Sir Terence Conran, Conran Limited v. Domain Admin
Case No. D2008-0356
1. The Parties
The Complainants are Sir Terence Conran and Conran Limited, both of London United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent has been identified by the relevant registrar as “Domain Admin”, whose address is provided as “No valid address as, domain is pending transfer, please use, email, to contact, TV”. Likewise, the registrant has provided the same incomprehensible administrative and technical contact details, other than a valid email address. Obviously, the registrant has gone to some lengths to conceal his, her or its identity, in exactly the same manner, in respect of each of the domain names at issue.
2. The Domain Names and Registrar
The disputed domain names <terenceconran.com> and <theconranshop.com> (“the Domain Names”) are registered with Intercosmos Media Group d/b/a directNIC.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2008. On March 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On March 10, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent as described above 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 March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2008.
The Center appointed William P. Knight as the sole panelist in this matter on April 15, 2008. 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 first Complainant is an eminent English designer who has been in business on his own account since 1952, since which time he has been behind chains of furniture and interior design stores, first under the name of Habitat and then under his own name as The Conran Shop, which have been established not only in his native England but also Paris, New York and Tokyo. He has authored many books regarding interior design and furniture since 1974. He owns Community Trade Mark TERENCE CONRAN registered number 003541761 in classes 8, 9, 11, 20, 21, 24, 25 and 27which has a priority date of November 14, 2003.
The second Complainant has taken over certain areas of the business of the first Complainant, including The Conran Shop, and operates an online business using a website with the domain name “www.conranshop.co.uk”. It is the owner of a number of registered trademarks, as follows:
Country
Mark
Number
Filing Date
Registration Date
Classes
United States
THE CONRAN SHOP
3124517
July 2, 2004
June 21, 2005
35
United States
TERENCE CONRAN
3130168
May 11, 1999
August 15, 2006
8, 11, 16, 20, 21, 24, 27
United States
THE TERENCE CONRAN SHOP
3145780
May 11, 1999
September 19, 2006
35
United Kingdom
THE CONRAN SHOP
2409799
December 22, 2005
May 4, 2007
35
The domain name <terenceconran.com> was registered in the name of the Respondent on October 23, 2000 and the domain name <theconranshop.com> was registered in the name of the Respondent on April 14, 1999. Each of the Domain Names is presently used as a site which appears to provide no more than a Google search bar (and, also, again conceals the identity of the Respondent by pretending that the website belongs to an entity with the name of the applicable domain name).
5. Parties’ Contentions
A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainants assert, inter alia, as follows in respect of each of the Domain Names:
(i) the domain name is confusingly similar to the Complainants’ names and their registered trademarks;
(ii) that whoever it was that registered the domain name has neither conceivable rights nor any legitimate interests in respect of it; and
(iii) that the domain name was registered and is being used in bad faith.
The Complainants’ assertions in respect of (i) are based not only on their registrations of trademarks referred to but also by virtue of the first Complainant’s long trading history in his own name, as an author and in respect of his eponymous interior design stores. The identity or confusing similarity of the Domain Names is self-evident.
In support of (ii), the Complainant relies, inter alia, on the obvious similarity between each of the Domain Names and the names and marks of the Complainants, which can hardly be a coincidence. The Complainants assert that there is nothing to indicate that the Respondent, whoever he, she or it may be, has any genuine connection with the names employed in the Domain Names, and that neither of the Complainants has given permission to whomever it was that registered the subject domain name to register or use it. The only apparent purpose and use of the Domain Names is to cause Internet users to invoke the functionality of the Google Custom Search Engine. The Complainants speculate that the purpose of this was to participate in Google’s AdSense for Search program, which places contextually relevant advertisements on the Custom Search Engine's search results pages, by which means a web publisher may obtain a share of the advertising revenue generated by Google. The Complainants further speculate that this intention, whilst clear, has not been implemented effectively but, nonetheless, this shows an intention to profit from the use of the Domain Names in a manner which is not a legitimate use of the Domain Names.
In support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact that the Domain Names must have been registered with the Complainants in mind, as their reputation, and particularly that of the first Complainant was well established worldwide for many years prior to the dates of registration of the Domain Names and that the registrant has since used them only to attract Internet users mistakenly believing there is a connection between the Respondent’s websites and the Complainants and thereby to cause such users to use the Google Custom Search Engine in such a way as to generate revenue for the Respondent.
The Complainants further assert that the Respondent – or at least a registrant of the name - has been involved in at least three previous determinations under the Policy, namely:
In addition, the Complainants observe that, in Foreign & Colonial Investment Trust Plc v. 70 ConsultingWIPO Case No. D2000-1383, Foreign & Colonial Investment Trust’s case was brought against “70 Consulting” but, in the case of Scottish & Newcastle plc. v. Domain AdminWIPO Case No. D2002-1142, the learned panel observed that 70 Consulting had the same address as the present Respondent and therefore that they were connected parties. The Complainants observe that the Respondent only replied to the first of the above complaints and in subsequent cases has simply not responded. A transfer has been ordered in all cases.
Furthermore, the Complainants assert that the Respondent is – or was, at the date of the Complaint - recorded as the registrant of the following domain, each of which appears to embody well-known trademarks:
Each of these domain names is registered with the Registrar.
The Complainant’s further state that the information recorded by the Respondent in respect of its identity in its registration of the Domain Names, that is “No valid address as domain is pending transfer please use email, to contact” has remained the same for some years and contend that the “pending transfer” message is a sham designed to frustrate rights holders attempting to contact the true registrant.
The Complainants argue that these additional matters are argued to show a pattern of abusive conduct with respect to domain names, lending weight to an inference that the Respondent specifically targeted the Complainants in respect of the Domain Names because of their fame and reputation.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In this case, the Complainants have clearly made out their trademark rights, both derived from the first Complainant’s long trading history and from their registered trademarks. The identity or confusing similarity of the Domain Names is self-evident.
The respondent has no rights or legitimate interests in respect of the Domain Name.
It is clear on the evidence provided by the Complainants that, whoever the Respondent is, he, she or it did not derive any rights to register and use the Domain Names from the Complainants. The Respondent has not provided any evidence that it has any rights, and his, her or its use of the Domain Names from the time of registration shows no genuine business right and interest in the names used in the domain names, nor has it shown any legitimate non-commercial use. The present use is either completely pointless or, as the Complainants contend, intended to derive some commercial benefit from an association with the Google Custom Search Engine. Given the first Complainant’s long trading history and reputation, whoever the Respondent is, he, she or it could have no conceivable legitimate interest in the name.
The Domain Name was registered and is being used in bad faith.
The Complainants assert that there emerges a pattern of conduct of abusive domain name registrations from past decisions under the Policy concerning the Respondent, and from numerous other registrations of domain names in the same name using third party marks. The difficulty with this proposition is that there is no evidence of who, in fact, the Respondent is. It is fair to say that the fact that each of the domain names the subject of the past UDRP decisions referred to by the Complainants and the other registrations (at least, at the date of the Complaint) were recorded by a registrant in exactly the same false and misleading way suggests that the same registrant was behind them all, but the manifest failure of the Registrar to properly record the registrant’s details in each case makes a firm conclusion to this issue difficult. Furthermore, this Panel cannot form any conclusions with respect to the other domain names referred to in this decision, other than noting that in many the registrant details are plainly false and misleading, has no apparent connection with the third party trademark owner in each case and in each case is being used for a parking website which is plainly benefiting from pay-per-click revenues. The Panel notes that a number of these other domain name registrations referred to have, in fact, now seemingly been transferred in the name of the Registrar, although still being parked for pay-per-click revenues with little or no connection with the trademark owner in each case. Presumably, now that the Registrar is aware of the false registration details, it will exercise its powers under the terms of its registration agreement to correct this apparent error.
Furthermore, whilst on the evidence provided by the Complainants their hypothesis concerning the revenues to be derived by the Respondent’s use of the Domain Names to associate with the Google AdSense for Search program by invoking the Google Custom Search Engine is appealing, there is insufficient evidence that this is in fact what the Respondent’s purpose was at the time of registration and now.
However, the list of circumstances in paragraph 4(b) of the UDRP is non-exclusive. Previous decisions under the UDRP have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Ltd v. Nuclear MarshmallowsWIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Club Méditerranée S.A. v. ClubmedicalWIPO Case No. D2000-1428; and Time Inc v. Chip CooperWIPO Case No. D2000-1342. Even if the Respondent is not profiting from its attraction of Internet users seeking the Complainants, given the overwhelming likelihood that the Respondent chose the Domain Names because of their identity to the names and marks of the Complainants, it can be assumed that the Respondent derives a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy; see David Taylor Cadillac/Buick Co. v. Spider Webs Ltd NAF FA0010000095832, in which it was found “confusion can result regardless of whether the content on [the respondent’s] website is commercial or non-commercial”.
In the Nuclear Marshmallows decision referred to above, the learned panel found the required bad faith in that:
“(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.”
Similar considerations apply here. Accordingly, the Panel concludes that the Respondent registered and has been using the Domain Names in bad faith.
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 Names <terenceconran.com> and <theconranshop.com> be transferred to the Complainants.
The Panel takes this opportunity to further comment that the Registrar has a responsibility not to facilitate, whether intentionally or by virtue of a lack of care, such abusive registrations to take place as those the subject of these proceedings and others referred to by the Complainants, that so obviously fail to disclose the identity of the registrant, and should take steps to correct any such registration coming to its attention.
William P. Knight Sole Panelist
Dated: April 29, 2008
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