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Barlow Lyde & Gilbert v. The Business Law Group [2005] GENDND 600 (24 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barlow Lyde & Gilbert v. The Business Law Group

Case No. D2005-0493

1. The Parties

The Complainant is Barlow Lyde & Gilbert, Beaufort House, London, United Kingdom of Great Britain and Northern Ireland, represented by Andrew Horrocks, United Kingdom of Great Britain and Northern Ireland.

The Respondent is The Business Law Group, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <blg.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2005. On May 9, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 11, 2005, Network Solutions, LLC 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 May 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2005.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 10, 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

Complainant has registered the service mark “BLG” on the trademark register of the UK Patent Office, reg. no. 2142608, dated February 13, 1998, in international classes 16, 35, 36 and 42. Complaint, para. 11 & Annex 6.

Complainant was established in 1841. It is today an international law practice comprising over 300 lawyers, based in the United Kingdom of Great Britain and Northern Ireland, with offices in Hong Kong SAR of China, Shanghai and Singapore. It represents a number of large institutional clients. Complainant’s full name is Barlow Lyde & Gilbert. Complainant has submitted evidence that the firm refers to itself as “BLG”, including in published marketing literature. The usage of BLG by the firm started at least as early as spring 1990. Clients of the firm also use the designation BLG. Id., para. 11 & Annexes 7-8.

Complainant operates a commercial Internet web site with address (URL) “www.blg.co.uk”. This web site has been in operation since 1995. Complainant has also registered about 20 additional domain names, most of which incorporate the BLG designation. Id., para. 11 & Annex 9.

According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name <blg.com>. According to a Network Solutions WHOIS database printout furnished by Complainant, the record of registration of the disputed domain name was created on January 11, 1996.

There is no evidence on the record of this proceeding to indicate that Respondent has made active use of the disputed domain name.

Complainant attempted to contact Respondent by letter, fax and e-mail starting in September 2004. According to the Complaint, the Complainant “wrote to the Respondent … objecting to the Respondent’s registration and use of the domain name … and offering to pay the Respondent’s reasonable costs in return for transfer of the domain name to the Complainant”. (Complaint, para. 11). However, the terms of the letter sent by Complainant on September 20, 2004, do not refer to an alleged infringement. The letter indicates that Complainant has branded itself “BLG” and states “Since you are not actively using the name I am therefore writing on behalf of my firm to enquire whether you would be willing to release the domain name to us. The formalities are of course not complicated assuming you are happy to agree to this.” (Id., & Annex 5).

Complainant has attached its transcription of a voicemail message it states was received from the administrative contact of Respondent on April 21, 2005. That transcript states:

“Hello Andrew Horrocks this is Anthony Rodríguez returning your call regarding the blg.com domain name. please [sic] call me at your earliest convenience so that err [sic] we can determine whether your firm is interested in putting in a bid for the name. The current bid from BLG Canada for $100,000 [sic]. Please let me know as soon as soon [sic] possible whether your [sic] interested in bettering the bid. Thank you.” Complaint, Annex 16.

Complainant has submitted Google search printouts showing its firm at the top of search returns for the term “blg”. However, those same Google printouts show another law firm, Borden Ladner Gervais LLP of Canada, also with returns for the same search. There are, in addition, several other groups which appear to use the term “blg” as an acronym (such as “British Livestock Genetics”). Complaint, Annex 5.

Attempting to show that Respondent does not hold a registered trademark for BLG in the United States of America, Complainant submitted USPTO TARR database printouts for “business law group” and “blg”. Those printouts show that there is an existing word and design service mark registration in the United States of America for “BLG” in the field of legal services held by a party other than Complainant or Respondent (reg. no. 2686615, dated February 11, 2003). In addition, the Canadian law firm Borden Ladner Gervais has applied for service mark registration for “BLG” for use in the field of periodical publications (ser. no. 78324800, dated November 7, 2003). Furthermore, application for registration of the service mark “The Business Law Group” was filed by a professional corporation located in Beverly Hills, California in June, 1998, and was abandoned on July 20, 2000 (ser. no. 75505969). This professional corporation shows a different address (although nearby) to that of Respondent. Complaint, Annex 10.

The Registration Agreement in effect between Respondent and Network Solutions, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts rights in the service mark “BLG” based on use in commerce and as evidenced by registration at the UK Patent Office.

Complainant alleges that the disputed domain name is identical to its registered service mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it has no affiliation with Complainant, it is not authorized to use its service mark, it has not made legitimate noncommercial or fair use of the name, and it has not used the domain name for a bona fide offering of goods or services.

Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. It asserts that passive holding of the domain name may constitute bad faith. It also asserts that Respondent “contacted the Complainant offering to sell the domain name to the Complainant, seemingly for a price astronomically beyond the Respondent’s reasonable costs of transfer. This, coupled with the fact that the Complainant has expressly been invited by the Respondent to enter into a bidding war suggests that the domain name was primarily registered for the purpose of selling it to the owner of the BLG trademark for valuable consideration … in order to achieve financial gain and that the domain name was therefore registered and is being used in bad faith.”

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center transmitted notification of the Complaint to Respondent at the addresses indicated for its registration of the disputed domain name. Respondent has previously been contacted at those addresses. According to the return report to the Center from the air express courier, the documents were successfully delivered to Respondent’s address. The Panel is satisfied that Respondent was given adequate notice of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

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

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

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant registered the service mark “BLG” in the United Kingdom of Great Britain and Northern Ireland in 1998. Such registration is sufficient to establish rights in the mark in the United Kingdom of Great Britain and Northern Ireland as from that date, and Respondent has not challenged those rights. Complainant relies on use in commerce in the United Kingdom and in Asia for the establishment of rights prior to that date. Respondent has not challenged Complainant’s assertion of common law rights in the mark in the United Kingdom of Great Britain and Northern Ireland prior to 1998. In the absence of contradictory evidence, the Panel is satisfied to assume that Complainant established common law rights in the service mark BLG in the United Kingdom of Great Britain and Northern Ireland prior to its registration of the mark. However, as discussed below in the context of “bad faith”, it is relevant that Complainant’s registration in 1998, of its mark in the United Kingdom of Great Britain and Northern Ireland post-dated Respondent’s registration in 1996, of the disputed domain name.

For purposes of the Policy, the disputed domain name, <blg.com>, is identical to Complainant’s service mark “BLG”. Complainant has established that it is the holder of rights in a service mark and that the disputed domain name is identical to that mark. This is one element necessary for a finding of abusive domain name registration and use.

Complainant’s mark is an acronym for the names of partners in its law firm. That same acronym is used by other firms in the field of law in countries other than the United Kingdom, and that acronym is used by a substantial number of businesses in fields outside of law. Complainant has not submitted evidence sufficient to establish that the letters “blg” are sufficiently well known in connection with Complainant that third parties outside the United Kingdom of Great Britain and Northern Ireland should be assumed to have knowledge of this association.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.” (Policy, paragraph 4(c)).

Respondent has not demonstrated any active use of the disputed domain name or preparations to use it. In registering the name, Respondent referred to itself as “The Business Law Group”. Respondent has not submitted information to the Panel regarding whether it has been known in business by this name. Therefore, the Panel is unable to conclude that Respondent has been commonly known by the term “blg” as an acronym for The Business Law Group. While use by Respondent of The Business Law Group as its name for registration purposes in 1996, does not establish legitimate rights or interests in the disputed domain name, it is relevant to the issue of bad faith, discussed below.

Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. That is the second element for a finding of abusive domain name registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct” (id., paragraph 4(b)(ii)), and (3) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location of a product or service on [its] web site or location” (id., paragraph 4(b)(iv).

Complainant argues two grounds under which Respondent should be found to have registered and used the disputed domain name in bad faith. The first is that Respondent offered to sell the disputed domain name to Complainant at a price in excess of its out-of-pocket costs, which Complainant suggests is evidence of its intention at the time of registration to sell it to Complainant (i.e., the holder of trademark rights).

At the time Respondent registered the disputed domain name (in 1996), Complainant had not registered its service mark. Complainant has relied on common law rights in the United Kingdom of Great Britain and Northern Ireland to establish its interest in the mark at that time. Complainant is based in United Kingdom of Great Britain and Northern Ireland and it also does business in Asia. Respondent is located in the United States. Complainant has not demonstrated service mark rights in the United States of America by evidence of registration (or, for that matter, by evidence of usage under common law). Had Respondent done a global trademark search in 1996, it would not have found a registration for Complainant’s BLG mark either in United Kingdom of Great Britain and Northern Ireland or the United States of America. There is no basis for determining that Respondent should have been on constructive notice of Complainant’s mark at the time it registered the disputed domain name. Complainant has not demonstrated that its common law rights in the mark were well known in 1996, such that Respondent should have been aware of Complainant’s rights in it.

Respondent used the name “The Business Law Group” in its registration of the disputed domain name <blg.com>. The logical inference is that Respondent was using “blg” as an acronym for “Business Law Group”, whether or not it had been known by that name.

The evidence strongly suggests that Respondent did not register the disputed domain name with the intent to sell it to Respondent because (a) Respondent (located in the United States of America) had no reason to be aware of Complainant’s service mark at the time of registration, and (b) there is a direct logical connection between the name it used as registrant and the disputed domain name. The fact that Respondent offered in 2005 to involve Complainant in a bidding contest for the disputed domain name, only after it had been contacted by Complainant (and whether or not another offer had been received by Respondent), does not provide adequate evidence that Respondent in 1996, registered the disputed domain name to take unfair advantage of Complainant. It more plausibly shows that Respondent had in 1996 registered a combination of letters which in 2005, had potential value to a number of parties.

Standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. Respondent did not initiate contact with Complainant. It responded to contact from Complainant concerning the domain name. There is nothing here to show that Respondent took any interest in Complainant prior to being contacted by it. The Panel finds that Complainant has failed to establish that Respondent registered the disputed domain name with the intention to sell it to Complainant.

Complainant’s second argument is that Respondent should be found to have acted in bad faith by the “passive holding” of the disputed domain name. A number of panel decisions, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, decided February 18, 2000, have found bad faith on the basis of domain names which have been registered but not used by the registrant. However, non-use of a domain name does not on its own constitute bad faith. Other factors must be involved. An important element is that the complainant’s mark is sufficiently well known such that a registrant might reasonably be inferred to have registered an identical or confusingly similar domain name in the expectation of taking advantage of the trademark holder. As discussed above, Complainant has not demonstrated that Respondent should have had notice of its service mark rights when it registered the disputed domain name. Complainant has not demonstrated that its mark was well known. In the circumstances of this proceeding, the Panel does not consider that Respondent’s failure to use the disputed domain name is sufficient evidence that it registered it in the expectation of taking unfair advantage of Complainant.

The Panel finds that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith. Complainant has failed to establish the third element necessary for a finding of abusive domain name and use. Therefore, the Panel will not direct the Registrar to transfer the disputed domain name to Complainant.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott
Sole Panelist

Dated: June 24, 2005