The Complainant is Quilter Cheviot Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”), represented by Simmons & Simmons, U.K.
The Respondent is PJS of Anyangsi, Republic of Korea (“Korea”). 2. The Domain Name and Registrar
The disputed domain name is registered with Korea Server Hosting Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English and Korean with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 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.
On November 23, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same date, the Complainant sent an email requesting English to be the language of the proceedings. On November 28, 2012, the Respondent sent an email requesting Korean to be the language of the proceedings.
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 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 8, 2013.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 9, 2013. 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 Quilter Cheviot Holdings Limited of London, U.K. The Complainant is a leading investment firm and is a merger of Quilter & Co (“Quilter”) and Cheviot Asset Management Limited (“Cheviot”), which was incorporated on October 17, 2012. At the time of the merger, Quilter was a specialist in personalized investment management services with assets under management of approximately GBP 8.2 billion, and Cheviot was a wealth management firm with assets under management of approximately GBP 4.1 billion. The proposed merger of Quilter and Cheviot was leaked to the press on October 24, 2012. The merger was formally announced on November 13, 2012.
The Complainant has valuable goodwill as a consequence of the extensive use of the marks QUILTER and CHEVIOT, over many years in the financial services industry. The heritage of Quilter dates back to 1771 and Cheviot was founded in 2006. The Complainant is the registrant of various U.K. and Community trademark registrations for QUILTER (word and device mark), including but not limited to U.K. trademark 2256246 registered on June 8, 2001. Likewise, the Complainant is the registrant of U.K. trademark registrations for CHEVIOT (word and device marks), including but not limited to trademark 2460764 registered on April 11, 2008. The Complainant also applied to register QUILTER CHEVIOT as a Community trademark with the Office for Harmonization in the Internal Market (“OHIM”) on November 12, 2012 (prior to the official announcement of the merger on November 13, 2012).
The Respondent is PJS of Anyangsi, Korea. The Respondent is not affiliated with the Complainant whatsoever. The Respondent registered the disputed domain name on October 26, 2012 – two days after the proposed merger of Quilter and Cheviot was leaked to the press. The website at the disputed domain name consists of one “parked” page which invites visitors to search for available domain names. On November 13, 2012 – the day the merger of Quilter and Cheviot was announced - an individual purporting to represent a domain name brokerage firm in Korea sent the Complainant an unsolicited email, which was written in English, and offered to arrange for the transfer of the disputed domain name for a “minimized [sic] transaction fee.”
The Respondent did not submit a formal Response to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns rights in the QUILTER CHEVIOT mark and that the disputed domain name is identical to, and wholly incorporates, the Complainant’s marks, QUILTER, CHEVIOT, and QUILTER CHEVIOT.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that the Respondent is not affiliated with the Complainant whatsoever and there is no evidence that the Respondent has (a) used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (b) been commonly known by the disputed domain name; or (3) made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Complainant further alleges that there is no explicable legitimate reason as to why the Respondent chose to register the disputed domain name, and that the website associated with the disputed domain name is a “parked” page, which, along with the date of registration, makes it clear that the disputed domain name was registered purely for the purpose of exploiting the Complainant.
Finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith and with full knowledge of the QUILTER CHEVIOT mark. Thus, the Complainant submits that the Respondent’s awareness of the merger and an intention to profit from it was the motive behind the registration of the disputed domain name by the Respondent. According to the Complainant, “it is not possible to fathom how there could be any other motive behind the registration” given that the Respondent registered the disputed domain name just two days following leaked press reports of the merger between Quilter and Cheviot. Then, on November 13, 2012, the date of the merger announcement, the Complainant received unsolicited correspondence from an individual purporting to represent a domain name brokerage firm in Korea offering to arrange for the transfer of the disputed domain name for a fee. The Complainant alleges that this correspondence is indicative of the Respondent’s willingness to enter into negotiations to sell the disputed domain name, which is evidence of bad faith on the part of the Respondent.
For all these reasons, the Complainant requests that the disputed domain names be transferred. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that: (i) the disputed domain name is 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 interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceedings
The Panel has noted communications from the Complainant and the Respondent regarding the language of the proceedings.
According to the Rules the language of the registration agreement should be the language of the proceedings, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the Complaint into the language of the registration agreement, or submit a request for the proceedings to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceedings.
In this case, the Panel finds that English should be the language of the proceedings for the following reasons:
- The disputed domain name consists entirely of English terms. It contains the two words “quilter” and “cheviot”, both being English words and the Complainant’s trademarks. The disputed domain name does not contain any other characters.
- The Respondent or persons associated with the Respondent have knowledge of English sufficient to be able to understand the nature of these proceedings. This is evident from the unsolicited correspondence in English received by the Complainant from a person purportedly associated with the Respondent, which the Respondent has not disputed, offering to arrange for the transfer of the disputed domain name for a fee.
- The Respondent failed to file any Response to the Complaint, which was submitted in both English and Korean, and only disputed the language of the proceedings.
- The Complainant would incur considerable further expense and inconvenience in retaining the services of a translator to translate the language of the Decision.
The Panel finds that in the circumstances of this case this amounts to sufficient evidence of either the Respondent or persons associated with the Respondent having command of English necessary to be able to understand the nature of these proceedings. Further the Panel notes that the Complaint was translated into Korean, and the Respondent was given an option of submitting the Response in Korean or English. However, the Respondent has failed to file any Response in either language and the Panel may draw such inferences from this fact as it considers appropriate (paragraph 14(b) of the Rules). Consequently, the Panel finds that it is appropriate to issue the Decision in English. B. Identical or Confusingly Similar
In the present case, the Panel finds that the Complainant has established that the Complainant owns rights in the QUILTER CHEVIOT mark.
First, the Complainant owns registered trademarks for the QUILTER and CHEVIOT marks, individually, and there is also substantial goodwill attached to the QUILTER and CHEVIOT marks. The disputed domain name consists entirely of the Complainant’s registered trademarks.
Second, the Complainant applied to register QUILTER CHEVIOT as a Community trademark with the OHIM on November 12, 2012, just one day before the official merger was announced on November 13, 2012 (“CTM Application”). Although the CTM Application has not progressed to registration, the Panel finds that the Complainant was diligent in applying for trademark registration and should not be prejudiced by Respondent’s rush to register the name of the merged entity. See Shire Biochem Inc., Shire Pharmaceuticals Group plc and Shire International Licensing B.V. v. Syed Hussain,WIPO Case No. D2002-0453 (where the complainant is a new entity resulting from a merger, it is sufficient that the complainant was diligent in applying for trademark registration promptly after the merger); Bancolombia S.A. v. Elpidia Finance Corporation,WIPO Case No. D2000-0545 (delay in obtaining registration once an application has been made should not prejudice the complainant and “cannot represent an advantage for a registrant of a domain name identical to the service mark following its acquiring notice of the ongoing merger.”)
The Panel finds the disputed domain name to be identical or confusingly similar to the Complainant’s QUILTER CHEVIOT mark. The Panel thus finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights and legitimate interests.
First, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using or making demonstrable use of the disputed domain name for a bona fide offering of goods and services. According to the documents submitted by the Complainant the disputed domain name is associated with a “parked” website that consists of one “parked” page which invites visitors to search for available domain names. This, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case.
Second, as to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Third, the Panel notes that the Respondent registered the disputed domain name on October 26, 2012 – only two days after the merger of Quilter and Cheviot was leaked to the public. It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademarks as well as the goodwill associated with them.
Given the undisputed facts, the Panel agrees with the Complainant that “it is not possible to fathom how there could be any other motive behind the registration” provided that the Respondent registered the disputed domain name two days after the leaked press reports of the merger, and then, on November 13, 2012, the date of the merger announcement, an individual purporting to represent the Respondent sent the Complainant an unsolicited email offering to transfer the disputed domain name to the Complainant for a fee. The Panel deems this correspondence to be indicative of the Respondent’s willingness to enter into negotiations to sell the disputed domain name, which may constitute further evidence of bad faith on the part of the Respondent.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the use of the disputed domain name as a “parked” website together with the date of its registration makes it clear that the disputed domain name was registered for the purpose of exploiting the Complainant for financial gain. See Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462. Accordingly, the Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of 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 the 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 website 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 website or location or of a product or service on your website or location.”
As already mentioned, the Respondent did not file any Response to the Complaint other than its objection to the language of the proceedings in English, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
lt is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith in contravention of paragraph 4(b)(i) (see adidas-Saloman AG v. Vincent Stipo,WIPO Case No. D2001-0372). Here, the undisputed evidence submitted by the Complainant clearly suggests that the Respondent acquired the disputed domain name in bad faith primarily for the purposes of selling the disputed domain name to the Complainant upon completion of the merger.
The Complainant has asserted with supporting evidence that the disputed domain name was registered two days after press releases were leaked to the global public about the proposed merger of Quilter and Cheviot. In Syed Hussain, supra, it was determined that evidence of the acquisition of a domain name primarily for the purpose of selling it may be found in the fact that the domain name was registered on the same day as the announcement of the merger. Thus, the Panel finds that the Respondent’s registration of the disputed domain name just two days following leaked press reports of the merger is an opportunistic act by the Respondent with a view to making a profit. See also, Pharmacia & Upjohn AB v. M Inc.,WIPO Case No. D2000-0446 (found that an opportunistic combination of two well-known trademarks made shortly after the announcement of a merger by someone having no connection with either side of the merging companies amounts to registration and use in bad faith).
Moreover, it is undisputed that the Respondent is completely unconnected with the Complainant and the Complainant has never consented to the registration or use of the disputed domain name by the Respondent. There is no evidence whatsoever that the Respondent has been known by or conducted business under any of the names Quilter Cheviot, Quilter, and Cheviot.
The Respondent does not appear to conduct any legitimate business activity using the disputed domain name. The Respondent most likely knew the Complainant’s trademarks and intended to profit from the merger. This is evidenced by the undisputed fact that the Complainant received unsolicited correspondence on the day the merger was officially announced from an individual purporting to represent a domain name brokerage firm in Korea offering to arrange for the transfer of the disputed domain name for a fee. The Panel finds this correspondence as indicative of the Respondent’s willingness to enter into negotiations to sell the disputed domain name for an amount in excess of the registration cost, which is evidence of bad faith on the part of the Respondent under the paragraph 4(b)(i) of the Policy.
Bad faith can be inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto. The Panel finds it highly doubtful that the Respondent would have registered the disputed domain name without having knowledge of the Complainant. The Panel reasonably finds that since the QUILTER and CHEVIOT marks are widely known, especially in the relevant community, it is very unlikely that the Respondent, at the time of registration or purchase of the disputed domain name, was not aware that it was infringing the Complainant’s QUILTER and CHEVIOT marks, much less the QUILTER CHEVIOT mark of the merged company.
For the above reasons, the Panel finds that the Complainant has shown that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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 J. Park
Sole Panelist
Date: January 23, 2013
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