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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cybertill Limited v. Darren Casey

Case No. D2005-0460

 

1. The Parties

The Complainant is Cybertill Limited, Merseyside, United Kingdom of Great Britain and Northern Ireland, represented by Weightmans Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Darren Casey of Waverley, Essex, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <cybertill.com> (the “Domain Name”) is registered with Chocolatecovereddomains, LLC (The “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006 by email and by hard copy on April 20, 2006. On April 13, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. This was given on April 25, 2006, confirming that the current registrant is the Respondent, Darren Casey. 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 commencement of the administrative proceedings on April 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2006. The Response was filed with the Center on May 16, 2006.

On June 8, 2006, the Center appointed Mr. Clive Duncan Thorne as sole panelist. The Panel finds that it was properly constituted. The Panelist 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

According to the Complaint, the Complainant is in the business of the development and exploitation of electronic point of sale software.

The Complainant is the registered owner of UK trade mark number 2296424 for the mark “CYBERTILL”. This was registered at the UK Trade Marks Registry on March 7, 2003. This is verified by Annex 3 to the Complaint which is a copy of the UK Patent Office details. The mark is registered in Classes 9, 36 and 42.

The Domain Name was created on June 13, 2005. This is shown by the whois.net search exhibited at Annex 1 to the Complaint and also by the Registrar verification. The Complainant relies upon a series of email correspondence beginning with an email from Steve@[emailaddress] dated August 17, 2005, addressed to [Mr. Tomlinson]@cybertill.com.

It should be noted that the Complainant is being represented by Weightmans Solicitor. However, it would appear that the preferred method of communication for the Complainant in the proceedings is through an internal representative of the Complainant, Mr. Tomlinson. The Complaint is signed “Mr. Tomlinson for and on behalf of Cybertill Limited”.

The email of August 17, 2005 is signed by a Mr. Davis and appears to be some form of complaint relating to the installation of a system, apparently by the Complainant.

This is responded to on August 18, 2005, by “J” of Cybertill.com who states;

“I would like to remove names and company names from your email so that the source cannot be identified and publish it on the Cybertill.com website.”

Mr. Davis appears to be “totally confused” by this request because he responds;

“What on earth does this mean and who is J??”

Cybertill.com reply on August 19, 2005, stating: “I cannot resolve the issues for you but I can help to highlight the failure of Cybertill Limited to support customer by publishing your Complaint”.

Mr. Davis responds to “J?” asking; “please identify who you are and your position within the company of Cybertill. To say the least I find this response even bizzarre (sic).”

J who now describes himself as “Jay” in an email dated August 19, 2005, which is particularly relied upon by the Complainant states as follows:

“I am not an employee of the company but a victim of their incompetance (sic). I registered cybertill.com because they didn’t and from what I’ve seen and there are other domains like www.cybertill.net which I used to complain about them.

You are not the first person to complain to me about the company, and yes you are just another shining example of the problems caused by them.

By removing any information to identify you from the email and putting it on cybertill.com it will serve as a warning to other customers and it will also demonstrate to cybertill and that their failure to deal properly with their customer’s complaints will lead to bad press in the long run.

Jay”

 

5. Parties’ Contentions

A. Complainant

1. The Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights, namely as the text “Cybertill”, is identical to the trade mark and is the mid-level domain within the domain name.

2. The Respondent has no rights or legitimate interest in respect of the domain name;

(a) There was no evidence of the Respondent’s use or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services whereas the website using the domain name has been inactive since the Respondent’s registration on June 13, 2005.

(b) In the email of August 19, 2005, from cybertill.com to Mr. Davis, the Respondent notified a customer of the Complainant that the Respondent “registered cybertill.com because they didn’t”.

(c) The Respondent has not been and is not commonly known by the Domain Name, and is not in the business of trading in products bearing the trade mark or any similar trade mark or service mark.

(d) The Respondent is not making a legitimate non-commercial or fair use of the domain name.

(e) The Domain Name was registered and is being used in bad faith:

i. The Complainant relies upon the above mentioned email of August 19, 2005, and the Respondent’s statement that he “registered Cybertill.com because they didn’t”.

ii. The Respondent registered the Domain Name in order to prevent the Complainant from reflecting the trade mark in a corresponding domain name. This is shown by the email of August 19, 2005.

iii. A primary purpose of the Respondent’s registration of the Domain Name was the purpose of disrupting the business of the Complainant with a potential competitor by misleadingly diverting consumer’s of the Complainant’s business to the web page using the Domain Name to enter into discussions with a visitor, of a derogatory nature in relation to the products and services of the Complainant. The Complainant also relies upon the fact that the Respondent did not inform visitors to the website of the Respondent’s whole identity.

B. Respondent

1. The trade mark extends to the UK only. The Respondent has no intention of using the domain name within the UK or for any purpose protected by the Complainant’s trade marks.

2. The Complainant had a history of failing to protect trade marks as evidenced by the registration of other domain names including <cybertill.eu>, <cyber-till.com> and <cybertill.net>. At the time the trade mark and .uk domains were registered by Cybertill Limited the .com and .net domains already existed. The “www.cybertill.co.uk” website shows no evidence that the company has traded or intends to trade outside of the UK.

3. Cybertill already owns two domain names more suited to their target audience.

4. The owner of the Domain Name has been developing a non-commercial website since December 2005 but this has not yet been launched.

5. If the Domain Name owner had believed that a challenge would be made it would have been easy for him to create a non-competing, non-commercial website for the Domain Name in an attempt to show no bad faith use and fair rights to the domain.

6. There is a conflict between the statement made by the Complainant that there is no evidence of use of the Domain Name and the statement that the Respondent has misleadingly diverted consumers to the web page.

7. The email exchange shows sender as “cybertill.com”, but this is not a valid email address. Doubt is cast on the veracity of the original email relied upon. If it is to be believed there is an accusation of “being a compulsive liar as well as several references to the company failing to act correctly”.

8. Bad faith only exists on the part of the Complainant seeking to take over the domain name.

9. None of the tests for bad faith are proved and there is no evidence that the domain name was registered in bad faith:

a. The trade mark is not well known;

b. No evidence is presented to suggest that the domain name has ever been offered for sale;

c. The suggestion that Respondent has prevented the Complainant from using the trade mark is not applicable;

d. The Respondent has “not engaged in a pattern of such conduct”;

e. There is no evidence that the Complainant and Respondent are competitors and the Respondent has no interest in commercial gain or to disrupt business of the Complainant.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden in proving:

(i) that the Domain Name is identical or confusingly similar to a trade mark 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.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidenced of the Registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that (the Respondent has) registered or 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 trade mark or service mark or to a competitor of that Complainant for valuable consideration in excess of (the Respondents) documented out of pocket costs directly related to the domain name; or

(ii) (the Respondent has) registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that “the Respondent has” engaged in pattern of such conduct; or

(iii) (the Respondent has) registered the domain name primary for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, (the Respondent has) intentionally attempted to attract for commercial gain, Internet users to (the Respondent’s 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 (the Respondent’s) website or location or of a product or service on (the Respondent’s) website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interest in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:-

(i) before any notice to (the Respondent) of the dispute, use by (the Respondent) of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) where (the Respondent) as an individual, business, or other organisation (has) been commonly known by the domain name, even if (the Respondent has) acquired no trade mark or service mark rights; or

(iii) where (the Respondent) is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark and issue.

A. Identical or confusingly similar

The Panel is satisfied that the Complainant has proved this part of the Complaint. The Complainant is the registered proprietor of the word mark “CYBERTILL”. The Domain Name without the top level “.com” consists of “cybertill” and is therefore identical to the mark.

The Respondent submits that the trade mark extends to the UK only. The only evidence before the Panel is of a United Kingdom trade mark right. In the Panel’s view, this is irrelevant particularly taking into account that the Complainant is apparently a UK corporation and the Respondent has an address in the UK. Similarly, in the Panel’s view it is immaterial that the Complainant has not taken action to protect its trademarks in view of other domain names.

B. Rights or Legitimate Interest

The Complainant submits that the Respondent has no rights or legitimate interest in respect of the Domain Name. In particular, it relies upon the fact that there is no evidence of the Respondent’s preparation to use the Domain Name in connection with a bona fide offering of goods and services. It also relies upon the email of August 19, 2005, from cybertill.com in which the Respondent referred to registering <cybertill.com> “because they didn’t”. In the Panel’s view, these two factors constitute sufficient prima facie evidence of a lack of rights or legitimate interest in respect of the Domain Name.

By contrast, the Respondent refers to the apparent fact that it has been developing a non-commercial website since December 2005, but this has not yet been launched. In the Panel’s view there is no evidence to support this assertion which in any event post dates the registration of the domain name on June 13, 2005.

In addition, the Respondent casts doubt upon the veracity of the emails relied upon. The Panel however takes the view that it has to accept these emails as they are presented to it and in circumstances in which there is no evidence to support a challenge upon their veracity.

Moreover, the Respondent adduces no evidence to support a finding that the Respondent has rights or legitimate interests in respect of the domain name. Accordingly, the Panel finds for the Complainant in respect of this element.

C. Bad Faith

In support of its submissions of bad faith, the Complainant also relies upon the email of August 19, 2005, and the Statement that the Respondent registered <cybertill.com>” “because they didn’t”. It asserts that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the trade mark in a corresponding domain name. It also submits that a primary purpose of the Respondent’s registration was to disrupt the business of the Complainant as a “potential competitor” by misleadingly diverting consumers of the Complainant’s business to the web page at the disputed domain name.

In the Panel’s view the Statement in the email of August 19, 2005, suggests that there was no good or legitimate reason for registration of the Domain Name and that this is consistent with a finding of bad faith. However, the Panel considers that by itself this Statement may be insufficient to support a finding of bad faith.

The Panel nevertheless, considers that the overall chain of emails exhibited at Annex 4 to the Complaint demonstrate an intention to disrupt the business of the Complainant by making a statement of a derogatory nature in relation to the business of the Complainant.

The Respondent rightly points out that paragraph 4(b)(iii) of the Policy refers to disrupting the business of a “competitor” and there is no evidence that the Complainant and Respondent are competitors. It also points out that the Respondent has no interest in commercial gain or in disrupting the business of the Complainant.

The Panel takes into account that paragraph 4(b)(iii) is merely one of a set of illustrative circumstances which “without limitation” are evidence of the registration and use of a domain name in bad faith. The Panel therefore considers that, given the circumstances of the case, it is entitled to find that the purpose of the registration was to disrupt the business of the Complainant even though the Complainant may not be a competitor of the Respondent. It would also appear probable that the Respondent registered the Domain Name in order to prevent the Complainant reflecting their mark CYBERTILL in a corresponding domain name, and although this is not decisive in the absence of evidence of a pattern of such conduct, it is a contributing factor in the circumstances. Taking into account the fact that there is no apparent justifiable or legitimate commercial reason for the Respondent’s emails, and also taking into account the statement that the Domain Name was registered because the Complainant “didn’t”, the Panel finds that the Domain Name was registered and is being used in bad faith.

 

7. Decision

For the above reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <cybertill.com>, be transferred to the Complainant.

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Clive Duncan Thorne
Panelist

Dated: June 22, 2006