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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fish4 Limited v. Mr. Jason French
Case No. D2003-0531
1. The Parties
The Complainant is Fish4 Limited, London, of United Kingdom of Great Britain and Northern Ireland, represented by Berwin Leighton Paisner, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Jason French, Sunderland, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <fish4mortgage.com> is registered with Schlund Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. 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 July 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2003.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 22, 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 has drawn the Panel’s attention to the decision in Fish4
Limited v. Octopus Net Information Services Limited, WIPO
Case No. D2003-0104, in connection with the domain name <fish4loans.com>.
In that case the respondent, formally Octopus Net Information Services, "was
referred to in some of the papers as Mr. Jason French, who appears
to be a director of ONIS".
The evidence presented to the Panel in that case appears to be the same as the evidence presented to the Panel in this case, and the Panel in this case, therefore, is able to incorporate the following from that case into this case:
"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".
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.
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. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s registered trademarks in that the respondent has simply added the word "mortgage" at the end of "fish4" and that the fact that because the complainant offers advice on mortgages, the use of this word in conjunction with Fish4 adds to confusion. 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 trademarks and had established extensive goodwill. It also points out that the Domain Name does not reflect the Respondent’s common name.
In particular, the Complainant contends that the decision in WIPO
Case No. D2003-0104, mentioned above, is equally applicable to the domain
name at issue in this case "in that the only difference is the use of the
word "mortgage" rather than "loans" by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy lists three
tests which a Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) Identical or Confusingly Similar
In WIPO Case No. D2003-0104, mentioned above,
the Panel took the view that "<fish4loans.com> is confusingly similar
to the Complainant’s "fish4" registered trademark and its "fish4money"
registered trademark. It may well also be similar to a number of the Complainant’s
other trademarks but it is not necessary to decide this." The Panel in
this case agrees with the Complainant’s contention that the decision in WIPO
Case No. D2003-0104 should also apply in this case, the only difference
being the substitution of "mortgage" for "loans". Accordingly,
the Panel in this case finds that the Complainant has satisfied the first test.
(ii) Rights or Legitimate Interests
The Panel in this case agrees with the decision of the Panel in WIPO
Case No. D2003-0104 that the Respondent in that case, who was essentially
the same person as in this case, had no rights or legitimate interests in registering
the domain name <fish4loans.com>, and believes that the same decision
should apply to <fish4mortgage.com>. Accordingly, he finds that the Complainant
has satisfied the second test.
(iii) Registered and Used in Bad Faith
In WIPO Case No. D2003-0104 the Panel found that
<fish4loans.com> had been both registered and used in bad faith. The Panel
in this case concurs with the finding of the Panel in that case, and, mutatis
mutandis, also finds in this case. Further, there is ample authority in
previous decided cases that a pattern of abusive behaviour is sufficient to
justify a decision of both registration and use in bad faith. As the factual
situation in this case is substantially identical to that in WIPO
Case No. D2003-0104, the Panel finds a pattern of abusive behaviour by the
Respondent, and could also have found on that ground. Accordingly, the Panel
finds that the Complainant has satisfied the third test.
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 <fish4mortgage.com>
be transferred to the Complainant.
George R. F. Souter
Date: September 5, 2003