WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION John Bowers QC v. Tom Keogan Case No. D2008-1720 1. The Parties
The Complainant is John Bowers QC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wiggin LLP of Cheltenham, UK.
The Respondent is Tom Keogan, of Newcastle, UK. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 7, 2008 and in hardcopy on November 12, 2008.
The Center transmitted its request for registrar verification to the Registrar on November 10, 2008. The Registrar replied on November 11, 2008, confirming that it had received the Complaint; that it was the registrar and the Respondent was the registrant of the Domain Name; that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration; that the Domain Name would remain locked during this proceeding, save for the scheduled expiration at the end of its registered term on December 22, 2009; that the registration agreement was in English; and that the Respondent had submitted to the jurisdiction at the location of its principal office. The Registrar also provided the contact details recorded on its Whois database in respect of the registration.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2008.
On November 21, 2008, the Respondent transmitted to the Center a letter stating that the dates of two documents as stated in the Complaint and on the copies of the documents annexed to the Complaint were false; and asking for true copies of the documents in question and an explanation. In the covering email the Respondent informed the Center that he would make a request for the commencement date to be postponed. He subsequently requested by email of November 24, 2008, that the commencement date of the administrative proceeding be postponed until such a time as the Complainant had furnished all parties with true copies of the original documents on which he relied.
The Complainant's representative transmitted a letter to the Center on November 24, 2008, stating that, when the Complaint was being prepared, the Complainant had obtained electronic copies of the documents in question with dates which automatically updated to the date of printing; and that the Complainant had now located copies of the original documents, which were enclosed.
The Center replied to the Respondent by email of November 26, 2008, stating that the Rules provide for a submission of a Complaint by the Complainant and a Response by the Respondent; that it would be in the sole discretion of the Panel to determine whether to consider and/or admit further documents and whether to order further procedural steps; that the Center had verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules; and that therefore the formal date for the commencement of the administrative proceeding was November 19, 2008
In accordance with paragraph 5(a) of the Rules, the due date for Response was December 9, 2008. The Response was filed with the Center by email on December 8, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on December 17, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Procedural Ruling
The Panel admits the Complainant's representative's letter of November 24, 2008, and enclosures. These provide an explanation as requested by the Respondent in his letter of November 21, 2008. The Respondent is not prejudiced since the explanation was provided promptly after the issue was raised and well in advance of the due date for filing the Response. 5. Factual Background
The Complainant is a barrister specializing in employment law. He has been appointed a Queen's Counsel and carries on his professional practice under the name “John Bowers QC”.
In 2006, the Complainant provided legal advice to the Respondent's brother, Mr. John Keoghan, in connection with a possible appeal from an adverse determination of an Employment Tribunal. The Respondent's brother had been represented by the Respondent before the Tribunal. The Respondent subsequently registered the Domain Name on December 22, 2006, and has used it for a website criticising the Complainant's advice and conduct. 6. Parties' Contentions A. Complainant
The Complainant states that he is one of the premier barristers practicing in the field of employment law in the UK. He notes that the number of cases reported in the Industrial Relations Law Reports in which he has acted is the seventh highest of any barrister and the third highest of those still in practice. He also points out that he frequently lectures on employment law and has written numerous books and articles. He contends that he has generated substantial goodwill under the name “John Bowers QC” amongst a large number of legal professionals, students and clients in the UK. He refers to decisions which confirm that rights in a mark for the purpose of paragraph 4(a)(i) of the Policy include unregistered rights such as goodwill sufficient to found a claim for passing off under UK law.
The Complainant submits that the Domain Name is identical or confusingly similar to his professional name “John Bowers QC”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. He states that the Respondent has no relationship with him and no permission for the use of his mark; that the Respondent does not share this name, is not commonly known by it and has not registered or used it as a mark or in connection with a bona fide offering of goods or services; and that the Respondent is not making a legitimate non-commercial fair use of the name. The Complainant also submits that the Respondent's prior knowledge of the Complainant's use of his name is incompatible with his acquiring any right or legitimate interest in relation to it.
The Complainant further contends that the Domain Name was registered and is being used in bad faith. He cites Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020 where the panel said
“Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site. By failing to do so, and by knowingly choosing a domain name which solely consists of Complainant's trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties.”
The Complainant alleges that the Respondent's aim in registering the Domain Name was clearly that persons searching for information on the Complainant would be led to the Respondent's website through confusion. He says that the confusion is particularly troublesome since the Respondent is using the Domain Name to disparage him and to disrupt his business.
The Complainant further alleges that the Domain Name was registered in order to prevent him reflecting his mark in a corresponding domain name, pointing out that the Respondent has also registered the domain name .
The Complainant requests a decision that the Domain Name be transferred to him. B. Respondent
The Respondent states in his Response that he is surprised by the Complainant's aggressive and unnecessary actions, pointing out that the Complainant has not attempted to resolve the matter amicably or requested him to take the website down.
The Respondent repeats his criticism of the Complainant's advice and conduct, but concludes by stating that he has no objection to the transfer of the Domain Name to the Complainant. 7. Discussion and Findings
As noted above, the Complainant has requested transfer of the Domain Name and the Respondent has stated in his Response that he has no objection to the transfer of the Domain Name to the Complainant.
As the panel held in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132,
“A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207)”
This approach has been followed in a number of other decisions: See, for example, Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Nutri/System, IHPC, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0864; and KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup, WIPO Case No. D2008-0446.
There may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession (see Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 and Messe Frankfurt GmbH v. Texas International Property Associates, WIPO Case No. D2008-0375). It is clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant.
In this case, the Panel does not consider it appropriate to address the merits. Whether or not the Domain Name contravenes the Policy - as to which the Panel makes no finding - there is no reason to suppose that the Respondent will make abusive registrations of other domain names in the future. 8. Decision
For the foregoing reason, in accordance with paragraph 4(i) of the Policy and paragraph 10 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: December 31, 2008
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