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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Peter Tong v. Chris Irving
Case No. D2001-0244
1. The Parties
The Complainant is Peter Tong of London, UK. Represented by Ian Bartlett, Beck Greener, Patent & Trademark Attorneys, 7 Stone Buildings, Lincoln’s Inn, London WC2A 3SZ, UK.
The Respondent is Chris Irving, 29 Brunton Crescent, Carlisle, Cumbria, CA1 2AX, UK.
2. The Domain Name and Registrar
The Domain Name is <petetong.com>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by email on February 15, 2001 and in hardcopy form on February 16, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that petetong.com ("the Domain Name") was registered through Network Solutions, Inc and that Chris Irving ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On February 28, 2001 the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was March 19, 2001. The Center issued to the Respondent a Default Notice on March 20, 2001. No Response was received.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is April 17, 2001.
4. Factual Background
The Complainant is very well known to popular music enthusiasts in the United Kingdom as a music recording artist, performer, disc jockey and radio broadcaster. The name under which he performs and by which he is best known is Pete Tong.
The Complaint sets out in detail the development of the Complainant’s career over the last 18 years and appended to the Complaint is substantial evidence of the Complainant’s fame in his chosen field.
The Domain Name was registered by the Respondent on January 13, 1999. The Respondent is also the proprietor of the domain name <petetong.co.uk>. Neither of these domain names connects to an active website.
In 1999 and again in early February this year representatives of the Complainant approached the Respondent with a view to acquiring the Domain Name from him. On both occasions the Respondent indicated that the price would be at a level in excess of his out of pocket expenses in registering and maintaining the Domain Name. On the first occasion the figure was Ј3,000 and more recently it was an unspecified figure, but in excess of Ј1,000.
In the course of the telephone conversation between the Complainant’s trade mark attorney and the Respondent in February of this year, the Respondent indicated that he had not registered the Domain Name for money, but in the hope that he could encourage the Complainant to employ him for, inter alia, his website design services.
5. Parties’ Contentions
1. The main distinguishing element of the Domain Name is PETE TONG which is identical to the following:
The Complainant’s personal name,
The Complainant’s common law trade mark,
The Complainant’s business and trading name.
2. The Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name. The Complainant has conducted investigations on the internet and by telephone but has been unable to locate any use of the Domain Name or the name PETE TONG or any similar name, by the Respondent. There is no evidence that the Respondent conducts any legitimate business or any business at all, under or by reference to the Domain name or any names or marks containing the element PETE TONG. The Complainant contends that if the Respondent says he intends to conduct any business under the Domain Name, then that business will be a sham for the purpose of attempting to protect the Domain Name from transfer under these or similar proceedings and thereby to increase the value of the Domain Name for sale to the Complainant or third parties. Any such use or intended use would not be bona fide for the purposes of the Policy or these proceedings.
3. The Domain Name should be considered as having been registered and as having been used in bad faith inter alia, for the following reasons:
a. The Respondent is resident in the United Kingdom. The Respondent registered the Domain Name (and the domain name <petetong.co.uk>) in January 1999. As demonstrated above, PETE TONG had, by this date, been widely and intensively used and promoted for the Complainant's entertainment business. By January 1999, the name PETE TONG had become well known in the United Kingdom (and in other countries) as the Complainant’s personal name, his business and trading name and as his trade mark for his entertainment and broadcast services. It must therefore be assumed that when registering the Domain Name (and the domain name petetong.co.uk) the Respondent was aware of the Complainant and his activities and of his right and interest in the name and trade mark PETE TONG. It is not credible that the Respondent might have registered the domain names containing as their main distinguishing element PETE TONG, as a matter of coincidence. It is submitted that in these circumstances, mere registration of the Domain Name constitutes bad faith use and registration for the purpose of the Policy and these proceedings. That the Respondent was aware of the Complainant and had the Complainant in mind when he registered the Domain Name is shown by the previously mentioned telephone conversations between the Complainant's attorney and the Respondent on February 12 when the Respondent stated that he had registered the Domain Name in order to put a "foot in the door" of the Complainant for the supply of "internet services".
b. The Respondent has engaged in a pattern of the conduct complained of in these proceedings, in that he has also registered the domain name, <petetong.co.uk> which again contains as its main distinguishing elements, the Complainant’s personal name, business name and trade mark. This in itself is an indication of bad faith.
c. As stated above, the Complainant operates his own web site at www.essentialselection.com. The Complainant's name and trade mark PETE TONG is indexed on search engines so that a person searching for PETE TONG may in this way find a link to the Complainant's web site. However, while the Complainant is deprived of the most obvious domain name for his business, namely petetong.com, internet users who try but will fail to reach the Complainant's web site using this address may well conclude that the Complainant has no web site, or that the web site is temporarily "down" or non-operational, or that the Complainant is out of business. Such deception will inevitably cause serious harm to the Complainant's business and his reputation. While the Domain Name remains in the hands of the Respondent, the Complainant is prevented from properly promoting, providing information and conducting his business on the Internet using the most obvious address for the purpose namely the Domain Name. The Respondent must have foreseen this in registering and maintaining the Domain Name. This potential for confusion and the resultant damage to the Complainant's business indicates that the registration and use of the Domain Name by the Respondent is in bad faith.
d. The telephone conversation in 1999 between Mr. Bruce Hay and the Respondent, during which the Respondent requested the sum of Ј3000 for the transfer of the domain name, is further evidence of the bad faith registration and use of the Domain Name by the Respondent, to obtain improper financial gain from the Complainant. The Ј3000 sum requested by the Complainant is far greater than the out of pocket expenses incurred by the Respondent in registering the Domain Name.
e. The telephone conversations between the Complainant's attorney and the Respondent on February 12, 2001 are further evidence of the Respondent's improper attempt to obtain financial gain, whether in monetary payment, or payment in the form of profit from the supply of unspecified "internet services", through his use of the Domain Name as a "bargaining chip".
4. In view of the above, it is submitted that the elements set out in paragraphs 4(b) of the Policy apply, including the following:
(i) The Respondent must have registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant (or a third party) and the Complainant must have been recognised by the Respondent as the exclusive owner and user of the identical or virtually identical personal name, business name and trade mark (Policy para. 4(b)(i)).
(ii) The Respondent must have registered the Domain Name in order to prevent the Complainant from reflecting his name and trade mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct by registering the domain name <petetong.co.uk> (Policy para 4(b)(ii)).
(iii) The Respondent must have registered the Domain Name primarily for the purpose of disrupting the business of the Complainant (Policy para 4(b)(iii)).
5. The four criteria set out in paragraph 4(b) of the Policy are non-exclusive. It is further submitted that in accordance with a substantial number of prior decisions under the Policy in this regard, "inaction" along with other factors, can constitute bad faith. It will be noted from the above that the Respondent makes no use at all of the Domain Name or of the name and trade mark PETE TONG other than to obtain financial gain. See in this respect, Bill Withers v Robert Dominico et al, WIPO Case No. D2000-1621 dated January 28,2001 for a review of the prior decisions in this respect. It should be noted that in "Bill Withers" the domain name at stake in that case had been registered on February 16, 2000, less than 9 months before the proceedings in that case were commenced. In their decision, the Panel in that case quite properly found that "The lack of any legitimate, good faith use [during this period] suggests bad faith". In the present case there has been no legitimate good faith use of the Domain Name since the Domain Name was registered more than two years ago. The Panel is therefore justified in finding bad faith use and registration on the part of the Respondent, in view of the Respondent’s inaction during this period.
6. It is further submitted that in view of the foregoing, none of the elements in paragraph 4(c) of the Policy applies:
a. The Respondent conducts no legitimate business or any legitimate offering of goods or services from any web pages established under the Domain Name and has not made any demonstrable preparations to use the Domain Name or any name corresponding to the Domain Name prior to the commencement of these proceedings.
b. The Respondent is not and has never been known by the Domain Name.
c. The Respondent is not making legitimate non-commercial or fair use of the Domain Name.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
The failure of the Respondent to respond does not mean that the Complaint automatically succeeds. The onus is still upon the Complainant to prove the above three elements of paragraph 4(a) of the Policy. Accordingly, the Panel is not required to accept as fact everything that is said in the Complaint and without regard to its plausibility.
Nonetheless, where what is stated in the Complaint is plausible, the Panel is likely to accept it at face value in the absence of any contradiction from the Respondent.
Identical or confusing similarity
The Domain Name is the Respondent’s name with the addition of the generic suffix <.com>. The Complaint amply supports the proposition that the Complainant has a substantial goodwill in the business, which he conducts under and by reference to his name. It is quite clear that if an unauthorised third party were to use the Complainant’s name in the course of business and in a remotely related field of activity, there would be a very real risk that people would associate the unauthorised third party or his business with the Complainant. In such circumstances the Complainant would have a good cause of action in passing off. He can thus be said to have common law rights in his name. His name is a common law trade mark.
The Panel finds that the Domain Name is identical to a trade mark or service mark in relation to which the Complainant has unregistered rights.
Rights or legitimate interest of the Respondent
The Complainant asserts that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Complainant states that he has made enquiries and can find no use of the Domain Name by the Respondent and no business activity conducted by the Respondent under the Domain Name or any name corresponding to it.
The Respondent has stated that the reason he selected the Domain Name was because he knew it was the Complainant’s name and because he wanted to try and encourage the Complainant to employ him as a website designer.
That being so, and the Panel accepts that that is the reason why the Respondent registered the Domain Name, clearly the Respondent has no rights to the Domain Name. Does he nonetheless have a legitimate interest in respect of the Domain Name?
The term "legitimate interest" is capable of a multitude of interpretations wide and narrow in effect. In the context of paragraph 4(a)(ii) of the Policy there are two factors which may assist in identifying the meaning of the term. The first is the juxtaposition of the term to the word "rights" in paragraph 4(a)(ii). There is a logic therefore in reading the term to mean something which is not a right, but nonetheless is something akin to a right. The second is to look at the term in the context of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy. These examples although expressed to be non-exhaustive all embrace the concept of the Respondent or his business or other activity being known or recognised by or conducted under the name in question.
Here the Respondent’s interest in the Domain Name is far removed from all that. He is not known by the Domain Name, nor is any business or other activity conducted by him under the name. He has not produced any evidence of any plans to do any of those things. The Respondent is simply interested to use the Domain Name as a bargaining counter for employment by the Complainant as a web designer. This is a speculative entrepreneurial "interest", the value of which is entirely dependent upon the Complainant’s very real right and legitimate interest in respect of the name.
The Panel finds that the Respondent’s interest in respect of the Domain Name (such as it is) is not a right or legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy.
The underlying facts are not in dispute. In particular, it is not in dispute that the reason the Respondent registered the Domain Name was as a bargaining counter to encourage the Complainant to employ the Respondent as a website designer.
The Panel finds as follows:-
1. The Respondent, at the time he registered the Domain Name, had no intention of using the Domain Name in order to connect to an internet facility of his own.
2. His intention was to trade the Domain Name (either to sell it or to rent it) to the Complainant.
3. The price was to be some form of employment contract whereby the Complainant would contract to use the Respondent’s services as a website designer.
4. The benefit to the Respondent was to be well in excess of his out-of-pocket expenses for registering and maintaining the Domain Name.
5. At the time the Respondent registered the Domain Name he knew that it was the name of the Complainant and he knew that it was a name in respect of which he (the Respondent) had no rights or legitimate interest.
6. In these circumstances, the Respondent’s behaviour in registering the Domain Name for the identified purpose falls within the ambit of paragraph 4(b)(i) of the Policy and constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.
In light of the foregoing, namely the Panel’s findings that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <petetong.com>, be transferred to the Complainant.
Dated: April 17, 2001