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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Holmes Place plc v. Holmes Place
Case No. D2000-0481
1. The Parties
The Complainant is Holmes Place plc, having its registered office at 17A Old Court Place, Kensington, London W8 4HP.
The Respondent is Holmes Place of 880 NE 69th Street, Miami, Florida 33138, USA.
2. The Domain Name(s) and Registrar(s)
The domain names in dispute are "holmesplace.org", "holmesplace.com" and "holmes-place.com".
The Registrar of "holmesplace.org" is Network Solutions Inc.
The Registrar of "holmesplace.com" and "holmes-place.com" is Register.com.
3. Procedural History
On May 23, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and on May 24, 2000, in hard copy, and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On May 23, 2000, the Center advised both of the Registrars that the Complaint had been submitted to the Center and inter alia requested confirmation that a copy of the Complaint had been sent to the Registrars as required by paragraph 4(b) of the Supplemental Rules. The Center further requested the Registrars to confirm that the specified domain names had been registered with them, to confirm that the Respondent is the currrent registrant of the said domain names, to provide full contact details for the domain name registrant, technical contact, administrative contact and billing contact for the domain names, to confirm that the Policy applies to the said domain names and to indicate the current status of the said domain names.
On May 26, 2000, the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail together with a Complaint Deficiency Notification which advised the Complainant that the Complaint did not include a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by paragraph 3(b)(xiii) of the Rules and furthermore that the Complaint did not contain the full statement specified in paragraph 3(b)(xiv) of the Rules. Copies of the said Acknowledgment and Complaint Deficiency Notification were sent at the same time to the Respondent by post/courier and by e-mail.
On May 30, 2000, Network Solutions Inc., the Registrar of the "holmesplace.org" domain name responded to the Center and stated that it was not in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said "holmesplace.org" domain name, provided the details of the administrative contact, the billing contact and the technical contact, confirmed that the Network Solutions 4.0 Service Agreement is in effect, and that the said domain name is in "active" status.
On 31 May, 2000, the Center received a letter of amendment to the Complaint from the authorized representative of the Complainant together with the hard copy of a letter which forms annex K of the Complaint.
The Center reviewed the Complaint and was satisfied that it complied with the formal requirements.
On May 31, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the "holmesplace.org" domain name to the Respondent by Post/Courier (with enclosures), fax (without attachments) and by e-mail (without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Network Solutions Inc., the Registrar of the "holmesplace.org" domain name.
On June 6, 2000, Register.com, the Registrar of the "holmesplace.com" and "holmes-place.com" domain names responded to the Center and stated that it could not confirm receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said "holmesplace.com" and "holmes-place.com" domain names, provided a print-out of the Register.com WHOIS database which provided the contact details in respect of each of the said registrations, confirmed that the Policy is applicable to the said registrations, and that the said domain names are in "active" status.
On June 8, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the "holmesplace.com" and "holmes-place.com" domain names to the Respondent by Post/Courier (with enclosures) and by e-mail. A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to ICANN and to Register.com, the Registrar of the "holmesplace.com" and "holmes-place.com" domain names. The Complaint and the Amendment to the Complaint were included in the said e-mails.
Said Notifications of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on May 23 and June 8, 2000, respectively and that the Respondent was required to submit a Response to the Center on or before June 19 and June 27, 2000, respectively.
On June 13, 2000, the Respondent sent an e-mail to the Center referring to the attachments sent with said e-mail of May 31, 2000, and stating that the Annexes B through O to the electronic copy of the Complaint were blank. The Respondent requested that they be re-sent. The Center advised the Respondent that the said Annexes had been sent on as the Center had received them, that evidently they were not capable of being submitted electronically and advised the Respondent that a hard copy had been sent by Courier.
On June 27, 2000, the Center received the Response and on June 29, 2000, the Center sent an acknowledgement of receipt of same to the Respondent by e-mail. A copy of said Acknowledgement was sent to the authorised representative of the Complainant by e-mail.
The Respondent stated that he had not received the hard copies of the Complaint or the attachments.
On July 18, 2000, having received a Statement of Acceptance and Declaration of Impartiality from the James Bridgeman in accordance with paragraph 7 of the Rules, the Center proceeded to appoint this Administrative Panel consisting of a single member in accordance with paragraph 6(b) of the Rules. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant is a PLC and operates private health and fitness clubs in Britain and Europe. The Complainant has an extensive business and is the owner of the UK registered trademark and service mark "HOLMES PLACE", registration number 2194306A. The application for said registration was filed on 13th April 1999 and the mark is registered in classes 16, 21,28,41 and 42.
There is little or no information regarding the status or activities of the Respondent. From the Response filed it would appear that the name "Holmes Place" is an alias for an individual who is the administrative contact for each of these registrations and who identifies himself as John Holmes.
5. Parties’ Contentions
The Complainant requests that the domain names be transferred to it. In support of this claim the Complainant makes the following submissions:-
The domain names "holmesplace.org", "holmesplace.com" and "holmes-place.com" are each, in essence, identical to the Complainant’s said registered trademark "HOLMES PLACE".
The Complainant contends and submits that: the Respondent has no rights or legitimate interests in respect of the said domain names that are the subject of this Complaint; and that the domain names in issue are not, nor could they be contended to be, nicknames of the Respondent or of any of its employees or associates or members of their families, or names of household pets, or in any other way identified with or related to a legitimate interest of the Respondent.
The Complainant claims to be one of the largest operators of private health clubs in the United Kingdom and Europe. The private health clubs operated by the Complainant all trade under the name "HOLMES PLACE". The Complainant has never previously heard of the Respondent and, given the Respondent’s range of domain name registrations, the Complainant contends and submits that the Respondent does not operate a genuine business or have any legitimate interest in respect of the domain names.
The Complainant submits that the domain names have been registered and are being used in bad faith.
The background to this dispute as described in the Complaint is as follows:-
In 1999, it came to the attention of the Complainant that Mr. Stephen Colclough of 18 Park Road, Hampton Wick, Surrey KT1 4AS, England had registered the domain name "holmesplace.com".
Mr. Colclough was contacted by the Complainant through a third party representing the Complainant by letter dated March 3, 1999. Mr. Colclough responded through his solicitors by letter dated March 10, 1999. The Complainant subsequently instructed solicitors, who first wrote to the solicitors for the Respondent on April 29, 1999.
While this exchange of correspondence was under way, unknown to the Complainant at that time, the Respondent registered the domain name "holmesplace.org" on May 2, 1999. The address and telephone number given by the Respondent were those of a Danny La Rue in Florida.
Mr. Colclough had, together with an individual by the name of Mr. Chris Belkowski, previously registered several domain names in the name of "London Reds". In respect of some of these registrations the Administrative Contact was given as "Steve, Chris", and in some cases the Administrative Contact was given as Chris Belkowski. These domain names were registered to an address of a residence shared by Mr. Colclough and Mr. Belkowski in England.
The Complainant submits that Mr. Belkowski is, and was at all relevant times, employed by a Mr. Danny La Rue as a manager. Mr. Belkowski is the Administrative Contact for various domain names registered in the name of "DLR". The Complainant states that it is believed that the name "DLR" is connected with a company DLR Limited which until 1994 was known as Danny La Rue Limited.
In October 1999, the Complainant issued proceedings against Mr. Colclough for passing off in respect of his registration of said domain name "holmesplace.com". Mr. Colclough later reached an agreement with the Complainant to settle the litigation and to transfer the domain name "holmesplace.com" to the Complainant.
On March 23, 2000, a letter was sent by the Complainant’s solicitors, enclosing the necessary Registrant Name Change Agreement, to Network Solutions, Inc which was at that time the registrar of "holmesplace.com".
However, the Complainant discovered that "holmesplace.com" had been registered by the Respondent through a new registrar, Register.com.
The Complainant’s solicitors contacted Network Solutions, Inc and were informed that "holmesplace.com" had been deleted, and that this deletion had taken place after receipt by Network Solutions of the Registrant Name Change Agreement but prior to the transfer to the Complainant being effected.
The Complainant sought an explanation from Mr. Colclough. According to the Complainant Mr. Colclough said that he had informed Mr. Belkowski of the settlement. Mr. Belkowski was the administrative contact for the registration. Mr. Colclough had asked Mr. Belkowski to remove the materials from the www site. Mr. Colclough said he did not ask Mr. Belkowski to delete the domain name, nor to transfer it. He was not aware that the domain name had been re-registered. Mr. Colclough said he strongly suspected that Mr. Belkowski had had the domain name deleted, and re-registered.
The Complainant submitted a letter from Mr. Colclough confirming that the address and telephone number of the Respondent is that of Mr. Danny La Rue, by whom Mr. Belkowski is employed as a manager.
Therefore, the Complainant submits that the domain name has been registered in bad faith.
The Complainant submits that the Respondent has registered the domain names in order to prevent the owner of the trademarks from reflecting the marks in a corresponding domain name, and has engaged in a pattern of such conduct.
Further, the Complainant submits that the Respondent is closely connected with Mr. Chris Belkowski who is closely connected with the entity "DLR". The Complainant submitted copies of a WHOIS search reports showing 13 domain name registrations in the name of DLR which, the Complainant states, reflect various household name registered trade marks including:- "triumphbikes.com", "bbc-uk.com", "yellowpages-uk.com", "ibm-uk.com", "vauxhallcars.com", "skodacars.com", "mtv-uk.com", "bmw-uk.com", "opelcars.com", "ford-uk.com", "newfiat.com", "newpeugeot.com".
In each case, Chris Belkowski is the Administrative Contact. The Complainant stressed that it is the Complainant’s belief that the name "DLR" is intended to reflect the initials of Mr. Belkowski’s employer Danny La Rue. The telephone numbers and addresses of the Respondent are those of Danny La Rue.
The Complainant submits that the circumstances clearly indicate that the Respondent has registered the domain names primarily for the purpose of selling the domain name registrations to the Complainant, who is the owner of a trade mark in the domain names, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The Complainant contends and submits that the Respondent has not used the domain names or any names corresponding to the domain names in connection with a bona fide offering of goods or services. In particular, the Respondent has not used the domain name "holmesplace.org", despite having registered it more than a year ago.
The Complainant contends and submits that: the Respondent has not been commonly known, or known at all, by the domain names, nor has it acquired any trade mark or service mark rights in the domain names: and that the Respondent is not making any legitimate non-commercial or fair use of the domain names. Although the Respondent has not formally offered to sell the domain names, the Respondent’s behaviour indicates that the Respondent’s only motive for registering the domain names was its intention to sell them to the Complainant (or a competitor of the Claimant), and to force the Complainant to buy the domain names by blocking the Complainant from registering alternative domain names.
The Complainant submits that in the US case of Panavision International, L.P.-v- Dennis Toeppen, et al., 141 F. 3d 1316 (9th cir. 1998), the Court of Appeals held that the defendant’s intention to sell a domain name to the plaintiff constituted "use" of the Plaintiff’s mark. Similarly, in Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D.Ill.1996), the Federal District Court determined that "Toeppen’s intention to arbitrate the intermatic.com domain name constitutes a commercial use ...Toeppen’s desire to sell the domain name is sufficient to meet the commercial use requirement of the Lanham Act."
In the Amendment to the Complaint, the Complainant states that since filing the Complaint the Complainant has discovered that the www site established at the "holmesplace.com" domain address is linked to a www site containing pornography. The Complainant expresses a concern about this development as it does not wish to be associated with pornography.
In its brief Response, submitted on behalf of the Respondent, Mr. John Holmes, the administrative contact of the Respondent states that he still had not received hard copies of the Complaint and is missing some of the attachments sent by e-mail. He states that from what he has read these attachments are probably of no significance as there is no connection between himself and any of the people named in the Complaint.
He asks if the Complainant can explain why it was suing Mr. Colclough who used the domain name "holmesplace.com" when the Respondent did not have a trademark. He further asks if money changed hands or if there is an undisclosed agreement between the Complainant and Mr. Colclough?
The Respondent's representative states that he has never tried to sell any domain name. He states that a search for Holmes Place on the internet pulls up over 65,000 records "mainly to do with Sherlock Holmes and the like". The Respondent's representative states that he has never heard of the Complainant's health clubs although he claims to have friends with www sites called Holmes Place.
He states that the Complainant has no presence in America. He is quite happy to put a disclaimer on his personal www site to point out that he is in no way connected with the Complainant He states that nothing illegal will ever be placed on his sites. He does not see why he should be pressured by the Complainant into giving up his domain name. He concludes that if the Complainant gets away with this it will mean that big business will be able to have their hands on all the good domain names thereby violating his rights of free speech and stifling innovation.
6. Discussion and Findings
1) Preliminary issues
Four issues arise in these Administrative Proceedings relating to the service of and filing of documents.
Firstly rule 4(b) of the Supplemental Rules provides that the Complainant shall provide a copy of the Complaint to the concerned Registrar(s) at the same time as it submits the Complaint to the Center. In these Administrative Proceedings, the Complainant has confirmed in the standard complaint cover sheet that a copy of the Complaint has been sent to the Registrars, however, both Registrars in their verification responses have stated that they could not confirm receipt of the Complaint from the Complainant.
This Administrative panel accepts the Complainant's statement that it has complied with the said rule 4(b) and notes that the Registrar's also received copies of the said Complaint together with the Amendment to the Complaint from the Center on June 8, 2000.
Secondly, the Respondent has stated on two occasions that it did not receive the hard copy of the Complaint from the Center. Furthermore it would appear that a number of the Annexes to the Complaint were not included in the electronic copy sent by e-mail to the Respondent by the Center.
Rule 10(b) provides that in all cases the Administrative Panel must ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
At paragraph 12 of the Complaint the Complainant confirms that a copy of the Complaint, together with the cover sheet as posted at http://www.wipo.int/amc/en/domains was sent to the Respondent in accordance with Paragraph 2(b) of the Rules. Additionally this Administrative Panel has considered the documentation provided by the Center and is satisfied that the Center sent the hard-copy of the Complaint to the Respondent.
The Center has confirmed to this Administrative Panel that the hard-copy of the Notification of Complaint was sent to two addresses.The Notification was first sent to John Holmes, Holmes Place, 880 NE 69th Street, Suite 11 M, Miami, Florida. The first attempt at delivery attempt failed and the documents were returned to the Center. The Center subsequently re-sent the Notification to the address given for the Respondent's the technical contact in respect of the Network Solutions Inc. registration viz. Hostmaster, WPP Inc., 4716 Pontiac Street, Suite 306, College Park, MD. That delivery was successful. This Administrative Panel is satisfied that the Respondent has been properly served and has been given a fair opportunity to present its case.
Thirdly, the original Complaint was incomplete and the Complainant submitted an amendment in a response to a Complaint Deficiency Notice from the Center. In addition to the technical statements as required by the rules, said amendment contained further submissions relating to the use of the said domain name "holmesplace.com". This Administrative Panel has decided to admit these further submissions as they were sent to the Respondent in time for the Respondent to address them in the Response and the Respondent is therefore not in any way prejudiced by these late submissions.
Fourthly, the Response was filed on June 27, 2000, which was the later of the two deadline dates set in the communications from the Center. In the circumstances, in the interest of the rules of natural justice and due process, this Administrative Panel has decided to admit the said Response in respect of all three domain names which are the subject of these Administrative Proceedings.
2) Substantive Issues
The Rules, at paragraph 15(a), require the Administrative Panel to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant bears the onus of proof. The Complainant must establish:
i) that 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) that the Respondent has no legitimate interests in respect of the domain name;
iii) that the domain name has been registered and used in bad faith.
3) Identical or Confusingly Similar
It is clear that the domain names in dispute are identical or confusingly similar to the Complainant's registered trademark "HOLMES PLACE" and the Complainant has therefore satisfied the first element of the test.
4) Rights or Legitimate Interest of the Respondent
The Complainant has established a prima facie case that the domain name "holmesplace.com" was registered by Mr. Stephen Colclough for the purposes of selling it on to the Complainant for a sum in excess of the documented costs directly related to the domain name. Furthermore the Complainant has established that a direct connection and business relationship existed between Mr. Stephen Colclough and Mr. Chris Belkowski (orse Beldowski) inasmuch as Mr. Belkowski was the administrative contact for Mr. Colclough's domain name registration. Furthermore this business relationship included the registration of numerous domain names in the name of "London Reds".
The Complainant has further established a prima facie case that there is a connection between Mr. Chris Belkowski (orse Beldowski) and an undertaking carrying on business as DLR. Said DLR has registered numerous domain names listed above, which refer to large established businesses with either United Kingdom or motor industry connections. Mr. Chris Belkowski (orse Beldowski) is the administrative contact in each case.
This Administrative Panel finds it significant that the postal address given by DLR for these registrations is in Lakeland, Florida, USA, since the postal address of the Respondent is also in Florida, USA.
The Complainant then seeks to establish a connection between said DLR and a British registered company DLR Limited having a registered office in Finchley, London, United Kingdom. Said company was previously known as Danny La Rue Limited in the period up until November 11, 1994.
In the view of this Administrative Panel there is no evidence to connect either DLR Limited or Mr. Danny La Rue with DLR or the Respondent or the activities of DLR or the Respondent.
The Complainant argues that there is a connection between Mr. Chris Belkowski (orse Beldowski) and the Respondent in this case. Specifically the Complainant states that the said Mr. Chris Belkowski (orse Beldowski) was at all material times the manager of Mr. Danny La Rue and has submitted a letter from Mr. Stephen Colclough to the Company Secretary of the Complainant dated May 19, 2000, relating to the registration of the domain name "holmesplace.com". In said letter Mr. Colclough states that he believes that Mr. Belkowski is known as Beldowski in the United States. Mr. Colclough continues:" The address and telephone number for the new registrant, I can confirm belong to Danny La Rue, for whom Mr. Beldowski acts as manager. I believe therefore that it is Mr. Beldowski that has registered the domain name. He did so without my permission."
In the said letter to the Respondent, Mr. Colclough goes on to state that he believes that Mr. Beldowski has registered the domain name in bad faith and continues … "[a]t the time you raised your claim against me in respect of my registration of "www.holmesplace.com", Mr. Beldowski was aware of your claim and the basis for it."
The Response was submitted by e-mail. It was in brief form and no real attempt was made to address the Complainant's submissions. The essence of the Response was a denial by the Respondent's representative that he had ever tried to sell any domain name and a statement denying any connection between the Respondent's representative and the people named in the Complaint. The Respondent made no attempt whatsoever to provide any details about the legal status or the activities of the Respondent. No attempt was made by the Respondent to demonstrate that it had any rights or legitimate interest in the said domain name or that the domain name had been registered and was being used in good faith.
The Complainant has produced sufficient evidence to raise an inference that the Respondent has no rights or legitimate interest in the domain names. This Administrative Panel must conclude that, on the balance of the evidence before it, that the Respondent has no rights or legitimate interest in the said domain name.
5) Bad Faith
Similarly on the balance of the evidence before it, this Administrative Panel must accept the Complainants evidence that there is a connection between Mr. Colclough, Mr. Belkowski, DLR and the Respondent and must conclude that the Respondent was aware that Mr. Colclough had reached and agreement with the Complainant to assign his rights in the "holmesplace.com" domain name to the Complainant. Furthermore it would appear that the Respondent took advantage of a brief window of opportunity to register the said domain name "holmesplace.com" while the Complainant was endeavouring to give effect to the agreement it had reached with Mr. Colclough.
It would appear that the Respondent similarly registered the domain names "holmes-place.com" on April 18, 2000, with Register.com and "holmesplace.org" on May 2, 2000, with Network Solutions Inc. knowing that the Complainant and Mr. Colclough had reached an amicable settlement to their dispute relating to the domain name "holmesplace.com" and that the Complainant was in the process of having it transferred into the Complainant's name.
It further appears to this Adminitrative Panel that the Complainant has established a prima facie case which has not been rebutted by the Respondent that the Respondent registered the said domain name "holmesplace.com" and said domain names "holmes-place.com" and "holmesplace.org" in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names. Furthermore by registering the three similar domain names this Administrative Panel on balance concludes that the Respondent has engaged in a pattern of such conduct.
It would appear that the "holmesplace.com" domain name is being used as an address for a www site which links to another site which contains pornographic material. It would appear that there is no www site accessible via the "holmes-place.com" and "holmesplace.org" domain names. This leads this Administrative Panel to conclude that the said domain names are being used in bad faith by the Respondent.
This Administrative Panel therefore decides that on the balance of the evidence submitted, the Complainant has established that the said domain names "holmesplace.com", "holmes-place.com" and "holmesplace.org" were registered and are being used in bad faith.
With reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Administrative Panel decides that the Respondent has registered the domain names "holmesplace.com", "holmes-place.com" and "holmesplace.org" identical or confusingly similar to the Complainant's trademark, that the Respondent has no rights or legitimate interest in respect of said domain names and that the Respondent has registered and is using said domain names in bad faith. Accordingly, this Administrative Panel decides that said domain names "holmesplace.com", "holmes-place.com" and "holmesplace.org" should be transferred to the Complainant.
Dated: August 1, 2000