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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bett Homes Limited and Bett Brothers PLC v Bill McFadyen
Case No. D2001-1018
1. The Parties
The Complainants are Bett Homes Limited ("the First Complainant") and Bett Brothers PLC ("the Second Complainant") of 9 Cox Street, Dundee DD3 9HA, Scotland, United Kingdom.
The Respondent is Bill McFadyen of "Home", 37 Cypress Glade, Adambrae, Livingston EH54 9JH, Scotland, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is <betthomes.com> and the Registrar is Tucows, Inc. of Toronto, Ontario, Canada.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on August 10, 2001 [electronic version] and on August 14, 2001 [hard copy]. 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 Complainants made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is August 21, 2001.
On August 16, 2001, the Center transmitted via email to Tucows, Inc. a request for registrar verification in connection with this case and on the same day Tucows, Inc. transmitted by email to the Center a verification response confirming that the registrant is Home, 37 Cypress Glade, Adambrae, Livingston, EH54 9JU, United Kingdom and that the contact for both administrative and billing purposes is John Cottom of 67 Dublin Street, Flat 2F1, Edinburgh, EH3 6NS, United Kingdom.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 21, 2001, to the e-mail addresses provided by the Registrar and the Complainant as well as to email@example.com, this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 10, 2001. On the same day the Center transmitted by mail copies of the foregoing documents.
The Center received a Response on September 7, 2001 [electronic version] and on September 10, 2001 [hard copy]. On September 11, 2001, Acknowledgement of Receipt of Response was sent by the Center 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 Proceedings.
Having received on September 26, 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 October 16, 2001, subsequently extended to October 23, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having received the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainants
The first Complainant was incorporated in 1986 under the name Bett Estates Limited. In 1992 it changed its name to Bett Homes Limited. The second Complainant was incorporated in 1946 and is the parent of the first Complainant.
The Complainants are residential house builders. Since the late 1970s, they have built, developed and marketed residential homes in Scotland and Northern England under the name BETT HOMES. This name appears prominently in the Complainants' advertising and sales literature and is the name by which they are known to the public. The Complainants' business is fairly substantial, with over 1,500 homes built between 1998 and 2000 alone. Turnover in 2000 was Ј61.9 million. In the last financial year, the Complainants spent approximately Ј440,000 in promoting their construction business under the BETT HOMES name through avenues such as television, newspaper, magazines and billboards. The Complainants claim substantial goodwill and reputation in this trade mark in the United Kingdom. Such that the BETT HOMES trade mark is well known and distinctively associated in the public mind with their business of selling residential homes.
The First Complainant is the proprietor of the domain name <betthomes.co.uk> registered on December 29, 1997.
The Second Complainant has applied for United Kingdom trade mark registrations for BETT HOMES. No details of the applications were provided, but the official database of pending applications shows that two applications, 2,277,711 and 2,278,269, were filed for goods and services in Classes 9 and 37 on August 11, 2001, and August 17, 2001, respectively, thus postdating this Complaint.
4.2 The Respondent
The Respondent purchased a home constructed by the Complainants on June 30, 2000. Since that date, there has been a continuous and bitter dispute between the Respondent and the Complainants over the quality of the construction of this house. To date, the Respondent claims that there are over 300 outstanding problems with the property which he attributes to the Complainants' substandard workmanship. Repeated visits by workmen acting for the Complainants have failed to remedy the problems to the Respondent's satisfaction. It is clear from the papers filed by both parties that this dispute remains unresolved.
4.3 The Respondent's Dispute with the Complainants
4.3.1 On December 7, 2000, the Respondent registered the domain name in issue. In April 2001, he commenced use of the domain name to host a website criticising the quality of the construction of his home. The first page of the website contains a photograph of the exterior of a house and bears the caption "www.BETTHOMES.com, the unofficial Bett Homes website." The website documents a whole catalogue of problems associated with the Respondent's property in graphic detail, including photographs of dead mice, gaping holes in skirting boards, taped-up pipes, uninsulated and disconnected earth wires, faulty kitchen units and leaks. The site invites visitors to "make up your own mind about what YOU would deem to be acceptable build standards...The onus should be with Bett Homes to ensure 'quality' checks and standards are achieved, decide for yourselves if they were?? (sic)"
4.3.2 On April 23, 2001, the Respondent sent a press-release concerning his dispute with the Complainants by email to various newspapers including The Scotsman, inviting them to view his site. The email read in part
"Mr McFadyen, after purchasing his new 'quality home' from Bett Homes in June 2000, has been shocked to find appalling standards of workmanship…The new website www.betthomes.com has been created to highlight the ongoing struggles of the McFadyen household as they try to achieve some form of satisfaction from the builders."
On April 17, 2001, The Scotsman ran the Respondent’s story under the headline, "Virtual vengeance over faulty house."
4.3.3 On May 6, 2001, the Respondent wrote to Robert Hanna, Chief Executive of the Complainants, in the following terms:
…"due to your management teams, (sic) inability to satisfactorily resolve my problems, as a first step, I established a web site to highlight our plight and your company's appalling work standards.
… I have had substantial feedback to my website, from other disgruntled Bett Home owners, but a significant number from prospective purchasers thanking me for highlighting your company's poor build standards.
Be aware, since I incorporated a counter to the site on 29th April, my site has received over 1000 hits (visits). In the last couple of days the hit rate increased dramatically, which I have since found out is as a direct result of Micro Soft Network (MSN.CO.UK) one of the truly global networks, including our story on their Property Home Page, with a Hyperlink to my site.
I…wonder how much more negative publicity your company can absorb without sustaining potentially irreparable damage.
…As always, the resolution to this position is within the power of the senior management team at Bett Homes, as it always has been.
You will need to make a judgement on whether the world seeing the reality of what we were sold and what my family has had to endure is the best form of advertisement for your company to have."
On May 7, 2001, the Respondent followed up with an email to Robert Hanna reiterating the website's potential to do irreparable damage to the Complainants’ business. Although copies of further correspondence is filed with this Complaint, it is relevant only to the ongoing dispute concerning the property and not to the domain name dispute.
On August 10, 2001, the present Complaint was filed.
5. The Parties’ Contentions
5.1 The Complainant
5.1.1 Identical or Confusingly Similar
The Complainants contend that the domain name <betthomes.com> is identical to their unregistered trade mark BETT HOMES. They further contend that the domain name in issue is identical to the first Complainant’s domain name <betthomes.co.uk>.
In the alternative, the Complainants contend that the domain name in issue is confusingly similar to their trade mark and domain name.
5.1.2 Rights or Legitimate Interests
Here the Complainants’ case is as follows:
- The Respondent is not using and never has used the domain name or a name corresponding to it in connection with a bona fide offering of goods or services, and has never been commonly known by the domain name.
- The Respondent is not making a legitimate non-commercial or fair use of the domain name. The purpose of registering the domain name was to attract visitors seeking the Complainants' legitimate site, in order to expose them to graphic criticism of the Complainants' quality standards. The Complainants refer to several critical emails received from visitors to the Respondent's site, including one stating that
"you will doubtless have lost a number of potential customers after yesterdays (sic) Daily Mail article"
and another reading,
"Living in Westhill near Elrick I liked the look of the homes. Having visited www.betthomes.com and seen the quality of workmanship I don't think I'll bother considering them when I next move."
- Although the Respondent has a right to express his views, this does not entitle him to host them at a domain name which is identical to the Complainants’ trade mark.
5.1.3 Registered and Used in Bad Faith
The Complainants' case under this heading can be summarised as follows:
- The Respondent registered the domain name in issue with the intent to confuse and divert prospective customers of the Complainants to the Respondent's complaint site.
- The Respondent is using the domain name primarily to disrupt the business of the Complainants.
- The Respondent is using the domain name intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion.
- The Respondent is using the domain name to exert pressure on the Complainants to resolve their dispute with him.
5.2 The Respondent
5.2.1 Identical or Confusingly Similar
The Respondent does not dispute the identity of the domain name in issue to the Complainants' earlier unregistered trade mark BETT HOMES. However, he does observe that the Complainants’ trade mark is not a registered trade mark.
5.2.2 Rights or Legitimate Interests
The Respondent’s case under this heading is as follows:
- The Respondent is making a fair, legitimate and non-commercial use of the domain name in issue.
- The Respondent has a right to the domain name in issue since it was freely available for registration by anyone. The fact that the second Complainant already owned the domain name <betthomes.co.uk> and had not registered any of the other available .net, .org or .com variants indicated that it did not want them.
- The Respondent is a shareholder of the Complainants and has a right to register and use the domain name to provide uncontested factual and accurate information on the Complainants to other shareholders and members of the public.
- The registration of the domain name was necessary in order to compel the Complainants to acknowledge and meet their responsibilities concerning the Respondent's property.
- The emails received by the Complainants do not prove that the writers were actually confused or that the Complainants' reputation was tarnished in such a way as to result in loss of custom.
5.2.3 Registered and Used in Bad Faith
It is not clear where the Respondent’s arguments on rights and legitimate interests end and those on bad faith begin. However, the Panel understands the Respondent’s case under this heading to be as follows:
- The domain name was registered out of frustration with the Complainants’ failure to resolve the problems with the Respondent’s property.
- The website was not activated until it became obvious that the Respondent would not get a completed house through normal channels of escalation within the Complainants’ senior management structure.
- The Respondent’s site was marked unofficial and there was no attempt by the Respondent to be viewed as associated with the Complainant.
- The completion of the work to the Respondent's property is his entitlement under the Sale of Goods Act 1994 and the Respondent's continued demands for this are unconnected to the domain name.
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
- that the Respondent's domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
6.2 The Policy paragraph 4c sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4b 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 As stated, the circumstances set out in paragraphs 4b and c of the Policy are not exhaustive. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4a(ii) and (iii) of the Policy.
6.5 Identical or Confusingly Similar
6.6 The Second Complainant is the proprietor of United Kingdom trade mark applications 2,277,711 and 2,278,269 for BETT HOMES in plain and stylised form. These applications were, however, filed after this Complaint. These pending trade mark applications are not rights in a trade mark on which the Complainants can rely in this proceeding.
6.7 The Panel is, however, persuaded that the Complainants are the proprietors of common law rights in the trade mark BETT HOMES in the United Kingdom by dint of continuous use in the residential home construction business since the late 1970s. The evidence of advertising annexed to the Complaint demonstrates that BETT HOMES is prominently used as the chief indicator of source in respect of the Complainants' homes, and the considerable annual turnover figures demonstrate that the business is a sizeable one. Common law rights can constitute rights in a trade mark sufficient for paragraph 4a(i) of the Policy, and the Panel accepts that the First Complainant's own goodwill in the unregistered trade mark BETT HOMES for this purpose.
6.8 The Panel accepts that domain name registrations are capable of conferring trade mark rights within the meaning of paragraph 4a(i) of the Policy when they have been used in such a way as to render them effective as indicators of origin in fact. However, there is no such evidence of such use here. The Panel therefore, does not consider that the First Complainant has established trade mark rights as a result of use of the domain name <betthomes.co.uk>
6.9 The Panel nevertheless finds that the domain name in issue is identical to the Complainants’ BETT HOMES trade mark. The generic top-level domain .com, lower-case characters, and the omission of spaces between words are ordinary incidents of domain names which do not detract from the identity with the Complainants' trade mark in this case.
6.10 Rights or Legitimate Interests
The Panel has no doubt that the underlying dispute between the parties to this administrative proceeding is one which has caused, and is perhaps still causing, great frustration to the Respondent and his family. Such frustration, however, cannot confer on the Respondent a right or legitimate interest in the domain name in issue.
6.11 The Response states:
"The website is not the issue, the Complainants’ alleged breach of contract is the issue."
Whilst the Panel is sympathetic to the Respondent's position, the decision on whether the Respondent has a right or legitimate interest in the domain name must be assessed objectively. The Policy is concerned with how a domain name is used in relation to a Complainant's trade mark. The question of rights and legitimate interests is not concerned with the strength of the Respondent's rights of action, if any, against the Complainants, or his overall moral position in a matter unrelated to trade mark rights.
6.12 In this case, it is quite clear that before receiving notice of the dispute the Respondent was well aware of the Complainants' BETT HOMES trade mark and that he was not using, or making demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Nor was he commonly known by the domain name.
6.13 The question to be decided is whether, in using the domain name as a vehicle to air his views about the Complainants' workmanship, the Respondent was making a legitimate non-commercial or fair use of the domain name. Doubtless the Respondent has a right to express his views on the Complainants' business, but does this right extend to the hosting of such views at a domain name which is identical to the Complainants' trade mark?
6.14 The Panel is aware of conflicting decisions on this issue under the Policy. The argument in favour of allowing complaint sites to operate under domain names incorporating another's trade mark is that such domain names merely highlight the subject matter of the sites and, therefore, enable visitors to locate and remember them easily. To prohibit their use as such subject-matter indicators would be to unduly restrict freedom of speech on the Internet. Such free-speech arguments have persuaded some Panels that domain names identical to trade marks but used for complaint sites are not prohibited under the Policy. Examples include TMP Worldwide Inc. .v. Jennifer L. Potter, WIPO Case No. D2000-0536 and Bridgestone Firestone .v. Jack Myers, WIPO Case No. D2000-0190.
In both of those cases, which involved US resident parties, the Panelists applied principles of US law which they deemed applicable [Rules, paragraph 15(a)] and applied a US fair use doctrine and rights arising under the First Amendment to the US Constitution. In WIPO Case No. D2000-0536 the Respondent, Jennifer Potter, and her Company, A Silver Spoon Adoptions Inc., were in dispute with TMP in relation to non-payment of Yellow Pages advertising placed by TMP. In WIPO Case No. D2000-0190, Mr. Myers was a former Bridgestone Firestone employee and was in dispute with the Company over pension payments.
6.15 By comparison, in this case the parties are both resident in Scotland and the Panel sees no justification to consider US constitutional law. Further, in this Panel's view, there is no legitimate interest or right to use a third party's trade mark in a domain name such that would-be visitors to the brand owner's legitimate site accidentally arrive at the complaint site instead. That this can be damaging to brand owners needs no elaboration. Indeed, it is doubtless for this very reason that many identical and very similar complaint site domain names are chosen. To permit this would be to encourage unscrupulous practices by complaint site owners. Similar views have been expressed by other Panels in, for example, Lloyds TSB Bank PLC v. Paul Brittain (WIPO Case No. D2000-0231).
6.16 That there has been confusion of Internet users seeking the Complainants' legitimate site is evident from the Respondent’s own evidence, which includes a congratulatory email from a supporter who found the site by accident when seeking information on the Complainants. In that case, the confusion is unlikely to have resulted in any loss to the Complainants since the author of the email was already another disgruntled owner of a BETT HOMES house. This is, however, evidence of the likelihood that this diversion of consumers will happen again. The forum for resolving the dispute between the parties to this Complaint as to the alleged shortcomings of the home sold by the Complainants to the Respondent is not the Policy. It is not a fair use of the BETT HOMES trade mark to use that mark with a view to embarrassing the trade mark owner to settle a vendor / purchaser dispute of this type.
6.17 For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainants’ workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainants' trade mark.
6.18 The Respondent’s status as a shareholder of the Complainants does not alter the Panel's view, nor does the fact that the domain name in issue was freely available to anyone on a first-come-first-served basis. It should not be necessary for the Complainants to register their trade mark as a domain name in every conceivable form and combination, simply to avoid damaging misuse of its trade mark as a website address by complaint site operators.
6.19 Registered and Used in Bad Faith
The Respondent registered the domain name in issue knowing that it was identical to the name by which the Complainants were known. He did this because he was embroiled in a dispute with the Complainants and had the intention of setting up a website to publicise that dispute, which had the potential to damage the Complainants’ business and thereby put pressure on them to resolve his complaints.
6.20 The Respondent subsequently used the domain name to host a complaint site which contained graphic descriptions of the problems he had experienced with his BETT HOMES house. The Respondent's letter of 6th May 2001 to Robert Hanna observing that the website was not good advertising for the Complainants and implying that it would continue until the Respondent's complaints were resolved shows that the Respondent also actively used the domain name as leverage in his underlying dispute with the Complainants.
6.21 The registration and use of the domain name in issue was intended to disrupt the Complainants’ business by taking advantage of the fact that Internet users seeking the Complainants' legitimate site would be likely to go to the address www.betthomes.com. The Respondent's aim was to damage the Complainants' reputation and business and thereby to pressure the Complainants into resolving their dispute with him. Paragraph 4b(iii) of the Policy states that such an intention to disrupt a business is evidence of registration and use in bad faith where the business disrupted is that of a competitor. However, the examples of bad faith given in the Policy are not exhaustive [paragraphs 6.3 and 6.4 above], and the Panel sees no reason why an intent to disrupt the business of a non-competitor should not also evidence bad faith in certain circumstances. The Panel finds that in this case the circumstances do support a finding that the domain name in issue was registered and is being used in bad faith.
6.22 The Panel also finds that the Respondent used the domain name intentionally to attract Internet users to his complaint site by creating a likelihood of confusion with the Complainants' trade mark, with the intention of gaining a benefit in the form of the satisfactory resolution of his dispute with the Complainants. Here, the self-confessed purpose of the Respondent's website is to obtain a commercial gain, namely resolution of his complaints. Whilst the Respondent's complaints may be justified, unauthorised use of a third party's trademark does not avoid bad faith use under the Policy.
6.23 However, even if - contrary to the Panel's opinion - the domain name in issue is not being used by the Respondent for commercial gain, as stated above the examples of bad faith listed in the Policy are not exhaustive, and the Panel considers that an intentional effort to create and take advantage of a likelihood of confusion to exert a non-commercial advantage should also be capable of evidencing bad faith. In this case, the Respondent sought an advantage in his ongoing dispute with the Complainants concerning the quality of his house, under threat of continued negative publicity about the Complainants under an inherently misleading domain name. The Panel, therefore, also finds that the domain name was registered and used in bad faith on this ground, as well.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4 of the Policy. Accordingly, the Panel requires that the domain name <betthomes.com> be transferred to the First Complainant.
Dated: October 22, 2001