WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bibby Financial Services Limited and Bibby Leasing Limited v. Click Consultancy Services Limited and WhoisGuard
Case No. D2007-1319
1. The Parties
The Complainants are Bibby Financial Services Limited and Bibby Leasing Limited, companies incorporated in England and Wales with registered offices in Liverpool, United Kingdom of Great Britain and Northern Ireland, represented by Morgan Cole, Oxford, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Click Consultancy Services Limited of Harrogate, North Yorkshire, United Kingdom of Great Britain and Northern Ireland, and WhoisGuard of Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed against the first Respondent with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2007. The Center transmitted its request for registrar verification in connection with the Domain Name to the Registrar on September 5, 2007. The Registrar replied on September 6, 2007, stating that the Domain Name was registered in the name of the second Respondent and would remain locked during this proceeding, and that the registration agreement was in English and required the registrant to consent to the jurisdiction of the courts of Kings County, Washington.
The Center invited the Complainants to amend the Complaint to include the second Respondent by email of September 10, 2007. The Complainants filed an amended Complaint accordingly on September 13, 2007.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 21, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 11, 2007. The Response was filed with the Center on October 9, 2007.
The Complainants requested permission to submit a Reply to the Response by email on October 16, 2007. A request was made on behalf of the First Respondent to respond to the Complainants’ supplemental filing by email on October 23, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 21, 2007. 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. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly served on the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Ruling
Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request to make an additional submission may be regarded as an invitation to the Panel to exercise this discretion.
As observed in The EW Scripps Company v. Sinologic Industries (),WIPO Case No. D2003-0447, in exercising this discretion, a Panel must take into account the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. The Panel has to bear in mind that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.
In the circumstances of the present case, the Panel has decided not to admit the Complainant’s supplemental submission. The matters addressed in it are peripheral to the issues which have to be determined in this proceeding. Admitting it would encumber the procedure without assisting the correct resolution of this dispute.
In these circumstances, there is no need to consider the Respondent’s request to respond to the Complainant’s supplemental submission.
5. Factual Background
The First Complainant and its subsidiaries, including the Second Complainant, provide financing services to businesses under the name “Bibby Financial Services”. The services include invoice finance, export finance and asset finance. The business has sixteen operating units throughout the United Kingdom and divisions in the United States, Canada, Australia, France, Poland and the Czech Republic.
The central marketing department of the First Complainant’s group has spent over �8 million since 1999 on building and establishing the Bibby Financial Services brand, in addition to expenditure by individual companies in the group.
The First Complainant and its subsidiaries are part of the Bibby Line Group, a 200 year-old business started by John Bibby in 1807, with interests now including ship owning and operation, shallow water accommodation, oilfield services, distribution, memorial parks and advisory services. The group began to expand into financial services in the early 1980s.
The First Complainant has registered BIBBY FACTORS as a trademark at the Office for Harmonisation in the Internal Market of the European Union (“OHIM”).
The First Complainant took over the Second Complainant, then called Leeds Leasing Limited, in October 2005. The Second Complainant assists businesses to fund the acquisition of equipment by hire purchase and leasing arrangements. On January 4, 2007, the Second Complainant’s Managing Director informed staff that the Second Complainant would be rebranded as Bibby Leasing Limited from April 1, 2007. The Second Complainant was renamed Bibby Leasing Limited on April 2, 2007.
The Second Complainant’s staff as at January 4, 2007 included Carol Gawthorpe. The Domain Name and the corresponding . domain name, , were registered by Carol Gawthorpe’s husband, Lee Gawthorpe, on January 22, 2007, on behalf of the First Respondent. The shareholders and officers of the First Respondent are Lee Gawthorpe’s parents, Raymond Gawthorpe and Annie Mavis Gawthorpe. The registrant, administrative and technical contact details in respect of the registration included Lee Gawthorpe’s email address and referred to him as “Systems Administrator”.
The Domain Name was subsequently listed in the Whois (and confirmed by the Registrar as registered) in the name of the Second Respondent, a privacy service presumably, on behalf of the First Respondent. The Response was submitted on behalf of the First Respondent, naming Lee Gawthorpe as the contact.
The Domain Name currently resolves to a single page which invites Internet users to submit any questions or comments and to provide their name and email address for a quick response. The First Respondent has offered to forward traffic to the Complainants.
6. Parties’ Contentions
A. Complainants
The Complainants contend that they have rights in the unregistered marks BIBBY and BIBBY LEASING, relying on their use and promotion of the name “Bibby” in relation to financial services, publicity in respect of the First Complainant’s acquisition of the Second Complainant in 2005, and press reports since April 2007 of the renaming of the Second Complainant as BIBBY LEASING. The Complainants also contend that they have rights in the mark “Bibby Factors” by virtue of its registration in the name of the First Complainant. The Complainants submit that the Domain Name is confusingly similar to these marks.
The Complainants further submit that the Respondents have no rights or legitimate interests in respect of the Domain Name, pointing out that there is no evidence of use or demonstrable preparations for use of the Domain Name by the Respondents in connection with any bona fide offering of goods or services. They also note that the Respondents are not commonly known by the Domain Name or a corresponding name and are not making any legitimate non-commercial or fair use of the Domain Name.
Finally, the Complainants allege that the Domain Name was registered in bad faith, inviting the Panel to draw adverse inferences from the circumstances of registration described above.
B. Respondents
The First Respondent submits that the Complainants do not have the rights they allege since “Bibby” and “Bibby Leasing” have not been registered as trademarks and “Bibby Leasing Limited” was not incorporated until April 22, 2007, several months after the registration of the Domain Name.
The First Respondent disputes the allegation that confidential information about the proposed rebranding of the Second Complainant was disclosed to it by an employee of the Second Complainant. It states that it checked at the date of registration of the Domain Name whether any companies were registered under the name “Bibby Leasing” and that it was not aware at that date of the Second Complainant’s intention to rename itself as “Bibby Leasing Limited”.
The First Respondent contends that the Complainants do not have unique and total use of the name “Bibby” since over seventy companies are registered in England under names containing the word “Bibby” and the name is also used by many unregistered businesses. The First Respondent also points out that “Leasing” is a descriptive term.
The First Respondent states that it registered the Domain Name and other domain names to protect the integrity of web pages which it prepares in the course of its business for television and film production companies. It says that it used the Domain Name for a web page containing a graphic used to show the leasing of small vans produced in January 2007. The First Respondent claims that this use is legitimate and fair and that no claim for passing could be supported since the Domain Name has not been used to promote a commercial website or services to the general public.
The First Respondent denies using the Domain Name to disrupt the Complainants’ business and stresses that it has offered to forward all electronic communications to the Complainants.
Finally, the First Respondent complains that the Complainants have victimized their employees and his family as a result of their own negligence in not registering the Domain Name. According to the Respondent, this is a David and Goliath case in which an international organization is bullying a small organization.
7. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainants must prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Each of these requirements will be considered in turn.
A. Identical or Confusingly Similar
The Panel is satisfied that the First Complainant has rights in the unregistered mark BIBBY as a result of the extensive use of this mark by its subsidiaries in relation to financing services for business. It is well established that rights in unregistered marks qualify for the purpose of the first requirement of the Policy: see e.g. Imperial College v. Christophe Dessimoz ( and others),WIPO Case No. D2004-0322. It is also well established that a parent company can base a Complaint under the Policy on rights in marks belonging to its subsidiaries: see e.g. Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington (),WIPO Case No. D2003-0796.
In addition, it is clear that the First Complainant has rights in the mark BIBBY FACTORS by virtue of its registration of this mark at OHIM in respect of various financial services.
The Panel considers that the Domain Name is confusingly similar to these marks. Furthermore, as the First Respondent acknowledges, the term “leasing” is descriptive. The distinctive element of the Domain Name is the word “Bibby” which is associated with the First Complainant’s group by those interested in business financing services. Such persons would expect a company providing such services to include arrangements for the leasing of equipment. In these circumstances, clients and potential clients of the First Complainant and its subsidiaries would readily assume that the Domain Name related to an offering by the First Complainant’s group.
The Panel concludes that the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
On the evidence, the Panel considers that the Respondents have not used the Domain Name or any corresponding name in relation to any bona fide offering of goods or services. Although the First Respondent has asserted that it used the Domain Name for a web page prepared for a production in January 2007, it has not asserted, still less provided any evidence, that the Domain Name was used in relation to an offering of goods or services. In any case, any such use would not have been bona fide for the reasons discussed under the next heading.
The Respondents are not commonly known by the Domain Name. Nor are they making any legitimate noncommercial or fair use of the Domain Name.
In the circumstances, there does not appear to be any other basis on which the Respondents can claim a right or legitimate interest in respect of the Domain Name or any corresponding name.
The second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
It is clear that Lee Gawthorpe, acting on behalf of the First Respondent, is responsible for the registration and use of the Domain Name. The Second Respondent is merely a privacy service now listed as registrant of the Domain Name presumably as nominee for the First Respondent.
Putting aside questions of whether the use of such services particularly after a respondent receives notice of a complaint may itself be indicative of bad faith, the Panel considers that Lee Gawthorpe must have been aware, when he registered the Domain Name, of the First Complainant’s use of the name “Bibby” in relation to business financing services, given that his wife worked for the Second Complainant which had been taken over by the First Complainant. The Panel also considers that Lee Gawthorpe anticipated that, at the very least, the Complainants might wish to use the name “Bibby Leasing”, either because he had heard through his wife that they were planning to do so or because it was an obvious thing for them to do.
It is not necessary for the purpose of this proceeding to resolve which of these possibilities is the case. Either way, the Panel infers that the First Respondent, through Lee Gawthorpe, registered the Domain Name primarily for the purpose of disrupting the Complainants’ business. Given his knowledge of the Complainants’ business and the absence of any credible justification for his registration of the Domain Name, there is no other realistic explanation.
Furthermore, the First Respondent’s use of the Domain Name for a web page inviting those visiting it to submit inquiries or comments is liable to mislead those seeking information about the Complainants’ services into believing that the web page has been posted by the Complainants. The inadequacy of the page and the risk that requests or comments will go unanswered are damaging to the Complainants’ goodwill. The First Respondent’s offer to forward communications to the Complainants is unsatisfactory, since it would make the Complainants dependent upon him.
It is not necessary to establish that the registration and use of the Domain Name fall within any of the specific examples of bad faith identified in paragraph 4(b) of the Policy. It suffices that in all the circumstances the Domain Name was registered and is being used in bad faith. In the Panel’s view, in the circumstances of this case, the First Respondent has registered and is using the Domain Name in bad faith. The third requirement of the Policy is satisfied.
8. 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.
Jonathan Turner
Sole Panelist
Dated: November 4, 2007
Full & Egal Universal Law Academy