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GSH Group Limited v. Richard Mandanice [2004] GENDND 1096 (30 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

GSH Group Limited v. Richard Mandanice

Case No. D2004-0529

1. The Parties

The Complainant is GSH Group Limited, Staffordshire, United Kingdom of Great Britain and Northern Ireland, represented by Wragge & Co., United Kingdom of Great Britain and Northern Ireland.

The Respondent is Richard Mandanice, of Delson, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <georgeshall.com> (the “Domain Name”) is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2004. On July 20, 2004, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On July 20, 2004, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 23, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2004.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on August 19, 2004. 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.

4. Factual Background

The Complainant is proprietor of a UK and European Community trademark for the word mark GEORGE S HALL. Both of these trademarks were originally registered by Tantra SA, which was previously a major shareholder of the Complainant. In 2002, the Complainant purchased the shares back from Tantra SA and Tantra SA assigned both the UK and Community trademarks to the Complainant. Details of these registrations are as follows:

UK Trademark Number: UK2138705

Mark Text: GEORGE S. HALL

GEORGE S HALL

Type: Word

Date of Registration: March 13, 1998

Class: 35, 37

Effective Assignment Date: March 28, 2002

With regard to the UK trademark copies of the registration certificate; trademark assignment documents; requests to change proprietor’s name on the register; and an extract from the UK trademark register are provided at Annex D, tabs 1-4 to the Complaint.

Community Trademark Number: 001095462

Mark Text: GEORGE S HALL

Type: Word

Date of Registration: April 19, 2000

Class: 35, 37

Effective Assignment Date: March 28, 2002

With regard to the Community trademark copies of the registration certificate; request for transfer of ownership; confirmation of change of proprietor’s name on the register; and an extract from the trademark register are provided at Annex E, tabs 1-4 to the Complaint.

Both of the registrations are valid and subsisting.

The Complainant is recognized as one of the market leaders in the field of facilities management commanding 15% of the facilities management market in the United Kingdom. The Complainant also has a presence in the United States of America and Continental Europe.

The Complainant was originally founded in 1895 by George Scarr Hall and has over the years continued to expand both in geographic coverage and scope of services offered. The Complainant has operated its facilities management business under various forms of the George Hall name, including the name GEORGE HALL and GEORGE S HALL, from 1997 to April 2003. In March 1998 and April 2000, Tantra SA (a majority shareholder of the Complainant) registered UK and Community trademarks for the word mark GEORGE S HALL. These registrations were assigned to the Complainant in March 2002. The trademarks have been used throughout the United Kingdom by the Complainant in relation to its facilities management business since the dates of registration. The Complainant also registered the domain name <georgeshall.com>, which it used to promote its business until it was allowed to lapse in 2003, when the Complainant changed its name from George S Hall to GSH Group Limited. However, this year one of the UK companies within the group, company registration number 03162289, formally assumed the corporate name George S Hall Limited (see the corporate group structure provided at Annex G to the Complaint). The Complainant is well known in the United Kingdom in relation to the facilities management services it has provided under the GEORGE S HALL trademarks and there is residual goodwill attached to the trademarks.

In May 2004, the Complainant discovered the Domain Name registration when one of the Complainant’s clients notified it about the Domain Name and website. Until the beginning of July 2004, the Domain Name registration resolved to the website entitled ‘Free-For-All.com’ which contained pornographic material. Since then, the Domain Name leads to a webpage informing the user that the Domain Name has expired and invites the user to click on an icon to renew the Domain Name. A search of the Uwhois database shows that the Domain Name was updated on July 2, 2004 and that it is due to expire July 1, 2005. The activities set out above and the use of the Complainant’s trademark are without the authority of the Complainant.

Following the discovery of the Domain Name registration, the Complainant, through its legal representatives Wragge & Co, attempted to contact the Respondent on June 25, 2004, by registered post and email but has to date received no response. Copies of this correspondence are provided at Annex L to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

(i) The Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name;

(iii) The Domain Name has been registered and is being used in bad faith;

(iv) The registered company name ‘GEORGE S HALL LIMITED’ is one of the subsidiary and holding companies of the Complainant group;

(v) The Respondent (as an individual, business or other organization) has never been commonly known by the Domain Name and has never acquired any trademark rights in the mark GEORGE S HALL or any derivatives thereof;

(vi) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain and is therefore misleadingly diverting consumers away from their intended direct route to the Complainant’s website;

(vii) There is no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could use the Complainant’s trademarks or use the Domain Name;

(viii) The Respondent is not making a legitimate non-commercial use of the Domain Name given its content; nor is it making a fair use of the Domain Name given the description that lies at the heart of its use;

(ix) The pornographic nature of the ‘Free-For-All.com’ website tarnishes the GEORGE S HALL corporate name and the goodwill which subsists in the Complainant’s trademarks; and

(x) There is evidence that the Respondent (or corporate entities with which the Respondent is associated) has made other registrations of recently expired domain names, which incorporate well known trademarks, and has in some instances redirected such domain names to pornographic websites. This suggests that there is a pattern of behavior by the Respondent of acquiring domain names in which it has no legitimate interest for the purpose of capitalizing on the capacity of said lapsed domain names to generate residual traffic and to divert such traffic to pornographic sites which the Respondent operates or with which it is associated.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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.

Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Rule 14(b); see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, Complainants must prove each of the following:

(i) the Domain Name is identical or confusingly similar to Complainant’s trademark or service mark; and

(ii) 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.

A. Identical or Confusingly Similar

The Complainant has registered the GEORGE S HALL trademarks in the UK and the European Community in connection with two classes of services (see Annexes D and E of the Complaint). The Domain Name wholly incorporates Complainant’s distinctive trademarks, excluding the spaces between “george”, “s” and “shall”, and as such creates sufficient similarity to be confusingly similar (see Section 4(a) of the Policy).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark pursuant to the Policy, Paragraph 4(a)(i).

B. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. In connection with the burden of proof, several WIPO decisions have held that “once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the Domain Name; the Panel further notes that the Respondent has not, and has never been, commonly known by the Domain Name. The Panel’s view is that these facts are accepted as they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no legitimate interests or rights in the Domain Name pursuant to Paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Section 2), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are well known worldwide, it is unlikely that the Respondent, at the time of registration of the Domain Name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices the UK or European Community would have made Complainant’s registrations known to the Respondent.

The Respondent has, in using the Domain Name, diverted Internet users to a pornographic website. The mere fact of diverting users in this misleading manner can be further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554, at par. 8), March 9, 2000)).

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered the Domain Name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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 Domain Name <georgeshall.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Date: August 30, 2004