v.
Purge I.T., Purge I.T. Ltd
[ Indexed as: Direct Line v. Purge I.T]
[Indexed as: DIRECTLINESUCKS.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D 2000-0583
Commenced: 12 June 2000
Judgment: 13 August 2000
Presiding Panelist: William R. Cornish
Domain name - Domain name dispute resolution policy - U.K. Trademarks - Identical - Confusingly similar - No rights or legitimate interests - Bad faith registration - Bad faith use - No web site developed - Registered for sale - Owns other sucks sites.
Complainants were proprietors of United Kingdom trademark registrations consisting of or incorporating as a major feature the words, Direct Line. Complainants have a well-known trademark for banking and associated services in the United Kingdom. Respondent registered the domain name, directlinesucks.com. Respondent has not developed a Web site using the domain names at issue.
Held, Name Transferred to Complainant.
It is clear that the adoption of Complainants name in the Domain Name is inherently likely to lead some people to believe that Complainants are connected with it. Others may be unable to give it any very definite meaning and will be confused about the potential association with Complainants.
Respondents do not act in a wholly altruistic spirit since they seek substantial sums beyond their own costs before they will transfer over the offending registration. This aspect has to be brought into account in considering whether the Respondents therefore have any right or legitimate interest in the Domain Name, with which they otherwise have no association whatsoever, and which they admit to have selected by reference to the Complainants reputation in their own marks. The panel finds that there is no justification for the role of officious interferer which the Respondents have taken upon themselves to provide in the manner in which they have chosen to do so.
It is also clear that the Respondents registered the name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainants who are the owners of the relevant marks for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Rules referred to
ICANNs Rules for Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999
Panel Decisions referred to
Case D 2000-0477 (walmartcanadasucks.com)
R. Cornish, Panelist: -
The parties
1. The Parties
Complainants:
(1) Direct Line Group Ltd
(2) Direct Line Insurance plc
(3) Direct Line Financial Services Ltd
(4) Direct Line Life Insurance Company Ltd
(5) Direct Line Unit Trusts Ltd
(6) Direct Line Group Services Ltd
All of 3, Edridge Road, Croydon, Surrey CR9 1AG, United Kingdom.
Respondents:
(1) Purge I.T. of Park Farm Cottage, St Giles Close, Wendlebury, Oxon
OX6 7AA, U.K.
(2) Purge I.T. Ltd of Unit D3a, Telford Road, Bicester, Oxford OX6
0TZ, U.K.
2.The Domain Name and Registrar
DIRECTLINESUCKS.COM, registered by Network Solutions, Inc. on May 11,
1999, to the Registrant: Purge I.T. (Directlinesucks-dom); (Contacts:OzNic.com
-- Administrative: (AMD598-ORG), Technical and Zone: (ITT-ORG), Billing:
(ITA3-ORG))
3. Procedural History
(1) The Complaint in Case D 2000-0583 was filed on June 12, 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), having been sent to the Respondents and the Contacts abovenamed
by Post/Courier, Fax and E-mail.
- A Response to the Complaint was filed in due time, though a copy
was not sent by the Respondents to the Complainants; as required by Rule
2(h) of the Dispute Resolution Policy.
- the Administrative Panel was properly constituted.
(3) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There has been a further submission from the Complainants consisting of comments on the Response. Due to the failure of the Respondents to send the response to the Complainants, the Panel decided that it must in the circumstances be admitted. In order to avoid any consequent prejudice to the Respondents, the Panel in turn permitted the Respondents until August 6, 2000, to offer their own comments. None have been received.
(5) The date originally scheduled for issuance of a decision was: August 8, 2000. In light of the circumstances mentioned in the previous paragraph, the Panel ordered that this be changed to August 13, 2000.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Complainants are a group of United Kingdom companies of which
the first-named is the parent. Between them they do considerable business
in that country in insurance, mortgages and other loans, life assurance,
savings accounts and other financial services, the sixth Complainant providing
various service and contracting functions to the others. The Complaint
has furnished detailed evidence of the considerable amounts of business
undertaken by the second to the fifth Complainants, all of which employ
the mark, "Direct Line", for their services and products.
On behalf of the Direct Line group, the second Complainant is proprietor of 20 registrations of trade marks in the United Kingdom, consisting of or incorporating as a major feature the words, "Direct Line". The registrations are held for various insurance and other financial services and also for considerable categories of goods and all date from before registration of the Domain Name in dispute.
(2) The Complainants also hold 52 TLDs which incorporate "directline" or "directlines". Many of these add a further word without any break, as in "directlineinsurance.com", "directlineclub.com".
(3) The Complaint forms one of a series against the Respondents or the
corporate Respondent alone. The Response to these cases has been by a single
document, which indicates that the Domain Name Registrations in issue were
made in pursuit of the same business objective. The Complainants have demonstrated
by WhoIs database searches that the Respondents have registered with Network
Solutions the names or abbreviations of eighteen well-known British enterprises
with the addition of "sucks". All were obtained on May 11, 1999. Five have
resulted in the parallel complaints which have been referred conjointly
to the present Panel. The other four are D2000-0584 (dixonssucks.com),
D2000-0585 (freeservesucks.com), D2000-0636 (natwestsucks.com) and D2000-0681(standardcharteredsucks.com).
5. Parties Contentions
A. Complainants
The Complainants assert the following:
- The Respondents' Domain Name at issue is identical with or confusingly
similar to the Complainants' trade marks indicated above.
- The Respondents have no legitimate interest in the names for which
the Complainants have registered marks.
- The Respondents registered the Domain Name and are using it in bad
faith in that they are seeking to obtain financial gain from it by securing
its transfer for a substantial sum to the Complainants and have repeatedly
offered it to the Complainants on such terms.
- Accordingly the Complainants seek transfer of the Domain Name in
issue to themselves.
B. Respondents
The Respondents, while not contesting directly the documentary material
submitted as annexes to the Complaint, nevertheless deny that they have
acted in bad faith or that they have ever used the Domain Name after registration.
In particular:
- They did not secure the Domain Name in order itself to establish
any website.
- They did not intend to transfer the registration to anyone other
than the Complainants, and in particular not to any disgruntled person
who might wish to acquire it in order to host complaints against the Complainants
or otherwise to extract revenge. On the contrary their motivation was to
protect the Complainants against such risks.
- Mere registration without more cannot amount to use.
6. Discussion and Findings
In accordance with the Dispute Resolution Policy, Paragraph 4(a), the
Complainants bear the burden of demonstrating three elements.
Element 1: That the Complainants have rights in a trade or service mark, with which the Respondents' Domain Name is identical or confusingly similar.
As they have clearly demonstrated in their Complaint, the Complainants
have a well-known trade mark for banking and associated services in the
United Kingdom. This reputation is protected by the registration of the
trade marks already referred to in Paragraph 3(1) and further enhanced
by the use which they make of their Domain Names also there referred to.
The Respondents' explanation of the conduct which they have pursued in
relation to the names of various major enterprises is as follows:
"The company was set up in response to an article in The Times newspaper
referring to disgruntled consumers registering domain names such as walmartsucks.com
to host complaints sites against companies."
The Respondents' registration, consisting of the Complainants' name with the suffix, "sucks" (plus ".com"), is not identical to the Complainants' marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainants' name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com)).
Element 2: The Respondents must be shown to have no rights or legitimate interests in the Domain Name.
The Complainants' reputation was well established before the Respondents
began their activity, as is evident from their own statement of purpose,
which is said to be, to help protect enterprises against being bothered
by customer sites at which grievances are aired. Complaints sites are only
likely to be set up against businesses with considerable reputations. Those
who have genuine grievances against others or wish express criticisms of
them -- whether the objections are against commercial or financial institutions,
against governments, against charitable, sporting or cultural institutions,
or whatever -- must be at liberty, within the confines set by the laws
of relevant jurisdictions, to express their views. If today they use a
website or an email address for the purpose, they are entitled to select
a Domain Name which leads others easily to them, if the name is still available.
The Respondents, contrarily, make it plain that their purpose is to
have none of such free expression. They want, so they say, to protect against
such engines of free speech. They claim as their own legitimate interest
that they are in the business of obtaining Domain Names which might embarrass
well-known enterprises if the names were allowed to fall into the hands
of critics. The Respondents do not, however, act in a wholly altruistic
spirit, since, as will be discussed further under Element 3, they seek
substantial sums beyond their own costs before they will transfer over
the offending registration. This latter aspect has to be brought into account
in considering whether the Respondents therefore have any "right or legitimate
interest" in the Domain Name, with which they otherwise have no association
whatsoever and which they admit to have selected by reference to the Complainants'
reputation in their own marks. The Panel finds that there is no justification
for the role of officious interferer which the Respondents have taken upon
themselves to provide in the manner in which they have chosen to do so.
The Complainants have accordingly made out the second element (see likewise
Case D 2000-0477 (walmartcanadasucks.com)).
Element 3: that the Respondents registered and are using the Domain name in bad faith, in one of the senses of that term set out in Paragraph 4b of the Dispute Settlement Policy.
The first Complainant received a letter of February 9 2000 from the
Respondents offering to transfer the domain name for a "five figure sum"
to be paid directly to a charity chosen by the Respondents. This must be
read as a reference to a sum of at least GBP 10,000. Subsequently, according
to attendance notes whose content has not been challenged by the Respondents,
the Complainants' solicitor had two conversations with Mr Joseph Rice of
Purge (on March 6 and 29, 2000). The upshot of these was an indication
that a payment of somewhere in the region of GBP 5,000, paid directly to
Purge, would, subject to checking, be needed to compensate for the time
and expense involved. Taken together with Mr Rice's assurance that the
whole purpose of registering the name was to enable its transfer to the
Complainants, the Panel finds that these facts constitute plain evidence
of circumstances indicating that the Respondents registered the name primarily
for the purpose of selling, renting or otherwise transferring the domain
name registration to the Complainants who are the owners of the relevant
marks for valuable consideration in excess of documented out-of-pocket
costs directly related to the domain name. Paragraph 4(b)(i) of the Dispute
Resolution Policy states that such conduct is of itself to count as registration
and use of the Domain Name in bad faith. Accordingly the third and final
Element of the Complaint is made out.
6. Decision
The Panel decides, in accordance with the Uniform Domain Name Dispute
Resolution Policy, Paragraph 4a and 4b,
- that the Domain Name in dispute is confusingly similar to the registered
trade and service marks of the Complainants;
- that the Respondents have no rights or legitimate interests in respect
of the Domain Name; and
- that the Domain Name has been registered and is being used in bad
faith.
The Panel accordingly requires that the Domain Name DIRECTLINESUCKS.COM
be transferred forthwith to the Second Complainant as specified in the
Complaint.
Domain Name Transferred