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Wincanton PLC v. Peter Colman [2004] GENDND 804 (6 June 2004)

1. The Parties

The Complainant is Wincanton PLC of Wincanton, Somerset, United Kingdom of Great Britain and Northern Ireland represented by Charles Philips of Wincanton PLC.

The Respondent is Peter Colman of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain name <wincanton.com> is registered with Melbourne IT Trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2004. On January 27, 2004, the Center transmitted by email to Melbourne IT Trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On January 28, 2004, Melbourne IT Trading as Internet Name Worldwide 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.

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 January 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2004. An extension of time was granted by the Center and the Response was filed at the Center on February 26, 2004. The Respondent elected to have the dispute decided by a three-member Panel. Consequently, the Center appointed Clive Duncan Thorne, Charters Macdonald-Brown and Dennis A Foster as panelists in this matter on April 1, 2004. The Panel finds it was properly constituted. Each member of the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant filed a Reply with the Center on March 24, 2004. The Complainant sought permission for the Reply and documents annexed at Annex C to the Reply to be put before the Panel for its consideration under Rule 12 of the Policy. The Panel has considered this request. The Panel agrees that it should consider the Reply. The reason for this is that the contents of the Reply exhibit copies of trademark certificates and copies of certain emails which are referred to by the Respondent in its Response but which he indicated were lost. In view of the fact that the Reply does not raise fresh issues but assists the Panel with regard to evidential gaps in both the Complaint and the Response, the Panel exercised its powers under Rule 12 to admit the Reply.

4. Factual Background

According to the Complainant, it is a leading provider of “supply chain solutions” within Europe. It designs, implements and operates creative solutions for customers in 15 countries. It has a turnover in excess of 2 billion Euros and employs 24,400 staff across 360 locations. Warehousing, transport and specialist service care are provided for customers in a range of sectors including the automotive, retail, FMCG (sic), petrochemical and manufacturing.

The Complainant submits that it can trace the origins of its business back nearly 100 years to the early 1900s, when a company was established in Wincanton, Somerset, England providing primarily engineering services in relation to the dairy industry. Later the company diversified to include milk haulage and was taken over by the Cow & Gate/United Dairies business which subsequently became Unigate Plc. The Complainant was demerged from Unigate's successor in name, Uniq Plc in May 2001, and has since that time carried on business under the trading names of, inter alia, Wincanton plc, Wincanton Logistics Limited and Wincanton. The name “Wincanton” has apparently been used as a trading name by, or in connection with the logistics business of Wincanton since at least 1919. The Complainant stated that Wincanton Logistics Limited (company number 155936) was incorporated in England and Wales on  June 11, 1919, with the name “Wincanton Group Limited”. Wincanton Group Limited (company number 441712) was incorporated in England and Wales on September 4, 1947, with the name “Wincanton Transport Limited”.

The head office of the Complainant has, for the period of time in which Wincanton has been trading as a logistics business, been located in the town of Wincanton in Somerset. Business has apparently always been and remains closely associated with that town and with the West Country in England in particular.

The Complainant gives evidence of a number of registered trademarks.

These are set out at Annex A to the Complaint and in the Reply. A summary of the trademarks is set out at page 23 to Annex A. It should be noted that the proprietor of the trademarks is not the Complainant, Wincanton PLC but rather wholly owned subsidiary companies. Thus, for example, Wincanton Limited is the proprietor of the trademark WINCANTON LOGISTICS in classes 37, 39 and 42 registered on March 12, 1999 as a European Community trademark, number 467902, and as a UK trademark number 2056008 registered on February 5, 1996. Wincanton Group Limited (formerly Wincanton Limited) is the owner of Community trademark WINCANTON in a device in classes 37, 39 and 42, number 002557395 registered on October 2, 2003. The Respondent exhibits UK trademark number 1372265 in class 39 for WINCANTON with a “w device” registered in the name of “Wincanton Group Limited” (number 1372265). In its Reply the Complainant exhibits a copy of UK trademark number 1520593 in class 39 for the mark WINCANTON registered on October 31,1994, together with what is described as a “flying w device”.

Not a great deal is known about the Respondent beyond the assertion by the Respondent at page 9 of the Response that he “is not a dealer (in website domain names for profit) but a successful London restaurateur (sic) of 20 years standing that only involved himself in domain names as a hobby, albeit one that has been both time consuming and costly” (the phrases in brackets are those of the Panel).

Prior to the Complaint, there was a series of email exchanges between the parties. The Respondent refers to these emails being lost. The Complainant has however exhibited a “complete set” at pages 2 to 23 of Annex C to the Reply.

The email correspondence begins with an exchange of correspondence between a Mr. Luge Pravda of NetNames UK on behalf of the Complainant and the Respondent in March 2003, in which Luge Pravda indicates that he has authority to “make a formal offer of £5,000” on behalf of the Complainant, presumably for the purchase of the domain name in dispute. The Respondent disputes that the Complainant has prior trademark rights. There then follows correspondence between Mr. Alan Divorty of the Complainant and the Respondent in which the Respondent (email of April 11, 2003) proposes a transfer fee for the domain name “equivalent to the current average annual gross salary of one employee”. Mr. Divorty responded indicating that £5,000 was the value that the Complainant put on the transaction.

Some months later in August 2003, the Respondent attempted to call the secretary to the Marketing and Communications Director of the Complainant, Charles Carr but failed to make contact (the Respondent's email of 27 August 2003).

Meetings subsequently took place between the Respondent and Messrs Carr, Divorty and Greenhalgh of the Complainant, details of which are set out in statements made by them at pages 35 to 44 of Annex A to the Complaint. According to Mr. Carr, for example, a meeting took place on September 29, 2003, in which offers of £5,000, £7,500 and £10,000 were made to the Respondent but rejected. The Respondent apparently stated that he had spoken to his accountants who had in turn contacted an advertising agency which bought domain names and which had estimated its value as between £50,000 and £100,000 and that “he would be looking for Wincanton to make an offer at the lower end of the range of £50,000 than £100,000”. According to Mr. Carr no further correspondence has taken place between the Complainant and the Respondent since the meeting on September 29, 2003.

These witness statements are criticised by the Respondent. In particular, the Respondent asserts that because of similarity in content they are “clearly formulaic, probably drafted by a lawyer” and “not individually written by the persons themselves and therefore do not accurately reflect the whole meeting”. The Respondent points out that the first contact was made by the Complainant and that the later meeting was at the suggestion of the Complainant who had always wished to negotiate the purchase of the domain name. In particular, the Respondent asserts that “at no time before or during the meeting (on September 29, 2003) did the Respondent suggest or demand a price for the domain name”. He also asserts that “what was also crucially omitted in the evidence of witness statements of the meeting was that the Complainant had agreed the fact that Wincanton plc accepted the Respondent had rights in the domain name and knew it had been registered years before they had changed their name and applied the new trademarks.” They also confirmed that it was their acquisition of the European business that prompted them to look for a new and more suitable “dotcom” name.

In the Panel's view there is a conflict of evidence between the account of the September 29, 2003, meeting as set out in the Complainant's three witness statements and the Respondent's account in the Response. What is plain though from the exhibited emails is that the initial negotiation approach (through Mr. Pravda) was made by the Complainant and that in his email of April 11, 2003, the Respondent as part of the negotiation process proposed a transfer fee for the domain name “equivalent to the current average annual gross salary of one employee.”

5. Parties’ Contentions

A. Complainant

The Complainant contends:-

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

The Complainant relies upon the trademark rights referred to above and submits that the domain name <wincanton.com> is identical to trademarks held and used by the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name.

It relies upon the following:-

(a) the domain name <wincanton.com> currently points to a website that links to a number of general interest websites concerning gaming and travel and sport as is shown by the screen shot at Annex A at page 22;

(b) as far as it is aware, the website which <wincanton.com> points to has no proper commercial relationship that could be described as the bona fide offering of services;

(c) the Respondent is a dealer in website domain names for profit and relies upon a number of previous administrative panel decisions to which the Respondent was a party;

(d) the meeting on September 29, 2003, which it submits resulted in a conclusion that the Respondent would not offer to sell the site other than for between £50,000 and £100,000. This is inconsistent with using the site as a bona fide offering for services;

(e) as far as it is aware, the Respondent has no connection with Wincanton, the name of a place;

(f) it infers that the Respondent has been prepared to resort to “false strategies” in previous cases to give the impression that there was a legitimate association between the domain name and the Respondent;

(g) there is no evidence that the Respondent is making a legitimate, non-commercial fair use of the domain name. All of the evidence suggests that the Respondent's only intention is to “squat on the domain name” with a view to extracting the maximum sum from the Complainant;

(h) it is a reasonable inference to draw that the Respondent's intent is to misleadingly divert consumers or to tarnish the Complainant's trademark and thereby put pressure on the Complainant to purchase the domain name for the price range indicated.

(iii) The domain name was registered and is being used in bad faith.

(a) the Respondent registered the domain name with the sole purpose of selling it on to the highest bidder;

(b) pursuant to paragraph 4(b)(i) of the Policy, the Respondent purchased the domain name “in circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who was the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs”;

(c) the Respondent's conduct in relation to other domains and with regard to <wincanton.com> by offering domains for sale at inflated prices is evidence of the use of the domain name in bad faith. The Complainant relies upon the Respondent indicating that he will sell <wincanton.com> but would not accept offers to sell <wincanton.com> to the Complainant for other than between £50,000 and £100,000;

(d) the Complainant relies on paragraph 4(b)(ii) of the Policy to the effect that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that the Respondent engaged in a pattern of such conduct. The Complainant relies particularly upon the earlier decision in Thames Water v. Thames Water Meter Limited (WIPO Case No. D2002-1071) as evidence that the Respondent is a “serial registrant of other people's names as domain names”;

(e) it relies upon non-use of the domain name by the Respondent and the failure of the Respondent to have made any credible practicable use of the domain name.

B. Respondent

In its Response, the Respondent contends as follows:

(i) Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(a) the Respondent casts doubt upon the Complainant's trademark rights and submits that the Complainant has only carried on business under the shorter trading name of “Wincanton” since its demerger in May 2001, and that since 1919, the Complainant was known as “Wincanton Logistics” and later “Wincanton Transport” and not simply “Wincanton”;

(b) the Respondent submits that no entity using the name of the town “Wincanton” has an exclusive right purely to that geographic name;

(c) the Respondent asserts that the Complainant has failed to show either a specific trading name or a specific relevant trademark of “just the name “Wincanton”” before the Respondent's registration of the domain name which it submits took place on September 16, 1997, rather than September 3, 2001 as relied upon by the Complainant.

(ii) Whether the Respondent has rights or legitimate interest in respect of the domain name.

(a) the Respondent submits that its portal website at “www.wincanton.com” offers genuine bona fide services and provides free commercial links;

(b) he relies upon the September 29, 2003, meeting at which it submits there was never any mention or complaint which may have suggested the Respondent's ownership or legitimate use of the domain name posed a problem for them;

(c) he denies that the domain name currently points to a sham website with no offer of bona fide services. In particular, he submits that the witness statements referred to “crucially omit” that the Complainant has agreed that the fact that Wincanton plc accepted that the Respondent had rights in the domain name and knew it had been registered years before they had changed their name and applied for new trademarks;

(d) he seeks to distinguish three cases relied upon by the Complainant i.e. WH Smith, Skipton and Espirito Santo as cases in which the Complainant initiated contact and deliberately sought to elicit a price for the name from the Respondent;

(e) he submits that the Respondent has a strong association with the West Country since he has family in the nearby (to Wincanton) town of Frome.

(f) the Complainant and the Respondent are not competitors and the domain name was not registered to disrupt the Complainant's business or for commercial gain.

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

The Respondent contends:-

(a) the Complainant has not provided proof of registration or use in bad faith but has merely adduced evidence of other panel decisions. This is “rather akin to being charged for a parking offence years after having been parked on an unrestricted street, which only subsequently sees yellow lines and metres”;

(b) the Respondent seeks to distinguish the Skipton and WH Smith cases referred to;

(c) the Respondent in choosing the domain name looked for geographical names that had not been registered around the world. He knew the town of Wincanton from personal experience having many years before as child with his father visited the racecourse. He admits to having been influenced by the existence of the racecourse;

(d) it follows that the domain name was therefore not registered or acquired primarily for the purposes of selling, renting or otherwise transferring the domain name registration for valuable consideration in excess of the Respondent's out of pocket costs;

(e) the domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain internet users to the Respondent's website.

6-. Discussion and findings

A. Identical or Confusingly Similar

The Panel has considered UK trademark number 2056008 registered on February 5, 1996 for the mark WINCANTON LOGISTICS. In the Panel's view the dominant part of this mark is the word “wincanton”. The word “logistics” is descriptive of a trading activity. The Respondent submits that the Complainant cannot have exclusive right purely to a geographic name such as “Wincanton” and indeed gives evidence to support the geographical association of the name “Wincanton”. The Panel, however, takes the view that, for the purpose of these proceedings, it has to accept that the registered trademarks relied upon by the parties are prima facie valid and subsisting. Accordingly, it accepts that the UK registered trademark number 2056008 is valid and also finds that the domain name <wincanton.com> is confusingly similar to that registered mark.

In the Panel's view it is therefore not necessary to look at the evidence as to long use of the trading name “Wincanton” by the Complainant although it notes that the Respondent appears to accept the Complainant's evidence that since 1919 the Complainant has traded using names including “Wincanton Logistics” and “Wincanton Transport”.

It follows that the Panel finds for the Complainant in respect of this element.

B. Rights or Legitimate Interests

It appears to the Panel that the heart of the Complainant's submission in respect of this element is that there is no evidence justifying any offering of bona fide services by the Respondent or evidence showing a legitimate association on the part of the Respondent with the name “Wincanton”.

The Panel has considered the Respondent's submissions carefully. The Respondent admits that he has only involved himself in domain names as a hobby. He also admits he knew the area around Wincanton quite well because he had family living in Frome and that he had registered a number of geographical names, some of which had sporting connections such as Wincanton with its racecourse. In summary, he relies upon “a strong association with the West Country” particularly having family in Frome.

In the Panel's view there is no compelling evidence adduced by the Respondent to show rights or legitimate interests in respect of the domain name. There is to the contrary evidence from previous Administrative Panel's disputes adduced by the Complainant which shows the Respondent is a dealer in website domain names for profit.

In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name and finds for the Complainant.

C. Registered and Used in Bad Faith

The burden of proof in showing registration and use in bad faith falls upon the Complainant. In essence the Complainant's case is based upon two matters:-

(i) The evidence of the negotiations which took place between the representatives of the Complainant and the Respondent with regard to the proposed sale of the domain name. This, it is said, brings the case within paragraph 4(b)(i) of the Policy, i.e. the Respondent purchased the domain name “in circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name and registration to the Complainant who was the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs”.

(ii) The evidence demonstrates bad faith on the part of the Respondent within paragraph 4(b)(ii) of the Policy which is consistent with the Respondent's conduct in the earlier decision of “Thames Water” (WIPO Case No. D2002-1071) referred to above to the extent that the Respondent is a “serial registrant of other people's names as domain names”.

Dealing with the first point the Panel notes;

(i) the Respondent first registered the domain name on September 16, 1997, and that the first contact with the Complainant was in about March 2003 (over 5 years later). During that period the Respondent took no steps to contact the Complainant;

(ii) the evidence adduced by the Complainant shows that the first steps in the negotiations leading to a proposed sale of the domain name came from the Complainant. This is clear from the witness statements adduced by the Complainant . In particular, Mr. Alan Divorty points out that Mr. Pravda, a registrations and renewals manager at Netnames UK was given authority by him to act on behalf of Wincanton to contact the Respondent once his identity had been ascertained. There then followed the exchange of emails which are exhibited to the Reply and referred to above. The suggestion that the domain name be transferred for a fee equivalent to the current average annual gross salary of one employee came from the Respondent in his email of April 11, 2003, to Mr. Divorty.

In the Panel's view;

(i) there is no evidence that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant (see Paragraph 4(b)(i) of the Policy);

(ii) the figures proposed came as part of the negotiating process which had been commenced by the Complainant rather than as an attempt by the Respondent to negotiate in the first instance a figure “in excess of the Respondent's documented out of pocket costs”. There is no evidence adduced by the Complainant that the domain name was “registered or acquired” for the purpose of transfer at a price in excess of the Respondent's documented out of pocket costs.

The second point relates to the effect of the earlier authorities and in particular “Thames Water” cited by the Complainant. In the Panel's view, it is inapposite to rely upon this earlier WIPO Panel decision. Thus, in “Thames Water”, the Respondent registered as a domain name the trade name of a functioning business while in the present case the Respondent has only registered the name of a town. The evidence in each Complaint is inevitably going to be different. That this is so is indeed recognised by the Respondent who seeks to distinguish the authority of previous decisions referred to by the Complainant. In particular, he suggests that the conclusion of the Panel in the “Thames Water” case as put by the Complainant i.e. as a “figment of the present Respondent's imagination” is “patently absurd”. The Panel does not consider that it is in a position to go into this issue and that it should concentrate upon the evidence in this case.

One member of the Panel would find lack of bad faith solely on the grounds that the town name “Wincanton” used as the disputed domain name, <wincanton.com>, cannot support the Complainant's charge of registration and use in bad faith because it is a geographic term which all are free to use. The Complainant relies on the Skipton case, but there the Complainant had a registered trademark for theYorkshire town “Skipton” (Skipton Building Society v. Peter Colman, WIPO Case No. D2000-1217, November 22, 2000. Here the Complainant does not have a registered trademark for the Somerset town “Wincanton”, but only for “Wincanton Logistics”. (See also Chambre de Commerce et d'Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348, June 18, 2001 and Empresa Municipal Promocion Madrid S. A. v. Easylink Services Corporation, WIPO Case No. D2002-1110, February 26, 2003 where transfer was refused for <rouen.com> and <madrid.com> inter alia because there was no registered trademark in these city names.)

The Panel is nevertheless unanimous in its finding that the Complainant has failed to show that the domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Panel finds for the Respondent and the relief sought by the Complainant is denied.

Clive Duncan Thorne
Presiding Panelist

Charters Macdonald Brown
Panelist

Dennis A. Foster
Panelist

Dated: June 6, 2004