The Complainant is Blandy & Blandy LLP of Berkshire, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Philip D’Arcy, U.K.
The Respondent is Mr. Daniel Beach of Egham, U.K. 2. The Domain Name and Registrar
The disputed domain name is registered with Webfusion Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2012. On May 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 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.
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 May 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2012.
The Center appointed Isabel Davies as the sole panelist in this matter on June 12, 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. 4. Factual Background
The Complainant is a law firm based in Reading, U.K. and trades under the names “Blandy and Blandy” and “Blandy & Blandy.”
The Complainant contends that it, “owns a trade mark” in BLANDY AND BLANDY and BLANDY & BLANDY, which it uses in connection with the provision of legal services. The Complainant states, however, that its trade mark is not registered.
The disputed domain name was registered on March 9, 2012.
The Complainant contends that the Respondent is a former client of the Complainant and that it is operating a website via the disputed domain name which serves to criticize the Respondent’s dealings with the Complainant, in respect of the instructions, first given by the Respondent to the Complainant in January 2008, to represent the Respondent in relation to planning enforcement action which was being taken against the Respondent by the local planning authority.
The Complainant further contends that the website is being operated with the purpose of misleadingly diverting clients, both actual and potential, away from the Complainant’s true website in order to cause damage to the Complainant partnership and its members generally and more specifically, to damage the reputation of the Complainant partnership and its members. 5. Parties’ Contentions A. Complainant
The Disputed Domain Name is Identical or Confusingly Similar to a Trade Mark or Service Mark in which the Complainant has Rights
The Complainant contends that the disputed domain name is identical to the names under which the Complainant trades, namely “Blandy and Blandy” and “Blandy & Blandy” and that the Complainant, “owns a trade mark in those words.” The Complainant further contends that it uses its trade mark in the provision of legal services and that it intends to continue to use the mark for this purpose in the future. The Complainant states that its trade mark is not registered.
The Respondent has No Rights or Legitimate Interests in the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant contends that the disputed domain name does not correspond with the name of the Respondent in its capacity as an individual, nor is it being used in connection with the offering of bona fide goods or services through a trade or business operated by the Respondent.
The Complainant further contends that although the Respondent does not appear to be using the disputed domain name for commercial gain, it is using it to tarnish the trade mark at issue, thereby damaging the Complainant and its reputation.
Registered and Used in Bad Faith
The Complainant contends that by registering and using the disputed domain name, the Respondent is attempting to misleadingly divert actual and potential clients away from the Complainant’s true website and toward the disputed domain name.
The Complainant contends that its business is at risk of being disrupted by the registration and use of the disputed domain name because actual and potential clients wanting to visit the Complainant’s true website are being diverted to the website that is being operated at the disputed domain name.
The Complainant contends that the website operated at the disputed domain name is intended to damage the professional reputation of the Complainant, for example by the use of the title, “Blandy and Blandy- Solicitors from Hell? You Decide.” The Complainant further contends that individual members of the Complainant partnership are being brought into disrepute by the Respondent’s website.
The Complainant has produced evidence in the form of the results of a Google search for the words “Blandy and Blandy.” The results show that the Respondent’s website appears second in the list. The Complainant contends that the majority of its actual and potential clients access its website by means of a Google search, as opposed to typing the Complainant’s true website’s web address into their computer and that the Respondent’s attempts to misleadingly divert actual and potential clients have therefore been successful.
The Complainant further contends that the website operated at the disputed domain name is similar in nature to a website previously operated by a third party through the domain name and which, as a result of legal proceedings, was removed by means of an injunction. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are 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.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the respondent’s failure to file a response.
In the absence of a response, the panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the disputed domain name. A. Identical or Confusingly Similar
The Complainant has made it clear that it does not own any registered trade marks in relation to BLANDY AND BLANDY or BLANDY & BLANDY, although it contends that it trades under these names and that it, “owns a trade mark in those words.”
The Panel agrees that the disputed domain name is identical to “Blandy and Blandy,” a name under which the Complainant contends that it trades. The presence of the gTLD “.com” serves purely to identify the text in question as a domain name and does not change the likelihood of confusion between a domain name and a trade mark.
Furthermore, the Panel recognizes that paragraph 4(a)(i) of the Policy does not confine its scope to a registered trade mark or service mark and that it is safe to regard the Policy as applying to unregistered trade marks and service marks in the context of abusive registration of domain names (See The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050).
The Panel notes however, that in order to rely on unregistered rights in a trade mark, a Complainant must go significantly further to establish the first element of paragraph 4(a) than it would if it owned a registered trade mark, by providing evidence of such rights in the Complaint.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) focuses on the issue of what exactly a Complainant needs to show to satisfy the requirements for protection as an unregistered mark. It states that, “the complainant must show that the name has become a distinctive identifier [in the minds of consumers] associated with the complainant or its goods or services.” Furthermore, “a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required” and unless the existence of unregistered rights is objectively clear, “panels will be unlikely to take bald claims of trade mark fame for granted.”
In Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036, the principal issue turned on the complainant’s demonstration of the existence of unregistered trade mark rights. In this case, the panel judged that the absence of text or exhibits to support the complainant’s claim to rights in respect of the trade mark in question constituted a lack of effort on the part of the complainant to substantiate its bare assertion of trade mark ownership. The panel found that in these circumstances, the complainant had failed to prove that the domain name was identical or confusingly similar to a trade mark or service mark in which the complainant has rights and that for this reason, the complaint had to fail.
Similarly, in TerraCycle, Inc. v. Natasha Nowakowski,WIPO Case No. D2011-1569, the panel observed that the complaint did not contain any documentary exhibits in respect of any unregistered rights held by the Complainant relating to the trade mark in question. The Panel consequently found that the Complainant had “failed to prove a crucial element of its case” and the complaint was denied.
This Panel therefore finds that common law trade mark and service mark rights can only exist when a party presents evidence to prove that there is sufficient goodwill and reputation in a name and enough of an association of the name with the party in question, regardless of the strength of those unregistered rights.
(See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322).
In the Panel’s view, the evidence provided by the Complainant in respect of the first element of paragraph 4(a) of the Policy is extremely weak. The Complainant states that it is seeking to rely on unregistered rights in the trade marks BLANDY AND BLANDY and BLANDY & BLANDY but does not provide the requisite detail to evidence that either mark has become a distinctive identifier associated with its business.
The Complainant has not presented any evidence to prove that it has rights in an unregistered mark, such as details relating to the length of time for which the mark has been used, information relating to its advertising material and revenue figures or examples of media recognition.
The Panel notes that successful complaints have been brought before the Panel in the past in relation to a Complainant’s reliance on unregistered trade mark rights where the complainant in question has provided sufficient evidence of such rights. This evidence has comprised details of longstanding use, public recognition, details as to the size of the business trading under the mark in question and the amount of money used to publicize its services under the unregistered mark. (See Skattedirecktoratet v. Eivind Nag,WIPO Case No. D2000-1314; Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786; and Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082).
Other UDRP decisions have dealt with the situation where a complainant has failed to submit sufficient evidence to establish one of the elements of paragraph 4(a) of the Policy. In Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama LLC, WIPO Case No. D2011-1451, the panel considered the prospect of issuing a Panel Order to request further evidence to enable element 4(a)(iii) of the Policy (bad faith use and registration) to be established. In that instance, the panel determined that giving the complainant a second chance to submit evidence “would not be in line with the spirit of expediency and efficiency suggested in the Policy.” In the present case, the Panel takes note of the Complainant’s status as a firm of solicitors and opines that in light of such status, it is important that the Complainant presents its Complaint so as to properly address each of the elements contained in paragraph 4(a) of the Policy.
While the Panel does not exclude the possibility that the Complainant has rights in the unregistered marks BLANDY AND BLANDY and BLANDY & BLANDY, the Complainant has failed to discharge its burden of proof by demonstrating the existence of such rights. As the onus is on the Complainant to prove each element specified in paragraph 4(a) of the Policy, its failure to submit evidence of rights in an unregistered mark means that the Panel cannot allow the Complaint in these proceedings. (See Robotex Inc. v. eD,WIPO Case No. D2007-1074). B. Rights or Legitimate Interests
In light of the Panel’s finding under A above, it is unnecessary for the Panel to address this issue. C. Registered and Used in Bad Faith
In light of the Panel’s finding under A above, it is unnecessary for the Panel to address this issue. 7. Decision
For the foregoing reasons, the Complaint is denied.
Isabel Davies
Sole Panelist
Dated: June 20, 2012
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