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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EMI PLC v. JASON MACE
Case No. D2000-0712
1. The Parties
The Complainant is EMI Group Plc, whose principal place of business is :
4 Tenterden Street,
London W1A 2AY,
The Respondent is Jason Mace of :
Barnsley S73 0PS
In this decision the Complainant will be referred to as "EMI" and the Respondent will be referred to as "Mr Mace".
2. The Domain Name and Registrar
The domain name in issue is EMI1897.com and the Registrar is Register.com of 575 8th Avenue - 11th Floor, New York, NY10018, USA.
3. Procedural History
The Complaint was filed on June 30th 2000 with a single hard copy received by the Center on July 10th 2000 following a Complaint Deficiency Notification. Four copies were delivered on July 14th 2000. The Complaint was properly notified to the parties in accordance with the Rules. EMI are represented by Mathisen & Macara of The Coach House, 6-8 Swakeleys Road, Ickenham, Uxbridge UB10 8BZ, England. Mr Mace is representing himself.
The undersigned Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The written response of Mr Mace was submitted by e-mail on July 18th 2000 and by hard copy on July 21st 2000, within the deadline proscribed in the Rules.
All submissions were duly acknowledged and the Panel was instructed to submit its decision by September 3rd 2000.
4. Factual Background
Annex C to the Complaint comprises details of EMI’s trade mark registrations around the world. Suffice to say the trade mark EMI is registered in most commercially and industrially significant jurisdictions, and in most cases, the trade marks are established over a considerable period of time.
It is equally uncontentious that the date from which the history of EMI Group commences is 1897. That point was recently publicised in the Annual Report of EMI Group.
It is also common ground between the parties that the domain name EMI1897.com having been registered, it was offered for sale at the web site "greatdomains.com" for an asking price of $100,000. It is also common ground that the wording under the asking price stated :
"This domain name is a valued memorable date when EMI was found".
5. The Parties’ Contentions
EMI contends that the EMI mark is a well-known mark, the trade mark having been in use for over 50 years. It also contends that the year 1897 has particular significance for the company, it being the date when the original predecessor of EMI first opened for business in London. The centenary of the company was celebrated in 1997. Consequently, EMI contends that the domain name is confusingly similar to its trade marks, and the 1897 designation is relevant to the company.
EMI further contends that the Mr Mace has no legitimate interests or rights in respect of the domain name, as it cannot locate any web site connected to the domain name EMI1897.com.
With regard to the question of bad faith, EMI points to the fact that the domain name was offered for sale for $100,000 on a recognised domain name sale web site, and the fact that in response to an e-mail seeking to resolve the matter, the Respondent is alleged to have replied :
"Stop sendin me this stuff. I don’t need it!!!"
Accordingly, EMI contends that it has met the three key criteria set out in the Policy for a successful Complaint.
B. Mr Mace
Mr Mace contends that the quoted response did not come from him as the e-mail address to which EMI sent their original message was incorrect. It is impossible for the Panel to resolve this issue. It is within the knowledge of the undersigned Panelist that the normal denotation for a hotmail address does involve an underscore between the first and second names. What the effect of sending an e-mail address without that underscore might be is beyond the knowledge of the Panel and is not the subject of contentions by the parties.
Mr Mace contends that EMI1897 is not a trade mark, and that all he has registered is "a year". He explains the offer for sale at the price of $100,000 as having been done to create interest in the web site and to give it an internet presence. He said that that would have given him plenty of time to develop an idea for a web site that would be interesting, and that his next step would be to create an "under construction page" for the domain. He hoped that people would be attracted to visit his site on the basis that they were aware that it had been sold for $100,000 and that that would create significant interest.
Mr Mace says that, for the time being, he has taken the domain name off the site at greatdomains.com where it was offered for sale.
Mr Mace points to his trading record and reputation under his company name "A G M Shopping" to support a contention that he has not acted in bad faith and wishes "no harm or malice to any other business including EMI Group Plc".
6. Discussion and Findings
In common with all complainants, EMI must prove (i) that the domain name in issue is identical or confusingly similar to a trade or service mark in respect of which it has rights; (ii) that Mr. Mace has no rights or legitimate interests in respect of the domain name, and (iii) that the domain name in issue has been registered and is being used in bad faith.
Guidance is given as to what evidence will support each of these contentions. The first point of guidance is that it will be evidence of registration and use in bad faith if it appears that the domain name has been registered primarily for selling it to the complainant or a competitor for a consideration in excess of documented out of pocket expenses directly related to the domain name.
Considering these issues in the context of the facts and representations in this case, the panel has reached the following conclusions.
First, in relation to the identicality or confusing similarity as between the domain name and EMI’s trade marks, it is clear that the "EMI1897" is designed to create confusion, even though it is clearly not identical. The juxtaposition of the very well known EMI mark and the date from which the company claims its origin would be enough in itself to satisfy this part of the test. The accepted fact that the domain name was offered for sale by express reference to both EMI itself and the significance of the date to EMI, is conclusive of the intention to create an association, and the panel is entitled to assume the possibility of confusion in these circumstances.
Secondly, as to the question of whether Mr. Mace has any rights or legitimate interests in the domain name, the Rules give guidance as to how a respondent might go about demonstrating a legitimate interest in a domain name. He can show demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. He can show that he or his business have been commonly known by the domain name. He can show that he is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. Mr. Mace has manifestly failed to meet any of these criteria. On the contrary, he has expressly admitted in his response that no preparations for the legitimate use of the domain name have been made whilst it was parked at the "greatdomains" site under offer for sale for Ј100,000. Accordingly, EMI have adequately demonstrated that Mr. Mace has no rights or legitimate interest in the domain name.
Thirdly and finally, with regard to the issue of "bad faith", I have already indicated that offer for sale at a value in excess of out of pocket expenses is prima facie evidence of bad faith. I stress the "prima facie" proviso. As I have already indicated in another decision (Case D2000 - 0737 European Broadcasting Union v Domain4sale), a domain name is a tradable commodity, and transactions between willing buyers and sellers will not amount to bad faith. However, there is no such angle here. The panel is not convinced by Mr. Mace’s explanation that the domain name was placed for sale on the "greatdomains" site in order to attract interest relating to its future use. The only credible evidence available is that the domain name was offered for sale by specific reference to its connection with EMI and the historical significance of the date 1897, at an extreme overvalue. Even if Mr. Mace can have had no reasonable expectation of recovering the sum of Ј100,000, the panel does not accept that there was anything other than an intention to sell for a sum in excess of the out of pocket expenses associated with the registration of the domain name. In the absence of anything to suggest that there was any genuine legitimacy to such a transaction, the panel can only conclude that the domain name was registered and used in bad faith.
The panel does not accept that the removal of the domain name from what might loosely be termed "the market" by its withdrawal from the "greatdomains" site is sufficient to remove Mr. Mace’s activities from the scope of the bad faith provisions. It was being used in bad faith at the time the complaint was made, and that must be enough for these proceedings. To find otherwise would be to allow a huge loop-hole to emerge in the procedure whereby a respondent could, upon receipt of notice that a complaint has been made, withdraw from certain activities which are evidence of bad faith in order to frustrate the complaint, leaving the legitimate trade mark owner at risk of a resumption of such activities at a later date. That cannot have been intended when the wording of the Policy was devised and the present tense was used in relation to the bad faith provisions.
Finally in this section, for the reasons set out above it is not necessary for the panel to rule on the issue of whether EMI’s e-mail of complaint to Mr. Mace was actually received by him, and the dismissive reply was his. In circumstances where such an issue was important it would be helpful for the complainant to submit a supplemental paper to the Center in order to clarify the issue before it comes before a panel.
In light of the foregoing, the Panel decides that the domain name EMI1897.com is confusingly similar to the trade marks of EMI; that Mr. Mace has no right or legitimate interest in the domain name, and that the domain name was registered and is being used in bad faith, in the sense that it has only ever been used in bad faith.
Accordingly the Panel requires that the registration of the domain name EMI1897.com be transferred to EMI.
Gordon D. Harris
30th August 2000