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Longs Drug Stores California, Inc. v. jg aka Josh Green [2005] GENDND 354 (29 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lanware Limited v. Steven Iveson

Case No. D2004-1061

1. The Parties

The Complainant is Lanware Limited, London United Kingdom of Great Britain and Northern Ireland, represented by Sprecher Grier Halberstam LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Steven Iveson, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <lanware.info> is registered with Schlund + Partner of Karlsruhe, Germany.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2004. On December 15, 2004, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On December 17, 2004, Schlund + Partner 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, the Complainant filed an amendment to the Complaint on December 18, 2004. The Center verified that the Complaint together with the amendment to 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 December 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2005.

The Center appointed John Lambert as the sole panelist in this matter on January 26, 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 is a private company incorporated with limited liability in England and Wales under the Companies Act 1985 on May 6, 1993, under company number 02815552. It is assumed that the Complainant incorporated an existing business because the “Home” page of the Complainant’s website at “www.lanware.co.uk” claims that the Complainant “has supported many businesses” since 1991. The Registrar of Companies for England and Wales has recorded no previous name information for that company, that its principal business is “software consultancy & supply” and that its location is mentioned in paragraph 1 above. That location is also its principal place of business.

On the “Home” page of its website, the Complainant claims to be “a leader in IT networks and communications management”. According to its “Services” page, its projects include “office relocation, Windows upgrade, thin client technology, WAN, LAN and VPN design and implementation for companies”. Examples of its projects in its “Case Studies” page include managing and supporting the IT infrastructure of an hotel in central London and installing an advanced client/server email and messaging system for a steel trader.

The name in which the Complainant is incorporated combines the initials “LAN” - a common abbreviation for the words “local area network” - and the suffix “ware” which denotes electronic, electronic or electro-mechanical equipment or computer programs used in data processing. Occasionally, the same suffix is used to refer to services relating to information and communications technology. While it was easy to find the abbreviation “LAN” in online computing directories it is hard to find an entry for “LANWARE”. The first few results of searches for “LANWARE” on “Google.com” and “Google.co.uk” generated the Complainant’s website.

Annexed to its Complaint were samples of the Complainant’s business cards, compliments slips and other business stationery, screen dumps from its website and several brochures. Those materials show that the Complainant appears to use the sign “LANWARE” as a trade name rather than as a trademark. One example is the cover of a glossy A4 brochure where the word appears in the top right corner followed at the bottom by the words “Your partner for IT excellence”. Page 4 of the brochure is headed with the words “Why Businesses Choose Lanware”. On page 6 the word appears as an adjective as “The Lanware Method”. In none of the annexes or web pages are the Complainant’s goods or services referred to as “LANWARE”. A search of the Trademarks Registry from the British Patent Office website under LANWARE LIMITED reveals no registrations for that company.

The disputed domain name is the URL for a website consisting of 5 pages. The site does not have a name or title but the first sentence of its home page states that it “exists to act as a precaution for those considering or already doing business with Lanware Ltd or the other 4 names the company trades under” and that it “has been created by an ex member of staff who quit his role after many acrimonious disagreements with senior management (among other reasons)”. It is common ground that the Respondent is a former employee of the Complainant. The “About” page explains that “the author and creator” of the side worked for the Complainant for around 16 months and found his employment there highly frustrating. A copy of his resignation letter can be annexed from the site. There is an invitation to the Complainant’s representatives to contact the Respondent if they feel that his site contains any incorrect facts or illegal content with the promise that any such material will be removed immediately. Other pages list the names of persons who are said to have left the Complainant’s service as well as other unflattering statements and commentary.

5. Parties’ Contentions

A. Complainant

The Complainant submits that all probanda of paragraph 4 are satisfied and that the disputed domain name should be transferred to it or, alternatively, cancelled.

The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights

The Complainant claims to have unregistered trademark rights in the word LANWARE having supplied IT services under that name since 1991. It says that its turnover for the year ended September 2004 exceeded £1.7 million and that it has spent around £136,500 on advertising and marketing by reference to that name. It continues that “as a result of such use, the name ‘LANWARE’ is associated by a substantial number of customers and potential customers of IT services in the UK exclusively with the Complainant’s business and company”. While acknowledging that the name “has some descriptive connotations in the context of IT” and that it is also used by some other companies around the world, the Complainant alleges that it has become distinctive of the Complainant and is protected in the UK at least by the law of passing off. Relying on the well known decision in Jeanette Winterson v. Mark Hogarth (WIPO Case No. D2000-0235) and also on the decision in Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset (WIPO Case No. D2002-1058, the Complainant contends that “LANWARE” is a trademark in which it has rights. Alleging that the disputed domain name is identical or alternatively confusingly similar to that word, the Complainant concludes that paragraph 4(a)(i) of the Policy is satisfied.

The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The Complainant says that

• the Respondent has not used or made preparations to use the disputed domain name for any bona fide offering of goods or services; and that

• he is not commonly known by the disputed domain name or any corresponding name; and that

• he has used the website for abusive criticism of the Complainant.

Relying on long line of decisions of administrative panels (some of which were unanimous decisions of three member panels), the Complainant contends that the use of a domain name identical to a complainant’s for a website containing abusive criticism is neither legitimate nor fair and does not give rise to rights or legitimate interests in such name.

The Complainant makes an additional point that “.info” gTLDs were established to enable businesses and organizations to provide information about their products and services. It adds that that objective was reinforced by the Sunrise Registration Challenge Policy under which a registration could be challenged if the registrant did not own an identical registered mark. Accordingly, it contends, many Internet users expect a “.info” domain name to designate a website of a company with a trademark in that name.

The Disputed Domain Name was registered and is being used in Bad Faith

The Complainant invites the Panel to infer that the Respondent registered the disputed domain name for the purpose of disparaging the Complainant from the circumstances that the Respondent was a disgruntled former employee of the Complainant and that he has used his website for the purpose of criticizing the Complainant.

It appears that the Respondent’s site was down when the Complaint was made because the Complainant submitted that the temporary removal of the site should not be allowed to circumvent the requirement of present use. That point no longer needs to be addressed because the Respondent’s site was up and running at the time the decision was written.

B. Respondent

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

6. Discussion and Findings

The absence of submissions by the Respondent is unfortunate because there are several points that might have been taken on his behalf.

The lack of argument raises the following difficulty. Where, as in this case, the outcome hinges on issues that could be decided either way, there is a risk of a wrong decision if argument that could have been made is disregarded. On the other hand, there is a risk of injustice if argument that was not considered by the parties is entertained at the decision stage. That is particularly true in documents only proceedings, such as these. There is no perfect solution but it is probably safer for a panel to work with what is actually before him or her rather than matter that is not. Considering points that could have been made on one side’s behalf had it so wished comes close to entering the fray. A panel has to be critical. In any case, he or she has to allow for the possibility that some parties are better resourced or better represented than others. Obviously a panel cannot accept an argument that is clearly wrong merely because it has not been answered. He or she must test a party’s contentions against the language of the Policy and the principles of the applicable law whether those contentions are answered or not. In the end, however, the need for impartiality and procedural fairness precludes a panel from adopting the role of either party’s advocate.

A. Identical or Confusingly Similar

There is no doubt that the disputed name is identical or confusingly similar to the name in which the Complainant was incorporated. The only question is whether the name constitutes a trade or service mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

The Complainant relies on the law of passing off and refers to Reckitt & Colman Properties Ltd v Borden Inc. [1990] RPC 451 (Jif Lemon), which is the leading case on the subject in England and Wales, at least. The Complainant’s difficulty is that cybersquatting of itself does not always amount to passing off (see Pitman Training Ltd and another v. Nominet UK and another [1997] EWHC Ch 367 and Prince Plc v. Prince Sports Group Inc [1998] FSR 21and French Connection (UK) v. Sutton (unreported 1999)). In his speech in the Jif Lemon appeal, Lord Oliver set out the elements of an action for passing off that a claimant has to prove, namely reputation or goodwill, misrepresentation and damage. The Complainant deals satisfactorily with goodwill and, if the other two elements are present, damage may be assumed. But, save for a rather labored argument on public expectations arising from the Sunrise Registration Challenge Policy, the Complainant does not really address the issue of misrepresentation.

A tempting way around the difficulty would be simply to ignore it because the Respondent does not challenge the Complainant’s contention that it has rights in its corporate name. However, for the reasons set out above in the discussion on a panel’s role where one party fails to answer a point, that is just not good enough. A better approach was suggested in paragraph 6.4 of the decision in Jeannette Winterson decision. The panel noted that every applicant for registration represents and warrants that neither the registration nor the manner in which it is directly or indirectly used will infringe another party’s legal rights. The Panel concluded that “rights” for the purpose of paragraph 4(a)(i) of the Policy includes not merely a trademark registration or even that right plus the right to bring an action for passing off. It has also to be remembered that issues have to be decided on the balance of probabilities rather than certainties. The conclusion must be that there is a better than evens chance that an action for passing off in these circumstances would succeed given the continous use by Complainant of the word “language”.

The Panel finds to the first requirement of paragraph 4(a) of the Policy to be satisfied.

B. Rights or Legitimate Interests

This is a more troubling issue because it impinges on the common law right of free speech and the Convention right to freedom of expression which has been imported into English law by the Human Rights Act 1998.

Paragraph 4(c)(iii) of the Policy permits legitimate non-commercial…. use of a domain name, without commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent’s use of the dispute domain name is certainly non-commercial and the Complainant has not alleged that he intends commercial gain. On the other hand, it is clear from the first paragraph of his “Home” page that his site “exists to act as a precaution for those considering or already doing business with [the Complainant]”. Were he to succeed, the Respondent would divert consumers and thereby diminish the Complainant’s goodwill and that is tantamount to tarnishing a trade or service mark in issue.

The Complainant submits that abusive criticism of a site can never be legitimate or fair use of a domain name. However, that is inconsistent with the insertion of the adverb “misleadingly” in the sub-paragraph. Justifiable criticism of a complainant can never be misleading however intemperate. It follows that circumstances may arise in which criticism of a complainant would be fair use of a domain name and perhaps the decision in Dorset Police v Coulter (AF-0942a and AF-0942b) is a case in point. That having been said, the decision in Espirito Santo Financial Group S.A. v. Peter Colman, WIPO Case No. D2001-1214 indicates that cases in which such circumstances arise are rare. It is clear from the several decisions that the Complainant cited that any right to criticize or warn contemplated by paragraph 4(c)(iii) does not extend to registering a domain name identical to Complainant’s mark, see WIPO Case No. D2004-0175 the panel also notes that respondent had ample opportunity to choose a domain name that did not result in confusion with Complainant’s mark, whilst still expressing his opinion he chose not to do so..

Furthermore, while the burden of proof is generally on a complainant, paragraph 4(c) makes clear that it is for a respondent to demonstrate that he has rights and legitimate interests in a domain name when responding to a complaint. It must follow that if a respondent wishes to rely on justification he or she must lead evidence on the point. Since the Respondent in this case did not choose to do so when the opportunity was open to him, it would be wrong for a panel to speculate after argument has been closed on whether such a ground is available. In the absence of any submissions from the Respondent to the contrary, the Panel finds the second requirement of paragraph 4(a) to be satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists examples of circumstances that evidence bad faith in registration and use of a domain name. Those examples are not exhaustive, which means that conduct of similar nature can be taken into account. One of the circumstances in which bad faith can be inferred is registration primarily for the purpose of disrupting the business of a competitor in sub-paragraph (iii). The Respondent is not a competitor but he makes clear that the purpose of his site is to act as a precaution for those considering or already doing business with the Complainant. If it succeeds, its effect will be to disrupt the Complainant’s business. Furthermore, Respondent clearly knew of Complainants mark when registering the domain name and, by registering a domain name without a distinguishing moniker, clearly intended to divert and confuse people attempting to reach Complainant’s website. In the circumstances, paragraph 4(a)(iii) of the Policy is satisfied.

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, <lanware.info> be transferred to the Complainant.

John Lambert
Sole Panelist

Dated: February 9, 2005