Scottish Ballet v. Duncan Macleod a/k/a DuncanSketch
Claim Number: FA0803001163688
Complainant is Scottish Ballet (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scottishballet.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 24, 2008.
On March 16, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <scottishballet.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 April 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of April 22, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 22, 2008.
A timely Additional Submission according to The Forum’s Supplemental Rule #7 was received from Complainant on April 28, 2008.
A timely Additional Submission according to The Forum’s Supplemental Rule #7 was received from Respondent on May 5, 2008.
On April 29, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the
By Order made on May 13, 2008, due to exceptional circumstances, the time period within which the Panel was required to render its Decision was extended until May 20, 2008.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant says that since July 1998, it has operated through the <scottishballet.co.uk> domain name. Until 2005, it also operated through the domain name presently in dispute, which lapsed due to administrative oversight.
Complainant says the disputed domain name is identical to its mark (apart from the gTLD “.com”) and that Respondent has no rights or legitimate interests in the domain name, which was registered and is being used in bad faith.
As to legitimacy, Complainant says Respondent is not commonly known by the domain name; is not using it in connection with a bona fide offering of goods or services; nor has he made legitimate non-commercial or fair use of it. Respondent’s website contains “sponsored listings” of third party sites ranging from providers of ballet accessories, general sale sites, such as eBay and Quickshop, pension providers and travel information. Respondent is diverting Internet users interested in Complainant’s activities to his own web site for commercial gain.
As to bad faith, Complainant asserts likely confusion; use for commercial gain; unfair disruption of its business; misappropriation of its goodwill and unfair detriment to its rights in the SCOTTISH BALLET name.
Respondent says he has registered over 650 domain names since 2003 and that this is the first complaint ever brought against him under the Policy. He does not dispute that the domain name is identical to Complainant’s registered SCOTTISH BALLET mark. However the disputed domain name, which he registered on May 25, 2005 following an auction by a reseller of deleting domain names, comprises two conjoined common descriptive dictionary terms over which Complainant can have no trademark rights.
Respondent challenges Complainant’s claim to have acquired common law rights, pointing out that Complainant was incorporated on July 27, 1978 under the name “The Scottish Ballet Company Limited” and did not change its name to Scottish Ballet until January 10, 2005. Respondent says much of Complainant’s marketing literature annexed to the Complaint is clearly branded “The Scottish Ballet”.
Respondent says his intent in registering the domain name was usage in the descriptive sense only, as a constituent web site in a proposed Scottish-themed web portal project that was initiated before any notice to Respondent about this dispute, as evidenced by his registration of over 60 other Scottish themed domain names including <scottishaffairs.com>, <scottishbanks.com>, <scottishbuilders.com>, <scottishcarhire.com>, <scottishcasinos.com>, <scottishcommerce.com>, <scottishconnections.com>, <scottishdentists.com>, <scottishdigest.com>, <scottishfabricators.com>, <scottishfarmers.com>, <scottishgardens.com>, <scottishglens.com>, <scottishgolfing.com>, <scottishhousing.com>, <scottishjustice.com>, <scottishkiltmakers.com>, <scottishlinksgolf.com>, <scottishmonarchy.com>, <scottishmonuments.com>, <scottishnation.com>, <scottishnursing.com>, <scottishprinters.com>, <scottishretailers.com>, <scottishsurveyors.com> and <scottishtradesmen.com>.
Respondent says his proposed website corresponding to the <scottishballet.com> domain name would
complement those other domain names and would reflect and report upon ballet
dance and associated performing arts in
Respondent denies Complainant’s assertions of bad faith and says his use of the disputed domain name for sponsorship revenue is a perfectly legitimate activity pending development of his proposed Scottish-themed portal.
Respondent annexes correspondence between October, 2005 and February, 2006, initiated by Complainant, in which Complainant offered to buy the disputed domain name back from him and during the course of which he nominated a sum of £1,200, later reduced to £850. No further communication occurred until Respondent received a letter from Complainant’s solicitors dated June 19, 2007 alleging contravention of Complainant’s rights. When Respondent sought “a more reasoned and detailed justification” of those claimed rights, stating that the domain name was bought at auction in May 2005 and was one of a number of Scottish themed common word domains he had purchased, Complainant’s solicitors, by letter dated June 28, 2007, contended that no further justification was necessary and added: “[…] our client is the registered holder of the trademark “Scottish Ballet” […].” Respondent in reply pointed out that this last statement was incorrect. Nothing further occurred until the filing of the Complaint, by which time the Complainant’s trademark application had matured to registration and that fact had been published on February 15, 2008.
Respondent queries why Complainant waited some 2½ years before filing its Complaint if it felt confident that it had trademark rights.
C. Additional Submissions
While the Forum’s Supplemental Rules permit the filing of submissions in addition to the Complaint and Response, they cannot require the Panel to consider them because to do so would be inconsistent with paragraph 12 of the Rules, which does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. See Eskimos, Inc. v. Phillips, FA 105950 (Nat. Arb. Forum May 15, 2002); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002); see also Alain-Martin Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).
Here the Panel admits Complainant’s Supplemental Submission insofar as it addresses points made in the Response that Complainant could not have been expected to anticipate. The Panel does not admit Respondent’s Supplemental Submission, which largely reasserts matters stated in the Response that were questioned in Complainant’s Supplemental Submission and seeks to introduce matter that could have been included in the Response.
Complainant says Respondent’s claimed intention to create a Scottish portal never came to fruition; the disputed domain name is distinguishable from Respondent’s other “Scottish” domains in that it infringes Complainant’s common law and registered trademark rights; Complainant accepts that as of June 28, 2007 it did not have registered trademark rights; the change of Complainant’s company name is irrelevant since it does not affect the name under which it trades; passages from cases cited by Respondent cannot be found in those cases; Complainant doubts the veracity of Respondent’s claims in relation to a Scottish themed portal project; and says it can be inferred that Respondent would have been aware of Complainant’s organization, particularly as he intended the website to “reflect and report upon ballet dance and associated performing arts in Scotland”.
Complainant has failed to establish all elements necessary to entitle it to relief.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Policy ¶ 4(a) requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
There is no dispute that the domain name is identical to the mark SCOTTISH BALLET, which Complainant had registered shortly prior to the filing of this Complaint. This is sufficient to satisfy this element, since the prevailing view amongst panelists is that the question of whether a complainant had trademark rights which preceded registration of the domain name at issue is relevant only to the other two elements. See Valve Corp. v. ValveNET, Inc., v. Morrin, D2005‑0038 (WIPO Mar. 9, 2005) and the cases there cited.
Complainant has established this element.
Complainant’s registered trademark did not exist when Respondent registered the disputed domain name on May 25, 2005, having acquired it at auction. Complainant’s trademark registration application had not then been filed.
marketing literature annexed to the Complaint includes copies of programmes
published by Complainant between 1995 and 2004 using the words “Scottish
Ballet” as a trademark in relation to its ballet productions. Such use by Complainant over a period of 9
years is sufficient to establish goodwill in the mark. Such use is supported by press reports between
1992 and 1994 referring to Complainant as “Scottish Ballet” and to “Scottish
Ballet’s Midsummer Night’s Dream” and “Scottish Ballet’s Peter Pan”. The Panel finds, on all of that material, that
Complainant had acquired, through use, common law rights in the mark SCOTTISH
BALLET in relation to the production and performance of ballet by the time
Respondent registered the disputed domain name. That is not to say that it is a strong mark. Being composed of two ordinary descriptive
words, it goes without saying that the mark may not be used to prevent their
use to describe ballet in
It appears that Respondent is not commonly
known by the domain name. Complainant
asserts that Respondent is not using the domain name in connection with a bona fide offering of goods or services
and has not made legitimate non-commercial or fair use of it since his website
contains “sponsored listings” of third party sites. In light of the Panel’s finding of common law
rights prior to the registration of the domain name, these assertions establish
a prima facie case of absence of
rights and legitimate interests on the part of Respondent and the burden
of proof therefore shifts to Respondent to provide evidence of his right or
legitimate interests under Policy ¶ 4(c). See Cassava
Enter. Ltd., Cassava Enter. (
Policy ¶ 4(c) sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in Policy ¶ 4(c)(i):
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”
Even perfunctory preparations have been
held to suffice for this purpose. See Shirmax Retail
Ltd. v. CES Mktg. Group, Inc., AF-0104
(eResolution Mar. 20, 2000); see also
Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375 (Nat.
Arb. Forum May 11, 2000); see also Royal Bank of
Respondent says the disputed domain name was registered as part of a proposed Scottish portal and that he has 60 other “Scottish” domain names that he is amassing for this purpose, all of which presently produce pay-per-click revenue pending development of that portal, once he has acquired 100 such names. In the absence of any other evidence, he points to the very act of registering so many “Scottish” domain names as itself constituting demonstrable preparations for bona fide use.
The Panel finds this a difficult exercise and, on balance, is not persuaded that the mere registration of such a large number of “Scottish” domain names demonstrates preparations for their use as a portal and does not amount to evidence of rights or legitimate interests in the disputed domain name.
Accordingly Complainant has established this element.
Although Complainant’s SCOTTISH BALLET mark is
distinctive of Complainant and its services in the particular field of the
production and performance of ballet, it is also descriptive of ballet in
Respondent registered the disputed domain name as one of many descriptive “Scottish” domain names he has amassed. Although Complainant had by then acquired common law rights in its mark, the Panel is not prepared to find that Respondent was aware of Complainant and had Complainant in mind when he registered the disputed domain name. This precludes any finding of bad faith registration against Respondent under Policy ¶ 4(b)(i), (ii) or (iii). See Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO Jul. 22, 2005).
In particular, so far as concerns Policy ¶ 4(b)(i), a few months after he registered the domain name, when approached by Complainant with an unsolicited enquiry as to whether he would be prepared to sell it, Respondent nominated a figure of £1,200, quite likely more than he paid at auction. However, in the absence of a finding that Respondent had Complainant in mind at the time, the Panel is not prepared to find that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant.
Turning to Policy ¶ 4(b)(iv), using a domain name which is identical to another’s trademark to resolve to a parking page generating pay per click revenue is not necessarily bad faith use. It is unnecessary to determine the issue here because there is evidence of good faith registration, in that Respondent has been found not to have had Complainant in mind. Under these circumstances evidence of any subsequent bad faith use under Policy ¶ 4(b)(iv) cannot turn good faith registration into bad. See Yoomedia Dating Ltd. v. Cynthia Newcomer / Dateline BBS, D2004-1085 (WIPO Feb. 22, 2005) and the cases there cited.
Complainant has failed to establish this element.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Esq., Panelist
Dated: May 20, 2008
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