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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Woolworths plc. -v- David Anderson
Case No. D2000-1113
1. The Parties
The Complainant is Woolworths plc. of Woolworths House, 242/246 Marylebone Road, London, NW1 6JL ("Woolworths").
The Respondent is Mr. David Anderson of 57 Central Avenue, Welling, Kent, DA16 3BQ ("Mr. Anderson").
2. The Domain Name and Registrar
The domain name at issue is ‘woolworthsdirect.com’, and the Registrar is Core Internet Council of Registrars of World Trade Centre II, 29 Route de Pre-Bois, CH-1215, Geneva.
3. Procedural History
The Complaint, pursuant to the rules and supplemental rules, was lodged by email on August 24, 2000, by Woolworths. Receipt was duly acknowledged.
All the appropriate procedural requirements were met, and Mr. Anderson was duly notified in accordance with the rules and supplemental rules. A hard copy of the Complaint was received on August 28 2000. To date no response has been received, either within the time limit under the rules, or subsequently.
All payments appear to have been duly made by Woolworths.
The Panelist has submitted a statement of acceptance and declaration of impartiality and independence, and the date scheduled for the Panel’s decision is October 11, 2000.
The language of the proceeding is English.
4. Factual Background
Woolworths is one of the best known names in international retailing, with a significant reputation on both sides of the Atlantic. The company has been trading since the beginning of the last century, and the Woolworths mark has been in use since 1909. Woolworths have provided a detailed schedule of trademark registrations and applications, together with copies of the certificates and renewal certificates.
Further, Woolworths has registered a number of gTLD names including Woolworths General Store.com.
The domain name at issue was registered on March 29, 2000, and came to the attention of Woolworths in June 2000, whereupon Woolworths appointed Willoughby & Partners as its representatives.
5. The parties’ contentions
Woolworths contend that the domain name in question is identical or confusingly similar to its trade mark and trading name; that Mr. Anderson has no right or legitimate interest in respect of the domain name; and that the domain name has been registered and is being used in bad faith.
Woolworths point to the very substantial reputation which they have in their trading name, and consequently in the accompanying registered trade marks. Woolworths also point to the fact that they have made use of the trading style "Woolworthsdirect" since October 1997, and have appended to their Complaint substantial evidence to confirm this fact. Accordingly Woolworths assert that the disputed domain name is confusingly similar to their registered Woolworths mark and identical to the trading style "Woolworthsdirect" which they have adopted but not as yet registered.
Woolworths contend that there can be no legitimate intellectual property rights or other rights belonging to Mr. Anderson which are applicable in relation to this domain name.
Woolworths contend that Mr. Anderson has demonstrated no legitimate or real intention, now or in the future, to make legitimate use of the domain name.
Woolworths contend that there is no evidence of any preparations for use, and no actual current use.
Woolworths further contend that the domain name was registered and has been used in bad faith. Woolworths have appended correspondence and reported on the content of telephone conversations between their representative, Dawn Osborne of Willoughby & Partners, and Mr. Anderson himself. Woolworths contend that, having originally sought the transfer of the disputed domain name for no charge, and having been met with the response that Mr. Anderson was seeking something "a bit more substantial", they subsequently offered to pay Ј200 - a sum which they felt would more than adequately cover the out of pocket expenses of Mr. Anderson in relation to the registration of the mark. Woolworths then point to the demand by Mr. Anderson for Ј15,000 for the transfer of the domain name as evidence of the fact that the mark was duly registered in bad faith, and was being used in bad faith. Woolworths point to the fact that Mr. Anderson was resident in the United Kingdom, and would therefore have been more than aware of Woolworth’s business and distinctive trade names.
Concluding their contentions, Woolworths submit that Mr. Anderson’s primary purpose in registering the disputed domain name must have been to sell, rent or otherwise transfer the domain name to Woolworths or one of its competitors for valuable consideration in excess of his out of pocket costs related to the domain name, and consequently that this is evidence of bad faith.
As indicated above, to date the Panel has received no response from Mr. Anderson. Nothing was filed within the appropriate 20 day time limit, and nothing has subsequently been received accompanied by a request to be heard "out of time."
6. Discussion and Findings
In the absence of any contention to the contrary from Mr. Anderson, the Panel has no basis on which to do anything other than to accept the factual contentions made on behalf of Woolworths. Accordingly, in each and every respect these are taken as read.
In relation to the assertions regarding the applicability of the UDRP to the circumstances, the Panel has given due consideration to the Complaint.
First as regards the identicality of the domain name to the trade mark, it is a well established principle in these cases that minor alterations are not sufficient to avoid a finding of identicality or confusing similarity in the absence of any significant distinguishing features. It is also established in these cases that common law rights are equally recognized as registered rights. Accordingly, the Panel is happy to conclude that in this case the domain name in question is identical to Woolworths common law trading style, and confusingly similar to the registered trademark "Woolworths".
In relation to the question of rights and legitimate interests, Woolworths has contended that the very well known nature of its trade mark and trading style, and the absence of any evidence of preparation to use the domain name for any legitimate purpose by Mr Anderson is sufficient to satisfy this requirement. The Panel, having given due and proper consideration to all the contentions and other circumstances, agrees that there is no reasonable evidence of any rights or legitimate interests on the part of Mr. Anderson in relation to the domain name of which complaint is made. In general, under this limb of the necessary requirements for a successful complaint, the burden of proof must lie with the Respondent to demonstrate that he has rights or legitimate interests. Mr Anderson has made various delphic utterances about his intentions for the domain name without going into specifics in any way. His willingness to part with the name for inflated consideration is perhaps indicative of the real value which he attaches to his registration, in other words as a tradable commodity rather than as a working website for the giving of information or other purposes.
Finally, in relation to bad faith, I would reiterate a point which I have repeatedly made in previous decisions. The UDRP guidelines are quite clear on this point. The burden of proof lies with the complainant in all cases to establish actual bad faith by the respondent. There is no obligation whatsoever on the respondent to prove good faith. The absence of good faith does not constitute bad faith.
Accordingly, even in the absence of a response from Mr. Anderson, the burden still lies with Woolworths to establish that the domain name was registered and is being used in bad faith. Having given due consideration to the fact of this case, the contentions concerning the exchange of correspondence and conversations between Woolworths and Mr. Anderson, and previous decisions under the UDRP, the Panel believes that this domain name was registered, and has been used in bad faith. The fact that there is an indication that it is no longer being used, and that Mr. Anderson does not to maintain the domain name, is not sufficient for him to escape from the effects of this process under the UDRP.
Further, this Panel accepts that the very well known nature of the Woolworths trade mark makes it clearly inconceivable that Mr. Anderson could have made the registration which he did in genuine ignorance of the rights of Woolworths. This is clearly significant evidence of registration in bad faith.
In the circumstances the Panel finds that all the three required elements under the UDRP have been satisfied and the Complaint is therefore upheld.
In the light of the foregoing the Panel decides that the domain name registered by Mr. Anderson is identical to the common law rights of Woolworths, and confusingly similar to its registered trade mark; that Mr. Anderson has no rights or legitimate interests in respect of this domain name, and that the domain name in the issue has been both registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name ‘woolworthsdirect.com’ be transferred to Woolworths.
Gordon D. Harris
Dated: October 10, 2000