The Complainants are London Court of International Arbitration (LCIA) of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); International Chamber of Commerce (ICC) of Paris, France; Singapore International Arbitration Centre (SIAC) of Singapore; Arbitration Institute of the Stockholm Chamber of Commerce (SCC) of Stockholm, Sweden; American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) of New York, United States of America, represented by Freshfields, Bruckhaus, Deringer, United Kingdom. For the purposes of this decision each of the Complainants will be referred to by their acronyms as indicated above.
The Respondent is ICSID Lawyers, LLC of Charlestown, Saint Kitts and Nevis, represented internally.
The disputed domain names <aaaarbitrations.com>, <difclcia.com>, <iccarbitrations.com>, <icdrarbitration.com>, <icdrarbitrations.com>, <internationalchamberofcommercearbitration.com>, <internationalchamberofcommercearbitrations.com>, <lciaarbitration.com>, <lciaarbitrations.com>, <lciamiacarbitration.com>, <londoncourtofinternationalarbitration.com>, <londoncourtofinternationalarbitrations.com>, <sccarbitration.com>, <sccarbitrations.com>, <siacarbitration.com>, <siacarbitrations.com> and <stockholmarbitration.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 12, 2013, the Registrar 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 April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Response was filed with the Center on May 13, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 31, 2013. 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.
It has also been necessary to extend the due date for the decision by a brief period to the date indicated under section 7 below.
The London Court of International Arbitration, commonly known as the LCIA, was established in 1892 in London. Since its establishment it has provided arbitration and commercial dispute resolution services to various private parties, both within the United Kingdom and overseas. The LCIA extensively promotes itself under the names London Court of International Arbitration and LCIA.
The LCIA holds a registered trade mark for the acronym “LCIA” (the “LCIA Mark”) which was registered on March 25, 2009 in the United Kingdom.
In February 2008, the LCIA entered into an agreement with the Dubai International Financial Centre Authority (DIFCA) and Dubai Arbitration Centre for the purposes of opening and operating an arbitration centre known as the DIFC-LICA Arbitration Centre.
In July 2011, the LCIA entered into an agreement with the Government of Mauritius and the Mauritius International Arbitration Centre Limited (MIAC) for the purposes of opening an operating an arbitration centre known as the LCIA-MIAC Arbitration Centre.
The International Chamber of Commerce, commonly known as the ICC, was established in 1920 in Paris. It has three main activities, being rule-setting, dispute resolution and policy advocacy. In 1923 the ICC established the International Court of Arbitration. Through the International Court of Arbitration the ICC provides private international commercial arbitration services. The ICC has administered over 19,000 arbitration cases involving parties and arbitrators from over 180 countries and territories.
The ICC has registered a number of trade marks for its services. In particular, the ICC holds a registered trade mark for the acronym “ICC” (the “ICC Mark”) which was registered on July 23, 2007 in the European Union. The ICC also holds a registered trade mark for the word-mark “INTERNATIONAL CHAMBER OF COMMERCE” (the “INTERNATIONAL CHAMBER OF COMMERCE” Mark). The “INTERNATIONAL CHAMBER OF COMMERCE” Mark has been registered in numerous jurisdictions in particular the European Union, where it was registered on August 20, 2008.
The Singapore International Arbitration Centre, commonly known as the SIAC, was established in 1991 in Singapore. Its purpose was to provide an efficient, reliable dispute resolution institute in Asia. The SIAC maintains an international panel of 340 independent arbitrators who provide services in SIAC arbitrations. The SIAC maintains a website at “www.siac.org.sg” which was registered on 16 July 1999 and prepares and distributes numerous publications and marketing materials, which normally use the acronym “SIAC” to describe the SIAC.
The Arbitration Institute of the Stockholm Chamber of Commerce, commonly known as the SCC, was established in 1917 in Stockholm. The SCC is a division of the Stockholm Chamber of Commerce and provides arbitrations and dispute resolution services. In particular the SCC has specialized in disputes involving investment treaties.
The SCC maintains a website at “www.sccinstitute.com” and owns a number of other related domain names, including <sccinstitute.se>, <stockholmchamber.com> and <arbitrationinsweden.com>. The SCC has prepared publications and marketing materials for the purpose of advertising its services, including practitioner, academic and legal texts, all of which make reference to the SCC as the “SCC” and the “Arbitration Institute of the Stockholm Chamber of Commerce”.
The American Arbitration Association, commonly known as the AAA is a not-for profit organization with offices in the United States, Singapore, Bahrain and Mexico City. It maintains an international division, the International Centre for Dispute Resolution, commonly known as the ICDR (collectively the AAA/ICDR). The AAA/ICDR was founded in 1926. In 2012, tens of thousands of commercial disputes were submitted to the AAA, with nearly 1000 submitted to the ICDR.
The AAA/ICDR has registered a number of trade marks for its services. In particular, the AAA/ICDR holds a registered trade mark for the acronym “AAA” (the “AAA Mark”) which was registered on July 19, 2005 in the United States and the INTERNATIONAL CENTER FOR DISPUTE RESOLUTION (the “INTERNATIONAL CENTER FOR DISPUTE RESOLUTION” Mark), registered on June 25, 2002 in the United States. On November 5, 2012 it applied to register ICDR as a trade mark in the United States. The AAA/ICDR also prepares and distributes substantial marketing materials which are branded with “ICDR”, the AAA Mark or INTERNATIONAL CENTER FOR DISPUTE RESOLUTION Mark.
The Respondent is a law firm that specializes in international arbitration matters. Its principal is Eric Rabkin, who is the authorized representative of the Respondent as well as the administrative and technical contact for the Domain Names. The Domain Name <difclcia.com> was registered on March 24, 2011. The Domain Name <lciamiacarbitration.com> was registered on July 28, 2011. The Domain Name <stockholmarbitration.com> was registered on June 3, 2010. The remaining Domain Names were all registered on 16 May 2010.
The Domain Names, <lciamiacarbitration.com>, <lciaarbitration.com>, <lciaarbitrations.com>, <londoncourtofinternationalarbitration.com>, <londoncourtofinternationalarbitrations.com>, and <difclcia.com> formerly linked to a website maintained by the Respondent at “www.icsidlawyers.com” (the “Respondent’s Website”) but following a cease and desist letter sent by the LCIA, now are inactive. The remaining Domain Names link to the Respondent’s Website, which promotes the Respondent and its legal services.
For the purposes of this decision all of the marks that are claimed to be owned by the Complainants will collectively be known as the “Complainants’ Marks”.
The Complainants make the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainants’ Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of any of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The ICC is the owner of the ICC Mark which was registered on July 23, 2007 in the European Union and the INTERNATIONAL CHAMBER OF COMMERCE which registered on August 20, 2008 in the European Union.
The LCIA is the owner of the LCIA Mark which was registered on March 25, 2009 in the United Kingdom. The SCIA has unregistered trade mark rights in “SCIA” (the “SCIA Mark”). The SCC has unregistered trade mark rights in “SCC” (the “SCC Mark”) and “Arbitration Institute of the Stockholm Chamber of Commerce” (the “ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark”). Finally the AAA/ICDR is the owner of the AAA Mark which was registered on July 19, 2005, and the INTERNATIONAL CENTER FOR DISPUTE RESOLUTION Mark which was registered on June 25 2002. The AAA/ICDR also has unregistered rights in “ICDR” (the “ICDR Mark”).
Each of the Domain Names incorporates one of the Complainants’ Marks. The addition of the descriptive word “arbitration” in some of the Domain Names does not distinguish the Domain Names from the Complainants’ Marks. Furthermore the presence of a disclaimer on the Respondent’s Website does not prevent a finding that the Domain Names are confusingly similar to the Complainants’ Marks. Each of the Domain Names will confuse Internet users into believing that the Respondent is somehow connected with one of the Complainants.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names, nor does the Respondent have any authorization from the Complainant to register the Domain Names. Rather the Respondent is known by and offers its services under the name ICSID Lawyers and uses the Domain Names to divert Internet users to the Respondent’s Website. The effect of the Domain Names is to confuse members of the public into believing that the Complainants have authorised the Respondent to register and use the Domain Names and there is an affiliation or endorsement relationship. The misleading use of another’s trade mark rights to divert Internet Users to a commercial website cannot be in connection with a bona fide offering of goods. For that reason the Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate noncommercial or fair use of the Domain Names.
The Domain Names were registered and are being used in bad faith. The Respondent was aware of the Complainants at the time of the registration of the Domain Names, being a lawyer specialising in international arbitration. Furthermore the Respondent has engaged in a pattern of such conduct, being named as a Respondent in a prior UDRP Proceeding and publishing articles about its search engine optimisation practices. The Respondent’s practices are done for its commercial benefit and cause harm to the Complainants. In particular the Domain Name <lciamiacarbitration.com> was registered on July 28, 2011, the date the agreement for the establishment and operation of the LCIA-MIAC Arbitration Centre was entered into. This conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent upon receiving the Complainants’ letter on August 23, 2012, ceased redirecting the identified Domain Names to the Respondent’s Website. Furthermore the Complainants fail to note that the Respondent’s Website contains links to each of their websites, so any argument about the diversion of traffic is incorrect, rather the Respondent actually promotes their services.
The Complainants have failed to establish trade mark rights in respect of all 17 Domain Names that are the subject of this proceeding, and in particular have failed to set up any basis to find that the Domain Name <stockholmarbitration.com> is confusingly similar to any mark held by any Complainants. Furthermore they have failed to make submissions on the confusing similarity of each of the 17 Domain Names that are the subject of this proceeding. The Complainants note the rights of MIAC Ltd or DIFCA however they have no right to assert these rights as neither of these entities are party to the present proceeding.
The Complainants have failed to show that the Respondent has used the Domain Names, or offers services in a class for which a Complainant has registered its Marks. Furthermore they have provided insufficient evidence in support of their claim for unregistered trade mark rights held by the SIAC, SCC and ICDR.
The Respondent is a law firm, not an arbitral institution and hence does not compete in any way with the Complainants. There is no risk of confusion or diversion of business because the Respondent does not offer the services offered by the Complainants.
The Respondent has demonstrated its good faith throughout this proceeding. In particular, in response to the letter from the LCIA, it ceased redirecting the Domain Names <lciamiacarbitration.com>, <lciaarbitration.com>, <lciaarbitrations.com>, <londoncourtofinternationalarbitration.com>, <londoncourtofinternationalarbitrations.com>, and <difclcia.com> to the Respondent’s Website. The Respondent has also offered to place a disclaimer, drafted by the Complainants, on its website.
The Complainants’ argue that the Panel should find bad faith on the basis of initial interest confusion, even though members of the public who, through the Domain Names, reach the Respondent’s Website should be able to ascertain that the website is not what they are looking for. Firstly the Complainants do not prove any plausible initial interest confusion and presumes that people who enter the Domain Names are in fact looking for the Complainants’ websites and not for independent information about the Complainants. Furthermore, people interested in the Complainants’ services are a hyper-specialised class of persons who are unlikely to be confused by the Respondent’s Website.
The Respondent has rights and legitimate interests in the Domain Names because it is an international arbitration firm that represents clients at the Complainants’ institutions. The Respondent’s Website also educates potential clients in respect of each of the Complainants’ arbitral institutions.
The Complainants have not provided any evidence demonstrating the Respondent has profited from the Domain Names at the Complainants’ expense. The Complainants are incorrect in drawing conclusions about the Respondent’s alleged cybersquatting history on the basis of the registration of Domain Names not reviewed by a UDRP Panel.
Furthermore the Respondent, as an international arbitration law firm, has the right to register any unregistered Domain Name, for the purposes of marketing its services of representing clients at the Complainants’ arbitral institutions. Such search engine optimization is merely common marketing practice. The Domain Names were not registered to sell to the Complainants or to prevent the Complainants’ from reflecting their mark in a corresponding domain name or to disrupt the Complainants’ business.
The Respondent asks the Panel to find that the Complainants have engaged in Reverse Domain Name Hijacking, in particular in respect of <stockholmarbitration.com>. The Complainants have brought this proceeding despite the fact that they have no trade mark rights over “Stockholm” or “Arbitration”. There are other institutions, such as the Stockholm Arbitration & Litigation Centre that provide arbitration services in Stockholm. The Complainants’ commenced the present proceeding in the knowledge that they could not prove that each Domain Name was registered in bad faith. As such the Complainants are using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Complaint is brought by 5 separate Complainants, each of which is a separate arbitral institution. In Fulham Football Club (1987) Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, the Panel outlined the circumstances in which it might be appropriate to permit a consolidated complaint involving multiple complainants and multiple domain names against a single domain name registrant to proceed. The relevant extract of that decision is below:
“General Principles Applicable to Consolidation Under the UDRP In the National Dial A Word case (see supra), the panel held that the consolidation of multiple complaints in a single complaint should be permitted if the complainants:
(i) have a common grievance against the respondent; and
(ii) it would be equitable and procedurally efficient to permit the consolidation of complaints.
With regard to the first limb of the test, to establish a common grievance against the respondent the panel in the National Dial A Word case held that multiple complainants must;
(i) have a common legal interest in the trade mark rights on which the complaint is based; or
(ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.
Instances where multiple complainants may establish a common legal interest would include where:
(i) the multiple complainants have a shared interest in a trade mark, such as may exist between a licensor and a licensee; or
(ii) the multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture; or
(iii) the multiple complainants are members of an established association or league (such as a sporting association) in which individual members have rights authorized to be enforced by the association, both the association and the members should have standing to appear as multiple complainants in a consolidated complaint against a single respondent.
If multiple complainants cannot establish a common legal interest sufficient to justify their consolidation in a single complaint, to satisfy the “common grievance” limb of the test the complainants must establish that the respondent has engaged in common conduct that has affected their individual rights in a similar fashion. Such common conduct may be found to exist:
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or
(ii) where there is a clear pattern of registration and use of all the disputed domain names in question.
If the multiple complainants establish that a common grievance exists against the respondent then the panelist considered that the second limb of the test should be addressed: would it be equitable and procedurally efficient to permit consolidation of the complainants?”
The Panel, in considering whether the present proceeding should be allowed, adopts the test outlined above.
In the present proceeding the Complainants do not appear to have a common legal interest that has been affected by the Respondent's conduct, as they do not share trade mark rights. Each of the Complainants own and is seeking to protect its trade mark rights separately, not jointly with each other.
However the Complainants have established that the Respondent has engaged in common conduct which has affected their legal rights in a similar fashion. Indications of such common conduct on the part of the Respondent include:
(i) the fact that the Domain Names, with the exception of <stockholmarbitration.com> each consists of the name or acronym of a Complainant, usually with the word “arbitration” or “arbitrations” appended on the end;
(ii) 14 of the 17 Domain Names were registered on the same date and all of them were registered with the same Registrar; and
(iii) Each of the Domain Names currently or previously resolved to the Respondent’s Website, which points to a clear pattern of use of all the Domain Names for the same purpose.
In the Panel's view it is equitable and procedurally efficient to permit consolidation of the Complainants' complaints because:
(i) although each of the Complainants operates under its own trade mark and each of the Domain Names incorporates elements of each of the Complainants' differing trade marks, in effect the Respondent is using the Complainants' trade marks for the same purposes. Therefore, the commencement of separate proceedings by each of the Complainants in relation to an otherwise common complaint would be inefficient and unnecessary under the Policy;
(ii) the Complainants' substantive arguments made under each of the three elements of the Policy are common to the Domain Names;
(iii) all the Complainants are represented by a single authorized representative for the purposes of the proceedings; and
(iv) the Complainants have clearly stipulated each Domain Name, the individual Complainant making a claim thereto, the rights relied upon by that Complainant, and the registrar with whom the Domain Name is registered. Any transfer, if found to be justified and ordered by the Panel, will be to the individual Complainant holding the corresponding trade mark.
Accordingly the Panel determines that the Complainants should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. Overall this is clearly a case fitting within the “common conduct” category in which it would be equitable and fair to permit consolidation.
To prove this element the Complainants must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to a Complainant’s trade or service mark.
The ICC is the owner of the ICC Mark and the INTERNATIONAL CHAMBER OF COMMERCE Mark, having registered these word marks in the European Union.
The Domain Name <iccarbitrations.com> consists of the ICC mark and the word “arbitrations” which describes the services offered by the ICC. The addition of a descriptive word such as “arbitrations” will not prevent a finding of confusing similarity. An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the ICC, offering its arbitration services. The Panel finds that the Domain Name <iccarbitrations.com> is confusingly similar to the ICC’s ICC Mark. The Domain Names <internationalchamberofcommercearbitration.com> and <internationalchamberofcommercearbitrations.com> consist of the INTERNATIONAL CHAMBER OF COMMERCE Mark and the words “arbitration” and “arbitration”. For the same reasons as outlined above, the Panel finds that each of these Domain Names are confusingly similar to the ICC’s INTERNATIONAL CHAMBER OF COMMERCE Mark.
For the record, the fact that a Complainant’s Mark may be registered for different goods and services to that provided by the Respondent does not affect whether the finding of confusing similarity is made. The Policy does not contain a requirement that the Complainants’ registered marks be registered for the goods and services for which the Respondent uses the Domain Name. Rather the requirement is that the Domain Name is identical or confusingly similar to a complainant’s trade mark.
The LICA is the owner of the LCIA Mark which was registered on March 25, 2009 in the United Kingdom. The Panel also finds that the LCIA has unregistered trade mark rights sufficient to ground a claim under the Policy in the mark “LONDON COURT OF INTERNATIONAL ARBITRATION” (the “LONDON COURT OF INTERNATIONAL ARBITRATION” Mark). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that in order for a Complainant to successfully assert unregistered trade mark rights
“… The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel is satisfied that the LCIA has unregistered trade mark rights in the LONDON COURT OF INTERNATIONAL ARBITRATION Mark for purposes of this Policy proceeding. The LCIA has traded under this name for over 120 years and has prepared extensive marketing and promotional materials featuring the LONDON COURT OF INTERNATIONAL ARBITRATION Mark, both in addition to and separately from the LCIA Mark. By reason of its trading and promotion the name “London Court of International Arbitration” has become a distinctive identifier associated with the LICA and/or its goods or services.
The Domain Names <lciaarbitration.com> and <lciaarbitrations.com> consist of the LICA Mark and the words “arbitration” and “arbitrations” which describe the services offered by the LICA. The Domain Names <londoncourtofinternationalarbitration.com> and <londoncourtofinternationalarbitrations.com> consist of the LONDON COURT OF INTERNATIONAL ARBITRATION Mark and the words “arbitration” and “arbitration. The addition of a descriptive word such as “arbitrations” will not prevent a finding of confusing similarity. An individual viewing the four Domain Names above may be confused into thinking that the Domain Names would refer to a site run by the LICA, offering its arbitration services. The Panel finds that the Domain Names <lciaarbitration.com>, <lciaarbitrations.com>, <londoncourtofinternationalarbitration.com> and <londoncourtofinternationalarbitrations.com> are confusingly similar to the LICA’s LICA and LONDON COURT OF INTERNATIONAL ARBTIRATION Marks.
The Domain Names <lciamiacarbitration.com> and <difclcia.com> consist of the LICA Mark and the mark of a related entity with whom the LCIA jointly provides arbitration services. The fact that each of the Domain Names contain the trade mark of a related institution (the Dubai International Financial Centre Authority and the Mauritius International Arbitration Centre) does not operate to prevent a finding of confusing similarity, rather given the relationship between these entities and the LICA, increases the probability that an individual viewing these Domain Names would think there is a connection between the Domain Names and the LCIA. Contrary to the submissions of the Respondent, it is not necessary for the Complainants to assert the trade mark rights of the Dubai International Financial Centre Authority and the Mauritius International Arbitration Centre in order for a finding of confusing similarity to be made. It is merely sufficient, for purposes of the first element of the Policy, for a complainant to have trade mark rights and for the domain name to be identical or confusingly similar to the complainant’s trade marks.
By reason of the fact that the Domain Names <lciamiacarbitration.com> and <difclcia.com> consist of the LICA Mark and the mark of a related entity with whom the LCIA jointly provides arbitration services, the Panel finds that these Domain Names are confusingly similar to the LICA’s LCIA Mark.
The Panel is satisfied that the SIAC has unregistered trade mark rights in the SIAC Mark for purposes of this Policy proceeding. The SIAC has traded under this name for over 20 years and has prepared extensive marketing and promotional materials featuring the SIAC Mark. Furthermore the SIAC Mark is extensively displayed at the SIAC’s webpage, located at “www.siac.org.sg”. By reason of its trading and promotion the SIAC Mark has become a distinctive identifier associated with the SIAC and/or its goods or services.
The Domain Names <siacarbitration.com> and <siacarbitrations.com>consist of the SIAC Mark and the words “arbitration” and “arbitrations” which describe the services offered by the SIAC. The addition of a descriptive word such as “arbitrations” will not prevent a finding of confusing similarity. An individual viewing the two Domain Names above may be confused into thinking that the Domain Names would refer to a site run by the SIAC, offering its arbitration services. The Panel finds that the Domain Names <siacarbitration.com> and <siacarbitrations.com> are confusingly similar to the SIAC’s SIAC Mark.
The AAA/ICDR is the owner of the AAA Mark which was registered on July 19, 2005 in the United States and the INTERNATIONAL CENTRE FOR DISPUTE RESOLUTION which was registered on June 25, 2002 in the United States. The Panel also finds that the AAA/ICDR has unregistered trade mark rights sufficient to ground a claim under the Policy in the mark “ICDR”. The AAA/ICDR has traded under the ICDR Mark for almost 20 years and has prepared extensive marketing and promotional materials featuring the ICDR Mark. In particular almost 1000 requests for arbitration were filed with the ICDR in 2012, indicating a substantial reputation in the market. By reason of its trading and promotion the ICDR Mark has become a distinctive identifier associated with the AAA/ICDR and/or its goods or services.
The Domain Name <aaaarbitrations.com> consists of the AAA Mark and the word “arbitrations” which describe the services offered by the AAA/ICDR. The Domain Names <icdrarbitration.com>, and <icdrarbitrations.com> consist of the ICDR Mark and the words “arbitration” and “arbitration which describes the services offered by the AAA/ICDR. The addition of a descriptive word such as “arbitrations” will generally not prevent a finding of confusing similarity and does not do so here. An individual viewing the three Domain Names above may be confused into thinking that the Domain Names would refer to a site run by the AAA/ICDR, offering its arbitration services. The Panel finds that the Domain Names <lciaarbitration.com>, <lciaarbitrations.com>, <londoncourtofinternationalarbitration.com> and <londoncourtofinternationalarbitrations.com> are confusingly similar to the AAA/ICDR’s AAA, ICDR and INTERNATIONAL CENTRE FOR DISPUTE RESOLUTION Marks
The Panel is satisfied that the SCC has unregistered trade mark rights in the SCC Mark and the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark for purposes of the Policy proceeding. The SCC has traded under this name and acronym for almost 100 years and has prepared extensive marketing and promotional materials featuring the SCC Mark and the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark. The SCC has an extensive reputation internationally, particularly in relation to the resolution of investment treaty disputes. Furthermore the SCC Mark and the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark are extensively displayed at the SCC’s webpage, located at www.sccinstitute.com. By reason of its trading and promotion the SCC Mark and the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark have become a distinctive identifier associated with the SCC and/or its goods or services.
The Domain Names <sccarbitration.com> and <sccarbitrations.com> consist of the SCC Mark and the words “arbitration” and “arbitrations” which describe the services offered by the SCC. The addition of a descriptive word such as “arbitrations” will not prevent a finding of confusing similarity. An individual viewing the two Domain Names above may be confused into thinking that the Domain Names would refer to a site run by the SCC, offering its arbitration services. The Panel finds that the Domain Names <sccarbitration.com> and <sccarbitrations.com> are confusingly similar to the SCC’s SCC Mark.
The Panel does not find the Domain Name <stockholmarbitration.com> confusingly similar to any of the marks held by the SCC (or the other Complainants’ Marks). The Panel notes that the Complainant failed to make any specific submissions on the confusing similarity of this particular Domain Name to any particular mark held by the SCC.
The Domain Name <stockholmarbitration.com> consists of two generic words, describing arbitration services located in Stockholm. The record before the Panel does not show any unregistered trade mark rights in the words “Stockholm Arbitration” for purposes of this Policy proceeding. The Panel considers that the SCC’s demonstrated rights of record in this Policy proceeding exist only in the whole combination which constitutes its ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark. The Panel is not satisfied by the evidence of record in this Policy proceeding that the term “Stockholm arbitration” has itself become distinctive of the Complainant.
While the Panel has found the Complainant has unregistered rights in the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark for purposes of this Policy proceeding, the Domain Name <stockholmarbitration.com> only reproduces two of the more generic elements of the ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark. In a situation where the Complainant does not appear to hold a registered trade mark, only rights in its own name (Arbitration Institute of the Stockholm Chamber of Commerce) and where “Stockholm arbitration” is a normal and natural term to describe arbitrations in Stockholm, the Panel is not persuaded on the present record that a person who sees the Domain Name would consider it related to the Complainant as such, rather than a generic description of arbitration services in Stockholm. See also Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645, and Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 dealing with the domain names <britishmeat.com> and <wifiparis.com> respectively.
Given the findings made in relation to <stockholmarbitration.com>, the Panel will not consider whether the Respondent has rights and legitimate interests in <stockholmarbitration.com> or whether <stockholmarbitration.com> was registered and used in bad faith. Any references to “Domain Names” in part C. and D. below does not include <stockholmarbitration.com>.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainants in any way. It has not been authorized by any of the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the Complainants’ Marks or any marks similar to the Complainants’ Marks. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. Rather the Respondent is known as ICSID Lawyers. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
Rather it appears that the Respondent is using and has used Domain Names to, without the permission of the Complainants, redirect to the Respondent’s Website. The Respondent’s Website advertises the Respondent, who purports to offer legal services in connection with international arbitration. The key question is whether this use amounts to use of the Domain Names for a bona fide offering of goods or services.
The Respondent submits that such use is justified because it is an arbitration law firm that represents clients at each of the Complainants’ arbitral institutions. It is not a direct competitor of the Complainants. Furthermore, as its websites provide information on the Complainants’ arbitral institutions they educate visitors on the Complainants’ services.
The Panel finds that the Respondent’s use of the Domain Names does not give it rights in the Domain Names as it is not using the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Firstly, the Respondent goes by ICSID Lawyers. It is not using a name corresponding for to the Domain Names to offer any services.
The key issue is whether the mere fact that the Respondent provides services that relate to the Complainants in some way is sufficient to allow it to register a Domain Name that is identical or confusingly similar to the Complainants Marks. The Respondent argues that because it provides services for customers dealing with the Complainants it has rights in the Domain Names. With respect, in this Panel’s view, this cannot be correct.
There are some UDRP Cases in which a respondent’s use of the domain name has generated rights and legitimate interests in circumstances where it has neither independent rights nor permission from the complainant to use the domain name. These include noncommercial criticism sites and noncommercial fan sites, neither of which the Respondent falls into. There is also a line of authority in past UDRP decisions, commencing with Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 and National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524, that find that certain resellers or distributors of trade marked products can be using the domain names in a bona fide matter if they fulfil certain exceptions, in particular the actual offering of goods and services at issue and the use of the site to sell only the trademarked goods.
In this Panel’s assessment, the Respondent falls far outside these limited exceptions. Firstly it does not have any authorization from the Complainants to register the Domain Names, nor is it offering any services from the Complainant. Furthermore, it is not using the Respondent’s Website in relation to a particular Complainant, rather the Respondent, by registering the Domain Names, is impersonating each of the Complainants online. Internet users who type in these Domain Names will expect to reach a site connected to or related to the particular Complainant. Instead they will reach the Respondent’s Website. The fact that such users may receive useful information when they reach the Respondent’s Website is not relevant; what is relevant is that the Respondent is using a Domain Name completely unconnected to its name, in order to attract internet users interested in the Complainants and re-direct them to its site. Such use cannot be bona fide. The use of a domain name which is identical or confusingly similar to a complainant's trademark with an intention of deriving advantage from user confusion and diverting Internet users to other commercial sites does not confer legitimate rights on the Respondent. See for instance, Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has not persuaded the Panel that it has rights or legitimate interests. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii), the following circumstances, 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:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainants and their reputation at the time the Domain Names were registered. The Respondent is a lawyer that specialises in international arbitration and the Respondent’s Website expressed a familiarity with the Complainants and their services. Furthermore it is implausible, nor does the Respondent seek to argue, that a person could register 16 separate Domain Names that reflect the marks of well-known arbitration centres by accident. The registration of the Domain Name in awareness of the Complainants’ Marks and in the absence of rights or legitimate interests amounts to registration in bad faith.
In this Panel’s considered assessment, the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of its website. The Respondent is using the Domain Names for commercial gain. The Domain Names do resolve or have resolved to the Respondent’s Website which advertises the Respondent’s services. The Domain Names attract users to the Respondent’s Website by creating a likelihood of confusion with the Complainants’ services. Internet users viewing the Domain Names would think that they are somehow connected with the Complainant, and that any entity reached by those Domain Names is somehow connected with that Complainant. This is not the case. In either case, the Panel finds that such use amounts to use in bad faith for purposes of the Policy.
The Respondent argues that its use is not in bad faith because it is part of modern search engine optimisation practice. While it may be legal to register descriptive domain names to build a business or to improve a business’s rankings on Google (the Panel makes no findings on this point), it is not permitted under the UDRP to deliberately register a domain name that by its very nature will create a likelihood of confusion with a complainant’s trademark for commercial purposes (unless a registrant itself has demonstrated rights or legitimate interests, which is not the case here).
Furthermore the submission made by the Respondent that no member of the public will be confused that the Respondent’s Website is one of the Complainants’ Websites, even if correct, does not prevent a finding of bad faith. An Internet user seeking information about the Complainants may be confused into visiting the Respondent’s Website, thinking that the requisite Domain Name will lead it to the relevant Complainant’s site and, although aware that the Respondent is not a Complainant, may choose to avail itself of the Respondent’s services. This conduct falls precisely into the requirements of bad faith under the Policy, namely the Respondent is attracting Internet users to its website, for commercial gain, by using the Domain Name to create a likelihood of confusion with the Complainants’ Marks. The confusion exists between the Complainants’ Marks and the Domain Names and exists regardless of the content of the Respondent’s Website see Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920. In any event, the Panel considers that there is still a possibility that an Internet user visiting the Respondent’s Website would consider that the Respondent has an affiliation with the Complainants, which is not the case: the Respondent has no connection to any of the Complainants above and beyond any other lawyer practising in those jurisdictions or in fact any licensed advocate able to appear in an arbitration.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Respondent has sought a finding of Reverse Domain Name Hijacking be made against the Complainants. Given the outcome of this proceeding in respect of 16 of the 17 Domain Names, the Panel will only consider making a Reverse Domain Name Hijacking finding against SCC in relation to the Domain Name <stockholmarbitration.com>.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the Respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking. The majority in Al Jazeera went on to note that:
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.
In Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224, the Panel found that to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge.
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.”
The Panel is not persuaded that the circumstances of this case justify a finding of reverse domain name hijacking. At the time the SCC commenced the proceeding the Domain Name <stockholmarbitration.com> redirected to the Respondent’s Website. This is similar conduct to what occurred in respect of the other 16 Domain Names, and the Panel has found that such conduct amounted to the registration and use of those Domain Names in bad faith. Nor has the Panel made a finding that the Respondent has rights and legitimate interests in <stockholmarbitration.com> since it is not clear that the Respondent has any rights in nor is making a bona fide use of <stockholmarbitration.com>. Finally the SCC’s case that the Domain Name <stockholmarbitration.com> is identical or confusingly similar to its trade or service mark, while unsuccessful, was not so weak as to render the filing of the Complaint an act of bad faith. The Domain Name did reproduce two elements of the SCC’s ARBITRATION INSTITUTE OF THE STOCKHOLM CHAMBER OF COMMERCE Mark. In those circumstances the Panel finds that the SCC had a plausible basis for its Complaint.
The SCC’s argument under paragraph 4(a)(i) of the Policy in respect of <stockholmarbitration.com> has failed, but in the Panel's view the argument was not so obviously doomed to failure that the Complainant must have appreciated that that was the case, and made a bad faith decision to go ahead with the Complaint anyway. The Panel does not make a finding that SCC has engaged in Reverse Domain Name Hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
<lciamiacarbitration.com>,
<lciaarbitration.com>,
<lciaarbitrations.com>,
<londoncourtofinternationalarbitration.com>,
<londoncourtofinternationalarbitrations.com> and
<difclcia.com> be transferred to the London Court of International Arbitration (LCIA).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
<iccarbitrations.com>,
<internationalchamberofcommercearbitration.com> and
<internationalchamberofcommercearbitrations.com> be transferred to International Chamber of Commerce (ICC).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
<siacarbitration.com> and
<siacarbitrations.com> be transferred to Singapore International Arbitration Centre (SIAC).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
<sccarbitration.com> and
<sccarbitrations.com> be transferred to Arbitration Institute of the Stockholm Chamber of Commerce (SCC).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
<aaaarbitrations.com>,
<icdrarbitration.com> and
<icdrarbitrations.com> be transferred to American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR).
For the foregoing reasons, the Complaint in relation to the Domain Name <stockholmarbitration.com> is denied.
Nicholas Smith
Sole Panelist
Date: June 21, 2013