[Indexed as:
Manchester Airport PLC v. Club Club Limited]
[Indexed as:
Manchesterairport.com]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No.: D2000-0638
Commenced:
20 June, 2000
Judgment:
22 August, 2000
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 UKs 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, Complainants 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 Respondents 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:
--
Panel Decisions
referred to:
--
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 Panels Decision is August 27, 2000.
The subsequent
exchange of inter partes correspondence referred to above comprised a letter
from the Complainants lawyers to the Respondent commenting on the Respondents
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 UKs 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 companys 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 Leonards 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 (Respondents
Exhibit 2).
On June 19,
2000, the Respondent offered to sell the Domain Name to the Complainant
for the sum of £3000 (Respondents 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
Respondents website particularly as members of the public seeking the
Complainants website would probably use "manchesterairport" as their search
term. This search term would bring up the Respondents website in addition
to the Complainants 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 Complainants 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 Complainants
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 Complainants 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 Complainants 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 Complainants
use of its name and the nature and extent of the Complainants 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 Complainants 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 Respondents
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 Panelists view as to the Complainants 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 Complainants 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 Complainants case on bad faith is heavily dependent upon the Panel
finding in the Complainants 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