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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kossway Automatics Ltd v John Cooper,
Case No. D2001-0053
1. The Parties
The Complainant in this administrative proceeding is Kossway Automatics Ltd, a limited company whose registered office and principal place of business is at Iver, Buckinghamshire, United Kingdom.
The Respondent is John Cooper, of Fifield, Berkshire, United Kingdom
2. The Domain Names and Registrar
This dispute concerns the domain names <Kossway.com>, <kossway.net>, and <kossway.org>.
The Respondent registered the domain names with CORE Internet Council of Registrars, Geneva, Switzerland on April 27, 2000.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules’) both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on January 11, 2001 and hardcopy on January 16, 2001. Payment in the required amount to the Center has been made by the complainant.
On January 23, 2001 an amendment to the Complaint verifying the correct domain names registrar was received in electronic format on January 25, 2001.
On January 23, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain names were currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain names and advice as to the current status of the domain names.
On January 24, 2001 there was notification of the Complaint and commencement of the administration proceeding.
On February 12, 2001 a Response in the form of an email was received from the Respondent. The Respondent indicated he needed time to seek legal advise. On February 15 the Respondent was informed that his response failed to meet the requirements of a Response according to the Rules. The Respondent was requested to remedy these deficiencies by February 20, 2001. He did not do so.
On March 7, 2001 a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by March 20, 2001.
4. Factual Background
The Complainant states that it established its business in 1963 and has, since that time, built up a substantial goodwill and reputation in its name and business. The Complainant has, for the last 37 years, been known in the industry and to its customers as "Kossway".
The Complainant states that its company is well-known within the games and amusement equipment industry and it has been a member of BACTA, the British Amusement Catering Trades Association, for over twenty-five years.
When one attempts to visit the site kossway.com the following (non-printable) message appears on screen: "Internet Explorer cannot open the Internet site http://b.com. A connection with the server could not be established".
When one attempts to visit the site kossway.net the following (non-printable) message appears on screen: "Internet Explorer cannot open the Internet site http:///. The parameter is incorrect". A message in the same terms appears when one attempts to visit the site kossway.org.
5. Parties’ Contentions
The Complainant alleges the following:
The Complaint states that since it began trading in 1963, the Complainant has supplied gaming and amusement equipment in London and its surrounding counties and throughout the south of England and the West Country region.
The Complainant says that it has built up a substantial reputation and goodwill in the United Kingdom in its name "Kossway". The name is made up of the surnames of the Complainant's two founders, Mr Nat Koss and Mr Freddie Conway, the father of Mr Paul Conway who is the current Managing Director of the Complainant.
The Complainant states that during the period of almost thirty eight years since it commenced its business, the Complainant's annual turnover has steadily increased. During the period 1989 to 2000 the Complainant's annual turnover doubled from a figure of Ј2,416,159 in 1989 to Ј4,895,538 in 2000. Trading turnover for the year ending 31 January 2001 is likely to exceed Ј5,500,000.
The Complainant claims that it has held a bank account at the same branch of Barclays Bank plc in Watford, England for over twenty years and that it has a sound and reputable business.
The Complainant says that it affixes two labels to each of its machines supplied to its customers. The first label indicates the Machine No. and the Serial No. The second label provides information for the Complainant's customers with a contact number for sales and service. Both labels prominently contain the name/mark "Kossway".
The Complainant claims that its efforts in marketing and sales have resulted in an established association between the name "Kossway" and the Complainant's business in the minds of the public. The Complainant says that it has acquired a substantial reputation and goodwill in its business and the name "Kossway". As indicated above, "Kossway" is affixed to machines supplied by the Complainant; and also to various promotional materials. In this sense it appears to function as a common law trade mark, for goods and/or services and as a business name identifying the entity Kossway Automatics Ltd.
The Complainant states it is also anxious to contact potential new clients by affixing a domain name to its machines. It notes that the most obvious domain names to register are the three names which are the subject of this complaint, together with the domain name "kossway.co.uk". On discovering that all these names had been registered by the Respondent, the Complainant asserts it had no choice but to register alternative names in order to establish any presence at all on the internet. The Complainant therefore registered the domain names <kosswayautomatics.co.uk> and <kosswayautomatics.com> on May 5, 2000. These websites became active in December 2000.
No amended response was received from the respondent.
However, a letter was posted to the Complainant on February 7, 2001 offering to resolve this dispute. An e-mail enclosing a copy of this letter was also sent to WIPO.
It is alleged that the Respondent has transferred the websites to The Cancer Foundation Research Fund. The Respondent states in correspondence that if The Cancer Foundation Research Fund receives a donation, he will transfer the domain names to the Complainant.
There is no evidence that the offer has been taken up or that subsequent negotiations have taken place.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain names are identical or confusingly similar to the trade mark; and
(ii) The respondent has no right or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical or Confusingly Similar
As discussed below, the Complainant asserts that its efforts in marketing and sales have resulted in an established association between the name "Kossway" and the Complainant's business in the minds of the public. The Complainant also asserts that it has acquired a substantial reputation and goodwill in its business and the name "Kossway". It is clear from the way the Complainant uses the term "Kossway" that it is as a name or mark designed to identify the Complainant and to distinguish its goods and services from those of others in the industry. "Kossway" is affixed to equipment supplied by the Complainant and to various promotional materials used by it. In this sense it operates as a trade mark, for gaming and amusement goods and/or services. It also appears to function as a business name identifying the entity Kossway Automatics Ltd.
On the evidence filed, Kossway represents a combination of part of the surnames of the Complainant's two founders, Messrs Koss and Conway. As such, the mark/name appears to be a newly coined word without a specific meaning, which would appear, on the evidence, to refer exclusively to the Complainant and its goods/services.
While the Complainant's business is restricted to London and the surrounding area, there is clear evidence that the Complainant company is a longstanding operator in the games and amusement equipment industry in that region and that it has exposed the Kossway name and mark to at least those involved in this industry, for many years.
The panel concludes that the disputed domain names are identical to a name and trade mark of the Complainant.
No Right or Legitimate Interest
The Respondent, it seems, is not making non-commercial or fair use of the domain names or indeed any use at all. The Respondent is however a director of a company Slot Leisure Services Limited and, which it is alleged, is a competitor of the Complainant.
This allegation has not been denied by the Respondent and accordingly it is accepted as correct.
The only substantive evidence from the Respondent is a letter dated February 7, 2001 addressed to Mr Conway of the Complainant company. In that letter, Mr Cooper states " I am now not interested in these sites and will give them to you free of charge on the condition that you donate a reasonable sum to the above charity". The charity referred to is The Imperial Cancer Research Fund.
The legitimacy of such a so-called loan to The Imperial Cancer Research Fund will be dealt with below. However, it is clear from this exchange that the Respondent does not claim to have any right or legitimate interest in using the domain names and as a direct competitor it is unclear as to whether and if so how any such right or interest might exist. Accordingly, it is found this ground is made out.
Registration and Use in Bad Faith
As a direct competitor, undoubtedly knowing of the existence and activities of the Complainant, it is found, in the absence of denial, that the registration of the domain names was in bad faith. The so called "loan" of the domain names to The Imperial Cancer Research Fund, while arguably laudable in some respects, does not amount to good faith use of a domain name to which that party would not otherwise be entitled.
The Complainant alleges that the domain names were registered primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from registering the domain names in order to make legitimate use of them. The Complainant has offered to buy the domain names from the Respondent at a price of Ј600, which is in order to cover the costs of the Respondent. It is alleged, and not denied, that the Respondent has sought to impose "unreasonable and unacceptable conditions" on the acceptance of the offer and this is an attempt to gain an unfair advantage. Part of the inducement to settle appears from the evidence to be for the Complainant to postpone installation of equipment at a facility, which it seems, owes money to the company Slot Leisure Services Ltd.
This, it is found, is use of the domain names for a collateral commercial purpose which cannot be characterised as proper and in good faith.
In view of the above, the Complainant is found to have made out its case on all grounds and is entitled to relief.
The domain names should be transferred to the Complainant.
Dated: 20 March 2001