Morris & Spottiswood Limited v. Malcolm Montgomery
Claim Number: FA0811001235256
Complainant is Morris & Spottiswood Limited (“Complainant”), represented by Valerie
Surgenor, of MacRoberts,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <morrisandspottiswood.com>, registered with Gandi Sas.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2008.
On November 24, 2008, Gandi Sas confirmed by e-mail to the National Arbitration Forum that the <morrisandspottiswood.com> domain name is registered with Gandi Sas and that Respondent is the current registrant of the name. Gandi Sas has verified that Respondent is bound by the Gandi Sas registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 16, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@morrisandspottiswood.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <morrisandspottiswood.com> domain name is confusingly similar to Complainant’s MORRIS & SPOTTISWOOD FITOUT MAINTENANCE SOCIAL HOUSING mark.
2. Respondent does not have any rights or legitimate interests in the <morrisandspottiswood.com> domain name.
3. Respondent registered and used the <morrisandspottiswood.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Morris & Spottiswood Limited, is a property
support business specializing in interior maintenance and social housing for
clients in the retail, finance, commercial, and public sectors. Complainant has operated in the
Respondent registered the disputed <morrisandspottiswood.com> domain name on October 27, 2008. The disputed domain name resolves to a website that is critical of Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration of the MORRIS & SPOTTISWOOD FITOUT MAINTENANCE SOCIAL HOUSING mark with the UKIPO constitutes sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office).
Respondent’s <morrisandspottiswood.com> domain name includes the “morris & spottiswood” component of Complainant’s MORRIS & SPOTTISWOOD FITOUT MAINTENANCE SOCIAL HOUSING mark while substituting the ampersand for “and,” removing the words “fitout maintenance social housing,” and adding the generic top-level domain “.com.” The Panel finds that the addition of a gTLD and substitution of an ampersand is irrelevant under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”). Moreover, the removal of some of the words from Complainant’s mark does not create a sufficient distinction as the most dominant elements of the disputed domain name remain. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts that Respondent is not commonly known by
the disputed domain name. The Panel
notes that the WHOIS information lists Respondent as “Malcolm Montgomery.” Therefore,
without any evidence to the contrary, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there is no evidence in the record indicating that
the respondent is commonly known by the disputed domain name); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s
disputed domain name resolves to a website that is critical of
Complainant. The Panel finds that
Respondent does not have the right to identify itself as Complainant or
incorporate Complainant’s trademark in a disputed domain name. Therefore, the Panel finds that Respondent
has not created a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Monty & Pat Roberts, Inc. v. Keith,
D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s
right to establish and maintain a website critical of Complainant . . .
However, the panel does not consider that this gives Respondent the right to
identify itself as Complainant.”); see also Baker & Daniels
v. DefaultData.com, FA 104579 (Nat. Arb. Forum Mar. 27, 2002) (finding that
because the respondent’s <bakeranddaniels.com> domain name merely
incorporates the complainant’s trademark, without more, it is not protected by
the First Amendment); see also Name.Space Inc. v. Network Solutions, Inc.,
202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the
respondent’s site may be entitled to First Amendment protection, the
respondent’s use of the complainant’s trademark in the domain name of its site
is not protected.).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel notes that it need not limit itself to an analysis of bad faith under the Policy ¶ 4(b) factors; rather it may consider the totality of the circumstances under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
In this case, Respondent’s disputed domain name resolves to
a website that criticizes Complainant’s operations. Though there is no alleged commercial gain or
competition with Complainant, the Panel chooses to defer to the reasoning of
the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), which stated that although the respondent’s
complaint website did not compete with the complainant or earn commercial gain,
the respondent’s appropriation of the complainant’s trademark with a view to
cause “damage and disruption to [Complainant] cannot be right, still less where
the use of the Domain Name will trick internet users intending to visit the
trademark owner’s site into visiting the registrant’s site” in holding that the
disputed domain name was registered in bad faith. Moreover, the panel in Diners
Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) found that “[the respondent’s]
registration and use of a domain name nearly identical to [the complainant’s]
mark to criticize [the complainant’s] business practices is evidence of
registration and use of the <diners-club.net> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii).” Thus, the
Panel finds that Respondent’s criticism of Complainant’s business through the
disputed domain name was achieved only through bad faith registration and use,
as Respondent misappropriated Complainant’s trademark through the confusingly
similar disputed domain name. Therefore, the Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <morrisandspottiswood.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 5, 2009
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