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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fish 4 Limited v. Octopus Net Information Services Limited
Case No. D2003-0104
1. The Parties
1.1 The Complainant is Fish 4 Limited, of Broadway Chambers, London, United Kingdom of Great Britain and Northern Ireland represented by Sarah Monk, Berwin Leighton Paisner, London, EC4A 2JD, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is Octopus Net Information Services Limited ("ONIS"), of Sunderland, United Kingdom of Great Britain and Northern Ireland represented by Graham F French. In some of the papers the Respondent is identified as Mr. Jason French, who appears to be a director of ONIS. The Panel refers throughout simply to ONIS or "the Respondent".
2. The Domain Name and Registrar
2.1 The disputed domain name is <fish4loans.com> (the "Domain Name") which is registered with Schlund & Partner AG (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2003. On February 12, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2003, Registrar 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").
3.2 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 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2003. The Response was filed with the Center on March 15, 2003.
3.3 The Center appointed Nick Gardner as the sole panelist in this matter on March 21, 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
4.1 Factual background appears in the parties contentions, below.
5. Parties’ Contentions
5.1 The Complainant has submitted extensive evidence as to its business and history. As will appear, these matters are not in dispute (or at least not seriously in dispute) and, unless stated otherwise the Panel accepts the Complainant’s contentions in this regard. They are summarised below.
5.2 The Complainant company launched as an Internet brand in October 1999. Its business combines six consumer information websites enabling consumers in the UK to find homes "(www.fish4.co.uk/homes", lettings "www.fish4.co.uk/lettings", cars "www.fish4.co.uk/cars", jobs "www.fish4.co.uk/jobs", a directory service "www.fish4it.co.uk" and a local news service "www.fish4news.co.uk".
5.3 Evidence is given as to the nature and very extensive scale of the Complainant’s activities. For example, between October 2001 and September 2002, the Complainant spent approximately Ј12 million on marketing and advertising. The Complainant’s annual revenue for the year ended September 30, 2002, was approximately Ј2.4 million. The number of hits to its websites in the month of December 2002, was just over 2 million.
5.4 The Complainant has a number of registered UK trade marks including "FISH4It", "FISH4JOBS", "FISH4HOMES", "FISH4MONEY" and "FISH4". It also has registered over 140 domain names where the prefix is "fish4" used with another word and details of these have been provided.
5.5 The Domain Name appears to have been registered in August 2002. The Complainant became aware in December 2002, of the Respondent’s website which operates under the Domain Name and contains a website offering advice as to the provision of mortgages and loans. The Complainant itself offers advice as to mortgages on its homes pages which have a "mortgage center". It also offers advice on loans for motor cars on its cars pages. Details have been provided.
5.6 The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s registered trade marks in that it is just the addition of the word "loans" at the end of "fish4". The Complainant also asserts that the Respondent has no legitimate interest in the Domain Name given that the Domain Name was registered after the Complainant had registered its trade marks and had established extensive goodwill. It also points out that the Domain Name does not reflect the Respondent’s common name. It states that the Respondent is disrupting the Complainant’s business by creating a likelihood of confusion with the Complainant’s business.
5.7 The Respondent does not dispute that it is operating a website at the Domain Name and in doing so is acting as a broker for loans and mortgages.
5.8 The Respondent makes the following points:-
i) It does not offer information on cars, homes or jobs.
ii) It has a consumer credit licence under the Consumer Credit Act 1974, allowing it to act as a licensed credit broker.
iii) It was offering its services in a bona fide manner before they were given notice by the Complainant of the dispute.
iv) It attracts Internet traffic in its own right.
v) The Complainant does not act as a loan or mortgage broker (a very extensive analysis of the Complainant’s website is given in this regard).
vi) The inclusion of the word "loans" in the Respondent’s name is sufficient to differentiate it from any of the Complainant’s trade marks or any mark that the Complainant has an interest in.
vii) The services provided by the Respondent’s website are not confusingly similar. Mortgage broking is different from the provision of information about goods and services such as cars and houses.
viii) The Respondent’s website layout is different and could not be confused with the Complainant’s.
ix) There is no evidence of actual confusion filed by the Complainant.
x) There are a number of other websites with the prefix "fish4".
xi) There are a number of other limited companies trading with the prefix "fish4".
xii) The Complainant cannot have a monopoly on the term "fish4".
5.9 The Respondent also attaches significance to the fact that it placed an advert for its services in a local paper in the north east of England which it says is owned by the same ultimate parent company as the Complainant. The Respondent relies upon the fact that it says the staff at the newspaper did not think there would be any confusion.
5.10 The Respondent alleges that the Complaint has been brought in bad faith in order to obtain control of "fish4loans" domain name for its own commercial purposes. The Respondent says that its website has already generated Ј13 million of applications for loans and mortgages and expects within its first year of trading to generate in excess of Ј55 million of applications. It says the Complainant is therefore "reverse domain name hi-jacking".
5.11 The Respondent makes a number of other submissions which are discussed below.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint and the Response and documents annexed to the Response. In the light of this material, the Panel finds as set out below.
6.2 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:-
(i) the Domain Names are identical to or confusingly similar to a trademark in which it has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
6.3 The Panel is of the view that "fish4loans.com" is confusingly similar to the Complainant’s "fish4" registered trade mark and its "fish4money" registered trade mark. It may well also be similar to a number of the Complainant’s other trade marks but it is not necessary to decide this. In this regard the Panel takes the view that "fish4" is a highly distinctive term to use as a prefix for a trading name. It is undoubtedly the case that the term brings to mind the concept of "fishing for". That does not, however, stop, in the Panel’s view, the term being distinctive. The Panel does not accept the Respondent’s evidence that combining the word "fish" used as a verb with what is asserted to be a common shorthand for the word "for" does not give rise to confusion. The combination in the Panel’s view is distinctive.
Rights and Legitimate Interests
6.4 The Respondent says that it has rights and legitimate interest in respect of the Domain Name. The Panel does not consider the fact that the Respondent has a consumer credit licence as being of any relevance. Obtaining such a licence is essentially a formal administrative proceeding and it adds no weight one way or another, as to the legitimacy of the Respondent’s interest in respect of the Domain Name. Similarly the Panel discounts the rather confusing evidence given about placing an advertisement in a local newspaper. This is of no relevance.
6.5 The Respondent’s case comes down, in essence, to two propositions. Firstly "fish4" is combining the common verb "fish" with common shorthand for the word "for". The Panel, on the evidence before it (see below), does not accept that this is commonly done by parties other than the Complainant or that the resulting prefix "fish4" is non-distinctive. Secondly, the Respondent says that in any event the term "fish4" is not one that the Complainant can have a monopoly on given that others are also using it and their use pre-dated the Complainant’s use of the term. This, to the Panel’s mind, is the single area of potential significance in the Respondent’s case and therefore bears careful analysis.
6.6 The Respondent has provided details of four websites using the prefix which it says are unconnected with the Complainant – "fish4.com", "fish4it.com", "fish4work.com" and "fish4av.com". No information is given as to the date that such websites were set up. Without such evidence, (in the light of the very significant evidence filed by the Complainant as to the nature and size of its operation and its reputation) the Panel declines to find that these web-sites pre-date the Complainant’s use or diminish its rights. Indeed, a possible inference could well be that these are other websites which are also seeking to adopt the Complainant’s distinctive "fish4" branding and also trade off its goodwill, but it is not necessary to decide this.
6.7 The Respondent also identifies three United Kingdom companies using the "fish4" terminology being "Fish4 AV Limited", "Fish 4 Trials Limited" and "Fish 4 U (UK) Limited" which it says were "incorporated and trading well before the Complainant registered any trade marks." The supporting evidence filed by the Respondent does not support this submission. "Fish4 AV Limited" was incorporated on the July 4, 2000. "Fish 4 Trials Limited was incorporated on the June 24, 1997, – however this date was its original incorporation under its previous name Giulia Alpha Limited and it only changed its name to its present name on November 9, 2001. "Fish 4 U (UK) Limited" was incorporated on the April 30, 2002. On the evidence before it, the Panel again takes the view that these companies do not pre-date the Complainant’s use of "fish4". Again, a possible inference could be that these are companies seeking to adopt part of the Complainant’s trading style but the Panel does not need to decide this. The evidence certainly does not support the Respondent’s submissions.
6.8 Accordingly the Panel concludes that the Respondents have no rights or legitimate interests in respect of the Domain Name.
6.9 Finally, was the Domain Name registered and is it being used in bad faith? Strikingly nowhere in the Response is an explanation provided by the Respondent of how it came to choose the Domain Name. Nowhere does the Respondent claim to have been unaware of the Complainant’s activities or to have chosen the Domain Name independently. A clear inference to be drawn, given the Complainant’s evidence as to its reputation and the Respondent’s lack of evidence, is that the Respondent was aware of the Complainant’s activities and reputation and chose to adopt the Domain Name in a manner which benefits from and takes advantage of the Complainant’s name and reputation.
6.10 The Panel does not accept the submission that the Respondent’s activities are sufficiently different from the Complainant’s to avoid confusion and to avoid any possibility of bad faith.
6.11 The Panel accepts the Respondent’s evidence that visually its site looks different to that of the Complainant. That, however, is not the point. By the time the consumer reaches the Respondent’s site the use of the Domain Name has achieved its purpose of attracting consumers to the site. On the evidence before the Panel it is highly likely that at least a number of those consumers so attracted will have been brought to the site in the belief that the Domain Name indicates that it is one of a series of very well known sites operated by the Complainant. In these circumstances, the Panel concludes that both the registration and use of the Domain Name are in bad faith.
6.12 Accordingly the Panel concludes the Domain Name was registered and is being used in bad faith. The Panel therefore concludes that the Complainant has established each of the elements of paragraph 4a of the Policy.
6.13 The Respondent relied upon a number of cases (in particular EasyJet Airline Company Ltd v. Mr Tim Holt, WIPO Case No. D2000-0465 and Easygroup (UK) Limited, Easyeverything Limited, Easyrentacar (UK) Limited, Easyjet Airline Company Limited v. Easymaterial.com Limited, WIPO Case No. D2000-0711) relating to the prefix "easy" where, in those cases, the Panel was unpersuaded that the Complainants had a monopoly in the word "easy" as a prefix. Whatever the merits of the arguments in those cases, the Panel does not find them helpful here. The evidence before the Panel in this case convincingly demonstrates that "fish4" is a prefix with a very significant amount of goodwill which is associated with the Complainant. Such evidence as there is concerning other uses (see above) appears to be evidence of use that is subsequent to the Complainant’s activities.
In the light of the above findings, the Panel's decision is as set out below:
7.1 The Domain Name is confusingly similar to the trade marks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
7.2 The Respondent has no rights or legitimate interests in respect of the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
7.3 The Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7.4 Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name be transferred to the Complainant.
7.5 The Panel rejects the Respondent’s assertion that the Complaint constitutes "reverse Domain Name Hi-jacking".
Nick J. Gardner
Dated: April 7, 2003