Domain name - Domain name dispute resolution policy - U.K. Trademark - Hong Kong Trademark - Identical - Confusingly similar - Reputation of trademark - Legitimate interest - Bad faith registration - Bad faith use - Officious interferer.

Complainant, a provider of banking services, was the registered proprietor of U.K. and Hong Kong trademark registrations for various names incorporating the words “Standard Chartered”.  In addition to the current disputed domain name, Respondent has registered in the past the names or abbreviations of some 24 other well-known British enterprises with the addition of “sucks”.  Respondent repeatedly offered the domain name to Complainant for financial gain.

Held, Name Transferred to Complainant

Complainant has clearly demonstrated that its trademarks in both the U.K. and Hong Kong are very well-known.  The adoption of the Complainant’s name in the domain name, even with the additional “sucks”, is inherently likely to lead some people to believe that the Complainant is somehow connected or associated with it.  The domain name registered by the Respondent is thus substantially identical or confusingly similar to the trademarks of the Complainant.

Respondent asserts that it did not secure the domain name in order to establish a website itself but rather to transfer the registration to the Complainant in order to prevent disgruntled persons from acquiring and using the domain name for vengeful purposes against the Complainant.  The Panel however finds that there is no justification for the role of officious interferer which the Respondent has taken upon itself to provide in the manner in which it has chosen to do so, and, as such, has no legitimate interest in the domain name.

Evidence demonstrating that the Respondent attempted on numerous occasions to transfer the domain name to the Complainant for valuable consideration in excess of documented out-of-pocket costs satisfies the Panel that the domain name was registered and used in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999

Cases referred to

Direct Line v. Purge I.T., Case No. D2000-0583 (WIPO).
Dixons Group PLC v. Purge I.T., Case No. D2000-0584 (WIPO).
Freeserve PLC v. Purge I.T., Case No. D2000-0585 (WIPO).
Nationl Westminster Bank PLC v. Purge I.T., Case No. D2000-0636 (WIPO).
Wal-mart Stores v. Walsucks, Case No. D2000-0477 (WIPO).

Panel Decision referred to

Cornish, Panelist:-                         

1. The Parties

Complainant: Standard Chartered PLC of 1 Aldermanbury Square, London EC2V 7SB U.K.

Respondent: Purge I.T. Ltd of Unit D3a, Telford Road, Bicester, Oxford OX6 0TZ, U.K. 

The Domain Name and Registrar:

STANDARDCHARTEREDSUCKS.COM, registered by Network Solutions, Inc. on May 11, 1999, to the
Registrants Purge I.T. (Standardcharteredsucks-dom) and Purge I.T. Ltd (Contacts:OzNic.com --
Administrative: (AMD598-ORG), Technical and Zone: (ITT-ORG), Billing: (ITA3-ORG))

2. Procedural History

(1) The Complaint in Case D2000-0681 was filed on June 26, 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 Respondent and the Contacts above-named by Post/Courier, Fax and E-mail. 
     A Response to the Complaint was filed in due time and was duly communicated to the      Complainant. However, the Response is also made in regard to four parallel disputes instituted by other corporations and it was not sent by the Respondent to those Complainants until notified of its responsibility to do so, it being received by those Complainants by this route on July 21, 2000.  Promptly thereafter those Complainants filed comments on the Response, which the Panel decided in the circumstances to admit. In order to avoid any consequent prejudice to the
Respondent, the Panel in turn permitted the Respondent until August 6, 2000 to offer their own
comments. The date originally scheduled for issuance of a decision was: August 6, 2000, but the
Panel directed that this be changed to August 13, 2000. 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 language of the proceedings is English.
 

3. Factual Background

(1) The Complainant is registered proprietor of the following trade and service marks:

In the United Kingdom:

"Standard Chartered" for specified goods in Classes 9 and 16 and for specified services in Class 36, the marks being initially registered on November 27, 1991;
"Standard Chartered Bank" for specified goods in Classes 9 and 16 and for specified services in Class 36, the marks being initially registered on November 25, 1992; also for Class 9 from that date, "Standard Chartered Bank with a logo".

In Hong Kong:

"Standard Chartered" for specified services within Class 36, the mark being initially registered on March 2, 1992.

(2) The Complainant also holds eleven TLDs (ten of them available on a WhoIs search) which incorporate "Standard Chartered" in slightly varied forms. They were registered on dates between 1996 and 1998.

(3) The Complaint forms one of a series against the Respondent 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 Complainant has demonstrated by WhoIs database searches that the Respondents have registered with Network Solutions the names or abbreviations of some 24 well-known British enterprises with the addition of "sucks". Five have resulted in the parallel complaints which have been referred conjointly to the present Panel. The other four are D2000-0583 (directlinesucks.com), D2000-0584 (dixonssucks.com), D2000-0585 (freeservesucks.com), and D2000-0636 (natwestsucks.com).
 

4. Parties’ Contentions

A. Complainant

The Complainant asserts the following:

- The Respondent's Domain Name at issue is identical with or confusingly similar to the Complainant's trade marks indicated above.

- The Respondent has no legitimate interest in the names for which the Complainant has registered marks.

- The Respondent registered the Domain Name and is using it in bad faith in that it is seeking to secure financial gain from it by securing its transfer for a substantial sum to the Complainant and has repeatedly offered it to the Complainant on such terms.

- Accordingly the Complainant seeks transfer of the Domain Name in issue to itself.

B. Respondent

The Respondent, while not contesting directly the documentary material submitted as annexes to the Complaint, nevertheless denies that it has acted in bad faith or that it has ever used the Domain Name after registration. In particular:

- It did not secure the Domain Name in order itself to establish any website. 

- It did not intend to transfer the registration to anyone other than the Complainant, and in particular not to any disgruntled person who might wish to acquire it in order to host complaints against the Complainant or otherwise to extract revenge. On the contrary its motivation was to protect the Complainant against such risks. 

- Mere registration without more cannot amount to use.

5. Discussion and Findings

In accordance with the Dispute Resolution Policy, Paragraph 4(a), the Complainant bears the burden of demonstrating three elements.
Element 1: That the Complainant has rights in a trade or service mark, with which the Respondent's Domain Name is identical or confusingly similar.

As it has clearly demonstrated in its Complaint, the Complainant has a well-known trade mark for banking services in those countries, notably the United Kingdom and Hong Kong where it conducts business. 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 it makes of its Domain Names also there referred to. The Respondent's explanation of the conduct which it has 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 Respondent's registration, consisting of the Complainant's name with the suffix, "sucks" (plus".com"), is not identical to the Complainant's 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
Complainant? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant's name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant. The Complainant has accordingly made out the first element in its Complaint. (See the rather similar conclusion on this Element in Case D2000-0477
(walmartcanadasucks.com etc.)). 

Element 2: Respondent must be shown to have no rights or legitimate interests in the Domain Name.

The Complainant's reputation was well established before the Respondent began its activity, as is evident from its 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 to 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 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 Respondent, contrarily, makes it plain that its purpose is to have none of such free expression. It wants, so it says, to protect against such engines of free speech. It claims as its own legitimate interest that it is 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 Respondent does not, however, act in a wholly altruistic spirit, since, as will be discussed further under Element 3, it seeks substantial sums beyond its own costs before it will transfer over the offending registration. This latter aspect has to be brought into account in considering whether the Respondent therefore has any "right or legitimate interest" in the Domain Name, with which it otherwise has no association whatsoever and which it admits to have selected by reference to the Complainant's reputation in its own marks. The Panel finds that there is no justification for the role of officious interferer which the Respondent has taken upon itself to provide in the manner in which it has chosen to do so. The Complainant has accordingly made out the
second element (see likewise Case D 2000-0477 (walmartcanadasucks.com)). 

Element 3: that the Respondent registered and is using the Domain name in bad faith, in one of the senses of that term set out in Paragraph 4b of the Dispute Resolution Policy.

The Complainant's legal representative has filed as Annex E of the Complaint a record of a conversation with Mr Joseph Rice of the Respondent in which he offered to sell the Domain Name in issue to the Complainant and suggested that an appropriate figure for an offer to him would be "many thousands" and mentioned a McDonalds domain name which "went for £20,000". The Respondent has not sought to deny this conversation or its accuracy. Taken together with Mr Rice's assurance that the whole purpose of registering the name was to enable its transfer to the Complainant, the Panel finds it to constitute plain evidence of circumstances indicating that the Respondent registered the name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the relevant marks for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Paragraph 4b(i) of the Policy states that such conduct is of
itself to count as 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 Resolution Policy, Paragraph 4a and 4b 
- that the Domain Name in dispute is confusingly similar to the registered trade and service marks of the Complainant;

- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- that Domain Name has been registered and is being used in bad faith.

The Panel accordingly requires that the Domain Name STANDARDCHARTEREDSUCKS.COM be transferred forthwith to the Complainant. William R. Cornish
Panelist
August 13, 2000