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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R. Terley Limited and Texstyle World Limited v Stephanie Lock and StephEnt
Case No. D2001-0947
1. The Parties
Complainants are R. Terley Limited, 2269 - 2275 London Road, Mount Vernon, Glasgow, G32 8XP, Scotland, U.K.; and Texstyle World Limited, 18 Blythswood Square, Glasgow, G2 4BG, Scotland, U.K. Complainants are represented in this Administrative Proceeding by Fiona Akers, Dickson Minto W.S., 11 Walker Street, Edinburgh, EH3 7NE, Scotland.
Respondents are StephEnt, 5 Willow Close, Woodham, Surrey, KT15 3SB, England, U.K.; and Stephanie Lock, 5 Willow Close, Woodham, Surrey, KT15 3SB, England, U.K.
2. The Domain Name and Registrar
The Domain Name the subject of this Complaint is <texstyleworld.com>.
The Registrar of the Domain Name is Melbourne IT Ltd., D/B/A Internet Names Worldwide, Melbourne IT, Level 2, 120 King Street, Melbourne, VIC 3000, Australia.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on July 23, 2001, and in hard copy on July 25, 2001. Complainant states that a copy of the Complaint was sent on July 23, 2001, to Respondent by recorded delivery postal service. A copy was sent to the Registrar, Melbourne IT, on July 23, 2001.
3.2. On July 27, 2001, verification was received from the Registrar, Melbourne IT, that the disputed Domain Name <texstyleworld.com> was registered as follows: Organisation Name, StephEnt, 5 Willow Close, Woodham, KT15 3PU, Surrey, Great Britain (UK); Admin Name, Stephanie Lock, 5 Willow Close, Woodham, KT15 3PU, Surrey, Great Britain (UK).
3.3. On July 27, 2001, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.4. On July 27, 2001, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by post/courier to Respondents, and without enclosures by email and facsimile.
3.5. Respondents sent a hardcopy response on August 16, 2001, received
August 20, 2001, and an email copy without attachments that was received August 22, 2001. The Response in signed form was sent and received by fax on August 23, 2001, and by post on August 27, 2001.
3.6. On August 28, 2001, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint and Response was sent by email to the Administrative Panel on August 28, 2001, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. Complainant R. Terley Limited is the registered proprietor of UK trade mark number 1312721 for the words "Texstyle World", registered June 11, 1987, for household textile articles; bed clothing; furnishing fabrics; curtaining materials, curtains; towels all included in Class 24. Complainant R. Terley Limited is the registered proprietor of United Kingdom trade mark number 2134487 for "Texstyle World" and device, registered May 30, 1997, for household textile articles; bed clothing; furnishing fabrics; curtaining materials; curtains; towels all included in Class 24.
4.2. Complainants operate about 79 retail stores in the United Kingdom and two in Eire under the name "Texstyle World", selling bedding and household goods. The Texstyle World business has operated since 1980. The business currently turns over in excess of Ј60 million per year and spends in excess of Ј2 million per year on advertising and marketing.
4.3. Respondents operate a business named Bed Bath and Home in a similar line of business to that of Complainants. Respondents use an Internet site <bedbathandhome.co.uk>. In or before October 2000 Complainants found that the disputed Domain Name <texstyleworld.com> had been registered by Respondents.
5. Parties’ Contentions
A. Contentions of Complainants
5.1. The contentions of Complainants include (paragraphs 5.2-5.8 below) that:
5.2. The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3. Complainants have rights to the trademark "Texstyle World". The trademark has been registered since June 11, 1987 and with device since May 30, 1997. The relevant company trade includes household textile articles, bed clothing, furnishing fabrics, curtaining materials, curtains and towels. The company has substantial reputation and goodwill, has about 81 shops and is well known. The business has in the past four accounting years turned over between Ј64.4 million and Ј74.2 million per year and spent between Ј2 million and Ј5.8 million per year on advertising and marketing.
5.4. The disputed Domain Name <texstyleworld.com> is confusingly similar to the trademark Texstyle World in which Complainants have rights.
5.5. Respondents are competitors of Complainants.
5.6. Respondents have no rights or legitimate interest in the disputed Domain Name. Respondents have not used or made demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods and services, and any use of the Domain Name in connection with the Respondents' business is not bona fide. Respondents are not commonly known by the domain name. Respondents are not making a legitimate non-commercial or fair use of the Domain Name in the terms of the Policy.
5.7. Respondents’ registration and use of the disputed Domain Name is in bad faith in terms of the Policy. Respondents established a link by which Internet users seeking Complainants through their trademark were connected to the Respondents, thereby disrupting the business of Complainants through confusion. The link was removed on demand of the Complainants. Respondents have indicated a price of up to Ј20,000 for the transfer of the Domain Name to Complainants or others.
5.8. The remedy requested by Complainants is that the disputed Domain Name be transferred to Complainant R. Terley Limited.
B. Contentions of Respondents
5.9. The contentions of Respondents include (paragraphs 5.10-5.15 below) that:
5.10. Those parts of the Complaint that cite the Respondent as Bed Bath and Home are invalid because the Respondent is Stephanie Lock.
5.11. Complainants do not have rights to the trademark Texstyle World outside the UK.
5.12. In 2000 Complainants did not own any domain name that included the trademark Texstyle World.
5.13. Respondents intend to use the disputed Domain Name for purposes of trade in the USA and to establish a relevant company.
5.14. Respondents have given an undertaking not to link the disputed Domain Name to their UK business. Any diversion of traffic was unintended and has been returned to Complainants.
5.15. Respondents deny that the disputed Domain Name was registered in bad faith. The Domain Name was acquired for purposes of bona fide use. Respondents did not register the disputed Domain Name for the purpose of sale and the terms of sale offered were in response to initial enquiries from Complainants. The asking prices of Ј5,000 and later Ј20,000 were reasonable as business deals having regard to the investment that had been made in the Domain Name.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainants have made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Domain Name Dispute Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. Respondents submit that those parts of the Complaint where Respondent is cited as Bed Bath and Home instead of Stephanie Lock are invalid. As defined in the Rules, Definitions, the word Respondent means the holder of a domain-name registration against which a complaint is initiated. The disputed Domain Name <texstyleworld.com> is registered in the name of the entity StephEnt. The Administrative Panel is satisfied that the Administrative Contact Stephanie Lock represents and is the guiding mind behind the Registrant. Furthermore, Stephanie Lock states in the Response that she is a Respondent.
6.4. The Administrative Panel is satisfied that the Proceedings have been correctly served on Respondents and has been prepared to indulge errors and informalities of language within the body of either the Complaint or the Response provided the meaning is clear.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.5. The Domain Name subject to this Complaint is <texstyleworld.com>. Complainants have produced a certified copy of registration documents under the Trade Marks Act 1994 proving that the trademark "Texstyle World" was validly registered on June 11, 1987 and with devices on May 30, 1997. Complainant therefore has rights in the trademark. Respondents' argument that Complainants did not own Texstyle World-related domain names at a certain date (Response, page 1) is of no consequence as the dispute concerns a conflict with Complainants' trademark, not with their domain name. Respondents' arguments as to domicile and territory are not relevant as the narrow question to be decided in terms of Paragraph 4(a)(i) of the Policy is whether the disputed Domain Name <texstyleworld.com> is identical or confusingly similar to Complainants' trademark Texstyle World. Clearly it is and the Administrative Panel so finds.
Whether Respondents Have Rights or Legitimate Interests in Respect of the Domain Name
6.6. Complainants certify that the use of the trademark "Texstyle World" dates back to June 11, 1987, and assert that Respondents have no rights or legitimate interests in the disputed Domain Name. The Policy provides in Paragraph 4(c) certain alternative guidelines, without limitation, whereby a Respondent may demonstrate its rights or legitimate interest in the Domain Name.
6.7. Paragraph 4(c)(i) of the Policy recognises, before any notice of the dispute, use of or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The legitimacy of Respondents' offering of goods or services is not in dispute, however that cannot legitimise the use of a Domain Name that ought not to have been adopted. Respondents' intentions to use the Domain Name in the USA or elsewhere cannot avoid conflict with Complainants' trademark owing to the global nature of the Internet. In response specifically to point 3(b) of Complainants' letter of November 17, 2000, asking Respondents "not to register any domain name incorporating any of the Names", Respondents themselves on November 27, 2000, referred to "...the increasingly global nature of the business world...". The Administrative Panel finds that Respondents have not established a defence under Paragraph 4(c)(i).
6.8. There is no evidence that Respondents as an individual, business, or other organization have been commonly known by the Domain Name in terms of Paragraph 4(c)(ii) of the Policy.
6.9. Respondents' use and intentions in respect of the disputed Domain Name are commercial and not a legitimate noncommercial or fair use in terms of Paragraph 4(c)(iii) of the Policy.
6.10. The Administrative Panel finds that Respondents have no rights or legitimate interests in the disputed Domain Name in terms of Paragraph 4(a)(ii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.11. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides four alternative circumstances that are evidence of bad faith, however these are without limitation and bad faith may be found on the totality of the evidence.
6.12. In considering the question of bad faith the Administrative Panel notes among other things that: (a) Complainants are competitors of Respondents; (b) Respondents ought to have been aware of Complainants' business, which has held the trademark Texstyle World since 1987 and is currently a Ј60 million-plus p.a. turnover operation in the same field; (c) the disputed Domain Name embodies Complainants' trademark and is unrelated to Respondents' names; (d) Respondents did link the disputed Domain Name to Respondents' Internet location; (e) Respondents received and knew they were receiving traffic intended to reach Complainants and without Complainants' knowledge; (f) Respondents demonstrated a willingness to trade the Domain Name for a substantial price to either the holder of the corresponding trademark or to a competitor; (g) Respondents' letter of January 30, 2001, can be interpreted as leverage upon Complainants to buy the Domain Name or suffer inconvenience; (h) Respondents have expressed a determination to continue to use the Domain Name in connection with expansion plans.
6.13. The foregoing contains sufficient elements for the Administrative Panel to make a finding of registration and use of the Domain Name in bad faith in general terms and that is so found.
6.14. Paragraph 4(b)(iv) of the Policy provides specifically for a finding of bad faith where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location". The evidence is that Complainants' traffic continued for a period to be diverted by Respondents for ultimate commercial gain, whether to attract custom or with a view to selling the Domain Name. The business of Complainants was disrupted by diversion of traffic to Respondents through the confusion of Internet users. Respondents' letter of January 30, 2001, to Complainants refers in part to "...an example of emails that we receive on a regular basis. Attached is an example of the kinds of information we are sent regularly in error." This quotation, in conjunction with the "attached" example email which was the private business of Complainants dated six days earlier (the confused address being in the Copy-to line), conveyed that Respondents regularly received Complainants' private information and knew it to be unintended for them. The tone of Respondents' letter was that Complainants' emails were being missed or delayed, that private commercial information was being viewed by Respondents, and that Complainants should buy the Domain Name. A price of Ј20,000 had been specified in Respondents' previous letter dated November 27, 2000. The Administrative Panel finds that Respondents acted in bad faith in the terms of Paragraph 4(b)(iv) of the Policy.
6.15. Since bad faith has been found in 6.13 and 6.14 above it is not necessary to pursue the matter further under Paragraphs 4(b)(i), (ii) and (iii) of the Policy.
6.16. In summary, as concluded in 6.5 above the disputed Domain Name is confusingly similar to Complainants' trademarks and Complainants succeed under Paragraph 4(a)(i) of the Policy. As concluded in 6.10 above, Respondents have no rights or legitimate interests in the Domain Name and Complainants succeed under Paragraph 4(a)(ii) of the Policy. As concluded in 6.13 and 6.14 above, Respondents have registered and used the Domain Name in bad faith and Complainants succeed under Paragraph 4(a)(iii) of the Policy. Complainants have proven all three points required by Paragraph 4(a) of the Uniform Policy and the Administrative Panel gives its Decision in favour of Complainants.
The Decision of the Administrative Panel is that the disputed Domain Name <texstyleworld.com> is confusingly similar to the trademark "Texstyle World" in which Complainants have rights; that Respondents have no rights or legitimate interests in the disputed Domain Name; and that Respondents have registered and used the disputed Domain Name in bad faith. The Domain Name <texstyleworld.com> shall be transferred to Complainant R. Terley Limited.
Clive N. A. Trotman
Dated: September 11, 2001