The Complainant is Dilitex Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Chancery Solicitors of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Roddy Crozier-Maharaj of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, <dilitex.com> (the “Domain Name”), is registered with Tucows (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2008. On May 30, 2008, 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 June 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 16, 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 Complainant is an English company, which has been engaged in the manufacture and supply of spare parts for the automotive industry since the 1970s.
The Complainant is the proprietor of several trade mark registrations of or including the name DILITEX, the earliest of which is UK registration No. 2193091 dated March 27, 1999 being a device mark, the most prominent element of which is the name DILITEX in stylized form. The registration is in class 7 for automotive spare parts and related goods.
In 1999, the Complainant entered in to a contract with Complete Systems Solutions Limited (“CSS”), a software consultancy, for the supply of services in relation to the Complainant’s IT systems. The Complainant contends (and the Panel accepts as fact) that at that time the Respondent was Managing Director of CSS.
The Domain Name was registered on April 16, 1999 in the name of CSS.
CSS was dissolved on October 14, 2005, but the Respondent continued to supply email and web services to the Complainant through another entity, Business Information and IT Services Limited, a company which was dissolved on February 19, 2008.
On a date between January 18, 2006 and February 22, 2008 (the Complainant asserts November 14, 2007) the Domain Name registration was put into the name of the Respondent.
From 1999 until March 16, 2008, the Domain Name connected to the Complainant’s website. Since that date the Domain Name has resolved to an error message.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its DILITEX registered trade marks, the most prominent element of which is the name DILITEX, the name under which it has traded since the 1970s.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered for no reason other than that it should be used by the Complainant for email and web services. The Complainant contends that CSS was supposed to have registered the Domain Name in the name of the Complainant, but despite assurances that it would do so, never did so.
Initially, the invoices submitted by CSS were paid by the Complainant in full. However, by late 2002, the Complainant and CSS were in dispute over the latter’s invoices, which the Complainant believed to be excessive. Since then the parties have been in communication from time to time over those and subsequent invoices and the Domain Name, but without any resolution of the dispute.
The Complainant contends that the transfer of the Domain Name from the name of CSS to the Respondent after the dissolution of CSS was without any justification and was with the intention of using the registration as a bargaining tool in the negotiations over unpaid invoices.
The Complainant contends that the Domain Name was acquired and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. In the alternative, the Complainant observes that the list of what shall constitute bad faith registration and use as set out in paragraph 4(b) is a non-exhaustive list and that the circumstances surrounding the Respondent’s acquisition and use of the Domain Name merit the Domain Name being branded an abusive registration under the Policy.
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 trade mark 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
The Domain Name features the name DILITEX and the generic domain suffix. The suffix may be ignored for the purposes of assessing identity and confusing similarity.
The Complainant has produced evidence of its trade mark registrations, which are all device marks, the most prominent textual element of which is the name DILITEX. In addition the Complainant has produced evidence to show to the satisfaction of the Panel that it has unregistered (common law) rights in respect of DILITEX, the name under which it and its unincorporated predecessor has traded for over 30 years.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
As will be seen from the Factual Background at Section 4 above, the original registrant of the Domain Name was CSS, a software consultancy of which the Respondent was Managing Director. CSS was employed by the Complainant to look after its IT systems. The Panel is satisfied from the evidence produced by the Complainant that CSS registered the Domain Name for the benefit of and at the expense of the Complainant.
The Complainant asserts that it repeatedly made demands of CSS for transfer of the Domain Name and that CSS agreed to do so, but failed to do so. By 2002 the Complainant and CSS were in dispute over unpaid invoices. CSS was dissolved in 2005, but the Respondent through another corporate vehicle, Business Information and IT Services Limited continued to provide services to the Complainant until its dissolution in February 2008. At some stage following the dissolution of CSS (the Complainant has produced evidence to show that it was after January 18, 2006), the Domain Name was acquired by the Respondent.
If the Complainant’s account of what happened is accurate (the Panel has no reason to doubt it), CSS’s only legitimate interest in respect of the Domain Name was to preserve the registration as part of its contractual obligation to provide IT services to the Complainant. It had no independent rights or legitimate interests in respect of the Domain Name.
On the Complainant’s account CSS had agreed to transfer the Domain Name to the Complainant. When the Respondent arranged to put the Domain Name registration into his own name, he knew that it ought to have been transferred to the Complainant.
What justification the Respondent can have had for transferring the Domain Name into his own name several months at least following dissolution of CSS, the Panel has no idea. The Respondent has not responded and in this context it is noteworthy that the courier delivering the hardcopy of the Complaint to the Respondent reported to the Center that “Receiver did not want, refused delivery”.
The correspondence between the parties, which has been produced by the Complainant shows that the Respondent was indeed using the Domain Name as a bargaining tool. The Respondent’s email to the Complainant of March 19, 2008 states: “Further to our telephone conversation, this is to confirm that I have reinstated the Dilitex services pending the payment of the two current invoices. On payment of these invoices I will initiate the transfer of the Dilitex domain.”
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 invoices over which the parties were in dispute related to the IT services being provided by the Respondent and/or his companies, CSS and Business Information and IT Services Limited. They were not invoices relating primarily to the registration of the Domain Name and manifestly the transfer of the Domain Name into the name of the Respondent, was, to the knowledge of the Respondent, expressly contrary to the wishes of the Complainant.
In using the Domain Name as a bargaining tool in his negotiations with the Complainant, the Respondent was using the Domain Name to extract from the Complainant monies, which were disputed and which were well in excess of any legitimately incurred costs directly related to the Domain Name.
The Panel agrees with the Complainant that the Respondent arranged for the Domain Name to be put into his name rather than that of the Complainant with the intention of using it as he has done, namely as a bargaining tool.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) 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, <dilitex.com>, be transferred to the Complainant.
Tony Willoughby Sole Panelist
Dated: July 29, 2008
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