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The HLT Group Limited v. Jerome Yeats [2001] GENDND 991 (21 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is The HLT Group Limited trading as Holborn College of 200 Greyhound Road, London W14 9RY, United Kingdom.

The Respondent is Jerome Yeats of 34 Barton Court, Barons Court Road, London W14 9EH, United Kingdom.

The Domain Name is <holborncollege.com>.

The Registrar is CORE.

The Complaint was filed on March 15, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified on March 26, 2001, in accordance with Rules, paragraph 2 (a). On March 26, 28 and 29, 2001, there was an exchange of e-mails between the Respondent and the Center. On April 18, 2001, the Respondent filed a late e-mail Response and sent a further e-mail to the Center on April 20 and 26, 2001.

The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further documents were filed and the deadline set for a decision in this case was May 28, 2001.

The Complainant is an educational institution trading as Holborn College. The Respondent is a photographer who registered the Domain Name following a dispute over usage of photographs taken by him for the College.

This Complaint stated:

The Complainant is a company incorporated under the laws of England and Wales having registration number 01163478 whose registered name until March 1, 1998, was Holborn Law Tutors Limited and whose registered office is situate at 200 Greyhound Road, London W14 9RY, United Kingdom. The Complainant carries on business as, among other things, a tutorial college and provider of expert tuition and a publisher of educational and teaching aids and textbooks (the "Goods and Services").

Since 1975 or thereabouts, the Complainant has made extensive use in the course of its business of the name "HOLBORN COLLEGE" in relation to the Goods and Services in the United Kingdom.

The Complainant’s turnover in relation to Goods and Services supplied under and by reference to the mark "HOLBORN COLLEGE" was in excess of £3.7 million for the financial year ended June 30, 2000. The combined turnover in Goods and Services provided under and by reference to the mark "HOLBORN COLLEGE" in the five years to June 30, 2000, was in excess of £19 million.

The Complainant has advertised its Goods and Services extensively under and by reference to the mark "HOLBORN COLLEGE". Expenditure on advertising to June 30, 2000, was in excess of £170,000. The combined advertising and promotional expenditure in relation to the mark "HOLBORN COLLEGE" was in excess of £1,550,000 in the 5 years to June 30, 2000. For the next financial year the Complainant has committed in excess of £300,000 on advertising. (These figures include overseas expenditure).

The Complainant had produced and published in the United Kingdom several textbooks and study guides and teaching aids under and by reference to the name "HOLBORN COLLEGE". More recently, the Complainant has also published under the names of HLT publications and the Old Bailey Press, which by reputation are associated with the Complainant.

The Complainant has since 1996 maintained a website at domain address www.holborncollege.ac.uk in which its Goods and Services are promoted.

By reason of the said use of the name HOLBORN COLLEGE, the said name when used in relation to the Goods and Services has come to indicate in the United Kingdom to members of the trade and interested public the business, goods and services of the Complainant and none other.

In the premises, the Complainant is the owner of a substantial reputation and goodwill in the name HOLBORN COLLEGE when used in relation to the Goods and Services in the United Kingdom.

Further, the Complainant has a substantial goodwill and reputation in the name "HOLBORN COLLEGE" when used in relation to the Goods and Services throughout the World outside the United Kingdom.

(1) 70-75% of the Complainant’s turnover in relation to Goods and Services supplied under and by reference to the mark "HOLBORN COLLEGE" is generated outside the United Kingdom.

(2) The Complainant operates a tuition support office for the large numbers of students on its distance learning course in Hong Kong under the name "HOLBORN COLLEGE" at Suite 1712, 1 Hennessy Road, Wanchai, Hong Kong. The college was founded in 1969 and has to-date tutored tens of thousands of students.

(3) The Complainant has a substantial network of representative offices throughout the world. Representative offices are to be found in the Bahamas, Bangladesh, Cyprus, Gambia, Ghana, Greece, Hong Kong, India, Israel, Japan, Kenya, Korea, Malaysia, Mauritius, Nigeria, Pakistan, Singapore, Sri Lanka and the United States of America.

(4) The Complainant has advertised its Goods and Services extensively under and by reference to the mark "HOLBORN COLLEGE" outside the United Kingdom. Expenditure on advertising outside the United Kingdom in the financial year ended June 30, 2000, was in excess of £80,000. The combined advertising and promotional expenditure in relation to the mark "HOLBORN COLLEGE" outside the United Kingdom was in excess of £650,000 in the 5 years to June 30, 2001, (both actual and projected).

(5) The Complainant’s publications which are produced in the United Kingdom are circulated extensively throughout the world.

(6) The Complainant’s website is accessed from all over the world and the Claimant receives by e-mail many hundreds of enquiries from students per month from outside the United Kingdom.

In the premises, the mark "HOLBORN COLLEGE" and the web address holborncollege.ac.uk are trade marks or service marks within the meaning of Paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy in which the Complainant has rights.

The Complainant also plans in the near future to expand into new areas such as post-graduate business and e-commerce courses.

The Respondent is an individual known to the Complainant who formerly had a trading relationship with the Complainant and who resides at 34 Barton Court, Barons Court Road, London W14 9EH, United Kingdom.

The Respondent is the Registrant of a domain name, namely <holborncollege.com> (the "Domain Name"), which is identical with or confusingly similar to trade marks or service marks in which the Complainant has rights, namely "HOLBORN COLLEGE" (the "Complainant’s Mark") and the Complainant’s web address, <holborncollege.ac.uk> (the "Complainant’s Domain Name").

The Domain Name was registered by the Respondent on September 7, 2000. The print-out shows the Respondent as the Registrant of the Domain Name and the Registrar as CORE-11, namely CSL GmbH of Rathauser 16, 40213 Dusseldorf, Germany.

The Domain Name and the Complainant’s marks are identical. Alternatively, the Domain Name and the Complainant’s marks are confusingly similar by reason of the identity between the dominant portion of the Domain Name, namely "holborn college" and the Complainant’s Mark and the identity between the dominant portion of the Domain Name and the Complainant’s Domain.

The best particulars of confusion between the Domain Name and the trade marks and service marks in which the Complainant has rights are as follows:

The Respondent has received e-mails which were intended for the Complainant by reason of his activation of an e-mail service under the Domain Name and has thereby caused confusion to the senders of the e-mails. In particular, and without prejudice to the generality of the foregoing, between October 3, 2000, and February 20, 2001, the Respondent mistakenly received certain e-mails intended for the Complainant. This mistake arose because of the identity or confusing similarity between the Domain Name the subject of the present dispute and the Complainant’s Mark and Domain Name. It is not known whether there are further e-mails which the Respondent has failed to forward to the Complainant.

The Respondent carries on business as a photographer. The Respondent is known to the Complainant and has in the past been commissioned by the Complainant to take photographs for the Complainant.

The Respondent does not have any present trading connection with the Complainant and has not at any stage been authorised by the Complainant to make use of the HOLBORN COLLEGE mark.

There has been a recent history of litigation between the parties as more fully set out below. The litigation and subsequent cessation of business between the Respondent and the Complainant further demonstrates and emphasizes the Respondent’s lack of rights or legitimate interest in the Domain Name.

Further, the Respondent’s Domain Name was registered in bad faith and is and was being used in bad faith.

The Respondent has used the Domain Name by activating an e-mail service under the Domain Name. The Complainant specifically relies on Case No. D2000-0265 for the proposition that e-mail use is use within the meaning of Paragraph 4(a)(iii) of the Uniform Domain Name Dispute Resolution Policy.

The Respondent was fully aware by reason of his trade association with the Complainant since at least 1984 if not before, that the name "HOLBORN COLLEGE" was an unregistered trade mark and service mark in which the Complainant had rights. Further, the Respondent was aware that e-mails which he received when he activated the e-mail service under the Domain Name were not intended for him but were intended for the Complainant and that by activating an e-mail service under the Domain Name he would receive e-mails that were not intended for him. In the premises, the Respondent registered and used the Domain Name in bad faith.

The Respondent has registered and used the Domain Name in order to disrupt the business of the Complainant. The Respondent is and was aware that potential students of the Complainant make/made enquiries of the Complainant through e-mail and that the existence of the Domain Name causes enquiries to be wrongly diverted from the Complainant and that in registering the Domain Name and activating it for e-mail purposes he could and would cause disruption to the Complainant’s business. In particular, by letter dated November 13, 2000, the Respondent stated as follows:

"I have received the enclosed misaddressed e-mail from a Nigerian today, and I redeliver it to you as a courtesy to the potential student. The college will not be able to advise every potential student now and in the future which e-mail address to use. Instead of threatening me with court action, the college might instead offer to buy the domain names from me."

The Respondent has registered and used the Domain Name in an attempt to sell or transfer the Domain Name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. The Complainant relies on the letters dated October 12, 2000, and January 14, 2001, from the Respondent to the Complainant in which the Respondent again invited the Complainant to purchase the Domain Name.

The Respondent registered and used the Domain Name in an attempt to secure to himself a financial advantage which he had been denied in Court proceedings between himself and the Complainant:

(a) The Respondent brought proceedings against the Complainant under Action No. WL902374 for alleged infringement of copyright in a photograph which the Respondent took at the instruction of and under commission from the Complainant.

(b) The Respondent’s Action was dismissed by Order of District Judge Madge dated June 8, 2000. Permission to appeal from the Order of District Judge Madge was refused by Order of His Honour Judge Ford dated September 5, 2000.

(c) The Respondent registered the Domain Name immediately following his refusal of permission to appeal from the Order of District Judge Madge on September 7, 2000.

(d) By letter dated November 2, 2000, from the Respondent to the Complainant, the Respondent wrote as follows:

"As to the site statistics, as I understand it the non-existent web site for holborncollege.co.uk has been "hit" 82 times so far which suggests two things (a) that Holborn College might wish to negotiate to purchase holborncollege.co.uk and then make a link so that any surfing potential student would be redirected instantly to the site of your choice, and that (b) an actual holborncollege.co.uk site might be popular, whoever publishes it. Ditto the dot.com. HLT publications has had a free ride with one of my unauthorised photos for years. I was never informed that the photo would be used for anything but newspaper or brochure use. HLT has not paid for textbook usage and I really do want this sorted."

The matter which the Respondent sought to have "sorted" was the matter which had been resolved in the Complainant’s favour by Order of District Judge Madge dated June 8, 2000, when the Respondent’s Action was dismissed.

(e) It is to be inferred from the matters set out above that the Respondent is seeking to re-litigate or have redecided matters which have finally been decided in a United Kingdom Court of competent jurisdiction by using the Domain Name to exert improper pressure on the Complainant to pay further sums for the use of the photograph for which it has already paid notwithstanding the Orders of District Judge Madge and His Honour Judge Ford and that this was the intention of the Respondent when he registered the Domain Name immediately following the Order of His Honour Judge Ford dated September 5, 2000.

In the premises, in accordance with Paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution Policy and for the reasons set out above, the Complainant respectfully requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the Domain Name be transferred to the Complainant.

The Respondent has sent various e-mails to the Center by way of Response to the Complaint.

On March 26, 2001, the Respondent sent to the Center an e-mail containing the following statement

"May I say at this juncture (and without reading the text of anything you have written), that I am delighted this dispute has been taken up with ICAAN (sic). The complainant has acted in extreme bad faith and has published one of my images on book cover after book cover without paying for or obtaining permission for this use. In pro photography fees follow usage. I am still waiting to be paid by this college with its £75 million turnover."

On April 18, 2001, the Respondent sent to the Center an e-mail containing the following:

"My purpose in buying holborncollege.com was and is to - if necessary – use the site as an on line newspaper re Holborn college. I have not done so so far - hoping that the college will come to its senses and pay me for unlawful use of my photograph on several of its law book covers. The photograph in question was commissioned for brochure use only; no mention was made re front cover of textbook use several years later. There is a great deal of difference re the fees for a one time inside brochure use for a photo and the appropriate fees for front covers on several legal textbooks. The college believes it has bought all rights. With respect it most certainly hasn't.

I ask your permission to send you copies of what I have already sent to Nominet re the similar holborncollege.co.uk dispute but in the meantime I would ask you to bear in mind the two dot com cases (a) Manchester Airport and (b) BAA - in particular I understand that the owner of the BAA site used the site to air his grievances against the British airports authority so there would be a precedent if I were to use the site as an on line newspaper. No I would not say anything untrue or libellous or defamatory it goes without saying. I also understand that the owner of manchester airport.com was allowed to keep his site even though he was not in fact manchester airport and that his sole purpose appears to have been to sell the domain name at a profit. it was adjudged that there was nothing illegal or reprehensible about this.

WIPO must be aware that my domain name holborncollege.com is my only lever against, in my opinion, a rip off. I do not have the funds for a good media lawyer. In my opinion Holborn college has acted reprehensibly and I suggest that if it wants to end this dispute that (a) it should pay me what it owes me for the new use of my photograph and (b) for all my time and trouble over this affair. Lastly I have made no pre emptive buy; I have not cyber squatted. I came into the market after holborn college and bought a domain name which it only realised it wanted after I had bought it.

Lastly, it may give the college something to do by sending a huge file of bumph but how does its financial accounts have any bearing on an intellectual property dispute?"

On April 20, 2001, the Respondent sent to the Center and e-mail containing the following:

"I see I have been sent some of Holborn college's financial reports. Don't know why, but WIPO should note that the college made losses in 1998 and 1999 and only made a very small profit of 5% on turnover for the year ending 2000.

I first began to contact the college re unauthorised use of my photograph as part of several textbook cover in May 1999. the college did everything possible to procrastinate, and to pooh pooh my claim but the bottom line is this;- the college was living beyond its means and on a high overdraft. Do you think it was in any mood to pay a one time supplier several thousand pounds?

Mr. Grenier refused to tell me on how many books my photograph appeared.

WIPO must understand that if a client commissions me (a photographer) and pays for a photograph for brochure use then it most emphatically does not mean that it has the right to use the same photo for textbook cover use several years later (a) without telling me and (b) without paying me the going rate - otherwise the use is one obtained by fraud and deception.

I wish to make it clear that it has never been my intention to pass myself off as the college (why should I?) or to solicit e-mails, my aim was and is to have the name to - if necessary - act as an on line newspaper and discussion forum re the college. Without the domain name I have no lever against the college; the name is - if you like - a lien on my intellectual property (i.e. the unlawful book covers) that the college is using without payment.

If my work is good enough to advertise Holborn College's textbooks then I insist on an appropriate payment. You won't believe how quickly this dispute can be resolved if and when the college pays me my fees and pays me for my considerable time and trouble in my fight to get paid.

Ask the college straight "Have you or have you not paid Mr. Yeats for the use of his photograph on many many editions of a legal textbook? Did you ask his permission before you used the photograph in this way?" the onus is always on that of the publisher to clear all rights before publishing. It is not up to the photographer to have to police a misguided former client."

According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(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.

It is prima facie obvious that the Domain Name is virtually identical to the Complainant’s HOLBORN COLLEGE mark and, therefore, that they are confusingly similar.

The Respondent makes it clear from his e-mails to the Center that his intention in registering the domain name was "as a lien on my intellectual property (i.e. the unlawful book covers) that the college is using without payment" in other words to hold as collateral to assist the Respondent’s bargaining position in a separate dispute over copyright in photographs. After the dispute arose and after the Respondent read "the two dot com cases (a) Manchester Airport and (b) BAA" commenting "I understand that the owner of the BAA site used the site to air his grievances against the British airports authority so there would be a precedent if I were to use the site as an on line newspaper" the Respondent stated that this was his intention. There is no evidence that this is, in fact, the case and no mention of this before the Respondent appears to have read the WIPO cases referred to. In fact, I find the true purpose was to use the domain name to obtain leverage in a separate dispute not the subject of these proceedings. Accordingly, I hold that the Respondent does not have any rights or legitimate interest in the Domain Name.

Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:

"[the Respondent] has registered or has 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 trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name"; and "by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."

It appears clear from the evidence that the Respondent registered the domain name to obtain payment from the Complainant of a sum in excess of his out-of-pocket registration costs in respect of the name because the Respondent felt the money was owed to him by the Complainant due to facts the subject of a separate dispute which are not the subject of these proceedings. Further, by operating an e-mail on the address the Respondent has been receiving e-mail meant for the Complainant sent by Internet users confused into thinking that e-mail sent to <holborncollege.com> would be received by the Complainant. The Respondent suggested that in order to prevent this the College should buy the name from him. Accordingly, it appears clear that the Respondent hoped by his registration of the name and receipt of e-mail intended for the Complainant to obtain payment over and above his out-of-pocket registration expenses. The separate dispute referred to by the Respondent as justification for this is not properly the subject of these proceedings and indeed has been litigated separately by the parties. Accordingly, the Respondent has registered and used the domain name in bad faith.

In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant’s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.

Accordingly, in the light of the above, the panelist orders that the registration of the Domain Name <holborncollege.com> be transferred to the Complainant.

Dawn Osborne
Sole Panelist

Dated: May 21, 2001