The Complainant is McCarthy & Stone (Developments) Limited of Bournemouth, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Whoisguard Protected of Panama City, Panama / Domain Name Management Services, Uri Vitoro of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2014. On June 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 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 the Respondent of the Complaint, and the proceedings commenced on June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Response was filed with the Center on July 15, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 23, 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.
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whoisguard Protected) is a privacy or proxy registration service while the other Respondent (Domain Name Management Services/Uri Vitoro) is the substantive Respondent. The Panel in this case adopts the approach of most panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision is in the name of, and directed at both Respondents. However it is not in dispute that the substantive Respondent is Uri Vitoro/Domain Name Management Services and accordingly where this decision refers below to “the Respondent” this is a reference to Domain Name Management Services/Uri Vitoro. So far as this Respondent is concerned it appears that Domain Name Management Services is not a separate legal entity and the Response itself identifies Uri Vitoro as the Respondent. 4. Factual Background
The following facts are not in dispute (the Response expressly states that all facts in the Complaint are agreed unless responded to).
The Complainant is the largest builder of retirement houses and apartments in the United Kingdom. It has traded under its name (or previous versions of it) since at least 1973. Its most recent annual revenue exceeds GBP 310 million. It is a well-known organization. It owns a number of registered trademarks in respect of the words MCCARTHY & STONE – for example UK Registration No. 2615378 filed in 2006. It has a significant number of websites at various domain names incorporating the words “McCarthy” and “Stone”.
The Respondent has been using the Domain Name in relation to a website (the “Website”) which contains material that is disparaging of the Complainant and its business. It also contains a page with advertising links to websites operated by competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows.
The Domain Name incorporates and is not materially different to its trade mark MCCARTHY & STONE in which it clearly has rights.
The Respondent has no rights or legitimate interests in the term “MCCARTHY & STONE”. There is no other meaning commonly associated with those two words in combination other than in relation to the Complainant. The Respondent registered the Domain Name in bad faith to profit from the reputation of the Complainant.
The Respondent is not authorized by the Complainant to use the trademark MCCARTHY & STONE in the Domain Name.
The Respondent registered and is using the Domain Name in bad faith. Such bad faith comprises the similarity of the Domain Name to the Complainant’s name, and the content of the Website and the fact that is used for the attraction of actual or potential customers of the Complainant, who are then presented with (a) unfair derogatory material and (b) links to competitors of the Complainant. The Complainant says the derogatory material is not bona fide criticism but a pretext designed to obtain commercial advantage by means of the linking to competitor’s sites. The Complainant also relies on the fact that the Respondent Uri Vitoro appears to offer a business providing anonymous services, including domain name registration, to assist others in engaging anonymously in disputes with third party organisations, particularly if such persons wish to avoid the risk of litigation directed at them. This issue is discussed further in section 6 below. The Complainant says this is further evidence of bad faith use.
The Complainant also relies upon a previous decision, McCarthy & Stone Plc [the Complainant’s name at the time] v. Domain Drop S.A.,WIPO Case No. D2008-0988 and says the reasoning in that case is applicable in the present case. B. Respondent
The Panel has not found it easy to understand the points made in the Response. As indicated above the Response expressly admits that matters set out in the Complaint are accepted unless specifically responded to. The main thrust of the case advanced by the Respondent appears to be to accept the criticisms made in the Complaint of the Website, but to say that this was all part of some scheme designed in some way as part of a campaign against the Complainant’s representative law firm, Lewis Silkin LLP. The Respondent asserts that the Complainant itself was chosen simply because it was a client of Lewis Silkin LLP. Thus paragraph 2 of the Response states:
“The Complainant’s authorised representative Lewis Silkin LLP has been the subject of an investigation by myself with others, to establish fundamental reasons that should be considered before appointment of this company for the management and protection of Intellectual Property in particular Brand Names and all associated media. The Complainant’s name was drawn randomly from a selection of Lewis Silkin LLP Customers”
Nowhere in the Response that the Panel can identify is any explanation provided of what the investigation referred to was, nor why the Respondent (or his client – see below) seeks to take issue with Lewis Silkin LLP in this way.
It would appear the Respondent does provide a service where he acts as some sort of intermediary or facilitator for others who have a dispute they wish to engage in whilst remaining anonymous. The Complaint goes into considerable detail about this activity, but for present purposes it is sufficient for the Panel to note that the Response admits that the Respondent Uri Vitoro is in the present case acting on behalf of an unidentified client. The detail of this arrangement is not clearly explained, but for example the Response at paragraph 47 states:
“My client provided a sum of £50,000 to establish three reasons as to why you would NOT employ Lewis Silkin LLP to manage your domain portfolio, this sum went directly to various charities”.
The Response goes on to make a number of generalized comments such as “privacy is not a crime”. It also appears to suggest that customers of the Complainant are likely to be elderly and not “IT savvy” and hence the Respondent had some kind of interest in reserving the Domain Name so that others could not use it unscrupulously. None of this is explained clearly - the Panel regards the following statement (unnumbered paragraph on page 7 of the Response) as the clearest it can find in the Response as to why the Respondent Uri Vitoro considers his actions legitimate:
“It is the case that the domain name was only registered in connection with another project/instruction. No bad faith has been intended nor would be pursued if retention were granted. It is always however necessary whenever possible to ensure a good balance of information is available so that a prudent person can make an informed decision. Given the nature of this experience and how this matter has been handled, I feel that both customers and shareholders of McCarthy & Stone should be independently informed and would request the retention of the domain for the provision of a service to ensure transparency as far as possible is provided.” 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Domain Name that:
(i) the Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark MCARTHY & STONE. It is clear that the Complainant is the holder of numerous registrations for trademarks in respect of the term MCARTHY & STONE. The filed evidence also establishes that since the MCARTHY & STONE name was first used in the 1970s it has grown to be very well known in the United Kingdom.
The Domain Name is confusingly similar to the MCARTHY & STONE trade mark. The “&” sign is not in any event available as part of a domain name string and its substitution with a “-” is an immaterial variation. Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
MCARTHY & STONE is in substance the Complainant’s name and brand and is a term (when the words “McCarthy” and “Stone” are conjoined in this way) which so far as the Panel is aware has no other meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark 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 trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent s to register or use the Domain Name or to use the MCARTHY & STONE trade mark. The Complainant has prior rights in the MCARTHY & STONE trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name, as further discussed below under C. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present case, the Panel concludes that the Respondent selected the Domain Name because of its similarity to the Complainant’s name – indeed such is admitted. No real attempt is made by the Respondent to justify the disparaging material about the Complainant which is found at the Website, nor to dispute that the Website contains links to competitors of the Complainant. Either of these activities would, on established principles, be sufficient to establish registration and use bad faith, absent any convincing explanation from the Respondent as to why such was not the case.
So far as the Panel can determine only two possible explanations are advanced by the Respondent as to why the registration and use is not in bad faith.
The first is to say that this is all part of some dispute between the Respondent, Uri Vitoro, or his unidentified client, and the Complainant’s representative Lewis Silkin LLP. Even if the Panel had been provided with detailed information as to what this dispute is all about (which it has not) the Panel declines to become drawn into consideration of the dispute.
So far as the use itself is concerned and given that the Complaint was apparently picked simply because it was a known client of Lewis Silkin LLP, the Response seems to tacitly acknowledge that the use in question was deliberately designed to be objectionable. This was apparently intended to provoke action by Lewis Silkin LLP on behalf of its client, although what the Respondent’s purpose was beyond provoking such action is not clear to the Panel.
There are appropriate forums where any bona fide dispute a person may have with a UK law firm can be pursued. Targeting at random one of that law firm’s clients, and using its name in relation to a domain name which is then used in an unfair way cannot be a legitimate means of advancing such a dispute. Accordingly the Panel declines to find that this argument is sufficient to avoid a finding of bad faith registration and use.
The second justification advanced by the Respondent as to why its registration and use is not in bad faith is to suggest it prevents third parties using the Domain Name in an unfair manner and in some way protects actual or potential customers of the Complainant. The Panel does not understand how this argument is said to be consistent with the Complainant having been selected simply because it was a client of Lewis Silkin LLP. Further it is not consistent with the fact that the Respondent has itself used the Domain Name in a way which was in bad faith. In these circumstances the Panel does not accept this argument.
The Panel has also considered the various generalized arguments advanced in the Response but does not find that any of these provide reasons for justifying the manner in which the Domain Name has been used. This use was all clearly part of a scheme the Respondent had in mind when it chose to register the Domain Name.
As a result, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled in respect of the Domain Name. 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 domain name be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: July 25, 2014
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