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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eoin Murphy and Ciaran Murphy trading as Wise Owl v. Paul Baird

Case No. DIE2006-0002

1. The Parties

The Complainants are Eoin Murphy and Ciaran Murphy trading as Wise Owl, County Dublin, Ireland.

The Registrant is Paul Baird, Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <wiseowl.ie> is registered with IE Domain Registry Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2006. On May 12, 2006, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On May 15, 2006, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on or about May 20, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on May 22, 2006. In accordance with the Rules, paragraph 5.1, the due date for Response was June 11, 2006. The Response was filed with the Center on June 8, 2006.

The Center appointed Adam Taylor as the sole panelist in this matter on June 14, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants are partners in a school supplies business which has, since 1986, traded under the name “Wise Owl” and other variations thereof such as “The Wise Owl”, “The Wise Owl Booksellers and Stationers” and “The Wise Owl Swords”.

The Complainants operate nine retail outlets, seven in Dublin and two in Drogheda, County Louth and have used the name “Wise Owl” extensively in relation to their business including on shopfronts, bags and receipts.

The Complainants’ business is one of the largest schoolbook retailers in Dublin and County Louth with a turnover of approximately €6.6 million in the 12 month period to March 2006.

The Complainants have been included in school booklists, particularly in the greater Dublin area, as a recommended destination for purchasing the schoolbooks listed.

The Complainants have arranged high profile book signings at their shops and have featured in local and national newspaper articles.

The Complainants registered “The Wise Owl” as a business name in July 1998.

In about 2000, the Registrant set up an online schoolbook retail business branded “SchoolBooksOnline.ie” via a website at that domain name.

The Registrant registered ‘wiseowl.ie’ as a business name in November 2003.

The Registrant registered the disputed domain name in or about January 2004. Since around that time there has been a website at the disputed domain name which has always resolved to “www.schoolbooksonline.ie”.

5. Parties’ Contentions

A. Complainant

1. Identical or Misleadingly Similar

The Complainants’ extensive use of the name “Wise Owl” over a prolonged time means the trading name is a protected identifier for the purpose of section 1.3.1 of the Policy.

The disputed domain name, within the context of selling school books and school supplies, is misleadingly similar, if not identical to the trading name used and registered by the Complainants.

2. Rights or Legitimate Interests

The Registrant has to the best of the Complainants’ knowledge never made any bona fide use of or preparations to use the identifier ‘Wise Owl’ in relation to his business. His website is called ‘www.schoolbooksonline.ie’.

The Registrant’s claim of entitlement to the disputed domain name based on his ownership of the business name “wiseowl.ie” and the disputed domain name is an inaccurate representation of the law in Ireland. Neither registration of a business name, nor of a domain name entitles the holder to use a name in the course of their business ‘if it would be prohibited for any other reason’. In this case use of the name ‘Wise Owl’ in relation to schoolbooks in Ireland amounts to passing off. The Companies House website states: “registration of a business name] does not authorise the use of the name if its use could be prohibited for other reasons. It should not for instance be taken as an indication that no other rights (e.g. trade mark rights) exist in the name.”

3. Registered or Used in Bad Faith

As of October 1, 2005, 36 of the 44 school booklists on the website at the disputed domain name related to schools in the Dublin area and another three were located in surrounding counties. This, along with the fact that the Registrant is based in Dublin suggests that his target market is Dublin, where the Complainants are very well known in relation to school books and supplies.

By using the disputed domain name, the Registrant intentionally attempts to attract Internet users to his website (either www.schoolbooksonline.ie or at the disputed domain name as they are in effect the same) by creating confusion with a protected identifier in which the Complainants have rights.

The Complainants do not accept the Registrant’s statement that “it would appear that a small number of member of the public have contacted the Wise Owl bookshop in the mistaken belief that they were contacting SchoolBooksOnline.” There is no possible way for them to have obtained the Complainants’ contact details from the Registrant’s site, so rather they believed (correctly) they were contacting the Complainants, having believed (incorrectly) when on the website that they were dealing with the Complainants also.

The Complainants do accept the concession that confusion has been created in the minds of at least some members of the public.

The use of the disputed domain name has diluted and damaged the Complainants’ trading name and prevents the Complainants from launching their own online presence with a ‘clean bill of health’.

The Wise Owl received phone calls from three separate individuals over the months May 2005 to Sept 2005, two of which were complaints. At the time the Complainants were unaware of the existence of the website at the disputed domain name and were unable to understand why the customers were confused.

One of the booklists on the Registrant’s site states: ‘Books also available from: …… Wise Owl’. This would lead most people to conclude that the site at the disputed domain name was connected to the establishment recommended on the booklist.

B. Registrant

1. Identical or Misleadingly Similar

The Complainant has provided no proof of a “protected identifier” as defined in the Policy.

The Registrant has been unable to find any registration of any kind for any name including the words “WISE OWL” or the word “WISEOWL”. The Complainants therefore do not appear to have a protected identifier related to their business name. There is no evidence of any trade or service mark bearing the term ‘Wise Owl’.

None of the names referred to by the Complainants are a “personal name” or “pseudonym”.

2. Rights or Legitimate Interests

The Registrant owns the business name “wiseowl.ie”. The disputed domain name is closer to “wiseowl.ie” than any business name or limited company name owned by the Complainants. There are a number of other domain names still available to the Complainants which would more closely reflect their business name than the one which the Registrant has been using in good faith for almost three years.

The Registrant accepts that ownership of the business name “wiseowl.ie” does not automatically give him a legal right to ownership of the disputed domain name. The Complainants’ names do not automatically give them a legal right to ownership of the disputed domain name either.

The disputed domain name has always resolved to the bona fide business and service offered by SchoolBooksOnline.ie. There was no contact from the Complainant before August 2005, a full 20 months after use of the disputed domain name in conjunction with the business at “www.schoolbooksonline.ie”.

3. Registered or Used in Bad Faith

The disputed domain name was registered and is being used in good faith, in conjunction with building an Internet based business, something which heretofore has not formed a part of the Complainants’ business model.

The Registrant has no intention of selling, renting, licensing or otherwise transferring the disputed domain name as this would be detrimental to his own developing business.

The Complainants could register a domain name that would more closely reflect their business names.

Use of the disputed domain name is not intended in any way to disrupt the business of the Complainants. In a business that, according to the Complainants, turned over €6.4 million last year, the Complainant received only three phone calls about the disputed domain name, and at least one of these was not a complaint. The Complainants have not provided any evidence of how their business turnover has changed since registration of the disputed domain name. The Complainants’ intention is to increase their business turnover and reduce the Registrant’s by using a domain name legitimately owned by the Registrant.

The Registrant does not intend to create any confusion between ‘The Wise Owl Bookshop’ and ‘SchoolBooksOnline.ie’. Any Internet user who enters the address “www.wiseowl.ie” into the address bar will find that before the web page opens the address bar changes to ‘www.schoolbooksonline.ie’, and when the web page opens the user will be left in no doubt that they are dealing with SchoolBooksOnline. Nowhere on the “www.schoolbooksonline.ie” site is it possible to find the words ‘Wise Owl’ and all the contact details connect directly back to SchoolBooksOnline.

The biggest concentration of the Irish schoolbook buying public is located in Dublin, and a good many of them are residents of South Dublin so it is no surprise that many of the Registrant’s customers come from that area.

The Complainants provide no statistical evidence to back up their claim to have the most recognisable schoolbook related names in South Dublin.

The Internet based business ‘SchoolBooksOnline.ie’ is developing an increasingly good business reputation in the South Dublin area, hence the number of schools in that area that have a link to the site “www.SchoolBooksOnline.ie” also have customers in almost every county in Ireland, as well as abroad.

Whether the Complainants have a small or large share of the schoolbook buying market in South Dublin, or any other location, does not mean that the Registrant’s legitimate business should not be allowed to compete in this market.

In relation to school booklist on the Registrant’s site which mentioned the Complainants, the Registrant had an arrangement with that school connected with a donation to a selected charity.

The Registrant’s business is run well. Any individual using its site in the mistaken belief that it was the Complainant’s business, would be left with a very positive impression. There would be no dilution of the Complainants’ reputation.

No misleading information, either intentional or otherwise was provided by the Registrant when applying for the disputed domain name.

The Registrant claims that the Complainants’ submission is an abuse of the administrative proceedings. It must be obvious to the Complainants that they cannot satisfy conditions 1.1.1, 1.1.2 and 1.1.3 of the Policy. The Complainants have successfully traded in various retail locations over the past 19 years but have never before used the Internet as a business channel. Now that they wish to do so, they are not satisfied with any of the currently available ‘wise owl’ related domain names but would prefer to attempt to stifle the Registrant’s legitimate business which has only a tiny fraction of the Complainants’ own business turnover. The Complainants must be well aware that no protected identifier exists.

6. Discussion and Findings

Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

Contrary to the Registrant’s assumption, paragraph 1.3.1 is not limited to registered trade or service marks. It applies also to unregistered trade mark rights (otherwise known as “common law rights”). In order to demonstrate an unregistered trade mark, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. See Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002.

Here, the Complainants have satisfied the Panel that, by virtue of extensive use over some 20 years, the names “Wise Owl” and “The Wise Owl” have become distinctive of the Complainants or their goods and services.

The Panel concludes that the disputed domain name is identical and/or misleadingly similar to protected identifiers in which the Complainants have rights.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the domain name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

The factor in paragraph 3.1.1 provides:

“where the registrant can demonstrate that, before being put on notice of the complainant’s interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.

The Registrant has used the disputed domain name in connection with an offering of goods or services before being put on notice of the Complainants’ interest in the disputed domain name. But has such use been in “good faith”? For the reasons explained below (under “Registered or Used in Bad Faith”), the Panel’s view is that the Registrant’s use of the disputed domain name has not been in good faith.

Paragraph 3.1.2 does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.

Paragraph 3.1.3 does not apply as the disputed domain name is not a geographical indication.

The Complainants have not licensed or otherwise authorized the Registrant to use their trade mark.

The Registrant rightly concedes that ownership of the business name “wiseowl.ie” does not automatically give him rights or legitimate interests in the disputed domain name. As the Complainants point out, registration of a business name does not of itself authorise use of a name if its use could be prohibited for other reasons.

The Registrant claims that there are other domain names available to the Complainants which more closely reflect their business name but, whether or not that is correct, it has no bearing on whether the Registrant himself has rights or legitimate interests in the disputed domain name.

The Panel concludes that the Registrant has no rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the domain name has been registered or is being used in bad faith.

The Registrant claims in his Response that the disputed domain name has been registered and used in good faith but nowhere amongst his extensive submissions is there an explanation as to why the Registrant chose the disputed domain name in particular.

The Registrant says that the disputed domain name has always resolved to the bona fide business and service offered by ‘SchoolBooksOnline.ie’. But the Panel is not concerned with whether ‘SchoolBooksOnline.ie’ is itself a bona fide business but rather with the registration and use of the disputed domain name in connection with ‘SchoolBooksOnline.ie’.

Why did the Registrant register a domain name in January 2004 which was identical or virtually identical to the trading name of another - far bigger - seller of schoolbooks and point it to his own existing website at “www.schoolbooksonline.ie”? The Registrant has not denied that he was aware of the Complainants’ business at that time nor indeed could he credibly have done so. The only sensible answer is that the Registrant’s purpose in registering and using the disputed domain name was to divert business from the Complainants to himself.

Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith. The Panel considers that the non exhaustive factors in paragraphs 2.1.3 and 2.1.4 apply here:

“2.1.3 where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant; or

2.1.4 where the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a protected identifier in which the Complainant has rights;…”

The Panel’s findings are not affected by any of the following matters raised by the Registrant:

That there was no correspondence from the Complainants about this matter until August 2005. There is no suggestion that the Complainants had been aware of the Registrant’s activities much before then let alone that there has been any acquiescence (not that estoppel type principles necessarily apply here).

That the Complainants have not heretofore traded on the internet. This would not justify the Registrant seeking to capitalise unfairly upon those users who are nonetheless seeking the Complainant’s business on the internet.

That the Complainants might be able to register other domain names which more closely reflect their business. This has no bearing on whether the Registrant registered or used this particular domain name in bad faith.

That the Complainants have not provided evidence of how their business turnover has changed since registration of the disputed domain name. The point at issue here is the Registrant’s purpose in registering and using the disputed domain name, not whether or to what extent its scheme has necessarily been successful.

That the Complainants received “only” three phone calls about the disputed domain name. In fact the Panel makes no finding that actual confusion has occurred. The Complainant has not explained those phone calls in sufficient detail or supplied supporting evidence to enable the Panel to assess exactly what confusion that may or may not have occurred. Nonetheless, as indicated above, the Panel is satisfied that the Registrant did set out to create confusion.

That when “www.wiseowl.ie” is typed into the address bar, it changes to ‘www.schoolbooksonline.ie’. This is a subtle change likely to pass unnoticed by most internet users.

That the words “Wise Owl” do not appear on the “www.SchoolBooksOnline.ie” site. The name “SchoolBooksOnline.ie” is highly descriptive and there is nothing on the site which disabuses internet users of a connection with the Complainants’ business (Even if there were, that would not necessarily avail the Registrant because of the concept of “initial interest confusion”. See, e.g., the following WIPO cases in relation to the UDRP equivalent to paragraph 2.1.4: National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.)

For the above reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

The Registrant says that the Complainants’ trading names do not automatically give them a legal right to ownership of the disputed domain name. This is correct so far as the Policy is concerned. The Panel can only order transfer of the disputed domain name if satisfied that the Complainants have proved all the necessary elements in the Policy to the required degree. They have done so.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name <wiseowl.ie> be transferred to the Complainants.

Adam Taylor
Sole Panelist

Dated: June 29, 2006