WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HSBC Holdings Plc v. Iain Rayner
Case No. DTV2001-0021
1. The Parties
The parties are HSBC Holdings Plc of 10 Lower Thames Street, London EC3R 6AE, UK (Complainant) and Iain Rayner of No. 4, 8 Millennium Drive, London E14 3GH, UK (Respondent).
2. The Domain Name and Registrar
The domain name in dispute is <firstdirect.tv> ("the Domain Name"). The Registrar is The .tv Corporation of 1100 Glendon Avenue 8th Floor, Los Angeles, California 90024, US.
3. Procedural History
The complaint was filed by Wragge & Co, solicitors for the Complainant, with the WIPO Arbitration and Mediation Center ("the Center") by email on August 30, 2001, and in hard copy on September 7, 2001. The Registrar verified on September 14, 2001, that it is the Registrar of the Domain Name, that the Respondent is the named Registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the registration and that it had been sent a copy of the complaint.
The complaint was notified by the Center to the Respondent by email (without attachments) on September 19, 2001, and by courier (with attachments) on September 25, 2001. The Respondent submitted a response by email (without attachments) on October 8, 2001, and by post (with attachments) received by the Center on October 15, 2001. The members of the Panel - Jonathan Turner (presiding), Professor William Cornish and Lynda Zadra-Symes - submitted signed Statements of Acceptance and Declarations of Impartiality and Independence and were duly appointed on October 22, 2001. In accordance with paragraph 15 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the Panel was required to forward its decision to the Center by November 5, 2001, in the absence of exceptional circumstances.
Having reviewed the file, the Panel concludes that the complaint complied with the applicable formal requirements, was properly notified to the Respondent and has been submitted to a duly appointed Panel in accordance with the Policy applicable to the Domain Name.
4. Factual Background
The Complainant and its subsidiaries are a very large banking and financial services organization. The Complainant’s subsidiary HSBC Bank plc has a division which has provided telephone operated banking services under the name "First Direct" in the UK since 1989. The division’s services have been advertised heavily under the name "First Direct" and it now has over a million customers.
A PC operated banking service was trialed by this division in July 1997, and launched in April 1998. A banking service operated through the Internet was launched by this division in November 1999. A mobile telephone operated banking service was launched by the division in May 2000. A proposed TV banking service was advertised by the division by direct mail in April 2000, and had been advertised on its website with a form to register interest since September 1999.
The Complainant is the proprietor of registered trademarks for the name "First Direct" for banking, insurance and stockbroking services in the UK and many other countries.
The Respondent is a director of a company now called "Carefree.tv The First Direct Television Company Limited" having changed its name from "Rayner Webberley Company Limited" in or about early May 2001.
The Domain Name was registered by the Respondent on June 1, 2000, and was offered for sale through the website www.greatdomains.com by online auction with a minimum of $5000. As at January 2001, the Domain Name resolved to this site.
On March 13, 2001, the Complainant wrote to the Respondent asserting rights in the name "First Direct" and requesting transfer of the Domain Name. The Respondent replied on March 15, 2001, stating that the Domain Name was "currently pointing at a server in Los Angeles, USA, pending a decision on how it may be used in the future. We are currently contemplating possible uses for the domain name outside of the United Kingdom."
On April 17, 2001, the Complainant’s solicitors wrote to the Respondent insisting on transfer of the Domain Name and threatening proceedings under the Policy if it was not transferred. The Respondent replied stating that Rayner Webberley Company Limited intended to act as a distributor of home entertainment equipment under the trading name Carefree.tv and to use the slogan "the first, direct television company". According to this letter, the venture had been planned since May 2000.
By April 25, 2001, the Domain Name had been repointed to a web page which referred to "Carefree.tv – the first television company coming to the USA in late 2001". It indicated that a phone and fax number and US contact details would be posted soon.
5. Parties’ Contentions
The Complainant contends that it has registered and unregistered rights in the mark "First Direct" and that the Domain Name is the same or confusingly similar to this mark. The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name and, in particular, had not used or made demonstrable preparations to use it or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute. Finally, the Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points to the fact that it was registered by a UK resident who must have been aware of the use of the name "First Direct" by the Complainant’s group, that it was registered after the Complainant’s subsidiary’s "First Direct" division had advertised an intention to develop television banking, and that it was offered for sale by auction with a minimum of US $5000, a sum in excess of the Respondent’s out-of-pocket costs of registration.
The Respondent states that his company was formed to develop a business selling consumer electronic goods through a variety of direct channels, including television home shopping, the Internet and telephone. He says that business planning has been ongoing since early 2000, but that the launch has been delayed by a need to revisit the business model following the fall in valuations of Internet businesses. He says that the principal branding of the business is or will be Carefree.tv, supported by the device "the firstdirect.tv.pc.dvd.company", and that checks were carried out in early 2000 to establish whether the latter name could be used without infringing trademarks. He accuses the Complainant of having a monopolistic culture and weak management.
The Respondent contends that his company’s proposed use of the Domain Name would not cause confusion and that the company has a right to use it. He denies that it was registered and is being used in bad faith. He states that the primary purpose of offering the Domain Name for sale was to support its accounting treatment and valuation as a fixed asset and that a secondary purpose was to provide a holding page prior to launch. He maintains that his registration has not prevented the Complainant from reflecting its mark in a suitable name and suggests that the Complainant’s conduct in registering a large number of domain names incorporating the words "first" and "direct" is obstructing other companies legitimately using these words.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, a complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
As to the first requirement, it is clear that the Complainant has registered and unregistered rights in the mark "First Direct". While it might be said that the goodwill under the name belongs to the Complainant’s subsidiary rather the Complainant itself, the Panel considers that the Policy should be interpreted as permitting a parent company to make a complaint on behalf of its group.
In line with the WIPO panel decision in D2001-0154
KCTS.com, the Panel considers that the TLD suffix should be ignored in
determining whether a domain name is identical to a mark in which a complainant
has rights for the purpose of paragraph 4(a)(i) of the Policy. If this
view is correct, the Domain Name is identical to the Complainant’s mark in this
case. Even if it is not correct, the Panel considers that the Domain Name is
confusingly similar to the Complainant’s mark, particularly given that the Complainant’s
subsidiary has advertised television banking under the name "First Direct"
and that this is a natural extension of the modes of operation already developed
The Respondent draws attention to other registrations or uses of the mark "First Direct" by third parties. This does not alter the fact that the Domain Name is confusingly similar to the Complainant’s mark. With the exception of First Chicago, the third parties are in different fields. In any case, the possibility that First Chicago or any other third party has registered or is using a confusingly similar mark does not assist the Respondent.
As to the second requirement, the Panel considers that the Respondent has no rights or legitimate interests in respect of the Domain Name or a corresponding name. The Respondent has provided no evidence of any use or demonstrable preparations to use the Domain Name or a corresponding name prior to notice of the dispute by the Complainant’s letter of March 13, 2001. Furthermore, the Respondent’s letter of March 15, 2001, clearly indicates that at that date the Respondent had not made any preparations to use the Domain Name. This is evident from both what it says ("currently pointing at a server in Los Angeles, USA, pending a decision on how it may be used in the future. We are currently contemplating possible uses for the domain name outside of the United Kingdom.") and what it does not say (absence of any details of preparations). The posting of the Respondent’s website after notice of the dispute and its rudimentary state are also inconsistent with the Respondent’s suggestion of earlier preparations to use the Domain Name.
The Respondent has asserted that it has been preparing plans to launch a business called Carefree.tv but that it is not prepared to disclose these to the Complainant because they are confidential. The Panel notes that this concern is at odds with the Respondent’s insistence that his proposed activities would not conflict with those of the Complainant. The Panel considers that if there was evidence of preparations to use the Domain Name or a corresponding name for a bona fide offering of goods or services prior to notice of the dispute, it could and would have been provided. In accordance with paragraph 15(a) of the Rules, the Panel decides the case on the basis of the statements and documents submitted by the parties and declines to exercise its discretion under paragraph 12 of the Rules to request further documents or statements.
As to the third requirement, the Panel notes that the Domain Name was registered by a UK resident who must have been aware of the Complainant's extensive use of the name "First Direct"; that it was registered in June 2000, after the Complainant advertised a pending television banking service by direct mail shot; and that until after notice of the dispute, it was offered for sale by online auction with a minimum of $5000, a sum in excess of the costs of registration.
The Respondent's explanation of the offer for sale, namely to support the accounting treatment of the Domain Name, is implausible and inconsistent with the fact that the Respondent is not offering for sale the domain name Carefree.tv which he describes as the principal branding of the proposed business.
There is no evidence of the Respondent's alleged preparations to advertise as "the first, direct television company" or "the.firstdirect.tv.pc.dvd.company" and this was also not mentioned in the Respondent’s letter of March 15, 2001. The Panel regards this as a further implausible explanation devised after the Complainant drew the Respondent’s attention to the Policy.
The Panel concludes that the Domain Name was registered and is being used in bad faith, and in particular for the purpose of sale at a price in excess of the Respondent’s costs of registration to the Complainant or to a third party wishing to take unfair advantage of the reputation of the Respondent’s "First Direct" mark.
The Panel concludes that the Domain Name should be transferred to the Complainant.
The Panel decides that the domain name <firstdirect.tv> should be transferred to HSBC Holdings Plc of 10 Lower Thames Street, London EC3R 6AE, UK.
Professor William Cornish
Dated: November 5, 2001