[Indexed as Alfred Dunhill v. NSC Enterprises]
[Indexed as: ALFREDDUNHILLS.COM]
World Intellectual Property Organization Arbitration and Mediation Centre
Administrative Panel Decision
Case No. WIPO D2000-0525
Commenced: 2 June 2000
Judgement: 4 August 2000
Presiding Panelist: William R. Cornish
Domain name- Domain name dispute resolution policy- Trademark- Bad faith use- Bad faith registration- United Kingdom trademark.
Complainant was registered proprietor of ten United Kingdom trademarks. Complainant has a long-established business in selling various luxury items worldwide, and is a well-known sponsor of prestigious sporting events. Respondent registered the domain name ALFREDDUNHILLS.COM, which gave access to a website related to another company
Held, Name Transferred to Complainant.
There can be no question that Respondents domain name ALFREDDUNHILLS.COM is identical, save for the addition of a final s to Complainants mark.
Respondent has not demonstrated any legitimate commercial or non-commercial business interest under the domain name in dispute that would justify its registration and use of the domain name. It is plain that a member of the public who used the domain name to make contact that proves to be with the Respondent is inherently likely to suppose that the company is in some way connected with the Complainant.
Respondents use of the domain name has been in bad faith, consisting of using or preparing to use the domain name so as intentionally to attempt to attract, for commercial gain, Internet users to the web site, by creating a likelihood of confusion with the Complainants marks and business name as the source, sponsorship, affiliation or endorsement of that website. In the circumstance, including in particular the absence of any response, it must equally be inferred that the initial registration was in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
WIPOs Supplemental Rules for Uniform Dispute Resolution Policy, adopted
Registration Agreements referred to
Network Solutions Service Agreement Version 5.0, effective 6 December 1999
William R. Cornish, Panelist: -
1. The Parties
The Complainant is Alfred Dunhill Ltd, 30 Duke Street, St. James's, London SWIY 6DL, UK. Complainant has a long established business in selling various luxury items worldwide.
The Respondent is NSC Enterprises, Barcote Tower, Barcote Park, Nr Buckland,
Oxon SN7 8PP, UK.
2. Registrar and Disputed Domain Name
The disputed Domain Name is ALFREDDUNHILLS.COM, registered by Network Solutions, Inc. on December 6, 1999, in favour of the Respondent as Registrant.
3. Procedural Background
(1) The Complaint in Case D 2000 0525 was filed on June 2, 2000.
(2) The WIPO Arbitration and Mediation Center has found that:
- the complaint was filed in accordance with the requirements of the
Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements.
The Panel accepts these findings and itself finds that:
- the Complaint was properly notified in accordance with the Rules,
paragraph 2(a) in that the Complaint was sent to the Respondent and to
the Administrative, Technical, Zone and Billing Contacts named above at
the addresses there given by post/courier, fax and email;
- no Response to the Complaint was filed in due time;
- notification of this Default was given to the Respondent and the
above named contacts by Post/Courier dispatched on July 3, 2000, and by
E-mail on July 19, 2000; and that
- the Administrative Panel was properly constituted.
(3) The Panelist submitted a Statement of Acceptance and Declaration
of Impartiality and Independence.
(4) There have been no further submissions in the Case.
(5) The date scheduled for issuance of a decision is: August 7, 2000.
(6) No extensions have been granted or orders issued in advance of
this decision.
(7) The language of the proceedings is English.
4. Factual Background
(1) The Complainant has demonstrated that it is registered proprietor
of ten
United Kingdom trade marks, all consisting of "Alfred Dunhill" with
or without a device or other words. The registrations are for a considerable
variety of goods in different classes of the register. They were obtained
on various dates between March 7, 1944 and March 28, 2000.
(2) The Complainant has produced evidence to demonstrate that it has a long-established business in selling various luxury items, including menswear and accessories, first in the UK and subsequently in North America, Hong Kong, Japan, Singapore, Australia and elsewhere. It is known as the sponsor of prestigious sporting events, as well as being widely advertised, its mark is prominently used on the website of its parent corporation, richemont.com. Its products and services are the subject of newspaper articles of which examples have been provided.
(3) After becoming aware of the Respondents registration of the domain
name in issue, on March 3, 2000, the Complainant's representative wrote
to the
Respondent drawing attention to its registered trademarks that use
"Alfred
Dunhill". The letter was sent by post and email to the Respondent's
above address and to the Administrative Contact at that address. No response
was received.
(4) While, on March 3, 2000, the Complainant was unable to access any
website by use of the domain name in issue, by March 28 it found that the
name gave access to a website relating to a company called Just Rams plc.
Just Rams there advertises at some length its services as a computer memory
specialist. The same site can be accessed through the domain name, justrams.com.
5. Parties Contentions
A. Complainant
The Complainant asserts:
- that the Respondents domain name at issue is identical or confusingly
similar to the Complainants registered marks referred to in Paragraph
4 above;
- that the Respondent has no legitimate interests in respect of the
domain name; and
- that it has registered and used the domain name in bad faith.
Accordingly the Complainant seeks transfer of the domain name in issue to itself.
B. Respondent
The Respondents have not filed a response and the Dispute has therefore
to be determined on the basis of the Complainants assertions.
6. Discussion and Findings
The Complainant has established that it has a large and well-known business
built around the trademark, "Alfred Dunhill". The version of this taken
by the
Respondent for the domain name in issue is identical save for the addition
of a final 's'. Whether this is intended to indicate a plural or a genitive,
it is very close to the Complainant's mark and it is inherently likely
to be taken by members of the public as confusingly similar to that mark.
The Respondent has not sought to show that it has any legitimate business
interest which would justify its registration and use of the domain name.
While the Complainant has not received any offer or other suggestion
about purchasing the domain name, it has shown that, once it raised its
objections with the Respondent, the domain name was used as an address
leading to the Just
Ram's website. What the connection between the Respondent and Just
Rams is has gone unexplained, since there has been no response to the complaint.
Whatever it may be, it is plain that a member of the public who used the
domain name to make a contact which proves to be with Just Rams is inherently
likely to suppose that that company is in some way connected with the Complainant.
The Panel accordingly concludes that this use of the domain name has
been in bad faith, consisting of "using or preparing to use the domain
name so as intentionally to attempt to attract, for commercial gain, Internet
users to the web site, by creating a likelihood of confusion with the Complainants
marks and business name as the source, sponsorship, affiliation or endorsement
of that web site". In the circumstances, including in particular the absence
of any response, it must equally be inferred that the initial registration
was in bad faith.
7. Decision
The Panel decides, in accordance with the Uniform Domain Name Resolution
Policy,
Paragraph 4:
- that the domain name in dispute is identical or confusingly similar
with the registered trade marks and the service mark of the Complainants;
- that the Respondent has no right or legitimate interest in respect
of the domain name; and
- that it has been registered and is being used in bad faith.
The Panel accordingly requires that the domain name ALFREDDUNHILLS.COM
be transferred forthwith to the Complainant.
William R. Cornish
Panelist
Domain Name Transferred