WIPO Arbitration and Mediation Center

The Complainant is GOVIA Limited, 3^rd Floor, 41-51 Grey Street, Newcastle Upon Tyne, Tyne & Wear, NE1 6EE.

The Respondent is Keith Painter, 301 Redford Close, Feltham, Middlesex, TW13 4TH.

The Domain Name is <newsouthernrailway.com>.

The Registrar is Computer Services Langenbach GmbH t/a Joker.com.

The Complaint was received by WIPO by email on March 7, 2002, and in hardcopy form on March 27, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Computer Services Langenbach GmbH t/a Joker.com has confirmed that the domain name newsouthernrailway.com ("the Domain Name") was registered through Computer Services Langenbach GmbH t/a Joker.com and that Keith Painter ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On March 8, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was March 28, 2002.

On March 25, 2002, the Complainant submitted to WIPO by fax the decision of the Nominet expert in the dispute over the ‘.co.uk’ equivalent of the Domain Name. The decision was dated March 21, 2002. The Panel has accepted the late filing because the decision was not available at the date of the Complaint and the Complaint had exhibited to it the parties’ submissions in the Nominet proceeding. Accordingly, the submission was nothing more than the closing off of a line of argument, which the Complainant had already started in the Complaint.

No Response was received and WIPO issued a Response Deficiency Notification on April 2, 2002. The Response Deficiency Notification was sent by email to both the Respondent and the Administrative Contact for the Domain Name. On April 2, 2002, WIPO received returned mail from DHL, being the Notification of Complaint and Commencement of Administrative Proceeding. The returned mail documentation indicates that the communications were correctly addressed and an online search conducted subsequently by the Panel shows that the address is the address appearing for the Respondent on the electoral roll.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO, as a consequence of which the date scheduled for the issuance of the Panel’s Decision was April 25, 2002.

The Complainant is Govia Limited, a company incorporated in England in 1996 to bid for UK rail franchises. To date it has been successful in acquiring two rail franchises, namely Thameslink in 1997 and South Central in 2000.

On May 25, 2000, the Complainant announced a £1.5 billion investment programme as part of its bid for the South Central franchise. A press release at the time made reference to a Stakeholder Board, which would be "a forum for customers to have a voice in the New Southern Railway". The press release also contained references to "The New Southern Railway".

On October 15, 2000, the Respondent registered the Domain Name. On October 20, 2002, the Respondent registered the domain name, <newsouthernrailway.co.uk>.

On October 24, 2000, a press release was issued by or on behalf of the Complainant announcing that the Complainant proposed to brand the service New Southern Railway.

On April 10, 2001, the Complainant’s solicitors wrote to the Respondent informing the Respondent of the Complainant’s rights and seeking transfer of the Domain Name. The Respondent did not reply.

On February 7, 2002, the Complainant lodged a complaint with Nominet in respect of the ‘.co.uk’ domain name.

On March 7, 2002, this Complaint was launched.

On March 21, 2002, the Nominet expert issued a decision ordering transfer of the ‘.co.uk’ domain name to the Complainant.

So far as is known, at no time has the Domain Name been connected to any active internet facility of the Respondent.

The Complainant contends that it has common law trade mark rights in the name New Southern Railway, which it selected for its new service. It claims to have spent £50,000 in promoting the "New Southern Railway bid". It claims that its rights in the name date from May 25, 2000, when it was common knowledge that, if successful in its bid, New Southern Railway would be the selected trading name.

The Complainant contends that the Domain Name (absent the generic domain suffix) is identical to its trade mark, New Southern Railway.

The Complainant contends that so far as it is aware the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not used the Domain Name, is not known by the Domain Name and has not been licensed by the Complainant to use the Respondent’s trade mark as part of the Domain Name or for any other purpose.

The Complainant further contends that the Domain Name was registered in bad faith and is being used in bad faith. It asserts that the Domain Name in the hands of the Respondent takes unfair advantage and/or is detrimental to the Complainant’s trade mark rights on the basis that anyone who consults the ownership record for the Domain Name will believe that the Respondent is in some way associated with the Complainant. The Respondent is thereby damaging the Complainant and causing confusion to members of the public.

The Complainant asserts that the Respondent registered the Domain Name in anticipation of the announcement a few days later that the Complainant had succeeded in its bid and knowing that the Complainant would wish to register the Domain Name. The Complainant contends that the Respondent has made a pattern of this and points to the fact that the Respondent also registered the ‘.co.uk’ equivalent of the Domain Name.

The Respondent has not responded

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).

The Domain Name and the Complainant’s chosen name New Southern Railway are identical, if one ignores, as one is entitled to do for the purpose of Paragraph 4(a)(i) of the Policy, the spaces, the lower case/upper case differences and the generic domain suffix of the Domain Name.

The only real issues under this head are (a) whether or not the Complainant has rights in the name New Southern Railway and (b) the date at which those rights need to have come into existence. Is it sufficient that those rights exist at the date of the decision? Must they have existed at the date of the Complaint? Must they have existed at the date the Respondent registered the Domain Name?

There are no registered rights, so the first issue is as to whether or not the Complainant has common law rights in the name. These will exist within the UK if the Complainant has goodwill in respect of the name, such as to be able to restrain by way of a passing off action a deceptive or potentially deceptive use of that name by a third party.

The necessary goodwill is ordinarily acquired following long and extensive use of the name in question in relation to a trade or business. However, there are exceptions. Depending upon the circumstances, goodwill can be generated very quickly these days by way of mass advertising and promotion. There have even been cases where the unauthorised third party use complained of has preceded first use of the trade mark by the Plaintiff/Complainant. One example, which, on the Complainant’s case, could be relevant here, is the case of Elida Gibbs v. Colgate-Palmolive [1983] FSR 95, a case involving an advertising campaign, where the defendant discovered the plaintiff’s intentions in advance of the launch of the plaintiff’s campaign and used in its own campaign the central theme of the plaintiff’s campaign. The plaintiff succeeded in obtaining an injunction on the basis of passing off. While that decision has been criticised by many commentators, it does illustrate that long and extensive use of the trade mark in question may not be a pre-requisite to the development of sufficient goodwill to found a passing off action. Each case has to be looked at on its merits.

In this case the Complainant has produced next to no evidence as to the use, which it made of the name New Southern Railway at the outset in early-to-mid 2000. Spending £50,000 in support of a bid is not the same as spending £50,000 on promoting a name, unless the bid makes prominent use of the name. The Panel has seen none of the bid documentation. All that we have at the outset is the press release making use of the name, which indicates reasonably clearly that New Southern Railway is more than just a description. The support for that argument is the use of capital letters for the initial letters of the three words comprising the name in the expressions "… a forum for customers to have a voice in the running of the New Southern Railway", "… and an intensive staff training and recruitment drive all feature as main pillars of Govia’s plan for The New Southern Railway", "it will be The New Southern Railway – The Welcoming Network" and "… will include representatives of local authorities, unions and customers who will help to develop plans for The New Southern Railway".

The Panel has seen in the evidence no other use of the name by the Complainant prior to the registration of the Domain Name, save for the results of internet searches conducted by the Nominet expert and published in the Nominet decision ordering transfer to the Complainant of the ‘.co.uk’ equivalent of the Domain Name. The Nominet expert discovered a couple of press reports (pre-dating registration of the Domain Name) making prominent use of the name New Southern Railway and found evidence to suggest that those reports had been repeated widely in other newspapers.

As of to-day (and the Panel uses "to-day" to embrace the early part of 2002 generally) the name New Southern Railway is well known as the name used to describe the Complainant’s successor service to Connex. Accordingly, the Panel is in no doubt that the Complainant had common law trade mark rights in the name New Southern Railway as at the date of the Complaint. If a competitor of the Complainant sought to use the name New Southern Railway in relation to transport services unconnected with the Complainant, the Complainant would almost certainly be entitled to an injunction in passing off.

The wording of paragraph 4(a)(i) of the Policy does not indicate by when the relevant rights must have come into existence, although clearly they must have come into existence as at the date of the Complaint. A complaint, to be a valid complaint, has to assert the existence of the rights. Do they need to be in existence at the date of registration of the Domain Name? Ordinarily, they will by then have come into existence otherwise it may be difficult for the Complainant to prove bad faith on the part of the Respondent, but paragraph 4(a)(i) of the Policy does not expressly require it. The situation exemplified in this case could be one of those rare cases where the bad faith registration of the Domain Name lies not in abusing the rights of the Complainant, but in anticipating the existence of legitimate rights that the Complainant has not yet developed, but is likely to develop.

However, the Panel has concluded on the balance of probabilities that given the terms of the original press release and the results of the research conducted by the Nominet expert and given the likely motives of the Respondent (see below), the Complainant must have acquired the relevant rights by the date the Domain Name was registered. If, as appears to have been the case, newspapers were by then describing the Complainant’s new service as the New Southern Railway, the public would then have recognised the name as being the name of that service. Moreover, the Panel is prepared to accept that some of the Complainant’s investment in the bid will have inured to the benefit of the name and that, notwithstanding the absence at that stage of an active service under the name, the name will have acquired a goodwill.

Accordingly, whether or not the Complainant’s rights need to be in existence at the date of registration of the Domain Name, the Panel finds that in this case the Complainant did have common law rights in the name New Southern Railway at that date and that the Complainant has succeeded in proving the first element.

In the absence of a response, in the absence of any known use of the Domain Name and in the absence of any obvious reason why the Respondent could be said to have any rights or legitimate interests in respect of the Domain Name, the Panel has no alternative but to accept the Complainant’s submissions under this head. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

What can have induced the Respondent to register in October 2000, not just the Domain Name, but also its ‘.co.uk’ equivalent? In the absence of anything from the Respondent it is impossible to be certain. The Panel can only speculate.

A few days after registration of those domain names it was announced to the world that the Complainant, which intended to brand its new service New Southern Railway, had succeeded in winning the franchise. Could it be a coincidence? The Panel does not believe so. The Panel believes that in all probability the Respondent was aware that the Complainant would be likely to win the franchise and that in that event the Complainant would be using the name New Southern Railway for its new service and would be requiring the name as part of a domain name in one or other or both of the most attractive domains for an English company, i.e. the ‘.com’ domain and the ‘.co.uk’ domain. The Respondent will have recognised that the name had a goodwill associated with it and therefore that it had a particular value for the Complainant.

On that basis the Respondent is in all probability likely to have registered the Domain Name with a view to blocking the Complainant and with the ultimate objective of provoking an offer to purchase the Domain Name at a price in excess of the Respondent’s out of pocket expenses. Accordingly, the Panel finds on the balance of probabilities that the Respondent registered the Domain Name primarily with a view to selling it to the Complainant at a profit. Another possibility is that the Respondent registered the Domain Name not with a view to any financial gain, but simply to obstruct the Complainant. The Panel regards this as a less likely possibility, but either way the Respondent’s motive will have been abusive in terms of the Policy.

The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy.

In light of the foregoing findings, namely that the Domain Name is identical to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel directs that the Domain Name, ‘newsouthernrailway.com’ be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: April 15, 2002