Generic Top Level Domain Name (gTLD) Decisions

WIPO Arbitration and Mediation Center

Complainants: Thorntons Plc. (a public limited company incorporated in the United Kingdom) of Thornton Park, Somercotes, Alfreton, Derbyshire DE55 4XJ, United Kingdom.

Respondents: One in a Million Limited (a private limited company incorporated in the United Kingdom) of 1a Park Place, Leeds, LS1 2RU , United Kingdom.

Domain Name and Registrar:

thorntons.com, registered by Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, USA, on a date in May 1997.

(1) The Complaint in Case D 2000-0211 was filed in electronic form on March 29, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

The Panelist accepts these findings and himself finds that:

- the Complaint was properly notified in accordance with the Rules, paragraph 2(a) in that the following steps were taken. The Complaint was sent by the Complainant to the Respondent on March 24, 2000, at the address given in the WHOIS confirmation of registration, namely, Suite 234, 1A Park Place, Leeds LSI 2RU, United Kingdom. Upon its return to the Complainant by the Royal Mail with an indication that the addressee had gone away, it was sent by the Complainant on March 29, 2000, to the Respondent at a second address from the same source, namely, 3 Park Place, Leeds LS1 2RU, United Kingdom.

No Response to the Complaint was filed in due time;

Notification of this Default was given on April 25, 2000, to the Respondent; and that

The Administrative Panel was properly constituted.

(1) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(2) There have been no further submissions in the Case.

(3) The date scheduled for issuance of a decision is: May 10, 2000.

(4) No extensions have been granted or orders issued in advance of this decision.

(5) The language of the proceedings is English.

The Complainant is registered proprietor of the following trademarks:

(1) In the United Kingdom: "THORNTONS" for non-medicated confectionery for sale in England, Scotland and Wales (date of registration, 21.11.1973); and "THORNTONS" for non-medicated confectionery; ice cream; all included in Class 30 (16.3.1991), and for fruit juices; non-alcoholic beverages containing milk; all included in Class 32 (28.9.1993).

(2) "THORNTON'S" or "THORNTONS" for confectionery and/or chocolates and/or related goods in the following countries from the dates of registration given: Canada (13.3.1984); Australia (9.2.1989); Benelux (4.7.1986); Eire (13.7.19890; European Community (10.5.1996); France (11.7.1986); Germany (10.7.1986); Hong Kong (14.2.1989).; Italy (11.7.1986); Japan (22.10.90); Switzerland (11.7.1986).

(3) The Respondent registered the domain name, thorntons.com in May 1997, with Network Solutions, Inc.

A. Complainant

The Complainant asserts:

- that it has been trading in confectionery under the name "Thorntons" since 1911, and has built a substantial reputation and goodwill in that name in the United Kingdom and in other countries including those for which trade marks have been registered in as indicated in Paragraph 3 above.

- that after the Respondent registered the domain name in issue in May 1997, the Complainant, on July 25, 1997, wrote to the Respondent objecting to the registration. On August 2, 1997, the Respondent wrote in reply that it had no planned usage for the domain name and that it was prepared to sell the name for £25,000 to the Complainant.

- that these assertions demonstrate that the Respondent had no legitimate interest in the domain name in issue; that it registered the domain name in bad faith and that it sought to use/take advantage of it in bad faith.

- and that, as is demonstrated by the Decision of the English Court of Appeal in the case, British Telecommunications Plc. v. One in a Million Ltd [1999] Fleet Street Reports 1, the Respondent has a history and reputation of registering well known brand names, with a view to selling the respective domain names to the respective brand name owners for considerable sums.

Accordingly the Complainant seeks transfer of the domain name in issue to themselves.

B. Respondent

The Respondent has not filed a response and the Dispute has therefore to be determined on the basis of the Complainant's assertions.

(1) The Respondent's domain name at issue is identical with the prior registered trademarks belonging to the Complainant as listed in Paragraph 3 above.

(2) The Complainant has a widespread reputation associated with these registered marks, in particular for the sale of chocolates and other confectionery.

(3) The Respondent has chosen not to explain its conduct by making a Response to the Complaint. On the record before it, the Panel therefore considers the conclusion inescapable that the Respondent has treated the registration in issue, not as a basis for establishing a legitimate business, but as a means for securing a payment for its transfer to the Complainant. Its letter of August 2, 1997, offers to make this transfer for the sum of £25,000, a sum very considerably in excess of the Respondent's costs connected with the registration.

(4) The decision of the English Court of Appeal referred to in Paragraph 4A above demonstrates that the Respondent has engaged in a similar practice in a number of other cases. The conclusion reached in the previous paragraph is not dependent on this information, but is confirmed by it.

The Panelist concludes that the domain name has been registered and is being used in bad faith, consisting of acquisition primarily for the purpose of transferring the domain name to the Complainant for valuable consideration in excess of costs directly related to the domain name.

The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, Paragraph 4:

- that the domain name in dispute is identical with the registered trade marks and the service mark of the Complainants;

- that the Respondents have no rights or legitimate interests in respect of the domain name; and

- that it has been registered and is being used in bad faith.

The Panel accordingly requires that the domain name thorntons.com be transferred forthwith to the Complainant.

William R. Cornish
Panelist

Dated: May 9, 2000