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Alfred Dunhill Limited v. Websitebrokers And Lynn Trotter [2001] GENDND 918 (10 May 2001)

WIPO Arbitration and Mediation Center

The Complainant Alfred Dunhill Limited is a company incorporated in the United Kingdom with its principal place of business being St James’s, London, United Kingdom.

The Respondent is Websitebrokers Limited of P17 – P19 Bow Wharf, London, United Kingdom. It is a United Kingdom company controlled by Lynn Trotter who is a named co-Respondent.

This dispute concerns the domain name <alfreddunhillcup.com> (hereinafter referred to as the "Domain Name").

The Registrar with whom the disputed domain name is registered is Network Solutions Inc. (Internic) of Herndon, Virginia, United States of America.

The Domain Name was registered on July 24, 1998.

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on March 14, 2001, and in hardcopy on March 16, 2001. Payment in the required amount to the Center has been made by the Complainant.

On March 19, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name. Confirmation was received from the Registrar on March 20, 2001.

On March 21, 2001, the Administrative proceeding began.

On April 9, 2001, a formal Response was received from the Respondent.

On April 19, 2001, the Complainant forwarded an amended reply to the Respondent's Response. On April 23, 2001, an additional submission form the Respondent was received.

On, April 24, 2001, notification of appointment of a administrative Panelist and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist and advised that the decision should be forwarded to WIPO by May 8, 2001.

A number of procedural disputes arose in the course of this hearing. It was initially alleged by the Respondent that the Center had been in secret communication with the Complainant and to the exclusion of the Respondent. This suggestion proved to be without foundation. Secondly, the Respondent objected to the Complainant filing a reply to the Respondent's Response dated April 9, 2001. The only matter of substance in the said Response was reference to certain discussions between the Complainant's solicitors Field Fisher Waterhouse and Lynn Trotter on February 28, 2000.

A dispute has arisen as to whether these discussions were on a "without prejudice" basis or otherwise. In a contemporaneous attendance note from Field Fisher Waterhouse and a follow up letter to their client on March 3, 2000, it appears that the discussion was not "without prejudice". However, the Respondent strongly disputes this and argues that it would be improper for the Panel to take such discussions into account.

The principle that "without prejudice" discussions should be treated as privileged and confidential as between the parties is well established. The principle has both practical and legal consequences and the Panel sees no reason why these principles should not apply to proceedings under the UDRP. The difficulty is that in this present case the parties are in strong disagreement as to the status of their discussions.

Regrettably, it is not possible in proceedings of this type, to resolve disputes of fact of this type. Accordingly, in the interests of fairness it is thought that the best course is to exclude from consideration the alleged "without prejudice" discussions. In doing so the Panel stresses that it does not make in any way findings on the issue of whether privilege applies to the said discussions.

The Complainant is the owner of the famous trademarks "ALFRED DUNHILL" and "dunhill", ("Complainant’s trademarks") these being registered in connection with men’s luxury goods including clothing, leatherwear, watches, jewellery, eyewear, golfware, lighters and other luxury goods. The Complainant claims to have over 3800 registrations worldwide in various classes for these trademarks.

The Complainant also states that its trademarks have been used continuously throughout the world by the Complainant or its predecessors-in-title since as early as 1893, in respect of luxury goods.

In addition to its core business activities, the Complainant has, since 1985, sponsored the Alfred Dunhill Cup Golf Tournament held annually at the Old Course, St. Andrews, Scotland.

The Respondent was incorporated in July 1998, principally to carry on the business of web site development, with related interest in domain name registration and brokerage and email brokerage. The Respondent is associated with and has developed a business out of a small agency called "Ace Options". Ace Options deals with corporate events including conferences, training courses, activity days, awards dinners, corporate hospitality and major sporting events.

A. The Complainant

The Complainant alleges it has acquired a strong reputation as a designer, manufacturer and retailer of luxury goods throughout the world, and having regard to its continuous and extensive advertising, promotion and sale of such items under the Complainant’s trademarks, such have become extremely valuable and famous.

The golf tournament, known as "The Alfred Dunhill Cup", receives wide publicity world-wide in all forms of media including television, print, radio and Internet coverage. The Complainant says that it owns the official title to the event and grants a license to both IMG (the event organizer) and the PGA, to use the Complainant’s trademarks and other corporate images in organizing and running the event. The Complainant receives coverage and brand recognition as a result of the use of its corporate name and trademarks in respect of the event. Indeed, it is said this coverage and brand recognition further supports the Complainant’s case as such has led to the Complainant’s name and trademarks acquiring a strong reputation and well known status which has enabled the Complainant to successfully assert and enforce its rights against unauthorized use by third parties.

The Complainant claims that the Respondent conducts business through its website <websitebrokers.co.uk>. The Text in the site states "Domain sales and leasing…. We may own domain names connected to your business!" The Complainant feels that this statement is indicative of the Respondent’s real motivation in registering the Domain Name, as being the prospect of financial gain.

The Complainant states that the Complainant's trademarks have been the target of cybersquatters, including the Respondent who have registered domain names comprising names which are identical or confusingly similar to the Complainant’s trademarks without the Complainant’s prior authorization or consent.

The Complainant declares it became aware of the Respondent’s registration of the Domain Name on or about September 14, 1999, as a result of regular surveillance of domain name registrations. At that time, the Domain Name had been registered on behalf of the Respondent by CTL of Latton Bush Business Center, Southern Way, Harlow. In addition to the Domain Name, the Respondent has also registered with Nominet UK alfreddunhillcup.co.uk ccTLD without the consent of the Complainant.

The Complainant admits it has entered into correspondence and discussions with the Respondent with a view to reaching an amicable resolution of this matter but negotiations have been unsuccessful and have subsequently broken down.

The Complainant states it has filed a dispute resolution action with Nominet UK on February 9, 2000, against the Respondent in respect of the registration of the above-mentioned ccTLD.

The Complainant asserts the Respondent’s registration of the Domain Name injures the Complainant by precluding the Complainant from registering and using the Domain Name itself.

The Complainant says the Respondent’s registration of the Domain Name creates or is likely to create confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s products and/or services.

The Complainant also draws attention to the Respondent’s registration of other domain names which are said to be identical or confusingly similar to third party trade marks including, but not limited to:

<baftatelevisionawards.com>;
<festivalofspeed.com>;
<thetote.com>; and
<3rdcornhilltest.com>.

In addition to the .com registrations, the Respondent has also registered the .co.uk equivalents with Nominet UK. The Complainant states that it has made enquiries with The British Academy of Film and Television Arts (owner of the trade mark BAFTA), The Goodwood Estate Company Limited (owner of the trade mark FESTIVAL OF SPEED), The Horserace Totalisator Board (owner of the TOTE trade mark) and Cornhill Insurance plc (owner of the CORNHILL trade mark). Each of these companies has confirmed that registration by the Respondent of the above mentioned domain names was unauthorized. It is submitted that such stockpiling or hoarding of domain names which are identical or confusingly similar to the well-known marks of third parties is further evidence of bad faith.

The Complainant claims the Respondent entered on a without prejudice basis a conversation between an agent of the Complainant and Lynn Trotter on February 28, 2000. For the reasons given above these communications have been excluded from consideration.

It is pointed out that the fame and reputation of the Complainant’s trademarks has been accepted by a Panel in its decision in WIPO Case number D2000-0525-<alfreddunhills.com> dated August 24, 2000. In its decision at paragraph 6 the Panel confirmed that the Complainant had "a large well-known business built around the trademark ALFRED DUNHILL" and concluded that use of or preparation to use the domain name in dispute had been in bad faith. The Panel in this case ordered that the domain name be transferred to the Complainant.

The Complainant seeks the transfer of the Domain Name to the Complainant.

B. The Respondent

The Respondent states that the Domain Name has never been for sale and that initially all domains were purchased for the Respondent's own use and were for the benefit of Ace Options. Event names were purchased for the corporate hospitality aspect of these domain names.

The Respondent admits that it has registered many sporting and sports related domain names. The Respondent says it intends developing the disputed domain and many others. The Respondent has demonstrated its bona fides in the preparations it has made in establishing its business, acquiring domains relating to sporting events and in setting up websites, including sports related websites. The Respondent says it intends along with other similar names of sporting events or domains directly related to sporting events, for the purpose of creating websites about sporting events, effectively publicizing the events, just like a newspaper publishes information about sport and sporting events. It also states that the domain names are as being offered to its associated business, Ace Options services as a brokerage in assisting internet users to book accommodation and such like if they wanted to attend the events, whether for personal or corporate hospitality reasons.

The Respondent believes that the Complainant does not own any rights to the annual golfing event or any name associated with this event. The Respondent claims that the Complainant only sponsors the event and in return obtains coverage and brand recognition.

The Respondent says it is not a 'cybersquatter' but legitimately in business. For the domains it owns, the Respondent purchased each with the intention of building an excellent web site or to point to a web site giving information visitors are looking for.

The Respondent asserts that it has rights and legitimate interests in the Domain Name and has not registered the Domain Name for an unlawful purpose.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain name is identical or confusingly similar to the trade mark; and

- The Respondent has no right or legitimate interest in respect of the domain name; and

- The domain name has been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

It appears from the complaint and evidence, that, in its various manifestations, ALFRED DUNHILL and "dunhill", (the "Complainant’s trademarks") are registered and recognized in the United Kingdom and internationally. It is also asserted and not disputed that the company ALFRED DUNHILL and the sports event "The Alfred Dunhill Cup", are well known.

In the Panel's view, such fame and recognition applies whether the Complainant’s trademarks are used in a particular way and with or without embellishment or insignificant addition. By the same token, it would be reasonable to assume that the company ALFRED DUNHILL and the sports event "The Alfred Dunhill Cup" are somehow connected or associated with or approved by the Complainant. The Complainant asserts that it owns and licenses the name/mark "The Alfred Dunhill Cup" and on the record this appears to be the case.

Accordingly it is found that the Domain Name is identical to the name/mark "The Alfred Dunhill Cup" and confusingly similar to the Complainant’s trademarks, particularly the trademark ALFRED DUNHILL.

It is clear from the evidence that the Respondent or those associated with it runs a legitimate business and that this business is connected, inter alia, with sporting events. The large number of domain names having a sporting theme and being descriptive and/or generic in relation to certain types of sporting events is evidence of this.

While the Respondent may trade in domain names, this in itself is not objectionable. It is clear, a number of domain names under the Respondents control are generic and that they would have value to an organization either sponsoring or otherwise being involved in sporting events. However, a distinction has to be drawn between a domain name such as <golfworldmatch.com> and <alfreddunhillcup.com>. The former is clearly a generic term in which a company such as the Respondent or its associates would have a legitimate interest. However <alfreddunhillcup.com> is, in the Panel's view another matter.

There is no reason why the Respondent or it associates cannot promote and market golf tournaments using a generic domain name. If on the other hand a commercial organization has purchased the exclusive naming rights to a world famous golf tournament, that does not, in the Panel's view, entitle the Respondent to register that name, to the exclusion of the proprietor.

This view is taken in part because the Respondent has simply registered the entire name of the golf tournament, without any addition or alteration. Further, while the Respondent or its associates are clearly involved in a legitimate business, this does not necessarily imply that the entire business is legitimate. Even though the Panel has excluded any consideration of whether the Domain Name was offered for sale and on what basis, it is clear from the Respondent's web site that it is offering not just generic domain names but ones which may have a connection with a particular company. That is, on the basis of the statement, "We may own domain names connected to your business!" This suggests to the Panel that there may be more than one motivation in the Respondent's conduct. This factor also has a bearing on the issue of good faith.

In view of the above it is found that the Respondent lacks a right or legitimate interest in using/registering the Domain Name.

It is irrelevant whether the Respondent was the original registrant or obtained the Domain Name from the original registrant. Having found that the Complainant is the proprietor of the name/trade mark ALFRED DUNHILL and "The Alfred Dunhill Cup" it is found that the Respondent in using the Domain Name, has acted in bad faith. As indicated, there is nothing to stop the Respondent or its associates from using other appropriate generic terms to promote various sporting events. It is not however good faith conduct to use the identical name/mark when it is the property of a commercial organization that has purchased for valuable consideration the rights to a unique and world famous golf tournament.

In view of the above it is found that the Domain Name was registered and is being used in bad faith.

In view of the above the Domain Name should be transferred to the Complainant.

Clive L Elliott
Sole Panelist

Dated: 10 May 2001