Domain name - U.K. Trademark - Identical - Confusingly similar - Bad faith registration – Bad faith use - Respondent registering domain name for purpose of sale - Irrelevant that others may have legitimate interest in purchase of domain name.

Complainant is the professional organisation of solicitors in England and Wales.  Respondent is a member of the organisation.  Complainant is the owner of a registered trademark in the U.K. of the mark "The Law Society".  Respondent registered the domain name thelawsociety.com.

Held, Name Transferred to Complainant

Many jurisdictions with equivalent organisations use the name "the Law Society of …".  These organisations would also have a legitimate interest in the domain name. Respondent admits that he registered the domain name for the purpose of selling it to either the Complainant or to another interested party.  Respondent argues that as there are others with a legitimate interest in the domain name, he has the right to offer it for sale.  Panel concludes that it is irrelevant that others may have procured similar registrations.  Complainant has established public recognition of "The Law Society" without a geographical suffix, as evidenced by its registered trademark.  Therefore, it is strongly suggested that Respondent know that he would have most likely sold it to the Complainant.  This is bad faith use and registration.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for the Dispute Resolution Policy

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Cornish, Panelist: -

1. The Parties

The Complainant: The Law Society, 113, Chancery Lane, London WC2A 1PL, UK

The Respondent: Mr. Marcus A. Sears, Sears & Co, 2 New Street, Andover, Hampshire SP10 1DP, UK
 

2. The Domain Name and Registrant

<thelawsociety.com> registered in the name of the Respondent with Network Solutions, Inc. of Herdon, Virginia, USA on December 6, 1999.
 

3. Procedural History

(1) The Complaint in Case D 2000-0342 was filed on April 28, 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 Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- the Response to the Complaint was filed in due time;

- the Administrative Panel was properly constituted.

As Panelist I accept these findings.

(3) As Panelist, I 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: June 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

The Complainant is the professional organisation of solicitors in England and Wales and the Respondent has been a member of it since 1981.

On March 8, 1996, the Complainant secured registration in the UK Trade Marks Registry of the mark, "The Law Society" for a variety of goods and services in four classes: Class 16 (printed matter, etc.), Class 35 (business management, etc.), Class 41 (education and training services
relating to law, etc.) and Class 42 (legal services, etc.)
 

5. Parties’ Contentions

A. Complainant

The Complainant asserts:

- that it is proprietor of registered trade marks for "The Law Society" to which the domain name at issue is confusingly similar;

- that the Respondent has offered to sell the domain name to the Complainant;

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

B. Respondent

The Respondent accepts:

- that the Complainant owns the relevant marks and that he offered to sell the domain name in issue to the Complainant

but denies:

- that his conduct was without right or interest or was in bad faith.
 

6. Discussion and Findings

(1) The Respondent admits that he acquired the domain name at issue for the purpose of offering it to others by way of sale, rather than for his own use as a domain name. On February 25, 2000, he wrote to the Complainant inviting "best offers over £35,000" for the sale of the domain name. He
claims that he was entitled to do this because there exist around the world equivalent organisations, primarily in common law jurisdictions, which use the name "The Law Society of …."; and that since they would have a reputation which would give them a right or legitimate interest in making
the purchase, the Respondent is entitled to make an offer of sale to, among others, the Complainant. The essential issue is thus whether the possibility of interest from these other Law Societies means that the Complainant has not made out a sufficient case.

(2) The ICANN Policy under which this proceeding arises adopts in its Paragraph 4 a definition of bad faith which requires it to be shown that the Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the registration to the Complainant. The Respondent has corresponded with the Complainant in terms, which are courteous but insist on his entitlement to sell for a sum far outreaching the domain name costs. The Complainant has established public recognition by the name, The Law Society, without geographical suffix, as is evidenced by the acceptance of this description as a registered trademark in the United Kingdom before the date on which the Respondent registered the domain name. Given the descriptive content of the mark, it could not have achieved registration without evidence of that reputation. This suggests strongly that the Respondent must have known that his chances of securing a sale at the price he suggested would most likely be obtained from the Complainant. It does not seem relevant that other persons not apparently connected with the Complainant have procured similar registrations. Their motivations are not in issue here.

(3) I am accordingly satisfied that the Respondent's primary purpose in acquiring the domain name was to dispose of it to the Complainant for valuable consideration in excess of directly related expenses and that he has therefore registered and used the name in bad faith. The Respondent
admits that the Complainant had registered rights in the relevant marks and does not himself claim rights or legitimate interests in the name other than his purported entitlement to sell it on to one of a supposed list of potential bidders. Accordingly the Complaint under the ICANN Policy is justified.
 

7. Decision

As Panelist I accordingly decide that the domain name <thelawsociety.com> should be transferred forthwith to the Complainant.

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William R. Cornish
Sole Panelist
Dated: June 07, 2000