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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skipton Building Society -v- Peter Colman
Case No. D2000-1217
1. The Parties
The Complainant is Skipton Building Society of The Bailey, Skipton, North Yorkshire, United Kingdom, BD23 1DN ("Skipton BS").
The Respondent is Mr Peter Colman of 7 Hursts Yard, Leeds, LS1 6NJ, United Kigdom..
2. The Domain Name and Registrar
The domain name at issue is skipton.com and the Registrar is Network Solutions Inc of 505 Huntmar Park Drive, Hendon, Virginia VA20170, USA.
3. Procedural History
The Complaint was submitted by email on September 11, 2000 and a hard copy version was submitted on September 14, 2000. The relevant notification procedures were complied with, then on October 3, 2000 the Complainant made a supplemental filing (followed by a hard copy two days later). On October 5, 2000 Mr Colman submitted an email to the Arbitration Center opposing the contents of the supplemental filing. Subsequently, on 16 October 2000 Mr Colman filed his full response by email with a hard copy following on 24 October. Subsequently on 27 October, Skipton BS made a third filing. In the papers submitted this is described as a "comment to the Respondent’s response". However, it is not in the nature of a response, and is a separate assertion which is supplemental to the second submission by Skipton BS relating to litigation between Mr Colman and WH Smith Limited.
The Panel will consider the appropriateness of taking notice of Skipton BS’ second and third submissions below.
All payments appear to have been duly made by Skipton BS.
The three Panellists have submitted a Statement of Acceptance and Declaration of Impartiality and Independence, and the date scheduled for the Panel’s decision is 22 November 2000. The language of the proceeding is English.
4. Factual Background
Skipton is a medium-sized town in North West Yorkshire, and the Skipton Building Society is a well-known financial institution with a significant reputation in the United Kingdom. It has been trading under the name "Skipton" since 1853 and is the owner of a UK registered trade mark for the word "Skipton" obtained in 1987 following the adoption of trade marks for services under United Kingdom law. The Skipton registered trade mark is geographically limited to services outside a 50 mile radius from the town of Skipton. This is common practice in the UK Trade Mark Office, and is one of the conditions upon which trade marks containing geographical names and references may be allowed to be registered.
The domain name at issue, skipton.com, was registered on September 8, 1997. It was not until June 2000 that Mr Bell, on behalf of Skipton BS, made an initial communication with Mr Colman. Subsequently, later in June 2000, Skipton BS appointed Eversheds of London Scottish House, 24 Mount Street, Manchester M2 3DB as its representatives and a passage of correspondence ensued.
It appears that, subsequently, at around September 6, 2000, Mr Colman changed the host for the site to traffichosting.com and entries under the domain name were being automatically defaulted to topnotchsites.com and subsequently to dir.bestoftheweb.com.
5. The Parties’ Contentions
Skipton BS contend that the domain name in question is identical or confusingly similar to its trade mark or trading name; that Mr Colman 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.
Skipton BS assert that the domain name Skipton.com is identical to their registered trade mark "Skipton" in which they assert that they have a substantial reputation.
Further, they assert that Skipton BS has a sufficiently strong reputation in the United Kingdom in the name Skipton that the use of the disputed domain name constitutes passing-off of their unregistered rights in the name Skipton. This issue is raised presumably to supplement the registered trade mark point, and to cope with the 50 mile radius around the town of Skipton in which the registered trade mark is ineffective.
Skipton BS contends that Mr Colman has no legitimate interest in the name alleging that he has no business interests in or geographical connection with the Skipton area. Skipton BS asserts that he has not yet provided "a plausible reason as to why he decided to obtain the domain name registration". Skipton BS concedes that in email correspondence with Mr Ron Bell of Skipton BS, Mr Colman asserted that he had registered the disputed domain name because he intended to establish a local portal site featuring information about the town of Skipton. Skipton BS rebut that assertion on the grounds that the registration was obtained in 1997, and three years later in the middle of the year 2000, no action had been taken by Mr Colman toward the establishment of the site in the manner which he has described.
Skipton BS asserts that the registration was obtained and has been used in bad faith relying, in part, on the same grounds as those relied upon to assert that Mr Colman has no legitimate interest. It points to the three year lacuna between the registration and some evidence of use, and further points out that when such use occurred, it was only to forward visitors to the site to unrelated commercial sites.
Skipton BS asserts that Mr Colman has registered the domain name merely as a spoiling tactic so as to stop Skipton using the name.
To support its assertions regarding bad faith, Skipton BS points to allegedly similar behaviour by Mr Colman in the registration of a series of domain names which appear to relate to well-known football clubs in England. It goes on to assert that until August 2000 the Respondent had made no effort to establish any websites at the domain names connected with the football clubs, but subsequently similar forwarding had been established so that entry at the sites defaulted to topnotchsites.com. A number of the football club sites are, in the assertion of Skipton BS, still inactive.
Skipton BS asserts its belief that Mr Colman registered these domain names for the purpose of selling renting or otherwise transferring them to their rightful owners for valuable consideration and comment, no doubt in their view, presciently, that he may have registered other "famous" domain names which their searches had not revealed.
The above is a summary of the initial complaint by Skipton BS. Subsequently, it made two further filings to the Mediation and Arbitration Centre relating to a court case between Mr Colman and WH Smith Limited, the well-known English retailer. It is clear that the purpose of the filings was to substantiate the allegation of bad faith against Mr Colman on the grounds that he habitually indulged in behaviour of the type which Skipton BS have made complaint of in these proceedings. Eversheds, on behalf of Skipton BS, have acknowledged that the decision to allow the supplemental filings is in the discretion of the Panel, and have implicitly requested the Panel to exercise that discretion in their favour.
In response, Mr Colman asserts that he has had an interest in computers and the internet as a hobby for a number of years. He alleges that he registered a large variety of domain names during 1997 in anticipation of the growth of the world wide web. He asserts that the names chosen were all registered in good faith on the basis of the "first come first served" policy which has traditionally operated in relation to domain name registration. He asserts that he took "a long term view" believing that suitable funding would become available to develop his name collection as a "hobby investment". In specific response to the complaint, he refers to the geographical limitation which applies to the registered trade mark belonging to Skipton BS. He asserts that the name "Skipton" cannot be considered as "key" to the success of the business of Skipton BS, and refers to the fact that the Skipton BS website limits the financial services on offer to residents of United Kingdom as evidence that the appropriate domain name for Skipton BS is at country code level rather than generic top level.
Referring to the allegedly belated commencement of some form of use of the domain name at issue in these proceedings, he asserts that the correspondence of around 27 June 2000 from Eversheds prompted him to establish a site. He says that from their correspondence he "reasonably concluded that it was therefore the complainant’s wish that measures be taken to establish a site". He asserts that the linkage with "bestoftheweb.com" and "topnotchsites.com" was "to dispel all possibility of confusion and make it absolutely clear that Skipton.com was and is not offering any financial services".
In addressing the three requirements under paragraph 4 of the UDRP, Mr Colman points to the provisions of the Trade Marks Act 1994, and the geographical limitation on the registered trade mark of Skipton BS as indicative of an intention by the relevant authorities to prohibit geographical names from being used as an indication of the source or origin of a product or service. He asserts that Skipton BS derives their name from the town, not vice versa, and points to other decisions of WIPO panels relating to geographical domain names, in particular those involving St Moritz, Goldbeach, and Huangshan.
Mr Colman denies that there is any possibility that his actions amounted to "passing off" under English law, and consequently cannot have offended any rights belonging to Skipton BS. He pursues that argument to assert that the true motive of Skipton BS is to "obtain the domain name by ‘reverse domain name hijacking’".
On the same point, he asserts that Skipton BS have not demonstrated that there is any element of misrepresentation within the meaning of the English law of passing off.
Mr Colman asserts that the Human Rights Act, recently incorporated into UK law, must affect his rights or legitimate interest in respect of the domain name. He asserts that he registered the name quite simply because it represented a sizeable town, was freely available, and not already taken. He refers to subsequent correspondence with Mr John Skipton from the USA from November 1997 which, he asserts, shows that he had a good faith intention to exploit the site at that time and then refers to subsequent correspondence with "a friend" from around December 1999 which, in his assertion, demonstrates that it was and had always been his intention to exploit the sites commercially.
With regard to the question of bad faith, he asserts quite simply that he did not register the name in bad faith and has never used it in that way. He refers to correspondence between himself and a representative of the Port Vale Football Club website and further asserts that he has only ever sold one domain name, thevan.com, in what he describes as "an entirely bona fide transaction to an individual in the United States".
He repeats his assertion that the true intention of Skipton BS is reverse domain name hijacking under the Rules and asserts that it is an indication of his good faith that it was at his suggestion that the dispute be brought to WIPO.
6. Panel Findings
Under paragraph 4 of the UDRP, the Complainant’s burden is to prove, in relation to the complaint, that:
(i) the domain name at issue is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements are present in order to make out a successful case.
Supplemental Evidence and Submissions
Before moving on to consider whether the Complainant has satisfied that burden, the Panel must first decide whether to exercise its discretion to allow consideration to be made of the second and third filings made by the Complainant both of which relate to legal proceedings between Mr Colman and WH Smith Limited. After the first supplemental filing, Mr Colman expressed in strong terms an objection to the further evidence, asserting that it was irrelevant and did not go to the issues in the case. No such communication has been received from Mr Colman following the third filing.
The procedure for the administration of the UDRP was intended to be swift and inexpensive. The formalities were deliberately kept to a minimum, and established in such a way that parties could represent their interests themselves without expensive professional representation if that is what they wished. When a Panel is asked to consider the admission of additional supplemental filings, it must give serious consideration to the question of whether that will undermine the overall objective of the UDRP, and the procedure established to administer it. That consideration must be weighed against the clear obligation on the Panel to make a true and accurate finding in the light of all relevant circumstances brought to its attention.
In this case, the silence of Mr Colman after the third filing by Skipton BS is perhaps indicative of the fact that he is aware that the issues raised by the submission and accompanying documents are directly pertinent to the key issues in this case, and the ability of Skipton BS to prove its case by reference to the three requirements in paragraph 4 of the UDRP. He has had an opportunity to respond, and had he done so the Panel would have taken notice of his submissions.
The Panel is persuaded that the evidence submitted in the second and third filings by Skipton BS consisted of new material which Skipton BS had not been aware of at the time of the original complaint. That is an important factor in determining whether the panel should admit this in evidence.
We consider that as a general proposition panels should not admit evidence filed late, and certainly evidence filed after the response has been submitted, which should reasonably have been in the contemplation of the Complainant at the time when the first complaint was filed.
In this case, the Panel has admitted the additional evidence filed by Skipton BS in its second and third filings, and such evidence has been taken into account in the Panel’s decision.
Before leaving the question of the admissibility of evidence and representations, the Panel would like to record its displeasure at the volume of material submitted on behalf of Skipton BS in this case. We have already commented that this procedure is meant to be swift and inexpensive. However, it is also meant to be just and thorough. Panelists consider that if material is put before them they should read it, as otherwise they may be open to subsequent criticism for missing a useful piece of evidence. It is the role of the parties and their advisors to help by sending only that information which is directly pertinent to the issues in the case. In this case, it is hard to see that the full annual return of Skipton BS was a necessary submission.
The UDRP Requirements
Moving on to the specific requirements under paragraph 4 of the UDRP, the first question to
be considered is whether the domain name skipton.com is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Panel clearly finds that this limb of the test is satisfied. Skipton BS has held a registered trade mark for the word "Skipton" for as long as it possibly could have done under UK law. The geographical limitation on the mark is, as indicated above, a well-known phenomenon arising from the UK Trade Mark Registry, but does not in any way negate the common law rights of Skipton BS to the name "Skipton" in relation to that area of territory.
Mr Colman asserts that there could be no confusion, and consequently no legitimate case for passing off. The implication in that assertion is that there is no legal right of Skipton in the unregistered trade mark. Even if that were the case, and the Panel does not agree with Mr Colman on this point, that would only apply to the territory of the United Kingdom excluded from coverage of the registered trade mark. It is irrelevant that Mr Colman resides within that territory. The effect of his domain name is felt not only across the rest of the United Kingdom, but around the world, and clearly has impact in the territory where the registered trade mark of Skipton BS does apply.
Since it is clear that the "dot.com" element of a domain name is to be ignored for the purpose of assessing similarity, the Panel finds that the domain name is identical to the registered trade mark belonging to Skipton BS, and consequently the question of confusion does not arise.
The second limb of the test requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in respect of the domain name. In a case such as this where the respondent has no obvious connection with the domain name (apart from having registered it), where the domain name has been dormant for three years, and where the use subsequently made of it does not bear any significance or relation to the name itself, the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such right or legitimate interest does exist. In relation to this point, Mr Colman has invited the Panel to "put their considerable expertise" to the question of whether the recently enacted Human Rights Act has an impact on this issue.
In the absence of any legal submissions by Mr Colman on his own behalf, the Panel has not given any further consideration to this point.
Mr Colman refers to his correspondence with Mr John Skipton from the USA, and subsequently with "a friend" working for a merchant bank in London to demonstrate that, prior to the date of the complaint, it was his general intention to raise finance in order to operate a legitimate website using the domain name at issue. He points to his lack of financial resource to support the fact that it is reasonable that he should possess an undeveloped domain name.
Mr Colman need not convince the Panel that it is reasonable for individuals or companies to own and hold undeveloped domain names. Domain names are a tradable commodity, as are any intellectual property rights of a similar nature. That is not the point. The issue is the nature of the domain name in question.
The UDRP at paragraph 4(c), gives assistance to Respondents as to how to demonstrate that they have rights and legitimate interests in the domain name. It lists three non-exclusive circumstances, any one of which might satisfy a panel on this point. The circumstances are as follows:-
(i) before a notice of the dispute there were demonstrable preparations to usethe domain name or a name corresponding to the domain name inconnection with a bona fide offering of goods or services;
(ii) that the Complainant has been commonly known by the domain name even if no trade mark or service mark rights have been acquired;
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Mr Colman was given the opportunity to respond in a way which satisfied the Panel on any one of these three points, but the Panel finds that he has failed to do so. The mere reference in correspondence with Mr Skipton in 1997 to a vague intention to develop the name is not evidence of "demonstrable preparations to use". In any event, in that correspondence Mr Colman offered to sell the domain name to Mr Skipton for "a reasonable price".
There is no evidence to suggest that Mr Colman has used the domain name for his own or business purposes in such a way that he could be said to have "been commonly known by the domain name". Further, there is no evidence of "legitimate non-commercial or fair use". On the contrary, recent evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites.
Accordingly, the Panel finds that the second limb of the test in paragraph 4 of the UDRP is satisfactorily made out by the Complainant.
Finally, the Panel has to consider the vexed issue of "bad faith". Once again, the UDRP gives assistance, this time to the Complainant, in indicating the type of evidence which will satisfy the Panel that the domain name was registered and is being used in bad faith. These are listed in paragraph 4(b) of the UDRP as follows:-
(i) that there are circumstances indicating that the registration was acquired primarily for the purpose of selling, renting or otherwise transferring thedomain name to the Complainant or to a competitor for valuable consideration in excess of documented out of pocket costs; or
(ii) that the name was registered 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; or
(iii) that the domain name was registered primarily for the purpose of disrupting the business of a competitor;
(iv) that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, internet users to a website 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 the website or location or of a product or service on the website or location.
(v) above can be discounted for these purposes as there is no suggestion that Mr Colman is in commercial competition with Skipton BS.
However, by his own admission, Mr Colman took advantage of the "first come first served" policy of the domain name registrars to obtain a wide range of registrations, including a number of well-known English football clubs, and other substantial commercial entities, including WH Smith, and Thames Water. The latter two registrations are particularly telling, as there can be no legitimate geographical or other justification for the registrations.
The question which always arises in relation to sub-paragraph (ii) of paragraph 4(b) is why the Respondent has registered the domain names to prevent the owner of the trade mark or service mark from reflecting it in a corresponding domain name. Normally, the answer will be that the purpose of doing so was to sell the domain name to the Complainant, or a competitor of the Complainant, which in itself would fall foul of sub-paragraph (i). Mr Colman avers that he has only ever sold one domain name, and that being the innocuous "thevan.com".
However, sub-paragraph (ii) does not require sales to have been made or even attempted. There is a legitimate question raised by Mr Colman as to whether his actions have, in effect, prevented Skipton BS from reflecting their trade mark in a corresponding domain name. This point comes from the fact that Skipton BS offers its services in the United Kingdom, and there is a specific limitation to that effect in their website at Skipton.co.uk. Further, Mr Colman’s domain name had been registered for almost three years before Skipton BS discovered it and raised their objections. However, the Panel finds that Mr Colman’s pattern of conduct is compelling. His explanation as to why he registered the various well-known football clubs, and the other businesses, such as WH Smith and Thames Water, is in the words of the Complainant, "fanciful".
According to the evidence contained in the third submission by Skipton BS, there is a suggestion that Mr Colman attempted to sell his "WHSmith.com" domain name to WH Smith Limited for around Ј12,000. In fact, his offer was couched in percentage terms against the marketing budget of WH Smith. It is unclear as to whether Mr. Colman could have known of the sort of figure which his percentage formula would produce, or whether he chose a "tiny" percentage figure in order to illustrate the importance of the domain name in his mind. There is no other significant evidence which would bring Mr Colman’s conduct under the terms of sub-paragraph (i).
Mr Colman may take the view that, in 1997 when he registered the domain name, his actions were perfectly legitimate as there was no UDRP and the registries were operating on a "first come first served" basis. However, it is quite clear that the UDRP applies equally to domain names registered prior to its implementation in late 1999, as to those subsequently registered. Applying the current position ex post facto it is hard to see that the registrations which Mr Colman undertook in 1997, including the domain name at issue, can have been made otherwise than in bad faith, and for the purpose of "getting in first" ahead of legitimate businesses.
It is irrelevant that Mr Colman also registered a number of non-off ensive generic names. There is perfectly adequate evidence before the Panel that there was a pattern of behaviour by Mr Colman that brought his conduct within the terms of sub-paragraph (ii) of paragraph 4(b) of the UDRP.
It is a requirement of the UDRP that the domain name must have originally been registered, and subsequently "is being used" in bad faith. It has evolved as a general principle from a number of previous panel decisions that non-use can amount to use in bad faith. Many of these cases including those relating to Christian.Dior.fashions.com and Indymacloans.com, concerned behaviour very similar to that of Mr Colman in this case. The purchase and subsequent warehousing of large volumes of domain names which equate to those well-known businesses, or in this case Sporting Clubs, can in the right circumstances clearly amount to ongoing use in bad faith provided, of course, that the initial registration was made in bad faith.
Accordingly, the Panel finds that the domain name skipton.com was registered and is being used in bad faith.
In the circumstances of these findings, there is no need to consider the assertion by Mr Colman that reverse domain name hijacking has taken place. In any event, that assertion is simply not made out in the evidence which he has filed.
In the light of the foregoing, the Panel decides that the domain name registered by Mr Colman is identical to the registered trade mark and common law trade mark of Skipton BS; that Mr Colman has no rights or legitimate interest in respect of this domain name, and that the domain name in issue has been both registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name skipton.com be transferred to Skipton BS.
Gordon D Harris
Frederick Abbott Tony Willoughby
Dated: December 1, 2000