Pickfords Limited v. Shop Shop Shop

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pickfords Limited v. Shop Shop Shop

Case No. D2001-0333

1. The Parties

The Complainant is Pickfords Limited, a company incorporated in England with

its principal place of business at Heritage House, 345 Southbury Road, Enfield,

Middlesex EN1 1UP, U.K. The Respondent is Shop Shop Shop of 236 London Road,

Leicester Leicestershire LE2 1RH, U.K. The Complainant is represented by Messrs

Boult Wade Tennant of Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT. The

Respondent which appears to trade as "www.shop-shop-shop.net" is represented

by Ms. Maria Lopez who describes herself as "owner".

2. The Domain Name and Registrar

The domain name in dispute is <pickfordsremovals.com>. The Registrar

for the domain name is Tucows, Inc., of 96 Mowat Avenue, Toronto, Ontario, Canada

M6K 3MI.

3. Procedural History

The complaint was received by the WIPO Arbitration and Mediation Center by

email on March 16, 2001, and by hard copy on March 23, 2001. Acknowledgement

of receipt of the complaint was dispatched by the Centre on March 16, 2001.

A request for registrar verification was sent to the Registrar Tucows.com, Inc.,

on March 16, 2001. The Registrar responded confirming that the registrant was

Shop Shop Shop and that the administrative contact was Lopez, Maria.

Acknowledgement of reciept of the complaint was copied to the Respondent on

March 16, 2001. Maria Lopez acknowledged receipt to Ms Edirisinghe of the Center

by email on March 16, 2001, in which she stated;

"Dear Mr. Edirisinghe,

I acknowledge receipt of your email. For your information on receipt of the

first documentation from Boult Wade Tennant 9 March 2001, I pointed the same

day, the domain name www.pickfordsremovals.com at the www.allied-pickfords.co.uk

website. I hope this helps. Sincerely, Maria Lopez, Owner Shop Shop Shop, 236

London Road, Leicester LE2 1RH UK".

Notification of Complaint Complaint and Commencement of Administrative Proceedings

was subsequently given to Shop Shop Shop on March 27, 2001.

Ms Maria Lopez responded on April 12, 2001 using hard copy headed notepaper

"www.shop-shop-shop.net".

In her hard copy letter she stated as follows:-

"The domain name "pickfordsremovals.com" was originally registered

by Black Cat 570 Fosse Way, Leicester LE7 4TF, UK on 15 March 1999, not the

chosen respondent Shop Shop Shop.

The reason for the administrative contact being Shop-Shop-Shop was for the

domain name transfer, with the permission of Mr. P. Caroll on 23 January 2001

to Shop-Shop-Shop using the Open SRS account provided by the Registrant Tucows

Inc.

The transfer was made for Mr. P. Caroll, Black Cat, so Shop-Shop-Shop could

fore fill (sic) the request made by Mr. P. Caroll to manage the domain name,

pickfordsremovals.com, on a different server other than the one the domain name

was currently running on.

Shop-Shop-Shop therefore does not own the domain name pickfordsremovals.com

but is managing the domain name under the instruction of our client Mr. P. Caroll.

In light of the dispute papers Shop-Shop-Shop proceeded on 6 March 2001 (sic),

Shop-Shop-Shop did advise Mr. P. Caroll of our receipt of the dispute case and

advised on changing the ownership of the domain name".

Later in her letter Ms Lopez summarises her position as follows:-

"Shop-Shop-Shop is not the owner of the domain name pickfordsremovals.com.

The owner of pickfordsremovals.com is currently Black Cat, 570 Fosse Way, Leicester

LE7 4TF UK.

Registered on 15 March 1999 not the Respondent Shop-Shop-Shop.

The domain name pickfordsremovals.com as of March 6 2001 is currently pointing

in good faith to Allied Pickfords.co.uk.

As of 2 March 2001, Tucows, Inc having been informed of the dispute over pickfordsremovals.com

has terminated the possibility of changes being made to the ownership of the

domain name by Shop-Shop-Shop."

On May 29, 2001, the Panel issued an "Administrative Panel Order No. 1".

For the reasons set out in the procedural order Black Cat (the entity that apparently

registered the domain name originally) was given notification of the Complaint

and of the Respondent’s letter of April 10, 2001. Black Cat filed a letter of

Response to the

Complaint on June 11, 2001, which the Panel has taken into account in reaching

this decision. By "Respondent" reference will be made indistinctively

to Black Cat and the current Registrant, Shop Shop Shop.

4. Factual Background

The Complainant, Pickfords Limited, has used its famous mark "PICKFORDS",

in connection with moving services since at least the mid-1600’s. The trademark

PICKFORDS was first registered in the United Kingdom under number 1285667 on

October 1, 1986, in class 39 covering inter alia; "transportation

and delivery of goods by road; arranging the transport and delivery of goods

by land and by sea; removal services...".

The Complainant asserts that the registration is in full force and effect,

unrevoked and uncancelled. A copy of the Patent Office website showing the registration

is annexed to the Complaint at Annex D.

The Complainant also has other registrations consisting of or incorporating

the word PICKFORDS in the United Kingdom including numbers 1285669, 1349621,

2100867 in class 39. These are annexed to the Complaint as Annex E.

Pickfords Limited have also registered the trademark PICKFORDS in a number

of countries as evidenced by Annex H to the Complaint.

Pickfords Limited also asserts that revenue figures relating to the trademark

Pickfords during the last year have amounted to £78 million in the United Kingdom

alone. The Complainant points out that this figure would be significantly higher

if figures from all the countries in which it trades are included.

The history of this Complaint started as a result of the Complainant becoming

aware of the Respondent’s registration of the domain name <pickfordsremovals.com>.

Boult Wade Tennant acting on behalf of Pickfords Limited sent a cease and desist

letter to the Respondent dated December 13, 2000. This letter is annexed as

Annex I to the Complaint. It should be noted that the letter was sent to Black

Cat (Pickfords Removals – Dom) Limited at 570 Fosse Way, Leicester LE7 4TR.

The letter sought a transfer and assignment of the domain name <pickfordsremovals.com>

to the Complainant. The letter was apparently not delivered and subsequently

returned by the Post Office. According to a Statutory Declaration signed by

Mr. Mahomed Daud of Boult Wade Tennant, Pickfords then arranged for an enquiry

agency to conduct an investigation into the ownership of the domain name which

revealed that the domain name <pickfordsremovals.com> had been registered

on March 15, 1999, by "Black Cat".

Following receipt of the investigation report Boult Wade Tennant wrote to Mr. Peter Caroll

at Black Cat Warehouse Limited enclosing a copy of the previous December 13

letter. According to Mr. Daud, Mr. Peter Caroll of Black Cat Warehouse Limited

responded by telephone on January 9, 2001, to say that he had received the letter

and that if the Complainant wished to purchase the domain name he should be

made an offer. He was asked to put this in writing but refused but indicated

that he would be prepared to sell the name for £50,000. The Complainant responded

by letter of January 26, 2001, in which they indicated that the suggested

figure was "far too high" and warning that they were prepared to invoke

the ICANN Dispute Resolution process. They did however offer to purchase the

name for a consideration of £500.

On January 29, 2001, Mr. Caroll telephoned Boult Wade Tennant to enquire "whether

in fact I (Mr. Daud) had missed out a few noughts from the figure given".

He said that he would now put the name up for sale on the internet and use a

message worded as "pickfordsremovals.com is up for sale due to financial

difficulties and pressure from solicitors". Mr. Caroll went on to say that

a figure of £50,000 would be considered reasonable for the transfer.

As the Panel set out in its reasons for the Administrative Panel Procedural

Order No.01, the proceedings were commenced against SHOP-SHOP-SHOP as a result

of verification received from the Registrar on March 16, 2001. However given

the response from Ms. Lopez of SHOP-SHOP-SHOP to the effect that the factual

owner of the domain name was Black Cat, the Panel felt it right that Black Cat

should have an opportunity to respond. They have now done so.

The Panel, having considered the response from Black Cat and finding nothing

in that Response which contradicts the factual background set out in the Complaint,

the Panel is prepared to accept the Complainant’s assertions as to the factual

background and in particular as to the Complainant’s trademark rights and the

history of the current dispute.

5. Discussion and Findings

In order to succeed in its request for an order to transfer the domain name

the Complainant has to prove that each of the elements set out in paragraph

4(a) of the Uniform Domain Name Dispute Resolution Policy are present.

These are as follows:

(i) The Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interest in respect of the

domain name.

(iii) The Respondent’s domain name has been registered and is being used in

bad faith.

The Panel proposes to deal with each of these in turn.

(i) Respondents domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights.

The Panel is, for reasons set out above, satisfied that the Complainant has

both registered and unregistered trademark rights in the mark PICKFORDS in respect

of removal services.

Black Cat submits that the domain name could not be confusingly similar to

a trademark as the trademarks "Pickfords Removals" or "pickfordsremovals.com"

does not exist. The Panel rejects this argument and finds for the Complainant

on this issue; that the domain name is confusingly similar to the trademark

"PICKFORDS".

(ii) The Respondent has no rights or legitimate interest in respect of the

domain name.

In support of this contention the Complainant asserts that the Respondent:

(a) Is in no way connected with Pickfords.

(b) Has no authority, licence or permission from Pickfords to use its trade

name, trademarks or service marks.

Black Cat responds by stating that the domain name <pickfordsremovals.com>

was registered for the Respondent (sic) a Mr. A. Pickford on March 15, 1999.

"Pickford" is a family name which is being used in good faith and

that Mr. Pickford has a legitimate interest to register any domain names

containing his own family name.

The Panel notes that the response from Black Cat is signed by a Mr. A. Pickford.

This appears to be the first reference to Mr. Pickford. Indeed Ms. Lopez in

her response on behalf of SHOP-SHOP-SHOP refers to the transfer being made by

a Mr. P. Caroll of Black Cat. Indeed Mr. Caroll is recognised in the investigator's

report obtained by the Complainant as one of the directors of Black Cat Warehouse

Limited. There does not however appear to be any reference to

Mr. A. Pickford in that report. Black Cat have chosen not to produce any documentary

evidence to support the link with Mr. A. Pickford. In these circumstances the

Panel finds that it is unable to accept that the use of the family name "Pickford"

gives a legitimate interest to the Respondent. Consequently the Complainant

succeeds on this issue.

(iii) The Respondents domain name has been registered and is being used in

bad faith.

The Complainant relies upon the Respondent’s offer to sell the domain name

<pickfordsremovals.com>. Pursuant to paragraph 4(b)(i) of the Policy the

Complainant is entitled to rely as evidence of registration and use of a domain

name in bad faith upon

"Circumstances indicating that you have registered or have acquired the

domain name primarily for the purpose of selling, renting or otherwise transferring

the domain name registration to the Complainant who is the owner of the trademark

or service mark or to a competitor of that Complainant, for valuable consideration

in excess of your documented out of pocket costs directly related to the domain

name."

In response Black Cat states that the intention of registering the domain name

was "Not to sell the domain name for his own personal use. It was Mr. Mahomed

Daud of Boult Wade Tennant who approached Black Cat with the offer to buy the

domain name. Please refer to the letter dated December 13, 2000".

The Panel has reviewed the December 13, 2000, letter and finds the Respondent’s

assertion in this respect groundless. All that the Complainant was offering

in the December 13, 2000, letter was to pay the Respondent’s "reasonable

costs in this matter to date".

The Complainant submits that there is no evidence of any actual or contemplated

good faith use by the Respondents of the domain name <pickfordsremovals.com>.

The Respondent's case on this submission appears to be again that the domain

name incorporates the family name Pickford. The difficulty with this argument

from the Panel’s point of view is that there is no evidence showing a legitimate

link between Mr. A. Pickford and the use or ownership of the domain name. It

seems that the strongest link is that the Black Cat letter of response dated

June 7, 2001, purports to be signed by Mr. A. Pickford. There is no

evidence of his status and his authority for signing the letter.

The Complainant goes on to assert that by virtue of the widespread use and

reputation of Pickfords in relation to removal services, members of the public

would believe that the entity owning the domain name <pickfordsremovals.com>

was the Complainant or in some way associated or affiliated with the Complainant

or sponsored by the Complainant. The Panel believes that the Complainant is

effectively showing evidence of registration and use in bad faith within paragraph

4(b)(iv) of the Policy. Paragraph 4(b)(iv) states:

"By using the domain name you have intentionally attempted to attract,

for commercial gain, internet users through your website or other online location

by creating a likelihood of confusion with the Complainants mark as to the source,

sponsorship, affiliation or endorsement of your website or location or of a

product or service on your website or location".

The Panel accepts the Complainants submissions in relation to bad faith. It

follows that the Complainant has succeeded in proving all three elements within

paragraph 4(a) of the Policy.

6. Decision

The Complainant requests that the Panel issues a decision that the domain

name <pickfordsremovals.com> registered by the Respondent be transferred

to the Complainant. The Panel finds for the Complainant and orders that the

domain name <pickfordsremovals.com> be transferred from the Respondent

to the Complainant.

Clive Duncan Thorne

Sole Panelist

Dated: June 22, 2001

More cases by this complainant

• Pickfords Limited v. Blackcat, Blackcat — D2003-0186 · pickford-removals.com, pickfordremovals.com · Transfer · 13 May 2003
• Pickfords Limited v. Dale Duncan; Wegotcha.co.uk — D2001-0334 · pickfordsremovals.net · Transfer · 28 May 2001