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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Asprey and Garrard Ltd. v. DJV Associates

Case No. D2000-1754

 

1. The Parties

The Complainants are Asprey and Garrard Ltd., a limited company incorporated in United Kingdom, whose registered office is at 167 New Bond Street, London W1Y 0AR,United Kingdom. In this case they are represented by Mr. James Sullivan of the law firm Dechert in London.

The Respondents are DJV Associates with a contact address at Rose Cottage, Ketton Street, Oakham, Rutland, LE15 8TH,United Kingdom. The Administrative Contact is Denise Strain of the same address, and the Technical Contact is Active ISP of P O Box 70, Bogerud, Olaf Helsetsvei 6, 0621 Oslo, Norway.

 

2. The Domain Names and Registrar

The domain names upon which this Complaint is based are: <aspreyandgarrard.com>, and <aspreyandgarrard.net>.

The Registrar of the domain name as at the date of the Complaint was Melbourne IT, a division of Melbourne IT Limited d/b/a Internet Names Worldwide of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia (hereinafter "Melbourne IT").

 

3. Procedural History

On December 18, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (hereinafter "the Center") by email pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter "the Policy") of the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") and under the Rules for the Policy implemented by ICANN (hereinafter "the Rules"). A hard copy of the Complaint was received by the Center a day later on December 19, 2000.

The Complainants stated that copies of the Complaint had been sent on

December 14, 2000 -

- to the Respondents by postal mail to the address given in 1 above,

- to Active ISP Inc by postal mail to the address given in 1 above,

- to the email addresses for the Technical and Administrative contacts shown in the domain name registration data in Melbourne IT’s WHOIS database

- to <postmaster@aspreyandgarrard.com>and <postmaster@aspreyandgarrard.com>by e-mail

- to Melbourne IT by email .

Upon receipt of the email copy of the Complaint, the Center sent to the Complainants

an "Acknowledgement of Receipt of Complaint" on December 19, 2000 by email.

The Center sent a Request for Registrar Verification to Melbourne IT on

December 19, 2000 by email. Melbourne IT responded to the Center’s request by email on December 20, 2000 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain names in dispute, (3) that the Respondents DJV Associates were the current registrant of the domain names in dispute, (4) that the Respondents’contact details were correct, (5) that the Policy applied in relation to the domain names <aspreyandgarrard.com>, and <aspreyandgarrard.net>, and (6) that the current status of the domain names was licensed.

The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondents and to the Complainants on January 5, 2001.

On January 5, 2001 the Center received from the Complainants’ representatives some additional submissions, consisting of copies of correspondence exchanged between the Respondents and the Complainants’ representatives, dated July 28, 2000,

December 31, 2000 and January 4, 2001 respectively.

The only communication from the Respondents which was received by the Center was the copy of a letter dated January 6, 2001 which the Respondents addressed to the Complainants’ representatives in reply to one from them of January 4, 2001. Consequently, the Center sent a Notification of Respondent Default to the Respondents on January 29, 2001 by post/courier, facsimile and email, with a copy to the Complainants.

The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondents and the Complainants on February 8, 2001 via email. A copy was also sent to the Panel on the same date by email.

The Center dispatched a Transmission of Case File to the Panel on February 8, 2001. The Panel received hard copies of this material on February 9, 2001.

All other procedural requirements appear to have been satisfied.

 

4. Factual Background

Activities of the Complainants

The following information was asserted as fact by the Complainants and is not contested by the Respondents.

The Complainants were incorporated as a company on 3 July 1909, which is made up of two companies who formerly traded under the separate names of Asprey and Garrard, and which both have their beginnings in the 18th century as master silversmiths.

The Complainants were previously called Asprey Group Limited

(until 1 September 1998) and Asprey & Company Public Limited Company

(until 17 September 1985). Garrard & Co Limited (incorporated in 1898) is a wholly owned subsidiary of the Complainants.

The Complainants have a history of over 150 years of heritage in the UK as jewellers. They have a world renowned and historic store in Bond Street, London W1, England. In addition they have stores at:

- The Dorchester, 53 Park Lane, London W1A 2HJ

- 725 Fifth Avenue, New York, NY, USA 19922

- The Carlyle, 35 East 76th Street, New York, NY, USA 10021

- The Beverley Hills Hotel, 9641 Sunset Boulevard, Beverley Hills, CA, USA 90210

- 49 Avenue Montaigne, 75008 Paris, France

They also have representative offices at:

- 40 Rue du Rhone, Geneva, Switzerland

- 1404 Al Moosa Tower, PO Box 25238 Dubai, UAE

- Moscow 121002, Plotnikov Pereulok 12 Office 114

Today the Complainants have Royal Warrants of appointment from (1) Her Majesty Queen Elizabeth II, (3) Her Majesty Queen Elizabeth the Queen Mother, and (3) His Royal Highness the Prince of Wales.

In addition the Complainants has acquired reputation and goodwill in the name ASPREY and GARRARD and ASPREY AND GARRARD by among other things:

- Their sponsorship since 1996 of the Ferrari Formula One team. The Complainants has hosted a variety of hospitality events around the Formula One Grand Prix.

- Their support of The Royal Windsor Horse Show in Windsor in England. The Complainants are the principal sponsor of the Royal Windsor Horse Show in 2001.

- The public exhibition of His Royal Highness the Prince of Wales’ watercolours supported by the Complainants marking the 50th birthday of His Royal Highness the Prince of Wales.

- The design of jewellery by the Complainants for the Oscar winning film Titanic, directed by James Cameron.

- The Complainants’ jewellery being worn by the stars of Hollywood. At the 1997 Academy Awards Emily Watson best actress nominee wore one of the Complainants’ diamond suites. Sigourney Weaver, a presenter at the 1997 ceremony wore pieces from the Complainants’ antique collections. Her co-presenter, Claire Danes, wore the Complainants’ Daisy Collection. The Complainants’ Daisy Collection was also worn by Keely Shaye-Smith, partner to Pierce Brosnan.

The Complainants have a web-site at <asprey-garrard.com> which is also used as its email address. This site contains an extensive amount of detail about the business and history of the Complainants, inter alia using the ASPREY, GARRARD and ASPREY AND GARRARD trade marks. A print out of this was produced in evidence.

The Complainants have already successfully recovered the domain name <asprey.com> through an ICANN dispute, Case number D2000-1262.

The Complainants’ Trade Marks

The Complainants own, and have owned for a considerable number of years, a large portfolio of trade mark registrations world-wide for marks including ASPREY, GARRARD, ASPREY & GARRARD and other marks incorporating the words ASPREY and GARRARD. Some of the trademarks are in the name of companies other than that of the Complainants, but which are part of the same ‘group’.

A 170 page Schedule setting out all of the Complainants' trade marks world-wide was annexed to the hard copy of the Complaint.

Activities of the Respondents

The Respondents do not appear to have previously conducted any commercial enterprise or non-commercial activity under the names, ASPREY, GARRARD or ASPREY AND GARRARD, nor are the Respondents commonly known by any of these names.

The domain names in dispute are not being actively used by the Respondents although they are being hosted by Active ISP. No positive action has been taken by the Respondents in relation to the domain names since they were registered on April 4 and 18, 2000, and there is no indication of any future intended use. The web-sites at the domain names are merely holding pages for <activeisp.com>.

The only response to this complaint by the Respondents has been in the form of three letters to the Complainants’ representatives legal advisors. Two of these (dated July 28 and December 31, 2000) were entered into the Complaint as part of an additional submission by the Complainants’ representatives on January 4, 2001, but the third (January 6, 2001) although addressed to the Complainants’ representatives was also copied to the Center. As all three were received after the filing of the Complaint, the Panel must first decide whether or not they should be admitted. However since all three were transmitted to the Panel at the same time as the Complaint, and as they constitute the only ‘response’ from the Respondents, it would clearly be inequitable if they were not taken fully into account.

There is nothing in this correspondence to indicate what are the activities of the Respondents.

 

5. The Parties’ Contentions

The Complainants contend, in their own words, as follows:

"The domain names which are the subject of this Complaint are confusingly similar to the names and trade marks in which the Complainant has extensive legitimate rights. The domain names are also confusingly similar to the Complainant’s domain name <asprey-garrard.com>."

"The Complainant has not licensed or otherwise permitted or authorised the

Respondent to use its trade marks or to apply for any domain name incorporating any such marks."

"The Respondent has not previously conducted any commercial enterprise or non-commercial activity under the name ASPREY, GARRARD or ASPREY AND GARRARD and is not commonly known by the name ASPREY, GARRARD or ASPREY AND GARRARD."

"The Respondents does not appear to have any legitimate interest or rights in the name ASPREY, GARRARD or ASPREY AND GARRARD."

"The Respondent had no legitimate reason for registering the domain name and could not in any event have used it without infringing the Complainant's rights."

"The Respondents has acquired the domain names primarily for the purpose of selling them to the Complainants or to a competitor of the Complainants for valuable consideration considerably in excess of the Respondent's out-of-pocket costs of registration."

"The Respondent (has a) history of cybersquatting in relation to the trade mark LIBERTY OF LONDON (owned by Liberty Plc) (and were) the Respondents in proceedings before WIPO Case D2000-0708.

"By registering the domain names the Respondents is also preventing the Complainants from reflecting is trade mark in all corresponding top level generic domain names."

"By creating a likelihood of confusion between the domain name and the Complainants' trade marks, consumers and internet users are likely to conclude that the web-site is in some way associated with the Complainants. This will ultimately benefit the Respondents (or the ultimate purchaser of the domain name) to the detriment of the Complainants.

It therefore appears that the Respondents has registered the domain name with a view to disrupting the Complainant's business."

"In summary, the domain names were registered, have been and are being used in bad faith."

In their correspondence with the Complainants’ representatives, the Respondents’ made a number of contentions:

(a) they have "no intention of using the name Asprey & Garrard for trading";

(b) they had been approached by interested parties "with regard to selling these domain names";

(c) they were prepared to give the Complainants the opportunity to "enter into negotiations to purchase" both of the contested domain names and, as late as January 6, 2001, they were still "prepared to transfer the contested domain names for a reasonable sum";

(d) they had not infringed the Complainants’ trade marks as they had not "registered either of the names Asprey or Garrard coupled with the word AND";

(e) the name ‘Liberty of London’ (which is referred to in the Complaint as having been the subject of an earlier complaint No. D2000-0708) had been taken illegally from the Respondents and that, as the Complainants’ representatives were acting on behalf of the Complainants in both cases, this fact "infringes our rights to a fair and reasonable outcome of any negotiation";

 

6. Discussion and Panel Findings

Paragraph 4(a) of the Policy states that in order to be successful, the Complainants have the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. The Panel will therefore now consider in detail each of the three elements in paragraph 4(a).

Paragraph 4(a)(i) of the Policy provides:

"(i) your domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights"

The domain names in dispute are: <aspreyandgarrard.com> and <aspreyandgarrard.net>. Most of the trade marks owned by the Complainants consist of the single word ASPREY either in script or capital letters. The Complainants also have registrations of the word GARRARD and – more importantly – of ASPREY & GARRARD. The Respondents retort that this is not the same as their domain names, which have the conjunctive AND between the two proper nouns, instead of the ampersand. But under the Policy, identicality is not the only requirement, the trade mark and the domain name may be confusingly similar. Since an ampersand is just a shorthand way of expressing the word ‘and’, it is clear that, while not visually identical to ASPREY & GARRARD, the name ‘aspreyandgarrard’ is phonetically and conceptually identical to it.

Consequently, the Panel finds that both of the disputed domain names are confusingly similar to the Complainants’ trade marks, and that Paragraph 4(a)(i) of the Policy has therefore been proved.

Paragraph 4(a)(ii) of the Policy provides:

"(ii) you have no rights or legitimate interests in respect of the domain name"

Both of the names ASPREY and GARRARD have, individually, a long and prestigious pedigree, and when the two companies came together, whether by merger or take-over, it must have seemed logical to retain the goodwill in each that had been built up over more than a century by giving the resulting company a name which included both of them. It is quite clear from the history of the ‘group’ that the Complainants are the only entity that can have any rights in the conjoined name. In any case the Respondents have stated that they have no intention of using either of the disputed domain names for trading.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of either domain name, and that paragraph 4(a)(ii) of the Policy has been proved in respect of each of them.

Paragraph 4(a)(iii) of the Policy provides:

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

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith AND use in bad faith. In some cases decided under the Policy, it has been found that it is unnecessary to consider the two limbs of this provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept provided one or more of the other components in the paragraph is present.

Paragraph 4(b) of the Policy, provides that a number of different circumstances can be evidence of bad faith registration and use. The Complainants allege three of them, each of which will now be examined in turn:-

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name, or

In their very first communication to the Complainants’ representatives, the Respondents indicated that not only had they been approached by others regarding the sale of both of the disputed domain names, but that they would be willing to sell them to the Complainants. It is difficult therefore to draw any other inference than that they were taken out with the specific intention of selling them.

(ii) you have 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 you have engaged in a pattern of such conduct; or

The Respondents’ approach to this matter, as displayed even in the limited correspondence received, is clearly that of a cybersquatter. They registered the names for no other reason than to frustrate the Complainants. Furthermore, the libertyoflondon case (WIPO Case No. D2000-0708) is clear evidence of a pattern of such behaviour.

The Respondents object to the fact that the Complainants in this case are using the same firm of lawyers as the Complainants in the above case. However it is difficult to see what can be objectionable in that. The facts are different, the Complainants are different, and doubtless they gave their representatives different instructions. A lawyer should only act on his clients’ instructions, and not on his own behalf. If the Respondents had used the services of a lawyer, presumably they would have used the same one in both cases. It so happens that the Panel is the same in this case as in the libertyoflondon case, but lest the Respondents complain about that, the Panel would like to make it clear that it has approached this case with a clear mind, not prejudiced by the earlier case, which it never referred to.

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

The Panel has already found that the Respondents’ prime purpose in registering the disputed domain names was to sell them, either to the Complainants or to someone else. By definition, there can only be one prime purpose, but nevertheless it seems that the Complainants’ business would be disrupted by the existence of the disputed domain names. There is only one ‘Asprey & Garrard’ and it would be logical for any potential customers or any genuine inquirer who uses the Internet to type in either of the disputed domain names. If they do so, they will mistakenly find the Respondents which will be to their benefit and to the Complainants’ detriment.

Therefore the Panel finds that this paragraph has also been proved.

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site 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 you web site or location or of a product or service on your web site or location.

This paragraph has not been prayed in aid by the Complainants, and in any

case it has not been proved.

 

7. Decision

For these reasons, the Panel decides that the domain names registered by the Respondents are identical or confusingly similar to marks in which the Complainants have rights, and that the Respondents have no rights or legitimate interests in respect of the domain name, and that the Respondents’ domain name were registered and are being used in bad faith.

Accordingly the Panel requires that the registrations of the domain names <aspreyandgarrard.com> and <aspreyandgarrard.net> be transferred to the Complainants.

 

 

David H Tatham
Sole Panelist

Dated: February 12, 2001