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Alexander Hughes International v. Rick Fogle [2005] GENDND 223 (24 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alexander Hughes International v. Rick Fogle

Case No. D2005-0093

1. The Parties

The Complainant is Alexander Hughes International, Paris, France, represented by Cabinet Dreyfus & Associés, France.

The Respondent is Rick Fogle, York, Pennsylvania, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <alexanderhughes.net> and <alexanderhughes.org> are registered with Schlund & Partner AG, Germany.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2005. On January 28, 2005, the Center transmitted by email to Schlund & Partner AG a request for registrar verification in connection with the Domain Names at issue. On February 1, 2005, Schlund & Partner AG 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 February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Response was filed with the Center on February 28, 2005, by email and was received in hard copy on March 3, 2005.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 14, 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

According to Complainant, Alexander Hughes International, the Company operates in the field of executive search and recruitment, helping its clients to acquire the human capital needed to achieve strategic business goals. The Company's reputation is based on personal recruitment by direct approach. It has an official website <alexanderhughes.com>.

The Company was originally called CPM Search. In 1990 the Company acquired the British firm Alexander Hughes and in 1998, the name of the international group was changed to Alexander Hughes. The holding then became Alexander Hughes International. Today the Holding is related to 17 subsidiaries and 23 offices in Europe employing 80 consultants. Subsidiaries now exist in, among other places, Holland, Belgium, Russian Federation, Italy, Cyprus, Romania, Spain, Great Britain, Greece, Poland and Switzerland.

According to Respondent Rick Fogle, who has an address in the USA, he is an independent consultant or contractor who as such has performed work on behalf of the Complainant Company under its present or previous names in 1996-1999 and on behalf of the Complainant Company's German office or subsidiary from April to December 2005.

The contested Domain Names were registered by the Respondent on August 5, 2004, for <alexanderhughes.net> and on August 6, 2004, for <alexanderhughes.org>.

5. Parties’ Contentions

A. Complainant

Complainant contends and provides documentary evidence that Alexander Hughes International is the owner of trademark rights having a specification of goods and services in the field of business management, business administration and office functions as follows:

“ALEXANDER HUGHES”, French Trademark, No. 98 735 163, filed on June 3, 1998 in class 35;

“ALEXANDER HUGHES”, word and device, French Trademark No. 98 745 456, filed on August 7, 1998 in class 35;

“ALEXANDER HUGHES”, word and device, Community Trademark No. 000 932 566, filed on January 20, 2000, in class 35;

“ALEXANDER HUGHES”, word and device, International Trademark No. 707 682, filed on January 15, 1999, in class 35 designating China, Russian Federation, Hungary, Morocco, Poland, Romania, Switzerland. Complainant states that the following countries were recently designated: Albania, Armenia, Azerbaijan, Belarus, Bosnia Herzegovina, Bulgaria, Croatia, Georgia, Iceland, Kazakhstan, Ukraine, Kirghizistan, Liechtenstein, Moldova, Monaco, Norway, Uzbekistan, Serbia Montenegro, Tajikistan, Turkmenistan, Turkey, Macedonia, Singapore, United States, Japan, South Korea and Australia.

Complainant contends that within the meaning of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement, the “Alexander Hughes” mark is famous.

Complainant contends in respect of Paragraph 4(a)(i) of the Policy that the disputed Domain Names <alexanderhughes.net> and <alexanderhughes.org> are effectively identical to Complainant's trademarks containing the words “Alexander Hughes”.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed Domain Names in the terms of Paragraph 4(a)(ii) of the Policy. Respondent is not affiliated with the Complainant in any way. Complainant has not authorized or licensed the Respondent to use its trademarks and service marks or to register any Domain Name incorporating them. Respondent has never used the term “Alexander Hughes” in any way before or after the Complainant developed its Company and is not known under the name “Alexander Hughes” or any similar term. Respondent is not making any legitimate non-commercial or fair use of the Domain Name.

Complainant contends that the Domain Names were registered and are being used in bad faith in the terms of Paragraph 4(a)(iii) of the Policy. The disputed Domain Names are linked to a website of Rick Fogle Consulting which is partly in the field of the Complainant’s business of recruitment, which demonstrates that the disputed Domain Names’ owner intended to disrupt the Complainant’s business. Respondent knew the Complainant’s business because Respondent at one time worked on behalf of the German subsidiary of the Complainant. Respondent intentionally attempted to attract users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s marks.

After a warning letter from Complainant and an exchange of correspondence, Respondent offered to sell the disputed Domain Names to Complainant for 5000 Euros each (or 10,000 Euros to include a third Domain Name <alexanderhughes.us>), being in excess of out of pocket expenses, which offer Complainant declined to accept.

Complainant requests that the disputed Domain Names be transferred to Complainant.

B. Respondent

Respondent denies the Complaint and requests to retain the disputed Domain Names.

Respondent provides a history of his work on behalf of the Complainant under its present or previous names or its German subsidiary in 1996-1999 and April-December 2005.

Respondent contends in respect of Paragraph 4(a)(i) of the Policy that the names “Alexander” and “Hughes” are common and generic and that the name “Alexander Hughes” is not famous. The Complainant has in effect used the name since only 1998 and is not global but operates mostly from two cities. The name is not protected according to the laws of the USA.

Respondent contends in respect of Paragraph 4(a)(ii) of the Policy that he has rights to the disputed Domain Names because he had and still has plans to establish a company with a similar name in the USA with activities in international trade and business development, which is not the service line of Alexander Hughes International. Respondent’s work in business and career development is different from Complainant’s work. Respondent is not in competition with Complainant and recruitment is a minor component of Respondent’s work.

Respondent has been known by the name Alexander Hughes to an extent that includes his having invoiced clients for substantial sums in that name for services on behalf of Complainant.

In a separate dispute involving a German subsidiary, a German Court ruled that the Complainant does not have rights to the Domain Name <alexander-hughes.de>.

Respondent contends in respect of Paragraph 4(a)(iii) of the Policy that he has not acted in bad faith. He is not in competition with Complainant. He has been willing to sell the disputed Domain Names to Complainant but negotiations did not come to fruition.

6. Discussion and Findings

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

This dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Complainant has made the relevant assertions as above and must prove all three.

A. Whether the Domain Names are Identical or Confusingly Similar to a Trademark

The question before the Panel is whether the disputed Domain Names <alexanderhughes.net> and <alexanderhughes.org> are confusingly similar to trademarks in which the Complainant has rights. The Panel finds that Complainant has rights in the trademark ALEXANDER HUGHES to which the disputed Domain Names are confusingly similar and in fact identical, it being well established that spacing and the gTLD suffixes <.org> and <.net> are of no significance in the context. Accordingly the Panel finds for Complainant in the terms of Paragraph 4(a)(i) of the Policy.

B. Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Names

Complainant must prove that the Respondent has no rights or legitimate interests in the disputed Domain Names. Complainant states that as the owner of the legitimate, established and registered trademark ALEXANDER HUGHES it has not licensed or permitted Respondent to register or use the trademark, and that Respondent has not in any legitimate way acquired from Complainant a right to register or use the trademark. Complainant has made out a prima facie case to the effect that Respondent has no rights or legitimate interests in a Domain Name that uses the trademarked words.

Since there may be facts of which Complainant is unaware, the Respondent may contest this prima facie case by establishing a right to use the Domain Names. Paragraph 4(c) of the Policy may enable the Respondent to establish such a right in any of the following circumstances, which are without limitation:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Respondent’s evidence includes the statement: “I had/have plans to establish a company with a similar name in the USA whose activities were to be international trade and business development ...”. Later he writes, “The intention I had to establish a company using one or the other or both of the names Alexander and Hughes in the USA are still in preparation.” The evidence does not reach the standard of demonstrable preparations envisaged under Paragraph 4(c)(i) of the Policy.

Within the ordinary meaning of Paragraph 4(c)(ii) of the Policy, Respondent has never been commonly known as Alexander Hughes, either as an individual or as a business. He refers to having been “self-employed”, “freelance”, doing “independent work” as a “contractor” for service but does not claim to have been Alexander Hughes in any form, except to have “invoiced clients ... in the name of Alexander Hughes”. None of this is evidence that Respondent ever acquired rights in the Company name.

The decision of the German Courts over the Domain Name <alexander-hughes.de> is not relevant since it would appear that the German entity Alexander Hughes International GmbH in Berlin has had a bona fide relationship to Complainant. A licensee, subsidiary or related company may, in certain circumstances, acquire rights in a trademark, but Respondent has no such relationship to Complainant. Respondent's “agreement with the German Country Manager to work using the Alexander Hughes name” does not make Respondent commonly known as Alexander Hughes as an individual or business.

In the terms of Paragraph 4(c)(iii) of the Policy, Respondent essentially settles the matter by saying, “That I intended to operate the site for commercial gain is clear”. Furthermore the evidence of the present use of the Domain Names shows an unfair intention to divert consumers from Complainant to Respondent.

Thus, Respondent has not in terms of Paragraphs 4(c)(i), (ii) or (iii) or otherwise demonstrated any rights or legitimate interests in the disputed Domain Names.

C. Whether the Domain Names Have Been Registered and Are Being Used in Bad Faith

In accordance with Paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed Domain Names have been registered and are being used in bad faith. Paragraph 4(b) lists four circumstances (without limitation) that shall be evidence of the registration and use of a Domain Name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Although the Respondent offered to sell the disputed Domain Names for 5000 Euros each and this does not fit comfortably with his claim to need them, nevertheless there is no evidence that they were acquired primarily for sale in the terms of Paragraph 4(b)(i). In terms of Paragraph 4(b)(ii), there is no evidence of a pattern of the registration of Domain Names in order to prevent a trademark owner from doing so.

Respondent’s choice of two gTLD Domain Names each parallel to Complainant’s official Domain Name <alexanderhughes.com>, was not accidental as the Parties had previous business dealings. As Respondent confirmed, “I certainly do know the enterprise ...”. His motivation, evidently following some disharmony, is clearly stated: “Since it was not clear how my own future would develop and in the hopes of maintaining a form of continuity with clients primarily in Germany and the USA, I took it upon myself to purchase [the Domain Names]”. In other words, he chose unilaterally to adopt the Complainant’s business name in order to keep contact with business clients and to protect his future. Complainant states its business as the recruitment of highly qualified persons, executive search, provision of the vital human capital needed by businesses to achieve their strategic goals. Complainant’s trademark registrations are in the field of business management, business administration and office functions. Respondent describes his activities as business development, helping firms to establish themselves in new markets, with recruitment a “minor administrative add-on”. Notwithstanding the Respondent’s rebuttal, the Panel accepts that Respondent’s and Complainant's services are connected.

Respondent has seen fit to adopt Complainant’s registered and trademarked name without consultation and, ultimately, to divert users from Alexander Hughes to Rick Fogle Consulting. Such conduct does not align with Respondent’s claim to be in a different business. The Panel concludes that this was done in order to attract to Respondent’s website, by confusion and for commercial gain, users seeking the website of the Complainant Company, clearly constituting bad faith registration and use in terms of Paragraph 4(b)(iv) of the Policy. Such action is unfair competition, is potentially disruptive to Complainant and is also bad faith registration and use in terms of Paragraph 4(b)(iii) of the Policy.

Complainant has proven that the disputed Domain Names are confusingly similar to its trademark; that Respondent has no rights or legitimate interests in the disputed Domain Names; and that they were registered and have been used by Respondent 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 names <alexanderhughes.net> and <alexanderhughes.org> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist

Date: March 24, 2005