Alfred Dunhill Limited v. Lynn Trotter; Websitebrokers

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Alfred Dunhill

Limited v. Websitebrokers And Lynn Trotter

Case No.

D2001-0364

1. The Parties

The Complainant Alfred

Dunhill Limited is a company incorporated in the United Kingdom with its principal

place of business being St James’s, London, United Kingdom.

The Respondent is Websitebrokers

Limited of P17 – P19 Bow Wharf, London, United Kingdom. It is a United Kingdom

company controlled by Lynn Trotter who is a named co-Respondent.

2. The Domain Name and

Registrar

This dispute concerns the

domain name <alfreddunhillcup.com> (hereinafter referred to as the "Domain

Name").

The Registrar with whom

the disputed domain name is registered is Network Solutions Inc. (Internic)

of Herndon, Virginia, United States of America.

The Domain Name was registered

on July 24, 1998.

3. Procedural History

A complaint pursuant to

the Uniform Domain Name Dispute Resolution Policy ("the Policy") and

the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

both of which are implemented by ICANN on October 24, 1999, was received by

the Center in electronic format on March 14, 2001, and in hardcopy on March 16, 2001.

Payment in the required amount to the Center has been made by the Complainant.

On March 19, 2001, a request

for registrar verification was sent to the Registrar requesting confirmation

that it had received a copy of the complaint from the Complainant, that the

Domain Name was currently registered with it and that the policy was in effect,

and requesting full details of the holder of the Domain Name and advice as to

the current status of the Domain Name. Confirmation was received from the Registrar

on March 20, 2001.

On March 21, 2001, the

Administrative proceeding began.

On April 9, 2001, a formal

Response was received from the Respondent.

On April 19, 2001, the

Complainant forwarded an amended reply to the Respondent's Response. On April

23, 2001, an additional submission form the Respondent was received.

On, April 24, 2001, notification

of appointment of a administrative Panelist and projected decision date ("the

appointment notification") was sent to the Complainant and the Respondent.

In accordance with the Complainant’s request, the appointment notification informed

the parties that the administrative Panel would comprise of one Panelist and

advised that the decision should be forwarded to WIPO by May 8, 2001.

A number of procedural

disputes arose in the course of this hearing. It was initially alleged by the

Respondent that the Center had been in secret communication with the Complainant

and to the exclusion of the Respondent. This suggestion proved to be without

foundation. Secondly, the Respondent objected to the Complainant filing a reply

to the Respondent's Response dated April 9, 2001. The only matter of substance

in the said Response was reference to certain discussions between the Complainant's

solicitors Field Fisher Waterhouse and Lynn Trotter on February 28, 2000.

A dispute has arisen as

to whether these discussions were on a "without prejudice" basis or otherwise.

In a contemporaneous attendance note from Field Fisher Waterhouse and a follow

up letter to their client on March 3, 2000, it appears that the discussion was

not "without prejudice". However, the Respondent strongly disputes

this and argues that it would be improper for the Panel to take such discussions

into account.

The principle that "without

prejudice" discussions should be treated as privileged and confidential as between

the parties is well established. The principle has both practical and legal

consequences and the Panel sees no reason why these principles should not apply

to proceedings under the UDRP. The difficulty is that in this present case the

parties are in strong disagreement as to the status of their discussions.

Regrettably, it is not

possible in proceedings of this type, to resolve disputes of fact of this type.

Accordingly, in the interests of fairness it is thought that the best course

is to exclude from consideration the alleged "without prejudice" discussions.

In doing so the Panel stresses that it does not make in any way findings on

the issue of whether privilege applies to the said discussions.

4. Factual Background

The Complainant is the

owner of the famous trademarks "ALFRED DUNHILL" and "dunhill",

("Complainant’s trademarks") these being registered in connection

with men’s luxury goods including clothing, leatherwear, watches, jewellery,

eyewear, golfware, lighters and other luxury goods. The Complainant claims to

have over 3800 registrations worldwide in various classes for these trademarks.

The Complainant also states

that its trademarks have been used continuously throughout the world by the

Complainant or its predecessors-in-title since as early as 1893, in respect

of luxury goods.

In addition to its core

business activities, the Complainant has, since 1985, sponsored the Alfred Dunhill

Cup Golf Tournament held annually at the Old Course, St. Andrews, Scotland.

The Respondent was incorporated

in July 1998, principally to carry on the business of web site development,

with related interest in domain name registration and brokerage and email brokerage.

The Respondent is associated with and has developed a business out of a small

agency called "Ace Options". Ace Options deals with corporate events including

conferences, training courses, activity days, awards dinners, corporate hospitality

and major sporting events.

5. Parties’ Contentions

A. The Complainant

The Complainant alleges

it has acquired a strong reputation as a designer, manufacturer and retailer

of luxury goods throughout the world, and having regard to its continuous and

extensive advertising, promotion and sale of such items under the Complainant’s

trademarks, such have become extremely valuable and famous.

The golf tournament, known

as "The Alfred Dunhill Cup", receives wide publicity world-wide in

all forms of media including television, print, radio and Internet coverage.

The Complainant says that it owns the official title to the event and grants

a license to both IMG (the event organizer) and the PGA, to use the Complainant’s

trademarks and other corporate images in organizing and running the event. The

Complainant receives coverage and brand recognition as a result of the use of

its corporate name and trademarks in respect of the event. Indeed, it is said

this coverage and brand recognition further supports the Complainant’s case

as such has led to the Complainant’s name and trademarks acquiring a strong

reputation and well known status which has enabled the Complainant to successfully

assert and enforce its rights against unauthorized use by third parties.

The Complainant claims

that the Respondent conducts business through its website <websitebrokers.co.uk>.

The Text in the site states "Domain sales and leasing…. We may

own domain names connected to your business!" The Complainant feels

that this statement is indicative of the Respondent’s real motivation in registering

the Domain Name, as being the prospect of financial gain.

The Complainant states

that the Complainant's trademarks have been the target of cybersquatters, including

the Respondent who have registered domain names comprising names which are identical

or confusingly similar to the Complainant’s trademarks without the Complainant’s

prior authorization or consent.

The Complainant declares

it became aware of the Respondent’s registration of the Domain Name on or about

September 14, 1999, as a result of regular surveillance of domain name registrations.

At that time, the Domain Name had been registered on behalf of the Respondent

by CTL of Latton Bush Business Center, Southern Way, Harlow. In addition to

the Domain Name, the Respondent has also registered with Nominet UK alfreddunhillcup.co.uk

ccTLD without the consent of the Complainant.

The Complainant admits

it has entered into correspondence and discussions with the Respondent with

a view to reaching an amicable resolution of this matter but negotiations have

been unsuccessful and have subsequently broken down.

The Complainant states

it has filed a dispute resolution action with Nominet UK on February 9, 2000,

against the Respondent in respect of the registration of the above-mentioned

ccTLD.

The Complainant asserts

the Respondent’s registration of the Domain Name injures the Complainant by

precluding the Complainant from registering and using the Domain Name itself.

The Complainant says the

Respondent’s registration of the Domain Name creates or is likely to create

confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation,

or endorsement of the Respondent’s products and/or services.

The Complainant also draws

attention to the Respondent’s registration of other domain names which are said

to be identical or confusingly similar to third party trade marks including,

but not limited to:

<baftatelevisionawards.com>;

<festivalofspeed.com>;

<thetote.com>;

and

<3rdcornhilltest.com>.

In addition to the .com

registrations, the Respondent has also registered the .co.uk equivalents with

Nominet UK. The Complainant states that it has made enquiries with The British

Academy of Film and Television Arts (owner of the trade mark BAFTA), The Goodwood

Estate Company Limited (owner of the trade mark FESTIVAL OF SPEED), The Horserace

Totalisator Board (owner of the TOTE trade mark) and Cornhill Insurance plc

(owner of the CORNHILL trade mark). Each of these companies has confirmed that

registration by the Respondent of the above mentioned domain names was unauthorized.

It is submitted that such stockpiling or hoarding of domain names which are

identical or confusingly similar to the well-known marks of third parties is

further evidence of bad faith.

The Complainant claims

the Respondent entered on a without prejudice basis a conversation between an

agent of the Complainant and Lynn Trotter on February 28, 2000. For the

reasons given above these communications have been excluded from consideration.

It is pointed out that

the fame and reputation of the Complainant’s trademarks has been accepted by

a Panel in its decision in WIPO Case number D2000-0525-<alfreddunhills.com>

dated August 24, 2000. In its decision at paragraph 6 the Panel confirmed that

the Complainant had "a large well-known business built around the trademark

ALFRED DUNHILL" and concluded that use of or preparation to use the

domain name in dispute had been in bad faith. The Panel in this case ordered

that the domain name be transferred to the Complainant.

The Complainant seeks the

transfer of the Domain Name to the Complainant.

B. The Respondent

The Respondent states that

the Domain Name has never been for sale and that initially all domains were

purchased for the Respondent's own use and were for the benefit of Ace Options.

Event names were purchased for the corporate hospitality aspect of these domain

names.

The Respondent admits that

it has registered many sporting and sports related domain names. The Respondent

says it intends developing the disputed domain and many others. The Respondent

has demonstrated its bona fides in the preparations it has made in establishing

its business, acquiring domains relating to sporting events and in setting up

websites, including sports related websites. The Respondent says it intends

along with other similar names of sporting events or domains directly related

to sporting events, for the purpose of creating websites about sporting events,

effectively publicizing the events, just like a newspaper publishes information

about sport and sporting events. It also states that the domain names are as

being offered to its associated business, Ace Options services as a brokerage

in assisting internet users to book accommodation and such like if they wanted

to attend the events, whether for personal or corporate hospitality reasons.

The Respondent believes

that the Complainant does not own any rights to the annual golfing event or

any name associated with this event. The Respondent claims that the Complainant

only sponsors the event and in return obtains coverage and brand recognition.

The Respondent says it

is not a 'cybersquatter' but legitimately in business. For the domains it owns,

the Respondent purchased each with the intention of building an excellent web

site or to point to a web site giving information visitors are looking for.

The Respondent asserts

that it has rights and legitimate interests in the Domain Name and has not registered

the Domain Name for an unlawful purpose.

6. Discussion and Findings

Paragraph 4(a) of the Policy

requires that the Complainant must prove each of the following:

- The domain name is

identical or confusingly similar to the trade mark; and

- The Respondent has

no right or legitimate interest in respect of the domain name; and

- The domain name has

been registered and are being used in bad faith.

Paragraph 4(b) of the Policy

sets out four illustrative circumstances that, if proved, constitute evidence

of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy

sets out three illustrative circumstances that, if proved, constitute evidence

of a right or legitimate interest as described in paragraph 4(a)(ii) referred

to above.

Domain Name Identical to

or Confusingly Similar

It appears from the complaint

and evidence, that, in its various manifestations, ALFRED DUNHILL and "dunhill",

(the "Complainant’s trademarks") are registered and recognized in

the United Kingdom and internationally. It is also asserted and not disputed

that the company ALFRED DUNHILL and the sports event "The Alfred Dunhill

Cup", are well known.

In the Panel's view, such

fame and recognition applies whether the Complainant’s trademarks are used in

a particular way and with or without embellishment or insignificant addition.

By the same token, it would be reasonable to assume that the company ALFRED

DUNHILL and the sports event "The Alfred Dunhill Cup" are somehow

connected or associated with or approved by the Complainant. The Complainant

asserts that it owns and licenses the name/mark "The Alfred Dunhill Cup"

and on the record this appears to be the case.

Accordingly it is found

that the Domain Name is identical to the name/mark "The Alfred Dunhill

Cup" and confusingly similar to the Complainant’s trademarks, particularly

the trademark ALFRED DUNHILL.

No Right or Legitimate

Interest

It is clear from the evidence

that the Respondent or those associated with it runs a legitimate business and

that this business is connected, inter alia, with sporting events. The large

number of domain names having a sporting theme and being descriptive and/or

generic in relation to certain types of sporting events is evidence of this.

While the Respondent may

trade in domain names, this in itself is not objectionable. It is clear, a number

of domain names under the Respondents control are generic and that they would

have value to an organization either sponsoring or otherwise being involved

in sporting events. However, a distinction has to be drawn between a domain

name such as <golfworldmatch.com> and <alfreddunhillcup.com>. The

former is clearly a generic term in which a company such as the Respondent or

its associates would have a legitimate interest. However <alfreddunhillcup.com>

is, in the Panel's view another matter.

There is no reason why

the Respondent or it associates cannot promote and market golf tournaments using

a generic domain name. If on the other hand a commercial organization has purchased

the exclusive naming rights to a world famous golf tournament, that does not,

in the Panel's view, entitle the Respondent to register that name, to the exclusion

of the proprietor.

This view is taken in part

because the Respondent has simply registered the entire name of the golf tournament,

without any addition or alteration. Further, while the Respondent or its associates

are clearly involved in a legitimate business, this does not necessarily imply

that the entire business is legitimate. Even though the Panel has excluded any

consideration of whether the Domain Name was offered for sale and on what basis,

it is clear from the Respondent's web site that it is offering not just generic

domain names but ones which may have a connection with a particular company.

That is, on the basis of the statement, "We may own domain names connected

to your business!" This suggests to the Panel that there may be more than

one motivation in the Respondent's conduct. This factor also has a bearing on

the issue of good faith.

In view of the above it

is found that the Respondent lacks a right or legitimate interest in using/registering

the Domain Name.

Domain Name Registered

and Being Used in Bad Faith

It is irrelevant whether

the Respondent was the original registrant or obtained the Domain Name from

the original registrant. Having found that the Complainant is the proprietor

of the name/trade mark ALFRED DUNHILL and "The Alfred Dunhill Cup" it is found

that the Respondent in using the Domain Name, has acted in bad faith. As indicated,

there is nothing to stop the Respondent or its associates from using other appropriate

generic terms to promote various sporting events. It is not however good faith

conduct to use the identical name/mark when it is the property of a commercial

organization that has purchased for valuable consideration the rights to a unique

and world famous golf tournament.

In view of the above it

is found that the Domain Name was registered and is being used in bad faith.

7. Decision

In view of the above the

Domain Name should be transferred to the Complainant.

Clive L

Elliott

Sole Panelist

Dated: 10

May 2001

More cases by this complainant

• Alfred Dunhill Limited — D2020-0917 · Terminated
• Alfred Dunhill Limited — D2000-1189 · Terminated
• Alfred Dunhill Limited v. NSC Enterprises — D2000-0525 · alfreddunhills.com · Transfer · 04 Aug 2000