WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Giles Thomas v. UK-Muscle Nutrition
Case No. D2008-0824
1. The Parties
The Complainant is Giles Thomas of Gateshead, Tyne and Wear, United Kingdom of Great Britain and Northern Ireland.
The Respondent is UK-Muscle Nutrition of Liverpool, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain name, (the “First Domain Name”), is registered with DomainPeople, Inc. and the disputed domain name, (the “Second Domain Name”), is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2008. On May 28, 2008, the Center transmitted by email to each of the above named registrars a request for registrar verification in connection with the domain names at issue. On May 29, 2008 eNom, Inc. transmitted by email to the Center its verification response confirming that the Complainant is listed as the registrant of the Second Domain Name and providing the contact details. On June 12, 2008, DomainPeople, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the First Domain Name and providing the contact details.
In response to various notifications by the Center that the Complaint was administratively deficient, the Complainant filed a number of amendments to the Complaint, the final version of which is dated June 17, 2008 and was received by the Center in hardcopy on June 26, 2008.
The Center verified that the Complaint together with the amendments to 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 June 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2008. The Response was filed with the Center in hardcopy on July 2, 2008, and electronically on July 8, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 17, 2008. 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.
There has been a considerable volume of correspondence between the Complainant and the Center, much of it devoted to the Complainant's efforts to produce a duly compliant Complaint. To the extent that it has concerned the Complainant's dealings with those behind the Respondent, the Panel has ignored it unless and to the extent that the material has been included within the Complaint (as amended).
The identity of the Respondent calls for clarification. Above it is identified as UK-Muscle Nutrition, which is the name under which the First Domain Name is registered. However, the Respondent contends (and the Panel accepts) that that name was used in error. UK-M Limited is the name, which should have been used. Nothing turns on this. In this decision the Panel treats the named registrant and the company, UK-M Limited, as one and uses the term, “Respondent” to cover both and, where the context so requires, Mr. Michael Sullivan, the prime-mover behind the company.
On July 31, 2008, the Panel, having read the papers in the case, decided that he needed further information from the parties and issued a procedural order designed to clarify certain factual issues. Both parties responded to that order and each of them then followed up with further submissions. The time for issuing the decision was extended by the Panel to August 13, 2008.
On August 13, 2008 the Panel was informed that the Complainant had filed a further submission. The Panel agreed to admit the filing into the evidence and gave the Respondent until August 18, 2008 to respond if it so wished. The Panel indicated that no more submissions would be accepted. The time for the decision in this case was extended until August 20, 2008. The Respondent filed a brief reply by email on August 14, 2008.
4. Factual Background
The Complainant registered the First Domain Name on May 21, 2002 and the Second Domain Name on May 23, 2006.
Under the name “UK-Muscle” the Complainant operated a website connected to the First Domain Name until about May 2007. The website was a forum site through which the Complainant offered for sale and sold bodybuilding products. Sales were very small. The only figures provided to the Panel have come from the Respondent, which notes sales from February 2005 to May 2007 totaling £13,040.83, but cautioning that the true figure could be even lower.
The website designer for the version of the Respondent's website introduced in 2003 was a Mr. Chris Cox.
The Complainant claims (and the Respondent has not disputed) that the database associated with the website includes the names and addresses of over 4,000 persons.
At some stage in late 2006 a Mr. Michael Sullivan approached the Complainant with a view to the Complainant going into business with him and another gentleman, a Mr. David Steele. The plan was that the three of them would pool resources and trade under the UK-Muscle name via a company, UK-M Limited. From Companies House documentation provided by the Complainant, it appears that on November 15, 2006, Mr. Steele was appointed Company Secretary and the Complainant and Mr. Sullivan were appointed directors of that company.
The plan was that in return for their various contributions the Complainant and Messrs. Sullivan and Steele would hold equal shares in the company. The Complainant's contribution was to include, in one shape or form, the Complainant's website and the First Domain Name to which his website was connected. However, it then transpired that a Mr. Cox, who had been working with the Complainant on the Complainant's website, owned underlying intellectual property rights to aspects of the website (e.g. the source code). To accommodate Mr. Cox the Complainant agreed to “give up” a percentage of his share in the company to Mr. Cox, in return for which Mr. Cox was to assign his rights to the company.
At some stage in early 2008 the Complainant fell out with Messrs. Sullivan, Steele and Cox and resolved to leave the company. The allegations on both sides are serious and cover inter alia allegations of corruption, fraud and forgery. The Panel is unable to resolve those factual issues on the evidence before him. However, he has felt it unsafe to accept any of the internally produced documentation as authentic unless independently verified. The same goes for the parties' factual assertions.
On March 18, 2008, Mr. Sullivan terminated the Complainant's appointment as a director of the Respondent.
At some stage in March 2008 the Complainant decided to ensure that he retained ownership and control of the First Domain Name, which was still in his name and which was coming up for renewal. In order to do that he had to ensure that the Respondent's ability to intervene was neutralized. Before he was able to do that, Mr. Cox, who had access to the login details and passwords for the website, realized what he was up to and set out to baulk him.
The Internet service provider hosting the First Domain Name was Hostway UK. It appears that on learning that the Complainant was in email contact with Hostway UK with a view to taking control of the First Domain Name away from the Respondent, Mr. Sullivan contacted Hostway UK. On the basis of his representations, Hostway UK apparently declined to accept the Complainant's instructions and arranged for the Domain Name to be transferred into the name of the Respondent. This seems to have occurred at the very end of March/beginning of April 2008. At the same time Mr. Sullivan replaced the Complainant as the administrative contact for the First Domain Name and Mr. Cox replaced the Complainant as the technical contact for the First Domain Name.
The Panel has very little information on the Second Domain Name save that it is still registered in the name of the Complainant, but is not within the Complainant's control. The Respondent has no desire to retain that domain name, saying “Mr. Thomas may gladly have [it]”.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to a trade mark in which he has common law rights. The trade marks in question are the name UK-Muscle under which he traded from 2002 to 2007 and the First Domain Name, which was registered in his name until the transfer to the Respondent earlier this year.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. He states that the names are his and that he has granted the Respondent no right or licence in respect of them.
The Complainant refers to an offer made by the Respondent to pay to the Complainant the sum of £750 in full and final settlement of the dispute. The Complainant argues that this is evidence that the Respondent knows that it has no right or legitimate interest in respect of the First Domain Name.
The Complainant states that despite the work he was putting in for the company, he was receiving nothing in return. He then discovered newspaper reports indicating that Mr. Sullivan was not the honest businessman he believed him to be and he also discovered that he had not been allocated the shares in the company to which he was entitled. This is what led him to decide to leave the company and take his domain name with him. On learning of this Mr. Sullivan had the Complainant removed as a director of the company.
The Complainant further contends that the First Domain Name was registered and is being used in bad faith. He claims that the First Domain Name was transferred into the name of the Respondent (a) by Mr. Cox misusing the login details and password for the website to which he had access and (b) on the back of a false claim to ownership made to Hostway UK by Mr. Sullivan, the basis of Mr. Sullivan's claim being a shareholder agreement signed by the Complainant. The Complainant states that he has never seen (let alone signed) any shareholder agreement. The Complainant contends that the First Domain Name is being used in bad faith by the Respondent in that the website to which it is connected has been used to defame him and contains other material damaging to his reputation.
As to the Second Domain Name, the Complainant's assertion is that while it is registered to him, the Respondent has put it out of his control. He seeks to have control of that Domain Name returned to him.
B. Respondent
The Respondent does not wish to contest this dispute insofar as it relates to the Second Domain Name.
As to the Complainant's claim to rights in respect of the name, UK-M, the Respondent contends that the Complainant's trade under the name was trivial. More fundamentally, the Respondent relies upon the shareholders agreement dated May 14, 2007, which was produced in evidence by the Respondent. The Respondent contends that this is evidence that the rights to the First Domain Name lie with the Respondent and not the Complainant.
The Respondent points to Appendix 3 to the Response which features (a) a breakdown of the shareholdings, the Complainant's being 28% and (b) the contributions of the shareholders, the Complainant's reading “Nil Capital. Domain Name www.. Contact book of previous sales contacts. Running of the gossip forum”.
The Response does not contain any reply to the Complainant's allegations of bad faith registration and use of the Domain Names save to say that they are “invalid statements”. The Respondent expresses an unwillingness to stoop to what it characterizes as “a very low level of name calling”.
Appended to the Response are inter alia statements from Messrs. Cox and Steele, confirming inter alia (a) the agreement that the Complainant would assign the Domain Name to the company in return for the shares and (b) the circumstances leading up to the transfer of the First Domain Name. They also contain serious allegations as to improper behaviour on the part of the Complainant. Mr. Cox alleges that the Complainant attempted to bribe him to delete files and assist the Complainant to steal the First Domain Name from the Respondent.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
The Respondent does not wish to contest this dispute in relation to the Second Domain Name. Accordingly, the Complainant succeeds in respect of that Domain Name and what follows in this section relates solely to the First Domain Name.
As indicated above, the parties, who were at one time working together, are now locked in an extremely unpleasant and hotly contested battle. Each side is leveling at the other serious allegations of dishonesty, most of which have no direct relevance to the core issue before the Panel, namely whether or not the First Domain Name is an abusive registration within the meaning of the Policy.
However, credibility is an issue in this case and the only party to have supported his allegations in this regard by way of independent evidence is the Complainant. He has exhibited extracts from websites (including government websites) strongly suggesting that Mr. Sullivan, the prime-mover behind the Respondent, has been guilty of dishonest behaviour in the recent past in scams of one kind or another. The allegations are clearly made out in the Complaint, but the Response, signed by Mr. Sullivan, does not deal with them, save to say that they are “invalid statements”.
The allegations against the Complainant include allegations of theft, bribery and corruption. They are allegations which the Complainant denies. None of those allegations is independently verified. At least one of those allegations, an allegation that the Complainant was sacked by his previous employer for theft, ought to be independently verifiable. Indeed, the Respondent states that it can get a statement from the Complainant's previous employer, but it has not done so. The Complainant has said that he has been in touch with his previous employer, who will confirm to the Panel that the allegation is untrue. The Complainant has provided the Panel with his previous employer's telephone number for that purpose, but the Panel has not felt it appropriate to make the call. These proceedings are to be determined on the papers before the Panel and nothing else. If a party feels it appropriate to make serious allegations about the other, it is for that party to prove them, not for the other party to prove the negative.
There are two particular areas in this case where the credibility and reliability of the parties is key, namely:
1. What were the intentions of the Respondent (in the person of Mr. Sullivan) when the Complainant first entered into discussions with the Respondent? Did he really intend to make over to the Complainant the shares in the Respondent that were being discussed?
2. What was the nature of the agreement between the Complainant and the Respondent in relation to the Domain Name?
The Panel will address these issues below.
B. Identical or Confusingly Similar
The Complainant's first task is to prove that he has rights in a trade mark (registered or unregistered). There are no relevant registered rights, so the Complainant has to establish unregistered rights. He seeks to do this by referring to his trade through his website under and by reference to the name UK-Muscle prior to his association with the Respondent. He also relies upon the fact that the First Domain Name was registered in his name throughout. He claims that the interested public associate the website with him.
While the Respondent's trade through his website prior to May 2007 was very small (see section 3 above), it was plainly a genuine commercial site and one which appears to have attracted interest from over 4,000 people and not least Mr. Sullivan, the prime-mover behind the Respondent. In the rather particular circumstances of this case, the Panel is on balance satisfied that as at May 2007 the Complainant had common law rights in respect of the name, UK-Muscle.
The Respondent contends that by May 2007 at the latest the Complainant had assigned all his rights appertaining to the website (including the Domain Name) to the Respondent.
By May 2007, had the Complainant relinquish all rights to the name, UK-Muscle, (including the First Domain Name) in favour of the Respondent?
The evidence before the Panel comprises the following:
1. The fact that the Respondent's corporate name comprises in substance the First Domain Name. Manifestly the adoption of that name by the Respondent was with the Complainant's consent.
2. The fact that from May 2007 the First Domain Name was connected to the Respondent's trading website, again with the Complainant's knowledge and consent.
3. The shareholders' agreement put before the Panel by the Respondent, the second recital of which reads: “The [Respondent] is now the owner of the UK-M website, its database and associated business”.
4. Appendix 3 to the Response, which is a non-descript sheet of typescript. One section is headed “breakdown of shares” and reads “Michael Sullivan 33%, David Steele 33%, Giles Thomas 28%, Chris Cox 5%.” The other section is headed “Input to the Company” and identifies the Complainant's input as “Nil capital. Domain Name www.. Contact book of previous sales contacts. Running of the gossip forum”. There are references in the Respondent's submissions suggesting that this document is an annex to the shareholders' agreement, but it is not referred to in the shareholders' agreement, has no heading to suggest that it was ever intended to be an annex to that agreement and is not in the same font. However, the Panel accepts that it reflects the stated intentions of the shareholders.
5. Some handwritten minutes of shareholders' meetings exhibited by the Respondent and indicating inter alia that the Complainant will be donating the First Domain Name to the Respondent. The Complainant attacks the authenticity of those minutes, claims never to have seen them before and disputes his stated attendance at certain of the meetings. The minutes were not readily legible in the form supplied to the Panel, so the Panel requested from the Respondent a typed version. The typed version supplied is not a verbatim version of the handwritten notes. It is a re-write. The Panel ignores them.
6. The Respondent's reply to the Panel's procedural order refers to “the division of shares (seen in the shareholders agreement)”. However, the agreement contains no reference to the shareholding percentages, still less any indication that the shares had been or were on the point of being allocated.
7. The fact that until the Respondent effected the transfer of the First Domain Name into its own name earlier this year, the First Domain Name had been in the name of the Complainant.
8. The fact that the shares in the Respondent had not as at March 2008 been allocated among the shareholders. All 100% of the shares were in the name of Michael Sullivan.
The Panel has found, for the purposes of this decision, that Appendix 3 to the Response (point 4 above) accurately reflected the stated intentions of the parties in and around May 2007. The second recital to the shareholders' agreement (point 3 above), while it makes no express reference to the First Domain Name (other than as part of the URL for the website), nonetheless suggests that the Complainant had completed his side of the bargain. However, the Complainant did not sign that agreement and there is no document before the Panel verifying that the Complainant assigned anything to the Respondent. Certainly, as at the date of that agreement (May 14, 2007), no formal transfer of the First Domain Name registration had taken place (point 7 above).
The Panel is satisfied that at no time did the Complainant assign the First Domain Name to the Respondent. At all material times he retained full right and title to it and, indeed, to his UK-Muscle unregistered trade mark. The intentions of the parties as set out in Appendix 3 to the Response (point 4 above) involved both allocation of shares and input of shareholder contributions. The shares in the Respondent were never allocated as set out in that document (point 8 above), neither was there any assignment of the First Domain Name.
Mr. Sullivan blames the Respondent's solicitors for failing to execute his instructions, but does not produce a letter from them acknowledging their mistake, which would have been the obvious thing to have done. The Panel finds Mr. Sullivan's explanation unsatisfactory.
The fact that the Respondent, with the consent of the Complainant, had adopted the First Domain Name as its corporate name and was using the First Domain Name to connect it to its website merely means that the Respondent had a licence to use the Complainant's trade mark for those purposes, a licence terminable on reasonable notice. While this is powerful evidence as to the Complainant's intentions, it is not evidence of an assignment.
In the result, the Panel finds on balance that the Complainant had retained common law trade mark rights (perhaps very limited rights, but in the circumstances nevertheless sufficient for the purpose of the Policy) in the name UK-Muscle as at the date of filing of the Complaint.
The First Domain Name comprises the Complainant's trade mark, UK-Muscle, and the generic domain suffix, which may be ignored for this purpose.
The Panel finds that the First Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
While it is normal for panelists to deal with this head and the next one (Registered and Used in Bad Faith) separately, the relevant facts and findings under each are generally closely intertwined. It will rarely be the case, for example, that a domain name in respect of which the respondent has a right or legitimate interest will have been registered in bad faith and it will rarely be the case that a domain name which has been registered in bad faith is a domain name in which the respondent can sensibly be said to have rights or legitimate interests.
In this case, when considering the issue as to whether or not the Respondent has rights or legitimate interests in respect of the First Domain Name, it is necessary to have in mind the manner in which the First Domain Name came to be registered in the name of the Respondent.
Until late March this year the First Domain Name was registered in the name of the Complainant and the Complainant was both the administrative contact and the technical contact for the First Domain Name. Up to that date it appears that the Complainant had paid all fees relating to the registration of the First Domain Name. Both the Complainant and Mr. Cox, who was responsible for the operation of the Respondent's website, had access to the relevant login details and passwords giving control of the First Domain Name.
Mr. Cox, aware that the Complainant had fallen out with the Respondent (the Complainant had been removed as a director of the Respondent on March 18, 2008) discovered that the Complainant was taking steps to take the registration of the First Domain Name into his exclusive control. Mr. Cox duly informed Mr. Sullivan and Mr. Sullivan then stepped in to baulk the Complainant. He approached Hostway UK, the company hosting the registration, and presented them with ”evidence” sufficient to convince them that the First Domain Name belonged to the Respondent. The Panel has not been informed as to precisely what that “evidence” constituted, but the Respondent acknowledges that it included the shareholders' agreement, a copy of which was exhibited to the Response. Acting on the instructions of Messrs. Sullivan and Cox, Hostway UK then arranged for the First Domain Name to be registered in the name of the Respondent and Mr. Sullivan's name was substituted for that of the Complainant as the administrative contact for the First Domain Name and Mr. Cox's name was substituted for that of the Complainant as the technical contact for the First Domain Name. To their certain knowledge Messrs. Sullivan and Cox were acting without the authority of the registrant, administrative and technical contact for the First Domain Name, namely the Complainant, and directly contrary to his wishes.
By no stretch of the imagination can this transfer of the First Domain Name be regarded as anything other than abusive. Even if the Respondent genuinely believed that it was, as is asserted in the Response, the legal owner of the Domain Name, this was not the proper way of going about it. The Respondent was effectively taking the law into its own hands.
The Respondent contends that it has a legal right to the First Domain Name on the basis that it had already been assigned to the Respondent by the Complainant. The Panel has dealt with that contention above and has found it to be misconceived on the present record.
However, there are other bases upon which the Respondent could arguably be said to have rights or legitimate interests in respect of the First Domain Name. After all, the Respondent has adopted the First Domain Name as its corporate name and has traded via its website connected to the First Domain Name since May 2007. It has done so (at least initially) with the consent of the Complainant.
Hence, the Respondent could have contended that paragraphs 4(c)(i) and 4(c)(ii) of the Policy both apply. In other words, the Respondent (a) has been using the First Domain Name or a name corresponding thereto in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy) and/or (b) has been commonly known by the First Domain Name.
However, these are not arguments that the Respondent has advanced and, in any event the Panel does not believe that on any basis a respondent can be said to have rights or legitimate interests in respect of a domain name, which (as the present record suggests) it has effectively taken without authorization from the registrant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Examples of what constitutes bad faith registration and use of a domain name are set out in paragraph 4(b) of the Policy. It is a non-exhaustive list.
None of those examples is precisely applicable here. What the Respondent has done here is to use its access to the administrative controls surrounding the First Domain Name to take the First Domain Name away from the Complainant at a time when it knew that the Complainant was seeking to put the First Domain Name beyond the reach of the Respondent. Even if those responsible thought that they were simply seeking to give effect to what the Respondent was entitled to contractually, it was a dishonest means of achieving their end. It was manifestly an abuse of the domain name system.
If the Respondent is contractually entitled to the registration of the First Domain Name and if the Complainant fails to honor its contractual obligations in that regard, the proper course is for the Respondent to institute proceedings for breach of contract.
The Panel finds that the First Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Accordingly, the Complaint succeeds. The Respondent's next step, if it is not prepared to accept this decision, may be to avail itself of the opportunity offered by paragraph 4(k) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel:
(i) orders that the First Domain Name, , be transferred to the Complainant; and
(ii) notes for the information of the registrar, eNom, Inc., that while the Complainant is in name the registrant of the Second Domain Name, , he apparently lacks control over that domain name. Such control over the Second Domain Name should be granted to the Complainant to accord with registration under his name and the registrar is requested to extend to the Complainant its cooperation in seeking to restore such control. To the extent that it may be necessary to formally transfer the Second Domain Name to the Complainant in order to affect this, the Panel orders the Second Domain Name, , to be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: August 19, 2008
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