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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Royal Crown Derby Porcelain Company Limited v. Mervyn Oliver

Case No. D2003-0072

 

1. The Parties

The Complainant is The Royal Crown Derby Porcelain Company Limited of Derby, United Kingdom of Great Britain and Northern Ireland, represented by Swindell & Pearson of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mervyn Oliver of Bereldange, Luxembourg.

 

2. The Domain Name and Registrar

The disputed domain name <royalcrownderby.com> (the "Domain Name") is registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2003. On January 31, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 3, 2003, Melbourne IT trading as Internet Name Worldwide 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, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2003. The Center verified that the Complaint together with the amendment to 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 February 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2003. The Response was filed with the Center on March 3, 2003.

The Center appointed Brigitte Joppich as the sole Panelist in this matter on March 7, 2003. 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 owner of the well-known trademarks ROYAL CROWN DERBY in respect of china and porcelain articles and related products, which it and its predecessors have used since approximately the year 1890 and which has been registered in a very significant number of countries of the world over the last 50 years, as early as 1953 in the U.S., 1975 in the Benelux territory, including Luxembourg, and 1972 in the UK.

The name ROYAL CROWN DERBY has also been used as a company name by the Complainant since 1890 after it had been granted permission to use the word "royal" in its title by Queen Victoria (the company had previously done business as the Derby Crown Porcelain Company Ltd.). The Complainant used to be part of the Royal Doulton group of companies.

The Complainant has made substantial worldwide sales and advertising in respect of china and porcelain articles under the ROYAL CROWN DERBY name.

The Domain Name was originally registered on March 17, 2000, on behalf of "Yesterday Once More" with Mr. Clifford Abel (the "Original Registrant") as contact. The Original Registrant is a cousin and business partner of the Respondent and subsequently transferred the Domain Name to the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case, i.e.

(i) the Domain Name is identical to the ROYAL CROWN DERBY marks;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; in particular, a mere intention by the Respondent to market the Complainant’s products or services using the Domain Name is not sufficient;

(iii) the Domain Name was registered and is being used by the Respondent in bad faith as there was no evidence of the Original Registrant’s or the Respondent’s use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services and there is not and has not been any legitimate non-commercial use of the Domain Name by the Original Registrant or the Respondent.

The Complainant further refers to a letter received by the Complainant from the Respondent dated March 20, 2001 (submitted as Annex 14 to the Complaint).

B. Respondent

In the Response, the Respondent also refers to the letters exchanged between himself and the Complainant prior to the commencement of Administrative Proceeding and relies on them to prove his good faith, in particular on said Annex 14 to the Complaint.

The Respondent claims to be entitled to use the Domain Name as the Complainant had not registered it by the time the Original Registrant acquired the Domain Name. The Respondent’s intent was to attract prospective buyers by maximizing the probability that search engines would lead prospective buyers to the site. The Respondent further contends that he and the Original Registrant had traded in ROYAL CROWN DERBY products for several years and invested in Royal Doulton goods and the Web name was registered to sell such products. The Web site is supposed to clearly alert the reader that it has no connection to the Royal Doulton company and gives a link to the official Web site.

The Respondent refers to Annex 16 of the Complaint as to the look and feel of the website previously accessible under the Domain Name, mentioning the sale of "Crown Derby Paper Weights" under the name of "Tony’s Collectables."

Finally, the Respondent states that the Complainant’s interest in the Domain Name might be linked to the management buy-out of parts of Royal Doulton by the Complainant.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name <royalcrownderby.com> is identical to the trademarks and company name ROYAL CROWN DERBY in which the Complainant has rights as spaces cannot appear in domain names and the addition of the global top level domain name identification ".com" has no distinctive function. The Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In order to demonstrate rights to and legitimate interests in the Domain Name the Respondent had to establish circumstances under paragraph 4(a)(ii) and (c) of the Policy. In the correspondence submitted by the Complainant as Annex 14 to the Complaint, the Respondent reveals that both the Original Registrant and the Respondent were at the time of the registration aware of goods produced and distributed under the ROYAL CROWN DERBY mark and of the existence of a company named "Royal Crown Derby." As resellers of the ROYAL CROWN DERBY products the Original Registrant and the Respondent may have a right to resell or

market such products under the mark ROYAL CROWN DERBY. However, this does not create the right to use such mark more extensively than required to advertise and sell the products. In particular, these legitimate interests do not extend to legitimate interests in the Domain Name so that the Respondent cannot rely on paragraph 4(c)(i) of the Policy.

The Respondent has not claimed that he has been commonly known by the Domain Name under paragraph 4(c)(ii) of the Policy and is not making a legitimate non-commercial use of the Domain Name under paragraph 4(c)(iii) of the Policy either, nor have any other rights of the Respondent to or legitimate interests in the Domain Name been claimed.

The Complainant has therefore also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

By registering the Domain Name both the Original Registrant and the Respondent intended – according to the letter submitted by the Complainant as Annex 14 to the Complaint – to maximize the probability that search engines would lead prospective ROYAL CROWN DERBY buyers to their site. Despite the contention that the Original Registrant and the Respondent did not want to disguise themselves as "Royal Crown Derby," this constitutes registration in bad faith as it was chosen with full knowledge of Complainant’s trademark and company name rights in ROYAL CROWN DERBY. Prospective buyers will expect the website of the producer of ROYAL CROWN DERBY china and porcelain under the Domain Name and not the site of a reseller with no contractual or corporate relationship with the Complainant.

Furthermore, the Respondent has used the Domain Name to divert customers to its retail website under the Domain Name. Consumers are likely to be confused into thinking that the ROYAL CROWN DERBY merchandise offered therein is being offered by the Complainant. This potential for confusion is not alleviated (as Respondent claims) by the very small link to the official Royal Doulton website as shown in Annex 16 to the Complaint.

The Original Registrant and the Respondent have by registering and using the Domain Name intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source of their website. Therefore, the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.

The legal argument following from the Respondent’s contention that the interest in the Domain Name may be linked to a management buy-out by the Complainant is not quite clear. The Panel finds, however, that it has no relevance in the present case. In particular, no reproach can be made to the Complainant that the Administrative Proceeding was initiated only after the alleged management buy-out.

 

7. Decision

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 <royalcrownderby.com> be transferred to the Complainant.

 

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Brigitte Joppich
Sole Panelist

Dated: March 13, 2003