Complainant is Walker Hamill Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Matheson, Ireland.
Respondent is Tim Doyle, Walker Hamill Ireland of Dublin, Ireland, internally represented. 2. The Domain Name and Registrar
The disputed domain name (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 November 11, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. The Response was filed with the Center on December 4, 2015.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 11, 2015. 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.
On December 16, 2015, Complainant submitted a Supplemental Filing. Respondent replied with a Supplemental Filing on December 21, 2015. 4. Factual Background
Complainant, Walker Hamill Limited, is a company registered in the United Kingdom that provides recruitment services, human resources management and recruitment advertising to companies in the accounting, corporate and financial services industry sectors.
Complainant is the holder of the following registered trademarks:
- UK Trade Mark No. UK00002291060 for WALKER HAMILL in Class 35 (filed on January 24, 2002 and registered on June 28, 2002).
- Community Trade Mark No. 014037303 for WALKER HAMILL in Class 35 (filed on May 7, 2015 and registered on August 25, 2015).
- Australian Trade Mark No: 1244759 for WALKER HAMILL in Class 35 (filed on June 5, 2008 and registered August 25, 2008.
Complainant's group of companies has been operating in Ireland between 1990 and 2002, trading under the name Walker Hamill Ireland. Respondent was an employee of Walker Hamill Ireland from March 2001 to February 2002, when the company that had acquired Walker Hamill Ireland (and other companies of the Walker Hamill group), i.e., Marlborough International, was placed into administration. On March 1, 2002, Respondent registered in its own name the business names "Walker Hamill" and "Walker Hamill Ireland" with the Companies Registration Office in Ireland. On March 7, 2002, the management of the Walker Hamill group acquired the business and assets of Walker Hamill Limited and Walker Hamill Australia (including the goodwill attaching to the name Walker Hamill) from the receiver of Marlborough International. The receiver failed to change the name of Walker Hamill Ireland, and Walker Hamill Ireland was dissolved on May 18, 2007. Complainant has continued to service Irish-based clients from its London office, trading under the name Walker Hamill.
On July 3, 2015, Respondent registered the Disputed Domain Name. The Disputed Domain Name has been used for a website at which Respondent was marketing his business as "Walker Hamill Ireland – Talent Acquisition Specialists" and inviting people to submit their CVs to "[ ]@". On August 26, 2015, counsel to Complainant sent a cease and desist letter to Respondent. Complainant has not received the undertakings it had requested from Respondent. However, at this moment the website under the Disputed Domain Name no longer features the list of job opportunities that were originally displayed on the website. 5. Parties' Contentions A. Complainant
Complainant submits that by registering the business names Walker Hamill and Walker Hamill Ireland Respondent was "surreptitiously attempting to take advantage of Marlborough International being placed into receivership (and the ensuing uncertainty surrounding the Walker Hamill business)". Complainant further submits that Respondent operated a "LinkedIn" profile on which it described itself as "Director at Walker Hamill". The registration of the business name, the use of the Disputed Domain Name and the LinkedIn profiles appear to have been part of an overall strategy by Respondent to pass itself off as operating a business that was affiliated to or endorsed by the Complainant.
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith.
In its Supplemental Filing, Complainant argues that Respondent appears to have acted opportunistically in seeking to obtain business name registrations for Walker Hamill and Walker Hamill Ireland, and that business name registration simply reflects that a person or entity intends to trade under a particular name, but no legal rights in such a business name attach to the registration. Finally, Complainant rejects Respondent's allegations concerning reverse domain name hijacking. Complainant argues it has acquired rights to and operated its recruitment business across Europe and in particular in Ireland, long before Respondent's registration of the Disputed Domain Name. B. Respondent
Respondent argues to have a legitimate interest in the name Walker Hamill Ireland, and to be commonly known by that name. According to Respondent, Complainant trades illegally in the Irish market as Complainant does not hold a legitimate license to trade as a recruitment agency. Complainant would have become known commonly as Walker Hamill only on March 8, 2002, i.e., after Respondent's registration of Walker Hamill Ireland as a business name in Ireland. Respondent further contends that Complainant has no valid registered trademarks to invoke its rights over the Disputed Domain Name. Finally, Respondent claims that Complainant has been misleading the Panel and has engaged in reverse domain name hijacking.
In its Supplemental Filing, Respondent claims that he did not have to seek permission to register Walker Hamill Ireland as a business name, and that it is trading under that name since 2002. Respondent further challenges the validity of Complainant's registered trademarks and reiterates the arguments of its Response. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i). The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii). 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 will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are trademarks in which Complainant has rights. The mark has been registered and used. It is also being used in the country where Respondent is based and in countries that Respondent seems to target with the website that is linked to the Disputed Domain Name.
The Panel considers the Disputed Domain Name to be composed of a name identical to the WALKER HAMILL trademark and the non-distinctive geographic term "Ireland". The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Although Respondent has registered Walker Hamill Ireland as a business name, there are no indications that Respondent has been commonly known by the Disputed Domain Name or that Respondent seems to have acquired trademark or service mark rights. Respondent submits four invoices, three of which are sent to MDM Recruitment Limited, a company having the same address as Respondent and of which Respondent is a shareholder and director. The remaining invoice mentions May 10, 2002 as due date, which is shortly after the appointment of the receiver to Marlborough International and the management
buy-out of the Walker Hamill group by Complainant. Without further information regarding the circumstances surrounding the invoice, it is impossible for the Panel to assess whether the invoice was issued in the framework of a contractual relationship, or whether it was an opportunistic attempt to profit from the goodwill created by the Walker Hamill group in Ireland. In any event, the evidence submitted by Respondent (including the number of "LinkedIn" contacts Respondent appears to have) is insufficient to show that Respondent was commonly known by the Disputed Domain Name.
Furthermore, Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant, and the timing of Respondent's registration of Walker Hamill Ireland as a business name suggests an opportunistic attempt by a former employee to profit from the goodwill created by the Walker Hamill group in Ireland.
In view of the foregoing, the Panel considers that Complainant has also made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the WALKER HAMILL trademark at the moment it registered the Disputed Domain Name. Respondent was an employee of the Walker Hamill group from March 2001 to February 2002. Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix ("voip") suggested knowledge of the complainant's rights in the trademarks).
Respondent's bad faith is further supported by Respondent's use of the Disputed Domain Name and the information on one of Respondent's LinkedIn profiles. According to this LinkedIn profile, Respondent is a director of Walker Hamill since March 2001 until now. In doing so, Respondent seems to suggest that he – or the company which he registered on March 1, 2002 – has taken over the goodwill of the Walker Hamill trademark. The website linked to the Disputed Domain Name has been used for marketing recruitment services under the Walker Hamill brand. Respondent's registration and use of the Disputed Domain Name appears to have been part of an overall strategy to pass himself off as operating a business that is affiliated to or endorsed by Complainant. Therefore, the Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. In accordance with paragraph 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
That Respondent may have stopped using the Disputed Domain Name in such manner prior to the date on which the Complaint was filed is irrelevant (ALH Group Pty Ltd v. Naveen Mathur,WIPO Case No. D2015-2004).
In view of the above, the Panel finds that, on the balance of probabilities, it is shown that the Disputed Domain Name was registered and is being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: December 23, 2015
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