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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Charles Russell LLP v. Yellowhorse

Case No. D2007-1344

1. The Parties

The Complainant is Charles Russell LLP, of London, United Kingdom of Great Britain and Northern Ireland, of United Kingdom, represented by Charles Russell, Solicitors, of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Yellowhorse, of Arizona, United States of America, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <charlesrussell.com>is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2007. On September 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 12, 2007, Go Daddy Software transmitted by email to the Center its verification response, confirming that the Respondent is the true registrant operating through a proxy service and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 18, 2007. 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 September 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2007.

The Center appointed the Honourable Sir Ian Barker, QC as the sole panelist in this matter on October 16, 2007. 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 is a firm of solicitors with its head office in London which has been established since 1760. It has traded as “Charles Russell” since 1891. It is ranked amongst the top 50 United Kingdom law firms, with 94 partners and 335 staff solicitors. It has regional offices in the United Kingdom and offices in Geneva and soon in Bahrain. It is an active member of two international associations of law firms with affiliates in the Americas, Europe, Asia and Australasia. It has acquired substantial goodwill attaching to its business of providing legal services and enjoyed a fee income of over ₤58m for the year ending April 30, 2006. It operates a website at <charlesrussell.co.uk> and has a sophisticated marketing strategy.

The Complainant owns a registered United Kingdom trademark for the words CHARLES RUSSELL with a registration date of October 14, 2006. The Complainant gave the Respondent no right to use the mark CHARLES RUSSELL.

The disputed domain name was registered by the Respondent on December 29, 1997. The name “Charles Russell” corresponds with that of an American artist, Charles M. Russell who died in 1926 and who achieved fame for paintings of the American West. The Respondent registered domain names which used the names of two other artists who specialized in portraying native Americans. Since registering the disputed domain name, the Respondent has made little use of the website except for a period of two months in 2001 where the website invited visitors to contact the Respondent if looking for native American or Western art or jewellery.

The disputed domain name and the other two domain names relating to American artists were entered as a URL on August 16, 2007, with a view to selling them to persons with a genuine interest in these artists.

The disputed domain name was initially shown as registered to Domains by Proxy Inc. The Registrar disclosed to the Center the identity of the Respondent on whose behalf there had been a proxy registration.

In November 2006, the Complainant, through an intermediary (a corporate investigation company), sought anonymously to purchase the disputed domain name. After several iterations with the agent, the Respondent demanded US$150,000 for the transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to a trademark in which the Complainant has rights. The Respondent was given no rights by the Complainant so he cannot justify its use of the disputed domain name under Paragraph 4(c) of the Policy.

The Respondent registered and is using the disputed domain name in bad faith because, for the vast majority of the time as registrant, he has made no use of the disputed domain name. His only reason for retaining the disputed domain name is for the purposes of transferring it to the Complainant or a competitor of the Complainant for a valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name.

Alternatively, the Respondent has registered the disputed domain name for the purpose of selling, renting or otherwise transferring to a third party who wishes to use it for a website to promote the artist Charles M Russell for valuable consideration. While the Complainant does not purport to have an interest in such a use, it is submitted that such an intention of the Respondent, should not be allowed to prevent the Complainant from exercising its rights in respect of its trademark. The offer by the Respondent to transfer the disputed domain name for US$150,000 indicates the Respondent’s ongoing bad faith.

The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent has indulged in a pattern of conduct of registering domain names using the names of famous artists who portrayed the American West. There is no plausible or contemplated active use for the disputed domain name by the Respondent which would make its use legitimate. To the contrary, the Respondent is hiding behind a proxy registration which, in itself, suggests bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain a decision that a domain name be transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the domain name;

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered trademark. Although that trademark was registered after the disputed domain name had been registered, that fact does not prevent the first limb of paragraph (4(a) of the Policy from being proved. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) at 1.4.

Prior to registration of the trade mark in 2006, it might have been difficult for the Complainant to have established that it possessed a common law trademark in 1997.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in a domain name corresponding to the Complainant’s registered trademark. The Complainant gave him none.

The Respondent has not filed a response and, therefore, has not established any of the defences in Paragraph 4(c) of the UDRP.

The Complainant’s own acknowledgment, the domain name was seemingly registered with the painter Charles Russell in mind and not the Complainant. In light of the Panel’s finding below it is not necessary to consider further whether Respondent may have or have had any right or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

Even if the Complainant could succeed in discharging the onus under paragraph 4(a)(ii), its principal difficulty is that registration of the disputed domain name took place almost 10 years ago. It is clear from WIPO jurisprudence that the Complainant must prove bad faith at the time of registration, as well as continuing bad faith. Normally, when a domain name is registered before a trademark has been established, the registration of the disputed domain name is not in bad faith because the registrant would not have contemplated the complainant’s non-existent right. (See WIPO Overview 3.1) See too Valve Corporation v. ValveNET. Inc, WIPO Case No. D2005-0038 and VZ Vermцgens Zentrum AG v. Anything.com, WIPO Case No. D2000-0527.

The Panel is unable to infer that, in December 1997, the Respondent was aware of the Complainant and of its reputation. Rather, the evidence suggests that the Complainant was capitalizing on the reputations of a deceased artist called Charles Russell and of two other artists who specialized in portraying the American West. Without prejudice to any challenge from parties associated with the artist Charles Russell the Panel is unable to say that this registration constitutes bad faith vis a vis the Complainant in this case. The Respondent may well have wished to set up a website devoted to persons interested in the paintings of Charles Russell and even to capitalise on that by selling memorabilia. There is nothing before the Panel to establish that the Respondent was seeking in particular to damage the Complainant at that time, and it is not proved that he knew or should have known of the Complainant.

There have been WIPO decisions inferring bad faith registration from the minimal use of a website, as has occurred here. It may have been possible to infer bad faith registration, had the Respondent been living in the same country as the Complainant or perhaps if the Respondent had a history of domain name trading and was clearly Internet-savvy. However, it is not a reasonable possibility that somebody with no such apparent history living in Arizona in the United States is presumed, in 1997 should have known of the reputation of an old-established firm of lawyers in London.

The UDRP is inflexible in this regard, unlike other policies, such as those in force in the United Kingdom and New Zealand for <.uk> and <.nz> registrations, respectively. There, a Complainant need show an abusive or unfair registration of a domain name, which can often be inferred from ongoing conduct.

In the present case, whatever the inference regarding bad faith use to be drawn from the conduct of the Respondent, such as demanding a large sum of money for the transfer of the disputed domain name, that more recent conduct cannot be used to infer bad faith registration in 1997.

Accordingly, the Complaint must fail because the Complainant has been unable to discharge the burden of proving registration in bad faith.

This case highlights the difficulties faced by those who file a complaint relating to a disputed domain name which has been registered years before. In practical terms, the longer the delay between registration and the filing of the complaint, the more difficult it becomes for a complainant to prove bad faith registration.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Hon. Sir Ian Barker
Sole Panelist

Dated: October 29, 2007