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Bartlehiem N.V., Morlanda Holdings B.V., Cobblers Limited, Pieds Nus SARL v. Patrick Cox [2005] GENDND 556 (25 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bartlehiem N.V., Morlanda Holdings B.V., Cobblers Limited, Pieds Nus SARL v. Patrick Cox

Case No. D2005-0586

1. The Parties

The Complainant is Bartlehiem N.V. of Curacao, Netherlands Antilles, Morlanda Holdings B.V. of Amstelveen, the Netherlands, Cobblers Limited of London, United Kingdom, Pieds Nus SARL of Paris, France, represented by Browne Jacobson LLP, of the United Kingdom.

The Respondent is Patrick Cox, of Oxford, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <patrickcox.com> is registered with Schlund + Partner.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2005. On June 7, 2005, the Center transmitted by email to Schlund + Partner a request for Registrar Verification in connection with the domain name at issue. On June 9, 2005, 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 contacts. Those contacts were all in the name of Aftab Afzal of Oxford.

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 June 10, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 30, 2005. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s Default on July 5, 2005.

The Center appointed Mr. Henry Olsson as the Sole Panelist in this matter on July 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

Mr. Patrick Cox is a designer of footwear and other fashion items both for ladies and men. He founded, in 1991, the company Cobblers Limited of which he is the ultimate shareholder. That company sells the products that Patrick Cox designs and which are traded under his name.

The products which are manufactured by, or for, Cobblers Limited include footwear and bags and have at times included also eyewear, perfumes and other cosmetic products. They are manufactured by Cobblers Limited and/or under license from Morlanda Holdings B.V. and bear the trademark “Patrick Cox”.

The name “Patrick Cox” alone or in conjunction with a fleur de lys device is registered in a number of countries of the world under the name of Bartlehiem N.V. and Morlanda Holdings B.V. Countries where the mark is registered include, among others, the United Kingdom, the European Union, Australia, China, Hong Kong, Japan, Taiwan and the United States of America. Those registrations, and applications for registration, cover footwear, clothing, bags and perfumes. Complainant has submitted a table of the countries where the mark has been registered and a sample of copies of registrations and applications for registration.

The group Bartlehiem/Morlanda Holdings B.V. is also since 1997, the owner of the domain names <patrickcox.co.uk> and also <patrickcox.fr> which points at the United Kingdom “patrickcox.com” website.

5. Parties’ Contentions

A. Complainant

General

Complainant first submits that Mr. Patrick Cox is an internationally renowned designer whose products are sold in many countries of the world and are promoted widely by various means, including on the websites mentioned above.

To show the extent of the Mr. Cox’ business, Complainant has submitted a statement by Mr. Cox’ co-director, Mr. Peter Sells, concerning the turnover of the group and the expenditure on promoting the Patrick Cox name and trademark throughout the world (see below). Complainant submits that, as a result of these actions, the name “Patrick Cox” is exclusively associated with products designed or authorized by Mr. Cox and sold by Cobblers Limited, Pieds Nus SARL and/or the licensees of Morlanda Holdings B.V.

1. Identity or Confusing Similarity

Complainant has submitted a list of Complainant’s trademark registrations, almost all of which are owned by Bartlehiem.N.V. However, one of those is owned by Patrick Cox and one by Morlanda Holding N.V.

Furthermore, as mentioned above, to support its contentions, Complainant has submitted a copy of a statement by Mr. Cox’s co-director Peter Sells about the turnover of the Patrick Cox company and about the amounts spent on advertising and publicity during the last six years, as well as copies of pages from fashion magazines, such as Vogue and Harpers, containing advertisements for Patrick Cox products from 1997, and onwards.

Complainant submits that it is well established in the context of domain name proceedings that the suffix “.com” is to be ignored in comparing Complainant’s trademark with a disputed domain name.

As regards the issue of identity or confusing similarity between the trademark and the domain name, Complainant submits that the domain name and the word element in Complainant’s trademark “PatrickCox” are identical with the mark as registered in some countries and that they, in other countries, differ only in so far as the mark incorporates the fleur de lys device. Furthermore, Complainant submits that when the mark is used orally, it is identical to the domain name. Finally, according to Complainant, no marks, other than those owned by Complainant, either in the United Kingdom or at the OHIM, include the fleur de lys device; thus, this device is not a key distinguishing factor.

2. Rights or Legitimate Interests

Complainant has made a number of contentions to support its submission that Respondent has no rights or legitimate interests in the domain name at issue. Complainant refers, inter alia, to a contact in about July 2003, between, Respondent’s representative at that point and the person whom Complainant had authorized to request Respondent to discontinue the use of the domain name at issue. According to Complainant, Respondent’s representative said, on that occasion, that the domain name had been originally obtained for a fashion industry venture, and an offer was made to transfer the domain name to Complainant for “a six-figure sum”. To support its contentions in this respect, Complainant has submitted a statement about those contacts.

Later, in October 2004, Complainant’s authorized representative wrote formally a letter to the then registrant of the domain name, Ms. Shabnem Afzal, a copy of which letter is attached to the Complaint. On October 25, 2004, Ms. Afzal’s representative who was his brother Mr. Aftab Afzal, called Complainant’s representative and acknowledged receipt of that letter and also mentioned again that the domain name had been registered in connection with a proposed fashion-business venture which had, however, not reached fruition. At a subsequent telephone conversation Mr. Afzal stated, according to Complainant, that the domain name was generating 100 000 “hits” per month and therefore had a market value of 60,000 pounds sterling but that his sister was prepared to sell it for 20,000 pounds sterling.

To support its contentions in this respect Complainant has submitted, inter alia, a copy of an “Attendance Note” by Paula Dumbill concerning telephone conversations with Mr. Aftab Afzal.

Complainant contends furthermore that, some time between October 15, 2004, and November 8, 2004, an article appeared on Respondent’s website entitled “Viva la Tech” written by someone under the name of Patrick Cox and with a link to the site of Cobblers Limited. Complainant has submitted a copy of the pages containing that article which, according to Complainant, remained there at least until January 21, 2005, but then without a link to the Cobblers Limited site. The heading “About us” on the website of Respondent, showed that Patrick Cox was a journalist who had a number of articles published on a website called “Tech Central Station”. From copies of webpages submitted, it appears, according to Complainant, that the “Viva la Tech” article was first published on July 12, 2004, that is, after Complainant had first contacted Respondent’s representative. Complainant adds that it has no connection with this Patrick Cox, nor has Respondent, as far as Complainant is aware. Complainant has submitted copies of the relevant webpages.

On or about March 29, 2005, Complainant found that the domain name at issue had been transferred to “Patrick Cox” who is now stated as Respondent in this case. The website at the domain name leads to the website of “IP Finance” of which Complainant has also submitted copies.

Complainant submits that the “IP Finance” website contains only generic information and no information neither on specific services, nor on employees and contains no proper business address. Complainant adds that the “Contacts” page contains a reference to “IP Path” which is the domain name of Mr. Afzal and also the name of a limited company of which he was a director until last year. There is nothing on the website that could, according to Complainant, explain why a business called “IP Finance” could conceivably want to adopt a domain name incorporating the name “Patrick Cox”.

In view of the circumstances and bearing in mind that Mr. Afzal continued to be involved with the contested domain name also after the transfer of it, Complainant declares that it is skeptical as to the bona fide of the transfer of the domain name to “Patrick Cox”. Furthermore, Complainant adds, there is no Patrick Cox on the electoral roll or the telephone directory listed under the Respondent’s address. Also, the freehold title for this address is owned by a Mr. Edward Chand and Mr. Chand, and Rubka Chand are on the electoral roll for that address. A visit to that address revealed that nobody was at home but that letters were being delivered to Mr. Chand and at least five other persons, none of whom were to a Mr. Cox.

The website for “IP Finance” indicates, according to Complainant, that it is as a “UK Independent Financial Adviser directly regulated by the Financial Services Authority (FSA)”. Complainant’s enquiries at the FSA showed, however, among several other matters, that IP Finance is not registered with the FSA, nor is Mr. Afzal or Mr. Cox. The only business with an FSA registration at the address given on the IP Finance website is a company called Seed Capital Limited and this company appears to have no connection of any kind to IP Finance.

In the light of the circumstances, Complainant submits that Respondent – if he exists under the name Patrick Cox - has no rights or legitimate interests in the domain name. In summary, Complainant submits in this respect that a) there was no active use of the domain name before Complainant’s representative contacted the representative of the previous owner of the domain name, Miss Shabnem Afzal, b) the only active use between that time and the transfer of the domain name was the display of an article by a journalist which was originally published on a third party website, c) neither Miss Afzal, nor her brother and representative, Mr. Aftab Afzal, has a name that includes “Patrick Cox”, nor did or does either own any registrations or applications for registration of that name at the UK Patent Office or the OHIM, d) no details were ever provided about the “fashion-related venture” for which, according to Mr. Afzal, the domain name was originally registered; any such use of the domain name would have resulted in an infringement of Complainant’s trademark or a passing off. Furthermore, as regards the transfer of the domain name to “Patrick Cox” in March 2005, Complainant notes that there is no evidence to suggest that there is actually a Mr. Cox living at the address given on the current domain name registration and that the representative of the former registrant, Mr. Afzal, remains closely involved with the domain name. There is, according to Complainant, no evidence of any genuine business activity at the website for which the domain name at issue is now the URL or as to why a business called IP Finance, for which there is no identified personnel, should wish to use a domain name comprising the name “Patrick Cox”.

On the basis of these contentions, Complainant alleges that the only conclusion that can realistically be drawn is that the 2005 transfer was a scheme whose only purpose was to try to defeat a complaint by Complainant of which the administrative contact for the domain name was fully aware.

3. Registration and Use in Bad Faith

In this respect, Complainant refers to a number of the circumstances that have been mentioned under the previous heading. In conclusion, Complainant submits that there was no active use of the domain name between its registration in February 2000, and the date when Complainant’s representative first contacted the representative of the previous registrant.

As regards the use of the domain name in connection with a fashion-related venture, as claimed by the previous registrant on several occasions, such use would, according to Complainant, not have been legitimate as it would have infringed Complainant’s registered or unregistered trademarks, and, furthermore, it would be inconceivable that anyone in the United Kingdom intending to become involved in a fashion-related venture could coincidentally have chosen as a domain name the name of what is the most well-known designer of fashionable footwear. When contacted by Complainant’s representative in the Summer of 2003, the representative of the previous registrant did not try to substantiate any legitimate intentions of Respondent but offered to sell it for a “six-figure sum”. The justification given for that price, namely the large number of hits could, according to Complainant, have been generated only as a result of the worldwide renown of Mr. Cox and his products.

Complainant adds that the only use of the domain name between the date of Complainant’s initial complaint and the transfer to Respondent in March 2005, was the reproduction on the previous registrant’s website of an article by a journalist called Patrick Cox. There is, according to Complainant, no apparent connection between either the journalist or the owners of the website on which that article was previously published and the previous registrant of the domain name; no other material of any kind appeared, during that period on the previous registrant’s website.

Finally, Complainant submits that it has been established in previous domain name cases that the passive holding of a domain name can in itself constitute a use in bad faith of a domain name.

4. Remedies Requested

In accordance with Paragraph 4(i) of the Policy and for the reasons set out and summarized above, Complainant requests that the domain name at issue be transferred to Bartlehiem N.V.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is thus in Default.

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such conclusions therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant has been contested by Respondent despite the opportunity given to do so. The Panel will therefore consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

The Registrar Verification confirms that the Policy is applicable in this case. Consequently, Respondent is obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain name at issue.

Documentation available in the case shows that the Complaint has been duly communicated to Respondent and that there is from this point of view no obstacle to considering the case.

Paragraph 4(a). of the Policy directs that Complainant has to prove each of the following:

- that the domain name registered by Respondent is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights,

- that Respondent has no rights or legitimate interests in the domain name, and

- that the domain name has been registered and is being used in bad faith.

In the following parts of this Decision the Panel discusses each of those elements and draws the conclusions which form the basis for the decision.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to Paragraph 4.a(i) of the Policy, to prove that the domain name at issue is identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain name at issue is <patrickcox.com>.

Evidence submitted in this case by Complainant indicates that Bartlehiem N.V. and, in some cases, Morlanda Holdings B.V. or Patrick Cox, is holding registrations of the trademark “Patrick Cox” alone or in combination with a fleur de lys symbol, in a number of countries, among them the United Kingdom and the European Union, which registrations apply to footwear, clothing, bags. etc. On the basis of this evidence, the Administrative Panel is satisfied that Complainant has trademark rights in the mark “Patrick Cox”.

As regards then the issue of identity or confusing similarity between the trademark and the domain name at issue, the Panel first notes that, as just mentioned, some of the registrations of the mark contain only the word element while others include the word element together with the fleur de lys symbol.

The Panel considers that the word “Patrick Cox” constitutes the particular distinguishing element in the trademark also in those cases where the fleur de lys symbol is included and that, therefore, the question of identity or confusing similarity has to be decided on the basis of the word element of the mark and the domain name at issue. In making a comparison in this respect, the Panel concludes that there exists a confusing similarity between the trademark in which Complainant has rights and the domain name at issue.

In this context the Panel notes that the addition of “.com” is not of such a nature as to remove the likelihood of identity or confusing similarity.

In conclusion, the Panel finds that Complainant has established the existence of a confusing similarity between the trademark and the domain name at issue.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.

As mentioned above, Complainant has submitted a number of elements to prove that Respondent has no rights or legitimate interests in the domain name at issue.

The Panel notes that Complainant has raised some questions as to the existence or the identity of the Respondent mentioned as “Patrick Cox”. The Registrar Verification indicates, however, Patrick Cox is the Registrant of the domain name at issue. Consequently, this Patrick Cox as the Registrant is the entity against whom, or against which, the legal effects of the decision in this case are to be directed.

Complainant has invoked a number of circumstances, largely supported by evidence, relating to various activities undertaken in respect of the domain name, in particular such that occurred after the point in time when Complainant’s representative formally contacted the representative of the then Registrant of the domain name. Among those are the appearance of an article by a journalist named Patrick Cox on the webpage under the disputed domain name, and the transfer, in March 2005, of that domain name to “Patrick Cox” with a link to the website of IP Finance. Also, circumstances referred to by Complainant indicate that, according to Mr. Afzal, the domain name had originally been registered for a planned fashion-business venture which had, however, never materialized; instead, it would seem that an offer was made to sell the domain name to Complainant for a substantial sum of money.

These and other circumstances invoked in this context by Complainant have been communicated to Respondent who has, however, not contested despite the opportunity given go do so.

The Panel notes in this context that communications of the Complainant to Respondent under the e-mail address patrick@patrickcox.com and postmaster@patrickcox.com failed and were returned with the message “User unknown”. The corresponding communications to Mr. Aftab Afzal, on the other hand, went through. The Panel also takes note of the fact that Mr. Afzal, is still mentioned as the Administrative, Billing and Technical Contact for the domain name at issue.

The Panel furthermore notes that the webpage of “IP Finance” contains information on various financial matters and also indicates an address in Oxford to which inquiries or complaints should be sent. Complainant has, in this context, submitted a Memorandum concerning certain inquiries which show that IP Finance does not seem to exist at that address, nor does IP Finance seem to be registered with Financial Services Authority, something that is claimed on the IP Finance webpage.

The question is then whether the circumstances invoked by Complainant and, as mentioned, largely supported by evidence are such as to prove that Respondent has no rights or legitimate interests in the domain name. Respondent in this case has provided no clarification because no Response has been submitted.

The Panel attaches importance to the fact that the intended use of the domain name at the time of its registration was related to a fashion industry venture. Such a use would obviously involve a particularly great risk of being in conflict with Patrick Cox’s trademark rights.

The Panel can not see that the publication of the article “Viva la Tech” on the website at the point in time when it occurred would be of particular significance to clarify the issue of rights or a legitimate interests. This article had been published before on another website and did not deal with any matter even remotely related to fashion venture activities or did otherwise have any relation to “IP Finance” or to anything else in the context of this domain name to which no person with the name of Patrick Cox had previously been associated. Furthermore, the transfer of the domain name in March 2005, and the establishment of a link to “IP Finance” are not, in view of the circumstances present in the case, such as to establish rights or legitimate interests in the domain name at issue. In particular, the Panel fails to understand why the domain name <patrickcox.com> should be used to lead to a webpage dealing with financial services.

When considering the circumstances present in this context, the Panel comes to the conclusion that Respondent mentioned in this case, Patrick Cox, has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to Paragraph 4.(a)(iii) of the Policy to prove that the domain name has been registered and is being used in bad faith. Furthermore, Paragraph 4.(b). of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered to be evidence of registration and use in fad faith.

Complainant has referred to a number of the circumstances that have been invoked in the question of rights or legitimate interests. In addition, Complainant has stressed in particular that there was no active use between the registration of it and Complainant’s initial contacts with Respondent and that the only use after that contact was, in essence, the publication of the above-mentioned article and the transfer of the domain name to the name of the present Respondent. Complainant has also referred to Respondent’s indication that the domain name was intended to be mentioned in connection with a fashion-related venture which had not materialized whereafter Respondent was willing to sell it to Complainant for a substantial sum of money.

The evidence submitted suggests that “Patrick Cox” products and its mark have appeared in the fashion press for several years. It is in the view of this Panel inconceivable that anyone wishing to engage in the fashion business in the United Kingdom would not be aware of these circumstances, but must have been aware that use of the name Patrick Cox for any fashion business activities would be likely to infringe Complainant’s trademark rights. The Panel also finds it inconceivable that anyone wishing to enter the fashion business would by coincidence choose the domain name “patrickcox”.

The Panel also notes that there was obviously no active use of the webpage before Complainant’s representative contacted Respondent. The Panel does not consider the use made after that date to be such that it would constitute a bona fide use, and can not find that the holder of the registration, Patrick Cox, has been involved, either directly or through the link to “IP Service”, in activities that would be considered as such bona fide use. In particular, the Panel can see no good explanation to why the domain name at issue would be used for pointing at a website for financial services about which the Panel also notes that it seems to be an activity unknown to the Financial Services Activity, as suggested by Complainant with reference to evidence.

Also in this case, the Panel notes that Respondent has not commented upon or contested the allegations by Complainant despite the opportunity given to do so.

The Panel agrees with the principle established in previous decisions that that passive holding of a domain name may well constitute a use in bad faith.

In assessing the circumstances present in the case the Panel concludes that the domain name at issue has been registered and is being used in bad faith.

D. Conclusions

On the basis of a the foregoing, the Administrative Panel concludes that it has been established in this case that the domain name at issue is confusingly similar to the trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith. Complainant’s request for a transfer of the domain name to Complainant, Bartlehiem N.V. shall consequently be approved.

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 <patrickcox.com> be transferred to Complainant Bartlehiem N.V.

Henry Olsson
Sole Panelist

Dated: July 25, 2005