Country	Mark	Number	Filing Date	Registration Date	Classes
United States	THE CONRAN SHOP	3124517	July 2, 2004	June 21, 2005	35
United States	TERENCE CONRAN	3130168	May 11, 1999	August 15, 2006	8, 11, 16, 20, 21, 24, 27
United States	THE TERENCE CONRAN SHOP	3145780	May 11, 1999	September 19, 2006	35
United Kingdom	THE CONRAN SHOP	2409799	December 22, 2005	May 4, 2007	35

The domain name <terenceconran.com> was registered in the name of the Respondent on October 23, 2000 and the domain name <theconranshop.com> was registered in the name of the Respondent on April 14, 1999. Each of the Domain Names is presently used as a site which appears to provide no more than a Google search bar (and, also, again conceals the identity of the Respondent by pretending that the website belongs to an entity with the name of the applicable domain name).

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(a) of the Policy, the Complainants assert, inter alia, as follows in respect of each of the Domain Names:

(i) the domain name is confusingly similar to the Complainants’ names and their registered trademarks;

(ii) that whoever it was that registered the domain name has neither conceivable rights nor any legitimate interests in respect of it; and

(iii) that the domain name was registered and is being used in bad faith.

The Complainants’ assertions in respect of (i) are based not only on their registrations of trademarks referred to but also by virtue of the first Complainant’s long trading history in his own name, as an author and in respect of his eponymous interior design stores. The identity or confusing similarity of the Domain Names is self-evident.

In support of (ii), the Complainant relies, inter alia, on the obvious similarity between each of the Domain Names and the names and marks of the Complainants, which can hardly be a coincidence. The Complainants assert that there is nothing to indicate that the Respondent, whoever he, she or it may be, has any genuine connection with the names employed in the Domain Names, and that neither of the Complainants has given permission to whomever it was that registered the subject domain name to register or use it. The only apparent purpose and use of the Domain Names is to cause Internet users to invoke the functionality of the Google Custom Search Engine. The Complainants speculate that the purpose of this was to participate in Google’s AdSense for Search program, which places contextually relevant advertisements on the Custom Search Engine's search results pages, by which means a web publisher may obtain a share of the advertising revenue generated by Google. The Complainants further speculate that this intention, whilst clear, has not been implemented effectively but, nonetheless, this shows an intention to profit from the use of the Domain Names in a manner which is not a legitimate use of the Domain Names.

In support of (iii), the Complainant asserts that registration and use in bad faith is evidenced by the fact that the Domain Names must have been registered with the Complainants in mind, as their reputation, and particularly that of the first Complainant was well established worldwide for many years prior to the dates of registration of the Domain Names and that the registrant has since used them only to attract Internet users mistakenly believing there is a connection between the Respondent’s websites and the Complainants and thereby to cause such users to use the Google Custom Search Engine in such a way as to generate revenue for the Respondent.

The Complainants further assert that the Respondent – or at least a registrant of the name - has been involved in at least three previous determinations under the Policy, namely:

Scottish & Newcastle plc. v. Domain Admin WIPO Case No. D2002-1142; and

Associated British Foods v. Domain Admin WIPO Case No. D2005-0283; and Emirates v. Domain Admin WIPO Case No. D2007-1674.

In addition, the Complainants observe that, in Foreign & Colonial Investment Trust Plc v. 70 Consulting WIPO Case No. D2000-1383, Foreign & Colonial Investment Trust’s case was brought against “70 Consulting” but, in the case of Scottish & Newcastle plc. v. Domain Admin WIPO Case No. D2002-1142, the learned panel observed that 70 Consulting had the same address as the present Respondent and therefore that they were connected parties. The Complainants observe that the Respondent only replied to the first of the above complaints and in subsequent cases has simply not responded. A transfer has been ordered in all cases.

Furthermore, the Complainants assert that the Respondent is – or was, at the date of the Complaint - recorded as the registrant of the following domain, each of which appears to embody well-known trademarks:

<closebrothers.com> (registered 03-21-1999)

<mirrorgroup.com> (registered 03-21-1999)

<ernestjones.com> (registered 07-04-1999)

<costacoffee.com> (registered 10-04-1999)

<dickensandjones.com> (registered 10-04-1999)

<johnlewispartnership.com> (registered 10-04-1999)

<victoriawine.com> (registered 12-04-1999)

<calahomes.com> (registered 04-14-1999)

<garfunkels.com> (registered 04-07-1999)

<blacksoutdoor.com> (registered 04-08-1999)

<clydesdalebank.com> (registered 04-08-1999)

<worthingtons.com> (registered 04-09-1999)

<slugandlettuce.com> (registered 04-12-1999)

<terenceconran.com> 10-23-2000 See below

<mrsheen.com> (registered 08-06-2001)

<closebros.com> (registered 11-20-2001).

Each of these domain names is registered with the Registrar.

The Complainant’s further state that the information recorded by the Respondent in respect of its identity in its registration of the Domain Names, that is “No valid address as domain is pending transfer please use email, to contact” has remained the same for some years and contend that the “pending transfer” message is a sham designed to frustrate rights holders attempting to contact the true registrant.

The Complainants argue that these additional matters are argued to show a pattern of abusive conduct with respect to domain names, lending weight to an inference that the Respondent specifically targeted the Complainants in respect of the Domain Names because of their fame and reputation.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

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

In this case, the Complainants have clearly made out their trademark rights, both derived from the first Complainant’s long trading history and from their registered trademarks. The identity or confusing similarity of the Domain Names is self-evident.

The respondent has no rights or legitimate interests in respect of the Domain Name.

It is clear on the evidence provided by the Complainants that, whoever the Respondent is, he, she or it did not derive any rights to register and use the Domain Names from the Complainants. The Respondent has not provided any evidence that it has any rights, and his, her or its use of the Domain Names from the time of registration shows no genuine business right and interest in the names used in the domain names, nor has it shown any legitimate non-commercial use. The present use is either completely pointless or, as the Complainants contend, intended to derive some commercial benefit from an association with the Google Custom Search Engine. Given the first Complainant’s long trading history and reputation, whoever the Respondent is, he, she or it could have no conceivable legitimate interest in the name.

The Domain Name was registered and is being used in bad faith.

The Complainants assert that there emerges a pattern of conduct of abusive domain name registrations from past decisions under the Policy concerning the Respondent, and from numerous other registrations of domain names in the same name using third party marks. The difficulty with this proposition is that there is no evidence of who, in fact, the Respondent is. It is fair to say that the fact that each of the domain names the subject of the past UDRP decisions referred to by the Complainants and the other registrations (at least, at the date of the Complaint) were recorded by a registrant in exactly the same false and misleading way suggests that the same registrant was behind them all, but the manifest failure of the Registrar to properly record the registrant’s details in each case makes a firm conclusion to this issue difficult. Furthermore, this Panel cannot form any conclusions with respect to the other domain names referred to in this decision, other than noting that in many the registrant details are plainly false and misleading, has no apparent connection with the third party trademark owner in each case and in each case is being used for a parking website which is plainly benefiting from pay-per-click revenues. The Panel notes that a number of these other domain name registrations referred to have, in fact, now seemingly been transferred in the name of the Registrar, although still being parked for pay-per-click revenues with little or no connection with the trademark owner in each case. Presumably, now that the Registrar is aware of the false registration details, it will exercise its powers under the terms of its registration agreement to correct this apparent error.

Furthermore, whilst on the evidence provided by the Complainants their hypothesis concerning the revenues to be derived by the Respondent’s use of the Domain Names to associate with the Google AdSense for Search program by invoking the Google Custom Search Engine is appealing, there is insufficient evidence that this is in fact what the Respondent’s purpose was at the time of registration and now.

However, the list of circumstances in paragraph 4(b) of the UDRP is non-exclusive. Previous decisions under the UDRP have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Ltd v. Nuclear Marshmallows WIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Club Mйditerranйe S.A. v. Clubmedical WIPO Case No. D2000-1428; and Time Inc v. Chip Cooper WIPO Case No. D2000-1342. Even if the Respondent is not profiting from its attraction of Internet users seeking the Complainants, given the overwhelming likelihood that the Respondent chose the Domain Names because of their identity to the names and marks of the Complainants, it can be assumed that the Respondent derives a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy; see David Taylor Cadillac/Buick Co. v. Spider Webs Ltd NAF FA0010000095832, in which it was found “confusion can result regardless of whether the content on [the respondent’s] website is commercial or non-commercial”.

In the Nuclear Marshmallows decision referred to above, the learned panel found the required bad faith in that:

“(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.”

Similar considerations apply here. Accordingly, the Panel concludes that the Respondent registered and has been using the Domain Names in bad faith.

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 Names <terenceconran.com> and <theconranshop.com> be transferred to the Complainants.

The Panel takes this opportunity to further comment that the Registrar has a responsibility not to facilitate, whether intentionally or by virtue of a lack of care, such abusive registrations to take place as those the subject of these proceedings and others referred to by the Complainants, that so obviously fail to disclose the identity of the registrant, and should take steps to correct any such registration coming to its attention.

William P. Knight
Sole Panelist

Dated: April 29, 2008

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0356.html

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