WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Fish4 Limited v. Mr. Shaji Sreedharan, Computech Electronics and Eshop

Case No: D2002-0264

The Complainant is Fish4 Limited of Broadway Chambers, London, United Kingdom, represented by Berwin Leighton Paisner of London.

The three Respondents are Mr. Shaji Sreedharan of Croydon, United Kingdom, Computech Electronics and Eshop, both of Azhoor, Trivandrum Dist, Kerala State, India.

The disputed domain names are <fish4you.com>, <fish4you.net> and <fish4you.org>.

The Registrar of all three disputed domain names is Melbourne IT Ltd, Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on March 19, 2002 and in hard copy on March 20, 2002. Receipt of the Complaint was acknowledged by the Center on March 26, 2002. On March 28, 2002 registration details were sought from the Registrar, which replied on April 2, 2002, stating that it had received a copy of the Complaint from the Complainant; the disputed domain names are registered with it; the Respondents are the current registrants; the Policy applies to the disputed domain names; the language of the registration agreement is English and the Respondent submits to the jurisdiction of the courts as provided in the Policy (without prejudice to other potentially applicable jurisdictions). The details of the registrations provided by the Registrar were that <fish4you.com> (registered on May 28, 2001) is registered in the name of Computech Electronics and that <fish4you.net> and <fish4you.org> (both registered on June 3, 2001) are registered in the name of Eshop.

On April 9, 2002 the Center notified the Complainant of the failure of the Complaint to include an appropriate submission to jurisdiction clause. On April 10, 2002 by email and on April 15, 2002 in hard copy, the Complainant filed an amendment to the Complaint correcting this deficiency.

On April 16, 2002 the Center satisfied itself that the Amended Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Amended Complaint by post/courier (with enclosures) to the Respondents.

The Center included with that material a letter dated April 16, 2002, containing notification of the commencement that day of this administrative proceeding, with copies (of the Amended Complaint without attachments) to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was May 6, 2002. No Response was filed. On May 7, 2002 the Center notified the parties of the Respondents’ default.

The Complainant having requested a single-member panel, on May 15, 2002 the Center formally notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of May 29, 2002.

The Panel is satisfied that the Amended Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel considers the Amended Complaint complies with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondents of the Amended Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.

The language of the proceedings is English, being the language of the Registration Agreements.

In October 1999, six United Kingdom regional newspaper groups joined forces to launch the Complainant’s business of providing the equivalent of classified advertising through online consumer information websites, which enable consumers to find homes (<www.fish4.co.uk/homes>), lettings (<www.fish4.co.uk/lettings>), cars (<www.fish4.co.uk/cars>), jobs (<www.fish4.co.uk/jobs>), a directory service (<www.fish4it.co.uk>) and local news (<www.fish4news.co.uk>).

On February 22, 2002, with effect from September 27, 1999, the Complainant became the registered proprietor in the United Kingdom of the trade marks FISH4, fish4, fish4jobs, fish4cars, fish4homes, fish4me, fish4it, fish4money and fish4news. The Complainant is also the registrant of over 90 domain names having the prefix "fish4" used with another word, including <fish4you.co.uk>.

The disputed domain name <fish4you.com> was registered on May 28, 2001 in the name of Computech Electronics and the domain names <fish4you.net> and <fish4you.org> were both registered on June 3, 2001 in the name of Eshop. A Whois search conducted in August 2001 by the Complainant revealed that both registrants’ addresses were at 156 London Road, Croydon, United Kingdom. The domain names then led to "under construction" pages and to a contact at <shaji@fish4you.com>. The Complainant’s enquiries revealed that Computech Electronics Limited was a recently dissolved company and that a director was Mr. Shaji Sreedharan.

Correspondence ensued between the Complainant and Mr. Sreedharan, who wrote on August 15, 2001 on Eshop letterhead, admitting that he had registered the disputed domain names and claiming goodwill in them since "Fish4you enterprises was established in 1989". The Complainant sought evidence of that goodwill but none was provided. In December 2001, the Complainant discovered that the disputed domain names pointed to a website offering goods and services similar to those offered by the Complainant and that the addresses of the registrants had been changed to those in India set out at the beginning of this determination.

The Complainant requests the Panel to direct that the disputed domain names be transferred to it upon the legal grounds that the disputed domain names are confusingly similar to the Complainant’s registered trade marks; the Respondents have no rights or legitimate interests in respect of the disputed domain names and the Respondents have registered and have used the disputed domain names in bad faith.

No Response was filed.

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel draws two inferences where a Respondent has failed to submit a response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard Company v. Full System (NAF Case No. FA 0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925).

From an examination of the trade mark registration certificates exhibited to the Amended Complaint, the Panel is satisfied that the Complainant is the registered proprietor of the trade marks set out earlier. Further, the Panel is satisfied, on the evidence provided by the Complainant, that by the time the disputed domain names were registered, those marks had become, through use by the Complainant, distinctive in the United Kingdom of the Complainant’s services.

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR (WIPO Case No. D2001-1480); Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195); Energy Source Inc. v. Your Energy Source (NAF Case No. FA101000096364); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. (WIPO Case No. D2001-1121) and the cases there cited.

The Panel finds that each of the disputed domain names is confusingly similar to each of the Complainant’s trade marks.

The Complainant has established this element of its case in respect of each of the disputed domain names.

The marks were distinctive of the Complainant’s services and were well known before the disputed domain names were registered. The names of the Respondents do not incorporate any part of the disputed domain names. When evidence to support the claim to goodwill dating from 1989 was sought by the Complainant, prior to the initiation of the Complaint, none was provided.

These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain names on the part of the Respondents. The evidentiary burden, therefore, shifts to the Respondents to show that at least one of them does have rights or legitimate interests in the domain names whether by reference to the examples set out in paragraph 4(c) of the Policy or otherwise: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. The Respondents have made no such showing and accordingly, the Panel finds the Respondents have no rights or legitimate interests in respect of any of the disputed domain names.

The Complainant has established this element of its case in respect of each of the disputed domain names.

Even if (as appears unlikely) the Respondents were unaware of the Complainant’s marks when the disputed domain names were registered, there can be no dispute that they were on notice of those marks following the correspondence from the Complainant’s solicitor in August 2001. Subsequently the Respondents pointed the domain names to a website offering goods and services similar to those offered by the Complainant.

The Panel concludes that, by using the domain names in this way, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites or of the products or services on those websites. Under paragraph 4(b)(iv) of the Policy, such circumstances shall be evidence of both bad faith registration and bad faith use.

The Complainant has established this element of its case in respect of each of the disputed domain names.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain names <fish4you.com>, <fish4you.net> and <fish4you.org> be transferred to the Complainant.