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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pickfords Limited v. Wegotcha.Co.Uk/Dale Duncan
Case No D2001-0334
1. The Parties
The Complainant is Pickfords Limited a company incorporated in England with its principal place of business at Heritage House, 345 Southbury Road, Enfield, Middlesex EN1 1UP, United Kingdom. The Respondents are WEGOTCHA.CO.UK and Dale Duncan of 14 Hyde Close, Oadby, Leicester, LE2 5UN, United Kingdom. The Complainant is represented by Messrs Boult Wade Tennant of Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <pickfordsremovals.net>. The Registrar for the domain name is Register.com Inc of 575, 8th Avenue, 11th Floor, New York NY10018,USA.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Administration Center on March 7, 2001 by hard copy. An acknowledgement of receipt of the Complaint was given by the Center on March 16, 2001. A request for Registrar verification was sent to Register.com Inc on March 16, 2001. On March 21, 2001 confirmation was given by Register.com Inc that the current registrant was Dale Duncan and that the administrative contact was WEGOTCHA.CO.UK/Dale Duncan.
Notification of the Complaint and Commencement of the Administrative Proceeding was given on March 23, 2001 by email and by courier. A copy was also sent by fax and a successful answerback received on March 23, 2001, by the Center. No response was received from the Respondent and accordingly Notification of Respondent Default was given by email on April 27, 2001. On May 2, 2001 a Panel was appointed consisting of a single member Mr Clive Duncan Thorne. An extension of time for the Panel’s decision has been made to May 18, 2001.
4. Factual background
The Complainant is Pickfords Limited which according to the Complainant has continuously used the mark "Pickfords" in connection with moving services since as long ago as "at least the mid 1600’s".
The Complainant gives evidence of widespread use and reputation of "Pickfords" by the Complainant. In particular revenue figures relating to the trade mark "Pickfords" during last year amounted to Ј78 million in the United Kingdom alone. The Complainant points out that this figure would be significantly higher if figures from all countries in which Pickfords trades are included.
The Complainant sets out details of relevant trade mark registrations owned by the Complainant in respect of the mark "Pickfords". In particular the Complainant refers to UK trademark number 1285667 first registered on October 1, 1986 in class 39 covering "transportation and delivery of goods by road; arranging the transport and delivery of goods by land and by sea; removals services; packing and crating of goods; guarded storage and guarded transport of goods and valuables; warehouse storage of goods; rental of vehicles and warehouses; all included in class 39". This registration is apparently in full force and effect. The Complainant asserts that it is "unrevoked, uncancelled and incontestable under the Trade Marks Act 1994".
The Complainant also gives evidence supported with copies of other United Kingdom Trade Mark Registrations incorporating the mark "Pickfords". Copies are annexed as Annex D to the Complaint. The Complainant has also registered the trade mark "Pickfords" in a number of other countries as set out in Annex G to the Complaint.
The current dispute arose when the Complainant became aware in December 2000 of the use by the Respondent of the domain name <pickfordsremovals.net>. As a result a cease and desist letter which is exhibited at Annex H to the Complaint was sent to the Respondent. The history of what then transpired is helpfully summarised in the Statutory Declaration of Mr Mohamed Hussein Daud of Boult Wade Tennant dated March 1, 2001 and annexed as Annex I to the Complaint.
What appears to have happened is that on January 3, 2001 Mr Daud received a telephone call from Mr Dale Duncan the Respondent. An attendance note of this is exhibited at MHD3 to Mr Daud’s Statutory Declaration. Mr Duncan apparently indicated that he purchased the name "pickfords.com" (sic) from Nominet. Mr Duncan was not using the name but wished to keep it. However he indicated that he was open to offers for the purchase of the name. Mr Duncan followed the telephone conversation with a letter dated January 3, 2001 in which he indicated that as discussed, "I have no intention of using <pickfordsremovals.net> in relation to removal or related services" and that he would be "happy to consider the sale of the name in question".
On January 9, 2001, Mr Daud wrote again to Mr Duncan asking him what figure he had in mind for the purchase of the domain name. Mr Duncan telephoned Mr Daud to say that he expected to receive Ј10,000 for the sale of the domain name. He apparently made the comment "one persons flesh is another persons gold" and that "we live in a free enterprise world and one makes money whenever and wherever one can".
Mr Daud wrote to Mr Duncan on January 26, 2001, pointing out that the suggested figure of Ј10,000 was far too high, particularly bearing in mind "our clients registrations for the trade mark" and "Pickfords significant and valuable good will in the name". He pointed out that Mr Duncan would have incurred expenses in registering the domain name and that Pickfords preferred to resolve the matter amicably and on that basis they were prepared to offer Ј500 for the name. Mr Duncan telephoned Mr Daud on January 31, 2001, saying that he would be prepared to accept Ј7,500 as he put it "the final and serious figure". Mr Duncan confirmed this in a letter of January 31, 2001.
5. Parties’ Contentions and Discussions
In order to succeed in its request for an Order to transfer the domain name the Complainant has to prove that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present.
These are as follows:-
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name;
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondents domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
As referred to above the Complainant has provided evidence of its trade mark and service mark rights in the United Kingdom and elsewhere. It has also provided evidence of long use of the mark "Pickfords" in the United Kingdom. The Panel is therefore satisfied that the Complainant has trade mark rights in the mark Pickfords.
Evidence has also been given by the Complainant of its main activity which broadly amounts to the transport and delivery of goods and removal services; see for example the specification of services in respect of UK trade mark number 1285667. The Panel is also therefore satisfied that the Complainant has rights in the mark "Pickfords Removals".
It follows that the Respondent’s domain name is identical or confusingly similar to the Complainant’s marks. For these reasons the Panel finds that the Complainant has succeeded in proving paragraph 4(a)(i) of the Policy.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
In the absence of any evidence or submissions from the Respondent the Panel has to consider this element on the basis only of the Complainant’s submissions and the evidence submitted by the Complainant.
The Complainant submits that the Respondent holds the domain name "passively" and that the Respondents have no legitimate interest in the domain name. In the Panel’s view this is supported by the history of the negotiations referred to in Mr Daud’s Statutory Declaration and in particular the letter from Mr Dale Duncan exhibited at MHD3 to Mr Daud’s Statutory Declaration. Mr Duncan states; "as discussed, I have no intention of using "pickfordsremovals.net" in relation to removal or related services". In these circumstances the Panel finds for the Complainant in respect of this element.
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
The Complainant submits that evidence of bad faith is provided by:-
(i) The Respondent’s offer to sell the domain name for profit.
(ii) That ownership of the domain name would create by way of misrepresentation an association or affiliation with the Complainant.
(iii) The passive holding of the domain name and offer to sell the domain name for valuable consideration.
The Panel takes into account paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution Policy which provides for evidence of registration and use of bad faith in circumstances in which "the Respondent has 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 to a competitor of the Complainant, for valuable consideration in excess of documented out of pocket costs directly related to the domain name."
The Panel having reviewed the correspondence and telephone conversations that have taken place between the Complainant and Mr Duncan of the Respondent and in particular the offers made by Mr Duncan to sell the domain name at a price of Ј10,000 and subsequently Ј7,500 demonstrates consideration in excess of "documented out of pocket costs directly related to the domain name" as envisaged by paragraph 4(b)(i). In these circumstances the Panel is satisfied that the Complainant has succeeded in showing bad faith.
It follows that the Complainant has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds in its Complaint.
6. Decision and findings
The Complainant requests that the domain name <pickfordsremovals.net> registered by the Respondents be transferred to the Complainant Pickfords Limited. The Panel finds for the Complainant and orders that the domain name <pickfordsremovals.net> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: May 18, 2001