Barry Lill v. Linda Chan
Claim Number: FA1204001440292
Complainant is Barry Lill (“Complainant”), represented by Barry Lill of Mainline Flatpacks Ltd, United Kingdom. Respondent is Linda Chan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.com>, registered with GoDaddy.com, LLC.
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2012; the National Arbitration Forum received payment on April 20, 2012.
On April 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.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 April 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2012 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@mainline-envelopes.com, postmaster@mainline-packaging.com, postmaster@mainline-shop.com, postmaster@mainlineenvelopes.com, and postmaster@mainlinestore.com. Also on April 25, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 May 14, 2012.
On May 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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" 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 contends that:
Based on these contentions, Complainant further alleges that:
1. the subject domain names are confusingly similar to the Mainline name;
2. neither Respondent, nor the previous holder of the domain names have rights or legitimate interests in its registered domain name;
3. the subject domain names were registered in bad faith.
B. Respondent
a. Complainant has provided no evidence supporting its rights in any mark.
b. The disputed domain names are comprised of common and generic terms.
c. None of the disputed domain names have been operated or used at all, so there can be no abusive use of such domain names.
The Complaint asserted, and generally provided evidences in support of, the following facts. Unless otherwise specified, the Panel finds these facts established.
Complainant’s Activities
Mainline Flatpacks Ltd is the company registered in England and trading under the current name since 1988, registration number 189583, that is confirmed by respective certificate of incorporation on change of name, and produces the board envelopes, envelopes and postal packaging. Under the Complaint, the Complainant strongly associates himself with Mainline Flatpacks Ltd and actually is trading as “Mainline Flatpacks Ltd,” although the Complaint does not expressly shows the ties between Complainant and the company.
The Complainant also has an established internet presence using the “Mainline” name through online websites under domain names <mainlinepackaging.com>, <mainlineshop.com>, <mainlineflatpacks.co.uk>.
Thus, Complainant relies on his common law rights in the “Mainline” name dating back to the registration of the trade name “Mainline Flatpacks Ltd” and further onset of use of the subject name.
The conflicting domain names <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.com> were registered by the previous registrant well after the Complainant’s established rights in the “Mainline” name.
Further, Complainant argues that neither the Respondent, nor the previous holder of the conflicting domain names is commonly known by the disputed domain name, and Complainant produces pieces of evidence to support this statement, while the most valuable one is the list of companies which Richard Hayden is related to.
The Panel gives due note of the fact that the previous holder of the domain name, Richard Hayden, is the owner of Board Envelopes (Nottingham) Ltd which is the direct competitor of Mainline Flatpacks Ltd.
Before the domains have been transferred to Linda Chan, Richard Hayden suggested the Complainant to transfer the subject domain names for his own financial gain, that is supported by respective e-mail correspondence between Barry Lill and Richard Hayden.
Furthermore the e-mail correspondence between Barry Lill and Richard Hayden may serve as indirect evidence that Barry Lill owns Mainline Flatpacks Ltd.
The Response is deficient of any sort of information about Respondent and her field of activity. At the same time, no information about further use of the online website under the subject domain names is provided either.
Rather, the Respondent mostly relies on the incompliance of the Complaint as to formal requirements of the Policy that, in the Panel’s opinion, does not prejudice further consideration of the case as to the substance.
As the transfer of rights in the subject domain coincided with the initiation of the administrative proceedings against Richard Hayden before Nominet and this Forum, which were preceded by the e-mail correspondence with Richard Hayden and the Complainant, the Panel may anticipate that such transfer of domain names have been made with the willful intent to use the transfer as a restrictive condition and for the purpose of frustrating assessment of liability in relation to registration or use of the domain name.
Therefore, for the purposes of consideration of the case the Panel finds it necessary to take into consideration the registration history of the subject domain names.
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.
Under the analysis of the Complaint and evidence provided by the Complainant in their entirety, and specifically to the certificate of incorporation on change of name, the Complainant is the proprietor of the rights in the Mainline Flatpacks Ltd as of 1988 and is commonly known in its filed of business under the Mainline name as the alternative abridged version of its trade name through the use of the “Mainline” name together with generic terms identifying the products produced by the Claimant in the domain names.
Although the “Mainline” name does not inherently possess the high degree of distinctiveness as it is a dictionary word, it should be noted that distinctiveness is not an absolute and unchangeable factor and it may be intensified and/or acquired through use.
Thus, taking into account the actual use of the Mainline name, and specifically on the Internet, the Panel finds that this name have acquired substantial secondary meaning in associating with the board envelopes, envelopes and postal packaging as the mark was used since 1988.
Richard Hayden being the owner of the competitive UK company should know about that.
The Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a “trademark or service mark” in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered mark or service mark of the Complainant. Further, the Panel recognizes that WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, from which “The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction.”
Furthermore, the Panel notes that Complainant provides no evidence of any trademark registration, nor does it provide any evidence that the MAINLINE FLATPACKS LTD name has acquired any degree of secondary meaning other than listing three websites which Complainant has registered: <mainlinepackaging.com>, <mainlineshop.com>, and <mainlineflatpacks.co.uk>.
Still, the Panel finds that Complainant has established common law rights in the MAINLINE FLATPACKS LTD mark and its alternative MAINLINE mark under Policy ¶ 4(a)(i) on the basis of its certificate of incorporation and website registrations, though there are no relevant citations to bolster this finding. Complainant claims to have registered the <mainlineflatpacks.co.uk> domain name as early as 1998, which, in the opinion of the Panel, supports the acquisition of secondary meaning through long-term use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
The subject domain names <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.com> fully incorporate the Complainant’s “MAINLINE” mark and respective terms which may be regarded as generic and/or descriptive in relation to those goods in association with which the mark MAINLINE FLATPACKS LTD and its alternative MAINLINE mark are used by the Complainant.
Thus, the Panel finds that the domain names <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.com> are confusingly similar to MAINLINE FLATPACKS LTD mark and its alternative MAINLINE mark, in view of the fact that the disputed domain names fully include the MAINLINE mark, while adding generic terms which are also suggestive and descriptive of those goods for which the Complainant’s mark are used, and the generic top-level domain (“gTLD”) “.com.” does not preclude confusion between domain names and marks.
Taking into account that consumers may have become accustomed for such use of the MAINLINE mark by the Complainant in the domain names <mainlinepackaging.com>, <mainlineshop.com>, and <mainlineflatpacks.co.uk>, the Panel finds that differently phrased domain names do not help avoiding confusing similarity with Complainant’s marks and domains which were earlier registered by Complainant, and this may be qualified as typosquatting.
In light of the above, the Panel finds that Policy 4(a)(i) has been satisfied.
The Panel finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Thus, the burden of proof shifts to Respondent to show the contrary. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Based on the unsupported allegations of the Complainant that an Internet search made by him did not confirm that the Respondent is commonly known under the “mainline” name, but which have not been rebutted or undermined by the Respondent in her Response, the Panel finds that Respondent is not commonly known by the subject domain names under Policy ¶ 4(c)(ii). Nor is the previous holder of the domain names commonly known by the subject domain names, which is supported by the Director Report generated for Richard Andrew Hayden. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel also recognizes that WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, from which “while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Complainant makes no arguments with respect to Respondent’s use of the disputed domain names and, therefore, makes no arguments under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Still, the Complainant mentioned that Richard Hayden is the owner of the Board Envelopes (Nottingham) Ltd which is the direct competitor of Mainline Flatpacks Ltd.
This implies that Richard Hayden knew or should know of the common law rights of the Complainant in the MAINLINE FLATPACKS LTD mark and its alternative MAINLINE mark.
Thus, taking also into account that the Respondent did not prove rights or legitimate interests in the domain name, the Panel thus finds that Policy 4(a)(ii) has been satisfied.
Complainant alleges that it contacted Richard Hayden, the prior holder of the disputed domain names, requesting that the disputed domain names be transferred to Complainant. Complainant claims that Mr. Hayden took offense to Complainant’s suggestion and instead said that he will “now consider transferring these domains to another interested party, unless you’d like to make me a sensible and more cordial proposal.”
To support this, the Complaint has provided the e-mail correspondence with Richard Hayden which may be treated as positive evidence that the Richard Hayden had actual notice of the Complainant’s common law rights in the MAINLINE FLATPACKS LTD mark and its alternative MAINLINE mark.
From this angle, the Panel also recognizes that WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, from which “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant's filing of a UDRP complaint, or after such filing.”
In light of the above and as long as there are indicia of cybersquatting, the Panel finds that these circumstances support a finding of bad faith upon registration of the subject domain names.
The ordinary rule on registration is that transfer to a new registrant constitutes “registration” for purposes of paragraph 4(a)(iii)'s determination of bad faith. Indeed it is a Consensus View that “ While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith.” WIPO Overview, paragraph 3.7; emphasis added. Although that section of the WIPO Overview is addressed to the non-italicized portion of the quotation, panels have applied the transfer rule absent a showing that the transfer was pretextual or an attempt at cyberflight. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
While the transfer of a domain name to a third party does amount to a new registration, the Panel finds that registration in bad faith will occur at the time the current registrant took possession of the domain name, specifically in light of those circumstances of the case which imply that the change in WHOIS registrant data was made to conceal an underlying owner's identity for the purpose of frustrating assessment of liability in relation to registration or use.
The Panel views Respondent’s possession of five disputed domain names in the immediate case as yet another evidence of a pattern of bad faith registration. The Panel notes that previous panels have found bad faith under Policy ¶ 4(b)(ii) where the dispute at hand involves several disputed domain names, each belonging to the respondent. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
The Panel thus 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 <mainline-envelopes.com>, <mainline-packaging.com>, <mainline-shop.com>, <mainlineenvelopes.com>, and <mainlinestore.com> domain names be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: June 12, 2012
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