WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Chris Johnson v. Domain Privacy Protector Limited, Martin Quinn, Henry Stainton Case No. DME2010-0004 1. The Parties
The Complainant is Chris Johnson of London, United Kingdom of Great Britain and Northern Ireland (UK), represented by Sebastians Solicitors, UK.
The Respondents are Domain Privacy Protector Limited of London, UK; Martin Quinn, of Stratford upon Avon, UK, represented by Azrights Solicitors, UK; Henry Stainton of Carshalton, UK. 2. The Domain Name and Registrar
The disputed domain name is registered with Advantage Interactive Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 26, 2010, the Center transmitted by email to Advantage Interactive Ltd., a request for registrar verification in connection with the disputed domain name. On April 1, 2010, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the first-named Respondent is listed as the registrant and providing the contact details. (On November 16, 2009 the registrar, through its privacy service, had named the registrant to the Complainant as Martin Quinn and provided the contact details on record.) The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 April 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010. Respondents requested an extension of the Response due date on April 29, 2010, which was forwarded to the Complainant for comment. The Center received the Complainant's comments on April 30, 2010. The Center subsequently extended the due date until May 7, 2010. The Response was filed with the Center on May 7, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 19, 2010. 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.
A Supplemental Filing from the Complainant, sent to the Center on May 24, 2010, was forwarded to the Panel on May 25, 2010. 4. Factual Background
The Complainant runs and promotes nightclubs in the UK. He is the proprietor of a company by the name of Guestlist Me Limited. In connection with that business he has registered the following trademark at the UK Intellectual Property Office:
GUESTLIST ME (styled GUESTLIST Me), word and device, registration number 2355932, filed February 16, 2004, registered July 15, 2005, class 43.
The second-named Respondent, Martin Quinn, is an acquaintance and sometime employee of the Complainant. Martin Quinn decided to register the disputed domain name but asked another acquaintance, Henry Stainton, who is the third-named Respondent, to do it on his behalf.
The disputed domain name appears to have been registered on July 18, 2008. 5. Parties' Contentions A. Complainant
The Complainant says that the original trademark registration document has been lost and submits a scan of a certified copy of the document, showing him as the registrant of the trademark, at a different address from that provided in the Complaint.
The Complainant says that the trademark is used in connection with a company of which he is the proprietor, named Guestlist Me Limited, English registration number 04908976.
The Complainant contends that the disputed domain name is identical or confusingly similar to his trademark since the only difference between GUESTLIST ME and is the dot. He submits that there is no requirement that the ccTLD extension “.me” (Montenegro) must be ignored in the determination of confusing similarity.
The Complainant further contends that the Respondents have no rights or legitimate interests in the disputed domain name. In August 2008, Martin Quinn told the Complainant he had spotted that the disputed domain name was available and had registered it for the Complainant. Martin Quinn said he would transfer the disputed domain name to the Complainant free of charge. When asked later by the Complainant to effect the transfer, Martin Quinn explained that Henry Stainton had been asked to make the registration for him, and had done so, but was refusing to give the registration to Martin Quinn.
On September 5, 2008, the Complainant made contact directly with Henry Stainton with the intention of gaining the transfer and received a written reply dated September 8, 2008 confirming that the disputed domain name had been registered on behalf of Martin Quinn. Henry Stainton said Martin Quinn had not refunded the registration fee, so the disputed domain name was registered for auction. It had an appraisal value of about GBP 6,000.00 and pre-auction offers would be considered.
Correspondence to the Complainant from Martin Quinn dated June 8, 2009 said that the latter had “...tried pretty much every way to get access to the domain...” and had tried to get his “...name taken off the database which shouldnt take long...”.
The Complainant says that since September 2008 he has attempted to persuade the first named Respondent and Martin Quinn (who both claim that they have no ability to transfer the disputed domain name to the Complainant) and Henry Stainton to transfer the disputed domain name to him. There appears to be no website associated with the disputed domain name. To the best of the Complainant's knowledge none of the Respondents has ever traded under a name identical or similar to the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The whole circumstances, including the change of registrant from Martin Quinn to the first named Respondent in order to obscure who was behind the exercise, indicate registration and use in bad faith.
The Complaint contends that three possible scenarios govern the initial registration:
(1) It was effected (in the name of Martin Quinn) by Henry Stainton for financial gain.
(2) It was effected by Martin Quinn, having been asked to do so by, and on behalf of, the Complainant. Martin Quinn then decided to keep it for financial gain.
(3) It was effected by Martin Quinn and Henry Stainton acting in concert with a view to their own financial gain and with a view to deliberately obscuring the true position so as to make it extremely difficult for the Complainant to recover the disputed domain name without paying one or both of them.
The Complainant says that either Martin Quinn or Henry Stainton or both must have been less than honest with the Complainant and possibly with the registrar, and that this is further evidence of bad faith. If Henry Stainton did not have permission to register the disputed domain name in Martin Quinn's name then he should not have done so. If Henry Stainton did have that permission then Martin Quinn should not have denied that this was the case, one consequence being to make it more difficult for the Complainant to obtain control over the disputed domain name.
The Complainant requests the transfer to it of the disputed domain name. B. Respondents
A Response has been received from Martin Quinn in which he denies the Complaint. His Response is summarised below.
Martin Quinn contends that the Complainant's trademark comprises more than the words GUESTLIST ME, including devices and specified colours, and that the word element of the trademark is not protectable on the Internet. It is contended that the Complainant's trademark comprises essentially GUESTLIST and is essentially descriptive without the component “me”. Generally it is found that a domain name suffix is merely descriptive of the registry services and is not an identifier of a source of goods or services, therefore in the present instance, contrary to the assertion of the Complainant, the domain name suffix “.me” should not be taken into consideration as part of the disputed domain name.
Martin Quinn contends that descriptive domain names such as have an inherent value unconnected to the business of a trademark owner and that this is evident from the valuation of GBP 6,000.00 through “”. He says that the registration of domain names with a view to exploiting their marketing potential is a legitimate business activity, and it would be unjust to allow the holders of trademark rights which do not grant an interest in the generic word, to claim valuable domain names for themselves. Martin Quinn says he did not register the disputed domain name in bad faith, in fact he initially registered it purely because it was a generic name left unregistered during the sunrise period for the “.me” extension. Being involved in the events industry he saw potential for its future use in connection with a related business, or in connection with products such as a software application he had intended to market, for the provision of guest list information (documentation submitted).
Although Martin Quinn had no specific plans for the disputed domain name at the time of registration, he was not thinking of the Complainant. Because Martin Quinn was in Spain, he asked Henry Stainton to register the disputed domain name. As a gesture of friendship to the Complainant he offered to transfer it to him free of charge. Henry Stainton did not agree to the transfer as he had not been paid for the initial registration costs. Henry Stainton had obtained an appraisal valuation of GBP 6,000.00 and decided to try to sell the disputed domain name. Martin Quinn says that Henry Stainton was not motivated by a desire to deprive the Complainant, who is not well-known and does not have rights in respect of the disputed domain name.
Martin Quinn describes his background in nightclub work and event organisation internationally and contends that he maintains a legitimate interest in the disputed domain name as a vehicle for marketing his services, notably in Dubai where he has connections.
Martin Quinn denies registration or use of the disputed domain name in bad faith and contends that both of those elements would need to be proved. He refers to the three scenarios posited by the Complainant (numbered (1) - (3) in section 5A above) and responds respectively:
to (1), it is clear from the correspondence that the registration was effected at the request of, and in the name of, Martin Quinn, rather than by Henry Stainton;
to (2), the disputed domain name was registered on July 18, 2008, and by the Complainant's own admission, he was only notified of its availability in August of that year;
to (3), there is no evidence to support this allegation and the facts speak against it.
Martin Quinn says that Henry Stainton refused to relinquish the disputed domain name and later indicated an intention to use it in connection with the brand GUESTLIST MIDDLE EAST. Evidence for the existence of this brand is submitted in the form of an invoice dated October 16, 2008 for the design of a logo for GUESTLIST MIDDLE EAST, and an email that is stated to refer to a launch party for the brand in November 2008.
Martin Quinn says that he no longer wishes to part with the disputed domain name, but to permit Henry Stainton to make use of it in relation to his Guestlist Middle East project, with a view to the two working together in Dubai.
Martin Quinn says that he did not attempt to sell the disputed domain name, divert custom away from the Complainant, or trade on the reputation of the Complainant.
Martin Quinn contends that bad faith necessitates an intention to take advantage of the rights of the Complainant. No evidence has been submitted in support of this assertion.
Martin Quinn has submitted citations of previous UDRP decisions that he wishes the Panel to treat as precedent.
Henry Stainton has not submitted any formal Response. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. Procedural Matter
Paragraph 12 of the Rules provides as follows:
“In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
On May 24, 2010, an unsolicited Further Statement (Supplemental Filing) was received by the Center from the Complainant and forwarded to the Panel on May 25, 2010. The Panel had not requested any Further Statement and it was not required. The Panel declines to admit the Further Statement. The Respondents
The Complainant has named Domain Privacy Protector Limited as a Respondent. The Panel is satisfied that the Domain Privacy Protector Limited has fulfilled its obligation to divulge the true registration details on record, and need not respond further.
In order to proceed with this Complaint it is necessary to unravel the connection, in respect of the disputed domain name, between the other two named Respondents.
There does not appear to be any dispute that Martin Quinn first noted the availability of the disputed domain name, noted its relevance to the field of night club and event management, and desired to obtain the registration. For reasons connected with his personal timetable and travel plans, he asked Henry Stainton to effect the registration for him. Henry Stainton evidently performed the registration assignment at the request of, and in the name of, Martin Quinn. Henry Stainton would have provided the registration details to the registrar, avowed their correctness, agreed to the terms and conditions of the registration, paid the fee, and received the access code.
It may be deduced from the evidence, including the provision of Martin Quinn's name to the registrar, that at the moment of registration the disputed domain name was regarded by both Martin Quinn and Henry Stainton as belonging to Martin Quinn, who thereby became indebted to Henry Stainton for the registration fee.
The relationship between Martin Quinn and Henry Stainton in the matter was evidently one of acquaintanceship and a debt of honour rather than of contract. There is no evidence that Martin Quinn formally contracted for Henry Stainton to act as his agent and no evidence of a contract between Martin Quinn and the registrar.
The consensus of the evidence is that Martin Quinn did not refund the registration costs. Some time in August 2008, Henry Stainton realised that the disputed domain name could have commercial value and decided to assume ownership of it because he had not been paid for the registration costs. It is at this point in time that he may be deemed to have acquired the disputed domain name from Martin Quinn. This is effectively confirmed by Henry Stainton in an email sent to the Complainant dated September 8, 2008, stating inter alia: “Yes Martin did ask me to acquire this domain for him, but he did not reach me in time with payment, so we've registered this domain for international auction at the end of September. The current domain appraisal value is [GBP] ₤6000 so offers around this figure will be considered pre-auction.”
The Panel accepts that Martin Quinn was properly named as a Respondent because the disputed domain name is registered in his name.
The Panel finds that Henry Stainton is properly named as a Respondent because, in reality and in terms of the contract he made with the registrar, he is the current holder of the registration. He was properly notified of the Complaint and of his citation as a Respondent, but provided no formal Response. A. Identical or Confusingly Similar
The Complainant has submitted documentary evidence of his ownership of the trademark GUESTLIST ME. The documentation is uncontested and is accepted by the Panel.
The disputed domain name is . Generally the top level directory indicator, such as “.com”, may be disregarded in the determination of confusing similarity, but there can be circumstances in which it should not be disregarded. See, e.g., GmbH v. Alan Lin,WIPO Case No. DME2009-0008. Paragraph 4(a)(i) of the Policy requires only that the “...domain name is identical or confusingly similar to a trademark...” The entire disputed domain name, including the Montenegro ccTLD “.me”, is to all intents and purposes identical to the Complainant's trademark GUESTLIST ME.
Martin Quinn has submitted that graphic and chromatic elements of the Complainant's trademark are not reproduced in the disputed domain name. Whilst that is so, it is self-evidently so, because a domain name necessarily comprises alphanumeric characters alone (in the present context). The Panel finds the disputed domain name to be identical or confusingly similar to the Complainant's trademark within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts, prima facie, that the Respondent does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy states that any of the following circumstances, without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent's rights or legitimate interests in the disputed domain:
“(i) before any notice to you [respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant says that in August 2008 Martin Quinn told him that he had spotted the availability of the disputed domain name and had registered it for the Complainant. Martin Quinn puts it a little differently in his Response: “In August of that year [I] encountered the [Complainant] by chance in a nightclub, and as an amicable gesture, hoping to be considered for a managerial position in his company, mentioned the registration, and offered it to him free of charge.” It would appear that Martin Quinn may have registered the disputed domain name speculatively and shortly afterwards considered giving it to the Complainant.
Martin Quinn outlines his activities internationally in the sphere of nightclubs and his plans to become established in Dubai, a place he says he first visited in September, 2008. He says that he “...holds a legitimate interest in the domain name as a means of marketing his services to an industry with which he has been associated for over 10 years.”
On October 26, 2009, Henry Stainton, in reply to a letter from the Complainant dated October 15, 2009, wrote inter alia: “The domain was purchased for a legitimate reason, and has plans for being developed for the purpose of providing a legitimate service, relative to the address purchased, not just by nature but also by geographical location.”
On the basis of all of the evidence provided, including assertions by both Martin Quinn and Henry Stainton that the disputed domain name might be used in the future in connection with their businesses, the Panel does not find that any Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy. There is no evidence that any Respondent has been generally known as “” or by a similar name in the terms of paragraph 4(c)(ii) of the Policy. There is no evidence that the disputed domain name has been used in any noncommercial or fair manner as envisaged by paragraph 4(c)(iii) of the Policy. There is no evidence that any Respondent has acquired rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. The first of these is pertinent:
“(i) circumstances indicating that you [the Respondent] 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”
The disputed domain name was available after the sunrise period and was not necessarily registered in bad faith initially. The circumstances in which Henry Stainton acquired it, however, are different, and it is noted that the wording of paragraph 4(b)(i) of the Policy includes the phrase, “...you have registered or you have acquired the domain name...”. A paragraph of the email sent by Henry Stainton to the Complainant dated September 8, 2008, referred to above, bears repeating here: “Yes Martin did ask me to acquire this domain name for him, but he did not reach me in time with payment, so we've registered this domain for international auction at the end of September. The current domain appraisal value is [GBP] ₤6000 so offers around this figure will be considered pre-auction.”
The inescapable inference is that, because the registration fee had not been refunded, and because Henry Stainton realised that it might have value, therefore (“so”) the disputed domain name was acquired by him and made available for sale to the highest bidder. Given the degree of identity with the Complainant's trademark, the disputed domain name inevitably would appeal to a market comprising predominantly the Complainant or competitors of the Complainant. Leaving aside that a domain name appraisal depends heavily on assessments contributed by the enquirer, the indicative price of around GBP 6,000.00 is clearly far beyond registration costs, and an offer from the Complainant of GBP 250.00 was also not accepted by Henry Stainton.
The disputed domain name does not appear to have been put to any actual use on the Internet as a website or email address. It has long been established that generally the non-use of a domain name for Internet purposes does not preclude a finding of bad faith use within the meaning of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Having regard to all the evidence the Panel finds the circumstances in which Henry Stainton has, and to the degree applicable, the co-Respondents have acquired and used the disputed domain name to constitute bad faith. 7. Decision
For all 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: June 2, 2010
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