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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J C Bamford Excavators Limited v. MSD (Darlington) Limited
Case No. D2001-1484
1. The Parties
The Complainant is J C Bamford Excavators Limited.
The Complainant is represented by Bird & Bird, Solicitors, London EC4A 1JP, United Kingdom.
The Respondent is MSD (Darlington) Limited, Red Barnes Park, McMullen Road, Darlington, County Durham, DL1 2RR, United Kingdom.
2. The Domain Names and Registrars
The disputed domain names are <jcb-equipment.com>, <jcbplant.com>, <jcb-plant.com>, <jcb-sales.com>, <jcbspares.com>, <jcb-spares.com>, <jcbequipment.uk.com>, <jcb-equipment.uk.com>, <jcbfinance.uk.com>, <jcb-parts.uk.com>, <jcbplant.uk.com>, <jcb-plant.uk.com>, <jcbs.uk.com>, <jcbsales.uk.com>, <jcb-sales.uk.com>, <jcbspares.uk.com>, <jcb-spares.uk.com>;
The Registrars are Network Solutions Inc. and CentralNic.
3. Procedural History
The Complaint was received by WIPO by email on December 21, 2001, and in hardcopy form on January 7, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case. The Complaint was properly notified in accordance with the Rules, paragraph 2(a).
Network Solutions Inc has confirmed that the domain names <jcb-equipment.com>, <jcbplant.com>, <jcb-plant.com>, <jcb-sales.com>, <jcbspares.com> and <jcb-spares.com> were registered through Network Solutions Inc., that the UDRP ("the Policy") is applicable to those domain names and that MSD (Darlington) Limited ("the Respondent") is the current registrant.
CentralNic has confirmed that the domain names <jcbequipment.uk.com>, <jcb-equipment.uk.com>, <jcbfinance.uk.com>, <jcb-parts.uk.com>, <jcbplant.uk.com>, <jcb-plant.uk.com>, <jcbs.uk.com>, <jcbsales.uk.com>, <jcb-sales.uk.com>, <jcbspares.uk.com> and <jcb-spares.uk.com> were registered through CentralNic and that the Respondent is the current registrant.
Network Solutions Inc. has further confirmed that the Policy is applicable to all the domain names registered through Network Solutions Inc. (together hereinafter referred to as "the Domain Names")
CentralNic has not been able to give the same confirmation. It has only been able to say that it ‘believes’ the Policy to be applicable to the ‘.uk.com’ domain names. It does not give any explanation for the basis of that belief. The Complaint quotes from the CentralNic terms and conditions to which the Respondent has signed up, but there is no mention of the Policy. CentralNic has referred to new terms and conditions, which came into effect in relation to the ‘.uk.com’ domain names after the date of the Complaint. These new terms and conditions do not expressly incorporate the Policy. The only reference to the Policy is as followsprovide inter alia:
"CentralNic may at its sole option, cancel the registration or suspend registration of the domain name if … following the ICANN Uniform Domain-Name Dispute-Resolution Policy the name has been judged to infringe the trademark or other intellectual property of the complainant."
Clearly, if at all possible, all the domain names the subject of this dispute ought sensibly to be dealt with together. So far as internet users are concerned there is no difference of any substance between them. The same considerations ought to apply in respect of each of them.
However, in this case, at the time the Complaint was launched, there was no agreement in place between CentralNic and the Respondent, which incorporated the Policy in any shape or form. Accordingly, and reluctantly, the Panel concludes that it does not have jurisdiction to hear this Complaint insofar as it concerns the ‘.uk.com’ domain names.
Since the Panel has had the new/current CentralNic terms and conditions referred to it, it is appropriate that the Panel should comment on them, but in doing so, the Panel does not seek to circumscribe how a future panel might approach the issue.
The Panel questions whether the new/current CentralNic terms and conditions properly and effectively incorporate the Policy. There appears to be no express incorporation of the Policy. The extract quoted above retains the right for CentralNic not to follow a panel decision, if it does not wish to do so; it only empowers CentralNic to cancel or suspend (not to transfer) a registration; and the relevant panel decision triggering any such activity must incorporate a finding of trade mark or other IP infringement, which is not a finding that a panel is required to make under paragraph 4(a) of the Policy. The Policy is concerned with abusive registration, not infringement. The two are not synonymous.
The Panel has not been shown the terms of the agreement(s) between CentralNic and ICANN and/or the registrar for the ‘.uk.com’ domain names, but it may be that the only entity properly subject to the Policy in respect of the ‘.uk.com’ domain names is CentralNic itself.
The Panel proceeds to deal with the Complaint only insofar as it relates to the domain names registered through Network Solutions Inc., which domain names are together hereinafter referred to as "the Domain Names".
Reluctantly, the Panel concludes that it does not have jurisdiction to hear this Complaint insofar as it concerns the ‘.uk.com’ domain names.
On February 1, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was February 21, 2002.
WIPO issued a Notification of Respondent Default on February 27, 2002. On February 28, 2002, the Response was received by WIPO by fax and in hardcopy form on March 5, 2002. As will be seen below the Panel has read and considered the Response notwithstanding that it was filed out of time.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is March 27, 2002.
4. Factual Background
The Complainant is well known in the United Kingdom as a manufacturer of various types of construction and agricultural machinery and has been trading in the United Kingdom for over 50 years. It is better known by its principal trade mark JCB, which is a household name in the United Kingdom.
The Complainant is the proprietor of a large number of trade mark registrations for JCB and is also the proprietor of various other trade mark registrations incorporating JCB, e.g. JCB ASSETCARE, JCB ASSETPLAN, JCB AUTOSHIFT, JCB TOUGHWEAR for various goods and services associated with and/or ancillary to the principal business.
Within the group of companies headed by the Complainant are various companies incorporated under names including JCB e.g. JCB FINANCE LIMITED, JCB LIMITED, JCB PARTS LIMITED, J.C.B. EQUIPMENT LIMITED and J.C.B. SALES LIMITED.
The Complainant registered the domain names jcb.com and jcb.co.uk in July 1997, and February 1998, respectively. Subsequently, it has registered other domain names including <jcbfinance.com> and <jcbsales.com>.
The Respondent is a UK company whose primary business is the hire and sale of cranes and other heavy equipment. It appears also to hold a substantial bank of domain names, which it offers for sale and leasing. The Domain Names and various other similar domain names in the ‘.co.uk’ and ‘.uk.com’ domains were registered by or for the Respondent in February 2000.
In April 2000, the Domain Names featured as domain names for sale and lease (the lease rate being Ј500 per name per year) on the <jcbfinance.co.uk>/ <domainsales.co.uk> website(s). Among the domain names offered for sale/lease are domain names featuring the trade marks of competitors of the Complainant.
In May 2000, the Domain Names linked to the previous site and/or a site substantially identical to that site at domainsales.uk.com being a site offering domain names for sale or lease, but at this stage the Domain Names, while connecting to the site, were no longer in the list of domain names for sale or lease.
As at November 14, 2001, all the Domain Names linked to a replica of the Respondent’s site at msd-darlington.co.uk. This site appears to be the Respondent’s principal website advertising its business in crane hire/sales etc. The home page includes the following sentence "we have a vast stock of spares and parts for all major manufacturers, including Caterpillar, JCB, Komatsu, Peljobs, Hitachi, Bobcat, Liebherr plus many more." While elsewhere on the site there are references to items of equipment for sale none of them appear to be equipment manufactured by the Complainant.
Towards the end of 2001, a number of conversations took place between the Complainant’s solicitors and the Respondent. It is not disputed that the Respondent expressed a willingness to sell the Domain Names to the Complainant for Ј150 per Domain Name, but on the basis that the Complainant purchased all the Domain Names.
On November 7, 2001, the Respondent informed the Complainant’s solicitor that the Domain Names would be transferred to a third party if the Complainant’s solicitor did not get back to the Respondent within 24 hours.
5. Parties’ Contentions
The Complainant contends that the Domain Names and each of them are identical or confusingly similar to trade marks in which the Complainant has rights and produces evidence as to the nature of its trade mark rights both registered and unregistered (see above).
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names or any of them. It states that it has not consented to the use of the marks by the Respondent. It states that the Respondent has not made any use of or demonstrable preparations to use the Domain Names in connection with a bone fide offering of goods or services. It refers to telephone conversations between the Respondent and its solicitors in the course of which the Respondent is said to have confirmed to the Complainants’ solicitor that it was not using any of the Domain Names for the purposes suggested by the names and had no intention of doing so.
The Complainant asserts that the Respondent is not commonly known by any of the Domain Names and is not making legitimate non commercial or fair use of the Domain Names.
Finally the Complainant contends that the Respondent registered the Domain Names in bad faith and is using them in bad faith. It contends that the primary purpose of the Respondent in registering them was with a view to selling them at a profit to the Complainant or to prevent the Complainant from reflecting its trade marks in domain names which refer to certain areas of its business activities.
The Complainant points to the fact that the Domain Names were at least for a period immediately following registration of the Domain Names advertised for sale or lease on <jcbfinance.co.uk>/<domainsales.co.uk> websites.
The Complainant refers to a telephone conversation on November 7, 2001, between the Respondent and Jennifer Martin of the Complainant’s solicitors in the course of which the Respondent is said to have indicated that if the Complainant had the intention to use the Domain Names, which were on offer, the price demanded would be greater.
In a telephone conversation a couple of days later on November 9, 2001, the Respondent is reported to have indicated to the Complainant’s solicitors that it was in the process of transferring the Domain Names to a third party.
The Respondent does not dispute the repute of the Complainant, but contends that the Complainant’s repute and size does not give it the right to take from the Respondent names which it purchased in good faith.
It states that it trades as plant hirers, sellers, buyers, repairers, contractors etc and when necessary agrees deferred payment terms for those services.
The Domain Names connect to its site, but there is no deception. The site makes clear who the Respondent is and that the site is the Respondent’s site.
It acknowledges that there has been a series of communications between the Complainant’s solicitors and the Respondent over transfer of the Domain Names. It acknowledges too that it has sought Ј150 per domain name and states that this is well below book value in the Respondent’s accounts. It adds "… as far as we are aware there are no rules against profit."
In response to the Complainant’s assertion that the price sought is inflated to include a profit, the Respondent has since the launch of the Complaint offered to sell the Domain Names for the Ј100 per domain name that the Complainant had indicated previously that it was prepared to pay.
The Respondent contends that the confusion argument raised by the Complainant is a smokescreen to disguise the complainant’s upset at having failed to have had the commercial sense to register the names itself. Nobody could be confused.
In the Respondent’s view nobody could be confused between the companies. The Respondent says it is doing no more than what is common in the commercial world, namely advertising its services and the brands of goods it can service and supply.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
Identical or confusingly similar
There is no dispute between the parties that the Complainant has rights in the trade mark JCB and the other trade marks (registered and unregistered) cited by the Complainant.
All the Domain Names comprise the Complainant’s trade mark JCB combined with a descriptive word apt to describe the Complainant’s goods/activities (i.e. ‘equipment’, ‘plant’, ‘parts’, ‘sales’, ‘spares’) and the generic ‘.com’ domain suffix.
There is no dispute that the JCB element of the Domain Names is in each case intended to refer to the Complainant’s goods.
The Panel finds that all the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which if found by the Panel to have been proved shall demonstrate the Respondent’s rights or legitimate interests in respect of the Domain Names.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under paragraph 4(a) being on the Complainant.
The Complainant points out that:
(a) The Domain Names are all expressly directed to its equipment,
(b) It has not licensed the Respondent to use its trade marks in this way or at all,
(c) The Respondent originally linked the Domain Names to a site offering them for sale or lease, the leasing prices being several hundred pounds per name per year,
(d) The Domain Names are now linked to the Respondent’s site, which apart from one mention of JCB on the home page, indicates no dealings in JCB equipment at all
(e) In communications with the Respondent, the Complainant’s solicitors were given the firm impression that the Respondent had no intention of making any substantive use of the Domain Names and was on the point of transferring them to another party.
While the allegations under (c) and (e) above were clearly set out in the Complaint, the Respondent fails to deal with them, save to say that the assertions in the Complaint "do not fully represent the discussions that took place". The Respondent does not indicate in what respects the Complaint is inaccurate.
The Panel finds that the Respondent has a case to answer. Accordingly, it is necessary to look at paragraph 4(c) of the Policy. It is not suggested that the Respondent is commonly known by any name comprising or including JCB, nor is it suggested that anything the Respondent is doing is non-commercial, so we are left with considering the following questions:
(i) Has the Respondent made any use or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services? (paragraph 4(c)(i) of the Policy)
(ii) Can the Respondent be said to be making legitimate fair use of the Domain Names? (paragraph 4(c)(iii) of the Policy)
(iii) Is there any other ground (beyond the non-exhaustive list in paragraph 4(c) of the Policy) for saying that the Respondent has rights or legitimate interests in respect of the Domain Names?
The Panel concludes that none of those questions can be answered in the affirmative. The Panel agrees with the Complainant that the evidence overwhelmingly supports the Complainant’s contention that the Respondent registered the Domain Names to sell them at a profit. They were originally offered for sale/lease shortly after they were registered and in the Complainant’s solicitor’s notes of her conversations with the Respondent, which the Panel accepts as accurate in the absence of any detailed criticism of their accuracy, it is made plain that the Respondent never had any intention of making any proper commercial use of them.
The subsequent linking of the Domain Names to the Respondent’s trading site was clearly an afterthought. The site had little if anything to do with JCB and the Panel does not accept that it is indicative of any serious intention to use the Domain Names for the purposes of offering of goods or services connected with the Complainant’s equipment. The sheer number of names involved (not just the Domain Names in issue) is indicative of the Respondent building up a bank of names to trade on to others. To the extent that those names are generic in nature, no complaint can be levelled at the Respondent, but the Domain Names are far from generic.
The Panel finds that the Respondent never had any intention of making bona fide use of the Domain Names and registered them with a view to selling them at a profit to the Complainant or one of its competitors. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
For the same reason the Panel finds that the Respondent registered the Domain Names in bad faith and is using them in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) of the Policy. At the outset, the sums the Respondent was seeking were far in excess of the Respondent’s out of pocket expenses relating to the registration of the Domain Names. Even at the later price of Ј150 per domain name the Respondent was seeking a substantial profit and, contrary to the Respondent’s belief, in circumstances such as these, there are rules against profit, namely paragraph 4(b)(i) of the Policy.
In light of the foregoing findings namely that the Domain Names are identical or confusingly similar to a trade mark or trade marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered in bad faith and are being used in bad faith the Panel directs that the Domain Names <jcb-equipment.com>, <jcbplant.com>, <jcb-plant.com>, <jcb-sales.com>, <jcbspares.com> and <jcb-spares.com> be transferred to the Complainant.
Dated: March 20, 2002