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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Trustees of the British Museum, The British Museum Company Limited v. Oakwood Services Inc

Case No. D2007-1145

1. The Parties

The Complainant is The Trustees of the British Museum (“First Complainant”), The British Museum Company Limited (“Second Complainant”), of London, United Kingdom of Great Britain and Northern Ireland, both internally represented.

The Respondent is Oakwood Services Inc, of Dallas, Texas, United States of America, represented by Shrull Altman LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <britishmuseum.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 7, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. After several reminders, on September 7, 2007, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 September 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2007. The Response was filed with the Center on October 2, 2007.

The Center appointed Alistair Payne as the sole panelist in this matter on October 17, 2007. 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.

A. Jurisdiction

The Respondent is taking a private action against the Complainants in the District Court of Dallas County, Texas for reverse domain name hijacking. Paragraph 18 of the Rules allows the Panel to exercise its discretion whether to proceed in the matter, whether to dismiss the matter or whether to put a stay on proceedings pending the outcome of the other related action.

The rule has been considered in several previous UDRP decisions (see e.g., Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426 and Jacuzzi Inc., v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001) and the discretion to proceed has frequently been exercised. Neither party to the current proceedings have requested that the proceedings be stayed while awaiting the outcome of the Dallas District Court.

As a result the Panel is satisfied that it can proceed in this case.

4. Factual Background

The Complainants are a charitable body and its subsidiary, resident in the United Kingdom of Great Britain and Northern Ireland, the former having been established in 1753 by an Act of Parliament. The Respondent is a body corporate, resident in Texas in the United States of America. The Complainants have several trademark registrations for THE BRITISH MUSEUM some dating as far back as 1989. The Complainants have a registered US device mark for THE BRITISH MUSEUM since October 2006. The Respondent registered the Disputed Domain Name <britishmuseum.com> on May 21, 2003. The Respondent operates a web portal, offering links and information regarding, amongst other things, museums in Britain.

The Complainants seek the transfer of the Disputed Domain Name, while the Respondent seeks a declaration of reverse domain name hijacking.

5. Parties’ Contentions

A. Complainant

The Complainants contend that the Disputed Domain Name is identical to its trademark for THE BRITISH MUSEUM. They contend that the long established nature of their activities (in providing historical items for viewing by the public) has earned them a reputation in the mark THE BRITISH MUSEUM.

The Complainants contend that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It is submitted that the Respondent’s Internet business does not demonstrate any legitimate use of the words “British” or “museum”. The Complainants submit that they have not sanctioned the Respondent to carry on any business using THE BRITISH MUSEUM mark. Finally, the Complainant asserts that the Respondent’s activities amount to passing off and creates confusion over the source, sponsorship or affiliation with the Complainants’ trademark. Given the worldwide renown of the British Museum, there is no plausible scenario whereby the Respondent could have registered the Disputed Domain Name without being aware of the Complainants’ organization and the Disputed Domain Name was, therefore, registered and used in bad faith.

B. Respondent

The Respondent contends that the two terms “British” and “Museum” are descriptive and generic and as such no one may claim exclusive rights in them. The Respondent also contends that given the highly stylized nature of some of the Complainants’ registered marks that they cannot demonstrate confusing similarity. They also contend that even if a generic term is a registered trademark no rights in it can exist for the Complainants. The Respondent claims that it has legitimate interests in the Disputed Domain Name because as a generic term, any website can use THE BRITISH MUSEUM mark to indicate that it provides information on museums in Britain. They contend that the use of the Disputed Domain Name, therefore, satisfies the Policy.

Finally, the Respondent contends that they had no knowledge of the Complainants’ organization or activities at the time of the registration. They claim their company’s business model includes the registration of domain names containing generic terms to which no party has exclusive rights.

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided evidence of ownership of various trademark registrations in the United Kingdom of Great Britain and Northern Ireland, Republic of Korea, Japan, Australia and the United States of America for THE BRITISH MUSEUM mark dating from June 23, 1989. In addition, the Complainants allege and the Panel accepts that this institution has operated for approximately 250 years and as a consequence of its operations and diverse activities, including providing free entry to exhibitions, acquiring various collections of historic materials, merchandising and public education, has developed a very substantial goodwill and reputation in both the United Kingdom and worldwide in connection with its name. It is certainly not overstating the case to suggest, as the Complainants do, that the British Museum is one of the most well-known and famous museums in the world.

The Disputed Domain Name although not including the definite article “the” is otherwise identical to the trade name of mark THE BRITISH MUSEUM and accordingly the Panel is satisfied that the Disputed Domain Name is at the least confusingly similar to the Complainants’ name and mark and that Paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainants must show a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainants point to the fact that the Respondent is not commonly known as nor trades under the name or style “British Museum”, and that the Complainants have not authorized or licensed the Respondent to use its name or trademark. In view of the worldwide fame and renown of the Complainants’ institution, the Complainants say that it would be implausible to suggest that the Respondent was unaware of the Complainants’ name or trademarks for THE BRITISH MUSEUM - see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.

The Respondent has submitted evidence to rebut the Complainants’ allegations in that it contends that before it had any notice of this dispute, its use of the Disputed Domain Name was made in connection with a bona fide offering of goods and services. It also contends that it is using the Disputed Domain Name as a generic identifier for the products and services offered on <britishmuseum.com> without intending to take advantage of the Complainants’ reputation, and that it does not use THE BRITISH MUSEUM trademark in commerce in the United States of America where the Respondent is located.

In spite of the generic nature of the individual words “british” and “museum”, the Panel considers that the Complainants’ institution known as the British Museum as noted above, is extremely well known worldwide and enjoys a substantial degree of secondary meaning in connection with its name and trademarks. In the Panel’s view a reference to the British Museum or to an abbreviation such as the “British Museum” in the singular, connotes the Complainants’ institution.

The British Museum has a long and very established history and has been operating various trading activities for many years. Even its registered trademarks extend back to 1989, which predates the registration of the Disputed Domain Name by fourteen years. The only evidence provided by the Respondent of its operation of a business under the Disputed Domain Name is that it offers a site relating to museums in United Kingdom of Great Britain and Northern Ireland , which also contains links to other sites and advertisements. Looking at the snapshots of this site provided by the Complainants several of the first links relate specifically to the Complainants’ institution. On this basis, considering that the Respondent’s website resolves to a series of famous museums and attractions outside the United States of America and in light of the worldwide renown of the Complainants’ institution, it is simply not credible and the Panel does not accept the Respondent’s contention that it had no knowledge of the British Museum.

The Panel also does not consider that the Respondent is making a purely non-commercial fair use of its site. Rather, it would appear that the site contains sponsored links and advertisements for commercial gain.

Accordingly it seems to the Panel that the Respondent has deliberately used the Disputed Domain Name in full knowledge of the fame and renown of the Complainants’ institution and that it has no legitimate rights or interests in the Disputed Domain Name, and the requirements of Paragraph 4(a)(ii) of the Policy are therefore satisfied.

C. Registered and Used in Bad Faith

For the reasons set out above the Panel agrees with the Complainants’ contention that the Respondent must have been aware of the Complainants’ rights when it registered the Disputed Domain Name. The Respondent, as noted above, appears to be using their website for a commercial purpose and in particular is using it for sponsored links and third party advertising and there is nothing to suggest that it has been used for any other purpose since its inception.

Consequently, the Panel considers that the Disputed Domain Name was registered and has subsequently been used by the Respondent in bad faith with a view to creating a likelihood of confusion amongst Internet users as to the sponsorship by or affiliation with the Complainants (see Museum of Science v. Pro-Life Domains Inc., WIPO Case No. D2003-0424, where bad faith was shown by a likelihood of confusion of affiliation, similar to the case here). The Complainants have therefore satisfied the requirements of Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is upheld and the Panel orders that the Disputed Domain Name is transferred as requested to the First Complainant.

Alistair Payne
Sole Panelist

October 31, 2007