respondent asserts that it has legitimate rights to use generic words such as “direction”, “research”, and “group” in combination with other words.
The Respondent submits that the domain names and were first registered by said Mr. C. on October 3, 2000, and October 24, 2000, respectively.
The name DATADIRECTION and certain associated concepts and intellectual property came into being prior to the time that the Complainant ever traded, prior to the time the name DATADIRECTION was first registered as a Business Name and at a time when the Complainant was in different ownership and under different direction than it is today.
Said Mr. C. originally founded the Complainant company and through his direct registration and control of the said domain names he allowed the Complainant to use the domain name .
At a time when there was a dispute within the Complainant company, the Irish ccTLD domain name was registered without the knowledge of said Mr. C. The Respondent submits that this was a blatant exhibition of bad faith on the part of the Complainant.
When said Mr. C. terminated his links with the Complainant the termination agreement entered into between the Complainant and said Mr. C. contained a clause concerning the delivery of passwords concerning specifically the domain name only. No agreement was made or reached regarding any other domain names such as or for any other intellectual property generated by Mr. C.
The Respondent submits that the allegations contained in the Complaint relating to the passwords for the domain name are untrue. Despite allegations to the contrary in the Complaint, Mr. C. has already, on a date in 2004, prior to the making of said allegations in the Complainant, provided the relevant passwords to the Complainant in accordance with said termination agreement. The Respondent submits that in making this untrue allegation, the Complainant has clearly intended to mislead the Panel in this regard and is attempting to paint said Mr. C. in a bad light.
The promoters of the Respondent company, had strong links with said Mr. C. for many years and the Respondent was aware that prior to his involvement with the Complainant, Mr. C. had plans to develop a product which would be described well by the use of the words “data” and “direction”. This product had not as yet come to fruition or to the market “(i.e not as yet commercialised)”. The Respondent was also aware that Mr. C. is the registrant of the UK ccTLD , and what it describes as “associated intellectual property”.
Mr. C. became associated with the Respondent when the Respondent became aware that he was terminating his links with the Complainant. The Respondent made an agreement with Mr. C. to further develop the “Datadirection” product on the condition that said Mr. C. would allow the Respondent to use any intellectual property therein and to use any associated domain names in which said Mr. C. had long established rights i.e. the UK ccTLD .
As a condition of this agreement between the Respondent and said Mr. C. as part of it’s strategic plans, and in order to make the proposition commercially viable, the Respondent also sought to acquire other domain names which contained the common words “data” and “direction” in combination and the Respondent successfully registered the domain names in issue in these proceedings in good faith.
The words “data” and “direction” are very common words. One of the words is an element in the Respondent’s protected limited company name. The combination of the words “data” and “direction” in the form “datadirection” should also be considered a common word.
A search of the occurrence of “datadirection” using standard and popular search engines, in addition to pointing towards registered websites will reveal many links containing the word in the context of: links to workings in atomization, the microelectronics and computing fields, GIS Systems, as a term to describe the movement of “data” in a “direction” through a computer system/computer chip and is seen frequently with other similar common word combinations e.g “data” and “length”.
There is a number of registrations and use of “datadirection” and similar names as a domain name viz.
a. the Complainant’s use of and also ;
b. the registration and use of by a Dutch corporation;
c. the registration and use of by an American corporation;
d. the registration of by another third party;
e. the Respondent’s registration and use of and the two domain names in issue in these proceedings.
In summary, the Respondent submits that due to the generic character of the words “data” and “direction”, it would be unfair for any organization or person to attempt to monopolize use of said common words. The Respondent further submits that “in line with fair competition”, the domain names in dispute in these Administrative Proceedings should be available on a first-come/first-served basis.
Furthermore, the Respondent submits that Mr. C. had established rights to these words and in particular the use of the words in combination, prior to the Complainant ever having any rights. The Respondent has acquired rights through an agreement with Mr.�C.
The Respondent denies that the domain names in dispute were registered and used in bad faith. The Respondent asserts that the domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant, or to a competitor of the Complainant, for any consideration whatsoever. The Respondent has never offered the domain names for sale nor has the Respondent ever concealed it’s interests in these domains or any of the registrations in the domain names or .
The domain names were not registered primarily to sell, rent or transfer them to Complainant for profit. The Respondent has no intention of selling any related domain names in its possession nor does it wish to divulge the details of its business products (currently under development) and risk leaving the idea open to copying.
The domain names were not registered in order to prevent the Complainant from reflecting any mark in a corresponding domain name and, in connection therewith, and the Respondent has not engaged nor does it intend to engage in a pattern of such conduct. The domains names were not registered to disrupt the Complainant or the business of the Complainant nor was the Respondent engaged in a pattern of such conduct.
The Respondent states that the said domain names in dispute were not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent submits that the Complainant and the Respondent are not competitors. The Respondent repeats in this regard that the Complainant has no knowledge of the Respondent’s business.
The Respondent states that it wishes to have no association or connection whatsoever with the Complainant or its principal.
With regard to the current use of the domain names, the Respondent claims to be developing new software and that this is time-consuming. The Respondent submits that it is normal in such circumstances, for the purpose of protecting intellectual property, for a connected website to be lacking in specific content during the development period.
For this reason in an attempt to exhibit that said domain names were being utilized and that a pending bona fide offering of services would be made at a website to which said domain names would resolve, the Respondent decided to link the domain names in dispute to its own website at the address, being the only website that the Respondent deemed appropriate.
The Respondent states that, should the Panel decide, it would be willing to consider an arrangement whereby, until its new product is ready to launch, said domain names in dispute would resolve to a web page with an “under construction” notice and to link the “under construction” page, “in a reasonable and appropriate manner”, to the Respondent’s main website at said address.
The Respondent states that it has plans to further develop its products for international markets in the field of data analysis, statistical data analysis, statistical modeling, data warehousing and data processing. Personnel associated with the Respondent have been engaged in some of these product areas since 1986. The Respondent states that the Complainant has little or no qualified capability to undertake this type of work nor has the Complainant signaled any intention of so doing. While the Complainant’s website mentions the word “analysis” in the context of “Data Entry/Analysis” it provides no real description of what they do in terms of “analysis”. In contrast the Complainant provides some description for all its other services.
The Complainant is not listed in any of the recognised market research publications in the market in which it claims to operate and is not listed in any of the main recognised business directories for marketing and market research providers and consumers.
The Respondent furthermore provides details of what it regards as allegedly incorrect information and allegedly misleading content relating to the Complainant’s products posted on the Complainant’s website. In the view of this Panel, most of the issues raised in relation to the content of the Complainant’s website are not relevant to the dispute between the Parties. They relate to the Complainant’s own description of its own services and are of no concern to this Panel or to the Respondent - one exception being the Respondent’s allegation that the Complainant is making extravagant claim to having a goodwill in the wider European market as distinct from the Irish market. In this regard, the Respondents submits that there is no mention on the Complainant’s website of any operations or provision of services outside the Irish domestic market in the wider Europe an markets on the Complainant’s website.
The Respondent submits that said Mr. C. registered both and in the year 2000, and never at any stage relinquished his rights in the latter, thereby indicating to any reasonable person his intention to operate/provide an offering to the UK market. The UK is also a major part of European market and hence it should be seen that the Respondent had intentions to operate there also.
At the time when the domain name was registered by Mr. C. he also registered the domain name . This fact alone should, under the Policy, demonstrate that before any notice to it of this dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Finally, the Respondent provides critical comments on the limitations imposed on it by the UDRP. Such comments are not for this forum to consider.
6. Discussion and Findings
Preliminary Matter relating to Procedure
Prior to the appointment of the Panel, the time for filing the Response had been extended to April 8, 2005. The Respondent did not file the Response until April�9,�2005. In the view of this Panel, missing the deadline by one day was de minimis in the circumstances and this Panel has admitted the Response. In view of the outcome of these Administrative Proceedings it has not been necessary to hear the Complainant on this point.
A. Identical or Confusingly Similar
With regard to the first element of the test in paragraph 4 of the Policy, the Complainant claims that the domain names in dispute are identical to its DATADIRECTION trademark and Registered Business Name.
While the Respondent denies that the Complainant has exclusive rights in the use of DATADIRECTION as a trade mark, the fact that the domain names in dispute are identical to the trademark DATADIRECTION has been accepted by the Respondent. The issues of confusion or confusing similarity do not arise and in considering whether the Complainant has satisfied the first element of the test, the only issue that remains in dispute is whether the Complainant has rights in the DATADIRECTION trademark.
The Complainant has not registered the DATADIRECTION trademark and relies on common law rights. It has registered DATADIRECTION as a Registered Business Name, but as the Respondent has pointed out such a registration in itself does not confer any trademark rights.
The Complainant has submitted evidence of its use of DATADIRECTION as its company name and evidence of its reputation built up since 2000, prior to the date on which either of the domain names in dispute were registered. That there was a newspaper report published in the Sunday Tribune on February 24, 2002, stating that the Complainant “was launched in 2000, after identifying a gap to provide leading edge solution for independent market research” has not been put in issue by the Respondent.
While it is unfortunate that the Complainant has not otherwise provided much in the way of evidence of its business reputation and goodwill, it has provided sufficient evidence to establish that on the balance of probabilities it has rights at common law in the use of the mark DATADIRECTION.
The Respondent has accepted that the Complainant has used DATADIRECTION as a trademark certainly in the Irish market. It has only challenged the existence of any significant business activity by the Complainant in other jurisdictions.
This Panel must therefore conclude that the Complainant has established on the balance of probabilities that it has used the words “data” and “direction” in combination as both a corporate name and as a trademark for a number of years to such an extent as to acquire common law trademark rights in the use of said mark in the Irish market.
That is sufficient to satisfy the first element of the test.
B. Rights or Legitimate Interests
The Respondent claims to have some entitlement to use the DATADIRECTION mark based on said Mr. C.’s real or perceived retention of some rights in the domain name and the UK ccTLD registration. The Respondent claims to have been permitted to use the DATADIRECTION mark by said Mr. C.
There is no evidence of any such agreement.
Furthermore, there is no evidence that Mr. C. has ever carried on business using the DATADIRECTION name or mark. All the evidence is that at all material times he was either employed by the Complainant company or the Respondent company and did not trade on his own account in the relevant periods. In the absence of a registered trademark one must ask what rights he could possibly have in such circumstances.
The Respondent has not filed any evidence whatsoever from said Mr. C.
The Respondent’s claim is therefore unsupported. It would appear that Mr. C. is facilitating his new employer, but that does not amount to a right or legitimate interest in the use of these domain names.
Furthermore, it is significant that the Respondent admits in the Response that it has no connection with the Complainant and never uses the DATADIRECTION name or mark.
On the balance of probabilities, this Panel therefore determines that the Respondent has no rights or legitimate interests in said domain names and the Complainant has established the second element of the test also.
C. Registered and Used in Bad Faith
With regard to whether the domain names were registered in bad faith, it is clear that the Respondent was aware of the Complainant’s goodwill in the marketplace. It is also clear that the Respondent was aware of the Complainant’s commercial presence on the Internet.
The Respondent has stated that it has no desire to be associated with the Complainant yet it has gone out of its way to register domain names that are identical to the Complainant’s trademark and to the Complainant’s .com and .ie domain names on the .com gTLD domain and the .ie ccTLD.
Furthermore, despite having filed a long and quite rambling Response, the Respondent has failed to provide any reasonable explanation as to why it has chosen to register these domain names. It argues that the words “data” and “direction” aptly describe some forthcoming product that it intends to launch, but one would image that other names would be equally applicable.
None of the explanations provided by the Respondent amount to what this Panel can accept as a reason for bona fide registration and use of the said domain names in dispute. In fact, in the circumstances outlined, given the unhappy relationship between said Mr. C. and his former company, all the indications are that the registrations were in bad faith for the purposes of disrupting the business of his former company.
By arranging to have the domain names resolving to the Respondent’s website this indicates use in bad faith. This Panel is satisfied that even if the Respondent is not directly in competition with the Complainant as it claims, it is engaged in the same or a very closely related field of activity certainly in the Irish market. This Panel must therefore conclude that the Respondent is a competitor of the Complainant, certainly in the Irish market.
It is the view of this Panel that the Complainant has established on the balance of probabilities that the domain names in dispute herein were registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s DATADIRECTION mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s said website or of a product or service on the Respondent’s website.
On the balance of probabilities, the Respondent therefore registered and is using said domain names in bad faith.
The Complainant has therefore satisfied all three elements of the test in paragaph 4 of the Policy and is entitled to succeed in this Complaint.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: May 3, 2005
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