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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FOCUS DO IT ALL GROUP and others v. ATHANASIOS SERMBIZIS
Case No. D2000-0923
1. The Parties
Complainants: Focus Do It All Group Limited; Focus Do It All Limited; and Do It All Limited, all of Gawsworth House, Westmere Drive, Crewe, Cheshire, CW1 6XB, UK.
Respondent: Athanasios Sermbezis of 86 Efroniou Street, Kaisariani, Athens, Greece and of Greenhill Court, Argos Hill, Rotherfield, East Sussex, TN6 3QH, UK.
2. The Domain Name and Registrar
focus-do-it-all.com, registered by Network Solutions, Inc.of Herndon VA 20170, USA on February 18, 2000, to the Respondent.
3. Procedural History
(1) The Complaint in Case D2000-0923 was filed by email on August 2, 2000.
(2) The WIPO Arbitration and Mediation Center has found that:
- the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
The Panel accepts these findings and itself finds that:
- the Complaint was properly notified in accordance with the Rules, Paragraph 2(a) in that the following steps were taken:
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
(3) The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) In the only further submission in the Case, the Respondent drew attention to three Decisions of Panels in other Domain Names Disputes before the WIPO Arbitration and Mediation Center.
(5) The date scheduled for issuance of a decision is: October 11, 2000.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
(1) The Complainants are all companies registered in England and Wales, the Second and Third Complainants being wholly owned subsidiaries of the First, Focus Do It All Group Ltd. As outlined in the complaint, the present group is an amalgam of two businesses both in the field of do-it-yourself ("DIY") house and garden improvements. In the period up to December 1998, one of these had for some 12 years traded under the name "Focus" and the other had for some 18 years traded under the name "Do It All". The amalgamation was brought about on August 19, 1998, when the First Complainant, already the owner of the Second Complainant, purchased all the shares in the Third Complainant. The businesses were merged commercially from December 1998, onwards by the adoption of the combined name and mark, "Focus Do It All".
(2) The two prior businesses held various British registered trade marks for "Focus" and for "Do It All" respectively, covering a considerable range of goods (see the Complaint, Annex 4). These are now held for the combined Group. However, while the amalgamated mark, "Focus Do it All", has been substantially used by the Group from December 1998, the First Complainant's application to register that mark (in the Community trademark Register) was made only on March 16, 2000.
(3) The turnover on the Complainants' business under the mark, "Focus Do It All", in the period December 1998-October 31 1999, was Ј544,041,967 from 210 stores throughout the United Kingdom (Complaint, Paragraph 7(b)). Figures for turnover from the two businesses which used "Focus" and "Do It All" separately are also given in the Complaint, Paragraph 7(a).
(4) According to the Response, Paragraph 28, the Complainant is the owner of an active website at focusdoitall.co.uk and has also registered other domain names embodying its current mark, apparently by way of precaution.
(5) On February 18, 2000, the Respondent registered the domain names, focus-do-it-all.com and help4diy.com, the former being linked at the outset to the latter. At the same time the Respondent also registered diy-homebase.com and linked it also to help4diy.com. The listing of DIY outlets on help4diy.com (as shown in the Complaint, Annex 6) substantiates the fact that "Homebase" is the name of another well-known British firm in the house and garden improvements field, since various outlets of that firm are there listed.
5. Parties’ Contentions
The Complainants assert:
- that the Respondent’s domain name at issue is identical with the first Complainant’s registered marks and the marks used by them in their business, as indicated in Paragraph 3(2) above;
- that the Respondent's course of conduct shows that he has no rights or legitimate interests in respect of the domain name and that it has been registered and is being used in bad faith. This is demonstrated in particular by:
(i) the Respondent's use of the domain name, first as a link to his help4diy.com site, and then, in response to objection from the Complainants, in order to establish a website nominally providing information for tourists of Athens;
(ii) the Respondent's refusal to comply with the Complainants' request to transfer the domain name in issue to them at cost;
(iii) the Respondent's registration of the diy-hombase.com domain, as demonstrating a pattern of unjustifiable acquisitions;
(iv) the Respondent's admission that he had copied part of his website at focus-do-it-all.com from the Complainant's site, focusdoitall.com, because this was so easy to do.
Accordingly the Complainants seek transfer of the domain name in issue to the first of them.
The Respondent does not contest the evidence of registration or use of marks submitted by the Complainants. He accepts that it was necessary that he should sever the link between focus-do-it-all.com and help4diy.com but denies any obligation to transfer the first of these to the Complainants. In particular he asserts as evidence that, in registering and then using the domain name, he was pursuing legitimate interests and acting in good faith:
(i) that it was his intention from the outset to use focus-do-it-all.com to provide information for tourists on Athens and to use diy-homebase.com to help people to find homes in London, but that he needed time to develop the sites in these ways;
(ii) that in responding to the Complainant's demand to stop using focus-do-it-all.com in order to link to help4diy.com, he acted as quickly as he reasonably could, and that a continuing indication of that link, present on April 18, 2000, was an error soon corrected thereafter;
(iii) that neither at the time of complaint or thereafter did he approach or intend to approach the Complainants in order to gain financial reward or to attempt to sell the Domain name in issue to them;
(iv) that information about DIY stores provided while the link was in place was free to those who visited the sites, and that after the link was removed, the indication on help4diy.com that it did not list the Complainants' stores was a proper statement to make and not one that tarnished their business;
(v) that use of the domain name at issue for Athens tourist information was a legitimate way of abbreviating the longer title of the service; in full this is "FOCUS on History DO IT ALL in one Day";
(vi) that this information service, which is not in the same field as the Complainants' business, is a "non-profit making, non commercial, multipage website with many links about Greece for tourists" and that he is making a "legitimate, non commercial and fair use of the Domain Name, without any financial gain";
(vii) that the Complainants' allegation about copying from their website was false.
This last assertion raises a direct conflict of evidence, which the Panelist does not find it necessary to resolve.
6. Discussion and Findings
According to Paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
As an aid to assessing these factors, the Respondent drew the Panel's attention to the Decisions in the following Domain Name Dispute cases: D2000-0398 (June 22, 2000), D2000-0670 (August 4, 2000), and D2000-0465 (August 24, 2000). While in these cases, the Panel concluded in the Respondent's favor and refused to order transfer of the Domain Name at issue to the Complainant, each Decision turns very largely on an appreciation of the particular facts and assertions before the Panel. The Decisions testify to the need for the Complainant to make out a clear case within the Policy, particularly given the nature of this form of dispute settlement. Beyond this the Panelist finds them of no direct assistance in deciding the present Dispute.
Turning therefore to the three elements and their application to the present circumstances:
(A) Identical or confusing similarity
In asserting that they have strong rights in the trade mark, "Focus Do It All", the Complainants rely both upon existing British registrations for "Focus" and for "Do It All" originally registered for the two DIY businesses which were amalgamated in late 1998, and also upon the widespread use of "Focus Do It All" thereafter. While there is room for dispute about the extent to which the Domain Name in issue would lead to confusion with the earlier registrations, the very substantial trading by the Complainants under "Focus Do It All" must make it likely beyond real doubt that consumers who know that mark will think that "focus-do-it-all.com" is their address. Mere differentiation by the insertion of dashes ("-") still leaves the two virtually identical. While "Focus" and "Do It All" have only a certain measure of inherent distinctiveness, the rather cumbersome combination of the two together noticeably increases that characteristic, since together they do not make a phrase in English which has any other meaning. "Focus Do it All" naturally strikes one as a trademark and one moreover that a consumer is likely to remember. It clearly has a reputation, which would be protected in common law systems against passing off and elsewhere against unfair competition.
(B) Rights or Legitimate Interests of the Respondents
The Respondent has used his Domain Name for two successive purposes.
The first use to which the Respondent chose to put his Domain Name was to link the visitor to a directory of regional competitors at the site, "help4diy.com". A searcher looking for information about the Complainants' business would be led, by the confusing use of their name, to a site where the same or similar services provided by others were listed, a procedure which will in all likelihood deflect some potential customers to competitors. The fact that the Respondent put the Complainants' name to this use establishes that he well knew what their business was and where some of their outlets were situate. The Respondent offers no explanation of why he set up this trade directory. A common motivation, however, would be, in due course, to offer it as a form of advertising to those who paid for entry. In the absence of any suggestion otherwise, it is at the very least probable that the Respondent had such an objective at least potentially in mind. It is not however necessary to reach any final conclusion on this issue.
Once the Complainants raised objection to this first practice, the Respondent took steps to sever the link between his two sites. That in itself is an admission that what he has so far done was commercially quite unacceptable – something in which he could claim no legitimate interest. The Rules of Procedure, Paragraph 4(a)(ii)(iii) state that a legitimate interest may exist where the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. Each element of this requirement has to be made out. Even if what the Respondent was at this stage doing was for some unexplained reason non-commercial, it could in no way be characterized as fair, since consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm.
The second use, rapidly installed, placed the Athens travel information on the site. The respondent claims that he had from the outset intended, when he had time, to use the site for this purpose. If he had done this alone, no matter after what delay, for the genuine purpose, which he claims, then he would have had a legitimate interest. But his course of conduct has been less straightforward and it therefore has to be asked whether he has exhibited such bad faith as to negate that conclusion.
(C) Bad Faith
Under the Dispute Settlement Policy, Paragraph 4(a)(iii), both the registration and use of the domain name has to be in bad faith and bad faith has to exist in one of the four senses there set out.
As to the first sense, (registering primarily to transfer to the Complainant at more than cost) no sufficiently clear case of bad faith is made out. The Respondent has only refused to sell at cost and that of itself is not enough. And as to the third sense (registering primarily to disrupt a competitor) it is not established that the Respondent is a competitor of the Complainant.
As to the second sense, (registering to prevent the mark owner from reflecting the mark in a corresponding domain name as part of a pattern of such conduct), the Respondent seeks to avoid this charge by demonstrating various domain name registrations which, thanks to differences of detail, remained open to the mark owner to obtain. This definition of bad faith cannot be understood in so limited a sense. There is almost always some other variant of a mark, which is still available to be turned into a proximate Domain Name. The mark owner is entitled to "reflect" the mark in all domain names, which are confusingly similar to the mark, once he has demonstrated the scope of his right to the mark. Any registration which is undertaken in order to prevent him obtaining any one of those variants is made in bad faith, if there is also evidence of a pattern of conduct. The latter is sufficiently established by one other instance, at least where it is coupled with consequential conduct of the kind in which the Respondent engaged. He also registered "diy-homebase.com" and tit must be inferred that he accordingly used the name of an equally well known DIY chain (see above) to attract consumers to his trade directory site. The Complainants only visited this second site when it was being changed on April 18, 2000; but it still then contained a reference to a |"DIY-INFORMATION-SITE…" This second form of bad faith is accordingly made out.
Equally as to the fourth sense (using the domain name intentionally to attract users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement…), a finding of bad faith must be made. While the Respondent's first use was clearly without legitimate interest, it has not been shown unequivocally to have been arranged for commercial gain. That element, however, is present in the second use. The respondent claims that the travel information was non profit making and non-commercial. But that is belied by the second page of the revised site, which quite clearly offers the services of George Ismiris as a guide to Athens at a price: "Contact George for prices". One of the unidentified endorsements says "I hired him for many transfers.." It may possibly be that there is no agency or other business connection between the Respondent and Mr. Ismiris, but that is not relevant. It is enough that commercial gain is being sought for someone.
Will users then be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement to the Complainants by this use of the Respondent's domain name? It is beyond question that they may be initially attracted to the site by thinking that it belongs to the Complainants. When they get there they find an Athens guide service being advertised under the long title set out in Para 4 B(v) above, in which "FOCUS..DO IT ALL ." is highlighted and "on history..in a day" is slipped in between. To suppose that by this sly addition the confusion previously raised will simply and naturally be dispelled beggars belief. In my view this tricksy formula must have been devised in order to maintain in the minds of as many viewers as possible the assumption that the Complainants, although not themselves known to be in the travel business, were endorsing, sponsoring or affiliating themselves with the venture. This demonstration of bad faith at the same time serves to show that the Respondent has no legitimate interest in his second deployment of the domain name.
I accordingly conclude that the domain name has been registered and is being used in bad faith, consisting of:
(i) registering the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, as part of a pattern of such conduct; and
(ii) using or preparing to use the domain name so as intentionally to attempt to attract, for commercial gain, Internet users to the web site, by creating a likelihood of confusion with the Complainants’ marks and business name as to the source, sponsorship, affiliation or endorsement of that web site.
The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, Paragraph 4:
- that the domain name in dispute is identical with the registered trade marks and the service mark of the Complainants;
- that the Respondents have no rights or legitimate interests in respect of the domain name; and
- that it has been registered and is being used in bad faith.
The Panel accordingly requires that the domain name focus-do-it-all.com be transferred forthwith to the first Complainant, Focus Do it All Group Limited.
William R. Cornish
Dated: October 6, 2000