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London Merchant Securities plc v. Anjei Gandhi [2005] GENDND 1327 (4 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

London Merchant Securities plc v. Anjei Gandhi

Case No. D2005-0433

1. The Parties

The Complainant is London Merchant Securities plc, London, of United Kingdom of Great Britain and Northern Ireland, represented by Clifford Chance, LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Anjei Gandhi, Andhra Pradesh, of India.

2. The Domain Name and Registrar

The disputed domain name <londonmerchantsecurities.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2005. On April 22, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Network Solutions, LLC 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 May 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Fleur Hinton as the sole panelist in this matter on June 20, 2005. 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 has been a member of the FTSE 250 since 2000. It is a leading company in the financial services investment industry and was incorporated in 1873. It has traded under the name LONDON MERCHANT SECURITIES since August 1939. It became aware of the Respondent’s use of the disputed domain name when one of its officers received emails from members of the public in other parts of the world. The emails enclosed details of emails which these people had received from a person or people claiming to be the transfer director of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant has been using the common law trademark LONDON MERCHANT SECURITIES since August 1939, in relation to its business activities. The Complainant is a substantial public company which deals in property, and other investments. The Complainant has a property portfolio valued at more than 890 million pounds as at March 31, 2004, and the book value of its investment division is more than 190 million pounds as at the same date. In addition, the Complainant owns a lion logo (“the logo”) which it uses in conjunction with the letters LMS.

The disputed domain name has been registered by the Respondent since February 2005. The site itself does not include any information but merely states that it is under construction.

The Complainant also demonstrates with copies of emails how the Respondent has used the LONDON MERCHANT SECURITIES trade mark and the logo to run an Internet scam. The scam involves sending emails purporting to be from the National Lotteries’ Office to members of the public advising them that they had won substantial sums of money (in excess of 10 million pounds). These are followed up by emails from the email address “transfer@londonmerchantsecurities.com” which request the “winners” to pay money (over 2,000.00 pounds) into an account for various taxes and administration expenses in order to enable the bank to release the lottery winnings to them.

The Complainant submits therefore that it is the owner of the trade mark LONDON MERCHANT SECURITIES, that the Respondent has no rights or legitimate interests in the name and that the disputed domain name was registered by the Respondent and is being used by the Respondent in bad faith. Therefore, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Obviously it is not so easy to establish trademark rights when the trademark is unregistered as when it is registered. The trademark LONDON MERCHANT SECURITIES is unregistered. Nevertheless, in this case, it is clear that the trademark has been used very extensively indeed over a long period of time. It seems clear, therefore, from the extensive and long-term use by the Complainant of the trademark LONDON MERCHANT SECURITIES that it does own common law rights in the trade mark in relation to financial services. It is equally clear that the disputed domain name is substantially identical with the Complainant’s trademark so that the Complainant has established its case in that regard.

B. No rights or legitimate interests

In view of the very extensive reputation enjoyed by the Complainant, therefore, it is difficult to see how the Respondent could ever have had any rights to it. The Respondent is not actually using the website which simply carries a notice to the effect that it is under construction. However, it seems more than likely from the facts set out above that the Respondent’s intention or purpose in registering the domain name was to use it as a tool for its nefarious activities.

The Panel finds that the Complainant has established an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel has reviewed the material sent by the Complainant together with its submissions. It is clear that the Respondent has no connection with the Complainant. Further, although the website to which the domain name leads is not really operative, the evidence which the Complainant has lodged does indicate that the Respondent has been using the Complainant’s name to perpetrate a fraud.

Since the Respondent has failed to provide a response or to attempt to explain his behaviour, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

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, <londonmerchantsecurities.com>, be transferred to the Complainant.

Fleur Hinton
Sole Panelist

Dated: July 4, 2005