WIPO Domain Name Decision: D2008-1101

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grainger Games Limited v. Tulip Ventures Limited

Case No. D2008-1101

1. The Parties

The Complainant is Grainger Games Limited, Newcastle, United Kingdom of Great Britain and Northern Ireland, represented by Newcastle One Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Tulip Ventures Limited, Hebburn, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <graingergames.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2008. On July 22, 2008, the Center transmitted by email to Tucows Inc. a request for Registrar verification in connection with the domain name at issue. On July 22, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided in contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 30, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniformed Domain Name 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 July 31, 2008. In accordance with the Rules, paragraph 5(a) the due date for Response was August 20, 2008. The Response was filed with the Center on August 20, 2008. The Center appointed Mr. Clive Duncan Thorne as a sole panelist in this matter on August 27, 2008. 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.

4. Factual Background

The following are taken from the Complaint and Response.

The Complainant has operated in the North East of England since 1997. It was incorporated in 2001. The Complainant sells computer games, consoles and related ancillaries from 18 retail outlets across North East England. The Complainant operates an online store at “www.graingergames.co.uk”. It has also registered various other domain names including <graingergames.co.uk>, <graingergames.org> and <graingergames.info>.

Annex 4 to the Complaint is a statement from the managing director of the Complainant who confirms the above. In addition he explains that the name “Grainger Games” was chosen because the first place that the Complainant traded from was The Grainger Market in Newcastle upon Tyne.

In December 2004, the Complainant tried to register the domain name <graingergames.com> but found that it was already registered by the Respondent. The Complainant was rather surprised at this since the company’s head office space was very close by to the address of the Respondent. He believed that the Respondent had registered the domain name in order to profit from it by way of re-selling the domain name since it would not be able to trade as Grainger Games.

According to the Respondent, he registered the domain name without having any knowledge of the Complainant or its company. The domain name was registered in 2003. The Respondent says that he was unaware of the Complainant’s company Grainger Games Limited at the time the domain name was registered. The Respondent states that the reason the domain name was registered was due to the connotations relating to the name “Grainger”. Grainger Town is, according to the Respondent, a place of “huge historical significance” to anyone living in and around Newcastle and is named after Richard Grainger one of the founders of Newcastle. The Respondent’s great grandfather was apparently a very prolific member of the Newcastle community with numerous political and financial ties, who carried out trade within the Grainger area, specifically Clayton Street, and thus the name Grainger “stuck with the Respondent”.

The Complainant at the time of filing of the Complaint did not own a registered trade mark for “Grainger Games”. However it is clear that Grainger Games Limited has traded under the name “Grainger Games” since 1997 in relation to computer games.

There is some conflict as to the evidence of the circumstances leading up to the Complaint. What is accepted as true is that there was contact between the Complainant and the Respondent including in April 2005 an approach by the Complainant to the Respondent for the purchase of the domain name. It is agreed between the parties that the Respondent originally refused to sell the domain name. What appears to have then happened is that upon inquiry by the Complainant the Respondent offered to sell the domain name for (according to the Respondent £9,999.99) and (according to the Complainant £10,000.00).

It is also agreed between the parties that the Respondent’s business has been known as Grainger Games. Although it is not entirely clear from the Complaint and Response it appears that the Respondent has a shop or store.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

The domain name is identical or confusingly similar to a trade mark in which the Complaint has rights. The Complainant relies upon its unregistered trade mark rights and its operation as a trading entity since 1997.

The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent does not appear to have any bona fide offering of goods or services from the disputed domain name.

The domain name was registered and is being used in bad faith. The Complainant relies upon: (a) a retail business operated by the Respondent selling the same products as the Complainant under the name “PSX Games” and (b) an offer to sell the domain name for consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

B. Respondent

The Respondent submits that it had no knowledge of the Complainant when it registered the domain name.

The Respondent alleges it has rights or legitimate interests in respect of the domain name because (a) the domain name was registered for legitimate reasons based upon the historical connotations attached to “Grainger” and (b) the Respondent might well in the future use the name “Grainger Games”.

The Respondent had no intention of selling the domain name and did not register it for that purpose, but it did rather make one counter offer to stop the Complainant’s advances to purchase it.

6. Discussion and Findings

A. Identical or Confusingly Similar

For the reasons set out above the Panel accepts that the Complainant which has been trading since 1997 and online since 2001 under the name “Grainger Games” has acquired unregistered rights in the mark “Grainger Games”. The Complainant has subsequently sought to register “Grainger Games” as a trade mark.

In the Panel’s view for purpose of these proceedings that length of trading is sufficient to establish a trading reputation and goodwill in the name “Grainger Games” and to give the Complainant unregistered trade mark rights.

The only difference between the domain name and the trading name “Grainger Games” is the top level domain “.com”.

It follows that the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights. The Complainant therefore succeeds in relation to this element.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s submission that the Respondent does not appear to have made any bona fide offering of goods or services using the disputed domain name and that the Respondent has never been known as “Grainger Games” or by the domain name. This is not disputed by the Respondent.

The Respondent’s case is that the domain name was chosen because of connotations and associations between Newcastle and the name Grainger. There is no doubt that there is an association between Grainger and “Newcastle upon Tyne”. It appears from the Response that the Respondent wished to have the opportunity to possibly call his business by the name Grainger Games and would then presumably use the domain name for such related purpose. The Respondent concludes:

“In light of what I have said I anticipate the need to set up this website within the next 12 months. When it is set up there will be no confusion with graingergames.co.uk”.

Given the limited record, and facts of this case, for the purpose of the decision the Panel does not, on balance, accept that the Respondent’s choice of the domain name may have been founded upon the associations between Newcastle and “Grainger”, as the Complainant undoubtedly has known rights which stem from its trading under the name Grainger Games in the same locality as the Respondent. Indeed, the Respondent trades in the same goods (video games) as the Complainant, moreover, in the Panel’s view it is insufficient defence for the Respondent to rely upon an alleged entitlement to maintain the domain name for use at some stage in the future. There is no doubt that the Complainant has a current entitlement to use a domain name incorporating Grainger Games arising from its unregistered trade mark rights. Indeed, the Complainant has already registered <graingergames.co.uk> (which has been operating since 2001), <graingergames.org> and <graingergames.info>. The Respondent should have been aware of this.

In these circumstances taking into account that the Complainant has the burden of proof the Panel finds on balance that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in respect of the domain name.

Accordingly, the Panel finds for the Complainant with regard to this element.

C. Registered and Used in Bad Faith

In the Panel’s view there is no doubt that the registration of the domain name by the Respondent conflicts with the Complainant’s rights. Against that there is submission by the Respondent that he registered the domain name based upon the local Newcastle connotations attaching to the name Grainger.

However the Complainant relies upon the offer of £10,000.00 to sell the domain name made by the Respondent in reply to the approach by the Complainant. According to the Respondent an offer of £9,999.99 was in fact made “with a view that it would be refused and deter the Complainant from further approaches”. The Respondent states that it made the offer simply to stop the Complainant’s advances.

Given the limited record, and facts of this case, in the Panel’s view the offer by the Respondent to sell at such a price constitutes an offer to transfer the domain name for consideration in excess of out-of-pocket expenses and on balance, appears to have been made based on the Respondent’s registration of the domain name with the Complainant in mind. It is well-established that this can constitute evidence of bad faith.

The Panel accepts the Complainant’s submission that the Respondent sought to transfer a domain name for a sum in excess of its out-of-pocket costs directly related to the domain name and that this constitutes bad faith. The Panel is supported in its finding by the fact that the Respondent has not used the domain name for the purposes of its own trading, and as stated above, the Respondent was, or should in any event have been aware of the Complainant’s prior rights.

In the circumstances, the Panel finds that the domain name was registered and used in bad faith.

7. Decision

For all the foregoing reasons in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the domain name <graingergames.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: September 11, 2008