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Alliance & Leicester Plc v. Henao Berenice [2005] GENDND 1627 (13 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alliance & Leicester Plc v. Henao Berenice

Case No. D2005-0736

1. The Parties

The Complainant is Alliance & Leicester Plc, Leicester, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Henao Berenice, Port Moresby, Papua New Guinea.

2. The Domain Names and Registrar

The disputed domain names <aliance-leicester.com>, <allaince-leicester.com>, <allianceandleciester.com>, <alliance-leciester.com> and <alliance-liecester.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2005. On July 13, 2005, the Center transmitted by e-mail to eNom a request for Registrar verification in connection with the domain names at issue. On July 13, 2005, eNom transmitted by e-mail 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. On July 16, 2005, a communication was received by the Center, coming from the Respondent’s e-mail, but signed by a different person, an individual named Jeff Grange, claiming that a settlement was on its way. Unlike in Slumberland France v. Chadia Acohuri (WIPO Case No. D2000-0195), in the present case the Complainant decided not to request the suspension of the administrative proceedings, within the context of paragraph 17 of the Rules, despite the Center’s recommendation of July 19, 2005. As a consequence, the proceedings went on and 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 July 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2005.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on August 18, 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, Alliance & Leicester Plc., is a United Kingdom financial services company with its origins tracing back to 1852. According to the evidence provided and to some research by the Panel that has confirmed this information, following the merger between the Alliance Building Society and Leicester Building Society, the Complainant (together with its associated companies) has been trading under the trade marks ALLIANCE & LEICESTER and ALLIANCE LEICESTER, and other marks containing these words, since 1985, in the UK and other countries. The Complainant has been a member of the FTSE 100 since 1997, when it converted from its original mutual building society status.

According to the evidence provided, which is not contested, the Complainant supplies a broad range of financial services to personal and commercial customers under the Alliance & Leicester marks, including via the Internet. Its aggregate operating income for 2000 to 2004, was approximately £6,617 million. The Complainant has around 5.5 million personal customers. ALLIANCE & LEICESTER is a known name in financial services and the Complainant advertises its services widely through the Internet, direct marketing and TV. Its advertising expenditure for 2004, was approximately £45 million. The ALLIANCE & LEICESTER brand has been awarded “Superbrand” status by the Brand Council.

The Complainant operates the website <alliance-leicester.co.uk>, to which its domain names <alliance-leicester.com> and <allianceandleicester.com> also link. The Complainant owns at least 131 domain names containing the words ALLIANCE and LEICESTER together, as well as variations and misspellings of these words together.

The Complainant owns at least 41 UK and 15 other national trademarks, as well as 4 CTMs, all which contain the words ALLIANCE and LEICESTER.

The Respondent, Henao Berenice, is, according to the evidence provided by the Complainant, an individual residing in Port Moresby, Papua New Guinea. His/her exact activities are unknown to both the Complainant and the Panel.

5. Parties’ Contentions

A. The Complainant

The Complainant, apart from the facts stated above, contends that the disputed domain names are confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.

B. The Respondent

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

6. Discussion and Findings

Before engaging itself in a discussion of the element of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but must examine the evidence presented determining whether or not the Complainant has proved its case, as required by the Policy See Européenne de Traitement de l’Information v. Horoshiy, Inc., WIPO Case No. D2004-0706; FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110.

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.

A. The contested domain names are identical or confusingly similar to trademarks in which the Complainant has rights.

The Complainant has presented sufficient evidence that it owns the rights to a plethora of trademarks containing the words “Alliance” and “Leicester” together. It is obvious, both from the Complainant’s assertions and from the bare facts, that the Respondent has “played” with the pronunciation and spelling of the Complainant’s marks in order to confuse Internet users. See Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110. Indeed, depending also on one’s origins, “alliance” could easily be confused with “aliance” or even “allaince”. The mere misspelling of “leicester” “leciester” or “liecester” is confusing by itself since a typing error could lead the average Internet user to one of the Respondent’s links and distract him/her from the websites of the Complainant. See e.g. Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430, for <luisvuitton.com>; -VeriSing, Inc. v. Onlinemalls, WIPO Case D2000-1446, for <verasign.com> and <veresign.com>; Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380, for <zerox.com>; WIPO Case No. D2003-0103 for <nasdasq.com>.

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names are identical, or at least confusingly similar to the Complainant’s trademarks.

B. The Respondent has no rights or legitimate interests in the contested domain names.

Under paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:

(i) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute.

In this case, the Respondent seems to be using variation on the trademarks of the Complainant as domain names which divert to other websites selling services similar to those offered by the Complainant, without any sort of agreement or relation between them.

This behaviour is not a bona fide offering of services see Crédit Suisse Group v. Kingdomdatanet Network, Inc., WIPO Case No. D2004-0846, and Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110.

(ii) An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights.

There is no such indication from the record.

(iii) Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue

As shown by the Complainant in its submissions, the Respondent uses links on the disputed domain names in order to divert Internet users to websites owned by the “domain name parking” company Sedo, through which the Respondent obtains a fixed remuneration whenever someone accesses the sites and clicks on one of the links. This misleading diversion may also tarnish the trademarks and brand image of the Complainant.

Based on the case file, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. The Respondent registered and used the contested domain names in bad faith.

The Complainant’s argument aims to establish all four circumstances mentioned in paragraph 4(b) of the Policy, which could serve to prove the Respondent’s bad faith, even though proof of one of them would be enough.

If, concerning the first circumstance, one may consider the argument of the marketing quotation some on the Sedo websites’ that “domains parked with Sedo are 5 times more likely to be sold” rather weak – though acceptable – as proof of the intention of the Respondent to eventually sell or rent the disputed websites to the Complainant or to one of its competitors, the second circumstance makes no doubt, since the registration of five domain names, which are pure misspellings of the Complainant’s marks, is sufficient to prove the engagement of the Respondent in a pattern of registering the disputed domain names in order to prevent the owner(the Complainant) of the trademarks from reflecting its marks in corresponding domain names. In the view of the Panel, this is a clear-cut case of “typo-squatting”.

The circumstance covered by paragraph 4(b)(iv) is admittedly well proved. Indeed, it is obvious, also from what is exposed under Section 6B above, that the Respondent has intentionally attempted to attract Internet users to the Sedo websites for a commercial gain of between Euros 0.03 and 1.50 every time someone clicks on one of the links on the disputed websites, by creating a clear likelihood of confusion (by pure misspellings of the well-known Complainant’s trademarks; by links to other financial services websites; by the statement “for Banking try these sponsored links”) with the trademarks of the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

As a consequence, the Panel holds that the Respondent registered and used the disputed domain names in bad faith.

7. Decision

In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names at issue, <aliance-leicester.com>, <allaince-leicester.com>, <allianceandleciester.com>, <alliance-leciester.com> and <alliance-liecester.com>, be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist

Dated: September 13, 2005