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WIPO Domain Name Decisions D2001-0209

By Sandra Phillips,2014-03-06 13:58
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26 Mar 2001It gave the Respondent until March 23, 2001 to respond.Iain Murray Mackay, an IT consultant of 64 Westfield Road, Surbiton, Surrey,

    WIPO Arbitration and Mediation Center

    ADMINISTRATIVE PANEL DECISION

    Margaret Drabble v. Old Barn Studios Limited

    Case No. D 2001-0209

1. The Parties

    The Complainant is Margaret Drabble, c/o Denton Wilde Sapte, Five Chancery Lane, Clifford‟s Inn, London EC4A 1BU, United Kingdom.

    The Respondent is Old Barn Studios Limited, 52 Blucher Street, Suite 116, Lonsdale House, Birmingham B1 1QU, United Kingdom.

2. The Domain Name and Registrar

The Domain Name in dispute is .

The registrar is Register.com, Inc.

3. Procedural History

    The original Complaint was received by WIPO by email on February 8, 2001 and in hard

    copy form on February 12, 2001. 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 Registrar has confirmed that (“the Domain Name”) was registered through Register.com, Inc and that Old Barn Studios Limited (“the Respondent”) is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

    On February 21, 2001, WIPO notified the Respondent of the Complaint in the usual manner

    and informed the Respondent, inter alia, that the last day for sending its Response to the

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    Complainant and to WIPO was March 12, 2001. On February 27, 2001, a Response was received by WIPO by email. On March 2, 2001, the Complainant submitted a response to the Response and the Respondent submitted further information in reply by way of an email dated March 5, 2001. This was followed by a fax from the complainant exhibiting the documents referred to in her response to the Response. The Panel admits all these documents into the evidence.

    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, as a consequence of which the date scheduled for the issuance of the Panel‟s Decision was March 26, 2001.

    However, while writing this decision the Panel noticed that the electronic versions of the documents submitted in this procedure by the Respondent were labelled as having been authored by the original registrant of the Domain Name. Since one of the allegations in the Complaint is that the Respondent is simply a „front‟ for the original registrant, the Panel

    decided that the Respondent should be given an opportunity of providing an explanation. The Procedural Order is appended to this decision. It gave the Respondent until March 23, 2001 to respond. The Respondent‟s response to the Procedural Order was received by WIPO on

    March 23, 2001 and is quoted in full in paragraph 5 below.

    4. Factual Background

    The Complainant is a very well known author in the United Kingdom. This is not disputed by the Respondent.

    The Domain Name was registered through the Registrar on February 1, 2000 in the name of one Mark Hogarth.

    On March 24, 2000, lawyers representing the Complainant wrote to Mark Hogarth requesting transfer of the Domain Name.

On May 22, 2000, the decision in WIPO Case number D2000-0235 Jeanette Winterson v.

    Mark Hogarth was issued in which the Panelist in that case found that the domain names in that case , and were all registered by Mark Hogarth and used in bad faith.

    At some time between then and June 30, 2000, the Domain Name (together with a large number - believed to be in excess of 100 - of other domain names featuring the names of famous authors) was transferred to the Respondent.

    On June 30, 2000, the Complainant wrote to the Respondent seeking transfer of the Domain Name within seven days. The Respondent replied by email on August 10, 2000, stating that the Domain Name had been acquired as part of a package, that the Respondent had no intention of using it and that if they were sent the forms, the Respondent would have the Domain Name transferred without delay.

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    On August 14, 2000, the Complainant sent the forms to the Respondent for completion, but no response was received.

The Complaint was launched in February 2001.

    5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:-

    The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The name of the Complainant is MARGARET DRABBLE (“the Mark"). The Disputed

    Domain Name is identical to the Mark, save for the addition of the .com TLD suffix. The

    Complainant is a well known author. A list of her works is appended to the Complaint.

    The Complainant has, under the Mark, achieved international recognition and critical acclaim for such works. She has had many thousands of copies of her works published. She has had works published in different languages and different countries and the use of the Mark has come to be recognised by the general public as indicating an association with works written and produced exclusively by the Complainant. The Complainant therefore has common law trade mark rights in the mark MARGARET DRABBLE, such Mark being the real name of the Complainant.

    The Complainant continues to write and produce such works under and by reference to the Mark. Although the Mark is not yet registered, the Complainant has common law rights in it due to her extensive reputation and use of the Mark.

    Such common law rights have been recognised as being sufficient to establish and succeed in a Complaint under the Rules in the case of Jeanette Winterson v- Mark Hogarth [WIPO

    Arbitration Mediation Centre Case No. D2000-0235] and in the case of Julia Fiona Roberts

    v- Russell Boyd [WIPO Arbitration Mediation Center Case No. D2000-0210].

    The Respondent has no rights or legitimate interests in respect of the domain name

    The Complainant has not consented to the use of the Mark by the Respondent and the Respondent has no legitimate interest in respect of the Disputed Domain Name. In particular, the Respondent:-

    - Has not made any use of, or demonstrable preparations to use the Disputed Domain

    Name in connection with a bona fide offering of goods or services.

    - Is not (whether as an individual, business or other organisation) commonly known by

    the Disputed Domain Name; and,

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    - Is not making legitimate non-commercial or fair use of the Disputed Domain Name

    without intent for commercial gain.

The domain name has been registered and is being used in bad faith

    The Respondent has registered and is using the Disputed Domain Name in bad faith.

The Complainant relies upon paragraph 4(b) of the Policy.

The Respondent has "engaged in a pattern of conduct", "in order to prevent the owner of a

    trademark or service mark from reflecting the mark in a corresponding domain name"

    (Paragraph 4b(ii)). Annexed to the Complaint is a print out of a search conducted on July 6, 2000 which shows that the Respondent has registered, in addition to the Disputed Domain Name, 119 famous author‟s names as domain names.

    It is submitted that all these domain names, including the Disputed Domain Name, have been registered in order to prevent the Complainant and other famous authors from reflecting their marks in a corresponding domain name.

    As noted in the first section of paragraph 4(b), evidence of registration and use in bad faith is not limited to the circumstances outlined in paragraph 4(b)(i) (iv) of the Policy. It is

    submitted that there is another reason why the Complainant considers that the Disputed Domain Name was registered in bad faith.

    Previously, the Disputed Domain Name was registered under the name of Mark Hogarth who was the unsuccessful Respondent in Jeanette Winterson -v- Mark Hogarth [WIPO

    Arbitration Mediation Centre Case No. D2000-0235] (the "Jeanette Winterson decision").

    Annexed to the Complaint is a copy of a WHOIS search conducted on March 22, 2000 which lists as being owned by Mark Hogarth. A subsequent WHOIS search conducted on June 19, 2000 revealed that the name had been transferred to the Respondent, a copy of the print out of this search is also annexed.

    The Complainant, through Solicitors Denton Wilde Sapte, entered into negotiations with Mark Hogarth for the transfer of the Disputed Domain Name to the Complainant.

    Following the Jeanette Winterson decision, Mr. Hogarth transferred the Disputed Domain Name to the Respondent.

    The Complainant wrote to the Respondent on June 30, 2000 requesting that the Disputed Domain Name be transferred to the Complainant within seven days. The Respondent e-mailed the Complainant on August 10, 2000 stating that they were willing to transfer the Disputed Domain Name to the Complainant, and requesting to be sent a copy of the transfer forms.

    The Complainant wrote to the Respondent on August 14, 2000 enclosing the transfer forms. No response has been received.

    Further, the Complainant conducted a company search of the Respondent on June 20, 2000 and found that the Respondent, Old Barn Studios Limited, had no directors at that time. Its

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    sole director, MCS Directors Limited, resigned on May 26, 2000. The Complainant also conducted a company search on January 3, 2001 and found that the Respondent, Old Barn Studios Limited, now has one director, Iain Murray Mackay, an IT consultant of 64 Westfield Road, Surbiton, Surrey, KT6 4EJ, United Kingdom. The Complainant has been informed by Midland Company Services Limited (which is listed as the Company Secretary of the Respondent) that any documentation sent to the Respondent is forwarded to 12 St. Luke‟s Street, Cambridge, United Kingdom which is Mr. Hogarth‟s home address. Annexed to the Complaint is a print out of the British Telecom phone directory taken on January 2, 2001 showing Mr. Hogarth‟s address as 12 St Lukes Street Cambridge, United Kingdom.

    The Disputed Domain Name was transferred to the Respondent following the Jeanette Winterson decision in an attempt by Mr. Hogarth to prevent the Complainant from obtaining the Disputed Domain Name through the WIPO Arbitration procedure. The Complainant believes that the Respondent is holding the Disputed Domain Name as agent for Mark Hogarth or to his order. This belief is further strengthened by the fact that Mr. Hogarth has retained ownership of the .net and .org TLD suffixes of the Disputed Domain Name.

In this respect, the Complainant relies upon the Complaint filed in respect of the .net and .org

    TLD suffixes of the Disputed Domain Name which remain in the possession of Mark Hogarth. A copy of that Complaint is stated to be annexed to the Complaint, but is not in fact annexed. The annex appears to be a draft multiple complaint covering the Domain Name and three other domain names.

Mr. Hogarth has subsequently agreed to transfer the .org and .net TLD suffixes of the

    Disputed Domain Name to the Complainant, but continues to maintain that he has sold the Disputed Domain Name to the Respondent. Given the Respondent‟s failure to transfer the Disputed Domain Name to the Complainant despite agreeing to do so in the e mail of August 10, 2000, the Complainant has had no alternative but to file this Complaint.

    In a supplemental submission put in in response to the Response, the Complainant stated as follows:

    “We note that the Respondent has filed a Response in the above

    Complaint.

    We must bring to the Arbitrator's attention the fact that the final

    paragraph of that Response is factually incorrect. In particular the final

    sentence states as follows:

    "No attempt has been made by us to sell the domain name to the writer

    Margaret Drabble or another Margaret Drabble or indeed anyone else."

    In fact the Respondent has attempted to sell the domain name:

    (1) to Margaret Drabble, by its e-mail of November 21, 2000 to Mark

    Le Fanu of The Society of Authors (Margaret Drabble‟s

    representative). The e-mail offered the name in addition to four

    other names for ?1,000; and

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    (2) by offering the domain name up for auction to the highest bidder

    on the website afternic.com. (This fact only came to the Claimant's

    attention on January 22, 2001 following the commencement of

    these proceedings) [NB The Panel notes that this is not correct.

    While it is true of three other parallel cases filed by the

    Complainant‟s lawyers, it is not true of this case, which was

    launched in February.]

The Respondent's assertions are therefore manifestly incorrect.

    The fact that the Respondent has offered the domain name for sale to the Complainant is evidence enough to prove bad faith on the part of the Respondent. However, this bad faith is compounded by the Respondent‟s incorrect assertion that “no such offer was ever made.”

B. Respondent

    “The Respondent recites the terms of paragraph 4(a) of the Policy and contends as follows:-

    We maintain that Point (1) (paragraph 4(a)(i) of the Policy) does not hold in this case because the mark MARGARET DRABBLE is not a trademark (service mark). It is a mark under which the writer Margaret Drabble trades, but, as will be argued, the mark cannot stand as a trademark because it lacks the necessary level of „distinctiveness‟ as set by, e.g. in English Law, the Trade Marks Act of 1938.

The Complainant‟s case rests on the precedent set by Jeanette Winterson v Mark

    Hogarth (WIPO, case D2000-0235), in which the panel ruled that the mark JEANETTE WINTERSON was a trademark belonging to the Complainant.

The salient points raised by the panel in that case were (DecisionD2000-0235):

    (a) Jeanette Winterson is a famous author who trades under the mark JEANETTE

    WINTERSON;

(b) It is not necessary for a trademark to be registered;

(c) A trademark must possess a suitably high level of distinctiveness (Trade Marks

    Act 1938).

    The panel concluded that the mark JEANETTE WINTERSON is a trademark.

    With respect, we question that conclusion. For while (a) and (b) taken together may suggest a possible ruling that JEANETTE WINTERSON is a trademark, the fact that the mark is not distinctive (being an ordinary name, shared by other people) means the mark cannot stand as a trademark without violating the necessary feature of distinctiveness.

    Our view here is backed by the English Courts, who ruled that ELVIS PRESLEY could not stand as a trademark exactly because the mark „did not reach the level of distinctiveness set by the 1938 Act‟ (Elvis Presley Trade Marks (1999) RPC 567(C.A.).)

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    Moreover, as far as we are aware, no United States court or English court has ever ruled that a mark acknowledged as being not distinctive (like an ordinary name of a person) could stand as a trademark.

    Turning to the actual case at issue here, like ELVIS PRESLEY, the mark MARGARET DRABBLE is not a distinctive mark (being an ordinary name, shared by other people). Therefore the mark MARGARET DRABBLE could not stand as a trademark.”

    Points (2) and (3) paragraphs 4(a)(ii) & (iii) of the Policy

    “The domain name was registered in good faith. We acquired the domain name in May 2000 and our plan has always been to use the domain to sign post an English literature web site. No attempt has been made by us to sell the domain name to the writer Margaret Drabble or another Margaret Drabble or indeed anyone else.”

    In a response to the Complainant‟s final submission the Respondent states:

“We respectfully ask that if the panel allows the Denton Wild Sapte

    document of March 2, 2001 to be considered then we are allowed this response.

Referring to their points (1) and (2).

We meant nothing more than we never wanted to sell the domain name.

    It was only after a series of legal threats from Denton Wilde Sapte that we agreed to settle the matter, without legal recourse, by offering the five domain names they sought for no more than the sum we paid for them from the previous owner, together with notary costs. In doing so, we stood to make no profit whatsoever. The offer was refused. We should have made this point clear in our Response and apologize to the panel for not doing so.

    Again, this is grossly misleading. It is true that the domain name is parked at afternic (because afternic provide free parking), but it is not for sale.”

    The Respondent‟s response to the Procedural Order reads as follows:

    Old Barn Studios Ltd is not a 'front' for Mark Hogarth. Mr. Hogarth has a vested interest in the Company (as part of a settlement for the transfer of some domain names he previously owned), and we call upon him occasionally for advice. He helped draft the Response along with several other people in the Company. But he is not on the payroll, nor is he a Company Director (as can be verified at Companies House). He also has no control over ownership of the Company‟s domain names.

    With respect, though, we believe this is not the issue. The US and English law courts, and indeed trademark registries worldwide, hold that

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    a trademark must attain a necessary level of distinctiveness. In this case,

    therefore, there is no question of „bad faith‟, whoever the owner is,

    because no one has rights to the mark in question.

    In some earlier ICANN decisions, the condition of distinctiveness has

    been set aside without explanation. We respect these decisions, but

    would ask that the panel in this case clarify whether or not

    distinctiveness is necessary. Clarification would be most welcome

    because currently the law courts and trademark registries are making one

    kind of decision (non-distinctiveness precludes ELVIS PRESLEY from

    standing as trademark; a fortiori JULIA ROBERTS), while ICANN are

    making another (JULIA ROBERTS can stand as a trademark).”

    6. Discussion and Findings

    According to paragraph 4(a) of the Policy, the Complainant must prove that

    (i) The Domain Name is 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 interest in respect of the Domain Name; and

    (iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity

    To succeed under this head, the Complainant first has to prove that she has rights in a trade mark or service mark. She then has to prove that the Domain Name is identical or confusingly similar to the trade mark or service mark.

    This latter element is straightforward. The alleged trade mark or service mark is the Complainant‟s name with the addition of the generic <.com> suffix. The Panel finds that for

    the purposes of paragraph 4(a)(i) of the Policy, the Domain Name is identical to the Complainant‟s name.

    Under this head, therefore, the only remaining issue is whether Margaret Drabble, the name or mark under which the Complainant trades, constitutes “a trade mark or service mark in

    which the Complainant has rights.”

    The Complainant‟s name is not registered as a trade mark under UK trade mark legislation, so the Complainant cannot claim registered trade mark rights in her name. Instead, the Complainant claims “common law trade mark rights in the mark, MARGARET DRABBLE.” The Respondent agrees that the name of the Complainant is a mark under which the Complainant trades, but argues that it is not a trade mark or service mark of any description, because it lacks the requisite level of distinctiveness. For that the Respondent relies heavily on the Court of Appeal decision in the Elvis Presley case.

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    Given the concession by the Respondent that the Complainant‟s name is a mark under which the Complainant trades, it ought to follow that the Complainant‟s name is a trade mark. The Respondent says “no” and invites the Panel to deal expressly with the issue of distinctiveness. A further question is whether the Policy extends beyond registered trade marks to common law trade marks.

    First, it is necessary to understand what is a „common law trade mark‟ in the UK. This involves understanding what is meant by “passing off,” because the easiest way of defining a common law trade mark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to passing off. Passing off is a tort based upon the proposition that it is unlawful to represent, contrary to fact, that one‟s goods or services are the goods or services of another. Commonly, such misrepresentations are made by using a name or mark, which identifies the claimant or is otherwise a symbol of his goodwill.

The clearest example of a common law trade mark is a person‟s name which, as the

    Respondent has pointed out, may sometimes be difficult to register as a trade mark. So, if the Panel writes a novel and falsely represents that the author is MARGARET DRABBLE, the Complainant would sue in passing off and would undoubtedly succeed. In that example, “MARGARET DRABBLE” is the common law trade mark.

    The Panel notes that some panels have discussed the issue of secondary meaning in relation to celebrities‟ names. Case No. D2000-1532 Bruce Springsteen v. Jeff Burgar and Bruce

    Springsteen Club is a case in point. Traditionally, in the context of passing off, one only needs to consider the question of secondary meaning where the primary meaning is descriptive and does not indicate the claimant. The claimant has to prove that the descriptive primary meaning has been displaced by a secondary meaning. Where celebrities are concerned the concept seems slightly out of place in that, by definition, celebrities have famous names which serve to identify them to the world at large. The issue is only likely to be of any significance where, unlike this case, the Complainant is seeking to show rights going beyond the activity for which he or she is well-known (qv Elvis Presley infra).

The matter does not end there, but it is convenient at this stage to deal with the Respondent‟s

    claim that the Complainant‟s name is not distinctive. As is apparent from the example given above, the fact that a name may be difficult to register as a trade mark does not prevent it being a common law trade mark. Indeed, the previous edition of Kerly‟s Law of Trade Marks and Trade Names goes further. Paragraph 16-14 on page 356 reads “It is equally no

    bar to an action for passing off that the false representation relied upon is imitation of a trade mark that is incapable of registration.” The footnote to that sentence reads “CAMEL HAIR BELTING (Reddaway v. Banham) was such a mark; it was hopelessly descriptive.”

    The Elvis Presley case, which is relied upon by the Respondent, is particularly inapposite since it concerned the use of the singer‟s name on memorabilia. The court took the view that the singer‟s name was not distinctive of the merchandise under discussion in that case. In other words, no purchasers would see the singer‟s name in that context as indicating the

    source of that merchandise. Nothing in that decision suggests that the singer could not have succeeded in a passing off action against another singer falsely representing himself to be Elvis Presley.

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    Finally, on the issue of distinctiveness, the Panel cannot resist observing that if the name “MARGARET DRABBLE” is not distinctive of the Complainant in the context in which the Respondent claims to have intended using the Domain Name (i.e. to signpost an English literature website) and the same is to be said of all the other writers‟ names used, the signpost was unlikely to be very effective.

    The question still remains as to whether the Policy extends to common law trade marks. On the face of paragraph 4(a)(i) of the Policy there is no limit to registered trade marks or service marks. It simply refers to “a trade mark or service mark in which the Complainant has rights.” The problem (if there be a problem) stems from the fact that common law rights in passing off do not, strictly speaking, confer rights in anything. They constitute rights (inter

    alia) to restrain misrepresentations, which are likely to damage the claimant‟s goodwill. As indicated above, those misrepresentations are commonly made by use of the claimant‟s name or something similar to it, the claimant‟s name being a symbol of the claimant‟s goodwill. It is for this reason that, loosely, they are often referred to as “rights in” the relevant common

    law trade mark. Certainly, it is fair to describe them as “rights in respect of” the relevant

    common law trade mark, to borrow the terminology from paragraph 4(a)(ii) of the Policy.

    The Complainant has established that she uses her name in the creation and promotion of her work from which she makes her living. Her name identifies her work. Her work is ordered and called for under and by reference to her name. Further the Domain Name is her name and was intended by the Respondent to refer to her. Clearly, the Complainant has a bona fide reason for making the Complaint.

    In the view of the Panel the broader interpretation of paragraph 4(a)(i) of the Policy is to be preferred. It is consistent with the wording of paragraph 4(a)(ii). Moreover, generally, the wording of the Policy is such that a purposive construction is called for. The Panel further notes that the overwhelming preponderance of panels regard common law trade marks as trade marks which qualify under paragraph 4(a)(i) of the Policy.

    The Panel finds that the Domain Name is identical to a trade mark/service mark in which the Complainant has unregistered rights.

The Panel notes that the majority of the panel in Case No. D2000-1532 Bruce Springsteen v.

    Jeff Burgar and Bruce Springsteen Club described the reasoning in the Jeanette Winterson

    case (WIPO Case No. D2000-0235) as flawed in that (inter alia) it “has been credited with establishing the principle that common law rights can arise in a proper name.” The decision does not explain where the flaw lies. Unless the flaw relates to the word “in,” which the Panel has dealt with above, the Panel can only say that it disagrees. The Panel is reluctant to point up areas of disagreement with other panels dealing with other sets of facts, but in this case, the decision in the Jeanette Winterson case has a particular significance and criticisms

    of that decision, insofar as they may impact on this case, needed to be addressed.

Rights or legitimate interests of the Respondent

    Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, demonstrate the Respondent‟s rights or legitimate interests in respect of the Domain Name. The Respondent has produced no evidence of any kind to demonstrate the presence of any of those circumstances. The Domain Name is not connected

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