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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Freeserve PLC v. Purge I.T. and Purge I.T. Ltd
Case No. D 2000-0585
1. The Parties
Complainant: Freeserve PLC of Maylands Avenue, Hemel Hempstead, Herts HP2 7TG, United Kingdom
Respondents: (1) Purge I.T. of Park Farm Cottage, St Giles Close, Wendlebury, Oxon OX6 7AA, U.K.;
(2) Purge I.T. Ltd of Unit D3a, Telford Road, Bicester, Oxford OX6 0TZ, United Kingdom.
The Domain Name and Registrar:
FREESERVESUCKS.COM, registered by Network Solutions, Inc. on May 11, 1999, to the Registrants Purge I.T. (Dixonssucks-dom) (Contacts:OzNic.com -- Administrative: (AMD598-ORG), Technical and Zone: (ITT-ORG), Billing: (ITA3-ORG))
2. Procedural History
(1) The Complaint in Case D2000-0585 was filed on June 12, 2000.
(2) The WIPO Arbitration and Mediation Center has found that:
- the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
The Panel accepts these findings and itself finds that:
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondents and the Contacts above-named by Post/Courier, Fax and E-mail.
- a Response to the Complaint was filed in due time, though a copy was not sent by the Respondents to the Complainant; as required by Rule 5(b)(vii) of the Rules for the Dispute Settlement Policy, until after being reminded of this obligation; the Complainant received it from the Respondents on July 21, 2000.
- the Administrative Panel was properly constituted.
(1) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(2) There has been a further submission from the Complainant consisting of comments on the Response. Due to the failure of the Respondents to send the Response to the Complainant, the Panel decided that these comments must in the circumstances be admitted. In order to avoid any consequent prejudice to the Respondents, the Panel in turn permitted the Respondents until August 6, 2000, to offer their own comments. None have been received.
(3) The date originally scheduled for issuance of a decision was: August 6, 2000. In light of the circumstances mentioned in the previous paragraph, the Panel ordered that this be changed to August 13, 2000.
(4) The language of the proceedings is English.
3. Factual Background
(1) The Complainant is a subsidiary of Dixons Group Ltd, which company is the Complainant in a separate Complaint against the Respondents (D2000 0854) in parallel circumstances relating to the Domain Name, Dixonssucks.com. The present Complainant, whose complaint concerns Freeservesucks.com, is the registered proprietor of trade and service marks for "Freeserve" in the United Kingdom, as scheduled in the Complaint, Annex 12. These registrations are for a wide range of goods and services in Classes 9, 16, 35, 38 and 42 and relate in particular to the Complainant's business as an Internet portal and Internet Service Supplier. The Complainant states that its proportion of the United Kingdom ISP market in recent months has been maintained at approximately 25 per cent. It has furnished evidence of its considerable expenditure on advertising and of the comment which its business attracts in the press.
(2) The Complainant also holds twenty TLDs which incorporate "Freeserve".
(3) The Complaint forms one of a series against the Respondents or the corporate Respondent alone, all of which have been referred to the Panel conjointly. The Response to these cases has been by a single document, which indicates that the Domain Name Registrations in issue were made in pursuit of the same business objective. The Complainant has demonstrated by WhoIs database searches that the Respondents have registered with Network Solutions the names or abbreviations of eighteen well-known British enterprises with the addition of "sucks". All were obtained on May 11, 1999. Five have resulted in the parallel complaints which have been referred conjointly to the present Panel since in particular the same Response has been filed in relation to them all. The other four are D2000–0584 already mentioned, and D2000-0583 (directlinesucks.com), D2000-0636 (natwestsucks.com) and D2000-0681(standardcharteredsucks.com).
4. Parties’ Contentions
The Complainant asserts the following:
- The Respondents' Domain Name at issue is identical to or confusingly similar to the Complainant's trade marks indicated above.
- The Respondents have no legitimate interest in the name for which the Complainant has registered marks.
- The Respondents registered the Domain Name and are using it in bad faith in that they are seeking to obtain financial gain from it by securing its transfer for a substantial sum to the Complainant and have repeatedly offered it to the Complainant on such terms.
- Accordingly the Complainant seeks transfer of the Domain Name in issue to itself.
The Respondents, while not contesting directly the documentary material submitted as annexes to the Complaint, nevertheless deny that they have acted in bad faith or that they have ever used the Domain Name after registration. In particular:
- They did not secure the Domain Name in order themselves to establish any website; they have not done so and any "Under Construction" label was presumably set up by the ISP;
- They did not intend to transfer the registration to anyone other than the Complainant, and in particular not to any disgruntled person who might wish to acquire it in order to host complaints against the Complainant or otherwise to extract revenge. On the contrary their motivation was to protect the Complainant against such risks.
- Mere registration without more cannot amount to use.
5. Discussion and Findings
In accordance with the Dispute Settlement Policy, Paragraph 4(a), the Complainant bears the burden of demonstrating three elements.
Element 1: That the Complainant has rights in a trade or service mark, with which the Respondents' Domain Name is identical or confusingly similar.
As it has clearly demonstrated in its Complaint, the Complainant has a well-known trade mark in the United Kingdom for Internet service provision and associated activities. This reputation is protected by the registration of the trade marks already referred to in Paragraph 3(1) and is further enhanced by the use which it makes of its Domain Names also there referred to. The Respondents' explanation of the conduct which they have pursued in relation to the names of various major enterprises is as follows:
"The company was set up in response to an article in The Times newspaper referring to disgruntled consumers registering domain names such as walmartsucks.com to host complaints sites against companies." (Response, para. 8)
The Respondents' registration, consisting of the Complainant's name with the suffix, "sucks" (plus ".com"), is not identical to the Complainant's marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainant? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant. The Complainant has accordingly made out the first element in its Complaint (see the rather similar conclusion on this Element in Case D2000-0477 (walmartcanadasucks.com)).
Element 2: The Respondents must be shown to have no rights or legitimate interests in the Domain Name.
The Complainant's reputation was well established before the Respondents began their activity, as is evident from their own statement of purpose, which is said to be, to help protect enterprises against being bothered by customer sites at which grievances are aired. Complaints sites are only likely to be set up against businesses with considerable reputations. Those who have genuine grievances against others or wish express criticisms of them -- whether the objections are against commercial or financial institutions, against governments, against charitable, sporting or cultural institutions, or whatever -- must be at liberty, within the confines set by the laws of relevant jurisdictions, to express their views. If today they use a website or an email address for the purpose, they are entitled to select a Domain Name which leads others easily to them, if the name is still available.
The Respondents, contrarily, make it plain that its purpose is to help circumvent such free expression. It wants, so it says, to protect against such engines of free speech. It claims as its own legitimate interest that it is in the business of obtaining Domain Names which might embarrass well-known enterprises if the names were allowed to fall into the hands of critics. Although a website exists at the Domain Name address and is stated to be "under construction", the Response is at pains to explain that this is not upon the Respondents' instructions, the statement probably having been made by the Internet Service Provider.
The Respondents do not, however, act in a wholly altruistic spirit, since, as will be discussed further under Element 3, they seek substantial sums beyond their own costs before they will transfer over the offending registration. This latter aspect has to be brought into account in considering whether the Respondents therefore have any "right or legitimate interest" in the Domain Name, with which they otherwise have no association whatsoever and which they admit to have selected by reference to the Complainant's reputation in its own marks. The Panel finds that there is no justification for the role of officious interferer which the Respondents have taken upon themselves to provide in the manner in which they have chosen to do so. The Complainant has accordingly made out the second element (see likewise Case D2000-0477 (walmartcanadasucks.com)).
Element 3: that the Respondents registered and are using the Domain name in bad faith, in one of the senses of that term set out in Paragraph 4b of the Dispute Settlement Policy.
Before lodging the Complaint, neither the Complainant nor its representatives had received any direct communication from the Respondents which would indicate that the Respondents were inviting an offer at more than the direct cost of the Domain Name registration as consideration for a transfer of the Domain Name to the Complainant. However, there is evidence that the Respondents had contemporaneously registered Domain Names in which "sucks" was associated with other well-known United Kingdom enterprises by referring to their names or abbreviations of them. In two of the five such cases which resulted in the jointly referred dispute proceedings, D 2000-0583 (directlinesucks.com) and D 2000-0681 (standardcharteredsucks.com), there was uncontroverted evidence that financial compensation above direct cost was being sought by the Respondents. In the particular circumstances of these cases, the Panel finds that this evidence was properly filed in the present Complaint in order to show the Respondents' overall course of conduct.
In any case, the same motivation is demonstrated in the common Response to all these cases by the statements:
"The purpose of the company is to register email domains to prevent them becoming widely available. These names shall then be made available to the company concerned. No domain shall be made available to a competitive third party….
"Should the decision reached by yourselves be against our clients, the directors would of course be prepared to transfer the domain names to the relevant companies at cost."
Since the filing of the Complaint, the Respondents have contacted the Complainant's solicitors by fax and telephone in which they have said that a reason for the registration was to make a modest return for their initiative, that they might be prepared to accept Ј900-1200 for its transfer and that they wanted to make revenue from selling the site.
Thus it is clear that the Respondents' prime purpose in acquiring the names was to transfer the Domain Name at more than cost to the Complainant. Their Response claims that they are entitled to do so. The Dispute Resolution Policy, to which they became party as part of their registration contract, is to the contrary, since it provides in Paragraph 4(b)(i) that a Domain Name has been registered and is being used in bad faith if there are circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark …for valuable consideration in excess of documented out-of-pocket costs related to the domain name. The Respondents' motivation falls within this definition of bad faith. Accordingly, in the Panel's opinion, the Third Element is also made out.
The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, Paragraph 4a and 4b.
- that the Domain Name in dispute is confusingly similar to the registered trade and service marks of the Complainant;
- that the Respondents have no rights or legitimate interests in respect of the Domain Name; and
- that the Domain Name has been registered and is being used in bad faith.
The Panel accordingly requires that the Domain Name FREESERVESUCKS.COM be transferred forthwith to the Complainant.
William R. Cornish
August 13, 2000