The Complainant is Quantum Plus Limited of Warwickshire, United Kingdom of Great Britain and Northern Ireland, represented by Shakespeare Putsman LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Quantum Step of Bangalore, India and QSG Advisory Services Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <quantum-step.net> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2011. On January 5, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 5, 2011, Tucows Inc. 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 January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Response was filed with the Center on January 31, 2011.
The Center appointed David Perkins as the sole panelist in this matter on February 16, 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’s Business
4.A.1 The Complainant was incorporated on December 10, 1999 and commenced trading in early 2000. The Complainant is an independent advisor in relation to outsourcing and insourcing, including the provision of training services relating to the outsourcing process.
Additionally, according to the Complaint, the Complainant has offered services including contract health checks, service provider relationship management, service management, bench marketing, training and vendor management.
Predominantly, the Complainant appears to provide its core business, outsourcing and insourcing, in the United Kingdom of Great Britain and Northern Ireland. However, the Complaint exhibits orders in 2010 from Daimler AG in Germany, Mercedes Benz in France, Daimler SpA in Italy and DHL also in Italy.
The Complainant’s QUANTUM and QUANTUM PLUS trademarks
4.A.2 The Complainant is the applicant for and, as appropriate, the registered proprietor of the following trademark applications and registered trademarks.
|
Country |
Application / Reg. No. |
Mark |
Class(es) |
Date of Application/ Registration< |
|
United Kingdom |
2,528,979 |
QUANTUM |
35 |
Filed: October 16, 2009 Registered: February 12, 2010 |
|
United Kingdom |
2,531,667 |
QUANTUM PLUS |
35, 41 |
Filed: November 13, 2009 Registered: April 9, 2010 |
|
Community Trade Marks (CTM) |
009371337 |
QUANTUM |
35 |
Filed: September 13, 2010 Pending |
|
Community Trade Mark (CTM) |
009371279 |
QUANTUM PLUS |
35, 41 |
Filed: September 13, 2010 Pending |
The Complainant’s <quantumplus.co.uk> domain name
4.A.3 The Complainant registered the domain name <quantumplus.co.uk> on December 9, 1999 and that domain name resolves to the Complainant’s website at “www.quantumplus.co.uk”.
The Complainant’s turnover for the calendar financial years 2000 to 2009
4.A.4 Exhibited to the Complaint are the Complainant’s Annual Report and Accounts for the years ended December 31, 2000 and December 31, 2001 and a schedule of the Complainant’s turnover for the years 2000 – 2009 inclusive:
|
Year |
Annual Turnover |
|
2000 |
GBP 190,932 |
|
2001 |
GBP 1,809,056 |
|
2002 |
GBP 1,906,011 |
|
2003 |
GBP 1,471,824 |
|
2004 |
GBP 2,238,983 |
|
2005 |
GBP 2,115,903 |
|
2006 |
GBP 1,308,494 |
|
2007 |
GBP 944,539 |
|
2008 |
GBP 1,540,241 |
|
2009 |
GBP 1,109,250 |
Advertising and Marketing under the QUANTUM and QUANTUM PLUS trademarks
4.A.5 Exhibited to the Complaint are examples of advertising and marketing material for the years 2002 to 2008, including publications identifying the Complainant. These include:
- Undated advertisement for 3 seminars held between July and September 2003.
- Undated advertisement relating to Awards achieved by the Complainant in 2005 and 2006.
- Extract from the Catalogue of The IT Directors’ Forum: 18-21 May 2005.
- Undated newspaper article “Going out of house risks getting out of control”,
- Undated newspaper sponsored page.
- Article “Don’t keep outsourcing plans from staff, directors warned”, May 23, 2002.
- Undated newspaper article “Just the Job”.
- Undated newspaper article “Keeping Pace with the Corporate Giants” by Daryl Howe, Quantum Plus.
- “Successful outsourcing arrangements” a survey by the Complainant and the Bird & Bird law firm:
IT Adviser July / August 2007.
- Computer Weekly “Pull together outsourcing success” (October 2, 2007).
- Computer Weekly “No need to get squashed” (May 3, 2005).
- Computer Weekly “Planning an Escape Route” (June 7, 2005).
- Computer Weekly “Top four pitfalls for BPO” (March 1, 2005)
- Financial Times “Make up your mind UK” (April 20, 2005).
- Undated Quantum Plus promotional features entitled “Safeguarding SME’s interests” and “Outsourcing on a smaller scale”.
- QUANTEX, a quarterly publication by the Complainant, issues for Spring 2005: Autumn 2006: Winter 2006: Spring 2007 and Autumn 2008.
4.A.6 Also exhibited to the Complaint are invoices relating to marketing activities undertaken by the Complainant over the period 2004 to 2010:
- 20 March 2004: Private Box at Twickenham – England v. Wales
- 5 November 2004: The Motor Sport Sensation Event at Bedford Autodrome
- 10 March 2006: The Motor Sport Sensation Event at Bedford Autodrome
- 25 April 2008: The Palmer Sport Event at Bedford Autodrome
- 6 November 2010: Twickenham – England v. New Zealand
- 12-15 May 2004: IT Directors’ Forum Event
- 18-21 May 2005: IT Directors‘ Forum Event
- 22-25 June 2005: The Retail Forum Event
- 3-6 November 2005: Finance Directors’ Forum Event
- 17-20 May 2006: IT Directors’ Forum Event
- 6.-9 June 2007: IT Directors’ Forum Event
- 4-7 June 2008: IT Directors’ Forum Event
- 17-20 June 2009: IT Directors’ Forum Event
- 13-16 October 2010: IT Directors’ Forum Event
- September 2008: IT Directors’ Strategy Meeting
- September 2010: IT Directors’ Strategy Meeting
- 12-13 October 2004: Outsourcing: maximizing value and minimizing risk
- 26-28 December 2004: Finance Directors’ Forum
- 26-28 September 2004: Finance Directors’ Forum
- February 2009: Full page placement in The Economist
- 13-14 November 2006: The National Outsourcing Associations Annual Outsourcing Summit
- 19-20 November 2007: The National Outsourcing Associations Annual Outsourcing Summit
- 18-19 November 2008: The National Outsourcing Associations Annual Outsourcing Summit
- 1 July 2004 to 30 June 2009: Membership of the National Outsourcing Association
- October 2008: Attendance at the NOA Awards
Industry awards obtained by the Complainant
4.A.7 Exhibited to the Complaint are documents recording the following Industry Awards.
2005 NOA “Outsourcing Advisor of the Year”
2006: NOA joint award “Best Use of Outsourcing by an SME”
2008: Shortlisted for the NOA’s “Outsourcing Advisor of the Year”
Also exhibited are publicity and media coverage of the above, together with the NOA’s Commemorative Brochures of the three events.
The “www.sourcingfocus.com” website
4.A.8 This, the Complainant says, is an outsourcing industry specific website used by professionals in that industry both as a discussion forum for pertinent issues and also as a first resource for outsourcing professionals considering outsourcing arrangements. An exhibit from that website carries 9 articles during the period March 13, 2008 to February 17, 2009 carrying references to the Complainant.
Decision of the Company’s Names Adjudicator
4.A.9 Exhibited to the Complaint is a decision of the Company’s Names Adjudicator dated January 27, 2010 directing the Respondent, which was originally incorporated on April 15, 2009 as Quantum Step Limited, to change to a name which does not offend the Complainant’s company name. That change by the Respondent from Quantum Step Ltd to QSG Advisory Services Ltd was registered on April 9, 2010.
Party & Party correspondence
4.A.10 The Complainant also exhibits correspondence covering the period between September 7, 2010 and December 10, 2010 between solicitors representing the parties to this administrative dispute. In that correspondence, the Complainant asserts trademark infringement and passing-off by the Respondent’s use of, inter alia, the disputed domain name. While denying that the Complainant has trademark rights in the marks QUANTUM or QUANTUM PLUS outside the United Kingdom and asserting that the Respondent only trades as QUANTUM STEP outside the United Kingdom, the Respondent’s solicitors indicated that the Respondent has decided to rebrand using the name “QS Advisory” and is applying to register that mark as a Community Trade Mark.
4.B.1 Originally incorporated on April 15, 2009 as Quantum Step Limited, as noted in paragraph 4.A.9 above the Respondent changed its company name to QSG Advisory Ltd in April 2010.
4.B.2 The disputed domain name was registered in March 10, 2009 in the name of QUANTUM STEP, with an address in Bangalore, India. It appears that the domain name was subsequently transferred to the Respondent, with an address in Ravenscourt Park, London with a Mr. Sridhar Vedala as the administrative and technical contact.
4.B.3 Mr. Vedala and Mr. Vikram Gulati were appointed directors of the Respondent company on April 15, 2009, the date of incorporation. A third director, Mr. Alhousseyn Toure (of German nationality) with an address in France was also appointed a director at the same time. Mr. Vedala gives his address as the same Ravenscourt Park, London address at which the disputed domain name is recorded as registered. The Respondent company has its registered office at Regent Street, London.
Use by the Respondent of the Quantum Step brand
4.B.4 The Respondent states that it was using the Quantum Step brand in both India and in Continental Europe before it first became aware of the Complainant. This was when the Respondent received a “cease and desist” letter from the Complainant’s solicitors dated October 21, 2009. As evidence of its acquired use of the trading name QUANTUM STEP and the disputed domain name, the Respondent exhibits:
- Emails in August 2009 between the Respondent trading as Quantum Step and Handelsbanken of Sweden
- Articles in business.outlook.india.com dated June 13, 2009 and August 8, 2009 containing references to “… Quantum Step, an offshore advisory service that focuses on Continental Europe”
- Articles in the Economic Times of India dated June 17, 2009, July 28, 2009 and September 9, 2009 which refer variously to “outsourcing advisory from Quantum Step”, “offshore advisory firm Quantum Step” and “outsourcing consultancy Quantum Step”
- Evidence of incorporating Quantum Step Consulting Pvt. Ltd in India on December 23, 2009
- An Article in the Economic Times (of India) reporting “… Brussels based advisory firm Quantum Step advising Arcelor Mittal …” of Luxembourg; and
- Turnover for the statutory year ending April 2010 of GBP 242,380.00.
4.B.5 The Respondent also exhibits as evidence of recognition of its global brand “Quantum Step” by what it describes as “tier 1 players in the market”, the following:
- The Agenda for “Off shoring best practice forum” run by the Respondent on October 15, 2010
- The Agenda for a similar forum held on October 25, 2010
- The Agenda for a “Mind tree European Customer Forum,” on May 20, 2010 listing Mr. Vedala as a speaker
- Articles from various publications in 2010 containing reference to Quantum Step
- Emails also in 2010 from major IT providers inviting members of Quantum Step to speak at various meetings and forums and/or to be a panel member, including the “European Innoventure 2010 Conference” on 7-8 October 2010; a presentation to a Strategic Global Sales Team in December 2010 in the Netherlands; and an Analyst & Advisor Site Tour in Bucharest on February 2-3, 2011.
Planned rebranding by the Respondent
4.B.6 As evidence of the Respondent’s intention to rebrand itself as “QS Advisory”, exhibited to the Response are:
- UK Trademark No. 2,543,997 for “QSG” in Clauses 35 and 42, filed on April 8, 2010 and registered on July 9, 2010
- UK trademark No. 2,543,998 for “QS-Connect” in C lasses 35, 41 and 42 filed and registered on the same dates as above; and
- CTM Application No. 009612698 for “QS Advisory” in Classes 35, 41 and 42 filed on December 21, 2010.
The Respondent also states that Internet users now visiting the disputed domain name are notified that “Quantum Step has rebranded into QS Advisory, you are being directed to our new website”.
Identical or Confusingly Similar
5.A.1 The Complainant’s case is that the disputed domain name, which was registered on March 10, 2009, is confusingly similar to its QUANTUM and QUANTUM PLUS trademarks.
5.A.2 First, the Complainant relies on its United Kingdom registrations for both marks, which were respectively filed in October and November 2009 and registered in February and April 2010: paragraph 4.A.2 above.
5.A.3 Second, the Complainant relies on its rights in those marks which have been in constant use since 2000 in its core outsourcing / insourcing consultancy business: paragraph 4.A.4 to 4.A.8 above.
5.A.4 Third, the Complainant registered the domain name <quantumplus.co.uk> in December 1999: paragraph 4.A.3 above.
5.A.5 Fourth, as further evidence of its well-known status in the outsourcing market, the Complainant refers to its Awards from the National Outsourcing Association (NOA) in 2005 and 2006 and being shortlisted for the NOA’s “Outsourcing Advisor of the Year” award in 2008: paragraph 4.1.8 above.
5.A.6 Fifth, the Complainant provides evidence of its activities under the Quantum and Quantum Plus brand in France, Germany and Italy in 2010.
5.A.7 As to likelihood of confusion, the Complainant’s case is that the principal element of its mark, QUANTUM, is identical to the principal element of the disputed domain name. When used in logo form and on the Complainant’s website, the word “quantum” is used in larger type and with greater prominence than the word “plus”.
5.A.8 Use of the suffix “step” in the disputed domain name does not, the Complainant says, distinguish that domain name from its QUANTUM and QUANTUM PLUS trademarks. Both “step” and “plus” are four letter words and, the Complainant says, have a similar “look and feel” to each other. In this respect, the Complainant cites three decisions under the Policy where generic suffixes were held not to distinguish the disputed domain names from the complainant’s trademarks. They are Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 where the disputed domain name was <nokiagirls.com>, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 where the disputed domain names were <stanley-bostitch.com> and others where the complainant had trademark registrations for BOSTITCH and STANLEY dating back to 1920, and The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 where the disputed domain names were <nasdaqexchanges.com>, <nasdaqstockexchanges.com>, <nasdaqstockmarket.com> and <nasdaqamexstockexchange.com>.
5.A.9 The Complainant further cites two examples of actual confusion between the disputed domain name and itself. One is an email from DHL UK to the Complainant of October 19, 2010 forwarding an email received from the Respondent, asking Mr. Clemowe of the Complainant
“John
Is this another of the !Quantum” Group of Companies.”
The second is described as a calendar appointment from an outsourcing service provider to the Complainant dated October 7, 2010 which refers to the Complainant as “Quantum Step”, the Respondent’s trading name. The Complaint also exhibits a list of suggested contacts from the LinkedIn profile of Caroline Mann, a director of the Complainant, which includes the address for Mr. Vedala of the Respondent.
5.A.10 Finally, there is the direction from Company’s Names Adjudicator of January 27, 2010 that the Respondent’s then corporate name, Quantum Step Ltd, was too like the Complainant’s corporate name, Quantum Plus Ltd, and directing a change to a non-offending name (under the Companies Act, 2006, ss. 67 and 69).
Rights or Legitimate Interests
5.A.11 First, by reason of the confusing similarity of its QUANTUM and QUANTUM PLUS trademarks with the disputed domain name, the Complainant asserts that the Respondent’s use of that domain name prior to being put on notice of the Complainant’s rights by its solicitors “cease & desist” letter of September 7, 2010 cannot be regarded as bona fide under paragraph 4(c)(i) of the Policy.
5.A.12 Furthermore, since the change of corporate name from Quantum Step Ltd to QSG Advisory Services Ltd (paragraphs 4.A.9 and 5.A.10 above), the Complainant says that the Respondent now no longer has any reason to use or explanation for use of the disputed domain name.
5.A.13 Nor, the Complainant says following the Change of Name Decision by the Company’s Names Adjudicator, can the Respondent claim to be making a fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers or tarnish the QUANTUM / QUANTUM PLUS trademarks under paragraphs 4(c)(iii) of the Policy. The Complainant says that, so far as it is aware, the name Quantum Plus or any equivalents are not generic terms within the IT, outsourcing or insourcing industry, nor are they used by any other company within those areas.
Registered and Used in bad Faith
5.A.14 The Complaint points to statements on the Respondent’s website that two of its directors, Mr. Vedala and Mr. Gulati, have a considerable number of years of outsourcing experience. As such, the Complainant says that they will have been aware of competitors in that market, including the Complainant which – as illustrated above – has a prominent position in that market. In the circumstances, adopting the trading name, Quantum Step, and the disputed domain name in 2009 can only have been in bad faith.
5.A.15 Given the Complainant’s industry prominence, evidenced by the 2005 and 2006 NOA awards – paragraph 4.A.6 above – the Complainant’s case is that it is just not credible that the Respondent could have been unaware of this before its company was formed in April 2009 and the disputed domain name registered by March 2009.
5.A.16 When the Complainant was shortlisted for the NOA award in 2008, also shortlisted was a Mr. David Downs, Principal Consultant from EquaTerra as “Outsourcing Professional of the Year” and EquaTerra for the award of “Best Practice in Outsourcing”. Mr. Vedala of the Respondent company joined EquaTerra in January 2006 as Director of its Global Outsourcing Advisory Service. Hence, the Complainant believes it is very likely that Mr. Vedala would have been aware of the NOA 2006 shortlist and would have seen its Commemorative Brochure featuring Quantum Plus. This, the Complainant says, is another indication that the Respondent was aware of its business under the QUANTUM and QUANTUM PLUS marks before registration of the disputed domain name in March 2009 and the Respondent’s consequent bad faith when making that registration.
5.A.17 The Complainant also refers to the outsourcing specific website at “www.sourcingfocus.com”: see, paragraph 4.A.7 above. As noted there, during the twelve months preceding registration of the disputed domain name in March 2009 there were 9 articles carrying references to the Complainant. Mr. Vedala of the Respondent must, the Complainant says, have been familiar with that website which between January 2008 and January 2010 carried no less than 41 references to EquaTerra, of which he was a Director. In the circumstances, the Complainant relies on this as another indicia of the Respondent’s bad faith when registering the disputed domain name.
5.A.18 Furthermore, given the Complainant’s visibility on the Internet generally and the level of the experience of Messrs Vedala and Gulati in the outsourcing industry, the Complainant asserts that they can only have registered the disputed domain name without making the most rudimentary Internet searches, since such searches would have alerted them to the existence of the Complainant trading under and by reference to the QUANTUM and QUANTUM PLUS marks.
5.A.19 Finally, the Complainant points to the absence of an “About Us” section on the Respondent’s website, which sections commonly describe the origin of its trading name.
5.A.20 In all the circumstances, the Complainant’s case is the Respondent either knew, or ought to have known, of their trademark rights in QUANTUM and QUANTUM PLUS. In that respect, the Complaint cites the decision on Sembcorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
5.A.21 As to bad faith use, the Complainant asserts that the represent facts fall within paragraph 4(b)(iv) of the Policy. In that respect, the Complainant refers to the Respondent continuing to trade under the “Quantum Step” name in September 2010 (see, paragraph 4.A.10 above) notwithstanding the January 2010 |Decision of the Company’s Names Adjudicator.
5.A.22 The Complainant also refers in that respect of the Respondent’s continued use of QUANTUM STEP notwithstanding the Party & Party correspondence referred to in paragraph 4.A.10 above. For the Respondent to continue to refer to itself as a “sourcing advisory firm headquartered in the UK” is, the Complainant says, further evidence of bad faith use of the disputed domain name.
Identical or Confusingly Similar
5.B.1 The Respondent’s case in relation to the Complainant’s claimed trademark rights is as follows. First, the marks QUANTUM and QUANTUM PLUS are only registered in the United Kingdom. As to the Community Trade Marks, they are presently only applications and must first overcome some 14 prior Class 35 CTMs with the prefix QUANTUM or where QUANTUM features as part of the mark. These comprise:
|
Mark |
Date Filed / Registered |
|
Quantum Energy |
Filed: 27 May 2010 |
|
Quantum Leap |
Filed: 15 April 2010 and registered |
|
*Quantum Step |
Filed: 15 November 2009 but withdrawn |
|
Quantum Entrainment |
Filed: 21 July 2009 |
|
Quantum Rebel |
Filed: 13 May 2009 |
|
Quantum Digital |
Filed: 2 October 2008 and registered |
|
** Quantum Plus |
Filed: 27 December 2007 and registered |
|
Quantum Research Ferraris |
Filed: 14 April 2004 but withdrawn |
|
Quantum Corporation |
Filed: 13 May 2004 and opposed |
|
Quantum Loyalty System |
Filed: 4 December 2003 and registered |
|
*** Quantum |
Filed: 24 February 2003 but withdrawn |
|
Quantum View |
Filed: 11 January 2002 and registered |
|
**** Quantum |
Filed: 26 June 2000 and registered |
|
Quantum Logistics |
Filed: 20 July 21999 and registered |
|
Quantum Courage |
Filed: 10 February 2010 |
|
Quantum |
Filed: 1 April 1996 but withdrawn |
|
Cosmetic Quantum Ray |
Filed: 5 March 2009 and registered |
|
Midas Quantum |
Filed: 19 march 2004 and registered |
As to the asterisked applications and registrations, the position is as follows:
*QUANTUM STEP was filed by the Respondent on 15 November 2009 but has been withdrawn.
** QUANTUM PLUS is registered by Apollo Tyres Ltd in Classes 12, 35 and 37
*** QUANTUM was filed by Ferrari on 24 February 2003 but has been withdrawn
**** QUANTUM is registered by MBNA America in Classes 35, 36, 39, 41 and 42.
5.B.2 In the light of the above, the Respondent observes that the number of prior applications and registrations demonstrates that it is common for companies to use “Quantum” with an additional word as a suffix and, therefore, they say that the Complainant’s trademark rights in the European Union (outside the United Kingdom) are uncertain. The Complainant’s CTM applications were not filed until September 13, 2010: see, paragraph 4.A2 above.
5.B.3 As to the Complainant’s claim that its QUANTUM marks are used in Continental Europe, the Respondent points to the only examples referred to in the Complaint being as late as 2010, namely after registration of the disputed domain name: see, paragraph 4.A.1 above.
5.B.4 Furthermore, the marketing activities and publications relied upon by the Complainant as evidence of use of its QUANTUM marks since it commenced business are all limited to the United Kingdom,: see, paragraphs 4.A.5 and 4.A.6 above.
5.B.5 The Respondent also observes that the Complainant is described in the NOA literature exhibited to the Complaint (see, paragraph 4.A.7 above) as “… one of the UK’s leading independent sourcing advisors”, with no mention of activities outside the United Kingdom.
5.B.6 The Respondent further points to the Complainant’s own promotional materials which describe it as “an independent UK advisory”.
5.B.7 Finally, the Respondent observes that the promotional and marketing events listed by the Complainant (see, paragraph 4.A.6 above) feature only United Kingdom activities.
5.B.8 In sum, the Respondent’s case appears to be that the Complainant can only claim trademark rights for the QUANTUM and QUANTUM PLUS marks in the United Kingdom.
5.B.9 The Respondent’s case is also that the disputed domain name is not confusingly similar to those trademarks. This is for the following reasons. First, that the only evidence of use of those marks by the Complainant is of QUANTUM PLUS, not QUANTUM simpliciter. Accordingly, the Respondent says that the appropriate comparison for the purpose of paragraph 4(a)(i) of the Policy is QUANTUM PLUS with QUANTUM STEP.
5.B.10 Second, the Respondent says that the combination in the disputed domain name of the two words QUANTUM and STEP has a distinct meaning and is designed to convey a specific meaning. That is that it equates QUANTUM STEP with QUANTUM LEAP indicating that the future – in terms of a “sudden large increase or advance” being the definition of QUANTUM LEAP in the OED - is global outsourcing. In other words, the Respondent’s outsourcing services can assist clients to reach the next level of outsourcing, namely global outsourcing. The Respondent says that its first choice for a domain name was FUTURE STEP but, because that name was not available, they chose QUANTUM STEP as indicating the message they wanted to convey, namely a “significant step / initiative”. By comparison, the Respondent says, the Complainant’s QUANTUM PLUS does not convey the same message and has no such meaning.
5.B.11 As to the Nokia case cited by the Complainant (see, paragraph 5.A.8 above), the Respondent says it is readily distinguishable from this case on the facts. There, Nokia was such a well-known trademark that addition of “Girls” could clearly not serve to distinguish it. By contrast, the Respondent exhibits the results of a Google search against the word QUANTUM which fails to make reference on the first page to the Complainant. In fact, it refers to
- www.quantum.com, which provides backup, recovery and archive;
- www.quantumpeople.com an Edinburgh based staff recruitment consultancy;
- www.quantumcars.co.uk, a British sports kit car;
- www.quantumestateagency.com; and
- www.quantumtm, a specialist B2B direct marketing agency
5.B.12 The Respondent also exhibits results from a Google Search against the words QUANTUM and “Outsourcing” which the Respondent says evidences that QUANTUM is a word commonly used in the outsourcing industry. It is not, the Respondent says, strongly associated with the Complainant’s QUANTUM PLUS brand. In this respect, the Respondent points to the following references in the search:
- Technological change demands a quantum leap
- In extreme situations of uncertainty, there are likely to be fundamental and unpredictable changes, perhaps even quantum change
- A firm which wishes to undertake a case-by-case evaluation of projects based on their inherent potential for outsourcing. … The eighteen sub-criteria have been listed as: Quantum of Coding
- Is the organization occupying the right quantum and quality of space in the right place at the right price …?
- Outsourcing allowed us to get out of low value-added administrative work and become more strategic. … But, with our change in focus, our performance with the organization has taken a quantum leap.
5.B.13 The Respondent then cites Case C251/95 Sabel BV v. Puma AG Rudolf Dasller Sport (1997) OJ OHIM 1/98 in relation to the test of likelihood of confusion, highlighting the passage which reads:
“… the two signs must be compared in their entirety and the comparison must not be confined to their individual {(characterizing) elements.
As noted above, the Respondent contends that the mark QUANTUM PLUS and the words QUANTUM STEP in the disputed domain name convey quite dissimilar messages.
5.B.14 As to the evidence of a likelihood of confusion arising from the LinkedIn networking site (paragraph 5.A.9 above), the Respondent has two answers. First, that a Google search of “Quantum and Outsourcing” reveals only one LinkedIn reference, which is to a company called “Quantum Outsource” described as “an outsourcing and business improvement consultancy. The administrative outsourcing function provides clients with outsourced professional services”. Second, the Respondent says that LinkedIn works on the basis of automated word matching. From the CTM and Google searches (respectively, paragraphs 5.B.1 and 5.B.11) it appears that QUANTUM is used as a corporate and/or brand name by a variety of companies, not only those in the business of outsourcing. Consequently, the fact that Mr. Vedala (of the Respondent) is listed in Ms Mann’s (of the Complainant) LinkedIn profile cannot constitute evidence of confusing similarity between QUANTUM PLUS and QUANTUM STEP.
Rights or Legitimate Interests
5.B.15 Here, the Respondent relies on paragraphs 4(c)(i) to (ii) of the Policy. In that respect, the Respondent states that at the time when the disputed domain name was created (namely, March 10, 2009) it had no knowledge of the Complainant. Further, that the Respondent was legitimately operating under that domain name in India and in Continental Europe (outside the United Kingdom) before first being put on notice of the Complainant’s claimed rights in their solicitors’ letter of October 21, 2009. In that respect, the Respondent points to the emails and articles which predate that letter listed in paragraph 4.B.4 above.
5.B.16 The Respondent relies on the same evidence as an indication that it is commonly known by the disputed domain name: paragraph 4(c)(ii) of the Policy.
5.B.17 The Respondent explains that the only reason for incorporating the Respondent Company in the United Kingdom was that Mr. Vedala and Mr. Gulati were based in London. Because they saw the United Kingdom outsourcing market as being already very crowded at that time (April 2009), the target for the Respondent’s activities was only Continental Europe and India. The Respondent points in that respect to incorporation of Quantum Step Consultancy Pvt. Ltd in India on December 22, 2009 and to the report of its work for Arcelor Mittal in Luxembourg (see, again paragraph 4.B.4 above).
5.B.18 Further evidence of the Respondent being commonly known as QUANTUM STEP is apparent, the Respondent says, from its recognition in the outsourcing market by “tier 1 players” in that market: see, (paragraph 4.B.5 above).
5.B.19 Notwithstanding the Respondent’s decision to rebrand as “QS Advisory” (paragraph 4.B.6 above), the Respondent says that it is quite legitimate to continue to use the disputed domain name to direct customers to its new website.
5.B.20 Because the Respondent’s business is directed only to India and to Continental Europe, the Respondent says that there is no intention to misleadingly divert the Complainant’s customers. The Complainant has no clients in those geographical areas and, hence, the Parties are providing their respective services to a different client base. Consequently, the Respondent says that its use of the disputed domain name is a fair use under paragraph 4(c)(iii) of the Policy.
5.B.21 As to paragraph 5.A.13 above, the Respondent refers to a United Kingdom company offering outsourcing activities from its website at www.quantumoutsource.co.uk. Hence, according to the Respondent, there is – contrary to the Complainant’s case – another company in the United Kingdom outsourcing industry using QUANTUM as part of its domain name. From the Panel’s own research, it is to be noted that the domain name <quantumoutsource.co.uk> appears to have been registered by a Belfast Company, Level Seven, on July 21, 2009.
Registered and Used in bad Faith
5.B.22 The Respondent denies that the disputed domain name was registered in bad faith. For example, the Respondent says that it searched at the website “www.completeformations.co.uk”. This disclosed a large number of companies registered at Companies House using “Quantum” as part of the company name, but none using the name “Quantum Step Limited”.
5.B.23 As a further indication of the Respondent’s ignorance of the Complainant, exhibited to the Response is “Sourcing Advisors Industry Report” for 2008. That Report, which the Respondent says details many top outsourcing firms, makes no mention of the Complainant.
5.B.24 Despite having previously come from top tier outsourcing firms, such as EquaTerra and TPI – both of which are referred to in the 2008 Report as “High Performers” – the Respondent says that its founders had no knowledge of the Complainant when the disputed domain name was created in March 2009. This is, the Respondent says, not surprising, since the Complainant is a small (10 employees) United Kingdom company with a local United Kingdom focus.
5.B.25 As to the Complainant’s NOA awards (paragraphs 4.A.6 and 5.A.5), the NOA is a United Kingdom based association and the Respondent says that Mr. Vedala was quite unaware of it. It does not follow, the Response says, that because Mr. Vedala was an officer of EquaTerra and that EquaTerra was nominated for a NOA award, he knew about that nomination.
5.B.26 As to paragraphs 4.A.7 and 5.A.17, the Respondent denies any knowledge of the industry website “www.sourcingfocus.com”.
5.B.27 As to the Complainant’s assertion that it is well-known and visible on the Internet (paragraph 5.A.18), the Respondent says that Google searches for “Quantum Providers” and “Outsourcing and consultancy providers” do not reveal the Complainant in the first 10 pages of search results. When the word “Quantum” is typed in QUANTUM PLUS first appears on page 6 of the Google search result. In the circumstances, the Respondent’s case is summarized as follows:
- When the disputed domain name was registered in March 2009 the Respondent had no knowledge of the Complainant
- It is clear that the sphere of the Complainant’s activities was at that time limited to the United Kingdom, which was not a target area of interest to the Respondent
- Only if one is searching specifically for QUANTUM PLUS will the Complainant’s existence be revealed by basic Google searches; and
- Consequently, there cannot be any inference of bad faith in relation to registration of the disputed domain name.
5.B.28 The Respondent says that it also follows from the above that there has been no bad faith use by them of the disputed domain name. The continuing use of that domain name for customers in India and Continental Europe is legitimate, since the Complainant neither trades there nor has any trademark rights in those territories. The incorporation of the Respondent in the United Kingdom was, as explained in paragraph 5.B.17 above, solely for the convenience of two of its founders. Further, the Decision of the Company’s Names Adjudicator has no bearing on the Complaint, since the Respondent is not trading in the United Kingdom. The references to the Respondent being a “sourcing advisory firm headquartered in the UK” (paragraph 5.A.22) were not, the Respondent says, written by them and, consequently, cannot be evidence that the Respondent is representing itself as trading in the United Kingdom.
5.B.29 There can, the Respondent says, be no attempt by them to attract Internet users by creating a likelihood of confusion with the Complainant and its QUANTUM and QUANTUM PLUS marks such as to fall within paragraph 4(b)(iv) of the Policy. This is because the Respondent is, it asserts, already well established and well-known in the outsourcing industry. To evidence this, the Respondent exhibits a Paper it published in 2010 entitled “Global Sourcing. Opportunities and Challenges for Europe”, which contains articles contributed by authors from leading companies in the industry. For example, Accenture, Capgemini: HCL: Infosys: Wipro and Tata. Such market leaders would hardly, the Respondent says, want to associate themselves with a brand deliberately attempting to attract custom by causing confusion with a competing brand.
5.B.30 Finally, notwithstanding its decision to rebrand to QS Advisory, the Respondent contends that, for all the reasons set out above, it should entitled to retain the disputed domain name.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has registered trademark rights in the marks QUANTUM and QUANTUM PLUS dating from the United Kingdom applications of October and November 2009 respectively.
6.6. The Complainant has also provided documentary evidence of use of the QUANTUM PLUS trademark in the United Kingdom from at least 2002 onwards in connection with the provision of outsourcing advice and that the Company commenced trading under that name in 2000. Although it is a relatively small company, which can be seen from the annual turnover figures (paragraph 4.A.3) and from its current staff of 10 people, it would appear to have been successful and to have become quite well-known at least in the domestic United Kingdom market: see, for example, the NOA awards obtained in 2005 and 2006 referred to in paragraph 4.A.6.
6.7 As to business conducted outside the United Kingdom, exhibited to the Complaint are documents indicating activity in France, Germany and Italy in 2010. It is not known to what extent, if any, the Complainant was active in Continental Europe before that date and had established a reputation under its QUANTUM and QUANTUM PLUS marks. However, for the purposes of paragraph 4(a)(i) of the Policy, the Panel is satisfied that the Complainant had established common law trademark rights at least in the United Kingdom in relation to the provision of outsourcing services well before its United Kingdom trademark applications were filed in the Autumn of 2009.
6.8 The fact that the Complainant’s CTM applications for QUANTUM and QUANTUM PLUS remain pending and face a number of prior CTM applications and registrations using the word QUANTUM (which are set out in paragraph 5.B.1 above) is not relevant to the Complainant’s existing rights in those marks.
6.9 As to likelihood of confusion, it is well established by decisions under the Policy that the test is not one of trademark infringement. It is a low threshold test, the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint and involves a simple comparison of the mark relied upon with the disputed domain name: Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 at paragraph 6.6 of the decision. Referring to two earlier decisions, the very experienced three member panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 applied the following approach:
“Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is “confusingly similar” to the mark”.
That approach has also been applied by another distinguished panelists, including the LURPACK case Mejeriforeningen Danish Dairy Board v. Cykon Technology Ltd, WIPO Case No. D2010-0776.
6.10 Consequently, it is not appropriate to apply the trademark infringement test and the Respondent’s reference to the Sabel v. Puma decision of the European Court of Justice should be viewed in that light. However, the Respondent also submits that QUANTUM is a frequently used mark for activities falling within, inter alia, Class 35 (see, paragraph 5.B.1), such that the additional suffix is commonly the distinguishing element. In that respect the suffixes PLUS and STEP are quite different. The Respondent’s explanation for what it intends QUANTUM STEP to convey is summarized in paragraph 5.B.10 above.
6.11 The Complainant’s case is to the contrary, namely that PLUS and STEP are both 4 letter words and have the same look and feel. QUANTUM is the dominant element of both the QUANTUM PLUS mark and of the disputed domain name. The suffixes are merely generic words and should, therefore, be discounted when assessing confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. Although on the facts, the Panel is not assisted by the three decisions under the Policy cited by the Complainant (see, paragraph 5.A.8 above), the Panel takes the view that the Complainant’s trademarks and the disputed domain name are sufficiently proximate to be confusingly similar.
6.12 That view is reinforced by the two instances of actual confusion documented in the Complaint (paragraph 5.A.9) and the decision of the Company’s Name Adjudicator (paragraphs 4.A.8 and 5.A.10). The test under the Companies Act 2006 s.67 is whether one corporate name is “too like” another. Section 69 provides that the objector must show that the later registered company name is sufficiently similar to its prior registered name that its use in the United Kingdom “would be likely to mislead by suggesting a connection between the company and the applicant”. The Company’s Names Adjudicator’s Decision was that Quantum Step Limited was likely to mislead.
6.13 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.14 The nub of the Respondent’s case is that until receipt of the “cease and desist” letter of October 21, 2009 from the Complainant’s solicitor the Respondent was unaware of the Complainant and its trademarks. By that time, the Respondent says it was already trading using the disputed domain name as evidenced by articles appearing in Indian publications (namely, business.outlook.india.com and the Economic Times of India) in June 2009 and email correspondence with Handelsbanken, Sweden in August 2009. When incorporating the Respondent company in April 2009 a search of companies registered in the United Kingdom was undertaken. Many companies including the word “quantum” were revealed but none registered as QUANTUM STEP. Furthermore, because the focus of its business was Continental Europe – not the United Kingdom which was already a very crowded market for outsourcing – and India, the Respondent says it is quite natural that it was unaware of the Complainant and its purely United Kingdom centered business.
6.15 As against that, if the United Kingdom was at that time “a very crowded market”, presumably those responsible for establishing the Respondent had surveyed that market. After all two of the founders, Mr. Vedala and Mr. Gulati had considerable previous experience in the global outsourcing market and both were based in London. Furthermore, the Complainant had registered its own domain name <quantum.co.uk> in December 1999, had been trading since 2000 and had obtained outsourcing industry awards in 2005 and 2006.
6.16 While the Respondent’s claimed ignorance of the NOA and the industry website at www.sourcingfocus.com (paragraphs 5.B.25 and 26), the Respondent fails to comment on the various publications (such as the magazine Computer Weekly) identifying the Complainant over the period 2002 to 2008 (listed in paragraph 4.A.4). Furthermore, Mr. Vedala was a director of the outsourcing enterprise, EquaTerra, at the time that company was shortlisted for the NOA’s “Best Practice in Outsourcing” Award in 2008 (paragraph 5.A.16). In the circumstances, for the Respondent to deny knowledge of the NOA could, perhaps, be regarded as stretching credulity.
6.17 Although relatively small, it seems clear from the evidence submitted with the Complaint that by April 2009 when the Respondent company was registered and the disputed domain name created, the Complainant had established a real presence in the United Kingdom outsourcing market over the period beginning in 2000. The Panel has found that by that time the Complainant had established rights in the QUANTUM PLUS trademark and that the disputed domain name is confusingly similar with that mark. In the circumstances, what little use the Respondent had made of the disputed domain name before being put on notice of this dispute in October 2009 cannot properly be said to constitute a bona fide offering of its outsourcing services. Accordingly, the Respondent cannot bring itself within paragraph 4(c)(i) of the Policy.
6.18 Furthermore, such use was certainly not “noncommercial”. Nor, in the circumstances, can it be said to have been “fair”. Consequently, the evidence is not such as to bring the Respondent within paragraph 4(c)(iii) of the Policy.
6.19 As to paragraph 4(c)(ii) of the Policy, the Respondent may have become commonly known by the disputed domain name – the Respondent points to its 2010 Paper (Paragraph 5.B.29) – but only as a result of its unauthorized use of the Complainant’s QUANTUM PLUS mark.
6.20 As to the third party domain name <quantumoutsource.co.uk> (referred to in paragraph 5.B.21), as noted that the domain name was not registered until July 21, 2009 well after the Complainant registered its own domain name <quantumplus.co.uk> in December 1999 (paragraph 4.A.3) had begun trading in 2000 (paragraph 4.A.4) and had received the NOA Awards in 2005 and 2006.
6.21 In the light of the forgoing, the Panel takes the view that, on the preponderance of the evidence, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.22 The Parties’ contentions are respectively summarized above in paragraphs 5.A.14 and 5.A.22 for the Complaint and 5.B.22 to 5.B.30 for the Response. In the Panel’s view the following possibilities arise to be considered. Were the founders of the Respondent, contrary to what is said in the Response, actually aware of the Complainant at the time of incorporating the Respondent and registering the disputed domain name? Were the searches they made prior to adopting the name QUANTUM STEP adequate? For example, the Complainant’s domain name <quantumplus.co.uk> was registered as early as December 1999 and their website was active well before March / April 2009. For example, from the way back machine archive it appears that the website was in use from as early as April 2001 (“www.waybackmachine.org”). Or, did the founders mistakenly believe that because the main targets for their business would be outside the United Kingdom and that the Complainant’s sphere of business was local only to the United Kingdom, that adoption and use of QUANTUM STEP would be unobjectionable either as a company name or as a domain name?
6.23 Also to be considered, in the Panel’s view, are the decisions in Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc. / Rich Sanders and Octogen e-solutions, WIPO Case No. D2009-0786 and Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001. In those cases the Panel pointed to the representation made by the registrant under paragraph 2 of the Policy. In material part that representation reads:
“By applying to register a domain name … you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; … and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.
6.24 In Octogen it was held that this provision not only imposes a duty on the registrant to conduct an investigation of third party trademark rights at the time of registration … “but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations”. Consequently, the panelist in the Octogen case found that even though a party may register or acquire a domain name in good faith, if it uses the domain name in the future so as to call into question the party’s compliance with his representations and warranties under paragraph 2 of the Policy, this may provide basis for a finding of registration and use in bad faith.1
6.25 How does this apply to the instant administrative action? This Panel is of the view that, applying the Octogen and Jappy line of decisions – which were applied, inter alia, in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 – if the evidence here demonstrates circumstances falling within paragraph 4(b)(iv) of the Policy, then the Respondent’s continued use of the disputed domain name constitutes evidence of bad faith registration and use. As to that, while the Respondent denies an intention to create a likelihood of confusion, with the Complainant’s QUANTUM and/or QUANTUM PLUS marks, the Complainant has exhibited evidence of actual confusion (see, paragraph 5.A.9). That, taken with the Panel’s findings under paragraphs 4(a)(i) and (ii) of the Policy and the Respondent’s intention to continue to use the disputed domain name notwithstanding being put on notice of the Complainant’s rights in October 2009, the decision of the Company’s Names Adjudicator in January 2010 and the Respondent’s decision to rebrand as “QS Advisory”, in the Panel’s view evidences an intention to create a likelihood of confusion. In the circumstances, the Panel finds the Respondent is acting in bad faith within the meaning of paragraph 4(b)(iv) of the Policy and that the Complaint consequently meets the requirements of 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 <quantum-step.net> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: March 3, 2011