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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christian Salvesen plc v. Paul Dunbabin
Case No. D2001-0858
1. The Parties
The Complainant is Christian Salvesen plc, a company incorporated in England with its principal place of business at 50 East Fetts Avenue, Edinburgh, Scotland EH4 1EQ. The Complainant is represented by Cerryg Jones of Wragge & Co, 55 Colmore Row, Birmingham, B3 2AS. The Respondent is Mr Paul Dunbabin of 3 Launder Terrace, Grantham, Lincolnshire NG31 6DH. The Respondent is not represented.
2. The Domain Name and Registrar
The domain name in dispute is <salvesen.net> which was first registered on October 21, 1999 with the registrar; Core Internet Council of Registrars of World Trade Centre 2, 29, Route de pre Bois, CH 1215, Geneva, Switzerland.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center on July 6, 2001, by email and by hard copy. An amended Complaint was subsequently received by the Center by email on July 13, 2001, and by hard copy on July 17, 2001. Acknowledgement of receipt of the Complaint was given by the Center on July 11, 2001. A request for Registrar verification was sent by email to the Registrar on July 13, 2001. The verification was given by the Registrar on July 17, 2001, confirming that the domain name <salvesen.net> was currently registered with the Registrar by the Respondent.
Notification of the amended complaint and commencement of the administrative proceedings was given on July 19, 2001, by email and by courier. The Panel has seen evidence of the email communication and the courier shipment airway bill. No response was received from the Respondent and accordingly notification of the Respondent’s default was served by email on August 10, 2001. On August 17, 2001, notification of the appointment of an administrative panel was given by the Center. The panel consists of a single member, Mr. Clive Duncan Thorne.
4. Factual Background
The Complainant is a major European logistics business employing some 14,000 staff operating in the United Kingdom, Belgium, France, Germany, the Netherlands, Italy, Portugal and Spain. The Complainant specialises in managing outsourced supply chain operations for manufacturing and retail customers in the industrial, consumer and food sectors.
The Complainant has exhibited at Annex C to the amended Complaint a copy of the Complainant’s annual report for the financial year ended March 31, 2000, showing a group operating profit of Ј45 million on a turnover of Ј665.6 million.
The Complainant is the registered proprietor of various trademarks including the following:-
(i) Christian Salvesen registered as a word mark in the United Kingdom in classes 39 and 40.
(ii) Christian Salvesen registered as a word mark as a community trademark in classes 16, 39 and 40.
(iii) Christian Salvesen as a stylised word mark registered as a community trademark in classes 16, 39 and 40.
Copies of these registrations are exhibited at Annex D to the amended Complaint. According to the Complainant they are all valid and subsisting.
Although the Complainant’s registrations are for the name <Christian Salvesen> (only) the Complainant also gives evidence that it uses the unregistered trademark "SALVESEN" as a trading name in relation to its business throughout the UK and Europe and that it is also known and referred to by that name.
As evidence the Complainant relies upon various recent press cuttings exhibited at Annex E to the amended Complaint, which are headlined by the name "Salvesen". The Complainant also relies upon the fact that it has various wholly owned subsidiaries and joint ventures in the UK and Europe in which it holds an interest which are all known by the "Salvesen" mark including Salvesen Pallets Limited, Salvesen Logistica SL, CSI Salvesen Property, Salvesen Logistics (International) BV, Salvesen Boxtel BV, Salvesen Cavalieri Logistics SPA and Salvesen Logistics Limited. The Complainant has offered to provide further information concerning these companies and their use of the mark "Salvesen".
In addition the Complainant and its associated European subsidiaries and/or joint ventures are the registrants of various domain names including <salvesen.com>, <christiansalvesen.com>, <salvesen.fr>, <salvesen.de>, <salvesen.es>, <christiansalvesen.co.uk> and <salvesen.co.uk>. The Complainant has also applied to registered <salvesen.biz> and <salvesen.eu>. The <.com> and UK country code designations resolve to the same active website. Copies of WHOIS database searches evidencing some of the Complainants domain name registrations are annexed to the Complaint at Annex F.
The Complainant uses its trademarks throughout the UK and the European Community in relation to its business. The Complainant is widely advertised and promoted. It has been trading since 1872 when it was known as Christian Salvesen & Co. The Complainant advertises its services through national newspapers, television commercials and the trade press having circulation throughout the UK and Europe. Samples of the Complainant’s advertising literature in relation to its products are set out at Annex G to the amended Complaint.
The current dispute arises as a result of the employment by the Complainant of the Respondent as a Cold Store Operative at its Easton Depot in Lincolnshire. The Respondent commenced full time employment on November 25, 1996, having previously worked on a temporary basis since May 28, 1996.
On March 27, 2001, it was brought to the attention of Rachel Brown, a solicitor working within the legal department of the Complainant, that the Respondent had registered the domain name in dispute <salvesen.net> and was using it in connection with an active website which linked to pornographic material. The Complainant has annexed to the Complaint at Annex H a sample selection of this material which the Panel has reviewed. The website commences with a warning that the site contains "adult material of an extreme nature" and refers to access <to the best sex sites", to "live xxx action with genuine British girls", "live British amateur housewives and girlfriends", "live lesbian action", "licking toys and close ups". It also refers to free gay sex, live lesbian sex and "online Asian erotic entertainment". The website also appears to display photographs of women in erotic positions.
On March 29, 2001, Mrs. Julie Ward, on behalf of the Complainant, wrote to the Respondent asking that he attend an investigatory interview pointing out that "the use of the company name in this way and the content of the site, some of which is of a pornographic nature is a cause of great concern". An interview was held with the Respondent on the following day and a note of that interview is set out at Annex J. It can be seen from the note of the interview that the Respondent indicated that the site had been in existence since 1999, that the site was registered to himself and that he owned the domain name, that the site was profit making and that he would not close it down.
A further interview was held on April 4, 2001, a note of which is annexed to the Complaint at Annex K. At the conclusion of that interview the Respondent was summarily dismissed. It can be seen from the note of the second interview upon which the Complainant relies:-
1. That the respondent used the name "Salvesen" because it had "... a ring to it ..." and because he hoped to "get as much traffic as possible".
2. That he was also using the name of Mothercare (another well-known British company specialising in children’s products) to link to similar pornographic websites.
3. That he was unwilling to give the domain name in dispute to the Complainant.
4. That he had not thought about selling the domain name in dispute but was willing to consider offers.
5. That he was entitled to use the domain name in dispute because the Complainant’s trademark was "Christian Salvesen" not "Salvesen".
5. The Complainant’s Contentions
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:-
1. The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interest in respect of the domain name;
3. 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
1. The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the domain name is confusingly similar to:-
(a) Its trading name "Christian Salvesen".
(b) The Complainant’s company name Christian Salvesen plc.
(c) The Complainant’s trademarks referred to above and which are reflected in the Complainant’s domain names referred to above which are used to promote the Complainant’s business.
(d) The company and trading names of the Complainant’s subsidiaries.
The Panel accepts this submission. Although the domain name in dispute consists of "Salvesen" and that the Complainant trades as "Christian Salvesen" and has registered trademark rights in "Christian Salvesen" it is apparent from the evidence that the Complainant is commonly referred to as "Salvesen". Evidence of this is shown by the newspaper cuttings exhibited at Annex E and the use of the name "Salvesen" for the Complainant’s subsidiaries referred to paragraph 5.6 of the Complaint.
The Complainant’s second submission is that the domain name in dispute is also identical to the Complainant’s unregistered trademark "Salvesen" as well as the domain names <salvesen.com" and <salvesen.co.uk" and the other country code domain name designations used by the Complainant.
The Panel is satisfied that the Complainant through use of the mark "Salvesen" has acquired unregistered trademark rights or a trading goodwill in the mark "Salvesen" for the purpose of promoting its business. The unregistered mark "Salvesen" is of course identical to the domain name in dispute. This finding negates the argument used by the Respondent at the interview on April 4, 2001 that he was entitled to use the domain name in dispute because the Complainant’s trademark was "Christian Salvesen" and not "Salvesen".
2. 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 (beyond the contents of the disciplinary interviews on March 30 and April 4, 2001) the Panel has to consider this head on the basis only of the Complainant’s submissions and the evidence submitted by the Complainant.
The Complainants submissions are:-
(a) That the Panel should infer that the Respondent has no rights or legitimate interest in the domain names, particularly in view of the Complainant’s established rights and all the circumstances surrounding the registration of the domain name in issue. In particular the Complainant relies upon the well-known English Court of Appeal decision in British Telecommunications and Others -v- One in a Million Limited where Aldous L.J. indicated that:-
"A decision of the legitimacy of a Respondent’s interests should be determined having regard to all the circumstances and the mere contention of conceivably legitimate interests does not necessarily preclude a finding that on the balance of probability, a Respondent himself has no legitimate interests."
(b) That the Respondent was undoubtedly aware of the Complainant’s pre-existing trademark rights given that at the time he applied to register the domain name he had been an employee of the Complainant for over three years.
(c) That the choice of the name did not arise independently and legitimately or because, as is contended by the Respondent, that the name had a "ring to it" but was solely chosen to attract Internet traffic to the Respondent’s site by exploiting the goodwill subsisting in the Complainant’s trademarks. In this regard the Complainant refers the Panel to the Respondent’s response during the disciplinary hearings when he was asked to explain his choice of the domain name. The Respondent referred to the fact "lots of people are called Salvesen". In the Complainant’s view it is "telling" that the Respondent is not known by this name and that the sign "Salvesen" is not generic or a descriptor.
(d) There is no evidence that the Respondent has been commonly known by the domain name or any derivative thereof.
(e) The Respondent is not making a legitimate non commercial or fair use of any of the domain names he intends for commercial gain to misleadingly divert consumers and to tarnish the trademarks in issue.
(f) There is no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could use the Complainant’s trademark in the course of trade or own or use the domain name in issue.
The Panel finds particularly compelling the analogy with the Court of Appeal decision in the One in a Million case. Having regard to all the circumstances and in particular to the points made by the Respondent during his disciplinary interview the Panel is satisfied that the Respondent has no rights or legitimate interest in respect of the domain name.
The Panel is also persuaded by the Complainant’s contention that the Respondent was undoubtedly aware of the Complainant’s pre-existing trademark rights given the fact that he was an employee of the Complainant at the time he chose to register the domain name. The Panel does not consider that the Respondent’s explanation that "lots of people are called Salvesen" is a sufficient justification for establishing any rights or legitimate interest in respect of the domain name.
The Panel finds for the Complainant in respect of the second head of paragraph 4(a)
3. 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:-
(a) The use of the domain name in relation to pornographic material and the Respondent intends to and will cause substantial harm and detriment to the Complainant’s reputation and trademarks.
(b) The Respondent is intentionally endeavouring to attract for financial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trademarks.
(c) It is to be inferred from the Respondent’s conduct that the domain name was registered primarily for the purpose of damaging the Complainant’s business by creating in the minds of those visiting the site offensive and detrimental associations with the name Salvesen.
(d) The Respondent appears to have registered and used another domain name identical to the trademark of another substantial business (Mothercare) for the same person. The Respondent therefore appears to have engaged in a pattern of bad faith registrations.
The Panel, having reviewed the evidence of the Respondent’s website produced by the Complainant is satisfied that the pornographic nature of the website will cause by way of association substantial harm and detriment to the Complainant’s reputation and trademarks. It also accepts that the Complainant’s business and trademarks will plainly be tarnished by the association with sexually explicit material. Such associations can only have been created by registration and use of the domain name in bad faith.
The Panel agrees with the Complainant that it is significant that the Respondent appears to have registered and used another domain name identical to the trademark of another substantial business (Mothercare) for the same purpose. This establishes a pattern of such registrations utilising the trading names of reputable companies.
The Panel is satisfied that the Complainant has submitted evidence of bad faith in the registration and use of the domain name.
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 <salvesen.net> registered by the Respondent be transferred to the Complainant Christian Salvesen Plc. The Panel finds for the Complainant and orders that the domain name <salvesen.net> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: August 30, 2001