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WIPO Arbitration and
Microcourt Limited v. Mr. Henry Chan
Case No. D2004-0075
1. The Parties
The Complainant is Microcourt Limited, of Somerset, United Kingdom of Great Britain and Northern Ireland, represented by Mayer, Brown, Rowe & Maw, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Henry Chan, of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain names <jacquiellawson.com>, <jacquilawson.com> and <jaquielawson.com> (the "Domain Names") are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2004. On January 29, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On January 29, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2004.
The Center appointed Thomas D. Halket as the Sole Panelist in this matter on March 3, 2004. 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 operates a subscription-based electronic greetings card business, under the unregistered trademark "JACQUIE LAWSON," located at a website at URL "www.jaquielawson.com." This business has been operated by the Complainant, by reference to the Jacquie Lawson name, since November 2001. The domain name <jacquielawson.com> has been used in the business since November 2001. The Complainant’s use of the name refers to the artist, Jacquie Lawson, who is a director of and a shareholder in the Complainant. As of January 26, 2004, the Complainant had a total of 248,312 subscribers. Since the inception of the business, a total of 6,102,666 electronic Jacquie Lawson greetings cards have been sent by subscribers. Subscribers and recipients include the residents of many countries, but principally the United States. The Complainant filed an application to register the trademark "JACQUIE LAWSON" at the Office for Harmonization in the Internal Market (OHIM) on December 16, 2003. The registration has as yet not been granted.
Complainant alleges that Respondent has actually used the Domain Names to link indirectly to third party websites offering electronic greeting cards in competition with Complainant.
Finally, the Complainant notes that the Respondent has been involved in an unusual number of cases under the UDRP including:
Royal bank of Canada v. Henry Chan, WIPO
Case No. D2003-0031; Federated Western Properties, Inc. v. Henry Chan,
WIPO Case No. D2003-0472; Deloitte
Touche Tohmatsu v. Henry Chan, WIPO Case
No. D2003-0584; Cancer Treatment Centers of America, Inc. v. Henry Chan,
WIPO Case No. D2003-0611; LTD Commodities
LLC v. Henry Chan, NAF Case No. FA0303000152617; Pioneer Hi-Bred International
Inc. v. Henry Chan, NAF Case No. FA0304000154119; Bedford Fair Apparel,
Inc. v. Henry Chan, Claim No. FA0303000157322; Reed Elsevier Inc. and
Reed Elsevier Properties Inc. v. Henry Chan, Claim No. FA0306000161468;
American Stores Company v. Henry Chan, Claim No. FA0306000161567; Yahoo!
Inc., GeoCities, HotjOBS.COM Ltd., and Launch, Claim No. FA0306000162050;
Media, Inc. v. Henry Chan; Rock Financial, A Quicken Loans Company v. Henry
Chan, Claim No. FA0307000167917
The Sports Authority Michigan Inc. v. Henry Chan, Claim No. FA0308000176552
Popular, Inc. v. Henry Chan, Claim No. FA0308000183739
In each of these cases Respondent was the respondent. In each case he was found to have registered and used the relevant domain names in bad faith.
5. Parties’ Contentions
(a) The Domain Names are identical and confusingly similar to a trademark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(c) The Domain Names were registered and are being used by Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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."
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that it owned and was using the trademark "JACQUIE LAWSON" on or before the date Respondent registered the Domain Names. The fact that the registration has not yet been granted, although an application has been filed, is irrelevant. Common law rights in a trademark are sufficient for this purpose. The Panel also finds that the Domain Names are each identical, or for all practical purposes relevant here identical, to Complainant’s trademark.
Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that Respondent is or was commonly known by the Domain Names, as an individual, business or otherwise. The sole use the Respondent seems to be making of the Domain Names is to use them to redirect business to competitors of Complainant. The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web sit or location."
Based on the undisputed allegations of Complainant which are described in more detail above, the Panel finds there is sufficient evidence to support a finding that Respondent violated paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that Respondent has registered and is using 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 names, <jacquiellawson.com>, <jacquilawson.com> and <jaquielawson.com>be transferred to the Complainant.
Thomas D. Halket
Dated: March 12, 2004