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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

HMI Group Limited v. Julien Holden (also know as Julian Holden) and Netcon IT. Services Limited

Case No. D2000-1795

 

1. The Parties

The Complainant is HMI Group Limited, trading from 1 York Place, Leeds, LS1 2DR, England. The First Respondent is Julien Holden (also known as Julian Holden) of 5 Rhodes Avenue, Blackburn, BB1 8NW, England or alternatively of 20 Rhodes Avenue, Blackburn, BB1 8NP or of 13, Stansfield Street, Darwen, Lancashire BB3 2NR. The Second Respondent is Netcon I.T. Services Limited whose only known address is PO Box 23, Stansfield Street, Darwen, Lancashire, BB3 2NR, England.

 

2. The Domain Name and Registrar

The domain name in issue is "hmiglobal.net" (the "domain name"). The Registrar is Internet Domain Registrars of Registrars.com.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received on December 22, 2000, an electronic copy of the Complaint and on January 3, 2001, a hard copy with accompanying documents.

In the original Complaint, the Registrar was stated to be "Internic Limited". On investigation by the Center, it became clear this was incorrect. The Center contacted the Complainant on December 30, 2000, to notify them of this deficiency, requesting an amended Complaint be submitted.

The Complainant must have corrected the error on January 4, 2001, as the Center was able to contact Internet Domain Registrars on January 4, 2001, and request details of the domain name. In response, Internet Domain Registrars confirmed that the domain name was registered with them and provided the Registrants details as "Julien Holden,

Netcon I T Services Ltd., 20 Rhodes, Blackburn, UK". The administrative, technical and billing contacts were all registered as Internic Ltd., UK.

On January 10, 2001, the Complainant resubmitted the Complaint confirming the amended details of the Registrar and also including some additional evidence.

On January 14, 2001, the Center sent a Notification of Complainant and Commencement of Administrative Proceeding to both the First and Second Respondents by email and courier.

On January 14, 2001, Julien Holden contacted the Center by email stating "I have no interest in holding onto hmiglobal.net" and "I authorize the transfer of the domain name hmiglobal.net from myself, Julien Holden to the HMI Group. This transfer can take place at your convenience."

On January 15, 2001, the representatives of the Complainant emailed the Center asking whether it was possible for "an expedited ruling to be made that the domain name be transferred to the Complainant". The Center responded stating that the transfer of the domain must be in accordance with the instructions given by the concerned Registrar, and settlement between the parties. The Complainant stated in a further email of January 15, 2001, that there was no agreement between the Complainant and the Respondent and requested that the procedure continue.

On January 29, 2001, the Claimant’s representative further informed the Center that it had sent to Mr. Holden the necessary registrar’s transfer form requesting that it be completed and returned. However, it had not been returned and therefore the Complainant re-iterated its wish for the procedure to continue.

On February 6, 2001, the Center sent a Notification of Respondent Default to the Respondent.

On February 13, 2001, the Center advised the parties that the Panel had been constituted with a single panelist, Nick Gardner. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel’s decision is due on February 27, 2001.

The Complainant is represented by Lindsay Gledhill and Patrick Cantrill of Walker Morris, Solicitors of Kings Court, 12, King Street, Leeds LS1 2HL.

 

4. Factual Background

In the absence of any Response to the Complaint by the Respondents, the Panel has only the Complainant’s account of the factual background and has no reason to doubt the facts as put forward by the Complainant. The facts as presented by the Complainant are as follows:

The Complainant is the registered owner of an application for a trade mark "HMI" (application number 2249107) in the UK in class 35 covering employment agency services, recruitment agency services, advertising, business management and business administration. The application was made on November 1, 2000. The Complainant has also used the HMI mark extensively in advertising from November 2000, onwards.

The First Respondent is a former employee of the Complainant, being the I.T. Manager of the Complainant until September 13, 2000. The role of the Second Respondent, Netcon I.T. Services Ltd. is unclear. The Registration of the domain name to "Julian Holden, Netcon I.T. Services Ltd." is ambiguous and the only known address for the Second Respondent is a PO Box address. The Complainant has received confirmation that the First Defendant runs the Second Respondent Company.

The Complainant was until September 6, 2000, known as Hitchenor Maher Group Limited, but chose HMI as its new brand name in January 2000. From the "whois" database, it appears that the Complainant registered the domain name "HMIglobal.com" on April 29, 2000. The Complainant commenced trading as HMI in September 2000. The Complainant also uses HMIglobal for each of its divisions on the Internet.

The Complainant instructed the First Respondent to register the domain name in May 2000, in the Complainant’s name and provided the First Respondent with the Complainant Company’s credit card details to do so. In fact, as is apparent from the whois search, the Respondent registered the domain name on May 16, 2000, using his own name and that of the Second Respondent "Julien Holden, Netcon I.T. Services Ltd.". The First Respondent did however use the Complainant Company’s credit card to pay the registration fees.

On leaving the Complainant’s employment, the First Respondent took no steps to transfer the domain name to the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarized as follows:

- The Complainant contends that the domain name is confusingly similar to its trade mark application HMI, in which it now has a reputation.

- The Complainant contends that the First Respondent can have no legitimate rights in the domain name as it was registered in his name in breach of his obligations to the Complainant, his then employer. The Complainant states that it has no knowledge of the Second Respondent and therefore it also can have no legitimate rights in the domain name.

- The Complainant contends that the First Respondent registered the name in bad faith because:

- The First Respondent registered the domain name in his own name in breach of express instructions to register the domain name in the Complainant’s name, and also used the Complainant’s company credit card to pay the registration fees;

- The First Respondent registered the domain name in his own name to prevent the Complainant from being able to use the domain name;

- The First Respondent registered the domain name as part of a pattern of behavior to disrupt the Complainant’s business; and

- The First Respondent offered the domain name for sale to the Complainant for Ј2,500 in circumstances where the Respondent had incurred no expenses in registering the domain name because he used the Complainant’s company credit card.

B. Respondents

The First Respondent has made no formal contentions, but stated by an email to the Center dated January 14, 2000, that he was prepared to transfer the domain name to the Complainant. However the evidence of the Complainant is that the First Respondent has not completed the required transfer forms sent to him in order to settle this matter without adjudication.

The Second Respondent had made no contentions.

 

6. Discussion and Findings

The Panel has reviewed the Complaint and the documents annexed. In the light of this material, the Panel finds as set out below:

This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the ICANN Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the First Respondent to lodge a formal Response and the failure of the Second Respondent to lodge any Response. Details of these proceedings have been served in accordance with the relevant requirements and have clearly been received by the First Respondent in light if his email dated January 14, 2001.

The Panel finds that for all relevant purposes, the First Defendant is the controller of the domain name and that the Second Respondent appears to be a creature of the First Respondent. The First Respondent’s email of January 14, 2001, referred to at paragraph 5 indicates that the First Respondent controls the domain name.

The Panel finds that in response to the Complainant in these proceedings the First Respondent had indicated to the Center that he was willing to transfer the domain name, this apparently being an offer to dispose of these proceedings without contesting the substantive issues.

It is unclear under the Policy whether there is in fact power for the Panelist to order the transfer of the domain name to a Complainant on the simple basis of the bare consent of the Respondent(s). Under the Policy, paragraph 3c states that the Registrar will, inter

alia, transfer a domain name registration on receipt of a decision "of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN".

For an administrative proceeding to be conducted under this Policy, it must be one that complies with paragraph 4(a) of the Policy. In particular it would appear that the Complainant must prove that each of three necessary elements required by the Policy are present, irrespective of the Respondent having in effect indicated he is prepared to consent to the name being transferred.

Having considered the facts and contentions set out by the Complainant, the Panelist finds that all three of the elements set out in paragraph 4(a) of the Policy have been proved to be present in this case.

The Panel finds that the domain name is confusingly similar to the Complainant’s trademark HMI. The Panel notes that there is an issue as to whether the Complainant had a reputation in the mark at the time of registration of the domain name. However, the Panel finds that there was a clear intention on the part of the Complainant to use the trade mark "HMI" in its business at the time of registration of the domain name and that the First Respondent, as an employee of the Complainant was aware of this. Further, the Panel finds that the Complainant intended to use the identical mark HMIglobal for its business on the Internet through the fact of its registration and use of "HMIglobal.com" and "HMIglobal.co.uk". The Panel is satisfied that prior to the date of the registration the Complainant had adopted "HMI" as a trade mark sufficient to bring it within the ambit of the policy.

In the absence of any submissions by the Respondent, the Panel also finds that the Respondent can have no reasonable rights or legitimate interest in the domain name. The First Respondent was clearly aware that his employer was making preparations to use the domain name in the course of its business.

Finally, the Panel finds that the domain name was registered in bad faith by Respondent, who apparently acted in breach of his duties to his employer, the Complainant by registering the domain name in his own name rather than in that of the Complainant. Further and in any event the Respondent also offered to sell the domain name to the Complainant for Ј2,500 when he had incurred no out of pocket expenses and had no justification for his having registered the name. This amounts to bad faith.

 

7 Decision

In accordance with the findings set out in paragraph 6 above, the Panelist concludes that under paragraph 4(a) of the Policy:

- The domain name "hmiglobal.net" is confusingly similar to the trademark HMI of the Complainant;

- The Respondent has shown no rights or legitimate interest in the domain name; and

- The Respondent registered and has used the domain name in bad faith.

Accordingly the Panelist orders that the domain name "hmiglobal.net" be transferred to the Complainant.

 

 

Nick Gardner
Sole Panelist

Dated: February 27, 2001