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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Romec Limited v. Bradley Knight

Case No. D2006-1241

 

1. The Parties

The Complainant is Romec Limited, of Cheshire, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Linklaters, of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Bradley Knight, of St. Albans, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name, <romecproperty.com>, (the “Domain Name”) is registered with Schlund + Partner (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2006. On September 28, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 29, 2006, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 5, 2006. 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 October 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2006.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 16, 2006. 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 was incorporated in England on June 15, 2001, to supply in-house maintenance and installation, manufacturing and print services to the Post Office, now the Royal Mail Group. The Complainant acquired as part of that arrangement from the Post Office and/or its successor in title, inter alia, the registered trademark, ROMEC in respect of which there are several registrations including UK registration number 2227612, dated March 30, 2000, ROMEC (word) for various goods and services in classes 16, 28, 35, 37, 40 and 42.

The Complainant operates its websites at “www.romec.com” and “www.romec.co.uk”.

The Complainant claims to have made extensive use of the mark ROMEC since at least 2002 and claims further that as a result it is “now one of the UK’s leading providers of integrated facilities/property management solutions”. The Respondent has not contested that claim and the Panel has no reason to doubt the claim. Indeed, it is consistent with the other evidence before the Panel. The Panel accepts it as fact.

The Respondent was incorporated on November 9, 2005, (verified by the Panel by online access to the publicly available UK Companies Registry database).

On February 3, 2006, the Respondent registered the Domain Name.

On March 22, 2006, the Domain Name was connected to a website operated by the Respondent and/or his company. It promoted the building and building refurbishment services of the Respondent’s company and featured the name of Royal Mail as a client.

On March 22, 2006, the Complainant’s representatives wrote to the Respondent’s company, Romec Property Services Limited, drawing that company’s attention to the Complainant’s trademark rights and complaining at the unauthorized use of the name ROMEC by Romec Property Services Limited in relation to building and building refurbishment services, being services covered by the Complainant’s trademark registrations and/or services provided by the Complainant to its customers. The letter sought amongst other things a change of company name and transfer of the Domain Name.

On March 25, 2006, the Respondent replied on his company notepaper confirming that he would change the company name, destroy all stocks of business literature featuring the name and change the website address. However, the Respondent stated that he intended to retain ownership of the Domain Name. The letter did not contest any of the Complainant’s claims.

On April 19, 2006, the Respondent’s company underwent a name change to Fairmount Contractors Limited (verified by the Panel by online access to the publicly available UK Companies Registry database)

The Complainant’s representatives pressed the Respondent with regard to ownership of the Domain Name and on September 18, 2006, the Respondent indicated that he was prepared to transfer the Domain Name, but only for a fee. Apparently in justification for this approach he wrote “It would appear from records available publicly there are a large number of businesses with web site addressed [sic] commencing with the word ROMEC, these are not web sites owned by your client.”

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered trademark and service mark, ROMEC.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the name or mark ROMEC and has not been licensed by the Complainant to use the name or mark ROMEC. Nor has the Respondent made any use of the Domain Name for “any legitimate, non-commercial or equitable purpose”. The Complainant contends that the Respondent’s use of the name ROMEC constitutes infringement of its trademark rights and the tort of passing off.

The Complainant further contends that the Domain Name was registered and is being used in bad faith. The Complainant points to the fact that the Respondent effectively acknowledged trademark infringement when agreeing that his company should change its name and contends that the Respondent must have known of the Complainant when it registered the Domain Name. It observes that the parties are engaged in the same area of business and that the Respondent’s website claimed the Royal Mail as a customer. The Complaint also claims that the Respondent has said that some of his employees are ex-Royal Mail employees.

The Complainant contends that confusion of Internet users is inevitable and claims that someone has already been deceived into believing that the Respondent’s website is the website of the Complainant. According to the Complainant it was the Respondent’s claim that the Royal Mail is/was a client of the Respondent which led to this mistaken belief. The Complainant made enquiries and has not been able to trace any record of the Royal Mail being a client of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(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 in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trademark and service mark, ROMEC, combined with the word ‘property’, which describes an area of business in which the Complainant is engaged, and the generic domain suffix.

The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of what a Respondent may produce to demonstrate that he has rights or legitimate interests in respect of the Domain Name. In broad terms, if he is providing a bona fide offering of goods and services under or by reference to the Domain Name, that will suffice (paragraph 4(c)(i)); if he is commonly known by the Domain Name, that also will suffice (paragraph 4(c)(ii)); if he is making a legitimate non-commercial or fair use of the Domain Name that also will suffice (paragraph 4(c)(iii)).

The Complainant contends that there is nothing legitimate, fair or bona fide about the Respondent’s behaviour. Indeed, the Complainant contends that the Respondent’s use of the name, ROMEC, both as a company name and as a part of the Domain Name constitutes trademark infringement and passing off. If the Complainant is correct and the Respondent selected the name ROMEC with knowledge of the Complainant, then the Panel agrees that neither of paragraphs 4(c)(i) and (ii) are applicable.

Nonetheless, can the Respondent pray in aid paragraph 4(c)(ii) of the Policy on the basis that his company was at the date of registration of the Domain Name known as Romec Property Services Limited? Here the Respondent is in a particularly weak position. First his company only adopted the name less than three months prior to registering the Domain Name. Secondly, the name in question is not the Respondent’s name, but that of his company (although the Panel would not have held this against the Respondent if that was the only problem). Thirdly, the Panel is firmly of the view that this potential defence cannot apply where, if it be the case, the Respondent selected the name with knowledge that the name is a trademark of another company operating in the same business area.

Much turns on the Respondent’s motives at the time he selected Romec Property Services as the name of his company. Why did he select the name? Was he aware, at the time, of the existence of the Complainant? On the Complainant’s case, these are obvious questions and the Complainant raises them very directly and clearly.

The Complainant having made out a prima facie case, it is for the Respondent to provide an answer. However, there is no answer. The Respondent has not responded.

The Panel notes the fame of the Complainant in the particular area in which both parties operate and notes too that the Respondent claims to have done building work for the Royal Mail. The Panel believes it to be highly unlikely that the Respondent was not well aware of the existence of the Complainant and its use of its trade and service mark ROMEC when he named his company and shortly afterwards when he selected the Domain Name. The Panel also takes the view that the Respondent must have been very well aware of the inevitable risk of confusion among Internet users.

In so saying, the Panel has ignored the unsupported allegations of the Complainant as to (i) the Respondent’s claimed admission to having employed ex-employees of Royal Mail and (ii) an unidentified Internet user having been deceived as to the ownership of the Respondent’s website.

In the absence of an explanation from the Respondent, the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Registering a domain name, which is peculiarly referable to a major, well-established player in the same field in which the Respondent operates and in circumstances where the Respondent has no rights or legitimate interests in respect of the Domain Name leads to the obvious inference that the Respondent’s intentions at the outset were mala fide.

In the absence of an explanation from the Respondent, the Panel concludes that the Respondent has no answer to the Complainant’s allegations.

The Panel finds that the Respondent registered the Domain Name for the purpose for which he used it, namely to connect it to his company’s trading website, his company being a company operating in the same field of business as the Complainant, and with a view to attracting business to the Respondent off the back of the Complainant’s goodwill.

The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

 

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, <romecproperty.com>, be transferred to the Complainant.


Tony Willoughby
Sole Panelist

Dated: November 27, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1241.html

 

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