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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shoosmiths Solicitors v. Fun Ken Lin
Case No. D2002-1000
1. The Parties
The Complainant is Shoosmiths Solicitors, The Lakes, Northampton, NN4 7SH, United Kingdom of Great Britain and Northern Ireland, of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Fun Ken Lin, No. 12 Chung Sin Rd, Hsia Chung Chin, Chin Hoo Township, Kinmen, Fu-jian 891, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <shoosmiths.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2002. On October 28, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 12, 2002, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2002.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on December 13, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a law firm which was established in England in 1845. Its business was conducted under the name ‘WM Shoosmith & Sons’ until 1st January 1924, when it became known as ‘Shoosmiths & Harrison’. The name was subsequently changed back to just ‘Shoosmiths’ in June 1999. However in the interim, the firm was still known popularly within the legal field and generally by the public as ‘Shoosmiths’. The Complainant provides a full range of legal services under the name ‘Shoosmiths’ and has done for many years. According to the Complaint, the firm is included in the dominant legal directories for the UK and internationally, both in hard copy and on-line. The firm acts for clients overseas as well as in the UK, including those based in Europe, the US and Canada and its members have contacts with many individuals, companies and firms across the world.
The Complainant or its agent has registered and uses many domain names that contain "shoosmiths." The Complainant’s main web site is at shoosmiths.co.uk.
The Complainant originally registered the domain name now in dispute, <shoomiths.com>, on April 29, 1997. When the name was last due to expire (on April 30, 2001), the Complainant made the necessary arrangements for it to be renewed for a further 2 year period through Network Solutions online renewal service. The Complainant duly received a notification from Network Solutions that the renewal had been effected and that the domain name was now secured until April 30, 2003. However, for some reason unknown to the Complainant, Network Solutions never took payment for the renewal and subsequently cancelled the registration. It was not the Complainant’s intention at any time to allow the domain name to expire.
The fact that the renewal had not been effected first came to the Complainant’s attention on September 2, 2002, when they received an unsolicited email offering to sell the domain to them for USD89.95 which led them to check the status of the domain registration. The sender of that email at this time appears to be unconnected to the Respondent and is not the current registered owner of the domain.
In the meantime, the Respondent had registered the domain name in dispute on August 31, 2002.
On September 7, 2002, an employee in the Information Systems department of the Complainant emailed the Respondent, using the name Andrew Doyle, and posing as a potential buyer for the domain name in dispute. This email suggested that the intention of ‘Mr. Doyle’ was to use the goodwill established by the Complainant in the name ‘Shoosmiths’ as a way of attracting visitors to the domain in dispute if transferred to him. The Respondent invited Mr. Doyle to make him an offer. The Complainant’s employee asked Respondent what he thought would be a fair price. The Respondent replied that he considered a price of USD 1000 to be a reasonable price for both parties.
On September 16, 2002, Jayne Ellingham, the person responsible at the Complainant for managing their domain name portfolio, emailed the Respondent again. This time the email was done openly from the Complainant requesting that the domain be transferred to them on the basis of their common law rights in the name ‘Shoosmiths’ and that the Complainant did not consider him to have a legitimate interest in the domain. She offered a payment of USD 250 to cover the Respondent’s reasonable out of pocket costs directly related to the domain name. Respondent replied to this email on September 20, 2002, stating that he would agree to transfer the domain to the Complainant for the sum offered and asked for payment via Paypal, which would immediately be followed by transfer. Complainant did not want to pay prior to transfer, and asked the Respondent in an email from Jayne Ellingham on September 27, 2002, if they could use <escrow.com> instead. In his response to this email on October 4, 2002, following a reminder of the same date from Jayne Ellingham, the Respondent argued that this was not feasible as he would have to open a new account and wait 6 months to upgrade his credit to be able to receive the monies by telegraphic transfer.
Respondent did not transfer the disputed domain name to Complainant.
The Complainant also notes that its latest search of eNom Inc.’s whois database on October 23, 2002, shows that the Respondent’s email details have been removed.
5. Parties’ Contentions
The Complainant contends that is has established rights in the domain name, due to its registration and use of many domain names containing "shoesmiths", and due to its long history of using "shoesmiths" in connection with legal services. It states that it would be entitled to a finding of common law rights in England.
The Complainant contends that the Respondent opportunistically registered the domain name in dispute following the accidental expiration of the original registration of that domain by the Complainant with the ultimate intent of selling it back to the Complainant or a third party for use in diverting internet traffic intended for the Complainant to that third party’s site.
The Complainant relies in particular upon Advokatfirmaet Haavind Vislie DA v. Sung-Nam Kim, WIPO Case No. D2002-0004, in which the Panel held that where a domain name originally registered by the Complainant expired accidentally, there was no argument that such domain could then be registered by anyone where such new registrant’s intent was to sell the domain back to the Complainant for valuable consideration exceeding out of pocket expenses, and that such action was in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set forth above, the Complainant’s law firm has been known as Shoosmiths or variations including Shoosmiths since 1845. It is listed in various international registries, and represents clients throughout the UK and beyond. I find that the Complainant has established sufficient common law rights in "Shoosmiths," which is identical to the domain name in dispute.
B. Respondent’s Rights or Legitimate Interests
Respondent has defaulted, and therefore has offered no proof of its rights or legitimate interests in the domain name.
Complainant has shown that it previously registered and renewed the disputed domain name, and that only through an error was the domain name available for registration by Respondent. Furthermore, Complainant has not found any evidence that Respondent was using or making preparations to use the domain name in connection with a bona fide offering of goods or services, nor did Respondent make such statements in its correspondence with Complainant.
I therefore find that Respondent has no rights or legitimate interests in the disputed domain name.
C. Respondent Registered and Used the Disputed Domain Name in Bad Faith
The facts set forth above show that Respondent corresponded with "Andrew Doyle," a pseudonym for one of Complainant’s employees, and with Jayne Ellingham, who identified her relationship to Complainant. Each set of correspondence was attached to the Complaint.
In response to an inquiry by "Andrew Doyle" as to what would be a fair price, Respondent replied that he considered a price of USD 1000 to be a reasonable price for both parties.
In the correspondence with Jayne Ellingham, Respondent agreed to transfer the domain name for USD 250 (Ellingham’s offer), but set terms that would require Complainant to send the funds before the transfer. When Ellingham suggested using <escrow.com>, Respondent indicated that it would not be feasible for him. Respondent did not follow up on Ellingham’s offer, even when this proceeding was instituted.
On October 22, 2002, the Complainant became aware that the Respondent had directed the domain to another domain at www.kinmen.info/~taiwan21/dnsf.html. According to Complainant, this site listed Respondent’s email address as the email contact for a number of domains offered for sale. The domain in dispute was not on the list.
Complainant notes that in a search of eNom’s whois database on October 23, 2002, Respondent’s email details had been removed.
Based on these facts, it appears that Respondent registered and used the domain name primarily for the purpose of selling the domain name at a price that exceeds his reasonable expenses, or under conditions that render it less than likely that the transfer would take place following Complainant’s payment for the domain name. I find that Respondent registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shoosmiths.com> be transferred to the Complainant.
Sandra A. Sellers
Date: December 27, 2002