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and Mediation Center
Blemain Group v. Mr. Stuart Frost
Case No. D2006-0871
1. The Parties
The Complainant is Blemain Group, of Bracken House, Manchester, United Kingdom of Great Britain and Northern Ireland (the “Complainant”).
The Respondent is Mr. Stuart Frost, of Grasscroft, Oldham, United Kingdom of
Great Britain and Northern Ireland (the “Respondent”).
2. The Domain Names and Registrars
The disputed domain name, <blemainfinance.com>, is registered with Key-Systems
GmbH dba domaindiscount24.com and the disputed domain name, <blemaingroup.com>
is registered with Go Daddy Software. Together the disputed domain names are
hereinafter referred to as “the Domain Names” and the two registrars
are hereinafter referred to as “the Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2006. On July 10, 2006, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names at issue. The Registrars each transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details for the administrative, billing, and technical contacts.
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 July 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2006.
The Center appointed Tony Willoughby as the sole panelist in this matter on
August 17, 2006. 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,
4. Factual Background
The Complainant is a group of companies engaged in the provision of financial services in the United Kingdom.
The Complainant trades under various business names including “Blemain Group” and “Blemain Finance”.
The Complainant is the proprietor of United Kingdom trade mark registrations numbers 2403973 and 2404971 dated October 4, 2005, for device marks incorporating the names “Blemain Group” and “Blemain Finance” respectively. The marks are registered in Class 36 for “financial services provided by telephone and Internet to intermediaries”.
The Complainant operates websites connected to its domain names, <blemaingroup.co.uk> and <blemainfinance.co.uk>.
The Respondent was employed by the Complainant from July 10, 2002, to June 23, 2005, as a developer in the Complainant’s IT department. In the course of his employment with the Complainant and on the Complainant’s behalf the Respondent registered the Domain Names, but in his own name and, apparently, at his own expense. He registered <blemainfinance.com> on July 29, 2003, and <blemaingroup.com> on February 29, 2004.
At all material times, anyone visiting the sites connected to the Domain Names find themselves redirected to the Complainant’s websites at “www.blemaingroup.co.uk” and “www.blemainfinance.co.uk”.
On May 12, 2006, the Complainant emailed the Respondent asking the Respondent to call the Complainant to discuss the re-hosting of the Domain Names. There being no response to that email, the Complainant wrote a letter to the Respondent on May 19, 2006, amplifying on the earlier email and again asking the Respondent to make contact. In that letter the Complainant acknowledged that the Respondent registered the Domain Names on behalf of the Complainant. Again, there was no reply.
According to the courier records supplied by the Center, the Respondent received
the hardcopy of the Complaint on July 21, 2006 and on signing for it is reported
to have said “What’s this?”. The Respondent has not responded
to the Complaint.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to trade marks in which it has rights and points to its trade mark registrations.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, pointing out that the Domain Names correspond to the names and trade marks of the Complainant and that the Domain Names were registered by the Respondent for the Complainant in the course of his employment with the Complainant.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. In support the Complainant cites the fact that the Respondent registered the Domain Names in his own name rather than the Complainant’s name and used his own money rather than the Complainant’s money. The Complainant contends that when the Respondent left the Complainant’s employ he should have offered to transfer the Domain Names to the Complainant. The Complainant points too to the fact that the Respondent has not responded to the Complainant’s recent requests for the Respondent to make contact.
The Complaint concludes as follows:
“Our complaint is that as we are not the registered owner of the domains, nor are we in control of the domain hosting, redirection and tags. In the future there is nothing to stop the respondent changing the redirection to another location. This leaves us potentially at risk with these registered domains.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Domain Names correspond to the Complainant’s trading names and ‘.co.uk’ domain names, which the Panel is prepared to accept are unregistered trade marks in the United Kingdom. They also correspond to the textual elements of the Complainant’s registered service marks.
It is to be noted that the service mark registrations both post-date the dates of registration of the Domain Names, but that is of no significance under this head of the Complaint. The fact is that the Domain Names are identical or confusingly similar to service marks in which the Complainant has rights and the Panel so finds.
In any event, given the circumstances under which the Domain Names were registered, it does not lie in the mouth of the Respondent to deny the existence at that time of a reputation and goodwill belonging to the Complainant in respect of both “Blemain Group” and “Blemain Finance” such as to give rise to unregistered rights in respect of those names.
C. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, but the broad circumstances under which the Domain Names were registered are clear. The Respondent was at the time an employee of the Complainant and knew the names, Blemain Group and Blemain Finance, to be the names of his employer. The Complainant asserts and the Panel accepts that the Respondent registered the Domain Names on behalf of the Complainant.
Such being the case, the Respondent cannot be said to have any rights or legitimate interests in respect of the Domain Names absent a specific contractual arrangement covering ownership of the Domain Names. The fact that the Respondent registered the Domain Names in his own name and at his own expense does not of itself constitute sufficient evidence of any such an arrangement. Indeed, the Complainant does not appear to have been aware that the Domain Names were not in its own name until after the Respondent left its employ.
There being nothing before the Panel to suggest the existence of any special contractual arrangement, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Complainant is understandably concerned that the Domain Names, which were registered on its behalf and which have at all material times been linked to the Complainant’s websites at “www.blemaingroup.co.uk” and “www.blemainfinance.co.uk”, are outside the Complainant’s control.
However, the fact that the Domain Names are outside the Complainant’s
control is not of itself a basis for a complaint under the Policy. For the Complaint
to succeed under this head of complaint the Respondent must have registered
the Domain Names with bad faith intent. The Panel addressed this issue in Tomatis
Developpement SA v. Jan Gerritson, WIPO Case No.
D2006-0708 in the following terms:
“For the purposes of this head of complaint under the Policy, the motives of the registrant at time of registration are of crucial importance. The Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage.
Paragraph 4(b) of the Policy contains a non-exhaustive list of what shall constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The first three examples expressly refer to the registrant’s intentions at time of registration. The fourth does not, but the preponderance of panelists nonetheless construe it as calling for a bad faith intent at time of registration. To do otherwise would open up the Policy to a far wider category of cases than it was ever intended to cover.”
Accordingly, the question for the Panel is: is it more likely than not that the Respondent registered the Domain Names in his own name and using his own money with a view at some time in the future to disadvantaging the Complainant or with a view to unfairly exploiting the situation in some other way to his own advantage?
The Complainant points to the following facts, namely that (a) the Respondent registered the Domain Names in his own name and with his own money and (b) failed to offer them up to the Complainant on termination of his employment and (c) failed to respond to the Complainant’s recent approaches.
The Panel is not prepared to take any account of the Respondent’s behaviour at and following termination of his employment. The Panel has not been told why the Respondent’s employment was terminated and it may very well be that the parties parted company on hostile terms, in which case the Respondent might quite reasonably have no desire to assist the Complainant in any way.
That leaves the fact that the Respondent did not use the Complainant’s name and money when registering the Domain Names. The Panel is in two minds. On the one hand, it is quite common for employees to incur personal expenses on their employer’s behalf, but in such circumstances the normal course would be for the employee to recover the expense from his employer unless the sum involved is trivial. The employee might forget to do recover the sum, but again would only be likely to do so if the sum involved is small. On the other hand, if the Respondent had been actuated by malice one would have expected the Domain Names to have been registered simultaneously, whereas they were registered several months apart; one might also have expected the Respondent to have disturbed the linking of the Domain Names to the Complainant’s websites. That said, the Respondent might be very familiar with the ins and outs of the Policy and deliberately structured things to create an aura of innocence.
The Panel would have liked to have had more information from the Complainant on the Complainant’s domain name registration procedures and, given that the allegation here is one of dishonesty, on the character and performance of the Respondent as an employee.
One option would have been for the Panel to seek further information from the Complainant under paragraph 12 of the Rules, but this Panel only adopts this course in exceptional circumstances and no such circumstances exist here. Another course would be for the Panel to draw adverse inferences from the Respondent’s failure to respond to the Complainant’s allegations. Paragraph 14(b) of the Rules reads:
“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
While, as indicated above, the Panel can see that there may have been perfectly legitimate reasons for the Respondent not to wish to co-operate with the Complainant over transfer of the Domain Names to the Complainant, failing to respond to the Complaint where the allegations of bad faith are clearly leveled at the Respondent and where the manner and circumstances of the registration of the Domain Names are out of the ordinary is a high risk strategy. As is apparent from section 4 above, there can be no doubt that the Respondent received the Complaint.
The Panel concludes that the Respondent failed to respond to the Complaint
because he has no answer to the Complainant’s bad faith allegations and
in particular that he registered the Domain Names in his own name and with his
own money for an ulterior motive inconsistent with his duty of good faith to
his employer, the Complainant. While it is true that the actual use made of
the Domain Names by the Respondent has remained unchanged and non-abusive since
the date of termination of his employment, once the Panel finds (as he has)
that the Respondent’s intentions at time of registration were mala
fide, the unspoken threat of future misuse hanging over the head of the
Complainant itself constitutes use in bad faith within the meaning of paragraph
4(a)(iii) of the Policy.
For all the foregoing reasons, namely that the Domain Names are identical or confusingly similar to trade marks and service marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith, the Panel directs that the Domain Names, <blemaingroup.com> and <blemainfinance.com> be transferred to the Complainant.
Dated: August 29, 2006