Complainant is Amec of Darlington, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by SafeNames Ltd., UK.
Respondent is Greg Malpass of Wolverhampton, UK. 2. The Domain Name and Registrar
The disputed domain name and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2014. On March 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Upon Respondent's email communications of March 27-29, 2014, Complainant filed an amended Complaint on March 31, 2014.
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 Respondent of the Complaint, and the proceedings commenced on April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. The Response was filed with the Center on April 21, 2014.
The Center appointed David Perkins as the sole panelist in this matter on May 1, 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 4.A. Complainant
4.A.1 Complainant is an international engineering and project management company. It is a FTSE 100 company based in the United Kingdom. It employs over 29,000 people in around 40 countries worldwide. It was incorporated in 1982, but its constituent parts stem from businesses started as early as the mid 19th century. It has annual revenues of some GBP 4 billion and it is managed in three business units, the Americas, Europe and Growth Regions.
4.A.2 Complainant is the proprietor of the following registered trademarks.
Country
Registration Number
Trademark.
Class(es) of Goods /Services
Dates Filed And Registered
United Kingdom
2,257,367
AMEC
35.
Filed: January 8, 2001
Registered: May 14, 2004
United Kingdom
2,257,364
AMEC & device
35
As above
European Community
2,614,303
AMEC & device
35-38, 41&42
Filed: March 12, 2002
Registered: February 14, 2006
European Community
002617793
AMEC
35-38, 41 & 42
Filed: March 12, 2002
Registered May 7, 2007
United States of America
3,211,994
AMEC
35-37,41 & 42
Filed: July 3, 2001
Registered: February 27, 2007
United States of America
3,016,583
AMEC & device
as above
Filed: July 3, 2001
Registered: November 22, 2005
United States of America
3,211,993.
AMEC & device
as above
Filed: July 3, 2001
Registered: February 27, 2007
4.A.3 Complainant is also the registrant of the domain name , which was registered on November 13, 1995.
4.A.4 On January 13, 2014 Complainant's proposed acquisition of Foster Wheeler LLC (Foster Wheeler) was widely reported following rumours of such a possibility dating from November 2013.
4.A.5 Foster Wheeler is the proprietor of the following registered trademarks.
Country
Registration Number
Trademark.
Class(es) of Goods /Services
Dates Filed And Registered
United Kingdom
929,794
FOSTER WHEELER
7
Filed: August 21, 1968
Registered: August 21, 1968
Same
929,795
Same
9
Same
Same
929,796
Same
11
Same
United States of America
4,138,082
FOSTER WHEELER FW & device
37 & 42
Filed: July 29, 2011 Registered: May 8, 2012
Same
4,281,902
Same
37
Filed: April 12, 2012
Registered: January 29, 2013
Same
4,288,174
Same
40
Filed: April 12, 2012
Registered: February 12, 2013
Same
4,291,344
Same
35
Filed: April 12, 2012
Registered: February19, 2013
Same
4,367,920
Same
42
Filed: November 20, 2012
Registered: July 16, 2013
International Registration*
1,111,746
Same
37 & 42
Registered: January 23, 2012
*The IR designated Switzerland, China, the European Community, Singapore and Turkey.
4.A.6 Foster Wheeler is also the registrant of the domain name which was registered on April 20, 1995.
4.A.7 Exhibited to the Complaint is a letter dated March 21, 2014 from Scott Lamb, Vice President of Foster Wheeler's Investor Relations and Corporate Communications, to Complainant's representative, which reads:
"In connection with the contemplated combination of AMEC plc and Foster Wheeler AG pursuant to a definitive agreement between AMEC plc and Foster Wheeler AG dated 13 February 2014, I hereby attest that Foster Wheeler AG supports the application of AMEC plc seeking to register internet domain names that include various combinations of "AMEC" and "Foster Wheeler"." 4.B. Respondent
4.B.1 Respondent is a Mergers & Acquisitions (M&A) consultant with some 35 years' experience of undertaking consultancy work for corporate clients. That work involves making Company Introductions, Investment Appraisals, Merged Brands and Domain Management and Associated Investments. Previous offices held include Group International Business Development Director of Costain plc (2006-2009); Divisional Manager International for the Keir Group (2010-2012); and Strategy & Business Development Consultant to Pell Fischmann Group Limited (2012-2013). That work has included reserving domain names for proposed joint ventures, an example given in the Response being such a proposed venture between SNC Lavalin and Carillion, in relation to which Respondent procured registration of the domain names and (Annex 1.2 to the Response).
4.B.2 Respondent registered the disputed domain names, and , respectively on January 22 and 23, 2014. 4.C. Correspondence between the Parties
4.C.1 Exhibited to the Complaint and to the Response is correspondence between the Parties and between Respondent and Complainant's representative spanning the period February18, 2014 (the date of Complainant's Cease & Desist letter) and March 26, 2014. An email dated February 22, 2014, from Respondent to Complainant's representative stated (in material part)
"As registrant, the above domain has not been offered for sale or gain; but I do have an obligation to transfer to my client, under terms to be agreed, if so instructed, as I have outstanding fees and he has sunk cost in this regard. As it stands the intention is to keep the Domain parked. Nobody seems to gain except AMEC from a transfer, and my client and I stand to lose from an uncontested dispute. Therefore I invite you to make a "without prejudice" financial offer, in strict confidence, for compensation of considerable consequential loss, for an agreed/uncontested transfer of the domain to your client."
4.C.2 In an email dated March 11, 2014, Respondent wrote
"My client has today said he will remove his interest from this Domain. I have agreed not to charge him fees in connection with this, but he will have no claim against me. So I am the Registrant and Owner going forward."
4.C.3 In an email dated March 13, 2014, Respondent wrote
"I'm waiting for written confirmation from my Chinese Clients as to final terms of his withdrawal, which he views as his loss, and consequential loss if his identity is disclosed and he is associated with implied acceptance of any trademark infringement. I seek to maintain his integrity as my Client and my M&A work in progress for him unrelated to this Domain Name. I need to consider fees/losses/warranties/indemnities required.
Is your client willing to make a sensible financial offer which covers my fees/risks in return for "unconditional transfer of the domain to yourselves" and agreement not to pursue any "accusation of trademark infringement associated with the transfer". Otherwise I will consider fighting any infringement accusation/action myself as Registrant and cover my client's integrity, and my relationship with him in so doing."
4.C.4 Finally, in an email dated March 15, 2014, Respondent wrote
"As I said I seek to maintain my client relationship, and as my arrangement with him on all matters is fee based, I am prepared to waiver any consequential losses in that respect.
In terms of payment of my "time costs" associated with a week's work in filing, correspondence, liaison with client, legal research/advice - I am prepared to agree to transfer of the domain to yourselves for payment of my costs of £2,500.00, which I can invoice to yourselves, payable on transfer." 5. Parties' Contentions 5.A. Complainant
5.A.1 Identical or Confusingly Similar
5.A.1.1 Complainant asserts that it has rights in the AMEC registered trademarks set out in paragraph 4.A.2 above.
5.A.1.2 Complainant asserts that Foster Wheeler has rights in the FOSTER WHEELER registered trademarks set out in paragraph 4.A.5 above. Complainant also asserts - citing the letter reproduced in paragraph 4.A.7 above - that Foster Wheeler has consented to this administrative action being brought to retrieve the disputed domain names and for them to be transferred to Complainant.
5.A.1.3 Complainant says that the marks AMEC and FOSTER WHEELER are both unmistakably recognisable within the disputed domain name . As to the other disputed domain name , Complainant says that the letters "fwc" would logically be assumed to be an abbreviation for Foster Wheeler, particularly in the context of the domain name referred to in paragraph 4.A.6 above.
5.A.1.4 Further, as the disputed domain names include the entirety of the AMEC trademark, Complainant - citing paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") - asserts that they are confusingly similar to that trademark.
5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant's case is that Respondent is unable to fulfil any of the defences set out in paragraph 4(c) of the Policy. Additionally, Complainant says that neither it nor Foster Wheeler have authorised Respondent to use the AMEC or FOSTER WHEELER trademarks.
5.A.2.2 As to paragraph 4(c)(i) of the Policy, Complainant refers to its correspondence with Respondent - reproduced in paragraphs 4.C.1 to 4 above - and to the fact that neither of the disputed domain names are being used. They resolve to the Registrar's parking pages.
5.A.2.3 As to paragraph 4(c)(ii) of the Policy, Complainant says that it has been unable to find any evidence to suggest that Respondent is known by either of the disputed domain names.
5.A.2.4 As to paragraph 4(c)(iii) of the Policy, Complainant says that Respondent is making neither a legitimate noncommercial nor fair use of the disputed domain names. Complainant asserts that Respondent has admitted that he was well aware prior to registration of those domains of the respective rights of Complainant and Foster Wheeler in their respective trademarks and intended to transfer them to his client for an undisclosed sum. Hence, a commercial use. Further, for the reason explained in paragraph 5.A.1.3 above, any such use of the disputed domain names would not amount to fair use.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Complainant's case is that Respondent's conduct in registering the disputed domain names falls within paragraph 4(b)(i) of the Policy and is, more generally, indicative of bad faith.
5.A.3.2 Referring to the mail of February 22, 2014 - reproduced in paragraph 4.C.1 above - Complainant says that this illustrates Respondent's intent to sell the disputed domain names to Complainant for a sum in excess of his out-of-pocket costs directly related to those domain names. The "compensation for consequential loss" requested by Respondent is, Complainant says, outside such costs. Additionally, the "gain" to Complainant referred to in that email is no more than affirmation of Complainant's rights in the AMEC trademark. But for the wrongful registration of the disputed domain names, Complainant observes that it would not have been necessary to bring the Complaint in this administrative proceeding.
5.A.3.3 As additional evidence of bad faith under paragraph 4(b)(i) of the Policy, Complainant refers to Respondent's demand of GBP 2,500.00 made in his email of March 15, 2014: see, paragraph 4.C.4 above.
5.A.3.4 As to bad faith generally, citing Pharmacia & Upjohn AB v. Sol Meyer,WIPO Case No. D2000-0785 Complainant characterises Respondent's registration of the disputed domain names on January 22 and 23, 2014, barely a week after announcement of the proposed merger between Complainant and Foster Wheeler, as "an opportunistic act by an alert entrepreneur with a view to making a profit". Complainant infers that Respondent's intention was either to block the merged entity from registering the disputed domain names, or to sell them to that entity.
5.A.3.5 As additional evidence of bad faith, Complainant refers to some 50 other domain names registered by Respondent, a number of which comprise the trademarks/identities of companies in merger discussions. For example, merger of Telefonica's Mexican operations with Grupo lucacell; acquisition of Mivisa Euvases of Spain by Crown Holdings of the U.S.; merger of Texas Instruments and Martin Marietta both of the U.S.; Merger of Cityjet of Ireland and Inter Sky of Austria; and bid by Liberty Global of the U.S. for the Dutch cable operator, Ziggo AS.
5.A.3.6 Still further, Complainant asserts that Respondent's registration of the disputed domain names contravenes its representations under paragraph 2 of the Policy.
5.A.3.7 Finally, as to use, Complainant cites Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 where bad faith was found to exist where: "(i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant's trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name." 5.B Respondent
5.B.1 Respondent's case is that Complainant cannot satisfy any of the requirements of paragraph 4(a) of the Policy.
5.B.2 As to the correspondence between Respondent and Complainant's representatives, Respondent says that he referred only to the disputed domain name and not to the other disputed domain name .
5.B.3 Respondent does not accept that the letter from Foster Wheeler - reproduced in paragraph 4.A.7 above - supports Complainant's claim to retrieve the disputed domain names. Identical or Confusingly Similar
5.B.4 Respondent states that the disputed domain names are not confusingly similar to the trademarks asserted by Complainant. Respondent says
"The Respondent does not develop a domain website which might mislead the Internet user. Rather, the Respondent, through association with various combinations of domains can show interest in promoting potential merger(s) by registering selected merger ideas and offering supporting consulting services. Moreover the Respondent does not use the domain to provide information about the companies; but is willing to transfer of the domain after establishment of a merged entity, without gain." Rights or Legitimate Interests
5.B.5 Here, Respondent explains that he is a "seasoned and respected M&A professional with a reputation for promoting and consulting in leading industry M&A activity, and currently working in partnership with several clients and potential investors in the U.S.A., Middle East and Asia."
5.B.6 As to the 50 plus domain names registered in his name, he says that none are linked to pay-per-click websites. Hence, he is not profiting from commercial use of such domains. Moreover, he says that he has never sold a domain name, and only has one currently listed on GoDaddy for auction/sale, which has no association with a company merger.
5.B.7 Respondent asserts that registering domain names "which speculate about possible future mergers and investment opportunities and yet-to-be established entities/combinations" constitutes a bona fide offering of M&A services as part of his role of providing Business Development for his clients. In the circumstances, Respondent's case is that his actions in registering the disputed domain names fall within paragraphs 4(c)(i) and (iii) of the Policy. Registered and Used in Bad Faith
5.B.8 Respondent denies that he has acted in bad faith. In that respect, he points to the fact that in response to the Cease & Desist letter of February 19, 2014 he sought "to secure fair terms for unconditional transfer of the Domain to the Complainant in return for fair compensation of time related costs and out-of-pocket expenses of £2,500.00." That sum is, Respondent says, both appropriate and reasonable. However, it was rejected by Complainant, which Respondent considers evidences that this Complaint has been "brought in bad faith, in an attempt to bully the Respondent into a submission because of its financial strength..."
5.B.9 In sum, Respondent says that none of the circumstances set out in paragraph 4(b) of the Policy are met in this case. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain names in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. A. Identical or Confusingly Similar
6.5 Complainant clearly has rights in the AMEC trademark and Foster Wheeler equally clearly has rights in the FOSTER WHEELER trademark.
6.6 In the Panel's view, the letter from Foster Wheeler dated March 21, 2014 - reproduced in paragraph 4.A.7 above - is adequate support for Complainant's action in bringing this Complaint. Clearly, without seeking transfer or cancellation of the disputed domain names, Complainant could not "register internet domain names that include various combinations of AMEC and FOSTER WHEELER".
6.7 Since both the disputed domain names incorporate Complainant's well-known AMEC trademark in its entirety, both are confusingly similar to that trademark. In the Panel's view, incorporation of the FOSTER WHEELER trademark in the disputed domain name only adds to the likelihood of confusing similarity. Similarly, use of the abbreviation "fwc" in the disputed domain name will, in the context of Foster Wheeler's domain name , also inevitably, in the Panel's view, lead to a likelihood of confusion.
6.8 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.9 Respondent's stated intention of registering the disputed domain names for transfer to a client located in China cannot, in the Panel's view, constitute a bona fide offering of services where the domain names are - as in this case - confusingly similar to Complainant's and Foster Wheeler's registered trademarks.
6.10 Also, by Respondent's own admission that intention cannot constitute "noncommercial" use.
6.11 The facts here are, in the Panel's opinion, substantially identical to those in Pharmacia & Upjohn AB v. Sol Meyer,WIPO Case No. D2000-0785 cited by Complainant. There the disputed domain name was . On December17,1999, the press announced that Pharmacia & Upjohn AB (registrant of the PHARMACIA trademark), were in merger talks with Monsanto Company (registrant of the MONSANTO trademark). Respondent in that case registered the domain name on the same day. As to rights or legitimate interests, the panel concluded:
"The Panel accepts that the PHARMACIA and MONSANTO trademarks are very well known and that in using them in juxtaposition the Respondent knew perfectly well that he was using marks belonging to the Complainant and Monsanto a Company respectively. The papers disclose no hint of any reason why the Respondent might legitimately lay claim to rights in or relating to the Domain Name."
In the circumstances, the panel had no hesitation in finding that the respondent had no rights or legitimate interests in respect of the domain name.
6.12 In a similar situation, the English High Court injuncted use of the corporate name "Glaxo Wellcome Ltd." which had been registered by an individual in the context of announcement of the proposed merger of Glaxo and Wellcome: Glaxo plc v. Glaxo-Wellcome a Ltd. 1996 FSR 388.
6.13 In another case, both trademark infringement and passing off were found in the context of third party registrations of ; ; ; and : British Telecommunications plc and Others v. One in a Million 1998FSR265 affirmed on appeal 1999FSR1.
6.14 As stated above, both AMEC and FOSTER WHEELER are well-known trademarks and Respondent was clearly well aware of both entities. In the circumstances, registering the disputed domain names for the purpose of transferring them to Respondent's Chinese client - whether for profit, or otherwise - cannot amount to conduct falling within paragraphs 4(c)(i) or (iii) of the Policy. Consequently, the Complaint succeeds under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.15 In Pharmacia & Upjohn AB v. Sol Meyer,WIPO Case No. D2000-0785, the panel both inferred circumstances falling within paragraph 4(b)(i) of the Policy and found respondent's conduct generally to constitute bad faith.
6.16 As to paragraph 4(b)(i), here the sum requested by Respondent – GBP 2,500.00 - was clearly greater than out-of-pocket expenses "directly related to" the disputed domain names. The cost of registering the two domain names would have been a fraction of that sum. But, whether that finding can be challenged is, in the Panel's view, immaterial since, as the panel said in the Pharmacia case, there is no basis for Respondent legitimately laying claim to rights in or relating to either domain name.
6.17 Respondent's attempt to settle this dispute - ultimately, for GBP 2,500.00 - does not cure bad faith. The Panel finds that Complainant's case summarised in paragraphs 5.A.3.2 to 5.A.3.7 is well made out. Respondent's purpose in registering the disputed domain names (set out verbatim in paragraph 5.B.4 above) is no answer. This case is, to all intents and purposes, on all fours with Pharmacia & Upjohn AB v. Sol Meyer,WIPO Case No. D20000785 and, in the circumstances, the Complaint succeeds under paragraph 4(a)(iii) of the Policy. 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 names and be transferred to Complainant.
David Perkins
Sole Panelist
Date: May 15, 2014
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