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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Press Association Limited v. Connect Support Services Limited
Case No. D2001-0263
1. The Parties
The Complainant is The Press Association Limited of PA News Centre, 292 Vauxhall Bridge Road, London, SW1V 2AE, United Kingdom.
The Respondent is Connect Support Services Limited of 5th Floor, 183 Marsh Wall, London, E14 9SH, United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are:
and the Registrar is: Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on February 19, 2001 [hard copy] and on February 27, 2001 [electronic version]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is March 2, 2001.
On February 26, 2001, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on February 27, 2001, Network Solutions, Inc transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Connect Support Services Ltd and that the contact for both administrative and billing purposes is Derek Green of Connect Services Support Services Ltd.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 2, 2001, this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by March 2, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Connect Support Services Ltd, 5th Floor, 183, Marsh Wall, London E14 9SH.
A Response was received from the Respondent on March, 18 2001 [electronic version] and on March 20, 2001 [hard copy]. On April 25, 2001, Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. However, prior to April 25, 2001, there were the following communications between the Center and the parties.
March 21, 2001. The Respondent wrote to the Center, the material part of the letter reading:
"We therefore formally request cancellation of our registrations in relation to these domain names. Once cancellation has been effected, it is of course open to the Press Association to make their own application to register the domains".
The Respondent denied that it had at any time acted in bad faith, stating that it had decided to use a different name for the international venture in respect of which the domain names in issue had originally been registered.
March 21 [electronic] and March 22 [hard copy], 2001. The Complainant suggested that the Respondent should, in the circumstances, complete the necessary Transfer Registrant Name Change Agreement and that, in the meantime, this administrative proceeding should be suspended.
March 23, 2001. The Center served Notice of Suspension until April 22, 2001.
April 3, 2001. The Complainant wrote to the Respondent providing them with the necessary information for making transfer of the domain names in issue.
April 9, 2001. The Complainant wrote to the Respondent confirming that, as requested by Respondent in its communication of March 21, 2001, the Complainant had made a charitable donation of Ј500.00 to MENCAP. [see, paragraph 4.5 below].
April 19 and 25, 2001. In the light of the Respondent's failure to transfer the domain names in issue, the Complainant requested the Center to re-institute this administrative proceeding.
The Complainant also wrote on April 19, 2001, to the Respondent advising them that, having failed to transfer the domain names in issue, they had made the above request to the Center.
April 27 [electronic version] and May 4, 2001 [hard copy]. The Respondent reiterated in a communication to the Center that it had requested cancellation of the domain names in issue.
May 1, 2001. The Center acknowledged the Respondent's above communication, which it advised would be sent to the Administrative Panel for its consideration.
Having received on May 10, 2001, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 29, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
May 22, 2001. Having received Notice of Appointment of Administrative Panel dated May 16, 2001 the Respondent emailed to the Center observing:
"… we see very little point in the appointment of an Administrative Panel, given that we have requested cancellation of our former registration of the domain names in question".
The Respondent also stated that this Panelist is a partner in a Law firm which had represented the Respondent and its associates in various matters in the recent past. The Panelist's Declaration of Impartiality disclosed that a partner in his Law Firm had opened a file for the Respondent Company on November 16, 2000. The matter never proceeded, the last entry on the file being November 17, 2000. The Panelist did not, therefore, consider any issue of conflict of interest arose in connection with this administrative proceeding.
May 23, 2001. The Center responded to the Respondent in the following terms:
"We further note that in your communication below, you mention your willingness to cancel the domain names, and in this regard, Mr. Perkins, the panelist appointed in this case, has suggested that you transfer the domain names to the Complainant forthwith, in which case no decision will be rendered. If no steps are taken towards the transfer of the domain names, a decision will be rendered on May 29, 2001".
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Since no steps, as requested by the Complainant in the Complaint and in its communication of March 21 & 22, 2001 (above), have been taken by the Respondent to transfer the domain names in issue, this administrative proceeding remains active. Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules and the other communications between the parties and the Center referred to above.
4. Factual background
4.1 The Complainant
The Complainant is the national news agency of the United Kingdom and the Republic of Ireland. It has traded under the name and mark PRESS ASSOCIATION since 1865. It delivers a comprehensive United Kingdom news service, pictures, alerts, weather forecasts, sports news and data into the news rooms of every national and regional newspaper in the United Kingdom, to all significant independent television and radio broadcaster in the United Kingdom and to a wide range of internet websites and platforms. The Complainant also works closely with news agencies in other jurisdictions. The Complainant has operated an internet website since 1995. As illustrative of the extent of that website, for the month of August 1999, alone over 4.5 million page impressions were recorded on that site.
4.2 The Complainant's Trade Mark
The Complainant does not assert registered trade marks for the mark PRESS ASSOCIATION. It relies on its common law rights in that name and mark acquired in relation to its activities over the past 135 years, averring that its reputation under that trade mark is not confined to the news industry only but extends to those using the internet and to the public generally.
As evidence of its reputation in the PRESS ASSOCIATION name and mark, annexed to the Complaint is what is described as an illustrative list of some 670 companies and organisations [United Kingdom and overseas] to which the Complainant provides its news services. Also annexed to the Complaint are letters confirming that the Respondent is generally known as the PRESS ASSOCIATION from Associated Press (New York); the Spanish News Agency; Agencia Efe; the German Press Agency, dpa; Agence France Presse; and the Springer Foreign News Service of Germany.
4.3. The Respondent
The Respondent is an IT service company of which the majority shareholder is a Mr. Adam Afriyie. The Respondent manages certain technological requirements of De Havilland Global Knowledge Distribution plc ["De Havilland"] of the same address. De Havilland describes itself as
"… a rapidly growing company, which provides a subscriber-only service to blue chip customers known as De Havilland Public Affairs Briefing Service, publishing in excess of 1,000 unique items of news within its specialised field each day to its subscribers. It is not a service available to the general public".
De Havilland claims to be the leading provider of indexed political governmental and current affairs in the United Kingdom.
4.4 The Respondent's Domain Names
In addition to the 4 domain names in issue, all registered on June 6, 2000, the Respondent is also the registrant of <press-association.org.uk> and <press-association.co.uk>.
4.5 The History of the Dispute
August 4, 2000. Cease and Desist letters dated August 4, 2000, were sent by solicitors for the Complainant to both the Respondent and to De Havilland. Those letters requested cease of use and transfer to the Complainant of the domain names in issue and the two UK country code domain names listed in paragraph 4.4 above. The Complainant also requested cease of use of, inter alia, the name and mark PRESS ASSOCIATION as a metatag in the website located at the addresses of the domain names.
August 8, 2000. The Complainant sent to both the Respondent and to De Havilland a High Court Claim Form endorsement asserting passing-off by the two UK country code domain names and seeking injunctive and other relief. In default of a satisfactory reply, the Complainant threatened issuance of those proceedings on August 9, 2000.
August 9 & 11, 2000. De Havilland replied on its own behalf and on behalf of the Respondent. Passing-off was denied on the basis that the services of De Havilland on the one hand and the Complainant on the other are
" …. parallel services, rather than in direct competition with each other. The target markets are different, as is the nature of the services offered".
De Havilland stated that they had, immediately in response to the above Cease and Desist letter removed the metatags complained of and diverted the web addresses to blank pages. It described insertion of the metatags - which also included references to the BBC and Reuters - as due to "… a little over enthusiasm by a junior member of staff". Further, they had traced only 3 hits to the websites to which the domain names in issue resolved. The Complainant had, therefore, no real cause for concern. De Havilland however, contested that the Complainants have any exclusive rights to the mark PRESS ASSOCIATION.
"…. other than (arguably) in the UK and Ireland …."
De Havilland explained the Respondent's general practice when registering a domain name not intended for immediate use, was to direct such address to a website of an associate or a customer - in this case, De Havilland.
With regard to the two UK domain names, De Havilland offered to transfer them to the Complainant, asking that in recognition of the expense incurred in registration the Complainant should make a Ј500.00 donation to a charity. As to the 4 domain names in issue De Havilland took the position that the Complainants had no rights to the PRESS ASSOCIATION identity internationally. No offer to transfer them to the Complainant was made, although Mr. Afriyie would contact an officer of the Complainant with a view to resolving any remaining issues.
August 11, 2000. The Complainant replied as follows:
- The offer to transfer the two UK domain names was accepted and the Complainant would make a Ј500 donation to the charity, MENCAP.
- As to the 4 domain names in issue, the Complainant had not included them in the proposed High Court action for passing off, since it intended to seek redress under the Policy.
- Removal of the metatags was noted.
- Compliance with the remainder of the undertakings requested in the Cease and Desist letter was requested by August 14, 2000.
August 14, 2000. De Havilland stated that the transfer process of the two UK domain names had been initiated.
August 16, 2000. Certain undertakings were offered separately by De Havilland and by the Respondent. In so far as the 4 domain names in issue are concerned, the Respondent offered to
"… undertake not to use any of the International Domain Names for the period of three months from today's date, to allow your clients a fair opportunity to initiate the ICANN dispute resolution procedure ("the Procedure") in relation to all or any of them.
If during that three month period your clients initiate the Procedure in relation to any of the International Domain Names, then we further undertake that we will not use any of the International Domain Names in respect of which the Procedure has been initiated for so long as your client actively pursue such procedure, until the Procedure is concluded".
The International Domain Names was the abbreviation for the 4 domain names in issue.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the Respondent has registered as domain names a mark which is identical to the mark PRESS ASSOCIATION in relation to which the Complainant has trademark rights, that the Respondent has no rights or legitimate interests in respect of the domain names and that those domain names have been registered and are being used by the Respondent in bad faith.
5.1.1 Identical or Confusingly Similar
Hence, the Complainant's case is as follows:
- In substance, its trademark PRESS ASSOCIATION and the domain names are identical.
- The use of a hyphen in relation to 3 of them is immaterial.
- Use of the domain names, or any of them, will cause members of the public and persons within the news industry to believe that the websites are in some way associated with or approved by the Complainant.
- The similarity of the domain names and the PRESS ASSOCIATION mark will be particularly confusing to internet users, who
"… are generally accustomed to guessing the URL for a website they are seeking".
- Because the domain names in issue resolve to an inactive website, internet users looking for the Complainant's website would likely think there was a fault or that the Complainant does not operate a website. Hence, loss of potential customers for the Complainant, without the Complainant having any knowledge of such confusion and resultant damage to its business.
5.1.2 Rights or Legitimate Interests
Here, the Complainant's case is as follows:
- Despite denial that the Complainant has any exclusive rights to the PRESS ASSOCIATION mark outside the United Kingdom and Ireland [see, De Havilland's August 11, 2000 letter summarised in paragraph 4.5 above], the Respondent agreed to transfer the two UK domain names. Hence, the Respondent does acknowledge that the Complainant has trademark rights in the PRESS ASSOCIATION name and mark, so that the Respondent cannot assert rights or legitimate interests in the domain names in issue.
- The international recognition of the Complainant's rights to the PRESS ASSOCIATION mark is evidenced by the letters annexed to the Complaint from the several international news agencies [see paragraph 4.2 above].
- Top level domain names, whether by country or using the .com, .net and .org suffixes, are used internationally. The Court of Appeal in the One in a Million Case (1999) FSR1 (C.A.) drew no distinction in terms of what constitutes passing-off or trade mark infringement between .co.uk and .com domain names.
5.1.3 Registered and Used in Bad Faith
The Complainant's case is as follows:
- Because the domain names are identical and/or confusingly similar to the PRESS ASSOCIATION mark, because the Respondent has no rights or legitimate interests in respect of those domain names and because there is a substantial overlap between the businesses of the Complainant and that of De Havilland, it follows that the domain names were registered and used in bad faith.
- Use of the PRESS ASSOCIATION mark as a metatag in the website located at the domain names in issue was contrary to proper business practise and was discontinued immediately the Respondent and De Havilland received the Cease and Desist letter from the Complainant's Solicitors. Again, this evidences use in bad faith.
- The Respondent's undertaking not to use the domain names during the pendancy of any dispute under the Policy relating to them so that they resolve to blank pages is only temporary. The threat of continued use by the Respondent and/or De Havilland remains.
- The correspondence with De Havilland [paragraph 4.5 above] also evidences conduct by the Respondent falling within paragraphs 4 b(ii)-(iv) of the Policy.
5.2 The Respondent
The Respondent's case is, principally, set out in the submissions made in the letters from De Havilland dated August 11 and 16, 2001. It is as follows:
- If the Complainant has any exclusive rights in the name and mark PRESS ASSOCIATION, such rights are limited to the United Kingdom and the Republic of Ireland. They do not extend to other countries.
- The respective business of the Complainant and of De Havilland are not directly competitive, the targets marks are different, as is the nature of the services offered.
- The domain names in issue were, therefore, registered and used in good faith.
- However, the international venture for which those domain names were registered can now be better pursued under a different name.
- Consequently, the Respondent will cancel the domain names in issue, thus enabling the Complainant themselves to apply to register them.
6. Discussion and Findings
6.1 Paragraph 4a of the Policy provides that the Complainant must prove each of the following.
- that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4c of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate a Respondent's rights or legitimate interests to the domain name for the purposes of paragraph 4a(ii) of the Policy.
6.3 Paragraph 4b of the Policy sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
First, the Panel is satisfied that the Complainant has produced evidence of having rights in the unregistered trademark PRESS ASSOCIATION.
Second, the Panel considers that each of the 4 domain names in issue is, in essence, identical to that PRESS ASSOCIATION mark.
Third, were it necessary to rule on confusing similarity, the Panel regards each of the 4 domain names in issue falls within that category.
The Complainant, therefore, satisfies the requirements of paragraph 4a(i) of the Policy.
6.5 Rights or Legitimate Interests
The Complainant has neither authorised nor consented to registration of the domain names in issue. The Respondent has no greater rights to these domain name than to the two UK domain names which it promptly agreed to transfer to the Complainant upon being put on notice of the Complainant's case in August, 2000. The Complainant's PRESS ASSOCIATION mark falls into the same category as the well known trademarks involved in the One in a Million Case (1999) FSR1 (C.A.). Further, the Respondent has failed to bring itself within any of the circumstances set out in paragraph 4c of the Policy.
In the circumstances, the Panel finds that the Complainant satisfies the requirements of paragraph 4a(ii) of the Policy.
6.6. Registration and Used in Bad Faith
Despite the Respondent's protestations, the Panel considers that the identical and confusingly similar nature of the 4 domain names in issue with the Complainant's PRESS ASSOCIATION mark, coupled with the Respondent's lack of rights or legitimate interests in those domain names indicates registration in bad faith. This is the more so, considering the overlapping nature of the news services provided by the Complainant and by De Havilland and also the Respondent's pattern of conduct in registering not only the 4 domain names in issue, but also the 2 UK domain names. Still further, it is difficult to conceive of any plausible use of the 4 domain names in issue by the Respondent that would not be illegitimate, such as by passing-off [Telstra v Nuclear Marshmallows Case D2000-0003].
The facts that the Respondent has not used the domain names other than in relation to blank pages since shortly after notification of this dispute and that the Respondent has, latterly, offered to cancel the 4 domain names are not determinative of non-use. The relief sought by the Complainant is transfer, not cancellation, of these domain names. Doubtless the reason for the request is to prevent any other party registering those domain names following cancellation.
This Panel is not limited to the grounds evidencing registration and use in bad faith set out in paragraph 4b of the Policy. They are by way of illustration, not of limitation. On the facts of this dispute set out above, the Panel considers there is ample evidence of registration and use in bad faith generally. Further, any continued use of the domain names in issue, on any of them, would in the Panel's opinion constitute evidence under paragraph 4b(iv) of the Policy.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that the registrations of the domain names <pressassociation.net>, <press-association.net>,< press-association.org> and <press-association.com> be transferred to the Complainant.
Dated: May 29, 2001