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Little House Publishing Limited v. Mr. Keith Davis [2004] GENDND 1387 (3 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Little House Publishing Limited v. Mr. Keith Davis

Case No. D2004-0508

1. The Parties

The Complainant is Little House Publishing Limited, of Shaftesbury, United Kingdom of Great Britain and Northern Ireland, represented by Lawdit Solicitors Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mr. Keith Davis, of Heathfield, East Sussex, United Kingdom of Great Britain and Northern Ireland, who represents himself in these proceedings

2. The Domain Names and Registrar

The disputed domain names <littlehousecompany.com> (the “first domain name”) and <thelittlehousecompany.com> (the “second domain name”) are registered with Easyspace.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2004. On July 13, 2004, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain names at issue. On August 5, 2004, Easyspace transmitted by fax 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. The Center verified that 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 August 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2004. The Response was filed with the Center on September 4, 2004.

The Center appointed Nasser A. Khasawneh as the Sole Panelist in this matter on September 16, 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

1. The Complainant has registered the word/device mark, THELITTLEHOUSECOMPANY.CO.UK, in the United Kingdom. The date of effective registration is March 9, 2002;

2. The Complainant registered the domain name <thelittlehousecompany.co.uk> on September 11, 2000;

3. The Complainant’s trading name is “Little House Publishing Limited;”

4. The Respondent has registered <littlehousecompany.com> on August 24, 2002, and <thelittlehousecompany.com> on July 31, 2002, with the domain name registrar Easyspace;

5. The Respondent is the enlisted registrant of the domain name <propertybroker.com>;

6. In a news report in the Financial Mail on Sunday, dated August 25, 2002, the Complainant’s site, <thelittlehousecompany.co.uk>, was referenced side by side with the site, <propertybroker.co.uk>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

• The disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant claims that the disputed domain names infringe its United Kingdom-registered trademark, THELITTLEHOUSECOMPANY.CO.UK, in which the Complainant has invested heavily since September 2000 (including several instances of paid advertising in British media organizations). The Complainant contends that the second domain name is identical for the purposes of the Policy to its registered trademark (the only difference being in the domain name prefix). The Complainant further contends that the first domain name is confusingly similar to the registered trademark of the Complainant, with the only difference being the omission of the word “the;”

• The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant claims that the Respondent is the Director of a company, Axle Publishing Limited (“APL”), which offers its services under the domain names <propertybroker.com> and <propertybroker.co.uk>; the former domain name is registered by the Respondent and the latter is registered by APL. These two sites offer the same services as that of the Complainant, i.e. the service of assisting individuals to purchase and sell property online without the requirement of an estate agent, and the Complainant alleges that APL is a competitor of the Complainant. The Complainant refers to a search at the site “www.archive.org” which allegedly shows that the Respondent had linked the first domain name to APL’s Property Broker services.

• The Respondent has made no lawful use of the disputed domain names, having possibly used the first domain name to link visitors to “www.propertybroker.com” (a contention supported by a source code printout) while the second domain name was used to link visitors to promote the website “cottage Toys” (the first domain name was subsequently used to link visitors to a site that deals in doll houses). The Complainant contends that the disputed domain names were registered for the purpose of preventing the domain names from being registered by the Complainant.

• The Respondent had registered the disputed domain names while fully aware of the Complainant’s business activity.

• The disputed domain names were registered and used in bad faith. The Complainant contends that the Respondent’s use of the domain names in association with doll houses was aimed at blocking the Complainant from securing domain names, which reflect its trademark. The Complainant maintains that the Respondent knew or should have known of the Complainant’s registered and unregistered rights; this is particularly supported by the allegation that the Respondent is a Director of APL, the Complainant’s competitor. The Complainant also claims that the Respondent has sought to disrupt or threatened to disrupt the Complainant’s business by causing confusion. The disruption or threatened disruption allegedly includes the misdirection of emails due to confusion of the disputed domain name with the Complainant’s name.

B. Respondent

The Respondent contends that:

• He had not heard of the Complainant at the time of first registration of the disputed domain names. The Respondent swore to this by way affidavit;

• The Complainant’s registration of the mark THELITTLEHOUSECOMPANY.CO.UK is only a logo registration. Furthermore, the Respondent stresses that the registration of this trademark postdates the Respondent’s registration of the disputed domain names.

• The Complainant has submitted an application to register “The Little House Company” as a text only mark in the United Kingdom. This application was filed on June 30, 2004, and the application is pending. The Respondent is confident that this application will be rejected due to the generic nature of the words constituting the mark in question. In support of this contention, the Respondent produced Companies House search results showing that there are 8 companies in England and Wales that have the words “Little House” in their registered name (in addition to the Complainant);

• The Complainant has exaggerated the number of visitors to its site, and that, in fact, the Complainant is a very small company (with no offline presence). The Respondent also takes issue with the Complainant’s assertions regarding its advertising campaigns;

• The Complainant has failed to produce any evidence that the words “the little house company” have ever appeared without the suffix “.co.uk”

• There are many instances where different owners operate websites differing only by the domain suffix. If all these were considered identical, there would be little point in the existence of such domain suffixes, especially in the case of domain names consisting of generic words.

• The Complainant had registered the domain name <thelittlehousecompany.co.uk> on September 11, 2000, but chose not to register the same name with the suffix “.com”

• No email intended for the Complainant has ever been addressed in error to the disputed domain names;

• The visitors to the disputed domain names and the Complainant’s site are different. The Respondent attaches search results from the “www.alexa.com” in support of this point;

• Respondent is making legitimate use of the disputed domain names. The Respondent claims that he registered the domain names on behalf of a family member who has a keen interest in the history and manufacture of dolls’ houses. This family member will soon develop a site to reflect her hobby;

• The Respondent claims that the domain names link to sites already established whilst waiting further development, the Respondent has no commercial arrangement with these sites, and has no intention of making any financial gain from the disputed domain names at any time;

• The domain names have not been registered or used in bad faith. The Respondent offers, inter alia, the following arguments in support of this contention: He has never offered the domain names for sale to the Complainant or any other party for commercial gain, this is the only time that a complaint has been filed against one of his domain names, and he had no knowledge of the Complainant’s business before registering the domain names.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must convince the Panel that three cumulative conditions are met:

(a) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the domain name has been registered and is being used in bad faith.

The Panel will now consider each of these three tests in turn:

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it has a valid registration of THELITTLEHOUSECOMPANY.CO.UK in the United Kingdom. The trademark is registered as a combination of a design and the words “thelittlehousecompany.co.uk”, with the effective date of registration being March 9, 2002. This was also confirmed by the Panel through an online trademark search of the website of the UK Patent Office. The Panel also accepts the fact that the Complainant has used the said mark as the identifier of its online property business for a number of years. The Complainant has established goodwill and a substantial business reputation under the trademark THELITTLEHOUSECOMPANY.CO.UK and the name “Little House Publishing”. This is evidenced by the news reports and advertisements referenced in the Complaint. The average reasonable customer, who is seeking to avail of the type of property resale services offered by the Complainant, would associate this trademark with the Complainant.

A word-by-word comparison of the Complainant’s registered trademark with the disputed domain names immediately reveals the extent of the confusing similarity between them. The only differences between the Complainant’s trademark and the first domain name is the omission of the word “the” at the beginning of the phrase, and in the gTLD (generic Top Level Domain) denominator “.com” as opposed to the ccTLD (country code Top Level Domain) denominator in the Complainant’s trademark, “.co.uk”. It is the Panel’s view that these differences are insignificant when considering whether or not a trademark infringement occurred. The Complainant has a registered trademark, the core of which are the joined words “thelittlehousecompany”. The first domain name copies three of those four words in the same sequence.

The same logic, with even greater emphasis, applies to the second domain name. In this case, the domain name is an identical copy of the Complainant’s trademark, with the only difference being in the use of the gTLD “.com”. The second domain name uses the exact same four words that constitute the core of the Complainant’s trademark: THE LITTLE HOUSE COMPANY.

The Panel has considered carefully all the arguments presented by the Respondent, but finds them unconvincing. The Respondent states that the Complainant’s registered trademark consists solely of a logo. While it is true that the trademark registration in the United Kingdom is linked to a particular design, the trademark clearly encompasses the phrase “thelittlehousecompany.co.uk”. The latter phrase (as opposed to the individual words per se) avails of trademark protection and the Respondent’s domain names copy this phrase substantively and in such a way that would confuse the average customer within the relevant sector of the public. It is highly likely that consumers will consider that the disputed domain names belong to the Complainant or are strongly associated therewith.

The Respondent draws attention to the fact that the registration of the Complainant’s trademark post-dates the registration of the disputed domain names. While it is true that the registration date of the trademark (August 16, 2002) is subsequent to the registration of the second domain name, this is not the case for the first domain name (which appears on the WHOIS database to have been registered on August 24, 2002). Furthermore, the Panel underlines the fact that the filing date of the Complainant’s trademark was March 9, 2002, i.e. prior to the registration of both disputed domain names. The filing date is regarded as the effective date of registration. The Registration Certificate for the Complainant’s trademark states that the trademark “has been registered … as of the date March 9, 2002”.

Even if the Respondent’s domain name registration preceded the registration of the Complainant’s trademark, the Complainant still has a very strong case. The undisputed fact is that the registration of the Complainant’s domain name, <thelittlehousecompany.co.uk>, dates back to the year 2000, two years before the registration of the first disputed domain name. It is also beyond doubt that the Complainant had been operating the business under this trademark before the disputed domain name registration. Well before the Complainant registered the said trademark, it had been using it extensively. This use confers common law trademark rights to the Complainant.

There have been several WIPO Administrative Panel Decisions in support of this conclusion, i.e. the first test under paragraph 4(a) of the Policy may still be met even though the disputed domain names were registered before the trademark in question. In other words, the first test under paragraph 4 of the Policy requires the existence of rights in a trademark, but the date of such rights registration is not decisive. In the case of MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. Case No. D2003-0598, the Panel held that the trademarks of the Complainant were “sufficient for the purposes of the Policy, paragraph 4(a)(i), although it is noteworthy that they are quite recent and do not appear to predate the registration of the domain name in question”.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the registered and used trademark of the Complainant.

B. Rights or Legitimate Interests

The Respondent has not provided proof of substantial and effective use of the disputed domain names. The Respondent is primarily claiming that he has reserved the domain names for future use by a family relative who has an interest in doll houses. Both domain names link to other sites held by third parties that sell doll houses. The Panel was able to verify this in relation to the second domain name, which links to another site, “www.cottage-toys.co.uk”. As for the first domain name, an error page appeared whenever the Panel clicked on it.

The Respondent also states that he is not making any commercial use of the site, and has no intention of doing so.

The arguments of the Respondent fail to convince the Panel that he has rights or legitimate interests in the disputed domain names. The Panel’s conclusion is strengthened in light of the illustrations of “legitimate interest” that are presented in Paragraph 4 (c) of the Policy. In this paragraph, the following are listed as circumstances that, if proven, would demonstrate a respondent’s legitimate interest or right in a disputed domain name:

(i) Use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent is commonly known by the domain name, even without acquiring trademark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly diverting consumers or to tarnish the trademark or service mark at issue.

The Panel holds that none of the above circumstances apply to the case at hand. The Respondent, by his own admission, is not currently using the disputed domain names to offer goods or services. He claims to have future intentions for such use. The question then becomes this: Has the Respondent made any “demonstrable preparations” to use the domain names in connection with a bona fide offering of goods or services? The Panel finds that the Respondent has not. He argues that the sites were registered for the benefit of a relative who will activate it as soon as she finishes a media studies course. This does not amount to “demonstrable” preparation to use the disputed domain names.

As for (ii) above, it is beyond doubt that the Respondent is not commonly known by the domain name. As for (iii), while the Respondent has stated that he has no commercial objectives regarding the sites, the Panel does not find that the current use of the domain names amounts to fair or legitimate use. Using a site to direct visitors to another site does not amount to fair or legitimate use, especially when such redirection is still occurring two years after the registration of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel has carefully considered both the Complainant’s and Respondent’s statements regarding the issue of bad faith. It is undoubtedly the most difficult issue in this case.

The Respondent has made a number of valid points. First of all, the actual visitors of the sites of the disputed domain names seem to be different than those visiting the Complainant’s site. In this regard, it seems to the Panel unlikely that a visitor intending to sell his property online would be interested in a dolls house site (if directed there involuntarily). Secondly, the Respondent highlights the fact that he had never offered the domain names for sale to the Complainant (thereby denying the example of bad faith in Paragraph 4(b)(i) of the Policy).

While the Panel is sympathetic to several of the arguments made by the Respondent, it must weigh these in the context of the total body of evidence and surrounding circumstances. First of all, the Panel finds the Complainant’s references to other domain names registered by the Respondent instructive. The Panel checked on “www.register.com” the registration details for the site “www.propertybroker.com”, and confirmed that the registrant is indeed the Respondent. Furthermore, the email of the Administrative contact for this site is listed as follows: webmaster@thelittlehousecompany.com. The Panel visited the site “www.propertybroker.com” and found that it is running a business that is almost identical to that of the Complainant’s “www.thelittlehousecompany.co.uk”. The Panel also found that the site “www.propertybroker.co.uk” is a mirror site of “www.propertybroker.com”

It is also worth noting here that, in the above-referenced report in the Financial Mail on Sunday, the Complainant’s site “www.thelittlehousecompany.co.uk” and “www.propertybroker.co.uk” are listed side by side as “websites for private sellers”. While it is conceivable that the Respondent did not read this particular report on the day, the Panel feels that this report presents a good example of how the Respondent and the Complainant seem to be in the same field of business.

The Respondent’s connection to “www.propertybroker.com” as verified by the Panel, and the link with Axle Publishing as outlined by the Complainant, throw significant doubt over the Respondent’s intentions behind the registration of the disputed domain names. The Panel is puzzled by the Respondent’s decision not to tackle this issue in his response. In light of what the Panel has confirmed about the business activities of <propertybroker.com> and its direct link to the Registrant, the Respondent’s argument that the disputed domain names reflect nothing other than a relative’s interest in doll houses becomes rather unpalatable.

Furthermore, in considering the issue of bad faith, the Panel reiterates the points made in section 6 (A) above regarding the similarity between the Complainant’s trademark and the disputed domain names. The fact that the disputed domain names copy the main words in the Complainant’s trademark and in the exact same sequence calls into serious question the credibility of some of the Respondent’s responses.

In conclusion, the Panel finds that, on a balance of probabilities, the third test under Paragraph 4(a) has been established successfully by the Complainant.

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 names <littlehousecompany.com> and <thelittlehousecompany.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: October 3, 2004