Panel: Michael Froomkin, and Richard Hill, and Tony Willoughby as Presiding Panelist

Domain names-Domain Name Resolution Policy-Identical Confusingly Similar-Failure by Complainant to fulfill its burden of proof under each head of the Domain Name Resolution Policy-Domain Name Not Transferred. 

Complainant, Manchester Airport PLC, operates the UK’s third largest airport. Complainant uses the name “MANCHESTER AIRPORT” for all products and services connected with the airport, and it is also used in relation to ancillary services and products. However, Complainant’s rights in the name “MANCHESTER AIRPORT” are unregistered. Respondent is a company incorporated in the UK which trades as "Club Club”, and has registered the domain name “Manchesterairport.com”. The nature of Respondent’s business is described as "software consultancy and supply." 

Held: Domain Name Not Transferred.

The domain name is identical or confusingly similar to Complainant's unregistered mark; however, Complainant has failed to provide arguments or evidence to prove the ownership of a common law trademark.

Respondent has rights or legitimate interests in respect of the Domain Name due to the fact that before Respondent had any notice of the dispute, it was using or has demonstrated that it was preparing to use the Domain Name in connection with a bona fide offering of goods or services. In general, resolution of disputes related to violations of national passing off laws should be left to national courts. Although the Policy addresses certain types of passing off, it does not address the type of passing off alleged in this case. 

Respondent is not using the Domain Name in bad faith. Although Respondent had attempted to sell the Domain Name to Complainant for an amount in excess of the registration fees, selling a domain name is not per se prohibited by the Policy. Selling of domain names is prohibited by the Policy only if the other elements of the Policy are also violated. Even though the domain name was registered in bad faith, Respondent has demonstrated that it was using or proposing to use the Domain Name in connection with a bona fide offering of goods or services.   

Policies referred to:

Rules for Uniform Domain Name Dispute Resolution Policy.

Statutes referred to:
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Panel Decisions referred to:
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Cases referred to:
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1. The Parties
Complainant:
Manchester Airport PLC, Olympic House, Manchester Airport, Manchester, England
Represented by: Eversheds Solicitors, London Scottish House, Mount Street, Manchester, M2 3DB, England
Respondent:
Club Club Limited, Parkgates, Bury New Road, Prestwich, Manchester, England
 
2. The Domain Name and Registrar
Domain Name: 
"Manchesterairport.com"
Registrar:
Network Solutions Inc.
 
3. Procedural History
The Complaint was received by WIPO by email on June 20, 2000, and in hard copy on June 23, 2000. The Complainant elected to have the dispute decided by a three member Administrative Panel. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administration Panel ("the Panel") is satisfied that this is the case. 
The Complaint was properly notified in accordance with the Rules, paragraph 2(a) and the Respondent responded to the Complaint within time by email dated July 18, 2000.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
Apart from a subsequent exchange of inter partes correspondence which has been copied to the Panel and which is referred to in the next following paragraph, and a communication received by WIPO from the Respondent on August 22, 2000, which is also referred to below, no further submissions were received by WIPO or by the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is August 27, 2000.
The subsequent exchange of inter partes correspondence referred to above comprised a letter from the Complainant’s lawyers to the Respondent commenting on the Respondent’s response to WIPO and making a without prejudice offer of settlement. The Presiding Panelist, an English lawyer, recognises that sending a without prejudice offer to the other party without copying the court is a perfectly orthodox method of proceeding in English proceedings. The Respondent replied and copied the reply to WIPO, as a result of which, the Complainant copied the original letter to WIPO. One of the members of the Panel observes that this is not an "English proceeding" Another of the members of the Panel has rightly observed that in corresponding unilaterally with the Respondent, the Complainant was in breach of Rule 2(h)(iii) of the Rules. He also has reservations about the threatening tone of the letter.
As to the communication received by WIPO from the Respondent on August 22, 2000, the Panel has not read it and declines to admit it in evidence. 
 
4. Factual Background
The Complainant is Manchester Airport PLC. It operates the UK’s third largest airport and has an annual turnover of in excess of £250,000. It has traded as Manchester Airport since 1986. 
Its rights in the name Manchester Airport (such as they may be) are unregistered rights. An application for a Community Trade Mark has been filed, but it is an application not for the name but for a combination of the name and a device. The record does not indicate the date on which this application was made.
The Complainant asserts and the Respondent does not deny that "[the Complainant] uses the name Manchester Airport for all products and services connected with an airport in particular airport administration services, business and advisory services, consultancy services, advertising and marketing services and information services. [The Complainant] also uses the name in relation to ancillary services and products including the rental and leasing of property and office space, financial services relating to airports, timetables, stationery, periodical publications, schedules and other printed matter…."
The Complainant also asserts and the Respondent does not deny that "as a result of the amount of both human traffic and flights passing through, the Complainant has a significant reputation throughout the UK and worldwide. This reputation is enhanced as a result of the considerable amount of advertising and promotion that the Complainant undertakes, the total cost of which amounts to some £6.5 million per year." 
The Respondent is a company incorporated in the UK which trades as "Club Club". It was incorporated on January 2, 1997 and has its registered office in Manchester. The Companies Registry records its nature of business as "software consultancy and supply". 
On June 16 1997 the Respondent obtained registration of the domain name Manchesterairport.com ("the Domain Name"). 
On June 26 1997 Ms James, a director of the Respondent, contacted the company’s solicitors in Manchester to discuss the domain name registration. Her lawyer advised her to contact the Complainant "out of professional courtesy to explain and to see if the airport raised any objections".
On June 27 1997 or shortly afterwards Ms James had one or more telephone conversations with Ms Chapman, a lawyer employed by the Complainant and possibly other employees of the Complainant. The detail of those telephone conversations and the number of them is in dispute. 
On July 2 1997 Ms James wrote to Mandate. The Panel has been supplied with very little information about Mandate. The Respondent describes it as a group of businesses based at the airport in Manchester. The letter is an important one because it shows why the Respondent registered the Domain Name in the first place. It reads as follows:
"Dear Mr Smith 
I am writing to introduce myself and my idea for a website. Synergy is a Manchester based company who design and build web solutions. Current clients include Granada TV, Kiss 102 and the BBC Philharmonic Orchestra.
We have a vision to build an internet presence for the Mandate membership to give the companies and Mandate a global awareness via a website.
If you would like to meet and discuss this further please contact me on 0161 737 5657.
Yours sincerely
Candace James"
There is no dispute between the parties that Mandate did not respond positively to Ms James’ letter.
In September 1999 the Respondent was contacted by a Mr Benjamin Braun of Rufus Leonard, a company acting on behalf of the Complainant, seeking to obtain relevant domain name registrations for the Complainant. 
It is not in dispute that Mr Braun made contact and it is not in dispute that on September 3, 1999 following that telephone conversation the Respondent sent a letter to Rufus Leonard’s offices seeking £10,000 for the Domain Name. The letter read as follows:-
"Dear Benjamin
Following our recent telephone discussions regarding the domain: Manchesterairport.com
I would like to confirm my intention to sell the domain at such a rate as to allow us to recoup the majority of the £10,000 that the company has already invested in time and effort.
Should your client wish to proceed then please contact me on 0161 278 1731 or via email to [email protected]. If I do not hear from you within the next week I will assume that Manchester Airport PLC are not interested and will consider reopening negotiations with one of the other parties who expressed and interest.
Yours sincerely
James Blessing
Technical Director"
On March 15, 2000 trade mark attorneys acting on behalf of the Complainant wrote to the Respondent claiming that the activities of the Respondent "may amount to actionable passing off" and indicating that the Complainant proposed to invoke the dispute resolution procedure if the Domain Name is not assigned to it. 
On April 3, 2000, the Respondent received a request for the sale of the Domain Name. That request apparently was made by an agent of the Complainant (Respondent’s Exhibit 2).
On June 19, 2000, the Respondent offered to sell the Domain Name to the Complainant for the sum of £3000 (Respondent’s Exhibit 10).
Further correspondence ensued with a view to seeing if the parties could agree terms for the assignment of the Domain Name to the Complainant, but that correspondence was unsuccessful; hence this Complaint.
 
5. Parties’ Contentions
A. Complainant
The Complainant contends that:-
(i) The Domain Name is identical to the name under with the Complainant trades and in which the Complainant has a substantial reputation. The Complainant contends that as a result of the use by the Respondent of the Domain Name there is a risk that the public will be confused between its website and the Respondent’s website particularly as members of the public seeking the Complainant’s website would probably use "manchesterairport" as their search term. This search term would bring up the Respondent’s website in addition to the Complainant’s site. In addition, if members of the public looked no further than the site at Manchesterairport.com then they might assume, incorrectly, that the Complainant does not have an active website. 
(ii) The Complainant further contends that the name has a sufficiently strong reputation in the UK that the use of it amounts to passing off of the Complainant’s unregistered rights in the name following the reasoning in the case of BT and Others -v- One In A Million.
(iii) The Complainant contends that the Respondent has no legitimate interest in the Domain Name. It asserts that the Respondent has no connection with Manchester Airport nor does it trade under that name or any similar name nor has it ever done so. The Complainant asserts that the Respondent has not yet provided it with a plausible reason as to why it decided to obtain the domain name registration. For reasons which follow, it is the Complainant’s belief that the Respondent obtained the registration solely so as to prevent the Complainant registering the name and exploiting it for itself. 
(iv) The Complainant contends that the Respondent cannot credibly argue that it has a bona fide intention to use the Domain Name. To the best of the Complainant’s knowledge it has made no serious preparations to date to use it in connection with the offer for sale of goods and services. The Complainant asserts that the Respondent cannot show that it is making real and fair use of the name without having any intention to gain commercially or to mislead consumers or to tarnish the Complainant’s name.
(v) The Complainant then goes on to assert that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The reasons given relate to conversations and correspondence between the parties and their representatives relating to what was said back in 1997 shortly after registration of the Domain Name and the nature of the sums demanded for transfer of the Domain Name. 
The Panel finds it unnecessary to set out the detail of these contentions in extenso because there are fundamental disagreements of fact surrounding these communications and the Panel is unable to resolve them.
B. Respondent
The Respondent does not take issue with the Complainant in relation to any of the facts and matters put forward by the Complainant relating to the Complainant’s use of its name and the nature and extent of the Complainant’s business under its name.
The Respondent contends that it registered the Domain Name for one reason only, namely to approach Mandate with a view to building for them a website (or portal) to raise awareness and attract further membership for Mandate. The Respondent contends that in registering the Domain Name the intention was descriptive, referring to a physical location only and not with a view to trading as Manchester Airport. The Respondent denies that it at any time intended to register the Domain Name in order to spoil or stop the Complainant using the name. The Respondent denies bad faith. 
The Respondent then goes on to relate its version of events in relation to the communications between it and the Complainant and the Complainant’s representatives. Again, the Panel sees no point in setting out the detail of these contentions since they are the subject of much disagreement and the Panel is utterly unable to resolve the factual differences in this regard. 
 
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:-
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights; and 
(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Identical or Confusing Similarity
While the Panel is satisfied that the Complainant has done enough to establish that the Complainant has rights in Manchester Airport being the name under which it trades and, in the view of the Presiding Panelist, an unregistered trade mark or service mark of the Complainant, the other members of the Panel take the view that the Complainant has not provided either arguments or evidence that prove that it has a common law trademark. One of the members of the Panel is of the view that the Complainant has failed to allege that it has a common law trademark, much less argue the point. Accordingly, the majority view is that the Complaint fails under this head, the existence of a trade mark or service mark being a necessary prerequisite.
Rights and Legitimate Interest of the Respondent
The Presiding Panelist takes the view that the Respondent never had any rights or legitimate interests in respect of the Domain Name. It was always the Respondent’s intention that if it could interest any third party in its services, it would be the third party who would have/acquire the relevant rights/legitimate interests in the Domain Name. The offering of services that the Respondent was proposing to provide was the offering of website development services, having nothing intrinsically to do with the Domain Name itself.
Given the Presiding Panelist’s view as to the Complainant’s rights in its corporate name, the Presiding Panelist believes it likely that the registration of the Domain Name by the Respondent and the trade use of any internet facility connected to it in relation to business at the Complainant’s premises would be likely to render the Respondent vulnerable to a passing off action at the suit of the Complainant. For that reason too the Presiding Panelist believes that the Complainant should succeed under this head. 
However, the other members of the Panel take the view that what the Respondent has done falls within the scope of paragraph 4(c)(i) of the Policy, namely that before the Respondent had any notice of the dispute, it was using or has demonstrated that it was preparing to use the Domain Name in connection with a bona fide offering of goods or services.
Furthermore, the other members of the Panel take the view that, in general, resolution of disputes related to violations of national passing off laws should be left to national courts. Although the ICANN Policy does address certain types of passing off in 4(b)(iii) and 4(b)(iv) it does not address the type of passing off alleged here
Accordingly, on a majority view, the Complaint fails under this head as well.
Bad Faith
It is not contested that the Respondent has attempted to sell the Domain Name to the Complainant for an amount well in excess of the registration fees.
But selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest.
Given the majority view that the Respondent has demonstrated that it was using or proposing to use the Domain Name in connection with a bona fide offering of goods or services, clearly there can be no question of the Panel finding that the Domain Name was registered in bad faith, whatever view any member of the Panel might take in relation to subsequent use of the Domain Name.
Moreover, the Complainant’s case on bad faith is heavily dependent upon the Panel finding in the Complainant’s favour in relation to many conflicting pieces of evidence over what was said or done in the various communications between the parties. This dispute procedure is generally not a satisfactory forum for the resolution of conflicting evidence of fact. In these circumstances on this ground too, the burden of proof being on the Complainant, the Panel finds the allegations of bad faith not proved.
In the result, the Complaint fails under all three heads of paragraph 4(a) of the Policy.
 
7. Decision
The Complaint is dismissed.  Tony Willoughby
Presiding Panelist
Michael Froomkin Richard Hill
Panelists
Dated: August 22, 2000