WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION VML London Limited v. Andrew Levicki Case No. D2010-0910 1. The Parties
The Complainant is VML London Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Hammonds LLP, United Kingdom.
The Respondent is Andrew Levicki of Marlow, Bucks England, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On June 3, 2010, Tucows Inc. 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 June 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2010. The Response was filed with the Center on June 7, 2010.
The Center appointed David Perkins as the sole panelist in this matter on July 15, 2010. 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 4.1 The Complainant Good Technology Limited
4.1.1 The Complainant was originally incorporated in November, 1994 as Good Technology Limited and traded under that name until July, 2007.
4.1.2. The Complainant is the proprietor of United Kingdom trademark registration No. 2,379,069 for GOOD TECHNOLOGY in classes 35 and 42. That mark was applied for on 26 November, 2004 and registered on June 1, 2007.
4.1.3. The Company's business involves the provision of advisory and consultancy services relating to advertising, promotional sales, marketing services, production of advertising materials and commercials, research and information services relating to business, advertising and marketing, all using digital platforms, including the Internet, interactive television and mobile telephones, design services and editing services, website creation and maintenance services. In other words, it is a full service digital marketing agency.
4.1.4. Its clients included ASDA; Centre Parcs; Audi; Bacardi; Christian Aid; Colgate, Palmolive; KPMG; Levi Strauss; Microsoft; Norwich Union; Premier Inn; and Virgin.
4.1.5. During that period the Complainant won almost 90 industry awards, a list of which is exhibited to the Complaint.
4.1.6. As an indication of the size of the business, its turnover for 2006 was almost £5.5 million and just under £50,000.00 was spent on advertising and promoting its business under the GOOD TECHNOLOGY name and mark. GT London Limited
4.1.7. In July, 2007 the Complainant changed its name to GT London and traded under that name until 11 February, 2010. During that period the Complainant added to its client list, clients including Accenture; the BBC; Carphone Warehouse; and HMV. The business continued to expand and by the end of 2009 its annual turnover had risen to just over £8.1 million. It also continued to win a further 22 industry awards, a list of which is exhibited to the Complaint.
4.1.8. On March 20, 2007 the first disputed domain name (“Domain Name 1”) was registered and the Complainant used that domain name for both its website and as its email address up to late February 2010. To illustrate such usage, over the period 12 January to 19 February, 2010 the Complainant received 147,408 emails using that address and in 2009 the website to which that domain name resolved received 179,384 hits.
4.1.9. The Complainant explains that the Respondent, who was then an employee of a related company, Westbourne Terrace Management Services Limited (“WTMS”), was requested by the Complainant's Creative Director and Managing Partner to register Domain Name 1 on behalf of the Complainant. The Respondent had previously been an employee of the Complainant from April 5, 2006 until February 1, 2007 when his employment switched to WTMS. The Complainant further explains that Domain Name 1 was most probably registered in the personal name of the Respondent rather than in the name of the Complainant, since the Registrar concerned did not accept the Complainant's American Express credit card, with the result that the Respondent used his personal credit card and would subsequently have been reimbursed that expense. An exchange of emails in March 2007, which includes the Respondent and which is consistent with this explanation, is exhibited to the Complaint. VML London Limited
4.1.10.On February 11, 2010 the Complainant changed from the name GT London Limited to its present name, VML London Limited and began using the domain name . Notwithstanding, the Complainant says that many of their clients continue to use Domain Name 1 on their mailing lists and that in the field of digital marketing services the Complainant has established a reputation and, hence, unregistered rights in the brands/identifiers/marks
- GOOD TECHNOLOGY;
- GOOD TECHNOLOGY.com;
- GOODTECHNOLOGY.;
- GT London;
- W 4.2 The Respondent
4.2.1. As stated, the Respondent was formerly an employee of both the Complainant (from April 5, 2006 to February 1, 2007) and subsequently of WTMS, a Company related to the Complainant. That employment was terminated on April 3, 2007.
4.2.2. On May 23, 2009 the Respondent registered the second disputed domain name (“Domain Name 2”). The Complainant says that this registration occurred after discussions between WTMS and the Respondent in relation to Domain Name 1 and content abusive about WTMS which had been posted on a number of blogs on the Internet by the Respondent in January, 2009. Following those discussions the abusive content was removed by the Respondent and WTMS attempted to pursue with the Respondent transfer of Domain Name 1 to the Complainant. The Respondent was offered £100.00 to cover the expenses of such transfer, but this offer was declined by the Respondent. The Complainant calculates the cost to the Respondent of purchasing Domain Name 1 was £93.00.
4.2.3. Domain Name 1 has been offered for sale by the Respondent since February 18, 2010 when he also changed the MX settings connected to that domain name so as to prevent the Complainant from continuing to receive emails through that address.
4.2.4. On June 8, 2010 the Respondent filed a Response in the following terms:
“Response.
The Respondent consents to the remedy requested by the Complainant and agrees to transfer the Disputed Domain Names on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.”
4.2.5. Thereafter, at the Complainant's request this Administrative Proceeding was suspended for 20 days for the purpose of allowing time for the Respondent to transfer the disputed domain names to the Complainant. However, no such transfer was made and this Administrative Proceeding was reactivated on July 6, 2010. 5. Parties' Contentions 5.A Complainant Identical or Confusingly Similar
5.A.1 Domain Name 1 is the domain name which was used by the Complainant from July, 2007 to February, 2010. It also incorporates the letters “GT” by which the Complainant became widely known when trading as GT London Limited over that period. The prefix “we are” is no more than an identifier of the Complainant.
5.A.2 Domain Name 2 incorporates the Complainant's GOOD TECHNOLOGY trademark, to which again the identifying prefix “we are” has been added. In the circumstances, the Complainant says that it is confusingly similar not only to that trademark but also to the Complainant's previous trading name, Good Technology Limited and the connection which the words “Good Technology” still have to the business of the Complainant. Rights and Legitimate Interests
5.A.3 As to Domain Name 1, the Complainant's case is that the Respondent (then as an employee of the Complainant's related company, WTMS) was requested to register the domain name for the Complainant. The only legitimate use which has been made of that domain name is the use made of it by the Complainant (described in paragraph 4.1.8 above). Demonstrably the Respondent cannot - the Complainant says - demonstrate any rights or a legitimate interest in Domain Name 1, whether under paragraph 4(c) of the Policy or otherwise.
5.A.4 The Respondent's offer for sale of Domain Name 1 since February 18, 2010 (paragraph 4.2.3. above) cannot, the Complainant says, be a bona fide use having regard to the circumstances set out above.
5.A.5 As to Domain Name 2, the Complainant states that none of the circumstances set out under paragraph 4(c) of the Policy apply. Further, this domain name is also being offered for sale by the Respondent, which cannot, the Complainant says, qualify as a legitimate noncommercial or fair use. This is because, the Complainant says, Domain Name 2 was registered in bad faith and is now being used in bad faith. Registered and Used in Bad Faith
5.A.6 As to Domain Name 1, the Complainant's case is that it has at all times been the beneficial owner (see paragraph 4.1.9 above). As against the facts relating to creation of that domain name, the Respondent's refusal to transfer that domain name now to the Complainant (paragraph 4.2.2 above), the Respondent's offer for sale of the domain name and his changing the MX settings (paragraph 4.2.3 above) plainly evidence both registration and use in bad faith.
5.A.7 In addition to the above, the Complainant says that paragraphs 4(b)(i) and (iii) of the Policy apply. As to the former, the Complainant relies on the Respondent's rejection of its offer to reimburse the Respondent for his out-of-pocket expenses related to the domain name (paragraph 4.2.2 above). As to the latter, the Complainant relies upon the Respondent changing the MX settings for the purpose of disrupting its business (paragraph 4.2.3 above).
5.A.8 As to Domain Name 2, the Complainant's case is that by the time this was registered (May 2009) the Respondent was well aware of the Complainant's rights in the GOOD TECHNOLOGY name and trademark and that he deliberately registered it to harm the Complainant's business. The fact that Domain Name 2 is currently being offered for sale for £1,000.00, illustrates, the Complainant says, bad faith use of that domain name.
5.A.9 As to both disputed domain names, the Complainant ascribes the Respondent's actions in registering Domain Name 2 and in refusing to transfer Domain Name 1 as related to a grievance against WTMS relating to termination of his employment with that Company on April 3, 2007 (paragraph 4.2.1 above). The Complainant quotes from an email from the Respondent dated January 6, 2009 which reads:
“Further, I believe that the way I was treated by WTMS was appalling and although it was not perpetrated by Good Technology, I am aware that they did not prevent it from happening to me.
For this reason I am left with a bad taste in my mouth when I think about WTMS and unfortunately also Good Technology.”
5.A.10 The Complainant also refers to a number of attempts which have been made since February 18, 2010 to contact the Respondent with a view to resolving this dispute. These have included telephone calls, emails and a Cease and Desist letter from the Complainant's solicitors, all of which have been unanswered by the Respondent. This has also involved communication with the Respondent's father and his brother. The Complainant is told that the Respondent moved to Japan in April or May, 2010. The Complainant is forced to conclude that, although the Respondent is aware of the issues involving the two disputed domain names, he has chosen not to deal with them. 5.B Respondent
Save for the Response set out in paragraph 4.2.4 above, there has been no communication from the Respondent. 6. Discussions 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 domain name in issue.
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 a 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 evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant has rights in the registered trademark GOOD TECHNOLOGY, which is wholly incorporated within Domain Name 2. Addition of the identifier “we are” as a prefix to that mark does not serve to avoid confusing similarity between Domain Name 2 and that mark. Accordingly, the Complaint in relation to Domain Name 2 satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.6 As to Domain Name 1, the Complainant has provided adequate evidence to show that subsequent to July 2007 the Complainant acquired considerable notoriety in the field of digital marketing services with its identifier GT, both through its corporate name and extensive use of that domain name. Hence, the Complainant has shown that it has rights in the GT mark in that field of activity. Addition of the words “we are” as a prefix to GT is no more than an identifier. Since, all the evidence points to the Complainant as being the beneficial owner of Domain Name 1, it follows that the domain name is either identical to the Complainant's rights in that name or is confusingly similar to the Complainant's rights in the mark GT. Accordingly, in these particular circumstances, the Panel is satisfied that the Complaint in relation to Domain Name 1 satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.7 There is nothing in the evidence before the Panel to indicate that the Respondent could bring himself within paragraph 4(c) of the Policy in relation to either of the disputed domain names. On the contrary, from the evidence it appears that at all times the Complainant has been the beneficial owner of Domain Name 1 which the Respondent has throughout held on trust for the Complainant. Whatever the Respondent's issues with his former employer, WTMS, may be, they do not provide him with rights or legitimate interests in the domain names, or either of them. The fact of the Respondent's seeming offer of consent to the Complainant's requested remedy of transfer of the disputed domain names (see paragraph 4.2.4 above) is a further indication of the Respondent's lack of rights or legitimate interests therein. Registered and Use in Bad Faith
6.8 As noted in the preceding paragraph, the evidence is that the Respondent registered Domain Name 1 for and on behalf of the Complainant. In the circumstances, to have refused to transfer that domain name against proper compensation for his out-of-pocket expenses related to that domain name, to use the domain name so as to disrupt the Complainant's business by preventing its continued use of that name as its email address and then to offer the domain name for sale cumulatively evidences registration and use in bad faith.
6.9 As to Domain Name 2, the Respondent registered it in the knowledge of the Complainant's established rights in the name and trademark GOOD TECHNOLOGY. Clearly, such constitutes registration in bad faith. Then, in the context of the Complainant's request for transfer of that domain name, to offer it for sale to third parties equally clearly constitutes bad faith use.
6.10 Accordingly, as regards both the disputed domain names, the Complaint satisfies the requirements of paragraph 4(a)(iii) of the Policy. The Respondent's seeming offer of consent to the Complainant's requested transfer of the disputed domain names only after the Complainant had commenced the present action under the Policy does not serve to obviate the Panel's finding in this respect. 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: July 20, 2010
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