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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gallerina v. Mark Wilmhurst
Case No. D2000-0730
1. The Parties
The Complainant is Gallerina, an unincorporated business located in Darlington, County Durham, U.K., represented by Mr. Richard Hindle.
The Respondent, as stated in the Complaint and as confirmed by the Registrar of the domain name is Mr. Mark Wilmhurst of London SE21, U.K. However his real name is Wilmshurst. He is represented in this matter by Mr. Simon K. Johnson.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is gallerina.com
The Registrar of the domain name as at the date of the Complaint is Internet Names Worldwide, a division of Melbourne IT, Ltd. ("Melbourne IT").
3. Procedural History
On July 3, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on July 5, 2000.
The Complainant stated that a copy of the Complaint was sent to the Respondent by registered post and by email, and later confirmed that a copy had also been sent to Melbourne IT by fax and by e-mail.
Upon receipt of the email copy of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on July 7, 2000 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.
The Center sent a Request for Registrar Verification to Melbourne IT on July 11, 2000 by email. Melbourne IT responded to the Center’s request by email on July 12, 2000 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain name in dispute, (3) that the Respondent Mr. Mark Wilmhurst was the current registrant of the domain name in dispute, (4) that the Respondent’s contact details were correct, (5) that the Policy applied in relation to the domain name gallerina.com, and (6) that the current status of the domain name was licensed.
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Complainant on July 18, 2000.
On both July 14 and July 18, 2000, the Complainant sent to the Center some amendments to its Complaint.
The Center received an electronic communication from Mr. Simon K Johnson on July 16, 2000 seeking to take over responsibility as Respondent from the named Respondent, Mr. Wilmhurst.
On July 18, 2000 the Complainant objected to Mr. Johnson being named as a Second Respondent.
On July 19, 2000 the Center received a Response from Mr. Johnson, who claimed to be the Respondent’s representative.
On the same day the Center received a facsimile message from the Complainant to which was attached copies of some correspondence which it deemed to be relevant to the Complaint.
On July 20, 2000 the Center acknowledged the two communications, noting that the Respondent had not responded in person.
Subsequently on July 20, 2000 Mr. Wilmhurst sent an e-mail to the Center in which he authorized Mr. Johnson to respond to the Complaint on his behalf.
On July 21, 2000 the Complainant submitted further comments in the matter, directed in particular to the Response by the representative of the Respondent.
On July 26, 2000 the Respondent’s representative submitted further comments in response thereto.
On July 27, 2000 the Complainant submitted copies of further allegedly relevant correspondence in the matter.
At different times the Center sent Acknowledgements of Receipt of all these comments to both the Respondent and Complainant by email, noting that the Policy and the Rules do not foresee or provide for further submissions.
The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on July 28, 2000 via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel, to the Respondent and to the Complainant on July 20, 2000. The Panel received this material on July 31, 2000.
On August 3, 2000, at the Panel’s request, the Center sent a request for further information to the parties, in accordance with Rule 12 of the Rules.
The Complainant replied to this request on August 4, 2000, but copies of this reply were not finally received by the Panel until August 15, 2000.
The Respondent replied on August 7, 2000 and his representative also replied on the same day, but by email directly to the Panel. Rule 8 of the Rules states that "No Party or anyone acting on its behalf may have any unilateral communication with the Panel." However as this email was simultaneously copied to the Center and to the Complainant, the Panel has decided, in its discretion, to take it into account.
The above two replies from the Complainant and the Respondent, in addition to answering the Panel’s request for further information, refer to new matters that do not relate thereto, but the Panel has decided that it cannot take any of this new matter into account.
All other procedural requirements appear to have been satisfied.
4. Factual Background
The Complainant claims:
- That it is an award winning contemporary art gallery trading under the name Gallerina from premises at 37 Duke Street, Darlington, County Durham, DL3 7RX, England, and that it began trading in November 1988;
- That the name Gallerina has been marketed for six years;
- That at the gallery are exhibited exclusive works by local, national and international artists representing a cross section of two dimensional and applied arts, which are either imported into the country by the Complainant or are introduced to the gallery by artists, agents and publishers who, through the use of and marketing of the gallery’s name, reputation and very strong image wish to be a part of the gallery’s success;
- That the Complainant also incorporates an extremely successful bespoke and contract framing division;
- That the Complainant has been subjected to the very stringent vetting criteria of the Northern Arts Council, an organization which provides government funding for, inter alia, the sale of original art;
- That new and innovative ideas developed by the Complainant have led to the services of its workshop being utilized by a major international artist who is in the process of initiating the use of the Complainant for a major international exhibition;
- That the Complainant has attracted the attention of a major international software company and a government funded university program with regards to the development of its web-site – to be used as a showcase for their company/department – and that as a result future plans for the gallery would be seriously jeopardised should there be two ‘Gallerina’s’ each with an on-line presence and operating in the same town.
5. Activities of the Respondent
Apart from originally registering the domain name, the Respondent himself appears to have played little part in its utilization. He is an Internet Service Provider and he claims to have registered the name at the request of a Mr. Jenkinson and his wife Mrs. Kerry Jenkinson (who is sometimes referred to as Kerry Jonas). He understood it was to advertise the services they provided. This is at variance with other statements that the registration was requested by Miss. Libby Andrews who, with Mrs. Kerry Jenkinson/Jonas, appears to have been the original users. The Respondent claims that he was later informed that Mr. Simon Jenkins was representing the domain on behalf of Mr. and Mrs. Kerry Jenkinson. Indeed, at some point the beneficial ownership of the name – but not actual ownership – appears to have been transferred to Mr. Simon Johnson, who is acknowledged by the Respondent to be his representative.
It is probably true to say that Mr. Johnson contests almost all of the Complainant’s above claims.
Mr. Johnson claims to have been in the IT industry for 21 years with, for the past 17 years, his own company called Eikel Computer Solutions Ltd. which provides consultancy to its clients on both a long and a short term basis. More recently, and in the last two years, he has worked more closely in the internet market and claims to have acquired the disputed domain name gallerina.com and uses it in order to differentiate his internet business from his established domain name of eikel.co.uk.
Mr. Johnson is insistent that his use of the domain name does not compete in any way with the business of the Complainant, which he alleges is not a gallery but a shop.
6. Discussion and Findings
On a preliminary issue, the Panel decided to admit and consider the further submissions and documents submitted by both the Complainant and the Respondent. All of these were transmitted to the Panel at the same time as the Complaint and the Response to the Complaint, and they enlarge upon and help to explain some of the many inconsistencies in the Complaint and the Response.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. These are the only matters to be considered. The Panel notes that many of the claims, counter-claims, accusations and denials by both the Complainant and the Respondent in this case are not relevant to this central issue.
The Panel will now consider in detail each of the three elements in paragraph 4(a):
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
When the Complaint was filed, the Complainant did not have a trade mark registration or application for GALLERINA in any jurisdiction. However, in response to the Panel’s request for further information, the Complainant has supplied a copy of a receipt from the United Kingdom Patent Office of an application to register the word ‘Gallerina’ as a trade mark in Classes 16 and 21. Surprisingly, the number of the application and the filing date have been blocked out on this document. It cannot therefore be verified and the Panel cannot therefore take into account the existence of this application. However the Panel notes that the trade mark relates to goods rather than the services of a gallery, and also that in the bottom left hand corner of the receipt is the date "7.07.2000". If this was the actual date when the application was made, or shortly thereafter as seems most probable, then in any case the mark was filed very soon after the Complaint was forwarded to the Center and this is another reason why it could not be taken into account.
As a consequence, the first and probably the principle issue to be decided in this case is whether or not the Complainant has sufficient trade mark rights to justify its complaint. Neither the Policy nor the Rules call for the trademark to be registered, or even applied for, only that the Complainant must have rights in it. See, for example, paragraphs 149-150 of WIPO’s Final Report on the Internet Domain Name Process published in April 1999 from which the Policy is derived. These paragraphs make no distinction between registered or unregistered trade marks, and talk only of considering "all relevant rights and interests of the parties".
The question of unregistered rights was first considered in a decision under the Policy in the case of The British Broadcasting Corporation v. Jaime Renteria case D2000-0050, when the Panel commented "that to date there has been no clearly accepted practice of other Administrative Panels applying the Uniform Policy to unregistered trademarks and service marks." However in that case the complainant also relied on some registered trade marks and the panel came to its decision on the basis of these.
In two even earlier combined cases – Bennett Coleman & Co Ltd. v. (1) Steven S. Lalwani (D2000-0014) and (2) Long Distance Telephone Company (D2000-0015) – the complainant relied on both registered and unregistered rights. The respondent challenged the claim to the registered rights, and although the panel was dismissive of these claims, it still preferred to rely on the complainant’s "very substantial reputation".
Since those early cases, it has been held in the following decisions that a complaint may proceed on the basis of common law rights:
SeekAmerica Networks Inc v. Tariq Masood & Solo Signs. D2000-0131
Julia Fiona Roberts v. Russell Boyd. D2000-0210
Jeanette Winterson v. Mark Hogarth. Case No. D2000-0235
Monty and Pat Roberts v. Bill Keith. D2000-0299
Cedar Trade Associates, Inc. v. Gregg Ricks. FA 0002000093633
Hankinson International v. Hankinsoninternational.com. FA0004000094393
In only two of the above are the facts in any way analogous to this case.
In Julia Roberts and Jeanette Winterson, the complainant relied on rights in their personal names. The same was true of Monty Roberts, but in addition he had at one time had a pending application for the trademark but it had been refused by the US Patent and Trademark Office on a technicality. In SeekAmerica the complainant had a pending application for its trademark in Canada as well as some reputation.
In Hankinson, the name Hankinson had been well known in its business since 1948, and the name Hankinson International since 1991, but both parties were domiciled in the USA, so the panel decided that US law was applicable, under which a cause for action based on an unregistered trademark exists for unfair competition. In this case both parties are domiciled in the United Kingdom where there is no action for unfair competition, the nearest equivalent being an action for passing off.
In Cedar Trades the complainant had used BuyPC as its trade name and had invested considerable time and effort in establishing an association between its name and its goods and services over approximately four years. This situation is precisely on all fours with the present case, but unfortunately the decision does not enlarge on how much and what evidence was produced for the panel to come to the conclusion that common law rights existed in the name.
In this case, the Complainant has now produced a certain amount of evidence to justify its claim for common law rights in the word GALLERINA. The earliest document is an Agreement dated July 1994 with the telephone company to install a telephone for "Mr. R Hindle T/A Gallerina". Other documents dated 1995 and 1996 relate to advertisements and the creation of shop signs for ‘Gallerina’, and there are some invoices addressed to Gallerina dated July 1994 and February 1995. There are some photographs of the inside of the gallery (which unfortunately do not show the name), as well as press cuttings (mostly undated) which mention Gallerina in favorable terms, and a photograph of a roundabout ‘sponsored’ by Gallerina. It is also stated in the Complaint that "The name Gallerina has been marketed for six years" and that the gallery "began trading in November 1998", which is confirmed by the evidence subsequently submitted. The Complainant claims that the gallery been vetted by the Northern Arts Council, a government quango, and there is an undated letter from the Council confirming that the gallery has been a full member of its Art Purchase Plan scheme since May 1998. The gallery also appears to be well enough known and respected in the district for at least three other traders to be prepared to make statements on its behalf in these proceedings.
The Panel therefore concludes that the Complainant has more than proved that its business is a gallery rather than a shop, and furthermore that it has made out its case to have sufficient use and reputation to have established sufficient common law rights in the name GALLERINA to sustain a passing off action in the United Kingdom. This is important since both the Complainant and the Respondent are domiciled in the UK.
The applicability of English law to domain name disputes in common law cases was extensively reviewed in the Jeanette Winterson case referred to above. In it, the panel referred, amongst other decisions, to the case of British Telecommunications PLC v. One in a Million Ltd. where it was held, in the Court of Appeal, that registration of a domain name in itself amounted to passing off.
The Respondent alleges that the word ‘Gallerina’ is not distinctive, that it is commonly used by others and that the Complainant has no monopoly in it. The Panel has no means of knowing if the UK Patent Office will accept for registration the pending application for the trademark Gallerina, but believes that the word is distinctive enough to be registered. It is not listed in The Shorter Oxford English Dictionary. It is the name of a type of mushroom, but this alone should not prevent registration as the goods for which the trademark is applied are unconnected therewith. It does appear to be being used by others but not, it would seem in the UK and certainly not in the Darlington area – which is where, it should be noted, Mr. Johnson, the Respondent’s representative and current user of the domain name, also conducts business. A web search in July 2000 threw up only 22 references to the word Gallerina of which the first was to the Complainant’s business.
The Respondent also claims that the domain name is not identical to the Complainant’s trademark. Although this is strictly true, it has consistently been held in other decisions that the TLD suffix .com (or .net or .org) can be set aside for the purposes of comparison. The relevant part of the domain name in this dispute is "gallerina" and this is clearly identical to the trademark in which the Complainant has proven rights. However in addition the Panel finds that the whole of the domain name is confusingly similar to the Complainant’s trade mark.
In conclusion, the Panel finds that paragraph 4(a)(i) has been proved.
That the Respondent has no rights or legitimate interests in respect of the domain name.
Under the Policy – which Melbourne IT has confirmed applied to the domain name when it was registered – at the time of registration, the Respondent represented and warranted, among other things, that to his knowledge "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party", and that he would not "knowingly use the domain name in violation of any applicable laws or regulations", and that it was his responsibility to determine whether the domain name "infringes or violates someone else’s rights."
The Respondent himself has stated on several occasions that he has no interest in the domain name. In emails to the Complainant and to the Center he stated that he registered it in his capacity as an Internet Service Provider on behalf of others, and in an email to the Complainant’s website developer he confirmed the latter’s understanding that he was willing to transfer the domain name to "Richard Hindle (Gallerina)". He does seem to be an innocent party, and it does seem that he has no rights or legitimate interest in the domain name.
The Panel has received no satisfactory explanation of the relationship between the other parties involved in the registration and use of the domain name gallerina.com, namely: Ms. Libby Andrews, Mr. Jenkinson, Mrs. Kerry Jenkinson (also known as Jonas) and Mr. Simon K Johnson. Libby Andrews and her partner Kerry Jonas did use the name at one time, but in a letter dated March 12, 2000 to the Complainant Ms. Andrews agreed that they would stop using the name, but could not transfer it as they had never owned it. Mr. Johnson claims to have met Kerry Jenkinson’s husband at a party on some unspecified date, but he has told the Panel nothing about how ‘ownership’ of the name which, it should be noted Libby Andrews and Kerry Jonas could not sell, has somehow been transferred to himself. As the Respondent, Mr. Wilmshurst, is apparently quite willing to transfer the name it is surprising that someone as experienced as Mr. Johnson is in the IT business should not have ensured that he owned a name in which he was investing time and money. The Panel therefore considers that Mr. Johnson’s interest in the domain name is not legitimate and, in view of the finding below relating to bad faith, it probably never was.
The Panel finds paragraph 4(a)(ii) has been proved.
That the domain name has been registered and is being used in bad faith.
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive.
As to bad faith registration, we cannot credit that when the name was registered for Ms. Libby Andrews and Mrs. Kerry Jenkinson/Jonas by Mr. Wilmhurst, they were unaware that in the same town there already existed an art gallery trading under the same name. We therefore find that the domain name was registered in bad faith.
As to use, there is no evidence of any use of the domain name by the Respondent himself. However it has been used, first by Ms. Libby Andrews and Mrs. Kerry Jenkinson/Jonas and currently by Mr. Simon Johnson. Ms. Libby Andrews and Mrs. Kerry Jenkinson/Jonas used the domain name for an on-line art gallery but ceased to do so when the Complainant made appropriate representations to them. If the original registration was in bad faith, it follows that the use by Ms. Libby Andrews and Mrs. Kerry Jenkinson/Jonas was also in bad faith.
As for Mr. Johnson, he lives in Newton Aycliffe, a town situated just a few miles from Darlington, which is the home of Gallerina and he clearly has a close knowledge of the locality and of some of the local personalities. He admits that when he acquired the domain name he was told that the use of the name had created problems with a shop in Darlington. He does not deny the Complainant’s assertion that, when challenged, he said he was aware of the use of the name Gallerina by a business in Darlington and that it had already been the cause of confusion. Nevertheless, despite this prior knowledge, he specifically targeted Darlington for a mailshot promoting his web design services under the domain name when he must have known that it would confuse anyone who was already aware of the existence of the Gallerina gallery. He also produced what the Complainant describes as a page from a website, but which he says was a mock-up advertisement that was never used. It was however handed out to a potential client which is prima facie evidence of use. If, as Mr. Johnson claims, he has no intention of competing with the Complainant’s business, one is entitled to wonder why this ‘mock-up’ was devoted to art and artists.
Mr. Johnson claims that he acquired the domain name because he needed a new name and "it seemed somewhat apt". The Panel cannot find anything apt about adopting and using a name which he already knew was creating confusion with such a distinctive and unusual name, and which he must have known would probably create further confusion – regardless of the business it was used for.
The Panel therefore concludes that Mr. Johnson too has acted in bad faith.
For these reasons, the Panel decides that the domain name registered by the Respondent is identical to the mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name was registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name gallerina.com be transferred to the Complainant.
David H Tatham
Dated: August 16, 2000