WIPO Domain Name Decision D2006-1087 for i-to-i-brazil.com

WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISION

i-to-i UK / i-to-i International Projects Limited v. Alan Thomas of the Alan and Miriam Thomas School of English and Cultural Exchange

Case No. D2006-1087

1. The Parties

The Complainant is i-to-i UK / i-to-i International Projects Limited of Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Intellectual Property Services of the United Kingdom of Great Britain and Northern Ireland.

The Respondent is Alan Thomas of the Alan and Miriam Thomas School of English and Cultural Exchange, Recife, Brazil.

2. The Domain Name and Registrar

The disputed domain name is registered with Direct Information Pvt Ltd d/b/a PublicDomainR.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�25,�2006. On August�27,�2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainR a request for registrar verification in connection with the domain name at issue. On August�28,�2006, Direct Information Pvt Ltd d/b/a PublicDomainR 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 on September�22,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�12,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�13,�2006.

The Center appointed Simon Minahan as the sole panelist in this matter on October�18,�2006. 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 Complainants are the principal UK trading companies of a business known as “i-to-i” which has traded throughout the last ten years under the I-to-I Mark. The First Complainant is the parent company of the Second Complainant.

The I-to-I Mark is registered in the name of the Complainants in Canada (registered January�2005), the USA (registered March�2004), Costa Rica (registered 2002-2003) and the Community Trademark territory (filed January 2002/registered July 2003). In addition the First Complainant is the registered proprietor of trademarks in various jurisdictions of a device mark it call the “Hand Device Mark” in association with the I-to-I Mark of similar registration vintages. In all it holds a dozen registered or pending marks incorporating the I-to-I mark in some form.

The Complainants’ business is the recruitment of paying volunteers from the United Kingdom, United States of America, Australia and other jurisdictions to carry out volunteer projects in the developing world aimed at enhancing the quality of life of local residents or preserving the local natural environment. They state, and the panel accepts as fact, that in the course of this business, and in conjunction with the I-to-I mark, they have recruited over 12,000 volunteers and have won awards for their work. The Complainants assert, and the Panel accepts as fact, that they have acquired international goodwill in the I-to-I mark over the course of the conduct of the business.

In order to carry out the i-to-i business, the Complainants work with various business partners, known as coordinators, in the destination countries. The role of the coordinators is to identify particular projects where the volunteers can work, manage the relationship with local people, and provide customer care to volunteers travelling to the projects under contract with the Complainants or their associates.

The Complainants began sending volunteers to Brazil in July 2003.

The Respondent and his wife were parties to a contract with the Complainants whereby they agreed to act as the Complainant’s agents or co-ordinators in Brazil. They also operate an aligned but independent business of a similar nature by reference to and through the use of the domain .

The contract between the parties was written and was entered into on August�31,�2004. It was for a term commencing September�1,�2004 and expiring on August�31,�2006, if not terminated earlier. (The Complaint does not disclose any formal early termination by either party).

The contract characterised the Respondent and his wife as “the Principals” and provided, among other things, as follows:

Clause 1.1 “ i-to-i engages the Principal to provide services to i-to-i relating to the generation of Placements and the supervision of Volunteers within the Placements for the benefit of i-to-i....”

Clause 3: “The Principal agrees with i-to-i throughout the Term:

3.1 At all times to work diligently to promote and protect the interests of i-to-i

3.2 Not without the previous consent in writing from i-to-i to be concerned or interested either directly or indirectly, alone or in conjunction with any other party(ies), in the supply of any services which are similar to or competitive (actually or potentially) with the Services

3.4 In all matters to act loyally and faithfully towards i-to-i”

Clause 9: Non Competition

“9.1 The Principal agrees that during the currency of his services with i-to-i and for a period of 2 years thereafter directly or indirectly and whether on his own behalf or on behalf of any other business, concern, person, partnership, firm, company or other body (which is wholly or substantially in competition with the business carried on by i-to-i) he will not:

9.2 Solicit or entice or endeavour to solicit or entice away from i-to-i any Volunteers nor refer people to Placements enjoyed by the Volunteers or with whom the Principal has entered into negotiations during the Term with the intent of taking custom from i-to-i

9.3 The Principal agrees during the currency of his services and after termination thereof he will not instigate in any trade or business any past or present association with i-to-i”

In addition the contract nominates English law as governing its provisions.

The Domain Name was registered on May�6,�2005, by the Respondent. The Complainants assert and, in the absence of controverting evidence from the Respondent, the panel accepts as fact that the Respondent did not have their consent or authority to do so and did so without informing them of the registration. It is further accepted that no use was made of the domain name initially.

On July�8,�2005, the Respondent filed Brazilian trademark application number 827649347 for the name “i-to-i” in association with a hand device that is substantially identical to the Complainants’ Hand Device Mark. The Complainants assert and, in the absence of controverting evidence from the Respondent, the panel accepts as fact that the Respondent did not have their express consent to apply for the trademark registration. Neither did the Respondent inform the Complainants of the application until after advertisement and the effluxion of the opposition period.

On November�25,�2005, shortly after expiry of the deadline for lodging opposition to the trademark registration application, the Respondent wrote to the Complainants demanding that the Complainants cease using the I-to-I Mark and the Hand Device Mark in Brazil. At the last paragraph of the letter, Mr. and Mrs. Thomas wrote:

“If you wish to continue using our Trademark and name in respect of and appertaining to BRAZILLIAN TERRITORY, you MUST gain our express permission. May I suggest that if this is the case, you contact us with due regard to the possibility of using our Trademark and name in respect of and appertaining to BRAZILLIAN TERRITORY under license or franchise issued only with our express permission and agreement.”

The Complainant contends, and the Panel finds as fact that Panel finds that the Respondent began offering to trade through the Domain Name on or around December�2,�2005.

On December�5,�2005, the Complainants’ legal representatives wrote to the Respondent and his wife asserting their rights to the I-to-I and the Hand Device Marks. On December�6,�2005, the Respondent wrote to the Complainants by e-mail stating, among other things:

“Our position remains the same, and as stated previously, if you wish to use our Trademark and name, legitimately in Brazil, we invite you to set out (by email, in the first instance) a proposal whereby we will consider granting you a license or franchise to use our Trademark and name in Brazilian Territory”.

Between December�9,�2005, and January�2006, the Respondent caused a number of changes to the website to be made to the point where it s now a functioning site promoting a volunteer travel business for Brazilian destinations.

5. Parties’ Contentions

A. Complainants

The Complainants seek transfer of the domain name listed above ; its general contentions of fact such as are relevant are summarized above in paragraph 4.

In support of its claim for transfer, the Complaint addresses each of the elements described in paragraph 4(a) of the Policy ie: The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights as follows:

- They contend that they have the relevant trademark rights by reason of registration and use. In particular they contend that the location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.

- With respect to the element described in paragraph 4(a)(i), the Complainants submit that the disputed domain name is identical or confusingly similar to its registered trademark. In particular they refer to UDRP to decisions which have found that the incorporation of a mark in a domain may be sufficient to establish the domain as identical and further that a geographically descriptive term combined with a mark may likewise be regarded as identical.

With respect to the element described in paragraph 4(a)(ii), The Respondent has no rights or legitimate interests in respect of the domain name the Complainants submit that:

- There is no evidence of any right or legitimate interest by the Respondent in the domain name and that to its knowledge the Respondent is not known by the i-to-i name but rather trades, or traded, under the VOLUNTEERBRAZIL mark.

- The Respondent, as an agent of the Complainant under the contract entered into with the complainant on August�31,�2004, has been aware of the Complainant’s trademarks at all times and had made any use of it as the Complainant’s agent and subject to contractual fetters on use or appropriation of the mark or the goodwill in it.

- By the contract the Respondent had agreed to refrain from harming the interests of the Complainants or competing with them by reference to or suggestion of any association with them or the i-to-i business.

- Further to the recited clauses the Complainants contend there was, by reason of the need for business efficacy, an implied term of the contract precluding the Respondent from acquiring or making use of the trademark in issue.

- The Respondent had not used, or made any demonstrable preparations for use of the trademark or any variations thereof for any purpose other than as a domain name for the Respondent’s separately identified business or to identify the Complainant’s goods sold by the Respondent prior to notification of the Complainant’s objection to their registration and use.

With respect to the element described in paragraph 4(a)(iii) of the Policy ie: The Domain Name was registered and is being used in bad faith, the Complainant submits that:

- Only after the Complainant had objected to such registration and had threatened legal action did the Respondent make any genuine use of the domain name.

- By the contract the Respondent had agreed to refrain from harming the interests of the Complainants or competing with them by reference to or suggestion of any association with them or the i-to-i business and breach of this obligation constitutes bad faith.

- The cited passages from correspondence evince an attempt to sell to or otherwise charge the Complainant for the use of its own trademark interest which also constitute bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds, in the absence of any contest from the Respondent and on the basis of the registrations and history of use, that the Complainant has a relevant trademark interest in the I-to-I mark. It further finds that the domain name in issue is confusingly similar to the Complainant's I-to-I mark, taking as it does the whole of the mark and combining it with the anodyne geographical identifier “brazil”. The panel more readily reaches this conclusion in view of the nature of the business associated with the mark – namely volunteer travel and placement to developing countries or other destinations where volunteer projects are performed.

B. Rights or Legitimate Interests

To the panel’s mind, this is the critical issue in this case. The inverse relationship between the legitimate interest and bad faith components of the UDRP test has often been remarked upon in panel decisions. In the case where a respondent has a legitimate interest in a mark or domain name, it is often difficult to reconcile the idea that use of it is somehow in bad faith.

The onus of establishing that the Respondent lacks rights or legitimate interest in the domain name falls on the Complainant. While it is true that in the absence of any Response from a Respondent challenging contentions by a Complainant, a Panel may more readily accept the Complainant’s contentions; nonetheless, a Complainant must still meet the burden to a sufficient degree to satisfy the question posed by the UDRP and the Panel still has the responsibility of deciding whether that has been done and the conclusions asserted by the Complainant are open on such facts as are made out (Inter-IKEA Systems B.V. v. Hoon Huh, WIPO CaseNo. D2000-0438).

The relationship of the parties here clearly indicates the possibility of the Respondent having acquired some goodwill in the I-to-I mark. The position of distributors and their principals in matters such as this is not clear cut in favour of on or the other side of the relationship with respect to acquiring trademark or related interests, especially in the absence of clear contractual parameters.

Moreover, paragraph 4(c) of the Policy provides two examples of how a Respondent might obtain possible legitimate interests in a disputed domain name.

1. before any notice of the dispute, the respondent can show bona fide use of the domain name in connection with an offering of goods; or

2 the respondent has become commonly known by the domain name, even if it has acquired no trademark rights.

While the Complainants have gone to some length to refute the first of these possibilities by setting out the chronology of registration and use of the domain name and the trademarks by the parties, they have provided no evidence, beyond assertion, concerning the degree to which the Respondent may have – or may not have – traded under and become known by the subject mark. Yet given their former business relationship which may very well have legitimized such a course of conduct it seems highly pertinent.

Notably the contract, the whole of which was provided as an annexure to the Complaint, does not in terms reserve or otherwise treat with trademark or other formal intellectual property rights. The Panel acknowledges the limitations on competition or promotion by association with the Complainants, but it notes that nothing has been provided to establish the degree to which the mark is associated with the Complainant in Brazil.

Further the asserted implied term is by no means clear and, in the Panel’s view, is a slender reed on which to hang the proof of want of any legitimate interest in the Respondent.

The Panel regards the following statement from the decision in Luvilon Industries NV v. Top Serve Tennis Pty Ltd.(WIPO Case No.DAU2005-0004) – which involved a dispute between formerly associated parties over the domain name which incorporated an identical mark - as apt to the present circumstances:

The issues between the parties are not limited to the law of trademarks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trademark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on

While perhaps the Panel need not be astute to search out difficulties or arguments for a respondent who does not care to do so for itself, nonetheless, neither can it ignore the legal realities and complexities of a case such as this.

Significantly, whereas there was a complete absence of written agreement in Luvilon and no controls were in place concerning goodwill and acquisition of trademark rights, here the contract at least deals with such matters, albeit less than comprehensively. This favours the Complainants’ contentions. However, perhaps the strongest of these is to be found in a very unfortunately worded provision:

9.3 The Principal agrees during the currency of his services and after termination thereof he will not instigate in any trade or business any past or present association with i-to-i”

Just what is encompassed by the phrase “instigate in any trade or business any past or present association” is not immediately clear. It is certainly not a customary formulation by which trademark rights are preserved.

On the other hand the chronology above clearly demonstrates that the Respondent had provided services by reference to the domain name before notice of the dispute and has applied for registration of the name and application for registration of the mark pre-dated any dispute between the parties and it is a matter of speculation what steps the Respondent may or may not have taken to make use of the domain name before the dispute arose, even if that use only became functional at or around the December�2,�2005. But even this predates, by a very slender margin, the Complainants’ objections on December�5,�2005, concerning the Respondent’s use of the domain name.

The Panel regards the issue as finely balanced. In the final analysis the Panel concludes that, on balance, the agreement and relationship of the parties operates to deny the Respondent any right or legitimate interest in respect of the domain name.

C. Registered and Used in Bad Faith

In view of the finding at B. above the communications from the Respondent recited in the factual background can realistically be construed as an attempt to sell the domain name to the Complainants. Further the course of conduct in secretly registering the domain name and the trademark before the approach was made, lend weight to that conclusion. The fact that the UDRP cites registration for the purpose of such an offer to sell as an instance of bad faith, and the numerous decisions which have upheld and applied that analysis, preclude the need for lengthy analysis or justification on this finding. The Panel finds in the circumstances that the domain name was registered and being used in bad faith.

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 name be transferred to the Complainant.

 

Simon Minahan

Sole Panelist

Dated: November�10,�2006

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