WIPO Arbitration and Mediation Center

The Complainant is Guilbert UK Ltd of Guilbert House, Greenwich Way, Andover, Hampshire SP10 4JZ, United Kingdom.

The Respondent is Constant Ltd of 36-38 Harrowby Lane, Grantham NG31 9JA, United Kingdom.

The Domain Name at issue is: <niceday.com>.

The Registrar is: Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on September 29, 2000 [electronic version] and on October 19, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is October 20, 2000.

On October 3, 2000 the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on the same day Network Solutions, Inc transmitted by email to the Center, Network Solutions’ verification response stating that the registrant is "[No Name] (NICEDAY-DOM)" with an address the same as the administrative, technical and zone contact recorded as Stephen Folmer of Constant Ltd. The contact for billing purposes is recorded as Net Names Ltd.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on October 20, 2000 the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by November 8, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Stephen Folmer, Constant Ltd., 36-38 Harrowby Lane, Grantham, Northants, NG31 9JA; Paul Grommeth & Co,

9 Argyll Street, London, W1V 1AB; and to Net Names Ltd, 2 Kendall Place, London, W1H 3AH.

A Response was received from the Respondent on October 28, 2000 [electronic version] and on October 31, 2000 [hard copy]. On October 31, 2000 an Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent by e-mail using the same contact details as were used for the Notification of Complaint and Commencement of the Administrative Proceeding.

Having received on November 10, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was December 3, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4. Factual background

The Complainant is Guilbert Ltd of Guilbert House, Greenwich Way, Andover, Hampshire. The Complainant company was formerly a part of the WH Smith Group and is in the business of stationery supply. In April 1996 it was sold to the French Company, Guilbert. Guilbert already owned Ofrex in the United Kingdom.

The Respondent is Constant Ltd of 36-38 Harrowby Lane, Grantham. It is described in the Response as a single-employee company. Stephen Folmer is both director and sole employee. Constant Ltd was incorporated in 1986 to enable Mr Folmer to supply freelance information technology services.

4.3.1. To clarify the background to the Complainant's trading activities, the Panel has made reference to a publicly available source of information, namely an article in the Daily Telegraph newspaper of April 19, 1996 headlined "WH Smith sells Niceday to rival". The article reads

"WH Smith has built up the Niceday brand - known for its Snoopy Style cartoon dog logo - over five years with small acquisitions."

4.3.2. The Complainant is the registered proprietor of UK Trade Mark No. 1,449,055 for the word mark NICE DAY in Classes 6: 9: 11: 16: 18: 20: 35 and 39 registered with effect from November 30, 1990. The Complainant has a number of other United Kingdom trademark registrations dating from 1990 and 1991.

4.3.3 The Complainant is the registered proprietor of the NICEDAY trade mark also in the following countries.

Country	Registration No	Mark	Classes	Registration Date
Austria	139,620	NICEDAY	9: 16: 20	January 13, 1992
Benelux	499,580	NICEDAY	9: 16: 20	June 21, 1991
France	1,672,913	NICEDAY	9: 16: 20	June 24, 1991
Germany	2,037,289	NICEDAY	9: 16: 20:	July 3, 1991
Greece	106,413	NICEDAY	9: 16: 20	October 24, 1991
Ireland	149,808-810	NICEDAY	9: 16: 20	June 26, 1991
Italy	625,058	NICEDAY	9: 16: 20	July 11, 1991
Portugal	275,057-059	NICEDAY	9: 16: 20	June 3, 1993
Spain	105,014-016	NICEDAY	9: 16: 20	July 24, 1991
Sweden	236,071	NICEDAY	9: 16: 20	June 5, 1992
Switzerland	391,542	NICEDAY	9: 16: 20	June 20, 1991

4.3.4 The NICEDAY trademarks were assigned by WH Smith Ltd to the Complainant on April 18, 1996.

4.3.5 The Complainant changed its former name of WH Smith Business Supplies Ltd to Niceday Ltd on April 11, 1996.

4.3.6 The Respondent registered the domain name in issue on April 30, 1996, just under two weeks after the public announcement of the sale by WH Smith of its NICEDAY business to Guilbert.

The Complainant's case is that the domain name in issue is identical to the NICEDAY trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of that domain name, and that the domain name was registered and is being used in bad faith.

First, the Respondent states that it wished to register a name in the United States for international use and the Complainant has registered NICEDAY neither as a domain name nor as a trademark in the United States. Further, the Complainant has no company in the United States using the NICEDAY name. The Respondent points to a third party company in the United States called NICEDAY "who deal in sanitary napkins and sanitary pads who appear to have either gone into liquidation or abandoned their status …". See letters from the Respondent's solicitors dated November 12 and December 9, 1996.

Second, the Complainant's mark represents no more than conjoining of two common words "nice" and "day".

Third, the Respondent is neither infringing the Complainant's trade marks nor is he passing-off his business as or for that of the Complainant.

The domain name in issue was registered purely for email purposes. But, as a result of a notification from the Complainant, by letter dated April 24, 1997 Network Solutions, Inc advised the Respondent that the domain name in issue was on hold status.

Network Solutions, Inc advised by letter dated March 21, 2000 that they were obliged to implement the Policy with effect from January 1, 2000 and that, unless they were provided with a copy of a Complaint made under the Policy, the domain name would be re-activated on May 2, 2000.

5.2.3.1 First, the Respondent enquired of NetNames, an international internet name registry, on April 9, 1996 whether the domain name niceone.com was available. It was not. The Respondent then asked if constant.com was available. Again, it was not. The Respondent then asked if any domain name with the prefix nice was available.

5.2.3.2 It is stated by NetNames [in a fax and letter which appears to have been sent on November 18, 1996] that on April 27, 1996 they were instructed by the Respondent, Constant Ltd, to register niceday.com and that on April 30, 1996 this was duly registered by NetNames with Network Solutions, Inc. NetNames say that they have no written record of providing the Respondent, with a list of names prefixed with nice. This could have been provided verbally or by email but they have no record.

5.2.3.3 Second, the Respondent denies registering the domain name in issue deliberately knowing of the Complainant's intended use of that name [letter, Respondent's solicitors dated October 17, 1996]. The Panel observes that the NICEDAY mark had been used by the Complainant for some 5 years by the time it was acquired by Guilbert in April 1996.

5.2.3.4 Third, the Respondent in registering the domain name in issue had no intention of causing loss and damage to the Complainant [letter, Respondent's solicitors dated November 6, 1996].

5.2.3.5 Fourth, the Respondent has not offered to sell the domain name in issue to the Complainant for a consideration in excess of its documented out of pocket costs directly related to that domain name. This should, however, be read in the context of a letter from Respondent's solicitors dated May 2, 1997 the relevant portion of which reads

"Our client is quite adamant that there is no question of any passing-off in this case. You seem to be relying upon some sort of a press release that your clients were changing the name but our client had the name before your client decided to change to it. It is your clients who should be paying our client for the name." (emphasis added)

This was preceded by a telephone conversation between Mr Folmer and Mr Colin Martin [formerly, the Complainant's Company Secretary] made on October 9, 1996. Paragraph 5 of Mr Martin's affidavit reads

"5. On or about 9 October 1996 I telephoned Mr Stephen Folmer at Constant Limited to ask him to transfer the Domain Name to Guilbert. Upon conferring with a fellow-director of Constant Limited, Mr Folmer confirmed that they had not used the Domain Name. Mr Folmer stated that if Guilbert UK Ltd wished to purchase the Domain Name then it should make an offer in writing to Constant Limited."

In the Response, Mr Folmer does not deny the telephone conversation with Mr Martin but states

"Consequently, I stalled Mr Martin by inferring that I would have to consult my fellow directors on this matter. Mr Martin gave me his company's address and telephone number so that I could get in touch if our response was favourable."

A later letter from the Respondent's solicitors dated May 5, 2000 - written after the Complainant had put the Respondent on notice by fax and letter of April 27, 2000 of its intention to bring a Complaint under the Policy - reads

"In order that there can be no doubt, our clients emphatically deny that the domain name was purchased for any other use than for the use of e-mails within their business and there is no suggestion that they were in any way attempting to obtain money from your client for the use of the name; indeed, our clients do not wish to sell the name to your clients."

This is repeated in the Response, where Mr Folmer states

"I have never had any intention to profit from its registration, indeed the selection of the name niceday was more related to chance than choice, …Niceday was of particular attraction due to the common phrase Have a Nice Day."

5.2.3.6 Fifth, the Respondent asserts that its bona fide is demonstrated by the fact that his request for the domain name in issue was initiated on April 27, 1996 which precedes a name change from WH Smith Business Supplies Ltd to Niceday Ltd. In any event, the Respondent had no knowledge of any such name change. The Panel notes that the date of the name change is disputed between the parties, the Complainant stating that it took place on April 11, 1996, which was before both the public announcement of the sale by WH Smith to Guilbert and registration of the domain name in issue.

- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The domain name in issue is identical with the Complainant's NICEDAY trademark. The Panel is satisfied that the Complainant has rights in that trademark. For the purposes of this Complaint, the absence of a corresponding trademark and/or trading entity in the United States of America is not relevant to paragraph 4a(i) of the Policy.

Paragraph 4c of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved based upon its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests in the domain name. The Respondent has failed to address any of the circumstances identified in paragraph 4c of the Policy nor to demonstrate any other circumstances which might be relevant. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4a(ii) of the Policy.

6.4.1 Paragraph 4a(iii) of the Policy requires the Complainant to show that the domain name in issue has been both registered and used in bad faith. Paragraph 4b of the Policy sets out circumstances which, 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.

6.4.2 The Evidence

6.4.2.1 The Rules [paragraph 10(d)] prescribes that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. As to use in bad faith, since the domain name in issue was effectively placed on hold by Network Solutions Inc., from April 1997 there does not appear to have been any actual use of the domain name in sense of resolving to a website. But, that of itself [Telstra Corporation Limited v. Nuclear Marshallows Case D2000-0003] is not conclusive of non-use. Passive holding of the domain name can constitute bad faith depending upon the circumstances of the case. The circumstances which apply in this case are summarised below in the Panel's Findings.

6.4.2.2 Despite the Respondent's protestations, it cannot be co-incidental that within a week of the public announcement of the sale by WH Smith of its NICEDAY business to Guilbert the domain name in issue was registered. On the weight of the evidence, the Panel is satisfied that the NICEDAY trade mark was registered and in use in at least the United Kingdom during the 5 years preceding that sale to Guilbert.

6.4.2.3 In the telephone conversation(s) between Mr Martin of the Complainant and Mr Folmer of the Respondent, Mr Folmer of the Respondent - who now describes itself as a single employee company - referred to consulting his fellow-director. The weight of the evidence points to opportunistic registration of the domain name in issue with intent to sell it to the Complainant at a price in excess of the out of pocket expenses directly related to that name. It was only after the Respondent and its solicitors became aware of the Policy, that in May 2000 the Respondent began to deny any intention to sell the domain name in issue to the Complainant at an overvalue.

6.4.2.4 There is no evidence of the Respondent having rights or a legitimate interest in the domain name in issue such as to negate the inference from the evidence that it was registered primarily for the purpose of precluding use by the Complainant of its NICEDAY trademark in its internet business. The Respondent has provided no evidence of any actual or contemplated good faith use by it of the domain name.

6.4.2.5 Despite its protestations, the Respondent has done nothing to demonstrate bona fide either in registration or use of the domain name in issue. In the circumstances, the Panel takes the view that the Complainant succeeds in establishing the dual requirements of paragraph 4a(iii) of the Policy.

For all the foregoing circumstances, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy and accordingly the Panel directs that the domain name niceday.com be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: December 18, 2000