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ACCOR v. Pastor International Marketing, S.A. de C.V (PIMSA) [2005] GENDND 587 (8 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mark Warner Limited v. Name Privacy/SpecName

Case No. D2005-0422

1. The Parties

The Complainant is Mark Warner Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Kilburn & Strode, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Name Privacy/SpecName, Labuan, Malaysia. Contact: Bill Richards.

2. The Domain Name and Registrar

The disputed domain name <markwarner.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 21, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 21, 2005, eNom transmitted by email to the Center its response from which the Center determined that the Respondent is listed as the registrant and verified 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 April 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2005. The Response was filed with the Center on May 18, 2005.

The Center appointed John Terry as the sole panelist in this matter on June 7, 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 UK company which is the owner of a portfolio of domain name registrations containing the word “markwarner” and was the registered owner of the domain name <markwarner.com> until it omitted to renew the domain name registration in 2003, shortly after which the present registration <markwarner.com> was registered Youngin Song of Seoul Korea (referred to hereinafter as “YS”). On March 8, 2005, this registration was transferred to the present Respondent.

The Complainant filed evidence (not challenged by the Respondent) to the effect that it had been trading from a base in UK since 1975 particularly providing travel and holiday arrangements to and at a number of European destinations with a five year average turnover of about UK£40,000,000 and, on average, about 50,000 customers per annum. A substantial reputation and goodwill is asserted to have been acquired over many years particularly for European based customers and this is not contested by the Respondent. At the date of the Complaint, the Complainant has not identified any registered trade marks related to its common law trade mark “MARK WARNER”.

In October 2003, advisers to the Complainant contacted YS by email to enquire whether he would be willing to transfer the domain name registration to the Complainant. In June 2004, YS by email in reply stated that the domain name was not for sale but stated:

“… my shoes are not for sale, but if someone on the streets suggested enough money to me, I am willing to bare my foot.”

The Complainant subsequently decided to prepare the present Complaint with YS as Respondent. The Complainant has provided evidence in the form of Annex 3 a printout from the Internet showing information contained then on the website “www.markwarner.com” as of December 15, 2004. The annex shows that the website in question was registered at “Dotster” a web hosting company and numerous “sponsored links” comprise the content of the website and all relate to ski holiday and hotel websites to which the viewer is invited to divert by clicking. For example, the sites “www.fasttrackski.co.uk” and “www.bestathotels.co.uk” are included. No evidence has been adduced from YS or the present Respondent as to the circumstances in which YS established such a website with such hosting. The uncontroverted evidence of the Complainant is that none of these links have any connection with the Complainant.

Prior to filing the Complaint on April 20, 2005, the Complainant established that the present Respondent had acquired the present domain name and a website internet print out on April 14, 2005, which is the subject of Annex 4 to the Complaint, includes a range of ski holiday websites which, on the uncontroverted evidence of the Complainant are in no way related to the business of the Complainant. The Complaint specifically states “the use of the website at “www.markwarner.com” by the current owner NP [ie. the Respondent] follows exactly in manner and form of the prior use made of the website by YS”. None of this has been disputed by the Respondent.

The Respondent filed a detailed response with extensive submissions. The present procedure does not allow for further evidence by either party or further submissions except by special invitation of the Panelist and the Panelist has elected not to call for such further materials. The Respondent’s assertions are in a signed statement by Bill Richards and have not been in any way tested but for present purposes can be accepted as not contradicted in the following particulars.

The Respondent asserts that it did not become the registered owner with the intention of selling it to the Complainant or any competitor of the Complainant and has not attempted to do so. The Respondent states that it turned over control of the domain name <markwarner.com> to a third party “DomainSponsor” that managed advertisements that appeared at “www.markwarner.com” without any input or control exercised by the Respondent. The Respondent further asserts it was not aware of the links that were appearing until they received the Complaint.

However, the Complaint refers to the website management through Dotster presumably established by YS (the predecessor of the Respondent) and the Respondent is thus discussing apparently something different. The Respondent does not explain or provide any extracts from a website run by DomainSponsor and provides no evidence and, in particular, does not controvert the statements and evidence of the Complainant in relation to the Dotster website stated to still subsist for the Respondent at the date of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contended it had rights at common law due to its long period of use of the trade mark MARK WARNER in Europe and particularly from its base in the UK. Secondly the Complainant contends that the website printouts the subject of Annex 3 and Annex 4 demonstrate that the Respondent’s website (and that of the predecessor to the Respondent, YS) had targeted the Complainant’s business area and that the disputed domain name is characterized by the unregistered trade mark, business and trading name of the Complainant, together with a generic suffix “.com”. Further the Complainant contended and asserted it was aware of no legitimate third party use by anybody including the Respondent and the predecessor YS of “Mark Warner” anywhere in the world and that the Respondent and its predecessor YS have not permission and are not authorized in anyway by the Respondent to take the action to register and use the domain name in dispute.

The Complainant contends that both the Respondent and the predecessor YS proceeded in circumstances in which they were likely to have been aware of the interests and rights of the Complainant at the time of the acquisition of the domain name the subject of the present proceedings and that accordingly registration and use was in bad faith by YS and continued to be in bad faith by the Respondent. The Complainant contends that insofar as YS is concerned, the email indicating he would consider an offer is consistent with and an example of bad faith usage. Furthermore the Complainant contends that the use by YS and then the Respondent of the hosted website at Dotster (the subject of Annex 3 and Annex 4) was an attempt to attract internet users to an online offer for vacation creating a likelihood of confusion with the Complainant’s mark.

In summary the Complainant contends the requirements of the Policy are met and the present domain name should be ordered to be transferred to the Complainant.

B. Respondent

The Respondent makes contentions focusing on the absence of a business of the Complainant in USA and it contended that this is relevant because of an alleged implication of the “.com” suffix i.e. is indicative of a US business the Respondent also relies on the absence of trade mark registrations. The Respondent contends it has a legitimate interest in the domain name in dispute as it acquired it for a “non-trivial sum” from a prior registrant in an arms length, good faith transaction. Further, the Respondent contends legitimate interest on the basis that the domain name contains the name of a prominent US politician, Mark Warner, the Governor of Virginia, and a potential democratic party nomination for US president. The Respondent contends that “speculative registration of such domains is a legitimate commercial activity protected by ICANN’s rules and procedures”.

The Respondent denies bad faith registration and bad faith usage and asserts that it left control of the website to a company called “DomainSponsor” and denies responsibility for the content. The Complainant contends that links provided by DomainSponsor were automatically provided by a “pay-per-click search engine provider” and not specifically requested by the Respondent. The Respondent relied on the decision in relation to the domain name <eaa.com> reported at “www.arbforum.com/domains/decisions/206309.htm.”

Respondent has contended it had no knowledge and had no duty to enquire or know about the Complainant or its activities and there is no relevant bad faith registration or usage by it pursuant to its decision to purchase the domain name in dispute from YS.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has clearly established extensive common law reputation at least in UK in respect of the mark MARK WARNER. Accordingly Complainant has satisfied the Panel that it has established trade mark rights in accordance with paragraph 4(a)(i) of the Policy. Furthermore the Panel finds that the disputed domain name is identical to the trade mark of the Complainant or is at least confusingly similar, as the sole characterizing words of the trade mark MARK WARNER comprise the characterizing element of the disputed domain name together with the generic “.com” suffix which, it is well established, is a difference to be ignored. Thus the requirements of paragraph 4(a)(i) of the Policy are satisfied.

B. Rights or Legitimate Interests

The Panel is satisfied on the evidence that in accordance with paragraph 4(a)(ii) of the Policy neither the Respondent nor its predecessor YS who initially registered the present domain name had at any relevant time rights or legitimate interests in respect of the disputed domain name as at the date of the Complaint. The Complainant has established to the satisfaction of the Panelist its extensive reputation at least in UK in respect of its trade mark particularly related to the travel field and the Respondent has not provided any evidence of any basis for it having rights or legitimate interest. No evidence has been adduced from YS on behalf of the Respondent and the inference to be drawn from the uncontroverted evidence is that YS speculatively registered a domain name which was not renewed and arranged for it to be hosted at the Dotster website and no explanation has been given for that site providing links to travel industry sites (not associated with the Complainant) but in competition with the Complainant. The email from YS inviting a substantial offer is consistent with this finding.

As to the position of the present Respondent, the uncontroverted evidence is that at the date of the Complaint the Respondent had done nothing except to purchase on an arms length business the domain name, to record that change of ownership but to leave the Dotster site undisturbed. Accordingly it is found that the element of paragraph 4(a)(ii) of the policy is made out.

Paragraph 4(c) of the Policy provides three non-limiting examples of circumstances under which a Respondent may be able to demonstrate legitimate rights or interests under paragraph 4(a)(ii). Sub-paragraph (i) of 4(c) does not apply as the Respondent has produced no evidence of use or preparations for use of the domain name with a bona fide offering of goods or services as of the date of the Complaint. Paragraph 4(c)(ii) does not apply as there is no evidence from the Respondent it had become commonly known by the domain name. Paragraph 4(c)(iii) does not apply because the Respondent has not demonstrated any legitimate non-commercial or fair use of the domain name. Thus not only does the Respondent fail to establish circumstances within any of the examples in paragraph 4(c) but also the Respondent fails generally to rebut the evidence applicable to paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Regarding paragraph 4(a)(iii) of the policy, the Panel has considered the principles referred to by the Respondent in relation to the domain name <eaa.com> decision, but finds it does not assist the Respondent in establishing, at the date of the Complaint, relevant usage which might be said to be not in bad faith. The Respondent has not adduced any evidence in respect of the Dotster site and the materials in Annex 3 and 4. Furthermore, in the <eaa.com> case, the Panel found that the “brief appearance of aviation links on Respondent’s websites was automatically provided by a pay-per-click search engine provider and was not intended by the Respondent”. This finding of fact related to conduct before the date of the Complaint but in the present case the present Respondent has adduced no persuasive evidence of its actions prior to the date of the Complaint. There is no evidence that Dotster could be said to be a pay-per-click search engine provider, as it was hosting a website for YS and later for the successor, the present Respondent. There is no evidence anything changed up to the date of the Complaint.

Paragraph 4(b) of the Policy provides four non-limiting circumstances which, if established to the satisfaction of the Panel, lead to the Complainant’s case being made out on the basis of registration and use of the domain name in bad faith. Regarding paragraph 4(b)(i) of the Policy, the evidence does not establish a case for the Complainant against the present Respondent as it is not established that the present Respondent purchased the domain name for the purpose of selling the registration to the owner of the trade mark or to a competitor of the trade mark. It may be that YS, by virtue of his email inviting an offer, might be inferred to have registered and used in bad faith but in the present circumstances it is necessary for the Complainant to establish an approach by the present Respondent within the terms of paragraph 4(b)(i) for that ground to be established. The Panel notes that the Respondent’s explanation that he has left the use of the domain name to the company “DomainSponsor” to exploit commercially through automatic redirection to another webpage. If this is so, it is likely that the Respondent receive some kind of remuneration for this use. Such use may very well fall within the scope of bad faith, but the example of paragraph 4(b)(i) does not seem to naturally cover it.

As to this paragraph 4(b)(ii) and paragraph (iii) of the Policy, there have been no submissions from the Complainant relying on these paragraphs and no finding by the Panel is now made that they apply.

However, regarding paragraph 4(b)(iv) of the Policy, the question is whether the apparent degree of passiveness in the Respondent purchasing the present domain name from YS and accepting and leaving active thereafter the website with other travel links as specified in the evidence to the Complainant, amounts to conduct within paragraph 4(b)(iv) of the Policy. As of the date of the Complaint, there is no evidence that the Respondent’s website for which it was responsible was altered compared with that set up by YS previously. That site has the effect of attracting for commercial gain internet users to other websites with the creation of a likelihood of confusion with the Complainant’s mark. The question is whether the Respondent can be held to have “intentionally attempted to attract” such internet users in such a manner. It is likely that the Respondent had such intentions when he purchased the domain name from YS. The Respondent certainly had or should have had knowledge of the Complainant at that time. Respondent's intentions, as explained by him, fall within a natural interpretation of paragraph 4(b)(iv) of the Policy.

The Respondent's assertions that it may or may not have had a future business intention of making profit by negotiating a business arrangement with the politician Mark Warner does not negate the finding of the Respondent continuing with the Dotster hosting.

The Respondent relied on an assertion that speculative registrations of domain names characterized by the name, e.g. of a prominent politician is a legitimate commercial activity protected by ICANN’s regulations and procedures. No authority or reference has been given and indeed the regulations applicable to this present dispute have no such express provision. The matter must be determined with reference to whether in all the circumstances the Complainant, has discharged, at the date of the Complaint, its obligation to establish a case under the Policy for transfer.

One of the few reported cases concerning politicians’ names is that of the WIPO decision relating to Kathleen Kennedy Townsend v. B. G. Birt, namely the domain name <kathleenkennedy.com> reported as Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030. In that case, the Panel declined transfer but on the limited basis that the Complainant, Kathleen Kennedy, could not prevail although those involved in a financial sense with her campaign might well have had an actionable matter under the Rules for transfer. The Respondent has not cited any other authority for any broad notion for which it contended; namely the speculative holding of prominent politicians’ names is a legitimate activity generally. What might or might not have been in the mind of the Respondent when it purchased the present domain name is to be weighed against the actual usage conducted by the Respondent up to the date of the Complaint. The Panel finds such usage was a continuation of bad faith usage within the terms of the Policy. Secondly, at the date of acquiring the domain name the Respondent had capacity through a simple internet enquiry to establish the reputation of the Complainant and thus had constructive notice of the Complainant’s interests. This is held to demonstrate bad faith acquisition of the present registration by the Respondent and bad faith usage as of the date of the Complaint.

In the present case, the Respondent seems to misunderstand the aim of the Policy. A domain name registration identical or confusingly similar to the name of a famous politician’s name, provided the politician has registered or unregistered trade mark rights in his or her name, can never be bona fide under the Policy, if the intention of the respondent is merely to gain a quick profit through selling the domain name registration (either back to the famous politician or a third party) or using the registration to attract internet traffic. Such traffic of confused internet users may in turn yield advertisement income (advertisers pay a higher price to advertise on frequent visited web pages than less popular web pages). In other words; a speculative domain name registration free riding on someone else’s registered or unregistered trade mark (be that of a company or famous politician) is not beyond the scope of the Policy. On the contrary, it is the very aim of the Policy. The Complaint has thus met the third and last condition of the Policy.

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

John Terry
Sole Panelist