The HLT Group Limited trading as Holborn College v. Jerome Years

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The HLT

Group Limited v. Jerome Yeats

Case No.

D2001 0377

1. The Parties

The Complainant is

The HLT Group Limited trading as Holborn College of 200 Greyhound Road,

London W14 9RY, United Kingdom.

The Respondent is Jerome

Yeats of 34 Barton Court, Barons Court Road, London W14 9EH, United

Kingdom.

2. The Domain Name and

Registrar

The Domain Name is

<holborncollege.com>.

The Registrar is CORE.

3. Procedural History

The Complaint was filed

on March 15, 2001. WIPO verified that the Complaint satisfies the Rules

and the Supplemental Rules and that payment was properly made. The panelist

is satisfied this is the case.

The Complaint was properly

notified on March 26, 2001, in accordance with Rules, paragraph 2 (a). On

March 26, 28 and 29, 2001, there was an exchange of e-mails between the

Respondent and the Center. On April 18, 2001, the Respondent filed a late

e-mail Response and sent a further e-mail to the Center on April 20 and

26, 2001.

The administrative panel

was properly constituted. The undersigned panelist submitted a Statement of

Acceptance and Declaration of Impartiality and Independence. No further documents

were filed and the deadline set for a decision in this case was May 28, 2001.

4. Factual Background

The Complainant is

an educational institution trading as Holborn College. The Respondent is

a photographer who registered the Domain Name following a dispute over usage

of photographs taken by him for the College.

5. Parties’ Contentions

A. Complainant

This Complaint stated:

The Complainant is

a company incorporated under the laws of England and Wales having registration

number 01163478 whose registered name until March 1, 1998, was Holborn Law

Tutors Limited and whose registered office is situate at 200 Greyhound Road,

London W14 9RY, United Kingdom. The Complainant carries on business as,

among other things, a tutorial college and provider of expert tuition and

a publisher of educational and teaching aids and textbooks (the "Goods

and Services").

Since 1975 or thereabouts,

the Complainant has made extensive use in the course of its business of

the name "HOLBORN COLLEGE" in relation to the Goods and Services

in the United Kingdom.

The Complainant’s turnover

in relation to Goods and Services supplied under and by reference to the

mark "HOLBORN COLLEGE" was in excess of £3.7 million for the financial

year ended June 30, 2000. The combined turnover in Goods and Services provided

under and by reference to the mark "HOLBORN COLLEGE" in the five

years to June 30, 2000, was in excess of £19 million.

The Complainant has advertised

its Goods and Services extensively under and by reference to the mark "HOLBORN

COLLEGE". Expenditure on advertising to June

30, 2000, was in excess of £170,000. The combined advertising and promotional

expenditure in relation to the mark "HOLBORN COLLEGE" was in excess

of £1,550,000 in the 5 years to June 30, 2000. For the next financial year the

Complainant has committed in excess of £300,000 on advertising. (These figures

include overseas expenditure).

The Complainant had

produced and published in the United Kingdom several textbooks and study

guides and teaching aids under and by reference to the name "HOLBORN

COLLEGE". More recently, the Complainant has also published under the

names of HLT publications and the Old Bailey Press, which by reputation

are associated with the Complainant.

The Complainant has

since 1996 maintained a website at domain address www.holborncollege.ac.uk

in which its Goods and Services are promoted.

By reason of the said

use of the name HOLBORN COLLEGE, the said name when used in relation to

the Goods and Services has come to indicate in the United Kingdom to members

of the trade and interested public the business, goods and services of the

Complainant and none other.

In the premises, the

Complainant is the owner of a substantial reputation and goodwill in the

name HOLBORN COLLEGE when used in relation to the Goods and Services in

the United Kingdom.

Further, the Complainant

has a substantial goodwill and reputation in the name "HOLBORN COLLEGE"

when used in relation to the Goods and Services throughout the World outside

the United Kingdom.

Specific To Activities

Outside The United Kingdom:

(1) 70-75% of

the Complainant’s turnover in relation to Goods and Services supplied

under and by reference to the mark "HOLBORN COLLEGE" is generated

outside the United Kingdom.

(2) The Complainant

operates a tuition support office for the large numbers of students on

its distance learning course in Hong Kong under the name "HOLBORN

COLLEGE" at Suite 1712, 1 Hennessy Road, Wanchai, Hong Kong. The

college was founded in 1969 and has to-date tutored tens of thousands

of students.

(3) The Complainant

has a substantial network of representative offices throughout the world.

Representative offices are to be found in the Bahamas, Bangladesh, Cyprus,

Gambia, Ghana, Greece, Hong Kong, India, Israel, Japan, Kenya, Korea,

Malaysia, Mauritius, Nigeria, Pakistan, Singapore, Sri Lanka and the United

States of America.

(4) The Complainant

has advertised its Goods and Services extensively under and by reference

to the mark "HOLBORN COLLEGE" outside the United Kingdom. Expenditure

on advertising outside the United Kingdom in the financial year ended

June 30, 2000, was in excess of £80,000. The combined advertising and

promotional expenditure in relation to the mark "HOLBORN COLLEGE"

outside the United Kingdom was in excess of £650,000 in the 5 years to

June 30, 2001, (both actual and projected).

(5) The Complainant’s

publications which are produced in the United Kingdom are circulated extensively

throughout the world.

(6) The Complainant’s

website is accessed from all over the world and the Claimant receives

by e-mail many hundreds of enquiries from students per month from outside

the United Kingdom.

In the premises, the

mark "HOLBORN COLLEGE" and the web address holborncollege.ac.uk

are trade marks or service marks within the meaning of Paragraph 4(a)(i)

of the Uniform Domain Name Dispute Resolution Policy in which the Complainant

has rights.

The Complainant also

plans in the near future to expand into new areas such as post-graduate

business and e-commerce courses.

The Respondent is an

individual known to the Complainant who formerly had a trading relationship

with the Complainant and who resides at 34 Barton Court, Barons Court Road,

London W14 9EH, United Kingdom.

The Respondent is the

Registrant of a domain name, namely <holborncollege.com> (the "Domain

Name"), which is identical with or confusingly similar to trade marks

or service marks in which the Complainant has rights, namely "HOLBORN

COLLEGE" (the "Complainant’s Mark") and the Complainant’s

web address, <holborncollege.ac.uk> (the "Complainant’s Domain

Name").

The Domain Name was

registered by the Respondent on September 7, 2000. The print-out shows the

Respondent as the Registrant of the Domain Name and the Registrar as CORE-11,

namely CSL GmbH of Rathauser 16, 40213 Dusseldorf, Germany.

The Domain Name and

the Complainant’s marks are identical. Alternatively, the Domain Name and

the Complainant’s marks are confusingly similar by reason of the identity

between the dominant portion of the Domain Name, namely "holborn college"

and the Complainant’s Mark and the identity between the dominant portion

of the Domain Name and the Complainant’s Domain.

The best particulars

of confusion between the Domain Name and the trade marks and service marks

in which the Complainant has rights are as follows:

The Respondent has

received e-mails which were intended for the Complainant by reason of his

activation of an e-mail service under the Domain Name and has thereby caused

confusion to the senders of the e-mails. In particular, and without prejudice

to the generality of the foregoing, between October 3, 2000, and February

20, 2001, the Respondent mistakenly received certain e-mails intended for

the Complainant. This mistake arose because of the identity or confusing

similarity between the Domain Name the subject of the present dispute and

the Complainant’s Mark and Domain Name. It is not known whether there are

further e-mails which the Respondent has failed to forward to the Complainant.

The Respondent has no rights

or legitimate interests in the Domain Name.

The Respondent carries

on business as a photographer. The Respondent is known to the Complainant

and has in the past been commissioned by the Complainant to take photographs

for the Complainant.

The Respondent does

not have any present trading connection with the Complainant and has not

at any stage been authorised by the Complainant to make use of the HOLBORN

COLLEGE mark.

There has been a recent

history of litigation between the parties as more fully set out below. The

litigation and subsequent cessation of business between the Respondent and

the Complainant further demonstrates and emphasizes the Respondent’s lack

of rights or legitimate interest in the Domain Name.

Further, the Respondent’s

Domain Name was registered in bad faith and is and was being used in bad

faith.

The Respondent has used

the Domain Name by activating an e-mail service under the Domain Name. The Complainant

specifically relies on Case No. D2000-0265

for the proposition that e-mail use is use within the meaning of Paragraph 4(a)(iii)

of the Uniform Domain Name Dispute Resolution Policy.

The Respondent was

fully aware by reason of his trade association with the Complainant since

at least 1984 if not before, that the name "HOLBORN COLLEGE" was

an unregistered trade mark and service mark in which the Complainant had

rights. Further, the Respondent was aware that e-mails which he received

when he activated the e-mail service under the Domain Name were not intended

for him but were intended for the Complainant and that by activating an

e-mail service under the Domain Name he would receive e-mails that were

not intended for him. In the premises, the Respondent registered and used

the Domain Name in bad faith.

The Respondent has

registered and used the Domain Name in order to disrupt the business of

the Complainant. The Respondent is and was aware that potential students

of the Complainant make/made enquiries of the Complainant through e-mail

and that the existence of the Domain Name causes enquiries to be wrongly

diverted from the Complainant and that in registering the Domain Name and

activating it for e-mail purposes he could and would cause disruption to

the Complainant’s business. In particular, by letter dated November 13,

2000, the Respondent stated as follows:

"I have received

the enclosed misaddressed e-mail from a Nigerian today, and I redeliver

it to you as a courtesy to the potential student. The college will not

be able to advise every potential student now and in the future which

e-mail address to use. Instead of threatening me with court action, the

college might instead offer to buy the domain names from me."

The Respondent has

registered and used the Domain Name in an attempt to sell or transfer the

Domain Name to the Complainant for valuable consideration in excess of the

Respondent’s out-of-pocket costs directly related to the Domain Name. The

Complainant relies on the letters dated October 12, 2000, and January 14,

2001, from the Respondent to the Complainant in which the Respondent again

invited the Complainant to purchase the Domain Name.

The Respondent registered

and used the Domain Name in an attempt to secure to himself a financial

advantage which he had been denied in Court proceedings between himself

and the Complainant:

(a) The Respondent

brought proceedings against the Complainant under Action No. WL902374

for alleged infringement of copyright in a photograph which the Respondent

took at the instruction of and under commission from the Complainant.

(b) The Respondent’s

Action was dismissed by Order of District Judge Madge dated June 8, 2000.

Permission to appeal from the Order of District Judge Madge was refused

by Order of His Honour Judge Ford dated September 5, 2000.

(c) The Respondent registered

the Domain Name immediately following his refusal of permission to appeal from

the Order of District Judge Madge on September

7, 2000.

(d) By letter

dated November 2, 2000, from the Respondent to the Complainant, the Respondent

wrote as follows:

"As to the site

statistics, as I understand it the non-existent web site for holborncollege.co.uk

has been "hit" 82 times so far which suggests two things (a)

that Holborn College might wish to negotiate to purchase holborncollege.co.uk

and then make a link so that any surfing potential student would be redirected

instantly to the site of your choice, and that (b) an actual holborncollege.co.uk

site might be popular, whoever publishes it. Ditto the dot.com. HLT publications

has had a free ride with one of my unauthorised photos for years. I was

never informed that the photo would be used for anything but newspaper

or brochure use. HLT has not paid for textbook usage and I really do want

this sorted."

The matter which the

Respondent sought to have "sorted" was the matter which had been

resolved in the Complainant’s favour by Order of District Judge Madge dated

June 8, 2000, when the Respondent’s Action was dismissed.

(e) It is to be

inferred from the matters set out above that the Respondent is seeking

to re-litigate or have redecided matters which have finally been decided

in a United Kingdom Court of competent jurisdiction by using the Domain

Name to exert improper pressure on the Complainant to pay further sums

for the use of the photograph for which it has already paid notwithstanding

the Orders of District Judge Madge and His Honour Judge Ford and that

this was the intention of the Respondent when he registered the Domain

Name immediately following the Order of His Honour Judge Ford dated September

5, 2000.

In the premises, in

accordance with Paragraph 4(b)(i) of the Uniform Domain Name Dispute Resolution

Policy and for the reasons set out above, the Complainant respectfully requests

that the Administrative Panel appointed in this administrative proceeding

issue a decision that the Domain Name be transferred to the Complainant.

B. Respondent

The Respondent has

sent various e-mails to the Center by way of Response to the Complaint.

On March 26, 2001,

the Respondent sent to the Center an e-mail containing the following statement

"May I say at

this juncture (and without reading the text of anything you have written),

that I am delighted this dispute has been taken up with ICAAN (sic). The

complainant has acted in extreme bad faith and has published one of my

images on book cover after book cover without paying for or obtaining

permission for this use. In pro photography fees follow usage. I am still

waiting to be paid by this college with its £75 million turnover."

On April 18, 2001,

the Respondent sent to the Center an e-mail containing the following:

"My purpose

in buying holborncollege.com was and is to - if necessary – use the site

as an on line newspaper re Holborn college. I have not done so so far

- hoping that the college will come to its senses and pay me for unlawful

use of my photograph on several of its law book covers. The photograph

in question was commissioned for brochure use only; no mention was made

re front cover of textbook use several years later. There is a great deal

of difference re the fees for a one time inside brochure use for a photo

and the appropriate fees for front covers on several legal textbooks.

The college believes it has bought all rights. With respect it most certainly

hasn't.

I ask your permission

to send you copies of what I have already sent to Nominet re the similar

holborncollege.co.uk dispute but in the meantime I would ask you to bear

in mind the two dot com cases (a) Manchester Airport and (b) BAA - in

particular I understand that the owner of the BAA site used the site to

air his grievances against the British airports authority so there would

be a precedent if I were to use the site as an on line newspaper. No I

would not say anything untrue or libellous or defamatory it goes without

saying. I also understand that the owner of manchester airport.com was

allowed to keep his site even though he was not in fact manchester airport

and that his sole purpose appears to have been to sell the domain name

at a profit. it was adjudged that there was nothing illegal or reprehensible

about this.

WIPO must be aware

that my domain name holborncollege.com is my only lever against, in my

opinion, a rip off. I do not have the funds for a good media lawyer. In

my opinion Holborn college has acted reprehensibly and I suggest that

if it wants to end this dispute that (a) it should pay me what it owes

me for the new use of my photograph and (b) for all my time and trouble

over this affair. Lastly I have made no pre emptive buy; I have not cyber

squatted. I came into the market after holborn college and bought a domain

name which it only realised it wanted after I had bought it.

Lastly, it may give

the college something to do by sending a huge file of bumph but how does

its financial accounts have any bearing on an intellectual property dispute?"

On April 20, 2001,

the Respondent sent to the Center and e-mail containing the following:

"I see I have been

sent some of Holborn college's financial reports. Don't know why, but WIPO should

note that the college made losses in 1998 and 1999 and only made a very small

profit of 5% on turnover for the year ending 2000.

I first began to

contact the college re unauthorised use of my photograph as part of several

textbook cover in May 1999. the college did everything possible to procrastinate,

and to pooh pooh my claim but the bottom line is this;- the college was

living beyond its means and on a high overdraft. Do you think it was in

any mood to pay a one time supplier several thousand pounds?

Mr. Grenier refused

to tell me on how many books my photograph appeared.

WIPO must understand

that if a client commissions me (a photographer) and pays for a photograph

for brochure use then it most emphatically does not mean that it has the

right to use the same photo for textbook cover use several years later

(a) without telling me and (b) without paying me the going rate - otherwise

the use is one obtained by fraud and deception.

I wish to make it

clear that it has never been my intention to pass myself off as the college

(why should I?) or to solicit e-mails, my aim was and is to have the name

to - if necessary - act as an on line newspaper and discussion forum re

the college. Without the domain name I have no lever against the college;

the name is - if you like - a lien on my intellectual property (i.e. the

unlawful book covers) that the college is using without payment.

If my work is good

enough to advertise Holborn College's textbooks then I insist on an appropriate

payment. You won't believe how quickly this dispute can be resolved if

and when the college pays me my fees and pays me for my considerable time

and trouble in my fight to get paid.

Ask the college straight

"Have you or have you not paid Mr. Yeats for the use of his photograph

on many many editions of a legal textbook? Did you ask his permission

before you used the photograph in this way?" the onus is always on that

of the publisher to clear all rights before publishing. It is not up to

the photographer to have to police a misguided former client."

6. Discussion and Findings

According to paragraph

4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant

must prove 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.

A. Identical or confusing

similarity

It is prima facie obvious

that the Domain Name is virtually identical to the Complainant’s HOLBORN

COLLEGE mark and, therefore, that they are confusingly similar.

B. Rights or Legitimate

Interests of the Respondent

The Respondent makes

it clear from his e-mails to the Center that his intention in registering

the domain name was "as a lien on my intellectual property (i.e. the

unlawful book covers) that the college is using without payment" in

other words to hold as collateral to assist the Respondent’s bargaining

position in a separate dispute over copyright in photographs. After the

dispute arose and after the Respondent read "the two dot com cases

(a) Manchester Airport and (b) BAA" commenting "I understand that

the owner of the BAA site used the site to air his grievances against the

British airports authority so there would be a precedent if I were to use

the site as an on line newspaper" the Respondent stated that this was

his intention. There is no evidence that this is, in fact, the case and

no mention of this before the Respondent appears to have read the WIPO cases

referred to. In fact, I find the true purpose was to use the domain name

to obtain leverage in a separate dispute not the subject of these proceedings.

Accordingly, I hold that the Respondent does not have any rights or legitimate

interest in the Domain Name.

C. Bad Faith

Paragraph 4 (b)

of the Rules sets out four non-exclusive criteria which shall be evidence

of the registration and use of a domain name in bad faith including:

"[the Respondent]

has registered or 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 service mark

or to a competitor of that Complainant for valuable consideration in excess

of the Respondent’s documented out-of-pocket costs directly related to

the domain name"; and "by using the domain name [the Respondent]

has intentionally attempted to attract, for commercial gain, Internet

users to [its] web site or other on line location, by creating a likelihood

of confusion with the Complainant’s mark as to the source, affiliation

or endorsement of [its] web site or location or of a product or service

on [its] web site or location."

It appears clear from

the evidence that the Respondent registered the domain name to obtain payment

from the Complainant of a sum in excess of his out-of-pocket registration

costs in respect of the name because the Respondent felt the money was owed

to him by the Complainant due to facts the subject of a separate dispute

which are not the subject of these proceedings. Further, by operating an

e-mail on the address the Respondent has been receiving e-mail meant for

the Complainant sent by Internet users confused into thinking that e-mail

sent to <holborncollege.com> would be received by the Complainant.

The Respondent suggested that in order to prevent this the College should

buy the name from him. Accordingly, it appears clear that the Respondent

hoped by his registration of the name and receipt of e-mail intended for

the Complainant to obtain payment over and above his out-of-pocket registration

expenses. The separate dispute referred to by the Respondent as justification

for this is not properly the subject of these proceedings and indeed has

been litigated separately by the parties. Accordingly, the Respondent has

registered and used the domain name in bad faith.

7. Decision

In the light of the

foregoing, the panelist decides that the Domain Name is confusingly similar

to the Complainant’s trade mark and the Respondent has no rights or legitimate

interests relating to the Domain Name which was registered and used in bad

faith.

Accordingly, in the

light of the above, the panelist orders that the registration of the Domain

Name <holborncollege.com> be transferred to the Complainant.

Dawn Osborne

Sole Panelist

Dated: May

21, 2001