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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foreign & Colonial Investment Trust Plc v. 70 Consulting
Case No. D2000-1383
1. The Parties
The Complainant is Foreign & Colonial Investment Trust Plc of Exchange House, Primrose Street, London EC2A 2NY, United Kingdom.
Represented by Willoughby & Partners Solicitors, of The Isis Building, Thames Quay, 193 Marsh Wall, London E14 9SG, United Kingdom.
The Respondent is 70 Consulting, of PO Box 2145, Mishref 40172, Kuwait.
Respondent is not represented.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "foreignandcolonial.com"
The Registrar with which the domain name is registered is Network Solutions, Inc, 505 Huntmar Park Drive, Hernden, Virginia 20170, United States of America
3. Procedural History
3.1 A Complaint was first submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 12, 2000 and October 13, 2000 respectively. An Amended Complaint was submitted to the Center electronically and in hard copy on October 20, 2000 and October 26, 2000 respectively.
3.2 On October 13, 2000 the Registrar verified:
(i) that the current registrant of the domain name is the Respondent;
(ii) that the Registrar's 4.0 Service Agreement is in effect;
(iii) that the domain name is in "active" status;
(iv) Respondent's Administrative Contact, Technical Contact, Zone Contact and Billing Contact is Domain Consulting of PO Box 2145, Michref, Kuwait KW.
3.3 On October 24, 2000, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On October 24, 2000, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows.
(i) by post and by e-mail to Respondent, the Administrative Contact, the Billing Contact and the Technical Contact;
(ii) by e-mail to Respondent and to the postmaster at the domain name.
3.4.1 The record shows that:
(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (B), (ii)(A), (ii)(B) and (iii) of the Rule 2(a);
(ii) the domain name did not resolve to an active web-site;
(iii) Respondent has not notified any preferred address to WIPO Center;
(iv) A Response has been filed.
3.4.2 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied, and that there has been actual service on Respondent.
3.5 The Administrative Proceeding commenced on October 24, 2000 and the Response was timely filed on November 10, 2000 by e-mail and on November 14, 2000 in hardcopy.
3.6 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on December 4, 2000.
3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Amended Complaint and the Response.
4. Factual Background
4.1 Complainant is a United Kingdom corporation founded in 1868 and carries on a large scale investment management business. It manages over 200 funds with a total value of 28 billion Pounds. Complainant contends that it has continuously traded in the United Kingdom under the name "Foreign and Colonial" since its foundation. Complainant claims to have established a valuable reputation and extensive goodwill in the trade mark "Foreign and Colonial" as a result of its substantial use.
4.2 Complainant is referred to as "Foreign & Colonial" in the Financial Times, "FT MANAGED FUNDS SERVICE" (Complaint Annex 4).
4.3 Complainant contends that the Financial Times Newspaper is widely available in many countries including Kuwait.
4.4 Complainant is referred to as "Foreign & Colonial" in press releases and advertisements in newspapers, magazines and posters distributed by Complainant (Complaint Annex 5).
4.5 Complainant is the registered proprietor of several trade marks consisting of the words "Foreign and Colonial" or "Foreign & Colonial" logo in the United Kingdom under Nos. 1283946, 1486024, 2101140, 2132072. Community trade mark 503425 and US Trade Mark Registration 75285209 – "Foreign Colonial", (Complaint Annex 3).
4.6 Complainant has extensively advertised its services under the names "Foreign and Colonial" and "Foreign & Colonial" with an average advertising expenditure over the past five years of in excess of 1 million Pounds.
4.7 Complainant's affiliate, Foreign and Colonial Management Ltd, is the registrant of the domain names "foreign&colonial.co.uk" and "fandc.co.uk" (Complaint Annex 7).
4.8 No information is available in relation to Respondent save that it appears to be resident in Kuwait and is the registrant of several domain names, many of which consist of, or include the names and/or trade marks of well-known companies (Complaint Annex 9). No information is available as to the legal personality of Respondent and no individual is identified with it in the whois database, in its correspondence with the Complainant's agent or in the Response.
4.9 In July 2000 Complainant's commissioned an enquiry agency to investigate the circumstances of the registration of the domain name and in the course of that investigation a chain of e-mail correspondence occurred between one Doug Reynolds and "Domain Administrator" at the domain. In the course of that correspondence:
(i) Reynolds enquired whether the domain name was for sale;
(ii) Domain Administrator replied that the domain name was registered for use as a stamp and coin trading web-site rather than for resale, and that
"we don't have a price in mind for the domain, but saying that, we would be happy to consider any offers or suggestions that you might have".
(iii) Reynolds replied with an offer of one thousand US dollars;
(iv) Domain Administrator replied that
"the domain wasn't registered for resale and we do have a site in development so to be honest I don't really feel that it'd be worth selling the domain on at that price. Saying that, (if) you've got any other suggestions for our site then of course please let me know."
(v) Reynolds replied asking
"how much you feel it would be worth"
(iv) Domain Administrator replied that according to www.greatdomains.com the average resale price for dot com names is $39,970.00 and that
"if you would be willing to match this amount then we would be willing to transfer the name to either you or your company".
(Response pages 5 to 7 – Complaint Annex 9).
There appears to be no dispute as to the facts of this chain of correspondence.
The parties differ as to the construction to be placed upon it.
4.10 At the time of the above correspondence the domain name resolved to a partly constructed web page (Complaint Annex 10) but does not now appear to resolve or point to an active web-site.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar. Registrar's current policy, set out in its 4.0 Service Agreement, is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name 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 interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. Parties Contentions
6.1 Complainant contends the domain name is identical with Complainant's registered trade marks 1283945 and 1283946 "Foreign and Colonial" and is confusingly similar to its registered trade marks 1486024, 2101140, 2132072 and Community trade mark EM503425 "Foreign & Colonial" and "Foreign Colonial".
6.2 Complainant contends that Respondent has no rights or legitimate interests in the domain name.
6.1.1. Complainant asserts that Respondent is not authorised to use Complainant's trade marks and Respondent does not itself hold any registered trade marks corresponding to the domain name and does not appear to be actively trading under or by reference to the domain name.
6.1.2 Complainant contends that Respondent has produced no evidence of use or demonstrable preparations to use the domain name or any corresponding name in connection with the bona fide offering of goods or services before notice of the dispute. Complainant contends that the originally prepared page was a "dummy" page and was set up as a sham in an attempt to show evidence of use or preparations for use.
Complainant further asserts that Respondent is not known by the domain name and that it cannot claim to be making a legitimate non-commercial or fair use of it.
6.3 Complainant asserts that Respondent has registered and is using the domain name in bad faith.
6.3.1 Complainant contends that the domain name was registered or acquired primarily for the purpose of selling the domain name to Complainant for consideration in excess of Respondent's out of pocket costs directly related to the domain name. Complainant refers to Respondent's offer to transfer the domain name for the sum of $39,970.00.
6.3.2 Complainant further contends that the domain name was chosen to intentionally attempt to attract for financial gain, Internet users to the Respondent's web-sites by creating a likelihood of confusion with Complainant's marks.
6.3.3 Complainant contends that the domain name was registered by Respondent in order to prevent the Complainant from reflecting the mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. Complainant points to Respondent's registration of other domain names including well-known trade marks including:
6.3.4 Complainant further contends that under English law, registration of third parties' well-known marks as domain names constitutes trade mark infringement and passing off irrespective of whether a site is active or not, and cites the decision of the Court of Appeal in Marks & Spencer & Others v. One in a Million & Others  1FSR1.
6.4 Respondent denies that the domain name is identical to or confusingly similar with Complainant's trade marks.
6.4.1 Respondent contends that:
Complainant has demonstrated reputation and goodwill only in the field of investment management in the United Kingdom, whilst Respondent has "to a limited extent" associated the domain name with the exchange of foreign stamps and coins. Complainant has not therefore established the underlying basis of proving infringement or the tort of passing off. Respondent further distinguishes the domain name from Complainant's trade marks by the inclusion of the suffix ".com" in the domain name and the inclusion of a device or logo as part of the registrations of the mark "Foreign & Colonial".
6.4.2 Respondent asserts rights or legitimate interests in the domain name based on its registration and payment of the registration fee. Respondent contends that it has not used the domain name in any way which conflicts with the rights or interests of any other party. Respondent contends that it has not sought to extract money from Complainant or to misappropriate Complainant's goodwill.
6.4.3 Respondent denies that it has registered or used the domain name in bad faith. Respondent contends and asserts that:
(i) the domain name was registered for use as a site for the exchange of foreign and colonial stamps and coins;
(ii) it had no intention of attempting to attract Internet users to its web-site for commercial gain or otherwise by creating a likelihood of confusion with Complainant's name or trade marks;
(iii) it commenced the development of a stamp and coin exchange web-site and Complainant's investigations were the main cause of cessation of further work on the site;
(iv) Complainant "coerced" Respondent into quoting a value for the domain name and the covert nature of Complainant's actions have caused harm to the development of the web-site;
(v) Respondent denies that the exchange of e-mails between it and Complainant's investigator demonstrates that the domain name was registered primarily for the purpose of resale and contends that the exchange of e-mails demonstrates the reverse, and points to the specific statement of Respondent that the domain name "was not registered for resale";
(vi) Respondent further denies registering the domain name to prevent Complainant from reflecting its trade marks in a corresponding domain name, and points to the availability to Complainant of registration of its trade marks in other top level domains and in country code domains;
(vii) Respondent denies registering the domain name in order to compete with Complainant and asserts that it has not used the domain name in any way that could be considered to compete with Complainant;
(viii) Respondent denies attempting to attract commercial gain by registration of the domain name or creating a likelihood of confusion with Complainant's trade marks or web-site;
(viiii) Respondent intended to make legitimate and fair use of the domain name without infringing Complainant's marks or otherwise misleading consumers;
(x) Respondent further contends that if there is any doubt as to any part of the Complaint it should be dismissed.
7. Decisions and Findings
Identical or Confusingly Similar Trade Marks
7.1 It is well established that the running together in a domain name of words comprising a trade mark does not serve to distinguish the domain name from the trade marks, see World Wrestling Federation - Case D2000-0001. The addition of ".com" does not alter the domain name, it merely serves to specify the domain.
The fact that Respondent claims to have adopted the domain name for use in a business different from that of Complainant does not affect the question of identity of the trade mark and the domain name, nor is that identity affected by the fact that Complainant is located in the United Kingdom, whilst Respondent appears to be located in Kuwait. Complainant's evidence establishes that Complainant's name and mark are notorious and since the ".com" domain is not limited by geographic boundaries, confusion between Complainant's trade mark and Respondent's domain name is unaffected by geography.
The Panel finds that the domain name is identical to Complainant's trade mark "Foreign and Colonial". The Panel finds further that the domain name is confusingly similar to Complainant's "Foreign & Colonial" and "Foreign & Colonial" logo trade marks.
The Panel therefore finds that the domain name is identical or confusingly similar to trade marks or service marks in which Complainant has rights.
Respondents Rights or Legitimate Interests
7.2 Respondent asserts rights or legitimate interests in the domain name by reference to the fact that it was the first to register the domain name and alleges that it did so with the intention of using the site in connection with a business in the exchange of foreign and colonial stamps and coins. Respondent has registered the domain name since April 10, 1999 but appears to have made little progress in the development of a site for that purpose.
Respondent's implied assertion that its work on the site was discontinued because of Complainant's investigators covert enquiries is unconvincing, having regard to the fact that the development of a web-site is not in any sensible way constrained by the domain name which may be associated with it.
In establishing the circumstances required by paragraph 4(a) of the Policy, the onus is upon the Complainant. However, as has been pointed out in many cases, the burden is a shifting one, see for example the decision of the three member panel in John Swire & Sons Limited v. David Huang – WIPO Case D2000-1106. The Complainant having made a prima facie showing the burden of demonstrating rights and legitimate interests and use and registration in good faith shifts to Respondent as the facts relevant to these issues are usually known only to the Respondent.
Respondent's reliance upon its being first to register the domain name and pay the registration fee cannot be determinative of Respondent's rights or legitimate interests in the face of prior third party trade mark rights. Were it to be so, the whole underlying basis for the Policy would be removed.
The Panel finds unconvincing Respondent's submissions with respect to its proposed use in relation to a site for the exchange of foreign and colonial stamps and coins. Respondent has failed to produce any evidence by way of business plan, site development outlines or otherwise, to support its bald assertions of such purpose. Respondent's self-serving statements in its correspondence with Complainant's agent have the appearance of a carefully constructed attempt to lay the basis for future submissions in answer to a complaint under the Policy. The Panel is unable to find in Respondent's submissions any convincing demonstration of rights or legitimate interests by reference to any of the circumstances enumerated in paragraph 4(c) of the Policy or otherwise.
The Panel therefore finds that Respondent has failed to demonstrate any rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
7.3 Complainant asserts, and Respondent strenuously denies, that the circumstances indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for valuable consideration in excess of its out of pocket costs. Respondent points to the fact that the first approach did not come from it, but rather indirectly from Complainant through its investigating agent. It further points to the e-mail correspondence in which it stated that the domain name was not registered for the purpose of resale. As noted in paragraph 7.2 above the Panel finds those statements unconvincing.
Whilst this is not a case in which the purported negotiations for sale were initiated by Respondent, the correspondence between Respondent and Complainant needs to be viewed in the light of all of the surrounding circumstances. The demonstrated fact that Respondent has established a bank of domain names consisting of the names or marks of well-known corporations strongly suggests that Respondent holds those names for sale and that, cognizant of the provisions of paragraph 4(b)(i) of the Policy, Respondent has adopted a "wait and see" policy rather than one of actively marketing the names. Again, Respondent's absence of any but token evidence of attempts at legitimate use of the domain name in pursuit of its alleged intention to establish an exchange site for foreign and colonial coins, has the appearance of a sham and fails to support its contentions that the domain name was registered with that intent. The Panel is therefore of the view that Respondent has failed to discharge the shifting burden which was upon it in this case. The Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are established and that therefore the trade mark was registered and is being used in bad faith.
Whilst it is unnecessary to do so, the Panel further finds that, on the evidence before it, the domain name was registered in order to prevent Complainant from reflecting its trade marks in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. The fact that it remains open to Complainant to reflect its trade marks in names in other domains does not answer the question as to whether or not the domain name was registered in order to prevent Complainant from registering the name in the ".com" domain. Respondent's registrations of Complainant's trade marks in the most important commercial domain denies its access to that domain and serves as a means of inducing Complainant to deal with Respondent in respect of it. Respondent's several registrations of the names and marks of other well-known companies clearly indicates a pattern of such conduct and thus satisfies the provisions of paragraph 4(b)(ii) of the Policy.
The Panel therefore finds that the domain name was registered and is being used in bad faith.
The Panel finds and decides:
(i) that the domain name is identical or confusingly similar to the trade mark or service mark in which Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith;
(iv) that the domain name should be transferred to Complainant.
Dated: December 17, 2000