The Complainant is Latchways PLC of Devizes, Wiltshire, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Martin Peoples of Belfast, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 2, 2010, the Registrar 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 August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. The Response was filed with the Center on August 23, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 1, 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.
Having read the papers, the Panel noticed anomalies in the evidence and felt it appropriate to investigate further, albeit through free, publicly available online databases, namely the United Kingdom Intellectual Property Office website, the AllW whois database and the Internet Archive WayBack Machine. On September 3, 2010, the Panel issued a procedural order to the Respondent inviting a submission responding to the results of the Panel’s investigations. The Respondent responded on September 7, 2010. The Complainant was invited to reply to that response and did so by way of a letter dated September 10, 2010, which requested further information of the Respondent. By an email of September 15, 2010 the Respondent indicated a willingness to respond but said that the timescale offered by the Panel was too short. The Panel extended the Respondent’s time for response by one week, as requested, and the Respondent’s final response came in on September 23, 2010. 4. Factual Background
The Complainant is the registered proprietor of United Kingdom Trade Mark registration no. 1323219 filed on October 6, 1987, MANSAFE (word) in class 9 for inter alia industrial safety belts and harnesses.
The Domain Name was registered on September 20, 2002. The administrative contact is Sean McAndrew of Safe Access Services Ltd.
On February 10, 2003 the website connected to the Domain Name was a commercial website devoted to the goods and services of FallStop Limited and Uniline fall arrest safety systems. The copyright notice on the website identifies Seán McAndrew as the copyright owner.
It appears from the WayBackMachine records that on December 26, 2003 the website connected to the domain name, , featured a ‘Contact Us’ link leading to a ‘Contact Details’ page which gives the Respondent’s address and the email address, ‘martin.peoples@’. The copyright notice on the website identifies Seán McAndrew as the copyright owner.
When the Panel checked, the Domain Name was connected to a webpage featuring a link titled ‘mansafeoffer@’ which triggers a ‘mailto’ or ‘email forward’ to ‘martin@’.
The domain name was registered on August 19, 2002 and is held in the name of the Respondent. Mr. McAndrew of Safe Access Services Limited is listed as the administrative contact.
There have been communications between the parties over the Domain Name and/or the content of the website to which it has been connected, but the nature of some of those communications is disputed. In August this year the Complainant sought to purchase the Domain Name and the Respondent rejected the Complainant’s offers. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its MANSAFE registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and, finally, that the Domain Name was registered and is being used in bad faith. The Complainant asserts that Fall-Stop, the company referred to in the mailto on the website to which the Domain Name directs, “is an approved installer of Uniline Safety Systems who are a competitor of [the Complainant]”. B. Respondent
The Respondent does not dispute that the Domain Name is identical to a trade mark in which the Complainant has rights.
The Respondent contends that he does have rights in respect of the Domain Name. The relevant passage in the Response reads as follows:
“I am part of a private group of people connected totally outwith any commercial activity, reason or gain, commonly known by the name . The group has existed prior to the purchase of the site . The site is used a[s] an interesting gateway to become a member of our group. The word ‘offer’ is in referral to an invitation or “offer” to join. The site is deliberately discreet and requires initiative after visiting the site to research and find out more to become a member of our group. The site is used legitimately for non-commercial purposes. Perhaps it’s in a strange way but isn’t that what the internet is all about. Contrary to the complainants claim, I the disputant, have responded to the allegations and have shown above why I have concurrent right to the disputed domain name. I, the Respondent, as part of a private group have been and are commonly known by the domain name in issue, even though I have no trademark or service mark rights; I, the Respondent am making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.”
On much the same basis the Respondent denies that the Domain Name was registered and is being used in bad faith. He recites the examples of bad faith registration and use as set out in paragraph 4(b) of the Policy and denies that any of them is applicable. He asserts that the references to Fall-Stop and Uniline on the website connected to the Domain Name were all made at the instance of Sean McAndrew, who Respondent says is the previous owner of the Domain Name. The Respondent says that they (the previously referred-to references to Fall-Stop and Uniline) have nothing to do with him. He claims to have taken over ownership of the website at a later unspecified date. The Respondent contends that his use is an entirely non-commercial use, which calls for initiative from the visitor to find out more about the Respondent’s group with a view to becoming a member of the group.
The Respondent states that contrary to the contention of the Complainant, Fall-Stop is not an approved installer of Uniline safety systems. He states that Fall-Stop ceased trading over 5 years ago and has been dissolved. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
There is no dispute that the Domain Name (absent the generic “.com” domain suffix) is identical to the Complainant’s MANSAFE registered trade mark and the Panel so finds. C. Rights or Legitimate Interests
The fact that the Domain Name, a trade mark of the Complainant, a company in the business of safety systems, was originally registered (according to the Respondent) by Sean McAndrew of Safe Access Services Limited (see section 4 above) and was originally connected to a website promoting the goods and services of a competitor of the Complainant, Uniline Fall Arrest Safety Systems, demonstrates clearly that whatever may be the Respondent’s plans for the Domain Name, Mr. McAndrew’s intentions were (a) commercial in nature and (b) abusive. Adopting for a domain name another’s trade mark without authorization and to promote competing goods and services cannot be anything other than an illegitimate bad faith activity.
The Respondent says that Mr. McAndrew’s use of the Domain Name should be ignored and all that should be considered is the Respondent’s current good faith, non-commercial use of the Domain Name.
In all the circumstances (see paragraph 4 above) that is an unrealistic position to take. Were it the case that the Respondent and Mr. McAndrew are at arm’s length and were it the case that the Respondent had provided some hard evidence of the use to which he is putting the Domain Name, it might have been possible to come to the conclusion that at the very least he might have a legitimate interest in respect of the Domain Name. However, the Respondent and Mr. McAndrew are not at arm’s length and their association is clearly in the context of industrial safety systems, the industrial area in which the Complainant is engaged. Indeed, it appears that the Respondent was the contact for FallStop Limited, the very company using the Domain Name to promote the goods and services of Uniline, the Complainant’s competitor. Moreover, the Respondent has made no attempt to provide any evidence in support of his assertion that he has a members’ group “commonly known by the name []”, nor could the Panel find any proof of such on the record.
Accordingly, 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
In support of his contention that the Domain Name was not registered or acquired in bad faith and is not being used in bad faith, the Respondent’s primary contentions are that (1) he was not the original registrant and nothing done by the original registrant should be used against him, (2) his purpose in acquiring the Domain Name was to use it for a non-commercial purpose in connection with his members’ group commonly known as (3) the ‘mansafeoffer@’ link on his website was a reference not to any intention to sell the Domain Name but “in referral to an invitation to join or ‘offer’ to join [the group]” and (4) in August this year the Complainant has approached the Respondent with a view to purchasing the Domain Name, but the Respondent has not accepted the offers. The Respondent also refers to some communications that the Complainant is alleged to have had with Mr. McAndrew in 2003 and seeks support from the fact (as he alleges) that in those communications, no attempt was made by the Complainant to obtain a transfer of the Domain Name. No documentation has been produced by either party to confirm the nature of the communications and the Panel therefore ignores them.
As indicated above the Panel is satisfied that Mr. McAndrew’s purpose in registering the Domain Name was abusive and that his use of it was abusive. Indeed, his abusive use of the website in 2002 was for the benefit of the company, FallStop Limited, (with which the Respondent appears to be, or to have been, affiliated in several respects, as mentioned in the Factual Background above). In such circumstances it would be wholly unrealistic to divorce the Respondent from Mr. McAndrew’s earlier use of the Domain Name. Indeed, to put it colloquially, the Respondent appears to have been up to his neck in it from an early stage.
By the Panel’s Procedural Order No. 1 the Panel clearly highlighted the Panel’s concerns as to the Respondent’s good faith, expressly questioning whether the certificate of truth at the end of the Response was sustainable. The Respondent was thereby given an opportunity to come forward with some hard evidence to counter the plainly suspect nature of the Respondent’s position, but in the Panel’s assessment the Respondent has made no serious attempt to do so.
The Panel finds that the Complainant has made out a strong prima facie case and that the Respondent has fallen woefully short in attempting to answer it.
While it may be open to doubt as to precisely what the Respondent’s current plans are for the Domain Name, he is irrevocably saddled with the abusive use made of it back in 2002/2003 of which he and FallStop Limited must have been fully aware. Were it otherwise, the Respondent would have been open with the Panel about his connection with FallStop Limited and Mr. McAndrew and would have come forward with some corroboration for his expressed plans for and/or usage of the Domain Name.
The Panel finds that the continuing threat hanging over the head of the Complainant is a real one and constitutes bad faith use for the purposes of paragraph 4(a)(iii) of the Policy.
The Panel finds that the Domain Name was registered and is being 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 Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: October 1, 2010
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