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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Buy As You View Limited v. Kevin Green
Case No D2000-1206
1. The Parties
The Complainant is Buy as You View Limited a company incorporated in the United Kingdom whose address is at Dinas Isaf House, Williamstown, Rhondda, United Kingdom, CF40 1NQ. The Complainant is represented by Mark Rhys-Jones of Eversheds Solicitors, Fitzalan House, Fitzalan Road, Cardiff, Wales, CF24 0EE, United Kingdom. The Defendant resides at 14 Holbrook Close, Treorchy, Cardiff, Wales, CF42 6TJ, United Kingdom. The Respondent appears to be trading as "cantufind.com".
2. The Domain Name and Registrar
The domain name in dispute is "buyasyouview.com". The registrar of the domain name is Register.com Inc. of 575 8th Avenue – 11th Floor, New York, NY 10018, United States.
3. Procedural History
The complaint was received by the WIPO Arbitration and Mediation Center on September 13, 2000, by hardcopy and subsequently by e-mail copy on September 18, 2000. An acknowledgement of receipt of the complaint was sent to the Complainant on September 20, 2000. Notification of the complaint was given to the Respondent on September 25, 2000. The Respondent filed a response by email on September 29, 2000, and by hard copy on October 9, 2000.
On October 3, 2000, the Respondent responded by email which was indicated to be in reply to the supplemental findings of the Complainant dated 3 October but which were not received by the Center until 4 October apparently due to difficulties experienced in opening the document in electronic form. Acknowledgement of receipt of the response was given on October 5, 2000. There has been further communication with the Complainant and Respondent by way of email culminating in an email of October 17, 2000, from the Respondent. The Panel consisting of sole panelist Mr. Clive Duncan Thorne was appointed on October 13, 2000.
4. Factual Background
The Complainant has produced evidence that it is the registered owner of a United Kingdom registered trade mark for the mark "JUST RENTALS BY AS YOU VIEW". A copy of the trademark registration certificate is annexed to the complaint at Annex 4. The mark No. 2132729 is registered in classes 36 and 37 in respect of lease purchasing financing, hire purchase and financing and provisions of loans and credits.
The Complainant has also adduced evidence of a trademark application No 2219956 in respect of the mark "BUY AS YOU VIEW" plus stylized device in classes 36 and class 37. This application was made on January 24, 2000. The Complainant indicates that he proposes using the mark in connection with the purchasing and financing, hire purchasing financing, provision of loans and credits, financial services, installation, repair and maintenance provisions and other household apparatus.
The Complainant has also adduced evidence that the mark "BUY AS YOU VIEW" has been used as part of a substantial advertising campaign on television, in the press and through national sporting events. It has been used as the Complainant’s trading style since 1997. In excess of Ј1 million has been invested by the Complainant from March 1999, until June 2000, in supporting the brand. The Complainant asserts that as a result of the promotion of the name it has built up a considerable reputation and good will in the name "BUY AS YOU VIEW". The Panel is prepared to accept this evidence.
In its response the Respondent indicates that it offers "primarily a shopping directory for the Internet" but it gives no supporting evidence of this use. It should be noted however that the domain name was first registered by the Respondent on February 18, 2000, which post dates by less than one month the Complainant’s application for the trade mark "BUY AS YOU VIEW" plus stylized device. The Panel has read the correspondence that has passed between the parties commencing with the letter of April 27, 2000, from Eversheds on behalf of the Complainant requesting that the Respondent undertakes to cease using the name "BUY AS YOU VIEW" or any similar name. This letter was responded to by a hard copy letter marked "without prejudice and strictly confidential" from Mr. Green headed "Cantufind.com?" indicating that inter alia that the Complainant "can get stuffed!". The Respondent goes on in the letter to suggest that Eversheds advise their client to "furnish their own offer for my domain if they are concerned about its impact. Threatening me will do little for their cause".
A subsequent email from the Respondent dated 24 May offers a purchase price of Ј11,000 to the Complainant, which the Respondent states "is more than a fair price, certainly based on the interest we have had from the US". This was followed by a further email from the Respondent on 28 July offering "one more opportunity to purchase the domain name". It should be noted that that letter was signed by a Miss A Jenkins who subsequently confirmed that she acted "on authority of Mr. Green". She subsequently added that she was the Respondent’s "assistant head of marketing".
In its email of 13 October the Respondent refers to a meeting that took place on or about October 12, 2000, with Mr. Mike Henderson of the Complainant at which apparently the purchase of the domain name was discussed. According to the Respondent Mr. Williams offered to buy the name for its "nuisance value". The Respondent goes on to state in remarks addressed to the Panel:
All this is about is the fact that I have managed to have the insight to legitimately and rightfully buy and use a domain name with words they think belong to them despite only trading in a small area of the UK. Because I live near them it makes it even more a bitter pill for them to swallow. I am not using it in bad faith and never have, their clear attempt to try and trick me into selling it yesterday just made me more determined to succeed.
I seriously wonder how people like this can sleep at night, for my Family cannot. Perhaps that is why they are Bosses and I am just someone trying his best to make an honest living for my family. It is not right that I should be penalised because of this......"
In a follow up email the Respondent wrote to the Center and apologized for the multiple submissions that were being made and pointing out that it was "unfair to bog down the Panelist and WIPO with a large amount of emails when only one submission was required according to the rules."
5. Parties Contentions and Discussion
In order to succeed in its request for an order to transfer the domain name the Complainant has to prove that each of the three elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present. These are as follows:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name;
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel accepts the evidence of the Complainant to the following effect:
(a) That it has a registered trademark dated May 14, 1997, for the mark "Just Rentals Buy As You View".
(b) That it applied for the registered trademark consisting of the stylized version of "BUY AS YOU VIEW" on January 24, 2000.
(c) That as a result of use of the trading style name "buy as you view" since 1997, that it has established common law rights in the goodwill in that name.
The domain name in dispute is "buyasyouview.com". The Panel is therefore prepared to accept that the domain name is confusingly similar to the existing Complainant’s trade mark registration, the mark applied for in the application and the underlying common law trade mark rights which have existed since 1997.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant states its recollection that it discovered the Respondent’s interest in the domain name from two faxes sent by the Respondent to the Complainant offering the domain name for sale. These do not appear to have been retained. According to the Complainant the first fax stated that the domain name was for sale at Ј1,000. A subsequent fax stated that the time for responding to the offer had lapsed and that the price for purchasing the domain name had increased. This was prior to the letter from Eversheds of 27 April. The Panel has already drawn attention to the subsequent offers to sell the domain name.
The Complainant also refers to the fact that in his letter of April 29, 2000, the Respondent claims that he possesses other names and that he is free to do with them as he wishes. The Complainant effectively asserts that the Respondent is not trading using the domain name "buyasyouview" but has merely registered the name for the purpose of offering it for sale. The Complainant refers to the fact that the headed notepaper from Mr. Green refers to him trading as "cantufind.com?" rather than "buyasyouview".
In its response the Respondent referred to the fact that it registered the name for the purposes of using it in relation to on line directory services by offering a shopping directory for the Internet. The Panel is concerned that the Respondent has provided no evidence to support this use of the name and indeed the response consists largely of an attack on the bona fides of the Complainant.
The Respondent does however refer to an email dated September 28, 2000, from "on line-express-hosting". This merely refers to the Respondent hosting the domain "buyasyouview.com" and "cantufind.com" since February 18, 2000. In the Panel’s view this is in no sense, as submitted by the Respondent, "irrefutable evidence" that the Respondent has maintained a legitimate interest in "buyasyouview.com"
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the policy sets out circumstances which "in particular but without limitation and which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith". Paragraph 4(b)(i) refers to the existence of bad faith if the name was registered primarily for the purpose of selling the domain name registration to the Complainant as proprietor of the marks for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name in dispute.
The Panel has already commented upon the correspondence, which has been exhibited consisting of an offer by the Respondent to sell the domain name to the Complainant. The Complainant has also referred to the faxed offers, which have not been retained. The Panel is inclined to the view that in the absence of compelling submissions to the contrary from the Respondent that this correspondence alone would show evidence of bad faith.
In its response the Respondent points out that it has invested very heavily in the production and development of the domain name far more than the alleged fee for sale had been spent on the domain name. The Respondent states that it "fails again to see how it can be conceivably stated that I am using this domain name in bad faith. It defies belief that one would invest well in excess of the amount asked for in the alleged sale developing the enterprise yet ask far less for its purchase!" The difficulty is that the Respondent adduces no evidence to support this contention and in particular no evidence of bona fide commercial use of the domain name which might justify the domain name being worth more than merely out of pocket expenses.
In these circumstances the Panel has no alternative but to accept the Complainant’s contentions that the domain name was registered and is being used in bad faith.
The Complainant requests that the domain name "buyasyouview.com" be transferred to the Complainant. The Panel finds that the Complainant has proved the three elements within paragraph 4(a) of the Policy and decides that the domain name "buyasyouview.com" be transferred to the Complainant from the Respondent.
Clive Duncan Thorne
Dated: October 26, 2000