Hanover Communications Limited v. Maison Tropicale S.A.
Case No. D2007-1456
1. The Parties
The Complainant is Hanover Communications Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Speechly Bircham LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Maison Tropicale S.A., of British West Indies, Anguilla.
2. The Domain Name and Registrar
The disputed domain name, <andymcnab.com> (the “Domain Name”), is registered with Capitoldomains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 4, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 October 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 6, 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
Andy McNab is the nom de plume of a very well-known author in the United Kingdom.
The Complainant is the registered proprietor of several United Kingdom registrations and one Community Trademark registration for the word mark ANDY MCNAB in a wide variety of classes and covering a wide variety of goods and services. The earliest of the trademark registrations dates back to 1995.
The Complainant claims to be “the exclusive licensee of the author’s publication rights, copyright and rights of exploitation”.
On April 25, 2007, the Complainant’s representatives wrote letters to a previous registrant of the Domain Name and the previous registrar drawing to the addressees’ attention their rights in respect of the ANDY MCNAB trademark and demanding transfer of the Domain Name.
The Domain Name was registered by the Respondent on July 15, 2007. It is connected to a website featuring sponsored links to a number of sites most of which relate directly or indirectly to Andy McNab, the author, but some appear to be wholly unrelated.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its ANDY MCNAB trademark, registered in the United Kingdom and as a Community Trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it has granted the Respondent no right to use the trademark. It contends that the use of the Domain Name to earn pay-per-click revenue is not a use of the Domain Name for a bona fide offering of goods and services. It exhibits a page from the Respondent’s website demonstrating that the Respondent is a Caribbean Internet services provider. The Complainant contends that the Respondent is not known by the Domain Name or any name corresponding to the Domain Name and that there is nothing fair or legitimate about the Respondent’s use of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of sub-paragraphs 4(b)(ii) and (iv) of the Policy.
The Complainant points to two previous decisions of WIPO panelists in which the Respondent was found to have registered and used domain names in bad faith, Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A,
WIPO Case No. D2007-0548, Credit Industriel et Commercial S.A v. Maison Tropicale SA,
WIPO Case No. D2007-0955.
The Complainant contends that the fame of the author, Andy McNab, is such that the Respondent must have registered the Domain Name with the author in mind and with a view to exploiting the name commercially. The Complainant asserts that the unauthorized use of its trademark for such a purpose is an abuse under the Policy.
The Complainant points to its warning letters to the previous registrant and registrar of the Domain Name and the subsequent change of registrant and registrar and argues that this is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(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 in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
If, as is appropriate for this purpose, the generic domain suffix is ignored, there can be no doubt that the Domain Name is identical to the Complainant’s United Kingdom and Community trademark registrations of the word mark, ANDY MCNAB, and the Panel so finds.
C. Rights or Legitimate Interests
The Complainant has made out a clear prima facie case under this head. The Respondent is not known by the Domain Name or any name corresponding to the Domain Name and is using the Domain Name for commercial gain (pay-per-click revenue) by way of sponsored links to sites most (but not all) of which relate directly or indirectly to the author, Andy McNab.
In other words, on the face of it, the Respondent is exploiting the author’s name for commercial gain without authority and without any apparent justification for doing so.
The Complainant’s prima facie case calls for an answer, but the Respondent has not responded.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of sub-paragraphs 4(b)(ii) and (iv) of the Policy.
Sub-paragraph 4(b)(ii) of the Policy covers situations where a respondent registers a domain name “in order to prevent the owner of the trademark or service mark reflecting the mark in a corresponding domain name” and has a track record of having done this on other occasions in relation to other domain names.
While it is true that the Respondent has on at least two previous occasions been found by WIPO panelists to have been the registrant of abusive domain name registrations, there is no evidence to suggest that blocking the Complainant was the purpose behind the Respondent’s registration of the Domain Name. Blocking the Complainant may have been the effect of the registration of the Domain Name, but the Complainant’s other ground of attack underlines the Respondent’s true purpose behind registration of the Domain Name.
Sub-paragraph 4(b)(iv) of the Policy covers situations where a respondent registers a domain name and uses it with the intention of attracting Internet users to its website for commercial gain, “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Here the Respondent is using the Domain Name for one purpose only and that is to earn click-per-view revenue via the sponsored links on the Respondent’s website, which is connected to the Domain Name.
The Panel accepts the Complainant’s evidence to the effect that the name of the author, Andy McNab, is a household name in the United Kingdom and very well-known internationally. The Panel accepts, too, that the Respondent cannot conceivably have registered the Domain Name without being well aware of the fame of Andy McNab.
The Panel concludes that the Respondent deliberately selected the Domain Name as a means of earning pay-per-click revenue, because of the fame of the Andy McNab name. The Respondent will have concluded that the Domain Name is likely to attract a considerable amount of attention from Internet users hoping to reach an official, authorized site associated with the author. The Respondent will thereby attract unsuspecting Internet users to its unauthorized site and acquire commercial revenue earning opportunities, some of which relate to the works of the author and some of which do not.
On that basis and in the absence of any challenge from the Respondent as to the Complainant’s allegations the Panel is satisfied, subject to one point, that the Complainant has made out its case under this head.
The Panel’s only hesitation stems from the fact that the Complainant’s case depends in large part upon there being an association of some kind between the author, Andy McNab, and the Complainant, the proprietor of the ANDY MCNAB trademark. Yet, there is nothing before the Panel to support that association beyond a bare assertion (unsupported by any documentation) that the Complainant is the author’s exclusive licensee.
However, the Panel regards it as highly unlikely that the Complainant could have held on to its trademark registrations for as long as it has without the consent of the author and the Panel also notes that the certificate in the Complaint is signed by a respected lawyer acting on behalf of the Complainant. Moreover, as indicated, the Respondent has not seen fit to challenge the assertion. In the result the Panel accepts that the Complainant’s licensor is the author, Andy McNab.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of sub-paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <andymacnab.com>, be transferred to the Complainant.
Tony Willoughby Sole Panelist
Dated: November 20, 2007
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