The Complainant is Lambert Smith Hampton Group Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wedlake Bell, UK.
The Respondent is Aspen of Marlborough, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2012. On April 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2012, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 30, 2012.
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 Respondent of the Complaint, and the proceedings commenced on May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2012.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 4, 2012. 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.
The Panel notes that the address listed for the Respondent in the WhoIs is given as “Malborough”. The Panel is satisfied that this is a typographical error for “Marlborough” on the basis that this town is associated with the UK postcode in the given address and indeed that the town of Marlborough has been correctly specified in the address for the technical contact of the disputed domain name. The Panel has accordingly corrected the Respondent’s address above. Notwithstanding this correction, the Panel is content that the Complaint has been properly notified to the Respondent by the Center in terms of paragraph 2 of the Rules. The Complaint was sent by courier both to the registrant address and to the technical contact address in the WhoIs. 4. Factual Background
The Complainant is the main trading company in the Lambert Smith Hampton Group of English and Northern Ireland companies and is a leading national commercial property consultancy. The Complainant was formed as a result of the amalgamation of ten leading regional surveying partnerships in the 1980's which were located in the main commercial centres of the UK. Having seen substantial growth over the last 15 years, the Complainant is now one of the largest commercial property consultancies in the UK. The Complainant now has 27 offices which are located in the major towns and cities of the UK and Ireland and over 850 members of staff. The Complainant's total revenue for the year ending March 31, 2011 was GBP 59,453,000 and its profit after tax for the same financial year stood at GBP4,360,000.
The Complainant is the owner of, inter alia, the following registered trademarks for the word mark LAMBERT SMITH HAMPTON: (1) UK registered trademark no. 1502756 registered on July 12, 1996; and (2) European Community registered trademark no. 3557246 registered on June 29, 2005, each for services in classes 35, 36 and 42.
The Complainant and Respondent appear to have had a previous commercial relationship of some degree. The Complainant states that about eight years ago, that is, in approximately 2004, it requested the Respondent to perform certain web hosting services before ultimately moving on to a different web hosting provider. The Complainant also states that at some point in the past the Complainant instructed the Respondent to register the disputed domain name on the Complainant’s behalf. According to the publicly available WhoIs information, the disputed domain name was created on December 22, 1997.
As at the date of this Decision, the website associated with the disputed domain name displays pay-per-click or sponsored advertising hyperlinks relating to estate agency, commercial property and self-storage. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits it has developed a significant reputation as one of the pre-eminent real estate consultancies in the UK under and by reference to the name Lambert Smith Hampton. The Complainant notes that it has won various industry awards in recent years. The Complainant asserts that it is very well known in the UK within the property industry, within all financial and professional sectors and in the private and public sector. The Complainant states that members of the public are well aware of the Complainant and its exclusive use of the name Lambert Smith Hampton in the course of trade.
The Complainant notes that if the generic top level domain “.com” suffix is removed from the disputed domain name it is identical to the trademark and the trading name of the Complainant. The Complainant submits that members of the public who see the disputed domain name on the Internet, or enter the Complainant's trading name into an Internet search engine and whose search reveals the disputed domain name, are bound to believe that the disputed domain name is an official domain name of the Complainant.
The Complainant submits that as its LAMBERT SMITH HAMPTON trademarks have been registered in the UK for almost twenty years, the Respondent must have been aware of the Complainant's rights therein at the time of registering the disputed domain name. The Complainant states that the Respondent was asked to register the disputed domain name on the Complainant's behalf, but is not licensed or authorised by the Complainant to use the Complainant's trademarks in connection with any business. The Complainant asserts that the Respondent has never used or made demonstrable preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant also submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant states that the continuing use and renewal of the disputed domain name in the face of the Complainant's opposition clearly constitutes bad faith. The Complainant states that it has repeatedly contacted the Respondent to request that the disputed domain name be transferred to the Complainant, but the Respondent has declined to respond. The Complainant asserts that by refusing to transfer the disputed domain name the Respondent is depriving the Complainant, as the legitimate holder of brand and trademark interests, of rights therein. The Complainant also submits that by preventing the Complainant from registering the disputed domain name, the Complainant has been unable to direct further trade to its business and therefore the Respondent has interfered with the Complainant's business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated to the Panel's satisfaction that it is the owner of two registered trademarks in the word mark LAMBERT SMITH HAMPTON. The only difference between this mark and the disputed domain name is that the mark contains white space separating the three word components and the disputed domain name contains the generic top level domain “.com”. Neither of these differences are of any significance from the point of view of a comparison of the disputed domain name and the Complainant's trademark: the top level domain is typically disregarded in cases under the Policy as being wholly generic and required for technical reasons only, while white space is not permitted in a domain name, again for technical reasons.
In all of these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that accordingly the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“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 non-commercial 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.”
The consensus of previous decisions under the Policy is that: a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not licensed or authorized by the Complainant to use the Complainant's trademarks in connection with any business, that the Respondent has never used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
Where a complainant successfully makes a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. In the present case, the Respondent has not responded and thus has provided no such evidence. Furthermore, the Panel finds that it has been established that the Respondent is using the disputed domain name for the publication of pay-per-click or sponsored advertising hyperlinks on its associated website. The hyperlinks concerned refer to the area of business in which the Complainant is engaged. Such use effectively trades off the Complainant’s trademark and as such does not constitute a bona fide offering of goods or services, nor could such activity be said to confer any rights or legitimate interests upon the Respondent. In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is worth noting initially that the requirements of the Policy that a complainant prove registration and use in bad faith are conjunctive. Accordingly, if a complainant is able to prove registration in bad faith but not use in bad faith, or vice versa, the complaint must fail. This is important in the present case because while the Respondent's use of the disputed domain name has all the appearances of a typical case of cybersquatting, the Complainant says that the disputed domain name was itself registered with the Complainant's permission. Can a domain name registration which is made in these circumstances be described as a registration in bad faith in terms of the Policy? While each such case is likely to depend on its own facts and circumstances, the Panel considers that the mere fact that permission was given by a complainant does not automatically preclude a finding of registration in bad faith. In order to determine this question it is necessary to scrutinise the nature and extent of the permission given.
In the present case, while the Complainant may indeed have asked the Respondent to register the disputed domain name on its behalf there is no evidence whatsoever that the Complainant requested the Respondent to take the disputed domain name in the Respondent’s own name. As the Complaint puts it, the Complainant conferred no licence upon the Respondent to use its trademark for such purpose. The Panel considers it to be more probable than not that the permission given to the Respondent was based upon the Complainant's entirely reasonable expectation that the Respondent would register the disputed domain name in the name of the Complainant and in due course would hand control of the relative domain name account to the Complainant. Such actions, had they been taken by the Respondent, would have been entirely consistent with registration in good faith.
While the Panel would have preferred greater detail from the Complainant as to the circumstances in which the disputed domain name was registered, and in particular an explanation as to the inconsistency between the Complainant becoming involved with the Respondent in 2004 while the disputed domain name was evidently registered in 1997, such information as there is before the Panel is, on balance, sufficient to show that the Respondent placed the disputed domain name into its own name without having any permission to do so, whether express or implied, and subsequently failed to hand over control of the disputed domain name despite repeated requests. This in the Panel's view points in the direction of registration in bad faith in the absence of a suitable explanation from the Respondent. As the Respondent has not responded to the Complaint, it has failed to take up the opportunity to address the Complainant's version of events and more importantly to explain its conduct at the point of registration of the disputed domain name. Accordingly, in the absence of a suitable alternative explanation, the Panel finds that the Respondent registered the disputed domain name in bad faith.
In terms of the present use of the disputed domain name, the Panel is satisfied that the Respondent's configuration of the website associated with the disputed domain name to display sponsored advertising hyperlinks which target the business of the Complainant amounts to the Respondent having intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website in terms of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the disputed domain name was also used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: June 15, 2012
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