Boustead & Company Limited, Boustead Securities, LLC and Boustead Asset Management Limited v. Jakob Kinde
Claim Number: FA2006001901811
Complainant is Boustead & Company Limited, Boustead Securities, LLC and Boustead Asset Management Limited (“Complainant”), represented by Joanne Park, California, USA. Respondent is Jakob Kinde (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bousteadandco.com> and <bousteadrenewables.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2020; the Forum received payment on June 25, 2020.
On June 26, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bousteadandco.com> and <bousteadrenewables.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bousteadandco.com, postmaster@bousteadrenewables.com. Also on July 6, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 9, 2020.
Additional submissions
A. Complainant
On July 17th, 2020 the Additional submission from the Complainant was received.
On July 19th, 2020 the Additional submission from the Complainant was received.
On July 21st, 2020 two Additional submissions from the Complainant were received.
B. Respondent
On July 13th, 2020 the Additional submission from the Respondent was received.
On July 19th, 2020 the Additional submission from the Respondent was received.
On July 20th, 2020 two Additional submissions from the Respondent were received.
On July 21st, 2020 three Additional submissions from the Respondent were received.
On July 22nd , 2020 three Additional submissions from the Respondent were received.
On July 24th, 2020 two Additional submissions from the Respondent were received.
On July 14th, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that Respondent is using Complainant’s trade name, “Boustead”, in their domain names <bousteadrenewables.com> and <bousteadandco.com> and they are using the Boustead logo on the <bousteadrenewables.com> and <bousteadandco.com> websites.
Additionally, in the history section of Respondent’s <bousteadrenewables.com> website they reference a joint venture formed with Boustead Securities and they also reference Boustead Asset Management. There is no such joint venture or relationship between Respondent and Complainant. In addition, Complainant company name is, Boustead & Company Limited, which is confusingly similar to Respondent’s domain name, “bousteadandco”. Further Respondent lists Daniel J. McClory on the <bousteadandco.com> team page. Mr. McClory, who is an officer and director of Complainant has no relationship with Respondent. Additionally, Respondent lists Boustead Securities, LLC, Boustead Asset Management and Boustead & Company Limited on the <bousteadandco.com> history pages.
Complainant has no relationship with Respondent. The Complainant asks to further refer to the attached Stock Purchase Agreement between Complainant and Boustead Group Limited and Boustead Asset Management Limited whereby
Complainant acquired various Boustead companies and assets, including the Boustead trade name and logo. Complainant also asks to refer to the attached Court Order (under which the Respondent is ordered to surrender his ownership from Bousted & Company Limited) and Letter from Kutak Rock, Complainant counsel.
Complainant claims that the Respondent’s websites and domains are infringing on Complainant’s brand and trademark as follows:
1. Use of Complainant’s logo on Respondent’s websites,
2. Use of Complainant’s trade name on Respondent’s websites,
3. Use of Complainant’s trade name in Respondent’s domain names,
4. Use of Complainant’s company employee biographies and Complaints history as part of the Respondent’s websites, specifically:
a. In the history section of Respondent’s <bousteadrenewables.com> website they reference a joint venture formed with Boustead Securities and they also reference Boustead Asset Management. There is no such joint venture or relationship between Respondent and Complainant.
b. Respondent lists Daniel J. McClory on the <bousteadandco.com> team page Mr. McClory, who is an officer and director of Complainant has no relationship with Respondent.
c. Respondent lists Boustead Securities, LLC, Boustead Asset Management and Boustead & Company Limited on the <bousteadandco.com> history pages.
Complainant has no relationship with Respondent.
The Respondent are imposing on the Complainant’s branding and are intentionally trying to benefit from associating themselves with the Complainant’s established brand in bad faith.
B. Respondent
The Respondent claims that the Order Complainant refers to shall be considered to be null and void as the complainant failed to serve or make any attempt to serve any summons on the defendant.
The company and/or companies named Boustead, which the complainant entered into an agreement to merge their company Monarch Bay with Boustead, never owned any registered trademarks or did they or do they have any right or claim over the name Boustead.
He has a royalty agreement with the legal owner of the registered name and trademarks to use the registered coat of arms trade mark and the name Boustead. Both the Boustead Coat of Arms and Boustead name are registered trademarks in the United Kingdom, United States and China.
Boustead is a commonly used name in business with currently 22 active companies using the name in the United Kingdom. There are also two well-known Boustead publicly listed companies in Asia, namely Boustead Singapore and Boustead Holdings Berhad in Malaysia. These were connected to Boustead & Co UK historically.
The Complainant has no claim over the name Boustead or the trademark consisting of the coat of arms. They have no right to claim exclusive rights over the name Boustead which is a common surname dating back to the medieval ages originating in the United Kingdom.
C. Additional Submissions
Complainant
Three additional submissions total were received from the Complainant.
The Complainant claims that, under the Stock Purchase Agreement, the Complainant has the right to use the trade names and other intellectual property utilized in the Boustead Companies business and further provides that the Boustead Group Shareholders (which includes Mr. Kinde and Mr. Havercroft) indemnify Boustead & Company Limited (also hereinafter - BCL) from claims made against the trade names and other intellectual property purchased by BCL. BCL reserves all rights to make claims against those infringing on their rights as they are doing so against Mr. Kinde. Mr. McClory does NOT work with or for Jacob Kinde’s company and his bio needs to be REMOVED [from the website, referred above]. The bottom line is that Boustead Company’s history is NOT Jacob Kinde’s company’s history and needs to be REMOVED. Mr. Kinde continues to perpetuate in a fraud on the public worldwide by continuing to pretend that these facts, among others, are accurate and current.
BCL is the owner of the trade name and all intellectual property used in the business (as was purchased by BCL from Mr. Kinde, Mr. Havercroft and the other Boustead Group Shareholders).
Respondent
As mentioned above in the Procedural History section, twelve additional submissions (with the annexes) total were received from the Respondent.
The Respondent claims he has the arrangement with the license owner (and then additionally submits the Trademark License Agreement between Nicholas Anthony Havercroft and Jakob Kinde of Boustead Renewables Limited of 17th October 2018). The Respondent contends that the Complainant does not own the trademarks.
Other correspondence
Email from Nick Havercroft, the registered trade mark owner of Boustead & Co and the ceremonial Coat of Arms trade mark, who is the party to the Trademark License Agreement, referred above.
The <bousteadandco.com> domain name was registered on March 17, 2015, and the <bousteadrenewables.com> domain name was registered on June 5, 2017.
On July 30, 2016 the Stock Purchase Agreement the Complainant refers to was concluded.
On September 17, 2018, the court Order the Complainant refers to was issued.
On 17th October, 2018, the Trademark License Agreement the Respondent refers to was concluded.
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."
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.
Complainant argues he is the owner of the BOUSTEAD intellectual property objects, and, among others, the BOUSTEAD mark.
Respondent argues Complainant does not have rights in the BOUSTEAD mark, as Complainant does not own the trademark registrations for the BOUSTEAD mark.
The Complainant refers the Stock Purchase Agreement for the purpose of claiming his intellectual property rights; however, having studied the claim along with the annexes, and all the additional submissions thereto, the Panel has found no sufficient evidence that the Complainant owns any registrations for BOUSTEAD mark. See CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Forum June 3, 2003) (holding that as the complainant provided no evidence to the panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to the complainant, the complainant did not have standing to bring a claim under the UDRP); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim” and “[t]he ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).
Here, Respondent notes that the BOUSTEAD trademark exists and has been registered in the United States, United Kingdom, and China, but argues that Complainant is not the owner of those registrations. Further, Respondent argues that many companies exist around the world that used the “Boustead” name.
Given the number of documents and written arguments provided by the Complainant (annexes and additional submissions), it seems unclear why the Complainant failed to provide clear and grounded documental evidence that he has the right to the BOUSTEAD marks (since the fact that the Complainant owns (or not) the rights to the trademarks shall influence the decision made in the case.
Even if to presume that the Complainant claims any common law/ unregistered mark rights to BOUSTEAD mark, the Panel finds that, in order to successfully assert common law or unregistered trademark rights, Complainant must show that these names have become a distinctive identifier associated with Complainant or its goods or services. Specific assertions of relevant use of the claimed trademark(s) supported by sufficient evidence is required. A secondary meaning can be established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Therefore, the Panel finds that Complainant does not have rights in the BOUSTEAD mark under Policy ¶ 4(a)(i).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy.
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(ii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006); see also Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze Policy ¶ 4(a)(iii). Indeed, since Complainant must prove all three elements of Policy ¶ 4(a) under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006); see also Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bousteadandco.com> and <bousteadrenewables.com> domain names REMAIN WITH Respondent.
______________________________________________
Antonina Pakharenko-Anderson, Panelist
Dated: July 27th, 2020
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