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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAA plc v. Spektrum Media Inc.
Case No. D2000-1179
1. The Parties
The Complainant is BAA plc, a United Kingdom corporation with its principal place of business in London, UK. The Complainant is represented by Mr. Douglas Locke of Nabarro Nathanson, Solicitors, London, UK.
The Respondent is Spektrum Media Inc. of 410 Webb Place, Winnipeg, Manitoba, Canada. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is "heathrowexpress.com". The domain name is registered with Tucows.com, Inc. of 96 Mowat Avenue, Toronto, Ontario, Canada ("the Registrar"). The domain name was registered on April 17, 2000.
3. Procedural History
The Complaint submitted by BAA plc was received on September 6, 2000, (electronic version) and September 8, 2000, (hard copy) by WIPO Center.
On September 12, 2000, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with the Registrar.
Confirm that the company identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated September 14, 2000, the Registrar advised WIPO Center as follows:
The Registrar had received a copy of the Complaint from the Complainant.
The Registrar is the Registrar of the domain name registration "heathrowexpress.com".
Spektrum Media Inc. at the address above is shown as the "current registrant" of the domain name "heathrowexpress.com".
Spektrum Media Inc. is also the administrative, technical and billing contact.
The Uniform Domain Name Dispute Resolution Policy applies to the domain name.
The domain name registration "heathrowexpress.com" is "on hold", a procedure to ensure that there is no change of Registrar or ownership during the dispute.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from the Registrar that the Respondent is the "current registrant" of the domain name in question indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on September 14, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by October 3, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No Response was filed by the Respondent to which a Notification of Default was sent by WIPO Center on October 4, 2000.
On October 5, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On October 5, 2000, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On October 6, 2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on October 12, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by October 20, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant operates Heathrow Airport, London and the London to Heathrow Airport express rail link.
Until January 14, 2000, the Complainant’s agent, Crown Business Communications Ltd ("Crown") was the registrant of the domain name "heathrowexpress.com". The registration lapsed on that date due to oversight and was subsequently registered by the Respondent. Until January 14, 2000, the Complainant had used the domain name as an address for its website relating to the express rail link known as "The Heathrow Express". The website provided timetable information and a ticket-buying facility. Under the Respondent’s registration of the domain name, Internet users are presented with the message "We Have Moved". Users will ultimately end up at an Internet directory website (www.clickheretofind.com), owned by JCMS Inc.
On September 5, 2000, an agent of the Complainant telephoned a person at JCMS Inc. called "Robert" who explained that JCMS operates an affiliate program whereby third parties receive remuneration for directing individuals to the "clickheretofind" website. One of these was a Brian Kerr, whose website www.briankerr.com is identical to www.heathrowexpress.com. Eventually, the Complainant’s agent spoke to Brian Kerr’s mother who confirmed that he bought up domain names.
The Complainant owns registered UK trademarks for "Heathrow Express" (word mark) and "Heathrow Express" (and device) in connection with transportation services and ancillary matters.
The Complainant’s agent sent letters to the Respondent at an address in Winnipeg (later shown to have changed) on May 3 and May 4, 2000, demanding the return of the domain name. The domain name has not been cancelled or transferred to the Complainant.
5. Parties’ Contentions
The Complainant submits that the Respondent registered and is using its mark, "Heathrow Express", in bad faith. It claims that:
(a) The domain name is identical to its marks.
(b) The Respondent has no rights or legitimate interest in respect of the domain name.
(c) Registration and use in bad faith is shown by:
(i) The registration of the domain name by the Respondent in April 2000, after registration of the mark had lapsed.
(ii) The impression from the very name itself that the Respondent is connected with the Complainant.
(iii) The Respondent’s failure to reply to the Complainant’s agent’s letters.
(iv) The worldwide fame of the Complainant’s mark which is obviously connected to a service providing transport to and from one of the world’s best-known airports.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- 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; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used by the Respondent in bad faith.
The domain name "heathrowexpress.com" is, in the judgment of the Panel, identical to the Complainant’s mark. The ".com" adds nothing and can be disregarded for these purposes.
Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary. The Panel so decides. The Respondent has offered no evidence that it is known by the name.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the domain name "heathrowexpress.com" in "bad faith" for the reasons set out in its summary of the Complainant’s submissions. It is hard to think of a more opportunistic exercise in cybersquatting. The Respondent took advantage of the Complainant’s failure to renew a domain name that must have been known by the Respondent to refer to transport services to and from Heathrow Airport, an enterprise with which he had no connection. The inference that he intended to deal with the name in some way to the detriment of the Complainant is inescapable.
Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "heathrowexpress.com" has been registered and is being used by the Respondent in bad faith.
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Attempts to hi-jack names where a trademark has been registered and where the Respondent knew or must have known about the mark have met with little success.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "heathrowexpress.com" be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: October 17, 2000