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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Limecard Limited v. EasyZone GROUP

Case No. D2006-1588

 

1. The Parties

The Complainant is Limecard Limited of Hertfordshire, United Kingdom.

The Respondent is EasyZone GROUP of Neath, United Kingdom, represented by Adam Lewis.

 

2. The Domain Name and Registrar

The disputed domain name <limecard.com> (the “Domain Name”) is registered with Melbourne IT (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 14, 2006 and in hard copy on December 22, 2006. The Center transmitted its standard request for registrar verification to the Registrar by email on December 15, 2006. The Registrar responded by email on December 17, 2006, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied, that the Domain Name was locked and that the registration agreement was in English and contained a submission to the jurisdiction of the courts as provided in the Policy. However, the Registrar advised the Center that the respondent identified in the Complaint was not the registrant of the Domain Name and provided the contact details in respect of the registration on its Whois database.

The Center informed the Complainant by email of January 9, 2007, that the Complaint was administratively deficient, in that the respondent was incorrectly identified. The Complainant filed an amendment to the Complaint correctly identifying the Respondent as the registrant of the Domain Name by email on January 12, 2007, and in hard copy on January 29, 2007.

Noting that the registration of the Domain Name was about to expire, the Center asked the Registrar by email of January 9, 2007, to confirm that the Domain Name would remain in LOCK status after the expiry date until this proceeding is concluded and to advise whether any action was required by the parties to keep the Domain Name under HOLD and LOCK so that this proceeding could continue as required by the Policy. The Registrar replied by email of January 10, 2007 confirming that the Domain Name would remain in LOCK and placed on HOLD and that no action by the parties would be required.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Policy, 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 January 31, 2007. The notification stated that that in accordance with the Rules, paragraph 5(a), a Response was required to be sent to the Center and the Complainant by February 20, 2007. The notification was sent by email and courier to the respective addresses provided in the contact details in the Registrar’s Whois database. The notification by email appears to have been transmitted successfully but the notification by courier was held because the address (which was a P.O. Box number) was defective.

The Center did not receive a Response by the due date. The Center accordingly informed the Respondent by email of February 21, 2007, that it had failed to comply with the deadline for submission of its Response, that the Center would proceed to appoint a Panel to determine the dispute, and that if the Respondent submitted a late response, the Panel would decide in its sole discretion whether to consider it. The Respondent replied by email the same day stating that it had been under the impression that it would receive the Complaint in hard copy from the Center and had been awaiting this before filing a Response. The Respondent stated that it would submit a Response by email no later than February 28, 2007, and asked that it be taken into consideration. The Respondent subsequently submitted a Response to the Center by email on March 1, 2007. By email and fax of March 1, 2007, the Complainant submitted copies of two emails which it said disproved the contents of the Response.

The Center appointed Jonathan Turner as the sole panelist in this matter on March 2, 2007. 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. Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

 

4. Procedural Rulings

It is necessary to consider whether the Response should be admitted even though it was submitted after the due date.

Paragraph 10(c) of the Rules specifies that “the Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.” This and other provisions of the Rules serve one of the primary purposes of the dispute resolution procedure provided by the Policy and the Rules of enabling clearcut domain name disputes to be resolved expeditiously and economically.

The notification of the Complaint to the Respondent clearly specified that a Response was required by February 20, 2007. There is no basis for the Respondent’s supposition that this deadline would be extended until after it received a hard copy of the Complaint from the Center.

Furthermore, it appears that the reason why the Respondent did not receive hard copy of the Complaint from the Center was that it had failed to maintain a correct postal address in the Registrar’s Whois database. As pointed out in cases such as Superdrug Stores plc v. James Walters of Superdrug Com, WIPO Case No. D2001-0274, and Ferrari S.p.A. v. JK Marketing, WIPO Case No. D2001-1003, it is the responsibility of the registrant to ensure that correct contact details are maintained in its registrar’s Whois database.

Nor is it suggested that the matters set out in the Response could not have been submitted with reference to the electronic copy of the Complaint as received by the Respondent, which included its annexes. The Panel also notes that, despite protesting its non-receipt of hard copy of the Complaint from the Center, the Respondent failed to submit its Response in hard copy to the Center. Finally, the Respondent did not even comply with the extension of time which it requested.

In these circumstances the Panel does not consider that an extension of time for filing the Response is justified. The Response is therefore not admitted.

As mentioned above, the Complainant sought to make a further submission if the Response was admitted. Since the Response is not admitted, there is no need to consider the Complainant’s request. Furthermore, it appears that the additional material sought to be submitted by the Complainant could and should have been included in the Complaint. In these circumstances and in accordance with well-established principles summarized in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 and other cases, the Panel declines to admit the Complainant’s supplemental submission.

 

5. Factual Background

The Complainant carries on a business working with suppliers of luxury brands to provide special privileges to its members who carry its card, called “the Limecard”. The Limecard program was commenced in 2004 by Intelligent Promotions Limited and the domain name <limecard.co.uk> was registered on May 7, 2004. The Complainant company was formed on April 3, 2006, and applied to register a logo comprising the word “Limecard” as a trademark in the United Kingdom on April 6, 2006. Registration of this trademark was granted on October 20, 2006.

The Complainant currently promotes its business by websites at “www.thelimecard.co.uk”, “www.thelimecard.com” and “www.thelimecard.eu”. The Complainant has also registered the domain name <limecard.eu> as well as <limecard.co.uk>, but these domain names are not directed to its promotional website.

The Respondent registered the Domain Name on February 15, 2004. At the date of the filing of the Complaint, it redirected to a website at “www.bmva.com” and then to a website at “www.keenefreepress.com”.

 

6. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its registered trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

In support of the last two contentions the Complainant alleges that it contacted the Respondent in June and September 2006 and was told that the Domain Name was one of thirty or forty which the Respondent had booked, and that the Respondent had booked it for business use but was unsure as to what type of business.

The Complainant further alleges that the Respondent offered to sell the Domain Name at first for Ј20,000 and then for Ј10,000, and declined the Complainant’s proposal that the Domain Name be transferred with the Complainant reimbursing the costs of registration and transfer or in consideration of promotions and design work to be provided by Intelligent Promotions Limited.

The Complainant also points out that the Domain Name has been parked since at least June 2006 when it first investigated the position.

The Complainant requests a decision that the Domain Name be transferred to the Complainant.

B. Respondent

As mentioned above, the Respondent has not made any admissible submission.

 

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove on the balance of probabilities (i) that the disputed domain name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar

The Panel considers that the Domain Name is confusingly similar to the Complainant’s registered trademark in respect of a logo comprising the word “limecard”. That word is the distinctive and dominant feature of the mark and the Panel considers that internet users familiar with the mark would assume that the Domain Name refers to the same business.

It is well-established that the fact that the Complainant’s trademark was registered after the disputed domain name does not prevent a finding that the domain name is identical or confusingly similar to a mark in which the Complainant has rights: see, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.

The Panel concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

It seems clear from the Complainant’s evidence, which must be regarded as undisputed in this proceeding, that the Respondent has not made any use or preparations for use of the Domain Name or a corresponding name in connection with either a bona fide offering of goods or services or any fair and legitimate non-commercial activity. Nor is the Respondent commonly known by this name.

In all the circumstances, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

The two parts of third requirement of the Policy are cumulative conditions: the Complainant must show that the disputed domain name both was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed in many decisions under it, e.g. Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Teradyne, Inc. Teradyne, Inc. v. 4Tel Technology, Substance Abuse Management, WIPO Case No. D2000-0026; and Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782.

As observed in the last of the cited cases, “if a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.

If the requirement were only that the Domain Name was being used in bad faith, the Complainant’s evidence that the Respondent offered it for sale for sums greatly exceeding the Respondent’s cost of acquiring it might have been sufficient. However, the Panel is not satisfied on the evidence that the Domain Name was registered in bad faith. To the contrary, it appears that the Domain Name was registered by the Respondent before the “Limecard” program, now operated by the Complainant, was started. There is no evidence or reason to believe that the Respondent knew or should have known when it registered the Domain Name that it would conflict with any other party’s rights. In these circumstances, the Panel concludes that the third requirement of the Policy has not been met and the Complaint must therefore be rejected.

 

8. Decision

For all the foregoing reasons, the Complaint is denied.

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Jonathan Turner
Sole Panelist

Dated: March 16, 2007