The Complainant is Kathryn Findlay Limited trading as Ushida Findlay Architects of Edinburgh, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, Edinburgh, United Kingdom.
The Respondent is Forsyte Corporation of Bahamas, Bahamas.
The disputed domain name <ushidafindlay.com> is registered with Rebel.com Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2009. On June 5, 2009, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On June 5, 2009, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on July 10, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is an internationally renowned architectural practice founded by Kathryn Findlay and incorporated in July 2004. The Complainant was founded following the liquidation of its predecessor practice Ushida Findlay (UK) Limited which was incorporated in March 1998 as the UK-based trading entity of the Ushida Findlay Partnership. The Ushida Findlay Partnership was founded by Eisaku Ushida and Kathryn Findlay in Tokyo in 1986. Ushida Findlay (UK) Limited went into liquidation on the June 28, 2004. Kathryn Findlay purchased the Intellectual Property rights of Ushida Findlay (UK) Limited on January 7, 2005 and claims to have assigned these rights to the Complainant in due course. The Complainant and its predecessor have developed a substantial reputation, won numerous architectural awards and have received widespread media recognition for their buildings and designs under the USHIDA FINDLAY mark.
The Respondent registered the Disputed Domain Name on June 23, 2005. The Disputed Domain Name resolves to a web site used to direct Internet users to pay-per-click linking portals. The Respondent has been called as a respondent in fifteen previous cases under the Policy.
The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's common law trade mark. The Complainant contends that it has common law trade mark rights in the USHIDA FINDLAY mark as a result of its inherent distinctiveness and the substantial media recognition of the Complainant and its predecessor in the course of trade over many years under the mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent supports this contention by reference to the fact that the Respondent is not commonly known by the Disputed Domain Name, has no permission from the Complainant to use the Complainant's common law trade mark and given the fact that the mark uniquely references the Complainant's practice and architectural work there is no conceivable legitimate interest in the Disputed Domain Name which could have vested in the Respondent.
The Complainant submits that the Disputed Domain Name resolves to a portal displaying hyperlinks to various third party web sites, some of which are competitors of the Complainant, and that such a use of the Disputed Domain Name cannot constitute a bona fide offering of goods and services nor a legitimate non-commercial or fair use under the Policy.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant supports this contention by reference to the fact that the Respondent has engaged in a pattern of conduct of registering domain names identical or similar to third parties' trade marks and pointing these domain names to pay per click parking services.
The Complainant submits that the further evidence of bad faith on the part of the Respondent is evidenced by the fact that the Respondent has acquired and has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark.
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that;
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant does not rely on any registered trade mark rights in the term “Ushida Findlay”. Therefore, if the Complainant is to succeed it must prove that it has unregistered trade mark rights in the USHIDA FINDLAY mark.
Previous panels have held that for a complainant to establish unregistered trade mark rights the complainant must demonstrate that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes the length and amount of sales under the mark, the nature and extent of advertising, and consumer surveys and media recognition. Above All Advertising Inc. v Belize Domain Whois Service Lt, WIPO Case No. D2007-0775.
Clear evidence has been provided by the Complainant that the business and goodwill of Ushida Findlay (UK) Limited including all Intellectual Property rights were assigned to Kathryn Findlay personally. Ms. Findlay asserts that she assigned these Intellectual Property rights to the Complainant although no written evidence of such an assignment has been provided. In the circumstances Ms. Findlay would appear to be the moving spirit of the Complainant and given that the business name “Ushida Findlay” includes her family name the Panel is prepared to accept based on the evidence provided that the assignment has taken place and that the Complainant has subsequently developed goodwill and reputation under the USHIDA FINDLAY mark. Even if on best practice the Panel notes that the Complainant should provide written evidence of such assignment, the Panel is willing to accept in these special circumstances that the Intellectual Property rights have been assigned.
The Panel in Middletons Lawyers, MMB Legal Pty v. Administration Local, WIPO Case No. D2003-0785 noted that:-
“ “Middletons” is not a word in use in the English language. It is a distinctive word which would not have been legitimately chosen for use by the Respondent, unless it were attempting to trade of the Complainants' rights in the mark.”
The Panel accepts the Complainant's contention that the combination of the Japanese name “Ushida” and the British name “Findlay” is inherently distinctive and uniquely referable to the Complainant's architectural practice.
The Complainant has provided substantial evidence of the longstanding renown of its USHIDA FINDLAY mark as an indicator of the Complainant and its predecessor's architectural practice. The high profile of the USHIDA FINDLAY mark is evidenced by the extensive media coverage of the Complainant and its predecessor's designs and buildings, the numerous architectural awards, competitions and projects that they have won under the USHIDA FINDLAY mark and by the fact that a Google search for the “Ushida Findlay” phrase shows a large number of entries all of which refer to the Complainant and its predecessor's architectural practice.
In all these circumstances the Panel is satisfied that the Complainant has established common law trade mark rights in the USHIDA FINDLAY mark in the field of architectural design. The Panel in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 noted that:
“even if the Complainant's mark acquired goodwill and reputation only in a limited field, this would still be sufficient to establish common law trade mark rights.”
The Disputed Domain Name is made up of the common law trade mark USHIDA FINDLAY to which the generic top level domain “.com” has been added. The Panel in Sensis Pty Ltd, Research Resources Pty Ltd v. Kevin Goodall, WIPO Case No. D2006-0793 noted that:
“To make a true comparison between a trade mark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared”.
The Panel is therefore satisfied that the “.com” generic top-level domain does not serve to distinguish the Disputed Domain Name from the Complainant's common law trade mark. The Panel therefore finds that the Disputed Domain Name is identical and confusingly similar to the Complainant's trade mark and the Complainant has satisfied paragraph 4(a)(i) of the Policy.
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 Respondent carries the burden of producing evidence establishing that it has rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the Respondent of the dispute, use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) Where the Respondent is making a legitimate non-commercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is generally regarded as prima facie evidence if; (a) a complainant shows that the disputed domain name is identical or confusingly similar to the complainant's trade mark; (b) that the respondent is not commonly known by the disputed domain name; and (c) that the complainant has not authorized the respondent to use his mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
The Panel notes that the Disputed Domain Name is identical to the Complainant's USHIDA FINDLAY mark. The Panel accepts the Complainant's contentions that the Respondent is not commonly known by the Disputed Domain Name and that the Respondent has never been authorized by the Complainant to use the Complainant's common law trade mark. Here, the Panel is satisfied that the Complainant has provided prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has failed to file a response to the Complaint. It remains for the Panel to determine whether the Respondent has legitimate rights or interests in the Disputed Domain Name.
The Complainant has provided evidence that the web site to which the Disputed Domain resolves is a portal displaying links to third party web sites, a number of which are competitors of the Complainant. The Panel is willing to infer, without any evidence to the contrary having been put forward by the Respondent, that on the balance of probabilities, the use of the web site to which the Disputed Domain Name resolves does not constitute a bona fide offering of goods or services but rather is an attempt to exploit the reputation of the Complainant's mark by using an identical Domain Name to attract Internet users to third-party web sites for commercial gain.
Paragraph 4(c)(ii) of the Policy is not satisfied as there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name. Neither is there any evidence that the Respondent has been making a non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain.
In all the circumstances the Panel therefore finds the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and as such the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on respondent's website or location.
For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the Respondent has acquired and has been using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement.
The Panel accepts that the Complainant has developed a substantial reputation in the USHIDA FINDLAY mark in the field of architecture. The Panel cannot objectively reason why the Respondent would use the Complainant's mark in the Disputed Domain Name for any other reason save as to create a likelihood of confusion amongst Internet users with the Complainant's common law trade mark. The Panel is willing to infer that the Disputed Domain Name and the website to which it resolves were intended to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
In addition, the Panel finds further evidence of bad faith on the part of the Respondent in the fact that the Respondent has engaged in a pattern of registering and using the domain names incorporating the trade marks or variations thereof, of third parties to redirect Internet users to linking portals for profit. This pattern of conduct on the part of the Respondent was previously noted by the Panel in Sinbar v. Forsyte Corporation, WIPO Case No. D2008-1667.
The Panel infers that in all these circumstances the Complainant has established that the Respondent registered and used the Disputed Domain Name in bad faith.
Accordingly the Panel considers that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ushidafindlay.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: July 24, 2009