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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Energy Saving Trust Limited v. Simon McLean, Energy Saving Scotland

Case No. D2008-1403

1. The Parties

The Complainant is The Energy Saving Trust Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”), represented by TLT LLP, United Kingdom.

The Respondent is Simon McLean, Energy Saving Scotland of Glasgow, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name, <energysavingscotland.org> (the “Domain Name”), is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2008. On September 16, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In reply to a suspension request by the Complainant, the Center suspended the proceedings on September 25, 2008 to enable the parties to attempt to negotiate a settlement. On October 24, 2008, settlement not having been reached, the Center reinstated the proceedings on the basis of a request by the Complainant.

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”).

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 October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2008.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 26, 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.

On receipt of the papers in the case, it appeared to the Panel that certain assertions in the Complaint, while likely to be factually accurate, were unsupported by any evidence. The Panel concluded that dimissing the Complaint would likely lead to an unjust result and invited the Complainant to amend the Complaint to support its position. In somewhat similar circumstances this Panel dismissed the complaints in Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036 and Games Workshop Limited v. Admin, Domain, WIPO Case No. D2008-1321, however in both those cases, unlike this one, the complainants had previously been given an opportunity to amend their complaints to remedy the defects, but they failed to do so.

The Complainant filed an Amended Complaint on December 16, 2008. The Respondent was invited to respond to the Amended Complaint by January 6, 2009, but did not respond.

4. Factual Background

The Complainant is a non-profit organization dedicated to the provision of information and advice to the public on energy efficiency.

The Complainant is the registered proprietor of inter alia the following trade mark registrations, namely:

U.K. No. 2399581 filed August 16, 2005 for ENERGY SAVING TRUST (device)

U.K. No. 2469365 filed October 12, 2007 for ENERGY SAVING WEEK (device)

Both those registrations are in classes 16, 35, 36, 41 and 42 for a variety of goods and services associated with the provision of information relating to energy efficiency. The earlier of the two registrations was registered on January 27, 2006 and the latter was registered on April 11, 2008.

Since at least January 2008 it has been public knowledge in the United Kingdom that plans were afoot for the Complainant to operate an advice network in Scotland under and by reference to the name “Energy Saving Scotland”.

On April 4, 2008 the Complainant registered the domain name, <energysavingscotland.org.uk>.

On April 8, 2008 the Domain Name was registered.

On June 6, 2008 the Complainant’s representatives wrote to the Respondent drawing the latter’s attention to their client’s rights and seeking transfer of the Domain Name. The ensuing correspondence continued until October 31, 2008, but without arriving at any satisfactory result. The Respondent expressed a willingness to transfer the Domain Name, but took no active steps to that end.

The Domain Name was connected to a trading website of the Respondent offering inter alia loft insulation services, but the site was taken down by the Respondent’s Internet Service Provider (“ISP”). It appears from the correspondence between the parties that this may have occurred as a result of a complaint to the ISP by the Complainant, but the Panel has not been provided with the details.

5. Parties’ Contentions

A. Complainant

The Complainant demonstrates that it is the registered proprietor of the trade mark registrations for ENERGY SAVING TRUST (device) and ENERGY SAVING WEEK (device), details of which appear in Section 4 above.

The Complainant points to its registration of the domain name, <energysavingscotland.org.uk>, on April 4, 2008, four days before the Respondent registered the Domain Name.

The Complainant claims to have acquired a substantial reputation and goodwill in its “Energy Saving Scotland” name as a result of what it claims to have been a “considerable investment in the development of the Energy Saving Scotland network”.

The Complainant understands the Respondent to be “an individual (…) operating as a heat insulation contractor and installer, whose business stands to benefit from customers who may seek and obtain grants from the Scottish Government”.

The Complainant contends that the Domain Name is “confusingly similar to the domain name, trade and service mark in which the Complainant has rights and reputation.”

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that “it appears that the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name or any similar name before taking over the domain and has attempted to trade by reference to the domain name in order to confuse its operations with the Complainant’s although a search of online trade directories (www.yell.com, www.192.com) reflects that it has not previously traded by reference to the name �Energy Saving Scotland’ and has no association with that name.” The Complainant produces the results of its online enquiries. The Complainant asserts that the Respondent is in no way affiliated with the Complainant.

The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. The Complainant refers to the correspondence between the parties, which took place between June 6, 2008 and October 31, 2008 in which the Respondent asserted that the Domain Name was of no importance to him and that he was willing to transfer it to the Complainant. In that correspondence the Complainant complained to the Respondent that people were visiting the Respondent’s site believing the Respondent to be in some way associated with or authorized by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

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

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

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

B. Identical or Confusingly Similar

The Complainant contends that the Domain Name is “confusingly similar to the domain name, trade and service mark in which the Complainant has rights and reputation”.

The Complainant’s domain name is <energysavingscotland.org.uk>, which the Complainant registered four days before the Domain Name was registered. The reference to the trade and service mark is in fact a reference to three marks, namely the registered trade marks, ENERGY SAVING TRUST (device) and ENERGY SAVING WEEK (device), details of which are at Section 4 above, and a common law trade mark, ENERGY SAVING SCOTLAND, derived from what the Complainant contends has been “its considerable investment in the development of the Energy Saving Scotland network”.

The Panel has been provided with a wealth of material to demonstrate that by the time that the Domain Name was registered on April 8, 2008 a very considerable amount of planning had taken place in relation to the launch of the Complainant’s “Energy Saving Scotland” project and that large sums of money had been invested in the project. The Complainant’s service under the name of “Energy Saving Scotland” was launched amidst substantial publicity on April 1, 2008.

The Panel finds that by the date of registration of the Domain Name (April 8, 2008), the Complainant possessed common law rights in respect of the unregistered trade mark ENERGY SAVING SCOTLAND based on the goodwill developed over the preceding months. The existence of the “Energy Saving Scotland” brand and its proposed area of activity was a matter of public knowledge at least as early as January, 2008 when it was the subject of public debate in Parliament.

The Panel finds that the Domain Name (absent the generic top level domain suffix, which may be ignored for this purpose) is identical to the Complainant’s unregistered trade mark, ENERGY SAVING SCOTLAND, and is confusingly similar to the Complainant’s registered device trade marks referred to above.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s trading name, Energy Saving Scotland, and without justification, but with the intention of exploiting the Domain Name commercially, riding on the back of the Complainant’s goodwill. The Complainant has produced the results of various enquiries it has made into the Respondent with a view to checking on any rights or legitimate interests, which the Respondent may claim to have, but no such rights or legitimate interests have come to light.

If the Complainant’s contention is made out, the Respondent cannot have any rights or legitimate interests in respect of the Domain Name.

The Respondent has not responded to the Complaint, but in the correspondence between the parties in the latter part of 2008, the Respondent stated that he registered the Domain Name because it was a suitable name for his business use and for no other reason. He denied knowledge of the Complainant’s interest in the name.

The Panel finds that denial a difficult one to accept given the evidence produced to the Panel of substantial publicity leading up to the launch of the Complainant’s services in Scotland, which the Panel concludes would have been bound to have come to the attention of someone such as the Respondent, an individual engaged in the installation of energy saving materials in Scotland.

Significantly, the Respondent has not seen fit to respond to the Complaint. He has had several opportunities to demonstrate any relevant rights or legitimate interests in respect of the Domain Name, namely in the pre-Complaint correspondence, in a Response to the original Complaint and in a Response to the Amended Complaint, but he has not availed himself of those opportunities.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

As indicated above, the Complainant’s primary contention is that the Respondent registered the Domain Name and is using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

The Domain Name is identical to the name under which the Complainant had been planning to (and subsequently did) trade in Scotland. Those plans had been in course of development for many months prior to the Respondent’s registration of the Domain Name and they had been a matter of public record since at least January 2008 when they were the subject of open debate in Parliament. The Respondent is a Scot engaged in the business of installing energy saving materials and it is implausible to the Panel that he could have come up with the Domain Name ignorant of the Complainant and its trading name. Moreover, it is noteworthy that he registered the Domain Name in the “.org” domain only 4 days after the Complainant had registered the same name in the “.org.uk” domain.

In the absence of any credible explanation from the Respondent, the Panel finds that the Respondent registered the Domain Name with the intention of benefiting commercially from the confusion and deception of Internet users that was bound to result from his commercial use of the Domain Name. The Panel believes it very probable that a not insignificant number of Internet users would be likely to believe that the operator of the website connected to the Domain Name was in some way associated with the Complainant.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <energysavingscotland.org>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: January 9, 2009