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David Evans v. Terrence Koeman, Antichrist Holding (International) B.V. [2004] GENDND 507 (7 April 2004)

1. The Parties

The Complainant is David Evans, New Media Director, GAME Digital Ltd., Berkshire, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Terrence Koeman, Antichrist Holding (International) B.V., Hilversum, Noord-Holland, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <barrysworld.com> (the "Disputed Domain Name") is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003. On December 24, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2004, Register.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, in that the Complainant had not filed four copies of the original Complaint with the Center as required by paragraph 3(c) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Complainant filed these four copies of the Complaint on March 1, 2004. 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 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 March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Response was filed with the Center on March 9, 2004.

The Center appointed Alistair Payne as the sole panelist in this matter on March 24, 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 Game Group PLC is the proprietor of a UK trade mark application dated April 1, 2003, for the series of marks BARRYSWORLD and BARRYSWORLD.COM in classes 9, 16, 28, 35, 38, 41 and 42 (the "Trade Mark Application").

5. Parties' Contentions

A. Complainant

1. The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

BarrysWorld was an online gaming service for PC video gamers, owned and operated by the Complainant, that offered a variety of services including bookable game servers, file download libraries, web chat and email. Of BarrysWorld's 104,000 members, 42,198 still have a <username>@barrysworld.com email address.

The <barrysworld.com> domain name was established in 1997, and has been owned and operated by the individuals and subsequently the limited companies operating the service since that date. In February 2001, the Complainant company (known at the time as EB Media PLC) purchased the BarrysWorld service from BarrysWorld Ltd (in liquidation), including the Disputed Domain Name, and continued to run the service.

On March 20, 2003, the Respondent stole the Disputed Domain Name from the Complainant via a hack or identity theft at its then current registrar Network Solutions, LLC, who then transferred it to Register.com. The Respondent placed his own DNS servers into the domain record allowing him to control and intercept all traffic (including email) on the domain name. Register.com, on request from the UK National Hi-Tech Crime Unit and the US FBI placed the domain name on registrar lock with only the Complainant's name servers on the domain record so the existing BarrysWorld service was maintained whilst a criminal investigation was conducted.

The Complainant has in the meantime accelerated its plans to migrate the BarrysWorld service to its rebranded home page. All web services have been migrated but just over 42,000 customer email accounts still exist at its <barrysworld.com> domain name.

2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

At no time has the Complainant or any agent of the parent company of the Complainant licensed or sold any rights to the Disputed Domain Name, or any aspect of the service operated at that domain name to the Respondent. The Respondent has not used and is not known to the public as BarrysWorld either in business or personally.

3. The Disputed Domain Name was registered and is being used in bad faith

The facts that the Respondent stole the Disputed Domain Name and reconfigured the domain record thus disrupting the Complainant's business without any communication to the Complainant of his intent demonstrates suitable registration and ownership of the Disputed Domain Name in bad faith.

B. Respondent

1. The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights

The Respondent acquired the Disputed Domain Name from the then current administrative contact for the Disputed Domain Name as listed on a Network Solutions, LLC WHOIS search on March 17, 2003. The Respondent made substantial effort to confirm that this person was authorised to sell the Disputed Domain Name and obtained a company record from the UK Companies House, which stated that the person was a director of BarrysWorld Ltd, and that the company was in voluntary liquidation. This was consistent with the reason given for the sale.

After the purchase of the Disputed Domain Name the Respondent added its own servers to the domain record as tertiary and quartiary nameservers, which were configured to automatically retrieve the DNS zone from the servers of BarrysWorld Ltd, which remained primary and secondary nameservers. In this way the Respondent's nameservers acted as backup servers to the servers of BarrysWorld Ltd, but did not allow the Respondent to control, intercept or manipulate any traffic to or from the Disputed Domain Name.

The Complainant has abandoned all of its 104,000 customers by closing down their email services and refusing to cooperate with users to find a way to keep their email addresses.

The Trademark Application is dated 15 days after the purchase of the Disputed Domain Name by the Respondent.

2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

To its best knowledge the Respondent acquired the Disputed Domain Name and the associated rights legitimately from the previous owner. An agreement to sell the Disputed Domain Name as well as the associated rights was prepared by the Respondent and signed by the administrative contact of the Disputed Domain Name and the Respondent. A copy of this agreement is annexed to the Response.

The Respondent has been making a legitimate fair use of the Disputed Domain Name by keeping the agreement to allow BarrysWorld Ltd use of the Disputed Domain Name until its liquidation and closure was finalised. The Respondent will make a legitimate fair use of the Disputed Domain Name in the future by using it in a totally different market with permission from BarrysWorld Ltd, which will be different to the Complainant's business.

The Respondent acquired the Disputed Domain Name for specific marketing purposes (being multi-bank online payment systems) and it is bound by non-disclosure agreements covering the intended use of the Disputed Domain Name. However, there is no possibility of consumers being confused between a gaming service for PC video gamers and an on-line banking system.

3. The Disputed Domain Name was registered and is being used in bad faith

The Respondent denies any and all accusations that it fraudulently acquired the Disputed Domain Name.

The Complainant was contacted several times to request permission for a DNS zone transfer and to inquire about the dispute, but has not contacted the Respondent other than through this dispute.

C. Request for a finding of Reverse Domain Name Hijacking

The Respondent requests the Panel to consider this administrative proceeding to be an attempt by the Complainant to reverse hijack the Disputed Domain Name in light of the Complainant's current financial situation and the rumor that a higher bidder has come forward after the sale. This is supported by the fact that there were other domain names included in the March 2003 sale to the Respondent by the then administrative contact of the Disputed Domain Name but only the most valuable domain name was included in this administrative proceeding.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name to the Complainant), the Complainant must prove that each of the three following elements are present:

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

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

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element of the Policy requires the Complainant to prove (a) that it has rights in a trade mark or service mark, and (b) that the Disputed Domain Name is identical or confusingly similar to such trade mark or service mark.

The Disputed Domain Name is clearly identical (excluding the generic ".com" suffix) to the BARRYSWORLD mark and therefore the issue for the Panel to consider under this element is whether the Complainant has rights in this mark.

The Trade Mark Application is in the name of The Game Group PLC and was made after the date that the Respondent says that it validly acquired the Disputed Domain Name. The Complainant offers no evidence of the relationship between the individual named as the Complainant, the company listed as the Complainant and The Game Group PLC.

The Complainant has provided a copy of a deed addressed to EB Media PLC, dated February 26, 2001, and executed by the liquidators of BarrysWorld Ltd, acting on behalf of BarrysWorld Ltd, pursuant to which BarrysWorld Ltd undertakes to EB Media PLC not to sell its goodwill, if any, without first offering to EB Media PLC the right to buy such goodwill at a nominal amount. However, there is no evidence to suggest that the Complainant did in fact purchase such goodwill prior to the date of its Complaint. In any event it is unclear from the Complainant's evidence whether the individual or the company listed as the Complainant has made sufficient use of the BARRYSWORLD mark to establish any common law rights in that mark for the purposes of this element of the Policy.

Even if the Panel was to find that the Complainant has rights in the BARRYSWORLD trade mark, the Complaint would fail for the reasons set out below.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trade mark 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 divert consumers or to tarnish the trade mark or service mark at issue.

The Panel accepts, on the evidence, that the Respondent (as an individual, business or other organisation) has not been commonly known by the Disputed Domain Name. The Respondent provides some evidence to prove that it acquired the Disputed Domain Name in good faith from a director of BarrysWorld Ltd, but it says that it is bound by non-disclosure agreements so cannot describe the exact nature of the marketing purposes for which it acquired the Disputed Domain Name.

The Complainant fails to rebut these contentions, instead it alleges that the Complainant purchased the Disputed Domain Name from BarrysWorld Ltd in 2001, and that the Respondent stole the Disputed Domain Name from it via a hack or identity theft. The sale and purchase agreement between BarrysWorld Ltd (in liquidation), its liquidators and EB Media PLC annexed to the Complaint does not list the domain names purchased by EB Media PLC and the Complainant provides no other evidence that proves that it has at some point in time been the owner of the Disputed Domain Name.

For the above reasons and on the evidence, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests for the purposes of this element of the Policy, and accordingly the Complaint fails.

The Panel notes that this case seems not to be a typical cybersquatting case as the UDRP is designed for. Furthermore, the Panel would like to emphasize that its finding in this UDRP case should not be conceived as detrimental to Complainant's rights under any relevant national law.

C. Registered and Used in Bad Faith

As the Panel has noted above, the Complainant is required to establish that each of the three elements of the Policy are present to succeed with its Complaint. The Complainant has failed to establish the first two elements of the Policy and accordingly it is not necessary for the Panel to consider this element of the Policy.

D. Respondent's Allegation of Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to deprive a registered domain name holder of a domain name." In the present administrative proceeding, the Panel finds that based upon the evidence presented the Complainant, although ultimately unsuccessful with its Complaint, did not lack a good faith basis for bringing its Complaint. Accordingly, the Panel denies the Respondent's request for a finding of reverse domain name hijacking against the Complainant.

7. Decision

For all the foregoing reasons, the Complaint is denied.