The Complainant is Regent Croft Limited of Hertfordshire, United Kingdom of Great Britain and Northern Ireland represented by Briffa Solicitors of United Kingdom of Great Britain and Northern Ireland.
The Respondents are Contact Privacy Inc. of Ontario, Canada (the “First Respondent”) and CoolSkin Laboratories Limited of Hertfordshire, United Kingdom of Great Britain and Northern Ireland (the “Second Respondent”). 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2011. On May 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. On May 5, 2011, the Complainant filed an amended Complaint naming the Second Respondent as an additional Respondent.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on May 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2011. The Response was filed with the Center on May 26, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 30, 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.
On May 26, 2011 and May 27, 2011 the Complainant and the Second Respondent (respectively) filed Supplemental Submissions with the Center. The Complainant’s Supplemental Submission raised serious allegations about the conduct of the Respondents, which, if true, must have a significant impact upon the outcome of this dispute. The Panel cannot sensibly determine this dispute without taking this submission into account and admits it in evidence in this proceeding. Given the seriousness of those allegations, clearly the Respondents must be permitted to respond and the Panel also admits the Respondents’ Supplemental Submission as evidence in this proceeding.
Paragraph 10 of the Respondents’ Supplemental Submission refers to email correspondence which the Second Respondent has “for the purposes of the panel”, but the correspondence has not been submitted to the Panel. On June 6, 2011 the Panel issued a procedural order giving the Second Respondent until noon on June 8, 2011 to produce that correspondence should it wish to do so. The Complainant was given until noon on June 10, 2011 to respond should it wish to do so. Both parties filed timely supplemental submissions. The second Respondent then filed a short unsolicited response to the Complainant’s supplemental submission. The Panel read it, but it added nothing of any significance.
The First Respondent (i.e. the registrant of the Domain Name just prior to the filing of the original Complaint and the respondent identified in the original Complaint) is a privacy service. From the factual background set out in section 4 below, it would appear that the underlying registrant making use of the First Respondent’s services was the Second Respondent. Whether or not that was the case, the First Respondent’s involvement in the circumstances surrounding registration and use of the Domain Name is of no significance in the context of this dispute. Henceforth, the Panel uses the term “Respondent” to refer to the Second Respondent. 4. Factual Background
The Complainant is a retailer of oven gloves and thermally insulating gloves. The Respondent is an English company, which has not yet commenced trading. The sole Director and Secretary of the Respondent’s company is Mrs. Tracy Pez.
The history is complex. The chronology of events is as follows:
The Domain Name was first registered on May 11, 1998. On the same day the domain name, , was registered. They were both held in the name of J. Cooper and/or his company Lanco Teksolv Limited a supplier of oven gloves and thermally insulating gloves. The business traded as “Coolskin Gloves”.
On June 13, 2003, the UK trade mark registration No. 2305169 COOLSKIN (word) in classes 17 and 21 (for inter alia oven gloves and thermally insulating gloves) was registered. The registration was held in the name of Lanco Teksolv Limited or its proprietor, J. Cooper.
The Domain Name was transferred to Help Internet Limited in December 2008, Help Internet Limited being a provider of IT services to Lanco Teksolv Limited and willing to take the Domain Name in lieu of fees for those services. In a submission filed by Help Internet Limited, which is said to have been reviewed by Mr. Cooper, it is acknowledged that Mr. Cooper’s business was already in financial difficulty.
In 2009 Lanco Teksolv Limited’s financial difficulties continued and a liquidator was appointed. On a date unknown, but prior to the appointment of the liquidator, Lanco Teksolv Limited assigned the trade mark to a Mrs. M. P. Cooper.
The liquidator was unaware of the trade mark assignment and sold the trade mark to the Complainant in April, 2010. On becoming aware of the assignment (alleged by the Complainant to have been made unlawfully to a connected person) Mrs. M. P. Cooper was encouraged to assign the trade mark to the Complainant for nil consideration. This assignment was executed on June 29, 2010.
On February 7, 2011 Help Internet Limited registered the domain name, . The Administrative Contact is a Mr. R. Sidlin of that company.
John Cooper continued to trade as “Coolskin Gloves” as a sole trader. There is a dispute between the parties as to whether or not this was with the permission of the Liquidator/the Complainant. However, Help Internet Limited was content for Mr. Cooper to continue using the Domain Name.
On February 11, 2011 the Complainant’s representatives wrote to R. Sidlin of Help Internet Limited objecting to the latter’s registration and use of the Domain Name, it being connected to a website offering for sale COOLSKIN 375 oven gloves. The website featured a copyright notice reading “© 2010 John Cooper t/a Coolskin Gloves. All rights reserved.” The letter alleged trade mark infringement and demanded cessation of use of the COOLSKIN mark and transfer of the Domain Name. The letter was copied to Mr. Cooper under cover of a letter alleging that he was jointly liable.
On receipt of that letter Mr. Sidlin offered to set up another glove company under a different name, which Mr. Cooper could continue to use for the purpose of retailing oven gloves of a similar specification to the Coolskin gloves that he had previously been selling.
On February 17, 2011 the Respondent was incorporated and the Domain Name was transferred to the Respondent. As indicated above the sole director and Secretary of the Respondent is Mrs. Tracy Pez. Mr. Sidlin of Help Internet Limited is the Administrative Contact.
On February 18, 2011 Mr. Sidlin responded to the Complainant’s representatives denying the allegations and claiming that the Complainant had authorized his continued use of the Domain Name pending resolution of the issue of the Domain Name. He referred to recent communications between the Complainant and Mr Cooper in which the Complainant had referred to Mr. Cooper as being “Coolskin”. He then states that the Domain Name has been sold to a skincare company and will not be used in any infringing manner.
It is not in dispute that the Domain Name then connected to a page at “www.” a website operated by Mr Sidlin and his new company, The Oven Glove Company. There is a dispute as to whether or not this was a mistake.
Help Internet Limited acknowledges that the transfer of the Domain Name to the Respondent was triggered by the Complainant’s representatives’ letters and made with a view to avoiding litigation. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its registered trade mark (absent the generic “.com” domain suffix).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In essence the Complainant contends that the incorporation of the Respondent and the transfer of the Domain Name to the Respondent on February 17, 2011 was not a genuine exercise, but a device to put the Domain Name beyond the Complainant’s reach.
The Complainant contends that the circumstances surrounding the transfer of the Domain Name and its subsequent use to connect to a glove retailing website associated with the previous owners of the Domain Name support its claim that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent (supported by both Mr. Cooper and Mr. Sidling of Help Internet Limited) denies the Complainant’s allegations. The Respondent (in the person of Mrs. Pez) says that her incorporation of her business is part of a genuine plan to trade in the skincare market under the “Coolskin” name. She knows little of the history associated with the Domain Name and confirms that she will never use it to infringe the Complainant’s trade mark rights. She states that the linking of the Domain Name to Help Internet Limited’s website was a mistake on Help Internet Limited’s part and nothing to do with her. By mistake they restored an old webpage. It has now been replaced by a holding page.
In summary, she contends that she registered the Domain Name in good faith and has bona fide plans to use it in a manner, which does not infringe any rights of the Complainant.
Allegations have been leveled against the Complainant as to certain material appearing on the Complainant’s website connected to its domain name, which are claimed to have been unlawfully copied from material created by Mr. Cooper. However, no details have been provided to the Panel and there is nothing before the Panel to suggest that these issues are in any way relevant to this dispute. The Panel ignores them. 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 Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
As can be seen from the Factual Background at section 4 above, the history of the Domain Name is not entirely straightforward. However, the key date upon which many of the issues in this dispute fall to be determined is February 17, 2011, the date upon which the Domain Name was acquired by the Respondent.
The prior history is only of relevance to the extent to which it assists the Panel in determining whether the Respondent acquired the Domain Name in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark and the generic “.com” domain suffix.
It is now well-established that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible to ignore the generic domain suffix. That being so, the Panel finds that the Domain Name is identical to the Complainant’s registered trade mark. C. Rights or Legitimate Interests
As to this head of the Policy, paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition “WIPO Overview, 2.0”) is of relevance.
“Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has demonstrated that there is a continuous link running through ownership of the Domain Name from its original owner, J. Cooper (and/or his company, Lanco Teksolv Limited) via Help Internet Limited to the Respondent. The link is not merely an ownership link. Help Internet Limited provided IT services to John Cooper and his company and R. Sidlin and Mrs. Pez of the Respondent are both closely associated with Help Internet Limited. Moreover, both Mr. Sidlin and Mrs. Pez (via Twitter) have supported Mr. Cooper’s continuing involvement in the oven glove business. Mr. Sidlin has given very significant support to Mr. Cooper who has had financial and medical difficulties and Mr. Sidlin and Mrs. Pez are friends as well as colleagues.
The evidence submitted by the Complainant demonstrates to the satisfaction of the Panel that when the Domain Name was transferred to the Respondent on the date of incorporation of the Respondent, Mrs. Pez of the Respondent will have known (a) that there was a dispute between Messrs Cooper and Sidlin on the one hand and the Complainant on the other concerning the Domain Name; (b) that if Mrs. Pez’s knowledge of that dispute was sketchy (as she claims), it would have been sufficiently detailed following Mr. Sidlin’s request that neither she nor the Respondent ever used it in relation to the products the subject of the Complainant’s trade mark registration (c) that when the Respondent acquired the Domain Name the Respondent (in the person of Mrs. Pez) would have known that Help Internet Limited’s purpose in divesting itself of the Domain Name was “to ensure that the domain is no longer in breach of any trade mark regulation” to quote from Mr. Sidlin’s letter of February 18, 2011 to the Complainant’s representatives.
Thus far, there is nothing in the story to indicate conclusively that the transfer of the Domain Name to the Respondent was, as the Complainant contends, a transfer in bad faith within the meaning of paragraph 4(a)(iii). After all, if the Respondent had been trading under the “Coolskin” name in good faith in skincare products for an extended period and/or was in possession of a trade mark registration of the name, the mere fact that Mrs. Pez happened also to be a friend and colleague of Mr. Sidlin, whose company was transferring the Domain Name to the Respondent, might well be of no significance. It might well be that in those circumstances the Respondent could demonstrate that its acquisition and proposed use of the Domain Name was unobjectionable.
However, in circumstances where Mrs. Pez, the prime mover behind the Respondent, has no obvious prior association with the skincare industry and the Domain Name is transferred on the very day that the Respondent is incorporated, suspicions as to the bona fides of the Respondent are bound to arise.
In the view of the Panel the Complainant has made out a prima facie case that the transfer was a sham and that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Respondent has a case to answer.
There have been no shortage of answers, but for the purpose of this head of the Policy the only answers of interest to the Panel are those of the Respondent/ Mrs. Pez seeking to demonstrate that as at February 17, 2011 Mrs. Pez and/or the Respondent genuinely proposed to trade in the skincare industry.
That this was a crucial issue to be determined was obvious to the Respondent from the nature of the allegations set out in the Complaint and the Supplemental Submission of the Complainant and underlined by the terms of the Panel’s Procedural Order No. 1.
Before addressing the answers, it is appropriate to refer to the terms of paragraph 4(c) of the Policy, which is addressed to Respondent and reads as follows:
“c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
That list of circumstances is non-exhaustive, but in this case the key is sub-paragraph (i). The Respondent also prays in aid sub-paragraph (ii). However, in the view of the Panel that sub-paragraph cannot sensibly apply in relation to a corporate name, which, as is the case here, was brought into existence on the very day that the Domain Name was acquired. An exception could be where the corporate entity was incorporated to take over the business of another entity using the same or a similar name as a business name, but that is not this case.
To make good the case under sub-paragraph (i) the Respondent must demonstrate that it (or Mrs. Pez) had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. This could have been done by Mrs. Pez in any number of different ways whether it be by way of correspondence with professional advisers, banks, marketing agencies, proposed suppliers, possible work colleagues, web designers etc. and material to demonstrate a background/interest in the relevant industry.
No attempt was made to produce any such material in response to the Complaint. In the Respondent’s Supplementary Submission responding to the Complainant’s Supplementary Submission Mrs. Pez states “I have for the purposes of the panel, email correspondence with potential suppliers of goods”, but she does not produce it.
The Panel issued a Procedural Order inviting Mrs. Pez to produce that email correspondence. In her response to that order she says that “Coolskin Laboratories is also the subject of my dissertation for my 2nd year Foundation Degree course at the University of Hertfordshire”. The Panel notes that her Twitter page includes a Tweet reading “nearly finished college assignment about benefits of twitter to businesses. Now just to convince the boss ..”, which would seem to indicate that her primary interest is in the IT area in which Help Internet Limited operates. Nonetheless, she produces the following email correspondence:
(i) an email from […]@ dated May 24, 2011 to SolarActive reading “Hi, I am looking to start a small UK online business aimed at parents selling goods to raise awareness of their children about the dangers of UV. I came across your site which has some excellent products on it. I would be very keen to discuss re-selling opportunities with you and the possibility of developing further products? I am UK based so believe you are 5-6 hours behind us in time, hence the email and not a phone call, but if you would be keen to discuss my plans please let me know. I look forward to hearing from you.”
(ii) an email from the same email address dated 6 June, 2011 to Good Life Innovations Ltd reading “Hi, Jeremy, further to recent conversations I note that I have not received the product samples you said you’d send? I am still keen to see your products so look forward to hearing from you.”
(iii) a reply email to that at (ii) above also dated June 6, 2011 reading “Hi, Tracy. You have not been forgotten. Your samples are in the system and should be with you shortly.”
Additionally, Mrs. Pez refers to some contacts that she was given by Help Internet Limited, but gives no details of any contact that she has had with them. She also refers to the fact that she has spoken to some suppliers on the telephone, but gives no details.
None of this goes anywhere near establishing what the Respondent’s and/or Mrs. Pez’s plans were at date of transfer of the Domain Name on February 17, 2011. No serious attempt has been made to answer the Complainant’s contentions.
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
The above analysis combined with the Factual Background set out in section 4 above, leads the Panel to conclude on the balance of probabilities that the transfer of the Domain Name to the Respondent was a sham and that the email correspondence supplied by Mrs. Pez in response to the Procedural Order was only created with a view to falsely indicating bona fide intentions in relation to the Domain Name.
In consequence the Panel concludes that it would be unsafe to rely upon anything said on behalf of the Respondent save to the extent supported by independent documentary evidence.
What were the Respondent’s true intentions? The Panel has no hard reliable information on the topic. Mr Sidling of Help Internet Limited, Mrs. Pez’s friend and colleague, says that he transferred the Domain Name “to ensure that the domain is no longer in breach of any trade mark regulation”. What was then going to be done with it?
The Panel does not believe Mrs. Pez’s explanation and is left with no alternative but to conclude that the Respondent’s intentions (whatever they may have been) were abusive otherwise there would have been no need to set up the sham.
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: June 12, 2011
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