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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fortnum & Mason PLC v Corporate Business Sales Limited

Case No. D2000 1207

 

1. The Parties

Complainant: Fortnum & Mason PLC of 181 Piccadilly, London, W1A 1ER, United Kingdom

Respondent: Corporate Business Sales Limited, 89 The Highway, Stanmore, Middlesex, HA7 3PL, United Kingdom.

 

2. The Domain Name and Registrar

Domain Name: "fortnumandmasondirect.com"

Registrar: Network Solutions Inc.

 

3. Procedural History

The Complaint was filed on September 13, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.

The Complaint was properly notified in accordance with Rules, paragraph 2 (a). No formal Response was filed by the Respondent who is in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s decision was November 9, 2000.

 

4. Factual Background

The Complainant is the owner of registered trade marks for the mark FORTNUM & MASON in the UK and in many countries around the world.

 

5. Parties’ Contentions

A. Complainant

The Complainant states that:

The Complainant was established in 1707 and, since that date, has built up an extremely substantial reputation as a retailer of high-quality goods and services under the trade mark FORTNUM & MASON. In the year to end 10 July 1999 the Complainant's turnover exceeded Ј36 million.

The reputation and goodwill attaching to the trade mark FORTNUM & MASON is particularly strong in the United Kingdom where the Complainant is based, but the mark is also extremely well known world-wide. The Complainant has an extensive world-wide mail order business. Much of this world-wide mail order business is now conducted via the Internet. The Complainant's website is at "www.fortnumandmason.com". The Complainant exhibited to the Complaint a selection of press cuttings showing the fame and repute of the Complainant and its FORTNUM & MASON trade mark.

The extent of the Complainant's world-wide reputation and goodwill in the trade mark FORTNUM & MASON is such that it is distinctive of the Complainant and exclusively associated with it.

In addition to the unregistered, common law rights that the Complainant has built up in the trade mark FORTNUM & MASON as a result of its extensive use over a period of almost three hundred years, the Complainant has the following registrations for the trade mark FORTNUM & MASON:

CountryNumberClassGoods or Services

Year of Registration

UK

963160

29

Meat, fish, poultry and game; preserved, dried or cooked fruits and vegetables; edible oils; etc

1970

UK

963161

30

Coffee, tea, cocoa, sugar, rice; cereals, bread, biscuits, cake; etc

1970

UK

963162

33

Wines, spirits and liqueurs

1970

UK

963163

32

Non-alcoholic drinks; etc

1970

UK

963164

34

Manufactured tobacco, cigars and cigarettes

1970

Australia

B303987

29

All goods in Class 29

1977

Australia

B304030

30

All goods in Class 30

1977

Benelux

037692

29, 30, 32, 33, and

34

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles, salad sauces; coffee, tea, cocoa, sugar, rice; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; wines, spirits and liquers; tobacco etc.

1979

Canada

187229

Sweets, sugar confectionery, puddings, biscuits, tea, wines, spirits, liquers, fruit juice, honey, preserves, patй, caviar, partridge, grouse, pheasant, chicken, etc.

1972

Denmark

3767/1972

29, 30, 32, 33 and 34

Goods within Classes 29,30, 32,33 and 34

1972

Finland

92893

29, 30, 32, 33 and 34

Goods within Classes 29,30, 32,33 and 34

1985

France

1494969

29, 30, 31, 32 and 33

Goods within Classes 29, 30, 31, 32 and 33

1968

Germany

905272

29, 30, 32 and 33

Goods within Classes 29, 30, 32 and 33

1970

Greece

107995

29, 30, 32 and 33

Meat, fish, poultry and game; meat extract; preserved, dried and cooked fruits and vegetables; jellies, jams; preserves and pickles; coffee, tea, cocoa, sugar, rice; flour and preparations made from cereals; bread, biscuit, cakes, pastry and confectionery; beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks and preparations; wine, spirits and liquers

Hong Kong

01601/2000

30

Tea; coffee; non-medicated confectionery; biscuits, cakes; spices, sauces.

1991

Ireland

B80694

29

Meat,fish, poultry and game; meat extracts; preserved, dried or cooked fruits and vegetables; jellies and dairy products; jams; edible oils, edible fats; fruit preserves, vegetable preserves and pickles.

1972

Ireland

B77525

30

All goods in Class 30

1970

Ireland

B80695

32

Non-alcoholic drinks and preparations for making such drinks, all included in Class 32

1972

Ireland

B80696

33

Wines, spirits and liquers

1972

Italy

605976

29, 30, 32, 33, and 34

Goods within Classes 29, 30, 32, 33 and 34

1970

Korea

446233

5

Black tea, black tea in bags, green tea, green tea in bags, coffee, aerated water, mineral water and ice.

1999

New Zealand

B95155

30

All goods in Class 30

1970

Portugal

176090

29

Goods within Class 29

1977

Portugal

176091

29

Goods within Class 29

1977

Portugal

176084

30

Goods within Class 30

1977

Portugal

176086

30

Goods within Class 30

1977

Portugal

176087

30

Goods within Class 30

1977

Portugal

176088

30

Goods within Class 30

1977

Singapore

S/8361/89

30

Coffee, tea, cocoa, sugar, rice; flour and preparations made from cereals for food for human consumption, bread, biscuits, cakes, pastry, non-medicated confectionery, honey, treacle, baking powder, salt, mustard, pepper, vinegar, sauces and spices and chutneys.

1989

South Africa

B70/4520

30

All goods included in Class 30, excluding sauces and condiments

1970

Spain

1646515

29

Goods within Class 29

1991

Spain

1646516

30

Goods within Class 30

1991

Spain

1646517

32

Goods within Class 32

1991

Spain

1646518

33

Goods within Class 33

1991

Sweden

251534

29, 30 and 33

All goods included in Classes 29, 30 and 33

1993

Switzerland

385354

29, 30, 32, 33 and 34

Goods within Classes 29, 30, 32, 33, and 34

1970

Taiwan

181021

21

Goods within Class 21

1982

Taiwan

185243

26

Goods within Class 26

1982

Uruguay

240338

29 and 30

Goods within Classes 29 and 30

1980

USA

1610669

29 and 30

Marmalades, pickled onions, jellies and cranberry sauces, relish, tea, coffee, sauces, chutney, cakes and mustard

1990

USA

939980

29, 30 and 32

(US Class 46)

Soups, sugar confectionery, petit fours, puddings, biscuits, fruit juice, honey, preserves, spiced bread, patй, caviar, preserved partridge, preserved grouse, preserved pheasant, preserved chicken, preserved and dried fruits, marrons, pancakes for use with curries, curried liver, curried mutton and curried chicken

1972

Venezuela

104806

29 and 30

Goods within Classes 29 and 30

1983

The Complainant annexed to the Complaint copies of printouts from the UK Patent Office database, giving details of the registered UK trade marks as at July 10, 2000.

The Respondent is not a licensee, or otherwise authorised to use the Complainant's trade marks.

The domain name registered by the Respondent, "fortnumandmasondirect.com", is identical or confusingly similar to the Complainant's trade mark FORTNUM & MASON.

The Disputed Domain Name is the Complainant's distinctive trade mark FORTNUM & MASON, with the addition of the word "direct". The addition of the word "direct" to the distinctive and well known trade mark of a retailer is an obvious and descriptive means of indicating the Internet-based service of that retailer.

This approach of adding the word "direct" to a retailer's established trade mark for its online operation has been adopted by many retailers in the United Kingdom. This fact is acknowledged by the Respondent in its letter to DLA dated May 29, 2000, which was annexed to the Complaint. In this letter the Respondent states "this name ["fortnumandmasondirect.com"] is invaluable to your client as numerous companies have added direct to their company name. If you feel your client can do without the name, we understand, though we feel it will be a great loss to them".

Members of the public will undoubtedly be confused into thinking that "fortnumandmasondirect.com" is a domain name representing an online operation of the Complainant.

The Respondent has no rights or legitimate interests in the Disputed Domain Name.

It is clear that the Respondent is fully aware that FORTNUM & MASON is the Complainant's trade mark and that the Complainant has all rights and legitimate interests in the trade mark. The Complainant is also aware that the Disputed Domain Name is identical or confusingly similar to the Complainant's trade mark. The Respondent implicitly acknowledges that the Complainant has all rights to and legitimate interest in the Disputed Domain Name by the statement that "this name is invaluable to your client….." in its letter dated May 29, 2000. Further, the statement in the same letter that "we do not intend to use the domain name or transfer it to a third party" implicitly acknowledges that no one other than the Complainant has any right or legitimate interest in the Disputed Domain Name.

Before notice to it of the dispute, the Respondent had made no use of the domain name, or a name corresponding to the domain name, in connection with the bona fide offering of goods or services, nor had it made any demonstrable preparations to make a bona fide use of the domain name or a name corresponding to the domain name. Indeed, in its letter of May 29, 2000, the Respondent stated "we do not intend to use the domain name….".

The Respondent has not been commonly known by the domain name or a name corresponding to the domain name.

The Respondent is not making any legitimate non commercial or fair use of the domain name. It has confirmed it will not use the domain name for its own use and by way of letter, a copy of which was annexed to the Complaint it offered the domain name for sale to the Complainant for Ј85,000 (eighty five thousand pounds sterling). This was subsequently reduced to Ј25,000 (twenty five thousand pounds sterling) in a letter dated July 17, 2000, from solicitors instructed by the Respondent, a copy of which was annexed to the Complaint.

The Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent registered the Disputed Domain Name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of its documented out of pocket costs. This is apparent from the Respondent's letter to DLA dated May 29, 2000. In this letter, the Respondent, states "we do not intend to use the domain name or transfer it to a third party" and "should your clients offer Ј85,000, we will take all the necessary steps to transfer the domain name "fortnumandmasondirect.com", to your clients".

By stating that it will not use the Disputed Domain Name for its own use, or transfer it to a third party, the Respondent has made clear that it registered the domain name solely for the purpose of selling it to the Complainant.

As made clear by paragraph 4(b)(i) of the Policy the conduct described above amounts to unambiguous evidence of registration and use in bad faith. This has been confirmed by the decision in World Wrestling Entertainment Inc v Michael Bosman (WIPO Case Number D99-0001).

The Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. This is made clear by the statement in the Respondent's letter of May 29, 2000, that "this name is invaluable to your client as numerous companies have added direct to their company name. If you feel your client can do without the name, we understand, though we feel it would be a great loss to them".

That the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name is further made clear by the statement in the Respondent's solicitors' letter dated July 17, 2000, (based on a misunderstanding of the Policy): "Our client is quite content to abide the outcome of the ICANN Uniform Domain Name Dispute Resolution Policy. It is aware, as no doubt your client is, that the Dispute Resolution Policy cannot compel the transfer of a Domain name even if it effectively disables it. Our client has no wish to cause harm to your client...."

The Respondent hoped and intended that by depriving the Complainant of the Disputed Domain Name, it would force the Complainant to pay a sum considerably in excess of its out of pocket expenses, in order to secure a domain name vital to its business.

Further, the Respondent has engaged in a pattern of conduct such as this. In its letter of 29 May 2000, the Respondent states that it has sold "lillywhitesdirect.com" for Ј110,000 and "austinreeddirect.com" for Ј160,000. A list of domain names registered by the Respondent, as recorded on Network Solutions' Whois database, was annexed to the Complaint. From this it can be seen that the Respondent has registered a number of domain names containing the extremely well-known trade marks of third parties, including "hamleysdirect.com", "austinreeddirect.com", "harveynicolsdirect.com", "lillywhitesdirect.com", "bookerdirect.com", "aspreydirect.com", "bhsdirect.com" and house of "fraserdirect.com", in which those third parties have very substantial goodwill and reputation both in the UK and world-wide. This conduct amounts to unambiguous evidence of registration and use in bad faith.

The Respondent's conduct has been a blatant and deliberate attempt to persuade the owners of well-known trade marks to pay substantial sums of money to the Respondent, to recover from it domain names including their trade marks, in which the Respondent has, as it is fully aware, no rights or legitimate interest.

B. Respondent

The Respondent has not filed a formal Response and is in default.

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A Identical or confusing similarity

It is prima facie obvious that the Domain Name is virtually identical and/or confusingly similar to the Complainant’s trade marks. It is not possible to register an ampersand as part of a domain name and so "fortnumandmason" is the closest equivalent to FORTNUM & MASON possible as part of a domain name. The addition of the non distinctive word "direct" does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s trade marks.

B Rights or Legitimate Interest of the Respondent

The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.

C Bad Faith

Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has 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 trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name" and "the Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct".

In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainant’s trade marks as domain names with an intent to use them to demand unwarranted profit in bad faith and in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The Complainant has clearly established that the Respondent has engaged in a pattern of conduct of such behavior.

 

7. Decision

In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant’s trade marks and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.

Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name "FORTNUMAND MASONDIRECT.COM" BE TRANSFERRED to the Complainant.

 

 


 

 

Dawn Osborne
Presiding Panelist

Dated: September 4, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1207.html

 

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