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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd

Case No. D2008-0841

1. The Parties

1.1 The Complainant is Fasthosts Internet Ltd, Discovery House, Gloucester, United Kingdom of Great Britain and Northern Ireland, of represented by its Chief Technology Officer.

1.2 The Respondent is Jamie Scott, Smudge It Solutions Ltd, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <fasthosts.net> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2008. On June 2, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 3, 2008 eNom 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”), 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”).

3.2 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 June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2008.

The Center appointed Matthew S. Harris as the sole panelist in this matter on July 14, 2008. 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.

3.3 On July 15, 2008, the Panel having reviewed the parties’ submissions, issued a procedural order (the “Procedural Order”) requiring the Complainant to clarify in a further submission by no later than July 18, 2008:

(a) the trade mark rights on which it relied for the purposes of the Policy; and

(b) it’s position on the question on bad faith registration (as distinct from bad faith use).

The Procedural Order also provided for the Respondent to put in a further submission responding to any additional submission by the Complainant by no later than July 23, 2008.

3.4 On July 18, 2008, the Complainant submitted a further submission (the “Supplemental Submission”) pursuant to the Procedural Order. The Respondent submitted no further submission in response.

4. Factual Background

4.1 The Complainant is a company registered in England and Wales and has been engaged since at least 1999 in the provision of various Internet related activities including the selling of domain names, web site hosting, email hosting and server hosting. It is currently the largest provider of web hosting services within the United Kingdom.

4.2 The Complainant is the owner of community trade mark (No. E2255958 filed June 8, 2001) in classes 09, 38 and 42 (the “Community Trade Mark”), which takes the following form:

4.3 The Whois details for the Domain Name record it as being registered both in the name of a company and an individual. The Complaint appears to have prepared its submissions on the basis that it is the individual that is the actual registrant of the Domain Name¹ and in the absence of any argument or contention to the contrary, this decision proceeds on this basis.

4.4 The Domain Name was registered on February 16, 1999.

4.5 As at or shortly prior to the date of the Complaint, the Domain Name resolved to a page that appeared to take the form of a produced by Sedo’s domain name parking service. The page contained various links with headings such as “Domain Names”, “Buy Premier Domain Names”, “Free Domain Names” and “Internet & Web Services”.

4.6 The Domain Name was also offered for sale through Sedo for a price in the region of Ј1,500.

4.7 As at the date of this decision the Domain Name instead redirects Internet users to a web page that appears to be operated by Smudge IT Solutions Ltd.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant’s Complaint is very short. The Complainant states that it relies upon the mark FASTHOSTS and claims to be the “legal owner of the UK trademark Fasthosts”. However, the Complaint does not identify any specific registered trade mark.

5.2 The Complainant also claims to have used the FASTHOSTS mark “in connection” with its business activities and claims to have “been trading since 1999”. However, no details are provided as to the extent of that trading, nor are details provided of how exactly the FASTHOSTS mark has been used. Further, nowhere in the Complaint is there any express claim to, or reliance upon, unregistered trade mark rights.

5.3 The sole extent of the Complainant’s contentions regarding the issue of lack of legitimate interests on the part of the Respondent is to point to a printout of the web page then appearing from the Domain Name and to state:

“This individual has no links to Fasthosts and his use of our mark is to confuse our customers and profit from our brand and trademark”.

5.4 The entirety of the Complainant’s contention in relation to bad faith registration and use is as follows:

“As this domain redirects to a Sedo domain parking holding page selling the same products as Fasthosts, and the domain is for sale, it’s clear the primary motive for the use of this domain is commercial gain through the unauthorised use of the Fasthosts mark.”

5.5 In the Procedural Order the Panel noted the existence of the Community Trade Mark (having discovered it from its own limited examination of the online trade mark database operated by the UK Intellectual Property Office) and asked that the Complainant clarify whether or not it relied on this mark for the purposes of these proceedings. It also requested that the Complainant clarify whether it claimed and sought to rely upon any unregistered trade mark right.

5.6 The Procedural Order further noted that the Complainant had failed to identify in its Complaint the date upon which the Respondent had registered the Domain Name and therefore the date upon which the issue of bad faith registration was to be judged. It also stated as follows:

“The Panel has undertaken a WHOIS search in relation to the Domain Name and notes that this prima facie suggests that the Domain Name was registered on February 16, 1999. It is unclear to what extent (a) this accurately reflects when the Respondent acquired its interest in the Domain Name; (b) to what extent this pre-dates the Complainant’s use of the “Fasthosts” name; and (c) why it is (if it is so alleged) that the Respondent would have been aware of the Complainant actual or intended use of the “Fasthosts” name at the date of registration.”

5.7 The Complainant was asked to clarify its position in this respect. The Procedural Order also noted that a failure to provide the clarifications sought might “result in the Panel drawing inferences of fact adverse to the Complainant”.

5.8 In its Supplemental Submission dated July 18, 2008 the Complainant stated that it was “referencing” the Community Trade Mark. It also copied an extract from the online database run by Companies House and accessible at “www.companieshouse.gov.uk” evidencing that the Complainant was incorporated since October 26, 1998.

5.9 However, the Complainant did not provide any further clarification of its case in relation to bad faith registration. No evidence, was offered as to when it started trading (as opposed to the date of incorporation), the extent to which it had engaged in trading activity prior to the registration of the Domain Name, the date upon which the Respondent acquired his interest in the Domain Name or in any other way sought to address the question why it was that the registration of the Domain Name was in bad faith.

B. Respondent

5.10 The Respondent did not reply to the Complainant’s contentions nor did he submit any additional supplemental submission in response to the Complainant’s Supplemental Submission.

6. Discussion and Findings

6.1 The Panel has reviewed the documents submitted by the Complainant in this case. In the light of this material, the Panel finds as set out below.

6.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 As has already been described, it was initially unclear what trade mark rights the Complainant relied upon in this case. Whilst the form of language used in the Supplemental Submission is a little unusual, it nevertheless now seems reasonably clear that the Complainant relies upon its Community Trade Mark.

6.6 The Community Trade Mark takes the form of the word “fasthosts” embodied in a larger design. The “fasthosts” text is the most prominent element of that mark and the Domain Name simply comprises the text “fasthosts” with the addition of the “.net” TLD.

6.7 Therefore, it is clear that for the purposes of the Policy the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

6.8 The Panel suspects that the Complainant also has unregistered trade mark rights in the name “fasthosts” under the English law of passing off². However, the Complainant has not sought expressly to pursue such a claim notwithstanding the fact that clarification of this aspect of the Complainant’s case was sought in the Procedural Order. In the circumstances, and given the Panel’s findings in relation to the Community Trade Mark, it is not necessary to consider this issue further.

B. Legitimate Interests and Bad Faith

6.9 This is a case where it is convenient to consider the questions of bad faith and legitimate interests together.

6.10 The Panel has little difficulty in concluding in this case that the Respondent has used and continues to use the Domain Name in bad faith. There is evidence before the Panel to the effect that for some time the Domain Name was used for a Domain Name parking page that listed links for goods and services that are very similar to those offered by the Complainant.

6.11 The way in which domain name parking services operate was described in some detail by this Panel in Owens Corning v. NA, WIPO Case No. D2007-1143. In short, a domain name owner will receive a percentage of the click though revenue that is generated as a result of Internet users clicking on a “sponsored link”. In the Owens case this Panel also explained why it is that the existence of links to companies that offer similar goods and services to a complainant will ordinarily constitute evidence that the owner of the domain name was and is aware of the complainant’s business, even if the links were automatically generated by a third party.

6.12 Further, the Complainant has alleged that the Respondent is in some manner involved with a business called “Smudge IT Solutions”. Indeed, the Domain Name currently resolves to Smudge IT Solutions’ web site. Smudge IT Solutions appears to be involved in the provision of similar services to those of the Complainant and the Complainant contends (and this is not denied) that it is the “UK’s largest provider of web hosting services”. In the circumstances, it is inherently implausible that the Respondent could be using the Domain Name in the manner described without knowledge of the Complainant’s business.

6.13 In the circumstances, the Panel is easily persuaded that the Respondent has been intentionally using a Domain Name that he knows to be similar to the name used for the Complainant’s business so to divert Internet users with an interest in the Complainant to other web sites for either his and/or Smudge It Solutions financial gain. This activity falls within the example of bad faith use that is set out at paragraph 4(b)(iv) of the Policy.

6.14 Unfortunately for the Complainant, that is not sufficient. For the Complaint to succeed, the Complainant must satisfy the Panel that the Domain Name was not only used but was also registered in bad faith by the Respondent (paragraph 4(a)(iii) of the Policy)³.

6.15 The difficulty is that in this case the Domain Name appears to have been registered as long ago as February 16, 1999. It is unclear to what extent the Complainant was even engaged in business activity at this time. The Complainant has brought forward evidence that it was incorporated on October 26, 1998 but the date of incorporation and the date upon which a company starts to trade are not the same thing. Further the Complainant positively contends that it has been trading “since 1999” but when exactly in 1999 that trading commenced is not explained.

6.16 In short, there is insufficient evidence before the Panel for it to conclude that the extent of Complainant’s business activities on February 16, 1999 were such that the Respondent was more likely than not to have been aware of the Complainant’s use of the “Fasthosts” name at that date. If the Respondent was unaware of the Complainant’s business at the time that he registered the Domain Name, then it is difficult for an allegation of bad faith registration to succeed.

6.17 Of course, even though the Domain Name was initially registered on February 16, 1999, it is possible that the Respondent acquired his interest in the Domain Name at some other time. If the Respondent actually acquired the Domain Name at some date after February 16, 1999, then it is at that this later date that the question of bad faith registration must be assessed.

6.18 It is also not even necessary that the Complainant actually commenced trading at the date that the Respondent acquired an interest in the Domain Name. If at that time the trading plans of the Complainant were known to the Respondent and the Domain Name was registered with the Complainant’s intended use in mind, then it might still have been possible to come to a finding of bad faith registration (see for example, ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669).

6.19 However, it is the Complainant that bears the burden of proof of showing bad faith registration. The Complainant has not brought any evidence before the Panel to suggest either that bad faith should be assessed on any date other than February 16, 1999, or that the Respondent for some reason had some advance notice or knowledge of the Complainant’s business plans.

6.20 Further, the Complainant cannot have been unaware of the importance of addressing the issue of bad faith registration (as distinct from bad faith use). As has already been described, the Procedural Order expressly required the Complainant to address the issue of bad faith registration in a supplemental submission. It also set out in some detail the concerns that arose from the fact that the Domain Name’s WhoIs details showed that the Domain Name had been initially registered on February 16, 1999. The Procedural Order also made it clear that failure to out a further submission on the issues raised in the Procedural Order might have adverse consequences for the Complainant.^4.

6.21 There is also the fact that the Domain Name comprises the ordinary English words “fast” and “hosts” in combination. This is not a case where the words embodied in the domain name whether individually or in combination are so inherently unusual that even absent other evidence a panel might still conclude that it is more likely than not that the domain name was chosen because of the Complainant’s use of that name.

6.22 In the circumstances, the Complainant has failed to show for the purposes of these proceedings that the Domain Name was registered (as opposed to subsequently used) in bad faith. Accordingly, the Complainant has failed to prove all the elements of paragraph 4(a)(iii) of the Policy. Given this finding, there is no need for the Panel to reach a decision on the question of legitimate rights and interests.

6.23 Lastly, it is worth noting that it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case. It is for a complainant to prove its case and it is not for a panel to do so on a complainant’s behalf. Notwithstanding this, the Panel decided in this case to issue an order providing the Complainant with an opportunity to address a number of gaps in its case. It did so having noted that the Complainant was not legally represented, may not have been legally advised and because the gaps in question were ones that it seemed the Complainant might have been able to fill. However, so far as the issue of bad faith registration was concerned, the Complainant chose not to avail itself of that additional opportunity.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Matthew S. Harris
Sole Panelist

Dated: July 24, 2008