Lloyds TSB Bank plc v. Paul Brittain

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LLOYDS TSB BANK PLC v. PAUL BRITTAIN

Case No. D 2000 -0231

1. The Parties

The Complainant is Lloyds TSB Bank Plc., a company incorporated under the laws of England and Wales, with its principal place of business at 71 Lombard Street, London EC3P 3BS, England.

The Respondent is Paul Brittain of 3 Hogarth Close, Pheasey, Birmingham B43 7 UL, England.

2. The Domain Name(s) and Registrar(s)

This dispute concerns the domain name <lloydstsb-visa.com>. The registrar with which the domain name is registered is Network Solutions Inc. (hereinafter referred to as "the Registrar".

3. Procedural History

On 30 March 2000, the Complaint was filed by the Complainant with the WIPO

Arbitration and Mediation Center (hereinafter the "Center") pursuant to the

Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") adopted

by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN")

on October 24, 1999.

On April 3, 2000, the Center acknowledged receipt of the said Complaint and

on the same date, in response to a request from the Center, the Registrar confirmed

inter alia that it was in receipt of the Complaint sent by the Complainant,

that the Registrar is the registrar of the said domain name, that the Respondent

is the registrant of the said domain name, that the Network Solutions 5.0 Service

Agreement is in effect and that the said domain name is on "hold" status.

On April 14, 2000, having satisfied itself that the said Complaint satisfied

the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute

Resolution Policy (hereinafter referred to as the "Rules") and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental

Rules"), and that payment in the required amount had been made by the Complainant,

the Center sent a Notification of Complaint and Commencement of Administrative

Proceeding to the Respondent.

On May 4, 2000, the Center received the Respondent's Response. On May 23, 2000,

the Complainant having elected to have a three member administrative panel,

the Center appointed a three person administrative panel consisting of Mr. James

Bridgeman, Justice Austin Amissah and Mr. Frederick Mostert, having received

a Statement of Acceptance and Declaration of Impartiality and Independence from

each of them.

This Administrative Panel is satisfied that it has been properly appointed

under the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is the owner of a series of UK registered trademarks for the

mark <LLOYDS TSB>, registered in class 36 under No. 2148403 as of October

17, 1997, in respect of a detailed list of services in that class. The colour

blue (Pantone 2747) is claimed as an element of the third mark in the series.

The Complainant was established on June 28, 1999, by the merger of two banks

namely Lloyds Bank Plc. and the Trustee Savings Bank Plc. Lloyds Bank Plc had

existed in some form since 1865 and since then Lloyds Bank had used the trademark

<Lloyds> extensively in connection with the provision of financial and

insurance products and services.

The Trustee Savings Bank Plc. had used the acronym TSB as a service mark in

connection with the provision of financial services and products.

Since the date of the said merger the Complainant has been carrying on business

under the trading name <Lloyds TSB> and since that date the Complainant

has used the said <LLOYDS TSB> trademark in connection with its provision

of financial products and services.

The Complainant has approximately 15 million customers and in 1999, the Complainant's

profits before tax were approximately £3.6 billion.

The Complainant is the owner of a number of domain names including: lloydstsb.com,

lloydstsbbusiness.com, lloydstsbcommercial.com, lloydstsbcorporate.com, lloydstsbgraduate.com,

lloydstsb.co.uk and lloydstsbgroup.co.uk where its principal sites can be found.

The Complainant is licensed to use the service mark <VISA> in relation

to the provision of financial services and does in fact supply financial services

under this mark.

The Complainant is a retail bank established on June 28, 1999, by the merger

of Lloyds Bank and the Trustee Savings Bank. Lloyds bank had an established

goodwill in the financial services industry going back to 1865. The Trustee

Savings Bank had carried on business for a number of years using the acronym

TSB as its trade name and had an established goodwill under that name in the

retail banking industry. Since the merger the Complainant has been trading under

the name Lloyds TSB.

The Respondent was formerly a customer of the Complainant but is no longer

so. The Respondent is in dispute with the Complainant with regard to a small

sum of money which he alleges is not due and owing as claimed by the Complainant.

The Respondent uses the www site accessible via the said domain <lloydstsb-visa.com>

inter alia to vent his spleen.

5. Parties’ Contentions

A. Complainant

The Complainant requests this Administrative Panel to issue a decision that

the said domain name <lloydstsb-visa.com> be transferred to the Complainant

because

(i) it is alleged that the domain name is confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) it is alleged that the Respondent has no rights or legitimate interests

in respect of the domain name; and

(iii) it is alleged that the said domain name <lloydstsb-visa.com> was

registered and is being used in bad faith.

As regards the issue of whether the domain name is identical or confusingly

similar to a trade mark in which the Complainant has rights, the Complainant

makes the following submissions:

The Complainant is the registered proprietor of the above referenced UK registered

trademark. In addition to the said United Kingdom registration, the Complainant

is the proprietor of pending applications for the said trademark <LLOYDS

TSB> in Argentina, Australia, Brazil, Colombia, Ecuador, Hong Kong, Japan,

New Zealand, Panama, Paraguay, SE Asia, Switzerland and Uruguay and has a pending

application for a Community Trade Mark.

The Complainant is also the proprietor of the trademark <Lloyds> and

has registrations and pending applications for this trademark in the following

jurisdictions: Argentine, Australia, Benelux, Bahamas, BVI, Cayman, Ecuador,

Gibraltar, Guatemala, Guernsey, Hong Kong, India, Japan, Jersey, Macao, Monaco,

New Zealand, Panama, Paraguay, Portugal, Spain, Switzerland, Taiwan, UAE, United

Kingdom, Uruguay, USA, Venezuela and is the proprietor of pending applications

for this mark in CTM and Ireland.

The Complainant is also the proprietor of the trademark <TSB> and has

registrations for said trademark in the following jurisdictions: Guernsey, Italy,

Jersey, Spain, United Kingdom. In addition the Complainant has pending applications

for this trademark in CTM and Japan.

The Complainant has not furnished any evidence of its registrations or pending

applications for these marks other than a copy of the Registration Certificate

for the United Kingdom series.

The Complainant submits that the said domain name is confusingly similar to

the Complainant's registered service mark.

As regards the rights or legitimate interest of the Respondent in the said

domain name, the Complainant has submitted a print out of the Respondent's site

and submits that it is apparent from the www site, that the Respondent has no

rights or legitimate interest in the said domain name, that the Respondent was

aware of the Complainant's rights in the trademark <LLOYDS TSB> and has

registered the domain name with the intention of publicising offensive comments

about the Complainant, to embarrass the Complainant and to divert customers

away from the Complainant.

As regards the allegations that the Respondent registered the said domain name

and is using the said domain name in bad faith, the Complainant submits that

the Respondent is a former customer of the Complainant and that he bears a grudge

arising out of this relationship.

It is alleged that the Respondent's www site contains material which is untrue,

defamatory and offensive. It is further alleged that the Respondent has used

copyright material taken from the Complainant's site at lloydstsb.co.uk and

another www site elcome.com that is leased by the Complainant. The Complainant

submitted extracts from these www sites as evidence in support of its contentions.

The Complainant submits that this is evidence of bad faith in that it establishes

that the Respondent has the intention of confusing the Complainant's customers.

Furthermore the Complainant alleges that the Respondent has published on the

www site a letter purporting to be further criticism of the Complainant's service

mark made by a third party, which is expressed in highly offensive language.

The Complainant has submitted a copy of said letter and alleges that it has

been incorporated into the site with the intention of harming the Complainant's

reputation and to tarnish the Complainant's trademark.

The Complainant further alleges that the Respondent has incorporated various

links in this site which lead to the sites of the Complainant's principal competitors,

namely Barclays Bank, HSBC and Virgin One. It is alleged that in providing these

links the Respondent deliberately intended to harm the Complainant's business,

to deter prospective customers and to divert existing customers to the Complainant's

competitors.

B. Respondent

The Respondent submits that there is no company trading under the name <lloydstsb-visa.com>,

that the name was registered for the purpose of displaying factual material

that the respondent legitimately received, that the domain name was legitimately

linked to other material and that the domain name was registered and is being

used in good faith.

The Respondent submits that the Complainant has sought to mislead the Administrative

Panel in alleging that the Respondent is in debt to the Complainant.

The Respondent makes a number of submissions relating to the content of his

www site, in particular that his allegations that the Complainant has a customer

intimidation policy which is operated through debt collecting agencies. He submits

that the statements on his www site are not defamatory or untrue.

It is also submitted that customers would not be confused into believing that

his www site was connected with the Complainant because of the use of "blue"

language on the site.

The Respondent submits that he removed a black horse logo from his site as

soon as he became aware of the Complainant’s concerns in this regard. Similarly

the Respondent removed all links from the site once he became aware of the Complainant's

concerns

6. Discussion and Findings

This Administrative Panel accepts that there is an ongoing dispute between

the parties in relation to a small sum of money. The Respondent would appear

to see this as an issue of principle. It is obvious that the Complainant is

correct is stating that the Respondent holds a grudge in respect of this dispute.

The Complainant has alleged that the subject matter of the Respondent's www

site is untrue, defamatory and offensive. This dispute and the allegations of

the Complainant are outside the jurisdiction of this Administrative Panel.

In accordance with paragraph 4 of the Policy, the Complainant is required to

satisfy this Administrative Panel:

(i) that the Respondent's domain name is identical or confusingly similar to

a trademark 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 said domain has been registered and is being used in bad faith. As

regards the Complainant's trade marks, the Complainant has established that

it is the registered proprietor of <LLOYDS TSB>, registered in the United

Kingdom in class 36 under No. 2148403. Furthermore this Administrative Panel

is satisfied that it has common law rights in the <LLOYDS TSB> mark. Furthermore

the Complainant submits that it is licensed to use the <VISA> trademark

and has established that its predecessor in title, Lloyds Bank, has held such

licence since 1987. This Administrative Panel must therefore decide as to whether

the said domain name is identical or confusingly similar to the Complainant's

<LLOYDS TSB> service mark. Since both Parties are resident in England

it seems appropriate that the laws of England and Wales should be applied to

this question. In Pianotist Co's Application (1906) 23 R.P.C. 774 at 777 Parker

J. set out what has become the standard test for comparison: "You must take

the two words. You must judge them, both by their look and by their sound. You

must consider the nature and kind of customer who would be likely to buy those

goods. In fact you must consider all the surrounding circumstances; and you

must further consider what is likely to happen if each of those trade marks

is used in a normal way as a trade mark for goods of the respective owners of

the marks." Applying this test, this Administrative Panel is satisfied that

the domain name is confusingly similar to the Respondent's service marks.The

next question this Administrative Panel must address is whether the Complainant

has established a prima facie case that the Respondent has no rights

or legitimate interests in respect of the domain name. Paragraph 4 (c) of the

Policy provides some examples of how the Respondent can have such rights and

interests viz. (i) if he can show use of, or demonstrable preparations to use,

the domain name or a name corresponding to the domain name in connection with

a bona fide offering of goods or services before any notice to him of

the dispute; or(ii) if he (as an individual, business, or other organization)

has been commonly known by the domain name, even if he has acquired no trademark

or service mark rights; or(iii) if he is making a legitimate noncommercial or

fair use of the domain name, without intent for commercial gain to misleadingly

divert consumers or to tarnish the trademark or service mark at issue.The Respondent

has not made any claim to have used or prepared to use the domain name in connection

with a bona fide offering of goods or services. Neither does he make any claim

to have been commonly known by the domain name. The domain name is a combination

of the Complainants service mark and the <visa> service mark which

the Complainant is licensed to use. It is inconceivable that the Respondent

could satisfy any of the criteria set out in paragraph 4(a)(ii) of the Policy.The

Respondent has submitted that he has a right to comment on the Complainant's

services. This is quite distinct from the right in the name/domain. The Respondents

right to complain is not a matter for this Administrative Panel.This Administrative

Panel is satisfied that the Respondent is using the domain name with the intention

of diverting consumers from the Complainant and to tarnish the Complainant's

reputation. It is not necessary for us to decide whether such use may be classified

as commercial or noncommercial for the purposes of the policy. We therefore

conclude that the Complainant has established that the Respondent has no rights

or legitimate interests in respect of the domain name.As to whether the Complainant

has registered the domain name in bad faith, it is common cause that the Respondent

registered the domain name to establish a www site primarily to publish critical

comments about the Complainant, to publicize his dispute with the intention

of disrupting the Complainant's business.Since registration, the Respondent

has established such a www site and inter alia by using copyright material

of the Complainant, has given this site an appearance, at least initially, (akin

to initial interest confusion) giving the impression that there is some connection

between the site and the Complainant. It is all the more unacceptable that he

has used what has been described as "blue" language on this site. Furthermore

he has created links to the www sites of the Respondent's competitors and in

the view of this Administrative Panel these links were established to divert

custom away from the Complainant.Paragraph 4(b) of the Policy sets out certain

activities which an Administrative Panel may accept as evidence of registration

and use in bad faith. One of the examples given is that the domain name has

been registered the domain name primarily for the purpose of disrupting the

business of a competitor. The Respondent is not a competitor of the Complainant,

however in the view of this Administrative Panel, his use of the Complainant's

copyright material, the fact that he registered the domain name and is using

the domain name with the sole intention of publicising focused critical comment

about the Complainant and has provided links to the Complainant's competitors

with a view to actively diverting custom away from the Complainant, taken together

is sufficient to allow this Administrative Panel to conclude that the domain

name has been registered and is being used in bad faith.

7. Decision

With reference to Paragraphs 4(i) of the Policy and rule 15 of the Rules this

Administrative Panel decides that the Respondent has registered the domain name

<lloydstsb-visa.com> which is identical or confusingly similar

to the Complainant's trade mark, that the Respondent has no rights or legitimate

interest in respect of said domain name and that said domain name has been registered

and is being used in bad faith by the Respondent. This Administrative Panel

therefore decides that the said domain name <lloydstsb-visa.com>

should be transferred to the Complainant.

James Bridgeman

Presiding Panelist

Justice Austin Amissah Frederick Mostert

Panelists

Dated: 6 June 2000

More cases by this complainant

• Lloyds TSB Bank PLC v. N/A, Daniel Carmel-Brown — D2008-1889 · lloydsbg.com · Transfer · 27 Jan 2009
• Lloyds TSB Bank PLC v. Williams Bar — D2008-1705 · lloydbanktsbplc.com, lloydsbankgroup.com · Transfer · 01 Jan 2009