Pickfords Limited v. Dale Duncan; Wegotcha.co.uk

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Pickfords

Limited v. Wegotcha.Co.Uk/Dale Duncan

Case No

D2001-0334

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, United Kingdom. The Respondents are WEGOTCHA.CO.UK and Dale Duncan

of 14 Hyde Close, Oadby, Leicester, LE2 5UN, United Kingdom. The Complainant

is represented by Messrs Boult Wade Tennant of Verulam Gardens, 70 Grays

Inn Road, London WC1X 8BT, United Kingdom.

2. The Domain Name and

Registrar

The domain name

in dispute is <pickfordsremovals.net>. The Registrar for the domain

name is Register.com Inc of 575, 8th Avenue, 11th

Floor, New York NY10018,USA.

3. Procedural

History

The Complaint was received

by the WIPO Arbitration and Administration Center on March 7, 2001 by hard

copy. An acknowledgement of receipt of the Complaint was given by the Center

on March 16, 2001. A request for Registrar verification was sent to Register.com

Inc on March 16, 2001. On March 21, 2001 confirmation was given by Register.com

Inc that the current registrant was Dale Duncan and that the administrative

contact was WEGOTCHA.CO.UK/Dale Duncan.

Notification of the

Complaint and Commencement of the Administrative Proceeding was given on

March 23, 2001 by email and by courier. A copy was also sent by fax and

a successful answerback received on March 23, 2001, by the Center. No response

was received from the Respondent and accordingly Notification of Respondent

Default was given by email on April 27, 2001. On May 2, 2001 a Panel was

appointed consisting of a single member Mr Clive Duncan Thorne. An extension

of time for the Panel’s decision has been made to May 18, 2001.

4. Factual background

The Complainant is

Pickfords Limited which according to the Complainant has continuously used

the mark "Pickfords" in connection with moving services since

as long ago as "at least the mid 1600’s".

The Complainant gives

evidence of widespread use and reputation of "Pickfords" by the

Complainant. In particular revenue figures relating to the trade mark "Pickfords"

during last year amounted to £78 million in the United Kingdom alone. The

Complainant points out that this figure would be significantly higher if

figures from all countries in which Pickfords trades are included.

The Complainant sets

out details of relevant trade mark registrations owned by the Complainant

in respect of the mark "Pickfords". In particular the Complainant

refers to UK trademark number 1285667 first registered on October 1, 1986

in class 39 covering "transportation and delivery of goods by road;

arranging the transport and delivery of goods by land and by sea; removals

services; packing and crating of goods; guarded storage and guarded transport

of goods and valuables; warehouse storage of goods; rental of vehicles and

warehouses; all included in class 39". This registration is apparently

in full force and effect. The Complainant asserts that it is "unrevoked,

uncancelled and incontestable under the Trade Marks Act 1994".

The Complainant also

gives evidence supported with copies of other United Kingdom Trade Mark

Registrations incorporating the mark "Pickfords". Copies are annexed

as Annex D to the Complaint. The Complainant has also registered the trade

mark "Pickfords" in a number of other countries as set out in

Annex G to the Complaint.

The current dispute arose

when the Complainant became aware in December 2000 of the use by the Respondent

of the domain name <pickfordsremovals.net>. As a result a cease and desist

letter which is exhibited at Annex H to the Complaint was sent to the Respondent.

The history of what then transpired is helpfully summarised in the Statutory

Declaration of Mr Mohamed Hussein Daud of Boult Wade Tennant dated March

1, 2001 and annexed as Annex I to the Complaint.

What appears to have

happened is that on January 3, 2001 Mr Daud received a telephone call from

Mr Dale Duncan the Respondent. An attendance note of this is exhibited at

MHD3 to Mr Daud’s Statutory Declaration. Mr Duncan apparently indicated

that he purchased the name "pickfords.com" (sic) from Nominet.

Mr Duncan was not using the name but wished to keep it. However he indicated

that he was open to offers for the purchase of the name. Mr Duncan followed

the telephone conversation with a letter dated January 3, 2001 in which

he indicated that as discussed, "I have no intention of using <pickfordsremovals.net>

in relation to removal or related services" and that he would be "happy

to consider the sale of the name in question".

On January 9, 2001,

Mr Daud wrote again to Mr Duncan asking him what figure he had in mind for

the purchase of the domain name. Mr Duncan telephoned Mr Daud to say that

he expected to receive £10,000 for the sale of the domain name. He apparently

made the comment "one persons flesh is another persons gold" and

that "we live in a free enterprise world and one makes money whenever

and wherever one can".

Mr Daud wrote to Mr

Duncan on January 26, 2001, pointing out that the suggested figure of £10,000

was far too high, particularly bearing in mind "our clients registrations

for the trade mark" and "Pickfords significant and valuable good

will in the name". He pointed out that Mr Duncan would have incurred

expenses in registering the domain name and that Pickfords preferred to

resolve the matter amicably and on that basis they were prepared to offer

£500 for the name. Mr Duncan telephoned Mr Daud on January 31, 2001, saying

that he would be prepared to accept £7,500 as he put it "the final

and serious figure". Mr Duncan confirmed this in a letter of January

31, 2001.

5. Parties’ Contentions

and Discussions

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 trade mark 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 proceeds

to deal with each of these in turn.

(i) The Respondents

domain name is identical or confusingly similar to a trade mark or service

mark in which the Complainant has rights.

As referred to above

the Complainant has provided evidence of its trade mark and service mark

rights in the United Kingdom and elsewhere. It has also provided evidence

of long use of the mark "Pickfords" in the United Kingdom. The

Panel is therefore satisfied that the Complainant has trade mark rights

in the mark Pickfords.

Evidence has also been

given by the Complainant of its main activity which broadly amounts to the

transport and delivery of goods and removal services; see for example the

specification of services in respect of UK trade mark number 1285667. The

Panel is also therefore satisfied that the Complainant has rights in the

mark "Pickfords Removals".

It follows that the

Respondent’s domain name is identical or confusingly similar to the Complainant’s

marks. For these reasons the Panel finds that the Complainant has succeeded

in proving paragraph 4(a)(i) of the Policy.

(ii) The Respondent

has no rights or legitimate interest in respect of the domain name.

In the absence of any

evidence or submissions from the Respondent the Panel has to consider this

element on the basis only of the Complainant’s submissions and the evidence

submitted by the Complainant.

The Complainant submits

that the Respondent holds the domain name "passively" and that

the Respondents have no legitimate interest in the domain name. In the Panel’s

view this is supported by the history of the negotiations referred to in

Mr Daud’s Statutory Declaration and in particular the letter from Mr Dale

Duncan exhibited at MHD3 to Mr Daud’s Statutory Declaration. Mr Duncan states;

"as discussed, I have no intention of using "pickfordsremovals.net"

in relation to removal or related services". In these circumstances

the Panel finds for the Complainant in respect of this element.

(iii) The Respondent’s

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

The Complainant submits

that evidence of bad faith is provided by:-

(i) The Respondent’s

offer to sell the domain name for profit.

(ii) That

ownership of the domain name would create by way of misrepresentation

an association or affiliation with the Complainant.

(iii) The

passive holding of the domain name and offer to sell the domain name

for valuable consideration.

The Panel takes into

account paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution

Policy which provides for evidence of registration and use of bad faith

in circumstances in which "the Respondent has 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

trade mark or to a competitor of the Complainant, for valuable consideration

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

name."

The Panel having reviewed

the correspondence and telephone conversations that have taken place between

the Complainant and Mr Duncan of the Respondent and in particular the offers

made by Mr Duncan to sell the domain name at a price of £10,000 and subsequently

£7,500 demonstrates consideration in excess of "documented out of pocket

costs directly related to the domain name" as envisaged by paragraph

4(b)(i). In these circumstances the Panel is satisfied that the Complainant

has succeeded in showing bad faith.

It follows that

the Complainant has succeeded in all three limbs of paragraph 4(a) of the

Policy and succeeds in its Complaint.

6. Decision

and findings

The Complainant

requests that the domain name <pickfordsremovals.net> registered by

the Respondents be transferred to the Complainant Pickfords Limited. The

Panel finds for the Complainant and orders that the domain name <pickfordsremovals.net>

be transferred from the Respondent to the Complainant.

Clive Duncan

Thorne

Sole Panelist

Dated: May

18, 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. Shop Shop Shop — D2001-0333 · pickfordsremovals.com · Transfer · 22 Jun 2001