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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Logica plc and Logica UK Limited v. CPIC Net

Case No. D2000-1566

 

1. The Parties

Complainants: Logica plc and Logica UK Limited, Stephenson House, 75 Hampstead Rd, London NW1 2PL, United Kingdom. The Complainant is represented by Mr. Nick Rose and Ms. Lousia Albertini of Field Fisher Waterhouse, 35 Vine St, London EC 3N 2AA UK.

Respondent: CPIC Net, 15 5th Street, Closter, NJ 07624 USA.

 

2. The Domain Names and Registrar

Domain Names: "logica-pdv.com" and "logicapdv.com"

Registrar: Network Solutions Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA

 

3. Procedural History

The Complainants e-mailed a complaint to the WIPO Arbitration and Mediation Center (the Center) on November 13, 2000, about the respondent's domain name. The Center acknowledged the complaint on November 16, 2000. The Complainants' submission, in hard copy, was received by the Center on November 20, 2000, and complied with the ICANN Rules and Supplementary Rules including the appropriate fee payment.

The Center sought verification of the disputed domain names from Network Solutions Inc. (NSI) on November 17, 2000. NSI's verification was received on November 21, 2000, confirming the disputed domain names are registered in the name of the Respondent, the status, contact information and the service agreement under which the registration was made -Network Solutions 5.0 Service Agreement.

The Center communicated the complaint to the Respondent on November 22, 2000, and sent copies to the Complainants' representative, ICANN and Network Solutions. The Center’s communication informed the Respondent of the administrative procedure and that the last day for a response was December 11, 2000. The consequences of failing to respond by the due date were set out in the communication.

The Respondent did not reply by the due date and the Center sent a Notification of Respondent Default on December 14, 2000.

The Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence to the Center on December 18, 2000, and was formally appointed on January 10, 2001.

The Panel has not received any additional submissions. The proceedings were conducted in English and the Panel's decision is scheduled for issuance on January 24, 2000.

 

4. Factual Background

The Complainants are two companies which represent the Logica group. They are widely known in the IT services sector. Logica plc is an UK public listed company and a FTSE 100 company. It specializes in information technology consultancy, software developments and systems integration and associated system training and maintenance. It was established in 1969, and operates worldwide. Logica plc and its subsidiaries had a turnover of Ј847 million in 1999-2000. It employs 8200 staff in 24 countries. Logica UK Limited is the main operating entity of the Logica group in the UK.

Through their worldwide presence the Complainants have built up considerable recognition of their name and trademarks. The Complainants' seven registered trademarks in the UK and the USA cover seven different classes of goods and services and date from 1984, in both countries.

On October 5, 2000, the Complainants' proposed acquisition of a leading German IT services company (pdv Unternehmensberatung GmbH - commonly known as pdv), was announced in a press release. On the same day the Respondent registered the disputed domain names.

The Complainants first became aware of the disputed domain name "logica-pdv" on about October 20, 2000. On October 25, 2000, the Complainants' representative wrote to the Respondent about the Logica trademarks and sought the assignment of the domain name to the Complainant. Mr. Syed Hussain, a representative of the Respondent, contacted the Complainants' representative explaining that the Respondent was in the business of selling and buying domain names and offered to sell "logica-pdv" but without nominating a purchase price. When asked if he was seeking more than the costs of registration he answered "of course".

On October 26, 2000, the Complainants' representative declined the offer to purchase the domain name. In the Respondent's e-mail reply of the same day an amount of $US 1200 was sought for both the "logica-pdv" and "logicapdv" domain names. (This was the first time the Complainants were aware that there were actually two domain names in dispute).

A Whois investigation by the Complainants' representative revealed that the Respondent owns in excess of 50 domain names including names of other well-known businesses.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that:

- The disputed domain names are identical or confusingly similar to the trademarks of Logica.

- At no time did they authorize the Respondent to provide goods and services using the Logica name or trademarks.

- By registering the disputed domain names on the same day as the Complainants' press release the Respondent was taking advantage of the distinctive character and reputation of the Logica name and trademarks and was appropriating the goodwill of the Complainants which resides in the name and trademarks.

- The registration of the disputed domain names constitutes an instrument of deception.

- The Respondent's registration of the disputed domain names incorrectly implies that the Respondent is entitled to register and hold the domain names.

- The Respondent's registration of over 50 domain names including many well known businesses is evidence that there is a pattern of bad faith conduct.

- The use of the domain names by the Respondent infringes the Complainants' trademarks and would take unfair advantage of and would be detrimental to the distinctive character and repute of the trademarks and would be likely to lead to confusion.

- The facts of the dispute are similar to those in the cases of the Chase Manhattan Corporation and Robert Fleming Holdings Limited v Paul Jones (WIPO Case no. D2000- 0731), Sampo Insurance Company plc and Leonia plc v Caspar Callerstrom (WIPO Case No. D2000-864) and Sampo Insurance Company plc and leonia plc v FL Citigroup, Inc (WIPO Case No. D2000-0865). The decision in each of these cases was to transfer the disputed domain name to the Complainant.

B. Respondent

The Respondent failed to provide any response.

 

6. Discussion and Findings

In accordance with Rule 5 (e), the Panel will decide the dispute based on the complaint as the Respondent has not submitted a response and no exceptional circumstances have been brought to the Panel's attention.

In accordance with the UDRP, the Complainants must prove that: (i) the Respondent's domain names are identical or confusingly similar to a trademark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the Respondent's domain names have been registered and are being used in bad faith.

 

(i) the Respondent's domain names are identical or confusingly similar to a trademark in which the Complainants have rights.

The disputed domain names have two components, that is, "logica" (the Complainants' trademark which is common to both) and "pdv" or "-pdv", (which is the common name of the German company subject to the proposed acquisition by the Complainants). The common component, "logica", is identical to the Complainants' trademarks. However, the letters "pdv" and "-pdv" are not associated with any of the Complainants' registered trademarks. It is unlikely, nor was it contended, that any common law trademark rights yet accrue to the Complainants in the composite word or the letters "pdv". Consequently, it is not possible to find the disputed domain names are identical to a trademark(s) in which the Complainants have rights.

Whether the disputed domain names are confusingly similar requires considering what the overall impression is, bearing in mind the dominant components of the domain name and whether the domain names would be considered perplexing to a customer or potential customer trying to locate the Complainants on the Internet. While there are a number of WIPO cases where the secondary component of the domain name can be dismissed as generic or descriptive, this cannot be said for the letters "pdv" or "-pdv". Nevertheless, in the Panel's view these letters are subsidiary and it is the word "logica" which dominates the disputed domain names. Also, in the Panel's view the disputed domain names would be perplexing for the Complainants' customers and potential customers. Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants' trademarks.

 

(ii) the Respondent has no rights or legitimate interest in respect of the domain names.

From the information available the Respondent's business is the buying and selling of domain names. With respect to the domain names there is no evidence of their use in connection with offering bona fide goods or services. "Logica" and "pdv" are not names by which the Respondent is known and the Respondent is not making any legitimate non-commercial or fair use of the domain names. Therefore, in the Panel's view the Respondent has no rights or legitimate interest in respect of the domain names.

 

(iii) the Respondent's domain names have been registered and are being used in bad faith.

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in 4 b (i) of ICANN's Policy. The policy states, inter alia, that evidence of registration and use in bad faith is present if the circumstances indicate that the registration of the domain name was primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs related directly to the domain name.

The Respondent's e-mail of October 26, 2000, seeking $US 1200 establishes that valuable consideration in excess of out-of-pocket costs was sought. There is no evidence that the domain names in dispute were used in any other commercial sense. However, the offer for sale of the domain names is sufficient to equate to "use". This interpretation of "use" is supported in a number of cases involving domain name disputes (see Panavision International, LP v. Dennis Toeppen et al., 141 F.3d 1316 (9th Cir. 1998); WIPO Domain Name Dispute Case No. D99-0001 World Wrestling Federation Entertainment, Inc. v. Michael Bosman; WIPO Domain Name Dispute Case No. D2000-0001 Robert Ellenbogen v. Mike Pearson; and WIPO Domain Name Dispute Case No. D2000-0174 Interep National Radio Sales, Inc. v. Internet Domain Names, Inc.).

In addition, there is evidence that the Respondent has registered over 50 domain names including many well-known business names. In accordance with Rule 4 b (ii) such a pattern of conduct constitutes bad faith. Finally, similar activities of the Respondent have been documented in the WIPO Case D2000-1214. In that case the Respondent registered the domain name Bodyshopdigital.com within 24 hours of the announcement by the Body Shop of the creation of a joint venture to be known as The Body Shop Digital. In that case the Panel decided that the Respondent's domain name should be transferred to the Complainant because it was confusingly similar to the Complainant's trade marks, that the Respondent had no rights or legitimate interest in the domain name and that it was registered and used in bad faith. WIPO Cases No. D2000-0731, D2000-0864 and D2000-0865 are also relevant.

In view of the above and in accordance with the Uniform Dispute Resolution Policy [paragraph 4 b (i) and (ii)], the Panel finds that the Respondent registered and used the disputed domain names in bad faith.

 

7. Decision

In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain names are confusingly similar to the Complainants' trademarks, the Respondent has no rights or legitimate interests in respect of the domain names and the Respondent's domain names have been registered and are being used in bad faith. The Panel requires the Respondent to transfer the domain names to the Complainants.

 


 

Ross Wilson
Sole Panelist

Dated: January 17, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-1566.html

 

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