Smith & Nephew plc v. Wesley Perkins, Smith and Nephew Trading
Case No. D2008-1029
1. The Parties
1.1 The Complainant is Smith & Nephew plc, of, London, United Kingdom of Great Britain and Northern Ireland, represented by Darren Donné, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondents are Wesley Perkins and Smith and Nephew Trading, both of Birmingham, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
2.1 The disputed domain name <smithandnephew.com> (the “Domain Name”) is registered with ZigZagnames.com LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2008. In that original Complaint Wesley Perkins was listed as the Respondent and Wesley Perkins was copied in on the email sent to the Center to which the Complaint was attached. On July 9, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
3.2 On July 12, 2008 Wesley Perkins sent an email to the Center in which he stated:
“You have sent me a complaint for a domain I no longer own, check the whois information. Thanks”
3.3 On July 14, 2008, Wesley Perkins sent another email to the Center. It is convenient to quote at some length from this email. In particular, Mr Perkins stated as follows:
“i source and manage domains for other businesses and the domain in question <smithandnephew.com> i have copied the complainant and the owner of the domain in this email.
The domain in question <smithandnephew.com> was purchased on behalf of a new business “Smith and Nephew Trading” who now have control of the domain, this domain was temporarily parked at sedo along with other domains whilst awaiting payment from my client, sedo control whatever is on that page not myself or my client who’s main point of business is predominantly market trading where they buy and sell overstock and wish to have an online presence hence the domain purchase.
The biggest concern to me is why has the complainant waited for someone else to register the domain? the domain was only a few days old when the complaint came through, they could of registered it themselves if it was that important to them ? My client has as much rights to the domain (if not more than the complainant)”
3.4 By July 14, 2008, the Center, having received no response to its Registrar verification request, sent a further email to the Registrar seeking a response to its initial email. A further email reminder was sent to the Registrar on July 15, 2008.
3.5 Later on July 15, 2008 the Registrar finally responded to the Center’s verification request. In that verification response the Registrar stated that the Complaint correctly identified the registrant but then gave contact details for the registrant that identified it as “Smith and Nephew Trading”. When asked by the Center to clarify this inconsistency, the Registrar stated that its original response was in error and that the registrant was indeed “Smith and Nephew Trading” and asserted that this registrant “took possession” of the Domain Name on June 27, 2008.
3.6 On July 21, 2008 and in response to an email from the Center stating that is was undertaking an administrative compliance review including identifying the registrant’s identity, the Complainant sent the Center an excerpt from the UK Companies House database showing that there was no record of any “Smith and Nephew Trading” save for a subsidiary of the Complainant, “Smith & Nephew Trading Group Limited”.
3.7 On July 22, 2008 and in light of the information provided by the Registrar, the Center invited the Complainant to amend its Complaint to add “Smith and Nephew Trading” as a Respondent. The Complainant filed an amendment to the Complaint to this effect on the same day.
3.8 On July 22, 2008 Mr Perkins sent an email to the Center stating that communications should no longer be sent to him as he was not the owner of the Domain Name. He also stated that the owner of the Domain Name was a sole trader and not a limited company and therefore did not need to register at Companies House.
3.9 The Center verified that the Complaint as amended 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 July 23, 2008.
3.10 On August 1, 2008 Mr. Perkins sent a further email to the Center complaining that he was still listed as a Respondent in these proceedings. The Center responded that this email would be recorded on the case file and any determination as to the proper identity of the Respondent would be at the discretion of the appointed Panel. This elicited from Mr. Perkins on August 5, 2008 the following response:
“With due respect you cannot assume nothing, if it’s in black and white with the registrar as in law and according to icanns [sic] policy”
3.11 In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Response was filed with the Center on August 12, 2008.
3.12 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 27, 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
4.1 The Complainant is a company registered in England and Wales. It is a company with a 150 year history and has been described by various news agencies as the fourth biggest orthopedics company in the world, the largest medical devices company in Europe and as having a 12% global market share in orthopedics.
4.2 The Complainant is the owner of various trade marks world wide, in classes 3, 5, 9, 10 and 44, all of which take the following form:
They include UK Registered Trade Mark No. 2326459 dated March 14, 2003 and Community Trade Mark No. 3330552 dated August 27, 2003.
4.3 The Complainant also operates a website in relation to its activities from the domain name <smith-nephew.com>, and is also the proprietor of various other ccTLD domain names that incorporate the terms “smith-nephew” or “smithandnephew”.
4.4 The first Respondent, Mr. Perkins, is an individual who has previously been involved in proceedings under the Policy (i.e Elite Model Management Corporation v Wesley Perkins,WIPO Case No. D2006-0297). The status of the second Respondent, “Smith and Nephew Trading”, is contested and is discussed in greater detail later on in this decision.
4.5 The Domain Name was registered on June 27, 2008. Initially the Domain Name was parked with Sedo and Sedo generated a domain name parking page from that Domain Name. That page contained various “sponsored links” all of which were in one way or another health related. They included “Health Insurance Quote”, “Health Insurance Cover” and “Study Health Infomatics”. Sedo also indicated that the Domain Name was for sale.
4.6 As at the date of this decision no web site operates from the Domain Name. However, the domain name remains for sale on Sedo1.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant refers to its various registered trade marks and contends that as the Domain Name is comprised entirely of the words “Smith”, “and”, and “nephew” it is “either identical or almost identical to the Complainant’s domain name.”
5.2 The Complainant also contends that the use made of the Domain Name involves trade mark infringement under United Kingdom trade mark law.
5.3 On the question of rights or legitimate interests it denies that Mr. Perkins has been known by the “Smith and Nephew” name. It also asserts that given the reputation of the Complainant’s business, “the Respondent is highly likely to be aware of the Complainant.”
5.4 On the issue of bad faith registration it claims that the fact that the Domain Name has been offered for sale on Sedo is “incontrovertible proof that the Respondent has registered the domain for the purpose of selling the domain for financial gain”. It also claims that the Sedo parking page shows that the Domain Name is being used to attract Internet users to other businesses in the medical field. This again is said to constitute trade mark infringement.
5.5 The Complainant also refers to the case of Elite Model Management Corporation v Wesley Perkins,
WIPO Case No. D2006-0297 in which Mr. Perkins was previously found to have abusively registered a domain name.
5.6 In its amendment to the Complaint the Complainant further contends that any transfer to “Smith and Nephew Trading” was contrary to paragraph 8 of the Policy. Further, it calls into question whether Smith and Nephew Trading exists. In this respect it provides a print out from the UK Companies House database that shows that the only company registered in England and Wales with the “Smith and Nephew Trading” name is a subsidiary of the Complainant. It also provides evidence in the form of an extract from the yell.com business directory to the effect that the address now provided for “Smith and Nephew Trading” in connection with the Domain Name registration was actually the address of “Keepstore Self Storage”.
B. Respondent
5.7 The Response is signed by “Mark Smith”. It contends that “Smith and Nephew Trading” is the business of sole proprietor “Mark Smith” who runs that business with his nephew “Paul Smith”. That business is said be engaged in dealings in clothing, footwear and headgear.
5.8 On the question on confusing similarity the Response asserts that the Complainant has no trade mark rights in relation to the goods in which “Smith and Nephew Trading” is said to trade.
5.9 Under the heading of rights and legitimate interests the Response asserts that the Complainant’s name is not a household name and “unless you are in [the Complainant’s] industry it is highly unlikely nobody would of heard of the [C]omplainant”. The Response also asserts that Mr. Mark Smith and Mr. Paul Smith have “nothing to do with [Mr. Perkins] apart from the purchase of the domain from him”.
5.10 Otherwise, under this heading the Response seeks to make a number of points in relation to the Annexes appended to the Complaint. These include assertions that:
(i) the WhoIs details appended to the Complaint reflect a position before the Complaint was “made” and the Domain Name was transferred to “Smith and Nephew Trading” before the Complaint was “made”;
(ii) since “Smith and Nephew Trading” is a sole proprietorship, it is not surprising that this entity is not registered at Companies House; and
(iii) the reference to previous UDRP proceedings in which Mr. Perkins was involved is said to be “underhand” and irrelevant to the current proceedings (and later on in the Response it is characterized as a “disgrace”).
5.11 On the issue of bad faith, the Response contends:
“It’s the Respondents business to purchase domains for other businesses and individuals who require the Respondents expert services, the domain was held into the Respondents “sedo” account for just a few days whilst awaiting payment from my client “smith and nephew trading” the other Respondent baring in my mind sedo “automatically” picks the sponsors advertising and automatically display the “for sale” sign. Although even on this account the complainant has again shown his speculative thinking in annex 4 he refers to “goods and services” in the medical field, not one advertisement is similar with any trademark or service which is held in the complainants class and the complainant has yet to show otherwise.”
5.12 The Response also asserts:
(i) The sponsored listings initially appearing on the website operating from the Domain Name “were placed automatically by sedo and not by the Respondent”;
(ii) The Respondent had never heard of the Complainant before the complaint was “made”. Whilst the Response accepts that the Complaint might have been filed with WIPO on July 8, 2008, it asserts that “we did receive any notification from WIPO until 12th July 2008”. It then goes on to say “and on that basis we did not contravene with the UDRP paragraph 8”.
(iii) The address given for the Respondent in the current WhoIs details is said now to be the address for “Storage King” from whom it is claimed “Smith and Nephew Trading” rents office and storage space.
5.13 The Response finally asserts that the Complainant by means of these proceedings is engaged in attempted reverse domain name hijacking. In support of that contention it states:
“This domain was registered since March 3rd 2000 and for eight whole years the complainant had no interest in the domain, then on 27th June 2008 the domain became available so the Respondent registered it on behalf of the client (other Respondent) and on the very same day the Respondent received an offer, the Respondent turned it down as it was not for sale and a few days later the Respondent received another offer which I also turned down (see Annex 3 for confirmation of this). It cannot be a mere coincidence that shortly after the second offer we receive a complaint regarding registration of this domain from the complainant so therefore we ask the panel to make a finding of reverse domain name hijacking. (Rules para.15(e) )”
6. Discussion and Findings
6.1 The Panel has reviewed the parties’ submissions. In the light of this material, the Panel finds as set out below.
6.2 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 The Panel will consider each of these requirements in turn. However, before doing so it is first convenient to address the question of the identity of the Respondent, an issue on which there is fundamental disagreement between the parties.
A The identity of the Respondent
6.4 Mr. Perkins contends that he should not have been named as a Respondent in these proceedings because he maintains that the Domain Name was transferred to Smith and Nephew Trading.
6.5 The question of the identification of the “correct” Respondent was addressed by the current Panel at some length in Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886. The decision questions whether it really is significant who is named as the respondent on the face of a complaint. However, it concluded that ordinarily a complaint will be procedural compliant if the complaint identifies the entity named in the relevant publicly available WhoIs database as the registrant of the domain name on the date that the complaint is filed (see paragraphs 5.9 and 5.10 of the Eva Padberg decision).
6.6 In this case proceedings became pending2 on July 8, 2008, when the Complaint was forwarded to the Center. The Complainant attached at Annex 1 to the Complaint a print out of the Registrar’s publicly available WhoIs database for the Domain Name on that date. The fact that this represents the database on July 8, 2008 seems reasonably clear from the text at the bottom of the page which reads “http://www.zigzagnames,com/servlet/Whois Servlet 08/07/2008”. In the circumstances, no criticism can be leveled at the Complainant in this case for having initially named Mr. Perkins as the Respondent in these proceedings.
6.7 Nevertheless and unfortunately, it seems to be increasingly the case that what is recorded in the WhoIs database does not actually reflect the entity that in reality controls the domain name in question. In the opinion of the Panel it is by reference to the actual owner and controller of the domain name that the requirements of the Policy are to be judged. There are for example entities that provide “domain privacy services”. The legitimacy of such services is a matter of controversy, but what is reasonably clear is that when assessing, for example, the question of bad faith it is the intentions of the entity that in reality controls the domain name rather than privacy service that is most relevant (see footnote 2 in Eva Padberg).
6.8 That is not to say that it is always necessary actually to identify and name that “true owner”. Indeed, in many cases this is just not possible. Frequently, it will be sufficient for a complainant to contend that whomever it is that controls the domain name, it is nevertheless clear from the way in which the domain name has been used that the domain name registration is abusive. However, difficulties can arise in a case such as this when there is a claim that the domain name has been transferred. The exact dates of transfer may well then become important as they may in turn determine who is the person or entity against which the issues of rights or legitimate interests and bad faith are to be judged.
6.9 Nevertheless, it seems to the Panel that in any assessment of these questions the starting point must be the details that appear on the publicly available WhoIs register. Ordinarily, it will be for the entity that claims that the register does not reflect reality to show that this is the case.
6.10 In this case Mr. Perkins and the Response3 claims that the WhoIs details appended to the Complaint do not reflect the true position in this case. The case Mr. Perkins puts forward in this respect is to say the least confused.
6.11 At one point he maintains that he registered the Domain Name “on behalf of” “Smith and Nephew Trading”. This might suggest that right from the initial date of registration the Domain Name in reality belonged to “Smith and Nephew Trading”. But if this is the case, this raises the question why “Smith and Nephew Trading” was not identified as the registrant right from the start.
6.12 At other points he talks about the Domain Name being transferred from him to “Smith and Nephew Trading”, which suggests that for at least some period of time it is he who owned the Domain Name. Further, the Response claims that the Domain Name was parked “for a few days” with Sedo whilst Mr. Perkins awaited payment from “Smith and Nephew Trading”. This statement suggests that Mr. Perkins thought that “Smith and Nephew Trading’s” right to use the Domain Name was somehow conditional on payment. It is also noticeable in this respect from the print out of the Sedo generated website that operated from the Domain Name, that this website was operational at least as late as July 4, 2008. In other words the “few days” to which Mr. Perkins refers was in fact over a week.
6.13 Next there is the rather curious response that Mr. Perkins provides to the claim by the Complainant that any transfer in this case was contrary to paragraph 8 of the Policy4. Mr. Perkins seems to be at pains to declare that he first became aware of these proceedings on July 12, 2008 and that, even if proceedings were filed with the Center on July 8, 2008, the transfer took place before he became aware of the proceedings on July 12. The Panel questions whether Mr. Perkins’ assertion as to his knowledge is correct. It is clear that the Complainant when sending the Complaint to the Center by email on July 8, 2008 also copied that email to Mr. Perkins email address. However, regardless of exactly when Mr Perkins became aware of the proceedings, the point is that one possible reading of the Response is that the transfer only actually took place between July 8, 2008 and July 12, 2008. Since it is not the date of Mr. Perkins knowledge that is relevant to the question of the date when proceedings became pending, but the date the Complaint is sent to the Center, then this reading of the Response would suggest that Mr. Perkins is the “true” Respondent after all. All of these matters would, of course have been far clearer if the Response had appended documentary evidence as to the arrangements surrounding the registration of the Domain Name and its alleged transfer to “Smith and Nephew Trading”. However, no such evidence is provided.
6.14 There is one thing that might be said to support the contention (if that is indeed what the Response contends) that the Domain Name was transferred before these proceedings became pending. That is the assertion by the Registrar on July 15, 2008 that the Domain Name had come into the “possession” of “Smith and Trading Limited” on June 27. However, what exactly is meant by this statement is far from clear and it raises more questions than it answers, this time about the Registrar’s conduct. If it is intended to be an assertion that it was notified on June 27 (i.e. the date of initial registration) that the Domain Name should be transferred into the name of “Smith and Trading Limited”, it is somewhat disturbing to note that the publicly available WhoIs database still recorded the registrant as Mr. Perkins almost two weeks later. If instead it is trying to say that a subsequent date (perhaps after July 8, 2008) it was presented with material which suggested that the domain name had at an earlier date been transferred to “Smith and Trading Limited”, then to merely gloss over this with the assertion that the Domain Name was in “possession” of Smith and Trading Limited is to say the least far from helpful. It involves the Registrar imposing its own view in relation to matters that are better determined by the Panel. It is also risks facilitating cyber flight and raises questions as to whether the Registrar has acted contrary to paragraph 8 of the Policy5.
6.15 However, ultimately the Panel is of the view that the exact moment of transfer of the Domain Name in this case does not actually matter. The reason for this is that the Panel believes that the Complaint is correct when it states that “Smith and Nephew Trading” does not exist. The reasons for this are as follows:
(i) The combination of the words “Smith” and “nephew” is unusual and the explanation for why the name “Smith and Nephew Trading” was adopted, to the Panel sounds contrived.
(ii) The Complainant declares that to the best of its knowledge “Smith and Nephew Trading” does not exist and it is clear that it has undertaken investigations in this respect. It provides evidence from the UK Companies House online database which shows that there is no company registered in England and Wales with the name “Smith and Nephew Trading” other than a company that is a subsidiary of the Complainant. It provides a printout from the yell.co.uk business directory in which Smith and Nephew Trading is not listed. It provides a Google search in relation to “Smith and Nephew” and “Wesley Perkins”. The most obvious way to deal with this allegation would be to provide positive evidence of “Smith Nephew Trading’s” existence. It could have taken many forms and should have been easy to provide. It might take the form of headed noted paper or invoices, copies of advertising, copies of relevant entries in business or telephone directories, copy accounts (if necessary redacted) and/or evidence from the alleged business’ independent advisors. And yet not a single piece of evidence of this sort is forthcoming. Instead the Response does no more than seek to explain away the specific evidence filed by the Complainant. Each of these explanations may be plausible in isolation. For example, if Smith and Nephew Trading is the trading name of a sole proprietor and not a UK registered company, then that name would indeed not appear on the Companies House register. However, when the Response’s contentions are considered in the round the impression gained is that Mr. Perkins is prepared to go to some length to explain away the complainant’s evidence but is strangely reluctant to put forward any positive evidence in support of his own case. Of course, if Smith and Nephew Trading did not really exist, this approach is not strange at all.
(iii) The Complainant contends that the address used for Smith and Nephew Trading is in fact the address of a storage company. The Response contends that the storage business concerned has changed to “Storage King” and that Smith and Nephew Trading rents office and storage space from the entity. The Panel finds it odd that office premises have been rented from a company that, if its name is any guide, simply provides storage facilities. No evidence is offered to support the contention that Smith and Nephew Trading has entered into any sort of rental arrangement with this alleged business.
(iv) Smith and Nephew Trading would appear at no time to have had any Internet presence. This is perhaps not surprising for a small business that, if the Response is to be believed, is operating out of temporary storage premises. However, if this is the case this raises the question as to why “Smith and Nephew Trading” would want the Domain Name at all. To this is to be added the fact that according to the Response the Domain Name had previously been registered for 8 years and that Mr. Perkins snapped it up on the very day it became available. It beggars belief that Smith and Nephew Trading coincidentally asked Mr. Perkins to register the Domain Name on the very day it became available. Perhaps then Smith and Nephew Trading asked Mr. Perkins to keep a watch on the Domain Name in case it became available. However, why is this domain name so important to this business? The Response at one point claims that there are “hundred of possible registrations” that might incorporate the terms Smith and Nephew. This is perhaps something of an exaggeration but the point is that if Smith and Nephew Trading wanted to have a web presence presumably it did not have to wait until the Domain Name became available. Further, to instruct Mr. Perkins to keep a watch on the availability of the Domain Name suggests a degree of sophistication on the part of Smith and Nephew Trading when it comes to the operation of the Internet that does not square with a business that otherwise seems to have shown no interest in having an Internet presence. Further, notwithstanding the efforts that Smith and Nephew Trading has gone to in order to acquire this Domain Name, it would seem that no effort has been made since acquisition to use it. In short, the story that is set out in the Response does not add up.
(v) The Domain Name remains for sale on Sedo as at the date of this decision. It is difficult to square this fact with the assertion that Smith and Nephew Trading want to use the Domain Name for the purposes of its business.
6.16 In the circumstances, the Panel believes it is appropriate to treat Mr. Perkins and Smith and Nephew Trading as the same entity for the purposes of these proceedings. The term Respondent when used in the rest of this decision should be read accordingly.
B. Identical or Confusingly Similar
6.17 Notwithstanding the submissions of the parties in relation to this issue, the question of confusing similarity is relatively straightforward. It is clear that the Complainant has a number of registered trade marks around the world of which the words “Smith and Nephew” are the predominant element and the only textual element. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to a number of trade marks in which the Complainant has rights
6.18 This Panel is of the view that the non-textual element of the Complainant’s marks is something that needs to be taken into account when assessing the question of whether a domain name is identical or confusingly similar to a mark6. However, in this particular case the Panel does not believe that this element in any of the marks relied upon so detracts from the textual element as to prevent a finding of confusingly similarity.
6.19 That is sufficient to decide this aspect of the case in the Complainant’s favour. The Complainant’s further claims of trade mark infringement and the Respondent’s response seems to misunderstand how the Policy works. The question of confusing similarity under the Policy does not involve any assessment of whether the domain name in issue involves infringement of a trade mark or whether there would be a “likelihood of confusion” as that term is understood as a matter of trade mark law.
6.20 All that is required is for a comparison to be made between the relevant mark or marks and the domain name in question to establish whether a requisite degree of similarity exists. The content of any website or the manner in which the domain name is used is not relevant to that assessment (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”)). Similarly, it does not matter where the trade marks relied upon are registered (see paragraph 1.1 of the WIPO Overview).
6.21 That is not to say that these issues are of no significance under the Policy. In some cases they may be relevant to the assessment of bad faith or legitimate interests. However, they are essentially irrelevant so far as paragraph 4(a)(i) of the Policy is concerned.
6.22 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interest
6.23 Given the finding of the Panel that the Respondent registered the Domain Name without any genuine “Smith and Nephew Trading” business in mind, it necessarily follows that the Respondent cannot show that he has rights or a legitimate interest in the name by reason of that business’ existence.
6.24 Indeed, for the reasons that are described in greater detail under the heading of bad faith below, the Panel is of the view that the Domain Name was registered by the Respondent with the intention to obtain financial advantage from the similarity between the Domain Name and the name that the Complainant uses for its business. This does not provide rights or a legitimate interest under the Policy.
6.25 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.26 It does not automatically follow from the Panel’s findings as to the identity of the Respondent that the Domain Name must have been registered and used in bad faith. The Complainant must still show that the Domain Name was registered and used with the Complainant’s use of the Smith and Nephew name in mind and with a view to take financial advantage of the similarity of the Domain Name to that name.
6.27 In the opinion of the Panel, the Respondent was aware of the Complainant at the time of registration. First, there is the nature of the Domain itself. As has already been previously stated, the combination of the words “Smith and Nephew” is an unusual one. The Panel has rejected the Respondent’s explanation as to why that name was chosen and in the absence of any other credible explanation it seems more likely than not that the Domain Name was chosen because of its similarity with the Complaint’s name. This is so, even if one accepts the Respondent’s contention that the name “Smith and Nephew” is not well known outside of the health sector.
6.28 Second, there is the nature of the domain name parking page that originally operated from the Domain Name. It is now well known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider such as Sedo. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA,WIPO Case No. D2007-1143).
6.29 In this case all the sponsored links were health related. Since the words “Smith”, “and”, and “Nephew” are not descriptive terms for things related to the health care industry, these links suggest knowledge of the Complainant and its activities in this sector on the part of the person who chose them.
6.30 The Respondent claims that such knowledge cannot be laid at his door. He claims that he did not choose the links that appeared and that they were chosen automatically by Sedo. It is a common claim of those who use these sorts of domain name parking services. However, in this case, as in many others, it is unconvincing. The reason why this is so is that although the claim that the links are automatically chosen by the domain name parking service provider are usually correct, the domain name owner has the ability to influence the type of links produced by the choice of suitable “keywords”, “metatags” and the like. It is in the domain name owners’ interest to choose keywords that are most likely to produce sponsored links that are most relevant to Internet users who have typed the domain name into their browser. The more relevant the links the more likely it is that they will be clicked upon and the greater the click through revenue that is generated. Therefore, if the links produced are not one might expect given any descriptive element in the relevant domain name and in the absence of a credible explanation and evidence from the respondent as to why it is that these particular links were produced, the usual inference will be that the respondent influenced what was displayed. From this it may be possible to infer knowledge of the complainant (see for example NAF NAF v. Hostmaster Hostmaster,
WIPO Case No. D2007-1175 and for a case in which the nature of the domain name was such that this inference was not drawn see Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV / Port Media, Inc.,WIPO Case No. D2008-0321).
6.31 In the circumstances, it is possible to infer from the links that appeared on the Sedo parking page in this case that the Respondent was aware of the Complainant at the time he registered the Domain Name.
6.32 Given the fact that a domain name parking service was used for this Domain Name up to the date of the Complaint (as has already been described there is evidence that this page was operation on July 6, 2008, and there is no reason to believe that it stopped operating prior to the commencement of proceedings two days later), it also seems reasonably clear why it was that the Domain Name was registered. That is that the Respondent sought to gain financial advantage from the fact that Internet users might visit the parking page as a consequence of their having confused the Domain Name with the name used for the Complainant’s business and Complainant’s website. Such activity falls within the scope of the example of circumstances evidencing bad faith set out at paragraph 4(b)(iv) of the Policy.
6.33 There are also two other factors that suggest bad faith registration and use.
6.34 First, there is the fact that the Domain Name was also offered for sale and remains for sale on Sedo. According to the Respondent, he received two offers for the sale of the Domain Name, both of which were turned down. The Panel does not know what those offers were but insofar as the Respondent considered the Domain Name to be of substantial value, the Panel believes it is likely that this value primarily arose out of the similarity between the Domain Name and the name used for the Complainant’s business. If there is no genuine Smith and Nephew business for which the Domain Name was registered, it is hard to see how the Domain Name might otherwise be of value.
6.35 Second, there is Mr. Perkins involvement in previous proceedings under the Policy; i.e. Elite Model Management Corporation v Wesley Perkins,WIPO Case No. D2006-0297. Mr. Perkins appears to claim that the Complainant’s reference to this previous case in which he had been involved is somehow improper. The Panel disagrees. In the Elite Model case, Mr. Perkins had registered the domain names <elitemodels.com> and <elitemodels.net> and had parked them with Sedo in order to achieve click-through revenue. The panel held that these domain names were confusingly similar to the marks of the Elite Model Management Corporation and were being used in an attempt to attract for commercial gain Internet users to the Sedo generated websites. Whilst the Panel does not necessarily subscribe to the exact reasoning of the panelist in the Elite Model case, the similarities between the facts of that case and the one currently before the Panel are striking. It is, of course, quite open to the Respondent to seek to distinguish the facts of the Elite Model case from the case now before the Panel. However, the Respondent does not seek to do so.
6.36 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
D. Reverse Domain Name Hi-jacking
6.37 Given the findings of the Panel, the allegation of reverse domain name hi-jacking obviously fails. However, there is a further point that is worth making in this respect.
6.38 The Respondent appears to be convinced that one of the offers made for the Domain Name on Sedo was made by the Complainant. The Respondent seems to be suggesting that the Complainant having failed to register the Domain Name quickly enough when it became available, tried to purchase it from the Respondent and when that failed it launched these proceedings. These circumstances the Respondent seems to believe support a finding of reverse domain name hi-jacking.
6.39 The Panel does not know whether the Respondent’s claims about the Complainant are correct. However, even if there were, they would not by themselves support a finding of reverse domain name hi-jacking. There is nothing improper in a trade mark holder seeking to purchase a domain name to which they believe they are entitled so as to avoid the need for court proceedings or proceedings under the Policy.
7. Decision
7.1 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, <smithandnephew.com> be transferred to the Complainant.
2 The issue of when proceedings become “pending” under the Policy is discussed at paragraph 5.16 of Eva Padberg
3 The Response purports to have been filed on behalf of both Mr. Perkins and Smith and Nephew Trading and is signed by “Mark Smith”. However, it is reasonably clear that Mr. Perkins prepared this document. Frequently, when Mr. Perkins’ actions are described in the Response the words “I” and “my” are used in the text. The document also contains numerous grammatical errors that appear to the Panel to be very similar to those that appear in Mr. Perkins earlier email correspondence and there are also other idiomatic similarities.
4 How exactly this operates is discussed in paragraphs 5.16 and 5.17 of the Eva Padberg decision. In short, paragraph 8 provides that once domain name proceedings have become pending under the Policy, the domain name may not be transferred.
5 This is not the only aspect of the Registrar’s conduct that is concerning. There is also the fact that it took the Registrar a week to respond to the Center’s original verification request. This Registrar would appear to have a history of tardy responses to such requests. See for example, Christian Dior Couture Company v. Chris Bateman, WIPO Case No. D2007-0849 and the Center’s letter to ICANN dated April 16, 2008, which is available at http://www.wipo.int/export/sites/www/amc/en/docs/icann160408.pdf.
6 For a further discussion of the different views on this issue see Steinemann Technology AG v. Enzo Graficas Internacional C.A.,
WIPO Case No. D2007-0170 and Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS,
WIPO Case No. D2005-0035.
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