WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Arma Partners LLP v. Me, Victor Basta Case No. D2009-0894 1. The Parties
The Complainant is Arma Partners LLP of London, United Kingdom of Great Britain and Northern Ireland, represented by Simmons & Simmons, United Kingdom.
The Respondent is Me, Victor Basta of London, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and are registered with Advantage Interactive Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2009. On July 6, 2009, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the disputed domain names. On July 8, 2009, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 11, 2009.
The Center appointed David Perkins as the sole panelist in this matter on August 14, 2009. 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 4.A. The Complainant
4.A.1 The Complainant is an investment banking firm focused on corporate finance advisory services to technology companies.
4.A.2. Following discussions in October 2002 between the Respondent and a Mr. Guély, in March 2003, together they launched the firm under the name Arma Partners. Prior to that, in August 2002 the Respondent registered the disputed domain name .
4.A.3. In May 2003, the Respondent and Mr. Guély acquired Arma Partners Limited to operate the business of Arma Partners. The Respondent and Mr. Guély were the first directors of that limited company and in April 2004 the third founding partner of the Complainant, Mr. de Courcy Ling, was also appointed director.
4.A.4. On March 27, 2004, the Complainant, a Limited Liability Partnership (LLP), was formed. On April 8, 2004 the three founders (Namely, the Respondent, Mr. Guély and Mr. de Courcy Ling), Arma Partners Limited and the Complainant entered into a Limited Liability Partnership Deed (the LLP Deed).
4.A.5. Also on April 8, 2004, Arma Partners Limited entered into a Transfer Agreement, with the Complainant (the Deed of Transfer) under which, inter alia, all rights of Arma Partners Limited in respect of the name “Arma Partners” were transferred to the Complainant.
4.A.6. On July 22, 2004, the Respondent registered the second disputed domain name .
4.A.7. The Respondent resigned from the Complainant in March 2008 and the terms of his resignation are contained in a Compromise Deed dated March 31, 2008 (the Basta Compromise Deed). 4.B. The Respondent
In default of a Response, there is no challenge to the above facts which are set out in the Complaint. 5. Parties' Contentions 5.A. Complainant 5.A.1. The Complainant has rights in the ARMA PARTNERS trademark
5.A.1.1. ARMA PARTNERS is not a registered trademark. The Complainant's case is that it has common law rights in the mark ARMA PARTNERS in the United Kingdom and elsewhere. This is based on the following.
5.A.1.2. The Complainant and its predecessors have traded under that name since March 2003. Since that time the Complainant's business has expanded considerably. For example, for the year ended March 31, 2008 it posted a turnover of just over £5.3 million.
5.A.1.3. The Complainant exhibits Press Releases which list a significant number of high profile transactions in which it has been involved over the past six years. The Complainant also exhibits a list of the Financial Reviews, Reports and White Papers which it has published under the ARMA PARTNERS name over that period. Also listed are speaking engagements and industry events, both in the United Kingdom and internationally, where it has participated under the ARMA PARTNERS name. Additionally, in March 2004 the Complainant gained the “2003 European Technology Deal of the Year” award. In short, the Complainant contends that it has acquired trademark rights in the ARMA PARTNERS name in its particular area of activity, namely the provision of investment banking services and financial services to technology companies.
5.A.1.4. Furthermore, the partners of the LLP – including, the Respondent as a former partner – have provided as between themselves provisions relating to ownership and exercise of the Complainant's rights in the ARMA PARTNERS name, including the disputed domain names. Those provisions are summarized in Section 5.A.3 below. 5.A.2. Identical or Confusingly Similar
5.A.2.1. The disputed domain name is identical to the ARMA PARTNERS trademark.
5.A.2.2. The existence of a hyphen in the other disputed domain name does not avoid a finding of being identical to the ARMA PARTNERS trademark also. In that respect, the Complainant cites the decision in Chernow Communications, Inc. v. Jonathan D. Kimball,WIPO Case No. D2000-0119, where the Panel followed earlier decisions under the Policy where it was
“….held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.”
The Complainant also cites Phenomedia AG v. Meta Verzeichnis Com.,WIPO Case No. D2001-0374, where the hyphenated disputed domain name was held to be identical to the Complainant's registered tradename MOORHUHN. 5.A.3. Rights to and Legitimate Interests in the disputed domain names
5.A.3.1. The Complainant's case is that the Respondent cannot demonstrate that he can bring himself within any of the circumstances set out in paragraph 4(c) of the Policy. This is because all contractual rights to the ARMA PARTNERS trademark belong to the Complainant. In this respect, the Complainant refers to the following provisions of the LLP Deed, the Deed of Transfer and the Basta Compromise Deed.
5.A.3.2. Clause 1.1 of the LLP Deed defines “Intellectual Property” as including, inter alia, trademarks, trade names and Internet domain names. “Members” are defined as including the Respondent as a “Founder Member”. “Business” is defined as the business of the Partnership, namely ARMA P LLP, the predecessor of the Complainant. The Complainant then points to clause 5 of the LLP Deed, which provides as follows:
“5. Name
5.1 Trading name
The Business shall be carried on under the name and style or firm name of “Arma Partners LLP” (the “Name”) or such other name as the Board shall from time to time determine.
5.2 Rights to Name
Each of the Members acknowledges that all proprietary and other rights in the Name are vested exclusively in the Partnership and agrees that no Member shall use the name “Arma Partners” or any name which may be substituted therefor or any other name which is so similar to any such name that it is likely to be confused with it for any purpose other than for the purposes of the Business whilst a Member or at any time after ceasing to be a Member without the written consent of the Board.”
5.A.3.3. Clause 19.4 of the LLP Deed that provides:
“19.4 Ownership of Intellectual Property
If at any time in the course of or in connection with his involvement in the Partnership an Individual Member makes or discovers or participates in the making or discovery of any Intellectual Property directly or indirectly relating to or capable of being used in the Business, that Individual Member shall immediately disclose in writing to the Partnership full details of the Intellectual Property which shall be the absolute property of the Partnership upon whose request and expense the Individual Member shall give and supply all such information, data, computer software, drawings and assistance as may in the opinion of the Partnership be necessary or desirable to enable the Partnership to exploit the Intellectual Property to the best advantage (as decided by the Partnership) and shall execute all documents and do all things which may in the opinion of the Partnership be necessary or desirable for obtaining patent or other protection for the Intellectual Property in such parts of the world as may be specified by the Partnership and for vesting the same in the Partnership or as it may direct.”
5.A.3.4. The LLP (clause 19.1 (E) and (F)) also provides that:
“Each Individual Member shall at all times whilst he remains a Member:
(E) conduct himself in a proper and responsible manner and use his best skill and endeavour to promote and conduct the Business;
(F) act in the utmost good faith in his dealings with the Partnership; and…”
5.A.3.5. The Complainant also refers to clause 2.1 and Schedule 1 of the Deed of Transfer. Schedule 1 “Business Assets” includes:
“1.7 All rights of the Transferor in respect of the name “Arma Partners.”
The Transferor is Arma Partners Limited. Clause 2.1 provides:
“2. Transfer to the Transferee
2.1 Transfer
Subject to the terms and conditions set out in this Deed, the Transferor hereby agrees to transfer to the Transferee with full title guarantee its entire right, title, interest and benefit in the Business Assets…”
5.A.3.6. Finally, the LLP Deed provides in clause 18.9:
“18.9 Delivery-up of property
An Outgoing Member shall on or as soon as practicable after the Succession Date deliver up to the Partnership any property belonging to the Partnership which is then in his power, possession, custody or control including any computer records, keys, client lists and other documents (whether confidential or not).”
5.A.3.7. The Basta Compromise Deed provides that with effect from April 1, 2008 the Respondent ceased to be a Member of the Complainant LLP. Notwithstanding, the Complainant says that the Respondent has refused to transfer to the LLP, the disputed domain names, which – by virtue of the various contracts – are Business Assets belonging to the Complainant.
5.A.3.8. The second disputed domain name no more than links to the website to which first registered disputed domain name resolves. Although first registered in August, 2002 – see paragraph 4.A.2 above – the domain name was first used in August, 2003 after the Respondent and Mr. Guély first began trading under the ARMA PARTNERS name in the March, 2003. It is the Complainant's principal domain name which resolves to its website at “www.armapartners” which is the Complainant's main Internet address.
5.A.3.9. The Complainant says that, unbeknown to it, the disputed domain names were registered in the Respondent's personal name. However, the Complainant has exhibited evidence that it, not the Respondent, paid the renewal fees for both those domain names in 2004 and in 2006.
5.A.3.10. When the domain names became due for renewal again in 2009, the Complainant realised that they were held by the Respondent and requested him to transfer them to the LLP, offering to reimburse him any of his personal out of pocket costs relating to them. Although the Respondent conceded that
“The amounts which have been spent on the domains are in fact pretty marginal...”
he nevertheless asked for £40,000.00 to £50,000.00 plus as “a reasonable settlement”. The Complainant offered £250.00 for transfer of the two disputed domain names, together with two other domain names registered by the Respondent and . The correspondence in May and June 2009 between the parties is exhibited to the Complaint.
5.A.3.11. As noted in paragraph 5.A.3.1 above, on the basis of the relevant contracts, the Complainant's case is that both the ARMA PARTNERS trademark and the disputed domain names themselves have at all time been the property of the Complainant and, consequently, that the Respondent as an individual cannot claim any rights to or legitimate interest in those domain names. Registered and Used in Bad Faith
5.A.3.12 In the light of the foregoing, the Complainant's case is that the Respondent holds and has at all material times held the disputed domain names on behalf of the Complainant and its predecessors and, consequently, that any purported use of those domain names by the Respondent other than for the benefit of the Complainant is in breach of contract and consequently, in bad faith. Furthermore, the Complainant says that the Respondent knows this but, despite a request that he transfer the domain names to the Complainant in accordance with the Complainant's rights and his obligations, he is refusing to transfer.
5.A.3.13. In the circumstances, the Complainant suggests that renewal by the Respondent of the domain name should be treated as bad faith registration, even more so as he did so using a fictitious name. Use of a fictitious name has been held to indicate bad faith, see Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024 and Chanel v. 1,WIPO Case No. D2003-0218.
5.A.3.14 As to the domain name, this was also renewed by the Respondent using a fictitious name. Further, the Respondent never disclosed to the Complainant that either or both names were registered in his personal name.
5.A.3.15. As to that, the Respondent's position — in the correspondence exhibited to the Complaint — is that he never hid this fact from the Complainant, that the Complainant was aware of this and that the Complainant never asked for the names to be transferred prior to June 2009.
5.A.3.16. The Complainant's retort is that, at the very latest, the Respondent should have transferred the domain names to it on his becoming a partner pursuant to the LLP Deed and the Deed of Transfer in 2004. Failing that, then as an Outgoing Member the Respondent should have transferred the names on his resignation from the Complainant in accordance with clause 18.9 of the LLP Deed: See paragraph 5.A.3.6 above.
5.A.3.17. Failure on but those counts is evidence of the Respondent's bad faith, compounded still further by his request in June 2009 that the Complainant pay him £40,000.00 to £50,000.00 plus as consideration for such transfer.
5.A.3.18. The Complaint cites two decisions under the Policy where similar fact circumstances were held to amount to bad faith registration and use. In Champion Innovations Ltd. v. Udo Dussling (45 FHH),WIPO Case No. D2005-1094 the respondent was a former member of the complainant (a limited partnership in Texas) who was asked by the complainant to register the disputed domain name. Unknown to the complainant, the respondent in that case registered the domain name in his own personal name and, subsequently, after his employment by the complainant was terminated, refused to transfer the domain name to the complainant. Held, that constituted both bad faith registration and use.
5.A.3.19. Robilant & Associati SRl.v. POWERLAB snc (ROBILANT 6-DOM),WIPO Case No. D2006-0991. Again, the respondent company was requested by the complainant to register the disputed domain names. Some five years later the complainant discovered that the respondent had registered the domain names in its own name and the respondent refused to transfer those domains to the complainant. Following the decision in the Champion case (supra), the panel found bad faith registration and use. 5.B. Respondent
5.B.1. As stated, no Response has been filed. As to disguising that he held the disputed domain names in his personal name, in an email to the Complainant dated May 29, 2009 the Respondent said:
“There is of course no reason you would have known about the domain registrations.
I hold several domains including the domain in my personal name.
They are in my name because I have paid for them personally, and have held them personally for many years now.
I don't have any plans to sell them.”
5.B.2. In a later email to the Complainant dated June 5, 2009 the Respondent noted that (1) certain of the disputed domain names were registered before he created the partnership — a reference to registered in August 2002 before the partnership commenced trading under the ARMA PARTNERS name in March 2003 – (2) he is entitled to the domain names; (3) he has never intended to hide nor has he hidden from the Complainant the fact that the domain names were registered in his personal name; (4) at no time prior to 2009 has the Complainant requested him to transfer those domain names; and (5) he will transfer them provided the Complainant makes him a reasonable commercial proposal. As to the latter, in a subsequent email to the Complainant dated June 8, 2009 the Respondent proposed a price for transfer of the four domain names – which include the two disputed domain names in this administrative proceeding – for £40,000.00 to £50,000.00 plus. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be relevant evidence of the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Respondent does not challenge that there are trademark or service mark rights in ARMA PARTNERS. His challenge is that he owns the disputed domain names, as to which see paragraphs 6.9 to 6.11 below.
6.6 As to whether the Complainant has provided adequate evidence of the reputation in the ARMA PARTNERS name to amount to trademark rights, it seems reasonably to conclude from the data provided in paragraphs 5.A.1.2 and 5.A.1.3 above that it has acquired such rights within the area of its particular activities — namely, the provision of investment banking services and financial services to technology companies. Accordingly, the first requirement of paragraph 4(a)(i) of the Policy is met.
6.7 There is no doubt that both the disputed domain names are identical to the ARMA PARTNERS name and, accordingly, the second requirement of paragraph 4a(i) of the Policy is also met. Rights or Legitimate Interests
6.8 Although the Respondent registered the domain name before the Complainant's predecessor partnership commenced trading in March 2003, it appears that that domain name was first used for the predecessor partnership in August 2003.
6.9 Further, by the LLP Deed of March 2004 — to which the Respondent was a party – the predecessor partnership to the Complainant acquired ownership of both the ARMA PARTNERS name and mark and also of that domain name; see, paragraphs 5.4.3.2 to 5.4.3.6 above.
6.10 By the time the second disputed domain name was registered in July 2004 the LLP Deed was already in place and, consequently, although registered by the Respondent in his personal name, that domain name was from the outset owned by the Complainant.
6.11 Consequently, since by those agreements both the disputed domain names became beneficially owned by the Complainant and since the Complainant also became entitled to the ARMA PARTNERS name and trademark, the Respondent cannot claim rights to or legitimate interests in either of the disputed domain names. Accordingly, the Complainant satisfies the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.12 Although the domain name may appear to have been originally registered in good faith by the Respondent, it is in this Panel's view clear from the contractual commitments to which he became party by the LLP Deed and the contemporaneous Deed of Transfer that ownership of that domain name was transferred to the Complainant's predecessor and that the Respondent as a Member of the Complainant agreed to devolution of that ownership to the Complainant: see, again paragraphs 5.A.3.2 to 5.A.3.5 above. It is also clear from clause 18.9 of the LLP Deed — see, paragraph 5.A.3.6 above — that on resignation as a Member from the Complainant the Respondent was obligated to transfer all property to the Complainant. The disputed domain names were clearly business assets of the Complainant — see, paragraph 5.A.3.5 above – and, as such, were the Complainant's property for the purpose of clause 18.9 of the LLP Deed.
6.13 This case is different on the facts to the cases cited in paragraphs 5.A.3.18 and 5.A.3.19 above in that in this case there are the clearest of terms demonstrating that the Complainant is the beneficial owner of both the ARMA PARTNERS name and mark and the two disputed domain names. Where the disputed domain names are, as in this case, contractually transferred into the ownership of the Complainant, what may have originally appeared as a good faith registration – namely, — can no longer be so regarded. Previous panels have recognized, and this Panel does also, that what may appear to have been a good faith registration initially may be ‘coloured' by the subsequent conduct of a respondent in for example breaching the specific terms of a contractual undertaking.
6.14 In the circumstances described above, the Respondent's refusal to transfer, coupled with a demand for payment by the Complainant of a sum vastly in excess of the cost of obtaining the two domain names, is manifestly bad faith use by the Respondent of those names.
6.15 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) 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 orders that the domain names, and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: August 26, 2009
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