The Complainants are CAM London Limited (“the First Complainant”) of London, United Kingdom of Great Britain and Northern Ireland (“UK”); Comgest Asset Management International Limited (“the Second Complainant”) of Dublin, Ireland, represented by Macfarlanes LLP, UK.
The Respondent is Cam LondonLtd of London, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2013, 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 December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 21, 2014. 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 First Complainant was incorporated in the UK on February 21, 1984 as “Cam London Limited”. The Complainants note that since incorporation the First Complainant has at all times traded throughout the UK and elsewhere as a music publisher and record label. The First Complainant claims to have established significant goodwill and reputation in the UK and elsewhere in the unregistered mark CAM LONDON in relation to the advertising, production and publication of music.
The Second Complainant appears to be a company engaged in the provision of financial services. The Complaint notes that the Second Complainant uses the unregistered trademark COMGEST in connection with its business.
The disputed domain name was created on April 10, 2013. Nothing is known of the Respondent other than that it has provided a London address and telephone number on the WhoIs record for the disputed domain name. The Complainants note that although the disputed domain name has purportedly been registered by the First Complainant, the First Complainant did not register it and believes that it has been registered by a person or entity as an instrument of fraud.
The Complainants state that the content of the website associated with the disputed domain name contains multiple references to the Second Complainant and frequently uses the Second Complainant’s COMGEST unregistered trademark. The Complainants believe that the disputed domain name is being used for the purposes of a fraudulent scheme targeting the Second Complainant’s business and that the disputed domain name was chosen as an acronym for the Second Complainant’s business name. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to trademarks in which the Complainants own 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 Complainants contend that the First Complainant has a right to object to the use of its unregistered mark as part of the disputed domain name. The Complainants submit that the content of the website associated with the disputed domain name demonstrates that the Respondent is passing off its services as those of the Second Complainant.
The Complainants note that since the date of the First Complainant’s incorporation it has at all times traded throughout the UK and elsewhere as a music publisher and record label and that consequently it has established significant goodwill and reputation in the UK and elsewhere in the mark CAM LONDON as an unregistered trademark in relation to the advertising, production and publication of music.
The Complainants submit that the Respondent is passing off its services as being those of the First Complainant or being in some way associated therewith and assert that the First Complainant is entitled to prevent the Respondent from passing off its services as being the services of the First Complainant. The Complainants contend that due to the content of the website associated with the disputed domain name the Respondent is passing off its services as those of the Second Complainant.
The Complainants note that the Second Complainant believes that the Respondent seeks to imply that it is authorized by the UK Financial Conduct Authority with a view to defrauding members of the public and diverting business away from the Second Complainant. The Complainants state that the Second Complainant is entitled to prevent the Respondent from passing off the Second Complainant’s services in the manner contended.
The Complainants state that there is no evidence that the Respondent has been commonly known by the disputed domain name. The Complainants contend that the Respondent is not the First Complainant and therefore has no legitimate interest in registering the disputed domain name in the First Complainant’s name or using the First Complainant’s mark therein. The Complainants contend that there is no evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services and that there is “no legitimate reason for the Respondent to have chosen [the disputed domain name] other than in order to mislead the public.” The Complainants suggest that the Respondent may have chosen the disputed domain name as an acronym for the Second Complainant’s company name to suggest an association with the Second Complainant. The Complainants add that the Respondent’s use of the disputed domain name is causing considerable damage to both of their respective interests and is not a legitimate noncommercial or fair use.
The Complainants submit that the disputed domain name has been registered and is being used in bad faith in order to disrupt the Complainants’ businesses and that by using the disputed domain name the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered thereon. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. Preliminary issue: Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with this subject inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
In the present case, the Complainants have not expressly requested consolidation of their respective complaints, however they have clearly indicated in the Complaint that they believe they have a common grievance against the Respondent in that they have been the target of common conduct by the Respondent which has affected their individual legal interests.
The Panel accepts that, based upon the assertions in the Complaint, the Complainants have a common grievance against the Respondent. In effect, the Complainants submit that the disputed domain name encapsulates and targets both of the Complainants’ respective corporate identities. The Panel notes that the Respondent has not filed a Response to the Complaint and therefore has not objected to consolidation of the Complainants’ respective complaints. The Panel can see no prejudice arising to the Respondent from any such consolidation, nor has the Respondent taken the opportunity which has been afforded to it to assert that any such prejudice would arise. Accordingly, the Panel has reached the view that it would be procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. B. Identical or Confusingly Similar
The Panel immediately encounters an issue with the Complainants’ case at the first hurdle. Both Complainants have asserted that they have common law unregistered trademark rights in their respective names but virtually no evidence has been produced to support what amount to the barest of assertions. In the case of the First Complainant, the assertion made is that it has “established significant goodwill and reputation in the UK and elsewhere in the mark CAM LONDON as an unregistered trade mark in relation to the advertising, production and publication of music”. The only evidence provided in support of this is the First Complainant’s certificate of incorporation dating from 1984. This is of no assistance to the Panel. To take an extreme example, a company that had remained dormant or had barely traded since 1984 would be able to produce its certificate of incorporation. It tells the Panel nothing regarding how the claimed unregistered trademark has been established. With regard to the Second Complainant, the assertion made is simply that COMGEST is its unregistered trademark. No supporting evidence whatsoever is provided and, in any event, the Panel does not understand the Complainants to be claiming that the disputed domain name is identical or confusingly similar to the COMGEST mark.
What type of evidence of the existence of unregistered trademarks do panels typically accept in cases under the Policy? The answer is to be found in paragraph 1.7 of the WIPO Overview 2.0 entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”, which provides the following consensus view:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Panel is faced with a situation which is anticipated by the above passage. There is an assertion of relevant use of the First Complainant’s claimed mark in relation to “the advertising, production and publication of music” but no supporting evidence of such use whatsoever. The Panel is only presented with the First Complainant’s certificate of incorporation. With regard to the Second Complainant’s claimed unregistered mark, there is not even an assertion of relevant use. The reference to the mark’s existence is merely mentioned in passing.
While the test in paragraph 4(a)(i) of the Policy is “a relatively low threshold test for a complainant” (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743), the Panel considers that the Complainants in the present case have not reached that threshold and thus that the Panel cannot see its way to accepting their unsupported allegations as sufficient to prove the existence of unregistered trademark rights on the balance of probabilities. This accords with decisions of prior UDRP panels in analogous circumstances (see for example Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036 and Blandy & Blandy LLP v. Mr. Daniel Beach,WIPO Case No. D2012-0972).
The Panel therefore finds that the Complainants have failed to establish the first element under the Policy. The effect of this finding is that the Complaint must fail. This is extremely regrettable in light of the circumstances described in the Complaint and the serious allegations made therein. The Panel is conscious of the fact that it could have called for detailed evidence to support the Complainants’ assertion of rights in unregistered trademarks. However, as the panel noted in Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama LLC,WIPO Case No. D2011-1451, which was referred to with approval by the panel in Blandy & Blandy LLP v. Mr. Daniel Beach, supra, to give the Complainant “a second bite at the apple” would not be in line with the spirit of expediency and efficiency suggested in the Policy. Likewise, as the present Panel observed recently in the case of 5 PRE VIE W AB v. Diego Manfreda,WIPO Case No. D2013-1946, with reference to Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703, complainants should “get it right” the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone. C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the preceding head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
As noted above, in light of the Panel’s finding in terms of paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of registration and use in bad faith in the present case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: February 4, 2014
Full & Egal Universal Law Academy