The Complainant is Liss Ard Property Holdings & Developments Limited of Cork, Ireland, represented by Holohan Solicitors, Ireland.
The Respondent is Veith Turske, CKREON Consulting GmbH of Berlin, Germany, represented by Traverse Legal, PLC, the United States of America.
The disputed domain name <lissard.com> is registered with PSI-USA, Inc. dba Domain Robot.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain name. On December 15, 2010, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response:
(a) confirming that the disputed domain name is registered with it;
(b) confirming that the Respondent is listed as the current registrant of the disputed domain name;
(c) providing the contact details for the disputed domain name;
(d) confirming that English is the specific language of the registration agreement; and
(e) confirming that the Respondent registered, or acquired registration of, the disputed domain name (so far as the Registrar knows) in February 2004.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 6, 2011.
The Center verified that the amended 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 January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. The Response was filed with the Center on December 30, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 11, 2011. 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 the owner of the property known as Liss Ard Estate in County Cork, Eire. It apparently operates a hotel or guest house at the property.
The Respondent is, amongst other things, a landscape architect. In 1989, he started work designing and implementing a landscaped park at Liss Ard estate and continued that work through the 1990s.
In each of 1997, 1998 and 1999, a three day event took place at Liss Ard estate featuring artists including Lou Reed, Michael Stipe, Pattie Smith and Nick Cave. A compact disc recording of the first of these events was made and distributed.
There is a dispute between the parties about who was responsible for these events. The Complaint alleges that the Complainant and the Respondent were carrying on business together. The Respondent denies this and alleges that the Complainant only became the owner of the property in 2001 when he transferred the property to the Complainant. Instead, the Respondent claims he or the Liss Ard Foundation, which he founded as a non-profit charity to support his project at the property, owned the property and conducted the event.
(The Complaint does not provide any evidence to support its version of events. The Waver Agreement dated August 16, 2001 included as Annex 3 to the Complaint does refer to a contemporaneous Memorandum of Agreement in which the Respondent’s Liss Ard Foundation is identified as the vendor of the “Foundation Lands” and the Complainant is identified as the purchaser. The Memorandum of Agreement is not part of the record in the case. The “Foundation Lands” are not defined. Paragraph (f) of the Waver Agreement refers to “alleged or purported Leases”.)
The disputed domain name resolves to a website which displays images and provides information about the Liss Ard gardens and the 3 day event held at the property in 1997, 1998 and 1999.
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complaint admits that the Complainant owns no registered trademarks. It states, however, that the Complaint “is based on the intellectual property and trademarks of the Complainant which relate to the ‘The Liss Ard Estate’.” The Complaint continues “the Complainant is the legal registered owner of [The Liss Ard Estate] and so is the only party legally entitled to use the term “Liss Ard Estate”.”
The Respondent denies that the Complainant has proved any trademark rights at all. In addition, he points out that “liss ard” is the anglicized spelling of the Irish Gaelic for “high fort”.
There is considerable force in the criticism that the Complaint falls well short of providing evidence to support its claim to common law trademark rights. See, e.g., paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This is important particularly as the foundation of the Complainant’s rights under the Policy, but also to enable a proper consideration of the potential for confusion.
The Complainant’s website at <lissardresort.com> does provide some indications that the Complainant may well have the necessary reputation. Accordingly, the Panel considered allowing the Complainant an opportunity to correct the deficiency in its evidence. On consideration of the other factors (assuming the Complainant were to make good its title), however, the Complaint can be resolved without recourse to that measure.
The Complainant contends that the Respondent never had authority or right to use the disputed domain name. This allegation is qualified by the further contention that the Respondent was only ever legitimately commonly known or associated with the disputed domain name “due to the initial legitimate interest it had with the Complainant in the venture which ceased in the late 1990s.” The Panel infers the “venture” may be the development of the property or the three day event. The Complainant also says that the three day concert could only ever be held with the permission of the Complainant and in any event it has not been held since the late 1990s.
As already noted, the Respondent disputes the Complainant’s version of events during the 1990s. He also seeks to invoke paragraph 4(c)(iii) of the Policy on the basis that he is making a legitimate noncommercial or fair use of the disputed domain name. As the disputed domain name resolves to a website which just provides images and information related to the Liss Ard gardens (which the Respondent designed) and the concert event in each of 1997, 1998 and 1999, there is considerable force in this contention.
By paragraph (g) of the Waver Agreement to which both the Complainant and Respondent are party, however, the Respondent (and the other parties of its part, described as the Second Part) did agree:
“on closing of the sale provided for under the Memorandum of Agreement, and in consideration of the payment of £1.00 by the Parties of the Second Part to the Parties of the First Part, the receipt whereof is hereby acknowledged, the Parties of the Second Part agree and undertake to transfer the domain name lissard.com and any intellectual property rights it may have with respect to the developments on the Liss Ard Estate to Liss Ard Property Holdings (LAPH) and Developments Limited within 7 days of execution of the Memorandum of Agreement.”
If the Complainant is right about the effects of this clause, it would seem to undercut the basis for the Respondent’s argument.
The Complaint does not provide direct evidence that closing of the sale under the Memorandum of Agreement occurred. The Respondent contends that in various unspecified ways the preconditions of clause (g) were not fulfilled. Its failure to be specific about these matters could be fatal particularly completion might be inferred from the Respondent’s admission that the Complainant became the owner of the property in 2001. In light of the Panel’s conclusion under the third requirement, however, it is unnecessary to resolve this issue finally.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
The Complainant contends that the disputed domain name should be considered as registered and used in bad faith “because at no stage did the Respondent ever have any valid authority either to register the domain name or use the Website to its [sic] own account.” The Complainant further contends that “[a]ny authority the Respondent may have had to use the Website or the Intellectual Property quite clearly and categorically ceased when the Agreement in relation to the use of the domain name and intellectual property for “Liss Ard” was terminated.” In support of that second contention, the Complainant refers to the Waver Agreement.
The Complainant has not proved, however, any agreement of the kinds contended for. The Respondent specifically denies any such arrangement. Even if the Panel were to assume that the preconditions for clause (g) of the Waver Agreement to come into force had been satisfied, the terms of the Waver Agreement are not consistent only with the agreements of the kind alleged by the Complainant. What can be gleaned from them is that there was a very substantial dispute between the parties in the respective camps, including a dispute over a IEP 300,000 mortgage or security. As the onus to prove the absence of good faith registration and use falls on the Complainant, its contention on this basis must therefore fail.
The Complainant also draws attention to the change in the Respondent’s email address in the WhoIs records on May 17, 2010. This is presumably an attempt to have the requirement of registration in bad faith tested at that date rather than some earlier point. A change of this relatively minor detail, however, is insufficient to invoke that rule.
Annex E to the Response, however, shows that the disputed domain name was registered in 2001 to ”Art + Environment” care of Liss Ard Foundation. The legal or juridical person who is ”Art + Environment” is not otherwise apparent from Annex E. The Response advances Annex E as proof that the Respondent himself registered the disputed domain name. He also deposes that he (the Respondent) first registered the disputed domain name and has remained its owner since then. While the name is very close to the name of the Respondent’s company, it is not identical and, according to the Complaint, that company was dissolved in August 2000. Moreover, the nature of the use before and following 2001 did not change.
Given that it is common ground between the parties that the Respondent is and at all times has been the registrant of the disputed domain name and the nature of the use of the disputed domain name has throughout been the same, the Panel finds that the registration was not in bad faith. See, e.g., Greyson International, Inc. v. William Loncar, WIPO Case No. D2003-0805, Finlandia-Uistin Oy v. Juha P. Raatikainen, WIPO Case No. D2007-0570 and SPECS Surface Nano Analysis GmbH v. Rickmer Kose / Domain Name Administrator, PrivacyProtect.org, WIPO Case No. D2010-1173.
Accordingly, as the Policy requires proof of both registration and use in bad faith, the Complainant must fail.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Dated: February 25, 2011