WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Lloyds TSB Bank PLC v. William Bar Case No. D2008-1705 1. The Parties
The Complainant is Lloyds TSB Bank PLC, of United Kingdom, represented by Taylor Wessing, United Kingdom of Great Britain and Northern Ireland.
The Respondent is William Bar, of United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2008. On November 7, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 7, 2008, eNom transmitted by email to the Center its verification response confirming that:
a) the domain names are registered with it;
b) the Respondent is listed as the registrant;
c) the contact details for the Respondent set out in the Complaint are correct;
d) the domain names are subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”); and
e) the registration agreements for both domain names are in English.
The Center verified that the Complaint satisfied the formal requirements of 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 November 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2008. The Response was filed with the Center on November 10, 2008.
After a delay requested by the parties in which they attempted to resolve the dispute by negotiation the Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 11, 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.
On December 21, 2008, the Respondent by email complained to the Center about a communication the Respondent had received from persons claiming to represent the Complainant.
Subsequently, on December 27, 2008, the Center received a further email from the Respondent. In this email, the Respondent sought to explain communications between the Complainant and the Respondent relating to the price at which the Respondent might sell the disputed domain names and how the disclaimer on the website to which the disputed domain names resolved came to be included. In addition to those matters, the substance of the email can be summarized from the opening paragraph:
“I buy domains for people and sell if I so wish. I believe ICANN rules permits [sic] me to buy, utilize or sell any domain name.”
This email was received after the projected date for the Panel's decision under the rules and also after the draft decision had been forwarded to the Center for formatting. The content of the email did not arise from or depend on any events taking place after the Respondent had submitted the Response on November 10, 2008. The Respondent did not provide any explanation for the late submission of this material.
The Panel notes that the Policy and the Rules provide for a proceeding to be comprised of a Complaint and a Response. In this case the Respondent did submit a Response on November 10, 2008.
Paragraph 12 of the Rules permits the Panel, in its sole discretion, to request further statements or documents. In accordance with the General Powers of the Panel conferred by paragraph 10 of the Rules, however, Panels have also on occasion been willing to accept additional submissions other than those requested by the Panel pursuant to paragraph 12 – once again in exceptional circumstances.
Having regard to the very late submission of this material, without any explanation or purported justification, the Panel declines to take the Respondent's further email received by the Center on December 27, 2008 into account. 4. Factual Background
According to the Complaint, the Complainant or its predecessor commenced banking business in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) in 1765 and commenced trading under the name Lloyds Banking Company Limited in 1865. It continued trading under the name “Lloyds” or “Lloyds Bank” until its merger with TSB Group plc in 1995. Following that merger its branches in England and Wales were re-branded Lloyds TSB.
The Complainant has 16 million personal customers through Lloyds TSB group. It is the largest personal current account bank in the United Kingdom. For the six months ended June 30, 2008, it had revenues of £4.6 billion. In addition to its United Kingdom operations, it has banking offices in the Channel Islands, the Isle of Man, Dubai, Hong Kong, Spain, France, Switzerland, Luxembourg, Belgium, the Netherlands, Monaco, Gibraltar, Cyprus, South Africa, Japan, Singapore, Malaysia, China and the United States of America.
The Complainant's expenditure on advertising for 2007 was in excess of £50 million.
The Complaint refers to ownership of 55 United Kingdom registered trademarks, one Community Trademark, one American registered trade mark, two Canadian registered trademarks and “160 other national trademark registrations for marks containing the words LLOYDS, LLOYDS BANK or LLOYDS TSB”. Printouts of the details for some of these are included in Annex 5 to the Complaint. They include:
a) UK trademark no. 1286876 for LLOYDS BANK in class 36
b) UK trademark no. 1335423 for LLOYDS in class 36;
c) UK trademark no. 2148403 for LLOYDS TSB in class 36;
d) UK trademark no. 2446729 for LLOYDS TSB in classes 9, 16, 35, 36 and 42;
e) USA trademark no. 3226724 for LLOYDS TSB in class 36 claiming first use in commerce on 30 June 1999.
In the United Kingdom, the Lloyds TSB “brand” is ranked 272 in the “Superbrands Official Top 500 2008/2009”.
The Respondent registered the domain name on June 20, 2008 and the domain name on April 22, 2008. Both registrations were well after the priority dates of the Complainant's registered trademarks listed above.
Both domain names resolve to a webpage, each of which stated:
This Domain is for Sale.
Price: $15,000 USD
To buy please contact me via my email: [address redacted]
Each also bore a disclaimer in the following terms:
“This is to notify you and the general public that the domain name and is not in anyway connected to Lloyds TSB Bank plc Registered Office: 25 Gresham Street, London EC2V 7HN. Registered in England and Wales no. 2065. The values of Lloyds TSB Bank Plc United Kingdom are respected and we do not have rights to infringe into the company's registered name”
The Respondent has in the past been the registrant of a number of domain names apparently derived from other banks in the United Kingdom although it would appear that many of these are now in the names of the relevant bank. From the details included in Annex 11 to the Complaint, domain names owned, or which have been owned, by the Respondent include , , , , . The respondent also holds a domain name registration for . 5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant has clearly demonstrated ownership of at least the five registered trademarks identified in section 4 above. The Complainant has also demonstrated ownership of the common law trademarks for LLOYDS, LLOYDS BANK and LLOYDS TSB.
Both domain names are confusingly similar to these demonstrated rights of the Complainant.
The addition of the descriptive term “group” and the gTLD “.com” to the domain name do not remove the potential for confusing or misleading association to the Complainant's rights in LLOYDS BANK in particular, but also to the other trademarks – LLOYDS and LLOYDS TSB.
The second domain name contains the distinctive components of the names of both the entities which merged to form the Complainant, apart from the omission of “s” after “Lloyd”. The interposition of the word “bank” between “Lloyd” and “tsb” reinforces the potential for association with Complainant. The first two syllables of the domain name, “Lloyd” and “bank” are identical to one of the Complainant's proved trademarks, apart from the omission of the letter “s”. The omission of the letter “s”, however, is a typical example of the kinds of misspelling which have given rise to the practice of typosquatting: See e.g. David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, 2007) 259 - 261. The inclusion in the domain name of “plc”, the common abbreviation required by law to be included in the names of publicly listed companies in the United Kingdom, is in this context similar to a generic or descriptive term.
Taking the domain name as a whole, the Panel finds it also to be confusingly similar to each of the Complainant's proved trademarks.
The Response simply asserts that the Respondent has not infringed the rights of the Complainant in any way. The Response appears to rely on the disclaimer on the Respondent's websites to support this claim. The Respondent's reliance on the disclaimer and any claimed lack of infringement is misplaced. The question is whether or not the Respondent's domain names are confusingly similar under the Policy. The question of resemblance for the purposes of the Policy requires a comparison of the domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420.
Accordingly, the Panel finds that both domain names are confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
The Complainant states that it has not authorized or licensed the Respondent to use the Complainant's trademarks or signs confusingly similar to them. Also, the domain names are not comprised of the Respondent's name or apparently derived from the Respondent's name. The Respondent does not contest either of these points. Rather, as already noted, the Response consists of a fairly bald denial that he infringes any rights of the Complainant reinforced with reference to the disclaimer on his websites and allegations that the Complainant has brought this proceeding in bad faith.
The circumstances outlined above preclude application of paragraphs (ii) and (iii) of paragraph 4(c) of the Policy. And in terms of paragraph 4(c)(i), the registration of a domain name and offering it for sale for USD$15,000, where the domain name consists of another person's well-known trademarks is neither use of, nor preparation to use, the domain name in connection with a bona fide offering of goods or services.
The present situation is very similar to the finding in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 that there was no plausible, legitimate use of the domain name. This is reinforced by the significant price the Respondent was seeking for the domain names as advertised on his websites.
The apparently self-serving disclaimer included on the Respondent's websites cannot convert the Respondent's conduct into innocent or legitimate conduct.
Accordingly, the Panel finds that the Respondent has not rebutted the inference proved by the Complainant that the Respondent has no rights or legitimate interests in either domain name.
For completeness, the Panel notes that the Respondent's position would not be assisted even if the email communication received by the Center on December 27, 2008 had been taken into account. The Respondent's asserted belief that “ICANN rules permits [sic] me to buy, utilize or sell any domain name” (emphasis added) does not accurately reflect the terms or effect of the Policy. C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides a number of examples of bad faith:
Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
A number of factors in the record indicate that the Respondent was well aware of the Complainant's trademark rights when he registered the domain names. First, as mentioned in section 4 above, there is evidence that the Respondent has registered domain names based on the names or trademarks of other UK banking or financial organizations. The registration of also suggests familiarity with United Kingdom institutions. It is also inherently unlikely that the Respondent could arrive at the combination of “Lloyd(s)bank” and “tsbplc” independently of any knowledge of the Complainant.
The price at which the Respondent advertised the domain names for sale is further, circumstantial evidence of such knowledge.
The advertising for sale, at a price of $15,000 each, of domain names having such close resemblance to the Complainant's trademarks, against a background where the Respondent has previously registered other British banks' trademarks as domain names, is a clear case of use of the domain names in bad faith.
The very short space of time between the registration of the domain names and their advertisement for sale for the sum of USD$15,000, given the very close resemblance of the domain names to the Complainant's trademarks, leads to a clear inference that the domain names were both registered for the purpose of selling them for a price in excess of the Respondent's out-of-pocket expenses directly related to registering the domain names.
The Response does not seek to explain or justify the Respondent's conduct in registering the domain names other than generally to protest the Respondent's innocence and to accuse the Complainant of “a hidden agenda”. In the circumstances, such vague and general protestations cannot dispel the inferences arising from the Respondent's own conduct.
The Panel notes it would not have reached a different conclusion if the email from the Respondent received on December 27, 2008 had been included in the record. The Respondent's position that he is entitled to buy, use and sell any name as a domain name is not correct in terms of the Policy. Moreover, it reinforces the position that the Respondent did in fact register the domain name for its value as a domain name – value which derives solely from the Complainant's trademark rights.
Accordingly, the Panel finds that both domain names have been registered and 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 names and be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: January 1, 2009
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