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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Netmovers Ltd. v. Anne Marie Doyle

Case No. DIE2008-0001

1. The Parties

The Complainant is Netmovers Ltd., of Lancashire, United Kingdom of Great Britain and Northern Ireland.

The Registrant is Anne Marie Doyle, of Co. Clare, Ireland.

2. The Domain Name and Registrar

The disputed domain name <netmovers.ie> is registered with IE Domain Registry Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2008. On April 3, 2008, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On April 3 and 18, 2008, IE Domain Registry Limited transmitted by email to the Center its verification responses confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).

In accordance with the IEDR Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on April 21, 2008. In accordance with the IEDR Rules, paragraph 5.1, the due date for Response was May 20, 2008. The Response was filed with the Center on May 19, 2008.

The Center appointed Adam Taylor as the sole panelist in this matter on May 27, 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

The Complainant operates a website for private property sales (ie excluding estate agents) at “www.netmovers.net” and has traded in the United Kingdom of Great Britain and Northern Ireland (“UK”) for some years under the name “NetMovers”.

The Complainant invokes a UK registered trade mark number 2449241 dated March 13, 2007, in the name of “Sohail Sarwar” consisting of a logo of a house above the stylized word “NetMovers” in classes 9 and 38.

The Registrant registered the disputed domain name on September 18, 2006.

Between January and March 2008 the Registrant redirected the disputed domain name to its own website for private property sales at “www.sellityourself.ie”.

5. Parties’ Contentions

A. Complainant

Identical or Misleadingly Similar

The Complainant has registered a number of domain names which reflect its operations such as <netmovers.net> and <netmovers.co.uk>. The Complainant enquired about the disputed domain name but was unable to register it due to the local registration requirements. The Complainant then made the necessary arrangements to use an address in Ireland in order to register the domain name but, in the meantime, the domain name was registered by the Registrant.

The Complainant made numerous attempts to obtain the domain name back from the Registrant including sizeable offers of money but to no avail. Thereafter the Registrant redirected the domain name to “www.sellityourself.ie”.

NETMOVERS is a protected trade mark as shown by the registration certificate provided.

Rights or Legitimate Interests

The Complainant has found no justifiable reason to indicate that the disputed domain name has any bearing on the name, brand or concept related to the Registrant’s business other than to directly deceive Internet users into assuming that the Registrant was associated with the Complainant.

The disputed domain name has no relevance to the name of the Registrant or the name of the business which the Registrant operates. The Registrant does however operate a business which is in exactly the same market as the Complainant.

Registered or Used in Bad Faith

The disputed domain name was registered a considerable time after the Complainant started operating. The domain name is redirected to www.sellityourself.ie. The business “Sellityourself” was itself created a number of years after the Complainant. Although this can not now be substantiated, there are similarities between the text of the Complainant’s website and “www.sellityourself.ie” which could be considered as more than a coincidence.

The Complainant considers that the disputed domain name was registered to deceive potential visitors to the site into believing that the registrant was affiliated with the protected brand NETMOVERS and the Complainant.

The redirect causes the Complainant continuous problems. Numerous complaints have been directed to the Complainant asking why it operates two “netmovers” domains pointing to two corporate websites in the same marketplace yet are ‘apparently’ unrelated.

The Complainant cannot substantiate this but believes that the entire www.sellityourself.ie business model is based on the Complainant’s platform and the registration of the disputed domain name is the ultimate outcome of this. The disputed domain name has no benefit to any company or individual apart from the protected brand owners.

The disputed domain name is already affecting and diluting the reputation of a protected trade mark.

B. Registrant

Identical or Misleadingly Similar

The Complainant has no Protected Identifier in Ireland. A UK trade mark gives no protection in Ireland. The Complainant has not applied for any trade mark protection in Ireland.

In order to secure a .ie domain name an address in Ireland is not required. Evidence of trade with Ireland suffices. In 2006 the Complainant was obviously unable to demonstrate any evidence of trade so instead it chose to secure an Irish address in order to register a .ie domain name.

The Complainant is now aggressively targeting the Irish market and is abusing this administrative procedure to forcibly secure the disputed domain name as a tool for market entry.

The Complainant has only recently begun to enter the Irish market. Prior to receiving this complaint, the Registrant had never heard of the Complainant despite its claim to be the UK’s number one “For Sale By Owner” website. A Google search shows no results for “Netmovers.net”. The Complainant has no presence in the Irish market. Its website makes no reference to Ireland and provides no Irish address. Indeed the property search facility on the home page does not even allow a search for properties in the Republic of Ireland although Northern Ireland is searchable, being part of the UK. Clicking on Northern Ireland currently reveals one property.

The Complainant acquired two domains for the Irish market in October 2006, “www.netmoversireland.com” and “www.netmoversireland.net” but neither domain currently points to an active website.

The Complainant’s primary market is the UK as demonstrated by its website.

The Complainant claims that the temporary redirect to www.sellityourself.ie was to somehow deceive consumers. Sellityourself.ie does not sell property in the UK and nor does it intend to enter into the UK market. Ireland is its only market. UK property sellers who somehow happened to be on the website at the disputed domain name would not be confused into believing that Sellityourself.ie could sell their property.

Rights or Legitimate Interests

As the Complainant has said, the disputed domain name has no bearing on the name or brand or concept of the Complainant’s primary business Sellityourself.ie – because that was never its purpose. The domain name was acquired for a new and separate business located in Ireland, which would complement the Sellityourself.ie service. The similarity of its name to that of a UK company is an unfortunate coincidence.

The Sellityourself.ie website was launched in May 2006. Sellityourself.ie is a For Sale By Owner website which allows people to sell their property and move home without using an estate agent. In September 2006 the Registrant registered the disputed domain name with the intention of using it as a service for people moving house to search and source furniture removal companies, self-storage companies and other such services.

The disputed domain name is to be used for a sister site to Sellityourself.ie like PropertySolicitors.ie which helps people locate conveyancing solicitors due to launch on June 1, 2008.

To date the Registrant has completed the logo development for the website at the disputed domain name as well as the initial design concepts and database software and has set up website hosting.

The Registrant was not willing to sell the disputed domain name despite the substantial fee offered because domain name was acquired for a new business venture, one in which the Registrant had heavily invested.

Registered or Used in Bad Faith

The Registrant did not register the disputed domain name to divert business to “Sellityourself.ie”. If so, she would have directed the disputed domain name to the “www.Sellityourself.ie” website at the outset in September 2006 but this did not happen until January 2008 after several calls by an individual regarding purchase of the disputed domain name domain name.

In January and February 2008 the Registrant received calls from an individual who did not identify himself as being from the Complainant. He claimed that he was a buyer and seller of domain names and asked the Registrant to sell the disputed domain name to him. The Registrant explained that she had a business plan for the domain name and that she did not intend to sell it.

The caller was persistent. The Registrant set up a divert to Sellityourself.ie in the hope that he would realise that the Registrant was serious about not wanting to sell. Unfortunately this has backfired and the Complainant is now using this action against the Registrant.

If the caller had made it known to us that he represented the Complainant, the Registrant would never have set up the divert.

The Complainant has not applied for any trade mark protection in Ireland and therefore the domain name was not registered to prevent the Complainant from reflecting a Protected Identifier.

The concept of “For Sale By Owner” has only come into force in Ireland in the last three years.

According to an archive printout, in December 2007 the Complainant’s www.netmovers.net homepage was modified to include a map of Ireland. This coincides with phone calls received one month later (January 2008) seeking the purchase of the disputed domain name.

Many reputable Irish media outlets have published articles and broadcast features relating to the rise of private property sales in Ireland. All of these refer to Sellityourself.ie but none refer to the Complainant, showing that it is not a competitor of the Registrant and does not do significant business in Ireland.

The Complainant’s main market is the UK. Sellityourself.ie does not sell property in the UK and is therefore not a competitor to the Complainant in the UK.

Abuse of Administrative Proceeding

The Registrant believes that the Complainant’s claim that it has received complaints as a result of the redirect is untrue. No evidence has been provided.

The Registrant’s website statistics for the period of the redirect (January – March 2008) show only three clicks to “www.sellityourself.ie”. The Registrant has received no calls or queries concerning the redirect or the Complainant.

The Complainant has provided no evidence in support of its claim concerning the alleged similarities of the text on “www.sellityourself.ie” and the Complainant’s own website. The Complainant’s and Registrant’s two models are fundamentally different. For example the Complainant does not supply signboards or newspaper advertising and the Registrant does not appoint a property manager or arrange viewings.

Either the Complainant is unaware of the Registrant’s model and has made this claim in error or it has deliberately made this claim in an attempt to mislead the administrative Panel.

The Complainant is a large UK company with an extensive budget whereas Sellityourself.ie is a small Irish company, in existence for two years with three employees and very limited budget. In attempting to enter into the Irish property market, the Complainant wishes to gain ownership of the disputed domain name despite having no proprietary claim to it.

The Complainant attempted to buy the disputed domain name under false pretences by falsely claiming to be a buyer and seller of domain names. The Complainant is now deliberately abusing this administrative procedure in an attempt to forcibly acquire the domain name now that its attempt to deceptively purchase the domain name has failed.

In the full knowledge that the domain name was only temporarily directed to the www.sellityourself.ie after the failed purchase in January 2008, it has acted in bad faith, by making a false Complaint that the Registrant was using the domain name to deceive online consumers

6. Discussion and Findings

Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

The Complainant has invoked a United Kingdom registered trade mark. That mark, however, is in the name of “Sohail Sarwar” and not the Complainant. Mr. Sarwar is variously described in the Complaint as the Secretary, authorized representative and head of the legal department. The Panel thinks it reasonable to infer in the circumstances, first, that Mr. Sarwar is in fact the controller of the Complainant and, second, that the Complainant, which uses the trademarked logo on its website, is a licensee of that trade mark.

Following the approach taken by a majority of panels under the Uniform Dispute Resolution Policy (“UDRP”), the Panel considers that, as licensee, the Complainant has rights in the trade mark. (See, eg, paragraph 8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions on WIPO’s website, stating at paragraph 1.8: “In most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.”)

The United Kingdom registered trade mark is protected in Northern Ireland and therefore constitutes a “protected identifier” under paragraph 1.3.1 of the Policy which states that “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Panel infers that “the island of Ireland” means either the Republic of Ireland or Northern Ireland as these are different legal jurisdictions. See, eg, Haymarket Media Group Limited v. Whatcar Limited, WIPO Case No. DIE2007-0007.

Albeit that it is a logo trade mark, the word “NetMovers” is by far its most prominent feature. The Panel is therefore satisfied that, disregarding the domain suffix “.ie”, the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the Domain Name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

Only paragraph 3.1.1 is potentially applicable here: “where the registrant can demonstrate that, before being put on notice of the complainant's interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.

It is common ground that the disputed domain name has been used to redirect users to another site of the Registrant at “www.sellityourself.ie”. The Registrant says that the disputed domain name was not acquired for use in relation to that site but for a “new and separate” business (albeit allegedly a proposed “sister” site to www.sellityourself.ie). The Registrant claims that the redirect was implemented only to convey to the Complainant (though not then known as such to the Registrant) that the Registrant was serious about not wanting to sell the domain name.

The Panel does not consider that the redirect of the domain name in these circumstances constitutes “a good faith offering of goods or services, or operation of a business” for the purposes of paragraph 3.1.1.

As to preparations for use of the disputed domain name in its own right (for services related to moving home), the Registrant says that it has completed the logo development for the website as well as the initial design concepts and database software and has set up website hosting. All that has been produced in support of this, however, is a printout of a holding page with a logo and the text “coming soon”. In the Panel’s view, this is not evidence of “demonstrable” preparations under paragraph 3.1.1.

The Panel concludes that the Registrant has failed on the present record to show rights in law or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The starting point is to consider the likelihood that the Registrant contemplated the Complainant when she registered the disputed domain name in September 2006.

The Complainant says that the Registrant registered the domain name in order to deceive potential visitors into thinking that the Registrant was connected with the Complainant. The Complainant points out that the Registrant operates a business “Sellityourself.ie” in the same market as the Complainant – private property sales.

The Registrant denies knowledge of the Complainant at the time of registering the disputed domain name. She says that her business operates only in Ireland where the Complainant has no presence. She observes that the Complainant’s website makes no reference to Ireland, provides no Irish address and that the Republic of Ireland is not even searchable on the property search facility on the site, while Northern Ireland generates only one search result. She points to the Complainant’s statement that it had previously been unable to register the disputed domain name because of its inability to meet the local registration requirements whereas evidence of trade with Ireland would have sufficed.

The Registrant says that she registered the disputed domain name with the aim of using it for services related to moving home, connected with but distinct from Sellityourself.ie. She points to another “sister” site operated by her, “www.propertysolicitors.ie”, designed to help users locate conveyancing solicitors.

The Panel cannot of course know what was in the mind of the Registrant. And, in this

kind of proceeding, the Panel does not have the benefit of the tools available in litigation such as disclosure of documents or testimony from witnesses. The Panel can only make its best assessment based on the evidence before it.

Had the parties both traded in Ireland at the time of registration of the disputed domain name, the Panel may well have been prepared to infer in the circumstances that the Registrant registered the disputed domain name to target the Complainant, given the similarity of their businesses.

However, the Panel is satisfied that the Complainant did not in fact trade in Ireland at the time when the Registrant registered the disputed domain name and indeed the Complainant does not suggest otherwise.

The Complainant has produced no evidence indicating that the Registrant was likely to have been aware of the Complainant’s UK business. For example the Complaint contains no information at all about the Complainant’s trading activities (apart from a claim that its business predates that of the Registrant – which fact is not disputed) and so the Panel is not in a position to conclude that the Complainant has acquired any particular reputation in the name “NetMovers” such that the Registrant was likely to have been aware of it.

The mere fact that the disputed domain name corresponds to the Complainant’s name does not of itself indicate knowledge as there is a descriptive logic to the proposed use by the Registrant of the name “NetMovers” for a site offering services relating to moving home.

The Complainant implies that the Registrant copied the text and / or business model from the Complainant’s website. If so, that might well have affected the Panel’s view of the Registrant’s bona fides. However, the Complainant provides no detail or evidence in support of these claims and indeed acknowledges that they cannot be substantiated. The Panel must therefore disregard them.

The Complainant says that it made numerous attempts to obtain the domain name back from the Registrant including sizeable offers of money but to no avail and that thereafter the Registrant redirected the domain name to <sellityourself.ie>.

The Registrant’s version is that in January 2008 she was telephoned by an individual who did not identify himself as being from the Complainant. She says he claimed that he was a buyer and seller of domain names and asked the Registrant to sell the disputed domain name to him. The Registrant says she explained that she had a business plan for the domain name and did not intend to sell it. She says that the caller was persistent and that she set up a divert to Sellityourself.ie in the hope that the caller would realise that the Registrant was serious about not wanting to sell. She complains that this has now backfired as the Complainant is now using this action against the Registrant. She insists that she did not become aware of the existence of the Complainant until it filed the Complaint.

The Complainant provides no detail of its communications with the Registrant and so the Panel has no grounds to disbelieve the Registrant’s assertion that the Complainant concealed its identity in the course of the discussions in January 2008. That being so, and although somewhat sceptical about the Registrant’s explanation for the redirect, the Panel is not in a position to draw the negative inference about the Registrant’s motive for the redirect which it might otherwise have done if there were evidence that the Registrant did become aware of the Complainant at that point.

Finally, the Complainant says that there have been a numerous complaints asking why the Complainant operates two “netmovers” domains pointing to two corporate websites in the same marketplace which are ‘apparently’ unrelated. This suggests that these users were not confused in that they were able to distinguish between the two sites. For her part, the Registrant doubts that there have been any complaints at all and says that her website statistics show only three clicks during the entire period of the redirect. The Complainant provides no details or evidence of the alleged complaints and the Registrant has not supplied its web statistics. Accordingly the Panel makes no finding as to whether or not there were any complaints and/or actual confusion. (Even if there had been relevant confusion, this would not have assisted the Complainant in the absence of relevant knowledge on the part of the Registrant at the time of the redirect.)

In summary, the Complainant has not demonstrated to the satisfaction of the Panel that the Registrant registered or used the disputed domain name in contemplation of the Complainant or its rights and so the Panel concludes (in line with the approach taken by UDRP panels) that the disputed domain name was neither registered or used in bad faith.

The Panel stresses that this decision is not intended to prejudge any other proceeding, and this decision does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court.

D. Abuse of Administrative Proceeding

The Registrant submits that the Complaint is an abuse of the administrative proceeding. Paragraph 14.6 of the IEDR Rules states: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Registrant says, first, that the Complainant’s claim about having received numerous complaints is untrue as no supporting evidence has been provided and the Registrant’s website statistics for the period of the redirect (January – March 2008) show only three clicks. However, the Registrant has not produced the website statistics.

The Panel does not feel that it can conclude that there were no complaints. All the Panel can say is that the Complainant has produced no evidence of such alleged complaints.

The same applies to the Complainant’s assertions as to copying by the Registrant of its text / business model.

The Registrant further relies on the Complainant’s failure to reveal its identity when attempting to buy the disputed domain name. The Panel does not consider that such behaviour (if it happened) of itself renders the Complaint an abuse of process.

While the Complaint has failed, the Panel does not have grounds to conclude that the Complainant acted dishonestly in bringing this action.

Accordingly, the Panel rejects the Registrant’s assertion that this Complaint constitutes an abuse of the administrative proceeding.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Adam Taylor
Sole Panelist

Dated: June 18, 2008