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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asprey & Garrard Ltd v. Canlan Computing

Case No. D2000-1262

 

1. The Parties

The Complainant: Asprey & Garrard Limited, 167 New Bond Street, London, W1Y 0AR, U.K.

The Respondent: Canlan Computing, 122 Mountbatten Drive, Hamilton, Ontario, L9C 3V5, Canada. Administrative, technical, zone, and billing contact for the Domain Name: Sergio DiGiovanni, 420 Barton Street East, Stoney Creek, Ontario, L8E 2L3, Canada.

 

2. The Domain Name and Registrar

The domain name in issue is <asprey.com>, registered by Network Solutions, Inc., 505 Huntmar Park Drive, Herndon VA 20170, United States of America.

The domain name was registered on January 3, 1998.

 

3. Procedural History

(1) The Complaint in Case D2000-1262 was filed on September 25, 2000. A Response was filed on October 21, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified in accordance with the Rules, paragraph 2.a.;

- a Response to the Complaint was filed in due time; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) On October 27, 2000 the Complainant filed Supplemental Filings. On November 1, after the appointment of the Panel, the Respondent wrote to the WIPO Arbitration and Mediation Center requesting that the Supplemental Filings not be considered by the Panelist. The procedural determination on this point is made in section 6 below.

(4) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(5) The date scheduled for issuance of a decision is: November 15, 2000.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

The Complainant, Asprey & Garrard Ltd, is a jeweller of New Bond St, London, England. It holds registrations for the "Asprey" mark in many countries. A non-exhaustive list of its trade mark registrations include the following:

UK B1223861

MISS ASPREY

UK 1525530

ASPREY

UK 2138225

ASPREY A (stylised)

UK 2170444

ASPREY & GARRARD (stylised)

UK 2217 386

ASPREY & GARRARD THE CROWN JEWELLERS LONDON (stylised)

UK 972000

ASPREY

UK 1525531

ASPREY

UK 972001

ASPREY

UK 1193616

MISS ASPREY

UK 972002

ASPREY

UK 972003

ASPREY

UK 972004

ASPREY

UK 972005

ASPREY

UK 1525532

ASPREY

UK 2123002

ASPREY

UK 2140783

ASPREY

UK 972006

ASPREY

UK 2243353

ASPREY

UK 2243421

ASPREY & GARRARD (stylised)

EC 483362

ASPREY

EC 585562

ASPREY A (stylised)

EC 948133

ASPREY & GARRARD

EC 1431071

ASPREY & GARRARD THE CROWN JEWELLERS LONDON (stylised)

US 2336627

ASPREY

US 2295152

ASPREY

US 2320207

ASPREY

US 2271803

ASPREY

US Serial No 75556225

ASPREY (stylised)

US Serial No 75611065

ASPREY & GARRARD

US Serial No 75611097

ASPREY & GARRARD (stylised)

US Serial No 76072030

ASPREY & GARRARD THE CROWN JEWELLERS LONDON

US 0532072

ASPREY (stylised)

US 0543276

ASPREY (stylised)

US 0529133

ASPREY (stylised)

Its web site is found at www.asprey-garrard.com.

The Respondent is a computer company operating in Hamilton, Ontario, Canada. Its primary web site is found at www.canlan.on.ca.

 

5. Parties’ Contentions

The Complainant asserts:

- The Respondent's domain name is identical or confusingly similar to the Complainant's "Asprey" marks.

- The Respondent has no legitimate interest or rights in the domain name.

- The Respondent registered <asprey.com> and is using it in bad faith, evidenced by the (presumed) awareness of the Complainant’s marks, the absence of use of the domain name for an extended period, the absence of any commercial business under this name on the part of the Respondent, an offer to sell the domain name, the prevention of the Complainant from reflecting its marks in a domain name, and a pattern of abusive registrations.

- And that accordingly the Panel should order that <asprey.com> be transferred to the Complainant.

The Respondent asserts:

- It concedes that the domain name is identical to the Complainant’s marks.

- The Respondent has a legitimate interest in the domain name, on the basis of the development of a separate business that in future is to use the domain name.

- The Respondent has neither registered in bad faith, nor is it using in bad faith. On the issue of registration, the Respondent submits that the evidence going to legitimate interest in the domain name is also evidence on this point. On the issue of bad faith use, it asserts that absence of use in this case can be adequately explained, and in any event absence of use is not determinative. Respondent asserts that it did not acquire the domain name to sell, and that a change in circumstances cannot be held against it. It asserts that the Complainant is able to reflect its business in its domain name registrations, and that the actions of the Respondent are not intended to disrupt the Complainant’s business.

- And that accordingly the Panel should not order that <asprey.com> be transferred to the Complainant.

 

6. Discussion and Findings

Procedural issues

On October 27, 2000 the Complainant filed Supplemental Filings. On November 1, after the appointment of the Panel, the Respondent requested that the Supplemental Filings be ignored by the Panelist. Under Rule 10(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") a Panel is free to conduct the proceeding in such manner as it sees fit, subject to the requirement in Rule 10(b) of the Rules that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

I conclude that the Parties’ initial filings are sufficient to give both the fair opportunity to present their cases. I have exercised my discretion not to consider the Complainant’s Supplemental Filings.

Substantive issues

Paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy ("the UDRP") requires the Complainant to make out three elements:

(i) The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar; and

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

(iii) The Respondent registered and is using the domain name in bad faith.

I shall take the uncontroversial step of analysing each element in turn.

(i). The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar

The Complainant, Asprey & Garrard, is one of the one of the most famous jewellers in the world, tracing its antecedents back to the master silversmiths of the 18th Century, and formed from the initially separate houses of Asprey and Garrard. The company was incorporated in 1909 and holds trade marks dating from that time. Its trade mark portfolio is extensive, broad, and international in scope, and details of its major registrations are provided above in section 4.

The Complainant holds three British Royal Warrants of Appointment as jewellers to HM The Queen, HM The Queen Mother and HRH The Prince of Wales. It also engages in widespread sponsorship of high-status events and engagements, including the sponsorship of the Ferrari Formula One team, various British Royal engagements, and Hollywood events - such as providing jewellery to Academy Award nominees and for film productions.

In light of this venerable provenance, the Complainant’s history, and the efforts undertaken in promotion, the trade marks ‘Asprey’ and ‘Asprey & Garrard’ qualify clearly as internationally famous marks. The Complainant has established that it has rights in the abovementioned trade marks, and thus has established the first requirement of paragraph 4.a.(i) of the UDRP. The Respondent concedes this issue.

The Complainant asserts that the domain name in issue, <asprey.com> is identical or confusingly similar to the Complainant’s marks. The Respondent concedes this issue.

Though neither party makes specific submissions on this point, there is a technical distinction to be made between the marks for the word ‘Asprey’ which are identical to the domain name, and the marks for the expression ‘Asprey & Garrard’ or "Miss Asprey" which are clearly not identical to the domain name. However, these marks are clearly confusingly similar to the domain name. For the sake of accuracy then, I conclude that the domain name is identical to the Complainant’s "Asprey" marks. I conclude that the domain name is confusingly similar to the Complainant’s "Asprey & Garrard" and "Miss Asprey" marks. The requirements of paragraph 4.a.(i) are satisfied where the domain name is either identical or confusingly similar to the mark or marks in issue. Where the domain name is both, as is obviously the case here, the requirements of the paragraph are satisfied.

I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

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

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It asserts this on the basis that the Respondent’s business is known as "Canlan Computing" and there is no evidence that it has ever been known by the word "Asprey" or any close variant. It further submits that neither the Respondent nor any of its officers has engaged in any commercial enterprise under the "Asprey" name.

The Respondent does not deny these assertions, but claims instead that the registration for <asprey.com> was undertaken for a separate, as yet unrealised, business. The business was for a design firm that was not to be web-based, and which has no obvious connection with the name "Asprey". However, the Respondent provides a number of reasons for choosing the domain name <asprey.com>, and I can give no better account of those reasons than to quote (in pertinent part) from the Response:

"The Respondent has a legitimate interest in the term ‘asprey’…Respondent decided to incorporate a separate, off-web 3-D artistic graphics design division to its business. It decided to use the Osprey hawk as its design. The Osprey Hawk is a Canadian national symbol, as it is found on the Canadian ten dollar bill...The Respondent wanted to attach itself to such a national symbol. However, since the Respondent would be advertising in the Yellow Pages and other directories, it made a corporate decision to replace the "o" in Osprey to an "a", thereby pole vaulting to the beginning of the various advertising media that assemble their clients in alphabetical order" [Response Part V.(ii)]

While the imagination of the Respondent (or its counsel) is to be admired, the reasons given do not, as the Respondent insists, provide "…a reasonable explanation for the selection of asprey.com as a domain name." [Response, Part V.(ii)] The reasons do not stand up to the most cursory examination. Most salient to this examination, the Respondent makes much of seeking to associate itself with the osprey, a Canadian national symbol. Yet, replacing the first letter ‘o’ with the letter ‘a’ renders nugatory the association that was, apparently, so vital to the Respondent. Then there is the assertion that the reason for the change of ‘o’ to an ‘a’ was to improve the listings of the new business in telephone directories and other alphabetical directories. If this was so important, then one might ask why was the business not named ‘AAA Osprey’, ‘Aaaasprey’, or any one of many other listings that would place the listing higher than the one chosen. Finally, much is made of the assertion that the business is to be off-web, but no explanation is given as to why, if this were so, a domain name was important at all.

Then there is the damaging problem of the date of registration and the absence of use till this time. The domain name was registered on January 3, 1998. The "separate, off-web, 3-D artistic graphics design division" still has yet to see the light of day. This business has been contemplated for some time, according to the Respondent, but for various reasons has not yet flowered. Though the issue is one that is the Respondent answers in its response to the "bad faith" claim, it is relevant here. If the Respondent did have a legitimate interest in the domain name, then presumably there should be some reason for the delay in building the business around the domain name. The Respondent suggests that the delay here has been as a consequence of being busy with other pressing business issues. This is not plausible, when considered in light of the unsolicited offer to sell the domain name to the Complainant.

An officer for the Respondent, Sergio DiGiovanni, sent an unsolicited email to the Complainant on or about September 13, 2000. The email indicated that the Respondent was the registrant of the domain name in issue, and indicated that it had an offer to buy the domain name from an un-named buyer, and offered the Complainant a "right of first refusal". In a follow-up message dated September 14, 2000, Mr DiGiovanni refused to name the prospective purchaser, but indicated that they had initially been offered "5 figures" but that this figure had jumped to "6 figures" after informing the prospective purchaser that the Respondent had contacted the Complainant.

Clear evidence of bad faith such as this also goes to the issue of whether the Respondent had a legitimate interest in registering the domain name in the first place. Weighing the absence of use and the evidence of bad faith, against the weak explanation of why the name has not been used, I conclude that the Respondent has no rights or legitimate interest in the domain name.

I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

(iii) The Respondent registered and is using the domain name in bad faith

Which brings us to the final issue, that of bad faith registration and use by the Respondent. The Complainant asserts bad faith registration and use based on a number of arguments, all of which are addressed by the Respondent. Rather than exhaustively recite and analyse each claim, it is simplest to conclude the matter on the basis of the Complainant’s strongest claim.

The Complainant’s strongest claim going to the issues here is that the Respondent acquired the domain name primarily for the purposes of selling it to the Complainant or its competitors. The evidence provided by the Complainant are the two emails detailed in the previous section.

Against this the Respondent argues that whatever its subsequent actions, the domain name was not registered primarily for the purpose of selling it to the Complainant or its competitors. Since the requirements of "bad faith registration and use" in paragraph 4.a.(iii) are conjunctive, it argues that the absence of evidence of bad faith registration is sufficient for the Registrant to avoid the effect of this paragraph. It argues that the UDRP was never intended to extend the concept of "abusive registration" to domain names that become infringing or bad faith registrations, but that at the time of registration were not registered in bad faith. The Respondent therefore argues that subsequent evidence of bad faith use is not sufficient to satisfy the dual requirements of paragraph 4.a.(iii).

This Panel accepts the arguments raised; inasmuch as the general principle that both elements must be satisfied is incontrovertible. However, this does not help the Respondent in this case. In order to be able to make use of this principle there must be some plausible evidence of an absence of bad faith registration. Here we have damaging evidence of bad faith use. These are the emails dated September 13 and September 14, 2000 from Mr DiGiovanni to the Complainant, essentially offering the domain name to the Complainant for a six-figure sum. The Respondent is wise enough not to controvert this evidence, and indeed makes no reference to it at all. But faced with such damning evidence of bad faith use, the evidentiary burden must inevitably pass to the Respondent to show an absence of bad faith at the time of registration. This evidence the Respondent simply cannot muster. It relies on the same thin and unconvincing evidence it used to support its argument that it had a legitimate interest for registration. I dismissed this evidence in relation to the requirements of paragraph 4.a.(ii), and I have no hesitation in rejecting the evidence as implausible as it relates to the paragraph 4.a.(iii) requirements.

I therefore find that the Respondent registered the domain name in bad faith and continues to use the name in bad faith.

The Complainant’s other claims include the assertion that the Respondent has engaged in a pattern of abusive registration, that the Complainant is unable to reflect its trade mark in a domain name, and that the Respondent’s actions are intended to disrupt the Complainant’s business. Having disposed of the requirements of paragraph 4.a.(iii) on the basis given above, it is not necessary for me to rule on these issues.

I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <asprey.com> be transferred forthwith to the Complainant.

 

 


 

 

Dan Hunter
Sole Panelist

Dated: November 14, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1262.html

 

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