The Complainant is Acenden Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Taylor Wessing, United Kingdom.
The Respondent is Neil Mansfield of Bromley, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Names. On November 24, 2010, 1&1 Internet AG 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 November 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2010.
The Center appointed Ian Lowe as the sole panelist in this matter on January 5, 2011. 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
The Complainant (previously known as “Capstone Mortgage Services Limited”) was formerly the mortgage servicing division of Lehman Brothers. It is now in the business of servicing residential mortgages securing loans made by both connected and unconnected lenders. It launched the ACENDEN brand on July 5, 2010 and made a further announcement reminding the mortgage industry that it was changing its name on October 13, 2010.
The Domain Names were both registered on October 16, 2010. At the date of the Complaint, the “.net” Domain Name resolved to a web page that included text referring to the Complainant and its change of name. The “.org” Domain Name resolved to a parking page with various links and advertising for the registrar 1&1 Internet AG. 5. Parties’ Contentions A. Complainant
A summary of the submissions made by the Complainant is as follows:
a) The Complainant owns trademark rights in the ACENDEN mark. It applied to register the Community trademark ACENDEN on July 8, 2010. The application has been examined and was published for opposition purposes on October 21, 2010.
b) The Complainant has unregistered rights in the ACENDEN trade mark in the United Kingdom as a result of the goodwill that has been generated from the publicity surrounding its re-branding, it’s advertising in preparation for trading under its new name and its business-to-business activities since the launch on July 5, 2010.
c) The Respondent has no rights or legitimate interests in the Domain Names. He registered them on October 16, 2010, months after the original launch of the re-branding and three days after a further announcement on October 13, 2010. The launch was widely reported in the trade and mainstream press. The Respondent must have been aware of the Complainant and have had the Complainant in mind when he registered the Domain Names.
d) The Complainant already owns the and domain names and an Internet search returns, at first sight, only results that relate to the Complainant.
e) The trademark is fanciful and unique. The website at the “.net” Domain Name expressly refers to the Complainant and its change of name.
f) None of the circumstances set out in paragraph 4(c) of the Policy applies. The Respondent has not made any preparations to use the Domain Names in connection with a bona fide offering of goods or services, is not commonly known by the name “Acenden” and has not made any legitimate non-commercial or fair use of the Domain Names.
g) The Respondent is making bad faith passive use of the Domain Names with the intention of disrupting the business of the Complainant. The use of the “.org” Domain Name for a parking page and to promote the registrar’s services gives a damaging impression to Internet users. The statement on the website at “www.” is “Welcome to A. Acenden is the re-branded face of Capstone Mortgages Ltd. This site is currently under development, but will soon be bringing lots of news and advice relating to Acenden and Capstone”. These references to the Complainant and its change of name mislead Internet users into believing that the “.net” Domain Name is connected to or associated with the Complainant. The Domain Names are identical to the Complainant’s new name from which it should be inferred that the Respondent has made a deliberate attempt to mislead Internet users into accessing the Domain Names.
h) There are a number of panel decisions that demonstrate that “the opportunistic registration of the name or likely name of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use” (Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd v. IC,WIPO Case No. D2003-0112). By analogy, the same principle applies in the case of a name change arising out of a re-brand as in this case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 interest in respect of the Domain Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant does not claim any registered trademark rights in the name “Acenden”. It relies first on the fact that it applied to register ACENDEN as a Community trademark on July 8, 2010 and the application has been examined and published for opposition purposes. This indicates that Trademarks and Designs Registration Office of the European Union accepts that the name is inherently distinctive.
The Complainant relies more substantively on unregistered trade mark rights arising from the goodwill generated by its high profile announcement of the rebranding as ACENDEN on July 5, 2010 and then the marketing of the new brand and its subsequent business to business activity in the months before the Respondent registered the Domain Names on October 16, 2010. The Complainant submits that this activity was enough to generate sufficient goodwill in the trademark to give rise to rights in passing off under English law.
The Panel accepts that activity of this kind, particularly in the context of the establishment of an independent brand arising from the collapse of Lehman Brothers would be sufficient to generate goodwill in the name “Acenden” such that by the date of registration of the Domain Names the Complainant would have had common law rights in the ACENDEN trademark sufficient for the purposes of the Policy.
The Panel accordingly finds that the Domain Names are identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of factors that if established may demonstrate rights or legitimate interests for the purpose of the Policy. The Complainant submits that none of them is applicable.
The Complainant points out that “Acenden” is a made up name and is unique to the Complainant. It asserts that the Respondent is not making any legitimate use of the Domain Names. The “.org” Domain Name resolved to a parking page and the “.net” Domain Name resolved to a web page with a picture, and text referring to the Complainant and its change of a name. The Respondent has no connection with the Complainant.
The Panel agrees that the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. The Respondent has chosen not to answer the Complainant’s case. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
In view of the timing of the registration of the Domain Names, the date of the announcement of the rebranding of the Complainant and the evidence produced by the Complainant as to the publicity surrounding the Complainant’s change of name following the collapse of Lehman Brothers, the Panel agrees that this amounted to opportunistic registration in bad faith. The name “Acenden” is very distinctive and apparently made up. The Respondent must have had the Complainant in mind when registering them.
As stated in the Overview of WIPO Panel Views on Selected UDRP Questions, “the lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In this case, the “.org” Domain Name is being used to point to a parking page that carries the usual advertising links and a promotion of the registrar. Internet users will have been drawn to the website believing that it is controlled by the Complainant or otherwise associated with the Complainant. The “.net” Domain Name is used for a website that simply refers to the Complainant and its change of name, reinforcing the belief that the Domain Name is owned by or connected with the Complainant.
These uses of the Domain Names are substantially passive. In light of the circumstances surrounding registration, the obvious inferences are that the Respondent registered the Domain Names with a view to selling them for a sum in excess of his out-of pocket expenses or with a view to disrupting the business of the Complainant. In any event, the Panel considers that it is impossible to conceive good faith use of either of the Domain Names by the Respondent.
The Panel therefore finds that the Respondent registered and is using the Domain Names in bad faith in terms of paragraph 4(b)(iv) 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.
Ian Lowe
Sole Panelist
Dated: January 19, 2011
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