ianstuart.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Collection Designed by Ian Stuart v. Ian Stuart International

Case No. D2007-0038

1. The Parties

The Complainant is The Collection Designed by Ian Stuart, Dulwich, London, United Kingdom of Great Britain and Northern Ireland, representing itself.

The Respondent is Whole Resources Ltd trading as Ian Stuart International and/or Sincerity Bridal, New York, United States of America; represented by Arnold & Porter, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ianstuart.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2007. On January 11, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 12, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Ian Stuart International is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Response was filed with the Center on February 16, 2007.

Before the Response was filed, the Respondent sent the Center emails on January 22 and January 23, 2007, apparently in some sort of informal attempt to have the proceedings terminated. The Complainant provided a reply to this on January 27, 2007, and, as already noted, the Respondent filed a formal, substantive response on February 16, 2007. The Complainant filed yet another rebuttal on February 20, 2007. The Center received the Respondent’s riposte by email sent on February 26, 2007.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 12, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a corporate entity associated with Ian Stuart Humphries, who is apparently known in the bridal industry as “Ian Stuart”. (The Panel will refer to Mr. Ian Stuart Humphries as “Mr. Humphries” in these reasons solely in the interests of reducing the potential for confusion.)

The Complainant has registered trademarks:

(a) IAN STUART in the United Kingdom (No. 2397310 registered from July 20 2005) and China (No. 3537006 registered from June 27, 2005); and

(b) Ian Stuart International (with star device) in the United Kingdom (No. 2185814 registered from January 8, 1999), the European Union (CTM No. 1062744 registered from February 2, 2000), Hong Kong, SAR of China (No. 300011230 registered from April 28, 2004), Canada (No. 665626 registered June 5, 2006) and Taiwan, Province of China (No. 92030040 registered from March 16, 2004).

The Complainant also claims earlier registrations in Canada and the United States of America, but has not provided details to support that claim.

Mr. Humphries was previously engaged by the Respondent. The Respondent states that Mr. Humphries was employed by it as a wedding dress designer from 1997 to 2003 or possibly 1995 to 2003.

The Respondent registered the domain name on November 18, 1998. It used the name Ian Stuart International and traded under that name from 1997 to (at least) 2002.

The relationship between the parties broke down in, it is plain, acrimonious circumstances in 2003.

Prior to the filing of the Complaint, the domain name appears to have redirected to a website at <justinalexander.com>, apparently another of the Respondent’s lines. Since the Complaint was filed, the domain name now resolves to a website that states “Coming Soon Our Spring Collection 2008” with contact details for someone at <rogers.com>.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel considers each in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.

The Complainant has proved for the purposes of these proceedings ownership of the registered trademarks identified above.

The Respondent contends that these do not qualify as they were registered after the domain name was registered. However, paragraph 4(a) of the Policy does not specify the time at which the trademark rights must have been acquired. The inquiry at this stage is directed only to whether or not the Complainant does own rights. See for example Digital vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827, AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527 and Deutsche Post AG v NJDomains,WIPO Case No. D2006-0001. The prior registration of the domain name may, of course, be highly relevant under the other paragraphs of the Policy.

As IAN STUART is the distinctive feature of the domain name and the Ian Stuart International registered trademarks, as well as the whole of the IAN STUART registered trademarks, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s registered trademarks.

B. Rights or Legitimate Interests

At the time the Respondent registered the domain name, Mr. Humphries was working for the Respondent as a wedding dress designer. According to the Respondent, therefore, any rights arising from use of the name “Ian Stuart” were owned by the Respondent.

The Panel is not convinced by the Respondent’s bald assertion of ownership on the basis that Mr. Humphries was its employee at the time. It seems unlikely that an employer could obtain the ownership of an employee’s name (even if a nom de plume) simply by reason of the employee’s status as an employee.

Further, the Response makes it clear that there were negotiations between Mr. Humphries and the Respondent to form a partnership in 1998. These did not lead, however, to a concluded agreement.

Instead, the Respondent acknowledges that some form of licence arrangement was entered into. Under the terms of the licence it advances, royalties were payable to Mr. Humphries. The “heads of terms” advanced by the Respondent, however, also include an acknowledgement that the goodwill arising from the use of the name IAN STUART was to be owned 50/50 between the Respondent and Mr. Humphries.

The “heads of terms” appear to have been signed by the respective parties. They were, however, expressed to be “subject to attorney review for both parties”.

In the event, there were further discussions, but no final written agreement. The Respondent contends that the parties continued their relationship on the basis of the “heads of terms” until their relationship broke down in 2003 without any documentation being agreed or signed.

On the other hand, the Complainant contends simply that Mr. Humphries licensed the use of his name to the Respondent.

The Complainant’s submissions do not explicitly address whether or not that licence extended to the original registration of the domain name by the Respondent. It is clear, however, that the Respondent was authorised by the Complainant to use IAN STUART and the domain name from 1998 until the parties’ relationship broke down in 2003. On the basis of the limited information before the Panel, there would appear to be scope to argue that the Complainant acquiesced in the Respondent’s initial registration of the domain name, if the Complainant did not actually authorise it.

The characterization of the Respondent’s use of the domain name after 2003 is far from clear. The Complainant contends that the licence was terminated and any use after that date was unauthorised. On the basis that the “heads of terms” recognises that the goodwill in the trademark would be owned 50/50 by the Complainant and the Respondent, the Respondent appears to contend it is still entitled to use the name Ian Stuart International and the domain name.

The Respondent’s contentions, if believed, arguably provide a basis for it to claim rights or a legitimate interest in the domain name. In proceedings of the present nature, which are proceedings on the papers only, the Panel is not able simply to discount the Respondent’s contentions. The Respondent has presented the “heads of terms” which it asserts are signed by Mr. Humphries. That is not disputed by the Complainant. As already noted, however, the meaning and effect, as well as the status, of the “heads of terms” are ambiguous. What the status of the “heads of terms” is and what, if any, agreement they embody is not something which can be determined just on the papers, particularly where the parties have not provided detailed explanations of their respective positions.

Accordingly, the Panel inclines to the view that the Complainant has not discharged its onus of showing that the Respondent has no rights or legitimate interests in the domain name on the evidence put forward in this dispute. It is not necessary, however, to decide this point as for the reasons discussed below the Panel finds that the Complainant has failed to show that the Respondent has registered and used the domain name in bad faith.

C. Registered and Used in Bad Faith

The Complainant expresses its claim under this heading quite simply: it contends that the Respondent is using the domain name to divert customers looking for the Complainant (either in its own right or as the successor in title to Mr. Humphries) to the Respondent’s own products which are not connected in the course of trade with the Complainant.

The first problem with this argument is that it does not address the requirement that the domain name must both have been registered in bad faith and also being used in bad faith: Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003.

As discussed above, the circumstances in which the domain name came to be registered are not clear. It is not clear whether or not the domain name was unilaterally registered by the Respondent or whether the Complainant (or more correctly its predecessor in title Mr. Humphries) authorised the Respondent to register it.

Even if one assumes in the Complainant’s favour that the domain name was not registered with its authority, the Complainant must still show that there is use in bad faith. Clearly, for much of the domain name’s currency, the use by the Respondent was sanctioned by Mr. Humphries.

As already noted, the Complainant contends that that sanction, a licence, was terminated in 2003. The Respondent on the other hand claims a continuing ownership interest on the basis of the recognition in the “heads of terms” that it was entitled to a 50% share in the goodwill resulting from the use of the name Ian Stuart. If the Respondent’s characterization be the correct characterization of the relationship between the parties, it would appear that the Respondent has some sort of continuing entitlement to use the domain name. However, the Complainant does not accept this characterization.

The difficulty for the Panel is that this dispute between the parties is not capable of resolution on the papers for the reasons indicated in section 5B above. The “heads of terms” can be construed, not unreasonably, to have the effect the Respondent contends for. Equally, the contention by the Complainant (and presumably Mr. Humphries) that the “heads of terms” were not accepted by Mr. Humphries (if for no other reason that they were subject to attorney review) and did not subsequently govern the parties’ relationship until it broke down finally by 2003, is not something that can be refuted just by looking at the “heads of terms” themselves. The payment of royalties after the signing of the “heads of terms” is equivocal on this. Any royalties paid (the parties are in dispute about whether the full payment required has in fact been made) could equally be attributable to the Complainant’s claim of licence or the Respondent’s claim of part ownership. In the Complainant’s view there may also be questions of unfair competition involved.

In these circumstances, as the Complainant has the onus of proving that the domain name was both registered and used in bad faith, it must fail as, having regard to the limited nature of these proceedings, it has not been able to show that the Respondent’s conduct is in bad faith as defined in the Policy. Ultimately, the nature of the dispute between the parties is not one which is clearly amenable to resolution using the processes of the Policy, at least on the information which has been submitted in this proceeding. The decision in this proceeding, having regard to the limited nature of proceedings under the Policy, cannot of course in any way prejudge or influence any eventual national court proceeding between the parties which would be conducted under very different procedural and substantive rules.

6. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist

Dated: March 28, 2007