foyles.biz

WIPO Arbitration and Mediation Center

Complainant, W. & G. Foyle Limited, is a private limited company located in London, United Kingdom.

Respondent, Robert G. Foyle, is an individual located in Christchurch, New Zealand.

The Domain Name at issue is <foyles.biz> (the Domain Name).

The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA, 20170,

The Complaint was received on January 17, 2002.

The Response was received on February 27, 2002.

Mark V. B. Partridge was appointed Sole Panelist on March 18, 2002.

The Panel finds that the parties' submissions and the actions of WIPO comply with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), applicable to this proceeding.

Complainant and its predecessors have operated a book store in London called FOYLES since 1906. Complainant owns trademark registrations for the mark FOYLES in many countries including Australia, dated August 10, 1994; Canada, dated September 15, 1995; European Community, dated July 22, 1996; United States, dated August 12, 1997; Japan, dated July 14, 2000; and the United Kingdom, dated September 16, 2000. Complainant also has pending applications for the marks in New Zealand, filed February 28, 2000.

Respondent is the sole director of Foyle's Books Limited, a company incorporated in New Zealand on November 24, 1995. Respondent registered the domain name on November 7, 2001.

The parties have been involved in prior domain name disputes. WIPO Case No. D2000-1544 related to the domain name <foyles.com> and WIPO Case No. D2000-1543 related to the domain name <foylesbooks.com>. In both cases, the Panel required transfer of the domain names to Complainant.

Complainant contends that the Domain Name is confusingly similar to a mark in which Complainant has rights; that the Respondent has no right or legitimate interest in the Domain Name; and that the Domain Name was registered in bad faith.

Respondent contends that he has a legitimate interest in the Domain Name because it is based on his surname and the name of his business. He further contends he has not registered or used the Domain Name in bad faith. The Respondent also contends that the prior decisions should not be controlling and acknowledges that he failed to present evidence of his interest in the Domain Names in those proceedings.

The parties agree that the Domain Name is identical to a mark in which Complainant has rights. It also appears that Respondent was aware of Complainant's use and rights in the mark FOYLES when he registered the Domain Name.

The parties disagree on Respondent's interest in the Domain Name. Respondent is the grandson of Gilbert Foyle, a founder of Complainant's business. In addition to the book business, Gilbert Foyle also was the founder of Foyle's Educational Ltd., in London. Complainant's business and Foyle's Educational Ltd., operated in London as two separate businesses for over 20 years. In 1977, Respondent moved the business of Foyle's Educational Ltd., to New Zealand and Australia. In 1995, Respondent founded Foyle's Books Ltd., in New Zealand. Since 1997, Respondent has conducted business via the Internet at <foyles.co.nz>. That domain name currently directs Internet users to Respondent's site at <robertfoylebooks.com>.

Complainant denies that Respondent has a legitimate interest in the Domain Name, stating:

It is not accepted that FOYLES has been used innocently in the possessive sense to indicate ROBERT FOYLE'S, or that the Respondent has a right to register FOYLES because it reflects his name.

Complainant's position is not persuasive in this proceeding as a matter of fact or as a legal interpretation of the Policy.

Under the Policy, a legitimate interest may be found when there is evidence that the Registrant was commonly known by the domain name prior to the dispute. Thus, the fact that Respondent registered FOYLES because it reflects his name is very significant. Here, there is no dispute that the Respondent is named Robert Foyle and that he owns or is associated with operating businesses known as Foyles Educational Ltd., and Foyle's Books Limited. Further, this is not a case where the similarity of surnames appears to be a convenient excuse for a deliberate infringement. Rather, this appears to be the case of two different businesses coexisting under the virtually identical names for many years.

Under the circumstances, it appears that the Respondent has a legitimate interest in the Domain Name <foyles.biz> due to the fact that it is the possessive form of his surname and it is the short form of a business name under which he has operated for many years prior to this dispute.

It also seems more likely than not that Respondent selected the Domain Name primarily because it corresponded to the short form of his business's name, and not for the purpose of trading on Complainant's name.

The prior decisions in which similar Domain Names were challenged and transferred are not controlling here since the Panels in those proceedings did not have the benefit of the record presented here regarding Respondent's interest in the name.

Under the circumstances here, I find that Complainant has failed to meet its burden of proving a lack of legitimate interest in the Domain Name or of proving bad faith use or registration.

In reaching this conclusion, I recognize that both parties are using identical names for similar goods, that a likelihood of confusion may exist, and that relief may be available through other proceedings. However, the scope of actions under the Policy are properly limited to acts of cybersquatting. The WIPO report on which the Policy was based specifically states: "good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would NOT fall within the scope of the procedure" (emphasis added). Paragraph 172, WIPO, "The Management of Internet Names and Addresses: Intellectual Property Issues," April 30, 1999. Given the summary nature of proceedings under the Policy, it is appropriate that good faith disputes between competing legitimate interests are decided in the courts where a full record can be developed.

I believe this case presents exactly the type of good faith dispute that is outside the scope of the Policy. The evidence fails to demonstrate that Respondent is engaged or intends to engage in cybersquatting within the ambit of the Policy.

For the reasons stated above, Complainant's request for transfer of the Domain Name <foyles.biz> is denied.