Davis + Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc
Case No. D2008-1162
1. The Parties
The Complainant is Davis + Henderson Limited Partnership, of Ontario, Canada, represented by Lang Michener, Canada.
The Respondents are Whois Privacy Protection Service, Inc. and Demand Domains Inc, of United States of America, represented by Radocha Christina G., United States of America.
2. The Domain Name and Registrar
The disputed domain name, <davisandhenderson.com> (the “Domain Name”), is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2008. On July 31, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
On July 31, 2008, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 6, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 8, 2008. The Center verified that the Complaint together with the amended 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 August 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2008. The Response was filed with the Center on August 29, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 4, 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.
When the original Complaint was filed the Domain Name was registered in the name of Whois Privacy Protection Service, Inc. When the Center sought from the Registrar verification of the registrant details in respect of the Domain Name, the Registrar identified the registrant as being Demand Domains Inc.
For the purposes of this administrative proceeding the Panel proposes to treat Whois Privacy Protection Service, Inc. and Demand Domains Inc. as being one and the same and will refer to them together as “the Respondent”.
4. Factual Background
The Complainant and its predecessors in title have traded in Canada in the financial services field under the name Davis + Henderson for well over a century, a key area of the business being the provision of cheques/checks.
The Complainant is the registered proprietor of inter alia
1. Canadian Trade Mark registration No. TMA534382 dated January 28, 1999 (registered may 10, 2000) DAVIS + HENDERSON and swirl design for various design, printing, communications and data management services; and
2. Canadian Trade Mark registration No. TMA687616 dated January 13, 2006 (registered May 11, 2007) DAVIS & HENDERSON (words) for various goods and services associated with its field of operations, namely financial services; and
3. United States Trade Mark registration No. 2533280 dated March 25, 1999 (registered January 29, 2002) DAVIS + HENDERSON (stylized device) for design, printing and related services.
The Domain Name was registered on October 13, 2006.
From at least as early as May, 2008, until at least as late as July 10, 2008, the Domain Name was connected to a monetized parking page featuring links to sites many of which were sites of competitors of the Complainant relating to the provision of cheques/checks. The page in question also featured a text link reading “This domain may be for sale. Buy this Domain”. The link resolved to a website of Acquire This Name Inc., inviting interested parties to submit an offer to purchase the Domain Name.
On a date in May, 2008, an employee of the Complainant submitted an offer to purchase the Domain Name for $100 via the link to the Acquire This Name Inc. website.
On June 3, 2008, no reply to the offer having been received, the Complainant’s said employee contacted Acquire This Name Inc. by telephone and spoke to someone who identified himself as the registrant’s agent for the purpose of selling the Domain Name. The agent stated that the Domain Name had generated a heavy amount of traffic with the result that the price for the Domain Name had been set at $160,000. The Complainant’s employee then disclosed that she was calling on behalf of the Complainant and explained that the Domain Name had been registered without the Complainant’s consent. The agent responded by saying that if the Complainant was prepared to negotiate, the agent might be able to get the price down to $85,000.
On August 13, 2008, the Respondent, having received the Complaint, emailed the Complainant’s representative stating that it could not trace having heard from the Complainant prior to receipt of the Complaint, stating that it did its best to avoid registering domain names which conflict with the rights of third parties and indicating that it was willing to transfer the Domain Name to the Complainant without delay.
On August 25, 2008, not having received a reply to that email, the Respondent again emailed the Complainant’s representative offering to transfer the Domain Name to the Complainant at no cost.
On August 28, 2008, following a telephone call initiated by the Respondent to the Complainant’s representative, the Complainant’s representative emailed the Respondent to the effect that the Complainant wished to proceed with the Complaint and obtain a decision from the Panel. The Complainant referred to the May/June 2008 communications between the Complainant and the Respondent’s sales agent referred to above and also to the Complainant’s trade mark registrations, contending that, contrary to what was said in the Respondent’s email dated August 13, 2008, the Respondent had made no reasonable effort to avoid infringing the Complainant’s rights.
5. Parties’ Contentions
A. Complainant
The Complainant points to its trade mark registrations in respect of the mark DAVIS + HENDERSON and to the common law (unregistered trade mark) rights, which it claims to have built up in respect of the name, Davis + Henderson, through long and extensive use of that name in the course of business. The Complainant contends that the Domain Name is identical or confusingly similar to its DAVIS + HENDERSON trade mark.
The Complainant contends that while the Respondent is clearly using the Domain Name for commercial gain by way of its pay-per-click links on its website, that use cannot, in the circumstances of this case, be said to be a bona fide or legitimate use of the Domain Name within the meaning of paragraph 4(c) of the Policy, it being designed to increase traffic to the Respondent’s website, capitalizing on the Complainant’s goodwill and/or disrupting the Complainant’s business, thereby increasing the price that the Complainant would be willing to pay for the Domain Name. The Complainant refers to the other paragraphs of paragraph 4(c) of the Policy and contends that none of them is applicable here. The Complainant asserts that it has not given the Respondent any permission to use the Complainant’s name and trade mark.
The Complainant contends that the Domain Name was registered and is being used in bad faith on a number of the grounds set out in paragraph 4(b) of the Policy.
B. Respondent
The Respondent does not deny that the Complainant has trade mark rights in respect of its name and mark, DAVIS + HENDERSON. Nor does the Respondent contest the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent contests the Complaint and seeks its dismissal solely upon the basis that it has acted in good faith throughout.
The Respondent does not deny that Acquire This Name Inc. was its sales agent for the Domain Name and does not deny that Acquire This Name Inc. tried to obtain up to $160,000 for the Domain Name. However, it contends that this was all the fault of the Complainant.
The Respondent states that one can only submit a bid for a domain name via the Acquire This Name Inc. website if one “affirmatively accepts” the Acquire This Name Inc. disclaimer reading “If you believe you have legitimate trade mark rights in this domain, please immediately contact [email protected]. You must include a copy of your government issued trade mark documentation. Your trade mark claim will only be evaluated if the required trade mark documentation is attached.”
The Respondent contends that if the Complainant had followed the approach set out in the ‘disclaimer’, the Respondent’s sales agent, Acquire This Name Inc., would have forwarded the papers on to the Respondent and the Respondent would willingly and in good faith have transferred the Domain Name to the Complainant at no cost.
The Respondent then refers to the efforts it made to induce the Complainant to accept a free transfer of the Domain Name instead of pursuing this Complaint under the Policy.
In the event that the Panel dismisses the Complaint, the Respondent agrees to transfer the Domain Name to the Complainant forthwith.
Finally, the Respondent requests that if the Panel is minded to direct transfer of the Domain Name, the Panel do so without any formal finding that the Respondent acted in bad faith.
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. Consent to transfer
An unusual aspect of this case is that not only is it the case that none of the facts are disputed, but there is also no dispute between the parties that the Domain Name should be transferred to the Complainant. The only issue is as to whether or not the Panel should, as requested by the Complainant, issue a reasoned decision in the matter or whether, as requested by the Respondent, the Panel should either (a) dismiss the Complaint, whereupon the Respondent agrees to transfer the Domain Name to the Complainant or (b) simply endorse the Respondent’s willingness to transfer the Domain Name, by directing transfer without making any finding of bad faith.
Of the options put forward by the Respondent (a) involves a step, which is outside the control of the Center or the Panel and (b) is not a course acceptable to the Complainant. Endorsing agreements between parties that domain names should be transferred is something, which is generally only done where there is in fact agreement between the parties.
The Complainant has invoked the Policy and paid the appropriate fee and requests a reasoned decision and the Panel finds it appropriate in the circumstances (discussed below) to proceed to a decision in the normal way. Notwithstanding the Respondent’s request that the Domain Name be transferred to the Complainant, the Panel believes that the facts of the case are such as to warrant a finding being made on the public record.
C. Identical or Confusingly Similar
There is no dispute between the parties that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. The evidence supports the Complainant’s contention in this regard and the Panel so finds.
D. Rights or Legitimate Interests
There is no dispute between the parties that the Respondent has no rights or legitimate interests in respect of the Domain Name. As indicated above, the Respondent does not deny the existence of the Complainant’s trade mark rights and does not deny that the Domain Name is identical or confusingly similar to the Complainant’s trade mark.
The Domain Name, which is substantially identical to the Complainant’s name and trade mark, has no obvious association of any kind with the Respondent and the Respondent does not seek to say that it does. The Respondent does not deny that the Domain Name has been connected to a monetized parking page containing links to websites of or operated by the Complainant’s competitors.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of several sub-paragraphs of paragraph 4(b) of the Policy.
The Complainant refers to the fact that the Domain Name was connected to a webpage indicating that the Domain Name was for sale and featuring a link to the website of Acquire This Name Inc., the Respondent’s sales agent for the Domain Name. As can be seen from section 4 above, the Complainant eventually made contact by telephone with Acquire This Name Inc. and was told that it was a domain name, which had attracted heavy traffic and was for sale at a price of $160,000. On being told that the call was being made on behalf of the DAVIS + HENDERSON trade mark owner, the sales agent said that if the Complainant were willing to negotiate, he thought the price could be dropped to $85,000.
The Complainant refers to a number of other WIPO decisions under the Policy involving the Respondent in which the Respondent has been found to be in possession of domain names, which were registered and used in bad faith.
The Complainant contends that the linking of the Domain Name to a webpage featuring links to the Complainant’s competitors is disruptive of the Complainant’s business.
The Complainant contends that in using the Domain Name as it is, the Respondent is attracting Internet users in search of the Complainant to the Respondent’s website with a view to earning pay-per-click revenue from the advertising links featured on the webpage in question. Those links are all identified by labels relating to the provision of cheques/checks, which is a core part of the Complainant’s business. Thus, the Respondent is deceiving Internet users for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
On the face of it, therefore, the Complainant makes out a strong case of bad faith registration and use of the Domain Name.
The question that immediately springs to mind is: why did the Respondent register a domain name such as the Domain Name, which is not a descriptive or generic name, but manifestly a very specific name, likely to identify a particular company or business? Why?
While the Respondent contends that it “has a policy against registering domains that are in derogation of legitimate rights holders” (Respondent’s email of August 13, 2008) and “has a policy against holding domains that are in conflict with legitimate rights holders” (Respondent’s email of August 28, 2008), the Response contains no answer to that question. Nor does it contain any response to the Complainant’s allegations of bad faith registration and use set out above.
Instead, the Respondent resists the Complaint on the basis that:
(a) had the Complainant, instead of submitting an offer for the Domain Name via the Acquire This Name Inc. website, followed the route suggested for legitimate rights holders in the disclaimer on that website (i.e. submitted proof of its trade mark rights), the matter would have been brought to the Respondent’s attention and the Domain Name would have been transferred at no cost and without delay; and
(b) since receipt of the Complaint, the Respondent has done its very best to encourage the Complainant not to pursue this Complaint, expressing a willingness to transfer the Domain Name to the Complainant at no cost.
The Panel acknowledges that, following receipt of the Complaint, the Respondent has done much of what could reasonably have been expected of it, to obviate the need for a formal decision, except, perhaps, to offer to reimburse the Complainant for the expense to which the Complainant has been put in lodging the Complaint.
However, the Respondent contends that the Complaint should never have been launched in the first place. The Respondent contends that on learning of the Domain Name and the use that was being made of it, the Complainant should have followed the route identified for legitimate rights owners on the Acquire This Name Inc. website. The Complainant should not have accepted the invitation to submit a bid for the Domain Name.
In so saying and in not having contested the Complainant’s claims, the Respondent appears to be asserting that it is perfectly acceptable for the Respondent to register as a domain name a name in respect of which it knows it has no rights or legitimate interests and then to use that domain name for commercial gain deriving income from the advertising links to the rights owner’s competitors, provided that, on the rights owner complaining, the Respondent forthwith transfers the domain name in question to the rights owner.
The Panel can appreciate that where the trade mark in question is at the less distinctive end of the scale and where the Respondent may justifiably have had no reason to believe the name in question to be the subject of trade mark rights, a mechanism along the lines of that suggested by Acquire This Domain Inc. for legitimate rights owners is sensible.
However, DAVIS + HENDERSON is not at that end of the scale. It is specific and likely to be unique to a single entity. Whoever was responsible for the Domain Name must have known of the Complainant and selected the Domain Name with the Complainant in mind. It is fanciful to suggest that the Acquire This Name Inc. mechanism was an appropriate one for a name such as this. Given the use to which the Domain Name was put (as described above), manifestly, the Domain Name was selected specifically for its attractive commercial value on the back of the Complainant’s goodwill.
If this were ever in doubt, it is borne out by the response of the Acquire This Name Inc. sales agent on being told by the Complainant’s employee over the telephone that it was the Complainant, the owner of the DAVIS + HENDERSON trade mark who wished to acquire the Domain Name. If there was reason to have any confidence in the Respondent’s policies respecting the rights of third parties, the sales agent would have responded along these lines: “Oh, in that case, you should not be attempting to purchase the Domain Name, you should be submitting to us evidence of your rights and we will forward it on to the Respondent, who will then, if appropriate, transfer the Domain Name to you.” Instead, the sales agent, having frankly acknowledged the attractive value of the name, suggested that he might be able to reduce the price from $160,000 to $85,000.
Indeed, having seen the copies of the relevant Acquire This Domain Inc. webpages exhibited in these proceedings, the Panel is far from satisfied that the so-called ‘disclaimer’ is anything other than a cosmetic device designed to show Acquire This Domain Inc. and its clients in a favourable light in circumstances such as this where the client in question, the Respondent, is discovered to be in possession of a domain name featuring the trade mark of an unconnected third party.
In the absence of any explanation from the Respondent as to why it registered the Domain Name, the Panel is satisfied on the evidence submitted by the Complainant that the Domain Name was in all likelihood registered precisely because it was the name and trade mark of the Complainant and with knowledge of the likely heavy traffic that it would attract to the Respondent’s site and did in fact attract to that site. The Respondent relied upon the fact that Internet users would be visiting the site to which the Domain Name was connected, because they would be hoping to reach a site of or authorized by the Complainant. They would have been likely to have been interested in the Complainant’s core activity of cheque/check provision and would therefore be likely to use the advertising links on the Respondent’s site relating to that service provision, thereby generating pay-per-click revenue for the Respondent.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv).
In light of that finding, it is unnecessary for the Panel to address the Complainant’s other bad faith allegations.
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, <davisandhenderson.com>, be transferred to the Complainant.
Tony Willoughby Sole Panelist
Dated: September 5, 2008
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