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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Loot Limited and Daily Mail And General Trust Plc v. Not Available / Al Malik

Case No. D2008-1402

1. The Parties

The Complainant are Loot Limited and Daily Mail And General Trust Plc of London United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Adlex Solicitors, United Kingdom.

The Respondent is Not Available / Al Malik of Wyke and London, United Kingdom, respectively.

2. The Domain Name and Registrar

The disputed domain name <lootrentals.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2008. On September 16, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On September 16, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Response was filed with the Center on October 10, 2008.

The Center appointed David Perkins as the sole panelist in this matter on October 21, 2008. 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

4.A. The Complainants

4.A.1 The First Complainant Loot Limited, operates an advertisement listings business. It was incorporated in September 2001 and has been a part of the Second Complainant, Daily Mail & General Trust Plc since then. Its annual turnover in 2006 was just under £17 million and in 2007 was just under £13 million.

4.A.2 The Second Complainant is one of the largest media companies in the United Kingdom. It also has interests around the world in national and regional newspapers, television, radio, exhibitions and information publishing. It was incorporated in September 1922.

4.A.3 The LOOT trademarks

The Complainants are the proprietors of the following:

Country

Reg. No.

Mark

Class(es)

Dates of Application & Registration

Registered Proprietor

United Kingdom

1232003

LOOT

16

December 13, 1984

Second Complainant

United Kingdom

1279012

LOOT

35

October 1, 1986

Assigned to the First Complainant December 17, 2007

United Kingdom

1300740

LOOT

LONDON’S NOTICEBOARD & device

16

February 12, 1967;

August 29, 1989

Assigned to the First Complainant December 17, 2007

United Kingdom

2045854

LOOT

THE FREE-ADS PAPER & device

16: 35

November 22, 1995;

September 6, 1996

Assigned to the First Complainant December 17, 2007

United Kingdom

2045858

LOOT

LONDON’S NOTICEBOARD & device

16: 35

November 22 1995;

December 19, 1997

Assigned to the First Complainant December 17, 2007

United Kingdom

2111770

LOOT & device

16: 35

October 3, 1996;

April 4, 1997

Assigned to the First Complainant December 17, 2007

United Kingdom

2292684

LOOT

16: 28

February 14, 2002;

January 16, 2004

Assigned to the First Complainant December 17, 2007

United Kingdom

2392435

LOOT

9

May 20, 2005;

November 11, 2005

Assigned to the First Complainant December 17, 2007

4.A.4 LOOT Magazine

4.A.4.1 First Complainant publishes a magazine called LOOT. This was first published as a weekly in 1985. It is now printed three times a week in London and Manchester and also once a week in Liverpool.

4.A.4.2 The magazine has from its inception contained a property rentals section and has an established presence in the property rentals market covering both the public and the trade. “Property Rentals” is the largest category within LOOT magazine in terms of advertising revenue and in the 12 months to January 2008 generated some £3.3 million of such advertising revenue.

4.A.4.3 Following the success of the “Property Rentals” section of LOOT magazine, in October 2006 a stand alone publication “Loot Rentals” was launched.

4.A.5 The LOOT and LOOT RENTALS websites

In 1997 the First Complainant’s website at “www.loot.com” was launched and in 2007 a website at “www.loot-rentals.com” was also launched. Because of the success of the “loot-rentals.com” website, the separate “Loot Rentals” magazine became redundant and was discontinued in January 2008. Currently, the “loot.com” website receives over 400,000 unique visitors per month and the “loot-rentals.com” website just under 20,000 unique visitors per month. In 2006 – the year that the disputed domain name was registered – the “loot.com“ website received approximately 450,000 unique visitors per month.

4.A.6 The First Complainant’s Marketing of LOOT and LOOT RENTALS

The First Complainant’s total marketing expenditure for the period 2003 to 2007 relating to LOOT and LOOT RENTALS was approximately £7.8 million. This marketing includes:

- advertising in national newspapers and magazines, including the Daily Mail (the United Kingdom’s third biggest selling newspaper), the Evening Standard, Metro and London Life;

- national and local radio advertising;

- poster, outdoor and point of sale advertising campaigns;

- email marketing; and

- other miscellaneous marketing, including front cover, leaflets, competitions and banner advertisements.

Examples of such marketing are exhibited to the Complaint.

4.A.7 The Complainant’s disputes with Mr. Al Malik and Loot Estate Agents Limited

4.A.7.1 In August 2006 the Second Complainant obtained from Loot Estate Agents Ltd of Wood Green, London a number of undertakings, including (1) to change its name to a name not including the name “Loot”; (2) not to infringe 5 of the registered trademarks listed in paragraph 4.A.3 above; and (3) not to register a domain name incorporating the name “Loot” or any word colourably similar thereto. Compliance with those undertakings required a change of corporate name to Hoot Estate Agents Ltd and to transfer certain domain names to the Second Complainant. This involved payments respectively to Companies House and Nominet, which payments were evidenced by two cheques from Al Malik trading as EmailProperty.co.uk. Accordingly, in July 2008 the domain name <gumtreerentals.co.uk> was registered by Mr. Al Malik, the administrative agent being Mr. Al Malik with an email address of “hootestateagents@yahoo.co.uk”. In the circumstances, the Complainants say that Mr. Al Malik was closely concerned with Loot Estate Agents Ltd., now known as Hoot Estate Agents Ltd.

4.A.7.2 The disputed domain name was registered on October 14, 2006 with an address for the administrative contact at “info@emailproperty.co.uk”. As at October 17, 2007 that domain name resolved to a website “www.lootrentals.com” offering rented accommodation in London via a link to “www.emailproperty.co.uk”.

4.A.7.3 On October 17, 2007 solicitors for the Complainants wrote by email to that link – namely, “www.emailproperty.co.uk” – requesting transfer of the disputed domain name. The same day, a reply from Emailproperty.co.uk directed the Complainants to contact “lootrentals.com” directly, stating:

“Lootrentals are one of our many clients who advertise on emailproperty.co.uk …”

On October 18, 2007 Mr. Al Malik responded to the Complainants on behalf of lootrentals.com rejecting the request for transfer of the disputed domain name. In a further email dated November 1, 2007 Mr. Al Malik wrote as follows:

“LOOTRENTALS.COM is currently under construction as a rental property portal site for private landlords only and NOT to trades people such as estate agents, and this site will advertise rental properties on behalf of private landlords FREE of charge. Our font to loot or loot-rentals is completely different and all our colours are different and our policy clearly states that we are not in anyway connected with any print or visual media and therefore is noway confusing to any person.”

He also referred to “www.emailproperty.co.uk” as a portal site

“where we currently advertise our site free of charge like other agents.”

4.A.7.4 By June 20, 2008 the disputed domain name resolved to a fully functional website describing itself as

“a new residential and commercial property rental site for private landlords and tenants.”

The Administrative Contact for the disputed domain name remained Mr. Al Malik but at a different address, namely “info@lootrentals.com”. A further cease and desist letter was sent by the Complainants’ solicitors to Mr. Al Malik at that address on June 25, 2008 asserting, inter alia, breach of the Undertaking of August 2006 (referred to in paragraph 4.A.7.1 above). Mr. Al Malik replied by email on July 9, 2008 complaining that the Complainants had, without reference to him,

“contacted our hosting company asking them to switch our site off“

Further correspondence followed, culminating with a letter to the Complainants’ solicitors from Mr. Al Malik on behalf of lootrentals.com dated July 18, 2008 complaining at registration on May 22, 2007 of the Complainants’ domain name <loot-rentals.com>. This domain name was used by the First Complainant for its website at “www.loot-rentals.com” established in 2007; see, paragraph 4.A.5 above.

4.A.7.5 By August 15, 2008 the website at “www.lootrentals.com” carried a disclaimer in the following terms:

“lootrentals.com” is not connected to any print or visual media of a similar name” lootrentals.com has a sister site gumfreerentals.com which is also an independent site and “is not connected to any print or visual media of similar name””

4.A.7.6 Mr. Al Malik is the registrant of <gumfreerentals.co.uk> and is the administrative and technical contact for <gumfreerentals.com>. He is also the registrant of <gumtreerentals.com> and <gumtreerentals.co.uk>. The gumfree domain names resolve to websites offering residential and commercial lettings. The website “www.gumtree.com” offers a variety of services, including house and flat rentals. There is a registered United Kingdom trademark for GUMTREE in Class 3 (Registration 2381166 filed on December 24, 2004) in the name of Statestrong Limited. The Class 3 specification is for soaps, cosmetics and goods of that type.

4.B The Respondent

4.B.1 As noted, the disputed domain name was created on October 14, 2006 (paragraph 4.A.7.2 above). The Response filed on behalf of the Respondent is from Mr. Al Malik. Mr. Al Malik states that the disputed domain name was purchased on that date and developed into an online property advertising website. He explains that the website caters only for private sector landlords and does not permit estate agents to advertise their properties directly on the site but only to provide a link to their own property websites.

4.B.2 Mr. Al Malik states that, until the initial correspondence with the Complainants’ solicitors – by which it is assumed he is referring to the email letter of October 17, 2007 (paragraph 4.A.7.3 above) – he was unaware of the first Complainant’s Loot Rentals publication launched in October 2006.

4.B.3 Mr. Al Malik says that, prior to the launch of the First Complainant’s “www.loot-rentals.com” website a year later, 90% of the research for his “www.lootrentals.com” website had been undertaken. For example, design of the layout and functionality and marketing the launch of that website. Mr. Al Malik says that he made clear his intention to use the disputed domain name for a lootrentals website in the correspondence in October and November 2007 and having heard nothing further from the Complainants he proceeded to launch that website. He also refers to his having purchased the disputed domain name in October 2006 some six months prior to the Complainants creating their <loot-rentals.com> domain name.

4.B.4 As to the cheques signed by Mr. Al Malik in August 2006 (see, paragraph 4.A.7.1 above), Mr. Al Malik says that they were in part payment of rent due to a Miss Hussain with whom he shared office space at that time. It was Farrah Hussain who signed the Undertaking in August 2006 on behalf of Loot Estate Agents Limited. Mr. Al Malik says he had no business connection with Miss Hussain.

4.B.5 As to <emailproperty.co.uk>, Mr. Al Malik says that this is owned by him and that it functions as a portal site that advertises for estate agents and for private landlords.

4.B.6 Mr. Al Malik explains that he has never attempted to conceal his ownership of <emailproperty.co.uk> or of the disputed domain name. As to the latter, if he had wanted to conceal his identity, he says that he would not have given his name as the Administrative Contact.

4.B.7 Mr. Al Malik exhibits a letter addressed to him from the Trading Standards Enforcement Officer of The Royal Borough of Kensington & Chelsea dated July 15, 2008 written on behalf of the Second Complainant. This asserts that the “www.lootrentals.com” website is confusingly similar to the “www.loot.com” website and could contravene Regulation 3 of the Business Protection from Misleading Marketing Regulations 2008. He also exhibits a second letter from the same Trading Standards Enforcement Officer dated August 1, 2008 referring to his conversation with her. That letter records the disclaimer to be included on the “www.loot-rentals.com” homepage, which is in the terms noted in paragraph 4.A.7.5 above. On the basis of implementation of that disclaimer, the trading Standards Officer states:

“we will not proceed with this particular matter any further.”

5. Parties’ Contentions

5.A Complainants

Identical or Confusingly Similar

5.A.1 Complainants say that the disputed domain name is confusingly similar to its LOOT registered trademark, which dates back to 1984.

5.A.2 Complainants also assert common law rights in the names LOOT and LOOT RENTALS acquired by extensive use through (1) LOOT magazine first published in 1985; (2) the “www.loot.com” website launched in 1997; (3) the Property Rentals section in LOOT magazine which has been a feature of that magazine since its inception and which has developed into the largest category of advertising revenue generated by the LOOT magazine and “www.loot.com” website; and (4) LOOT RENTALS magazine launched in October 2006 and the www.loot-rentals.com website launched the following year which has replaced that magazine.

5.A.3 The dominant feature of the disputed domain name is “Loot” which is identical to the Complainants’ registered trademarks. The suffix “rentals” is merely descriptive but having regard to the Complainants’ extensive use of the word “rentals” in connection with the LOOT trademark, confusing similarity follows.

5.A.4 Rights and Legitimate Interests

As to rights to and legitimate interests in the disputed domain name, the Complainants say the burden is on the Respondent to establish bona fide use under paragraph 4(c)(i) of the Policy. However, the Complainants say that they have never licensed or otherwise authorized the Respondent to use either the LOOT or LOOT RENTALS marks.

5.A.5 Further, the Complainants’ case is that the Respondent’s use of the disputed domain name is clearly not a bona fide offering of services. This is because the disputed domain name is confusingly similar to the LOOT and LOOT RENTALS trademarks and is used by the Respondent to offer similar services to those offered by the Complainants in the LOOT magazine and on “www.loot.com“ and “www.lootrentals.com”. In this respect, the Complainants refer to the decision in America Online, Inc v. Xianfeng Fu, WIPO Case No. D2000-1374. (There the disputed domain names were <icq520.com> and <icq502.com> and the Complainant was the owner of some 21 registered trademarks throughout the world for the mark ICQ. The Complainant also operated a website at the address <icq.com>. Its online service had over 100 million subscribers. In relation to paragraph 4(c)(i) of the Policy the Panel said: “In the Panel’s opinion it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’ mark and for the same business.”).

5.A.6 As to paragraph 4(c)(ii) of the Policy, the Complainants say there is no evidence that the Respondent has been commonly known by the disputed domain name. Indeed, the LOOT and LOOT RENTALS marks are, the Complainants say, recognized by the public as distinctive of them and their business.

5.A.7 As to paragraph 4(c)(iii) of the Policy, the Complainants say that the Respondent’s use of the disputed domain name is clearly a commercial use and by reason of the confusing similarity of that domain name with the Complainants’ trademarks and its use for similar services, it is neither a legitimate nor a fair use. Further, as explained in relation to paragraph 4(a)(iii) of the Policy, such use will misleadingly divert consumers.

Registered and Used in Bad Faith

5.A.8 In relation to registration and use in bad faith, the Complainants’ case is that Mr. Al Malik should be treated as the Respondent for the purposes of this Complaint. The Complainants go on to say that when Mr. Al Malik acquired the disputed domain name in October 2006 he was clearly aware of the Complainants and their claimed trademark rights in the LOOT and LOOT RENTALS marks. This is because – the Complainants say – Mr. Al Malik was closely involved with Loot Estate Agents Ltd which gave the Undertaking in August 2006 described in paragraph 4.A.7.1 above. That, they contend, is the reason why when registering the disputed domain name only two months later Mr. Al Malik chose to register it anonymously. He wanted to conceal his identity.

5.A.9 Still further, the disputed domain name was registered (on October 14, 2006) only days after the First Complainant launched its LOOT RENTALS magazine, which launch was announced in Media Week on October 10, 2006. This, the Complainants say, is another indicia of registration in bad faith.

5.A.10 Then, when Mr. Al Malik was asked in the correspondence in October and November 2007 (see, paragraph 4.A.7.3 above) to clarify his connection with emailproperty.co.uk, he objected to being questioned “regarding my business with third parties” and referred to emailproperty.co.uk as “a portal site where we currently advertise our site free of charge like other agents”. This explanation was inconsistent with his having signed on behalf of emailproperty.co.uk the two cheques dated August 2006: see, paragraph 4.A.7.1 above.

5.A.11 In the circumstances, the Complainants say that it is clear that Mr. Al Malik acquired the disputed domain in bad faith well knowing of the Complainants rights in the LOOT and LOOT RENTALS marks.

5.A.12 The Complainants also point to Mr. Al Malik’s misuse of the GUMTREE trademark owned by Statestrong Ltd by registering GUMTREE and GUMFREE prefixed domain names both with the addition of the suffix RENTALS: see, paragraph 4.A.7.6 above.

5.A.13 As to bad faith use, the Complainants rely on Mr. Al Malik’s deliberate bad faith registration of the disputed domain name which is confusingly similar to Complainants’ LOOT and LOOT RENTALS marks and the subsequent use of that domain name for a website offering similar services – i.e. property rentals. This, the Complainants say, evidences Mr. Al Malik’s intention to create a likelihood of confusion with their LOOT and LOOT RENTALS marks as to the source, sponsorship, affiliation or endorsement of his “www.lootrentals.com” website. That bad faith use should also, the Complainants say, be viewed against the Undertaking given in August 2006 by Loot Estate Agents Limited, a company with which Mr. Al Malik was closely involved. In the circumstances, the Complainants submit that the disputed domain name was also registered primarily for the purpose of disrupting their business.

5.B. The Respondent

Identical or Confusingly Similar

5.B.1 Mr. Al Malik says that the disputed domain name does not infringe the LOOT registered trademark.

5.B.2 In that respect, Mr. Al Malik demonstrates that the mark LOOT is commonly used with suffixes other than RENTALS. The Respondent exhibits a listing of some 650 plus domain names which incorporate the word “loot” including <lootdaddy.com>; <lootbingo,.com>; <lootbox.com>; <lootcorp.com>; <lootmaar.com>; <lootmovie.com>; <lootshop.com> and <lootup.com>. He also exhibits a number of registered companies which use or have used “loot” as the dominant part of the corporate name. He then exhibits a list of United Kingdom registered trademarks numbered 2,474,910 to 924; 926; 928; 931; 935; 937; 940; 942; 945 and 948 to 951 which were owned by the Complainants but which have been abandoned, all of which are prefixed LOOT. For example, LOOT TRAVEL and LOOT MUSIC. Accordingly, the Respondent concludes that LOOT simpliciter cannot be said to be confusingly similar to the disputed domain name. For there to be a likelihood of confusion, there must – he says – be visual, aural and conceptual similarity between the marks.

5.B.3 As to LOOT RENTALS, the Respondent points out that this is not a registered trademark.

5.B.4 Furthermore, the Complainants’ “www.loot.com” website offers not only property but also a host of totally unrelated products and services. As the Complainant’s website says:

“Welcome to loot.com

Thousands of people find it, sell it and rent it with Loot everyday. From laptops, stereos and sofas to flats, cars or even mobile phones you are sure to find what you’re after with Loot”

By comparison the “www.lootrentals.com” website to which the disputed domain name resolves is concerned only with property rentals. This is, the Respondent says, another reason why there can be no confusing similarity between the Complainants’ LOOT trademark and the disputed domain name. The Respondent further says there has been no evidence of actual confusion because, although the “www.lootrentals.com website is still in the early stages, people have realised that it is not connected in anyway with the Complainants”.

5.B.5 The Respondent says that a Google search for “rentals” will produce not only links to property rental websites but also to car hire rentals, DVD rentals and rentals of TV and other domestic appliances. In total the Respondent says that the word “rental” yielded 196 million results.

5.B.6 The Respondent cites the decision in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, wherein the Panel found that the Complainant had not established rights in the service mark PET WAREHOUSE. The circumstances of that case were that the complainant had filed a service mark application for PET WAREHOUSE with the US Patent and Trademark Office (USPTO) but abandoned that application when it was rejected by the USPTO. Furthermore, the Panel held that the complainant in that case had failed to provide adequate evidence to show distinctiveness or secondary meaning. There were also other businesses competing with the complainant that used the name “Pet Warehouse”, including one named Pets Warehouse which was said to have predated the complainant in business.

Rights and Legitimate Interests

5.B.7 Because there is no confusing similarity, the Respondent contends that his use of the disputed domain name is bona fide and fair.

5.B.8 The Respondent refers to NAF Claim No. FA96320 Canned Foods, Inc v. Ult.Search Inc where the disputed domain name was <groceryoutlet.com>. The complainant relied on common law service mark rights in GROGERY OUTLET based on use of that mark since 1987 and the <groceryoutlet.com> domain name originally created in March 1998 but which was subsequently deleted in 2000 owing to an error and then registered by the respondent. The panel found that the respondent had established a legitimate interest in the disputed domain name and that the complainant’s case in relation to bad faith failed. The respondent’s use of the disputed domain name for a website that linked to online resources for groceries and similar goods was found to be legitimate for the purposes of the policy. Furthermore, in relation to bad faith use, the panel said there was no evidence of actual customer confusion where, as in this case, the domain name is a generic name:

“it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them.”

Registered and Used in bad Faith

5.B.9 The Respondent says that none of the circumstances set out in paragraph 4(b) of the Policy evidencing bad faith apply in this case. First, he has not offered to sell the disputed domain name to the Complainants. Second, he did not register the disputed domain name in order to prevent the Complainants from reflecting its LOOT trademark in a corresponding domain name. Mr. Al Malik says he has no intention of preventing the Complainants from using their mark. Nor, thirdly, did he register the disputed domain name for the purpose of disrupting the Complainants’ business.

5.B.10 As to paragraph 4(b)(iv) of the Policy, the Respondent points to the visible differences between his website and the Complainants’ website and to the different functions of those websites described in paragraph 5.B.4 above.

5.B.11 The Respondent says that he registered the disputed domain name on October 14, 2006 before he became aware of the First Complainant’s LOOT RENTALS magazine, which he only now knows was launched earlier in October 2006. The says that he chose “lootrentals” because of what he terms “its laudatory characteristics (as have many others, lootcars.com etc)”. As soon as he purchased the disputed domain name, Mr. Al Malik says that he established a single page website which directed potential customers to “his other site” – presumably, “www.emailproperty.co.uk” – while he designed and researched the site at “www.lootrentals.com” which he subsequently launched.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent’s 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.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainants have established rights to the registered trademark LOOT.

6.6 The Complainants have produced significant evidence of use of its “www.loot-rentals.com” website and of advertising and promotional material for that website. The Panel considers it likely that for the purposes of a passing-off action, the Complainants would succeed in establishing sufficient goodwill in the LOOT RENTALS name and mark. Accordingly, on balance the Panel considers that LOOT RENTALS has probably become a distinctive identifier associated with the Complainants and their business.

6.7 Clearly, if that is correct, then – but for the hyphen in the Complainants’ domain name and website – the disputed domain name is identical to the LOOT RENTALS name and mark.

6.8 However, even if the Complainants must rely only on the registered LOOT trademarks, LOOT is clearly the dominant feature of the disputed domain name and the suffix “rentals” merely describes the services offered. For the purpose of the Policy, in the Panel’s opinion this is sufficient to satisfy the “confusingly similar” requirement of paragraph 4(a)(i).

6.9 The Respondent argues that the applicable test is that which would apply in a case of trademark infringement. However, to find confusing similarity under the Policy does not require a finding of trademark infringement. Notwithstanding, the existence of a large number of other “loot“ prefixed domain names may be relevant to the issues to be examined under paragraphs 4(a)(ii) and (iii) of the Policy.

6.10 But, for the purposes of paragraph 4(a)(i) the Panel holds that the disputed domain name is identical to the Complainants’ common law trademark rights in LOOT RENTALS and is confusingly similar to the Complainants’ LOOT registered trademarks.

Rights and Legitimate Interests

6.11 Can the Respondent bring himself within paragraphs 4(c)(i) or (iii) of the Policy? Once a holding of confusing similarity has been made under paragraph 4(a)(i), it may typically follow that a Respondent’s use cannot be bona fide or fair.

Here, the Respondent says that he began use or demonstrable preparations to use the domain name in connection with offering property rental services before becoming aware of the Complainants’ publication, LOOT RENTALS. However, the Respondent does not deny knowledge of the Complainants’ LOOT magazine (launched in 1985) or its “www.loot.com” website (launched in 1997) which featured a significant property rentals content and was very well established and known by the date the disputed domain name was acquired in October 2006.

6.12 Here, the Respondent says that he began use or demonstrable preparations to use the domain name in connection with offering property rental services before becoming aware of the Complainants’ publication, LOOT RENTALS. However, the Respondent does not deny knowledge of the Complainants’ LOOT magazine (launched in 1985) or its “www.loot.com” website (launched in 1997) which featured a significant property rentals content and was very well established and known by the date the disputed domain name was registered in October 2006.

6.13 Also to be borne in mind is the 2006 dispute between the Complainants and Loot Estate Agency Limited, the fact that another domain name owned by Mr. Al Malik gives his name as the Administrative Agent with the address as “hootestateagents” − the name to which Loot Estate Agents was changed subsequent to the Undertaking of August 2006 signed by Miss Hussain − and his cheques to Companies House and Nominet which evidenced compliance by Loot Estate Agents Limited with certain aspects of that Undertaking.

6.14 As to that Mr. A1 Malik says:

“The respondent used to share office space with Miss Hussain who has no connection with the present case whatsoever. It was common practice between them that should one require an immediate cheque; the cheque was to be issued irrelevant of whose cheque book it came out of since they would then deduct this from the rent. At the time Mr. Malik purchased the domain names he still had access to Miss Hussain’s email address which she had stopped using since she was no longer trading. If there was any deliberate attempt by Mr. Malik to conceal his identity or if he thought that he was doing anything wrong then surely he would not have used this email address.”

6.15 On balance, the Panel believes that in using the disputed domain name the Respondent knew or was willfully blind to the existence of the Complainants’ LOOT business and to property rentals comprising a significant portion of the services offered by that business. Further, by at least October 2007 Mr. Al Malik was put fairly and squarely on notice of the Complainants’ case that use of the <lootrentals.com> and <lootrentals.co.uk> domain names constituted infringement of the LOOT trademark and passing-off. Notwithstanding, he indicated his intention to continue to use those domain names. At that stage, the disputed domain name resolved to a single homepage which linked to Mr. Al Malik’s website at <emailproperty.co.uk>.

6.16 In the light of the Panel’s finding of confusing similarity under paragraph 4(a)(i) of the Policy, the Respondent fails to establish any of the circumstances in paragraph 4(c) of the Policy or otherwise and, accordingly, fails to demonstrate rights to or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

6.17 The disputed domain name was registered a matter of days after the announcement on October 10, 2006 of the launch of the Complainants’ LOOT RENTALS magazine. The Respondent explains why and how he chose the disputed domain name (paragraph 5.B.11 above) and indicates that he was not a part of the Loot Estate Agents dispute with the Complainants earlier that year nor, presumably, aware of it.

6.18 While, in the light of the sequence of events recited above (see, paragraphs 6.12 and 6.13), the Panel is not convinced by the Respondent’s explanations, it is unnecessary to decide that issue. It is sufficient to view bad faith registration and use against the Complainants’ LOOT registered trademark and the considerable acquired goodwill in that name and mark in relation to the services provided under it, a significant element of which are related to property rentals.

6.19 In the Panel’s view it is not credible that before acquiring the disputed domain name the Respondent was not aware of the Complainants’ LOOT trademark and the LOOT magazine and website. As to use, having been specifically put on notice of those rights, the Respondent continued to use the disputed domain name, originally for a webpage linking to another of his property websites and subsequently to a fully functional website at “www.lootrentals.com”.

6.20 The Respondent may have been mistaken in relation to what amounts to confusing similarity under the Policy but that does not avoid a finding of bad faith use. The Respondent was aware of the Complainants’ position but ignored their rights, asserting (wrongly) that he was entitled to use a confusingly similar domain name.

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


David Perkins
Sole Panelist

Dated: November 4, 2008

 

: https://internet-law.ru/intlaw/udrp/2008/d2008-1402.html

 

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