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ADMINISTRATIVE PANEL DECISION
The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones
Case No. D2000-0731
1. The Parties
Complainants: The Chase Manhattan Corporation, 270 Park Avenue, New York, New York 10017, USA and Robert Fleming Holdings Limited, 25, Copthall Avenue, London EC2R 7DR, UK
Respondent: Paul Jones, No Name Trading, P. O. Box 81818, Sydney 4126, Australia.
2. The Domain Name and Registrar
Domain Name: "chase-flemings.com".
Registrar: Register.Com, 575 8th Avenue. 11th Floor, New York, NY 10018.
3. Procedural History
The Complaint was received by WIPO by email on July 4, 2000, and in hard copy on July 31, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Respondent was informed that the last day for filing his Response was September 3, 2000, but filed no Response. WIPO issued to the Respondent a Notification of Respondent Default on September 15, 2000 informing the Respondent of the consequences of his default.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel.
4. Factual Background
The Complainants are well-known financial institutions widely known in the business community by reference to their abbreviated names, "Chase" and "Flemings" respectively.
Chase is the proprietor of, inter alia, US Trade Mark Registration number 1,521,765 (issued January 24, 1989) for the word CHASE. Flemings is the proprietor of, inter alia, UK Trade Mark Registration number, 2,000,321 (dated October 31, 1994) for the word FLEMINGS.
On March 23, 2000, Chase announced in a press release that it was in discussions about a possible combination of its business with Flemings. A similar statement was issued on the same day by Flemings.
The WHOIS database printout provided to WIPO by the Registrar indicates that the record showing the Respondent as the registrant of "chase-flemings.com" ("the Domain Name") was created on March 23, 2000. At that stage the name to be given to the merged company had not been announced.
On April 17, 2000, lawyers for the Complainants wrote (by courier and by email) to the Respondent drawing the Respondent’s attention to the rights of the Complainants and seeking voluntary transfer of the Domain Name to Chase.
On May 4, 2000, no response having been received to the email of April 17, 2000, lawyers for the Complainant sent to the Respondent a chaser letter/email.
On June 1, 2000, a Mr. Jon Fleming emailed the Complainants’ lawyers saying that the April 17 message to him was "totally garbled and unintelligible". He went on, nonetheless, to ask where they wanted the Domain Name to point to and said that there would be a small facilitation fee. He ended his email "… I need you to realise that I fully understand my legal rights in this matter and believe that I have a legitimate claim to the name. I will press for my rights to be respected if this matter is not resolved commercially".
On June 5, 2000, the Complainants’ lawyers wrote a letter/email to the Respondent which is not exhibited. It was regarded by Jon Fleming as heavy handed. In his reply email of June 5, 2000, he relished the prospect of an ICANN complaint and the attendant publicity. He went on to say that the small facilitation fee sought of the Complainants "is designed purely to defray our considerable expenses in arranging the transfer". Significantly, the email included the following passage:
"We have stared down bigger fish than your client in the past. Last year a large German bank that was as non-savvy as your client in regard to domain names facilitated the transfer of a domain name in a far more collegial manner…."
Further correspondence ensued and on June 9, 2000, Mr. Fleming emailed details of the expenses the Respondent would need to incur in the transfer of the Domain Name. The email gave the headings (e.g. escrow expenses for facilitation of transfer of ownership, legal expenses, communications costs, account keeping fees, expenses involved in drafting and approving correspondence and sundries) and a total figure, namely Ј5,090.
There was further correspondence and telephone communication between Mr. Fleming (and people variously described as his partners, his associates, his colleagues) on the one hand and the Complainants’ lawyers on the other leading up to an email from Mr. Fleming in which he expresses irritation at the Complainants’ reluctance to meet his terms. He says "As you would be aware, under Australian law I am perfectly entitled to use the domain name and to display content of an explicit nature on the site. And that is more than likely to happen if you do not stop mucking my colleagues and I around with embarrassing counter-offers after you had agreed last week on a facilitation fee in the order of Ј5,000."
On June 21, 2000, the Complainants’ lawyers responded denying any agreement regarding the facilitation fee, explaining why they had made an offer of Ј1000 and asking for details of the expenses incurred if Mr. Fleming wanted to try and convince them that the figure ought to be higher.
On June 23, 2000, Mr. Fleming brought the correspondence to a close by refusing to amplify on how the expenses amounted to more than Ј5,000 and saying that if his terms were not met by close of business that day, he and his associates would begin using the site the following week.
The Domain Name does not resolve to any website or online presence.
5. Parties’ Contentions
The Complainants contend that the requirements of Paragraph 4(a) of the Policy are made out and that in consequence the Complaint should succeed.
The Complainants point out that the Domain Name comprises a combination of the names of the Complainants and is therefore at the very least confusingly similar to each of those names. The Complainants claim that the Respondent was not authorised to use or register the Domain Name
The Complainants brand the Respondent’s behaviour, as evidenced in the email traffic, as amounting to extortive tactics. They observe that the Respondent has offered no evidence of any legitimate interest in the Domain Name and claim that the Respondent clearly does not have any such interest. The Complainants refer to the elements of Paragraph 4(c) of the Policy which might show that the Respondent has rights or legitimate interests in the Domain Name and assert that none of them are applicable.
As to bad faith the Complainants claim that it is plain that the Respondent’s object from the outset was to force the Complainants to purchase the Domain Name at a price wholly disproportionate to the Respondent’s costs incurred in registering, maintaining and transferring the Domain Name and that the email exchanges bear this out.
The Complainants rely upon Paragraph 4(b)(i) of the Policy and assert that the circumstances of the case, evident from the email exchanges, show clearly that registration and use of the Domain Name has been in bad faith.
In the pre-Complaint correspondence the Respondent has made various claims to it having a bona fide right and/or legitimate interest in the Domain Name, but has produced no evidence in support of the claimed right/legitimate interest and has lodged no response of any kind to the Complaint despite having been alerted to the opportunity to do so.
6. Discussion and Findings
While the Registrar has identified Paul Jones of No Name Trading as the Respondent, there has been no communication from Mr. Jones. Nonetheless, all formal communications have been sent to the registered address of the Respondent and the Panel treats No Name Trading at the registered contact address as being the Respondent. For the avoidance of doubt and for the purposes of this decision the Panel treats all the communications referred to above between the Complainants’ lawyers and Mr. Fleming as being communications with the Respondent.
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainants must prove that:-
(i) the Domain Names are identical or confusingly similar to the service marks in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names or any of them; and
(iii) the Domain Names have been registered and are being used in bad faith.
Identical or Confusing Similarity
The Complainants’ trade mark registrations are unassailable. Manifestly, the Domain Name is similar to each of the names of the Complainants, in which the Complainants have rights. The juxtaposition of those names in the Domain Name is a clear reference to the Complainants. The risk of confusion is plain.
Accordingly the Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainants have rights and the Complaint succeeds under this heading.
Rights or Legitimate Interests of the Respondent
While it is clear from the terms of paragraph 4(a) of the Policy that the overall burden of proof is on the Complainant, the introductory paragraph to paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name in responding to a Complaint. The paragraph goes on to set out a non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the Panel, will establish the relevant rights and/or legitimate interests of the Respondent.
In relation to paragraph 4(a)(ii) of the Policy (dealing with the rights and legitimate interests of the Respondent), the Panel reads these two provisions of the Policy (i.e. sub paragraphs 4(a) and 4(c)) as meaning that while the overall burden of proof lies with the Complainant, once the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden is on the Respondent to establish the contrary.
The Respondent has not responded to the Complainants’ allegations as set out in the Complaint.
The Panel accepts that in the financial services arena the CHASE and FLEMINGS trade marks are very well known and that in using them in juxtaposition the Respondent knew perfectly well that he was using names belonging to the Complainants. Mr. Fleming’s email of June 5, 2000, shows that he has had previous experience in dealing with domain names of interest to large financial institutions.
The papers disclose no hint of any reason why the Respondent might legitimately lay claim to rights in or relating to the Domain Name. The prima facie case is made out and, despite having been given an opportunity to respond, the Respondent has not done so.
In these circumstances, the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Domain Name and accordingly the Complaint succeeds under this head also.
Under this head the Complainants have to prove both that the Domain Name has been registered in bad faith and that it is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
In support of their case the Complainants assert sub paragraph (i) of paragraph 4(b) which reads as follows:-
"circumstances indicating that you [i.e. the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"
The potential difficulty facing the Complainants is that there is no direct evidence that the Respondent wished at the outset to trade in the Domain Name, whether for a reasonable fee or for an excessive fee. For the Panel to have to come to that conclusion it has to infer the intention from the circumstances.
Accordingly, the Panel has to consider whether it is reasonable for it to infer from all the surrounding circumstances that the Respondent registered the Domain Name primarily for any of the purposes set out in paragraph 4(b)(i) of the Policy or whether there are other reasons for finding bad faith.
Having concluded under the previous heading that the Respondent knew when it registered the Domain Name that it was a combination of well known names owned by third parties, being names in which the Respondent has no right or legitimate interest, it is not difficult for the Panel to find and the Panel does in fact find that the Respondent registered the Domain Name in bad faith.
That leaves the question of ‘use in bad faith’ in circumstances when in ordinary parlance the Respondent is making no use of the Domain Name of any kind.
The fact that the Domain Name was registered on the very day that news was first published of the merger talks between the two Complainants leads the Panel irresistibly to the conclusion that it was an opportunistic act by an alert entrepreneur with a view to making a profit. When ‘negotiations’ commenced for the acquisition of the Domain Name by the Complainants the sum sought by the Respondent was far higher than what one might regard as the normal out-of-pocket expenses for transfer of a domain name. Moreover, in the course of the ‘negotiations’ the Respondent unreasonably refused to particularise properly the expenses being claimed and wholly unjustifiable threats were made as to how the Domain Name was likely to be used. This was not behaviour consistent with a good faith use of the Domain Name. Moreover, in the Panel’s view the threat to use the Domain Name in the manner suggested itself constitutes bad faith use.
Accordingly, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present and the Panel finds that the Complaint succeeds under this head also.
For the reasons set out above, the Panel decides that the Domain Name "chase-flemings.com" is confusingly similar to trade marks or service marks in which the Complainants have rights, the Respondent has no rights or legitimate interests in respect of the Domain Name and the Domain Name has been registered and is being used in bad faith.
The Complainants have agreed that in the event of this Complaint succeeding, the Domain Name should in the first instance be transferred to The Chase Manhattan Corporation, The Chase Manhattan Corporation having agreed to cancel the Domain Name in the event that the purchase of Flemings by Chase does not proceed. In those circumstances the Panel directs that the Domain Name should be transferred to the first Complainant, The Chase Manhattan Corporation.
Dated: October 23, 2000