The British Council v. Li Yen Chun

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The British Council v. Mr. Li Yen Chun

Case No. D2001-0997

1. The Parties

The Complainant is The British Council of 10 Spring Gardens, London SW1A 2BN,

United Kingdom, represented by Mr. Adrian Barrott, Office Manager of the Complainant’s

Corporate IT Department.

The Respondent is Li Yen Chun of IA Consulting Inc 4F, No 6, Lane 79 Chienkwo

S Rd Sec 2 Taipei, Chinese Taipei 106, represented by Mr. Ling Hsiao Wang of

2F, No. 10 Alley 6, Lane 335 Fu Hsing Road, Shu Lin City, Taipei County,

Taiwan.

2. The Domain Name and Registrar

This dispute concerns the domain name <britishcouncil.com>.

The Registrar is Onlinenic Inc. d/b/a China-channel.com of Xiamen, China.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on August 6, 2001, and in

hardcopy on August 7, 2001. The Complaint was acknowledged on August 7, 2001.

An amended Complaint was filed on August 9, 2001, by email and on August 13,

2001, in hardcopy. On August 10, registration details were sought by the Center

from the Registrar. On August 13, 2001, the Registrar confirmed that the disputed

domain name is registered in the name of the Respondent, who is also the Administration,

Technical and Billing Contact; that the Policy applies to the disputed

domain name; that <britishcouncil.com> is "under construction"

and that the language of the registration agreements for the disputed domain

name is English.

On August 16, 2001, the Center satisfied itself that the Complainant had complied

with all formal requirements (including payment of the prescribed fee) and formally

dispatched to the Respondent copies of the Complaint by post/courier (with enclosures)

and by facsimile and email (both without attachments). The Center also included

with the material dispatched to the Respondent a letter dated August 16, 2001,

containing notification of the commencement of this administrative proceeding

and sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was September 5, 2001.

A Response was filed on September 5, 2001 by email and on September 10, 2001,

in hardcopy. The Center acknowledged receipt on September 7, 2001.

On September 5, 2001, by email and on September 10, 2001, in hardcopy, the

Complainant filed unsolicited additional material, namely a copy of an email

sent on June 6, 2001, by the Respondent to the British Council in Hungary and

a printout dated September 5, 2001, of the Respondent’s web page accessed by

means of the disputed domain name.

It is a matter for the discretion of the Panel whether to admit unsolicited

material additional to the Complaint and the Response. In this case the Panel

believes it would be fair to both parties to admit the email of June 6, 2001,

because:

- it emanated from the Respondent, who cannot therefore be prejudiced by it,

and

- it appears the email did not come to the attention of Mr. Barrott until September

5, 2001, when he immediately submitted it to the Center.

The Panel does not admit the web page printout of September 5, 2001.

On September 27, 2001, the Center notified the parties of the appointment of

Alan L. Limbury to serve as panelist, Mr. Limbury having submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

That day, the Center transmitted the case file to the panel and notified the

parties of the projected decision date of October 11, 2001.

The panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Center discharged its responsibility under

paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the Complaint; the Response was

filed within the time prescribed by the Rules and the administrative panel was

properly constituted.

The language of the proceeding was English, being the language of the registration

agreement.

4. Factual Background (Uncontested Facts)

The Complainant is the United Kingdom' s international agency for cultural

relations, educational co-operation, developmental training and English Language

Teaching. It was established in 1934 and incorporated by Royal Charter in 1940.

It was granted charitable status in 1963 and currently has over 220 offices

in more than 110 countries. It has had an established Internet presence since

1996.

It’s range of trading services includes:

- development work under contract to a wide range of clients such as overseas

governments, the European Commission, the UK Department for International Development

and other multilateral and bilateral agencies. This work currently includes

more than 250 contracts worth over 250 million pounds;

- a language services programme in many countries involving the promotion and

development of English language teaching; and

- designing and managing conferences and seminars on contemporary issues from

both the UK and international perspectives.

The title "the British Council" is the mark or designation by which

the organisation is known globally, and which it uses actively in its trading

activities.

The Respondent is in the business of web designing and Internet consulting

services in Taipei, Taiwan. On May 6, 2001, the disputed domain name was registered

in the name of the Respondent.

On June 6, 2001, the Respondent sent the following email addressed to <information@britishcouncil.hu

and headed> "Subject:www.BritishCouncil.com":

"Dear Sir:

We own the domain name: www.BritishCouncil.com

This is the Top Level Domain (.com) on the World.

And I got a lot of emails about querying lessons every day by this domain,

Some of them are seeking the similar british council lessons.

If you want to buy this domain, please let us know.

Because we don’t trade with people who don’t know the domain value, so please

"MAKE A SERIOUS OFFER" to us. (Anyone who offer us little or kidding

price would be ignored forever.)

We would reply you our answer in 12 hours.

Thank you your time and look forward to hearing from you.

Best Regards,

Li. Yen Chun"

5. Parties’ Contentions

A. Complainant

None of the Respondent’s trading activities relate to the work of the British

Council, or to any other body bearing this name. Furthermore, there is nothing

particularly British or pertaining specifically to Britain in the current use

of the domain name.

It is highly likely that the current use of the disputed domain name would

cause considerable confusion and lead enquirers into believing that this is

a bona fide site which is owned and managed by the Complainant. This

is clearly not the case.

It is clear that the Respondent has obtained the disputed domain name primarily

with the purpose of offering this for sale, for variable [sic] consideration

in excess of his out-of-pocket costs which are directly related to that domain

name. As a result the disputed domain name is now being used in bad faith.

B. Respondent

The Respondent registered the disputed domain name for his client Mr. Liao

Chien Shun, Executive Director of the International Affairs Dept. of Shulin

Junior Chamber, Taiwan, an organization striving to serve young professionals

and entrepreneurs in Taiwan. Shulin Junior Chamber is a local chapter of the

Junior Chamber International (JCI), a well-known and worldwide federation of

young professionals and entrepreneurs between the ages of 18 and 40 and active

in 123 nations and territories.

Mr. Liao Chien Shun and some members of his organization plan to provide the

"Shulin Junior Chamber" members and other entrepreneurs in Taiwan

with business and tour information in relation to England. They wish to gather

all those Taiwanese businessmen who have business or will be doing business

in England together by building a non-commercial web site. Therefore, at the

end of April, he contacted the Respondent Mr. Li Yan Chun and requested Mr.

Li to materialize this web site project.

Before registering the disputed domain name "BritishCouncil.com",

Respondent’s initial intent was to choose another similar domain name <britishcommercialcouncil.com>

to be associated with the said web site for his client Mr. Liao Chien Shun,

but after consideration that the said web site will be focused on local users

and a long domain name would not be proper for Chinese users to remember, they

thought that "BritishCouncil.com" is shorter and will be more appropriate

for Chinese visitors. The Respondent therefore decided to register the generic

and descriptive term <britishcouncil.com> on May 6, 2001, for use of that

web site.

After reviewing this Complaint, the Respondent admits that the disputed domain

name is identical or confusingly similar to Complaint’s alleged mark but refuses

to accept that the Complainant has exclusive rights in the mark "British

Council".

The disputed domain name comprises 2 generic terms "British" and

"Council" where the term "British" is a geographical and

descriptive term with definitions of 1 a: the Celtic language of the

ancient b : BRITISH ENGLISH 2 plural in construction

: the people of Great Britain or the Commonwealth of Nations, and the

term "Council" is also generic with definitions such as a :

a federation of or a central body uniting a group of organizations b

: a local chapter of an organization, as defined in the Merriam-Webster

Online Dictionary (http://www.m-w.com/).

The Complainant has not claimed to own a trademark or service mark, registered

or unregistered, under the name "British Council", nor has the Complainant

contended, provided sufficient evidence, or given arguments to the effect that

it has a common law trademark for the name "British Council".

The only evidence "The British Council Supplemental Charter 1993"

upon which the Complainant relies only evidences that the mark "British

Council" is a name of an organization which is operated and/or supported

under the British Government. The mark is not only geographical but also descriptive

to Complainant’s location and function.

"The Complainant has provided evidence that it is incorporated under

this name, but the mere act of incorporation does not create a trademark. It

has contended that it used this name for promotional activities, but it has

not provided any evidence showing the extent or nature of this use, nor has

it provided evidence of any other use of the name" [1]

It is no surprise that the Complainant has no registered trademark rights in

the mark. Section 3(1)(c) of the U.K. Trade Mark Act 1994 expressly excludes

from registration

"trade marks which consist exclusively of signs or indications which may serve,

in trade, to designate … the geographical origin of … goods or of rendering

of services".

Also, by performing a US trade mark search through United States Patent and

Trade Mark Office, the Respondent finds no match for the mark "British

Council" but he does find a record for a similar registered trademark "British

American Commerce Council" in which a disclaimer "NO CLAIM

IS MADE TO THE EXCLUSIVE RIGHT TO USE "BUSINESS COUNCIL" APART FROM THE MARK

AS SHOWN" is added.

The Panelists of a previous similar case also finds that "seminar"

and "success" are generic terms to which a complainant cannot maintain

exclusive rights [2]. This further evidences

that the term "British Council" is not exclusively protected.

Moreover, there are a number of organizations and companies that are associated

with the term "British Council". ("British Council of Disabled

People", "British Council for Offices", "British Council

for Prevention of Blindness", "British Safety Council", "British

Youth Council", "British Potato Council…).

A previous decision also finds that

"The Respondent has a legitimate interest to use a trademark or domain

name in which many persons hold an exclusive right in relation to different

goods and services providing the goods or services are sufficiently far apart

from the goods and services of others so as to distinguish the goods or services

of the Respondent" [3]

Since the Complainant provides no evidence showing that it has a trademark

or service mark, registered or unregistered, and the mark "British

Council" is geographically descriptive, it is our contention that the mark

"British Council" is not protected under the Policy. Even if the Complainant

were to be found having any rights in the mark "British Council",

such rights are not exclusively protected and should be limited.

Legitimate Rights and Interest

The disputed domain name was registered for the purpose of establishing a non-commercial

web site for the Respondent’s client.

Before this dispute, the Respondent had already placed a message in the front

page of "BritishCouncil.com" showing that: "This website is under

construction, If you have any comment, Contact Us! " This clearly demonstrates

Respondent’s good faith intention and preparation for use of the disputed domain

name.

Registering a descriptive domain name with generic terms or phrase itself constitutes

legitimate rights and interest. The Respondent's interest in the disputed domain

name appears to be unrelated to the Complainant's mark, and the Respondent thus

may well have a legitimate interest in the disputed domain name even apart from

its web site plan. Therefore, the Respondent contends that it has legitimate

rights and interest in the disputed domain name and it is fully entitled to

all rights to use it.

Bad Faith Registration and Use

The disputed domain name was registered and is been used in good faith. The

Respondent lives in Taiwan. He has never been abroad and the parties are not

in the same business and as he had no knowledge and no basis for knowledge of

the Complainant's mark, there cannot have been bad faith in its registration.

The Respondent was not aware of the mark "British Council" at the

time of registering the disputed domain name. In short, the Respondent was totally

unaware of the existence of the Complainant, not to mention the Complainant’s

mark until he received this Complaint. The Respondent believes that the disputed

domain name consisting of generic and geographically descriptive terms can be

legitimately registered and used by any entities.

The Respondent has never attempted to offer the disputed domain name to the

Complainant or to any parties for sale. The Complainant’s contention that the

Respondent obtained the domain name primarily with the purpose of offering it

for sale, for valuable consideration in excess of his out-of-pocket expenses

directly related to the domain name is nothing but mere assumption or presumption

without any proof, facts and grounds to support it.

The Respondent has never approached the Complainant before this dispute and

he has held the disputed domain name for only 3 months. This window of time

is reasonable and acceptable for a web site project and does not constitute

a typical "passive holding" as defined by previous decisions. The

Complainant has presented no evidence to support its assertion of bad faith

registration and use.

The Complainant’s assertions are all based on presumptions without any proof

or grounds and should be ignored.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the panel must decide this Complaint on

the basis of the statements and documents submitted and in accordance with the

Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed 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 disputed domain name has been registered and is being used in bad

faith.

Rights

Each of the individual words in the name "The British Council" is

descriptive. The significance of the definite article is to ascribe uniqueness

to what follows. Accordingly, the combination "The British Council",

used as a trademark, is capable of distinguishing the goods or services of a

trader from those of all others, thus generating goodwill entitled to protection

by way of trademark rights at common law. This is so whether or not that mark

may be registered under applicable legislation.

Numerous cases under the Policy have decided that the Policy affords protection

to those having common law trademark rights as well as to those having rights

in registered trademarks [4].

The Respondent contends that the Complainant has not claimed to own a trademark

or service mark, registered or unregistered, under the name "British Council".

However, that is not what the Complainant has claimed.

The Complainant has claimed (and it is not contested) that "The

British Council" is the mark or designation by which the organization

is known globally, and which it uses actively in its trading activities [emphasis

supplied]. The Panel finds that the Complainant has effectively claimed

that it has common law trademark rights in the name THE BRITISH COUNCIL.

"…nowhere in the Complaint does the Complainant actually allege that

it holds common law or other rights in the mark FILM COUNCIL. However, the Panel

is of the opinion that this is not fatal to the Complaint as the context of

the Complaint and the allegations therein lead to the obvious conclusion that

the Complainant is in fact alleging common law rights in the mark…".[5]

Although other councils operate under names that include the words "British"

and "Council" there appears, on the material before the Panel, to

be only one called "The British Council". The name "The British

Council" is therefore capable of being distinctive of the services provided

by that body.

In Federal Court of Canada v. federalcourtofcanada.com [6]

a three-member panel found the complainant to have common law trademark rights

in the descriptive name "Federal Court of Canada" based on extensive

and continuous use, that name having been conferred by statute and the court

being the only one by that name in Canada.

The Respondent contends that the Complainant has not provided sufficient evidence

that it has a common law trademark for the name "British Council".

The Respondent has not disputed the Complainant’s claim to have a long history

of the supply of services in many countries under its name. Taking this into

account, together with the uniqueness of the name "The British Council",

as distinct from other names which include one or more of the words "british"

and "council", the Panel is satisfied that the Complainant has established

that it has rights in the common law trademark THE BRITISH COUNCIL.

Identity or Confusing Similarity

Essential or virtual identity is sufficient for the purposes of the Policy

[7].

The Respondent concedes this element. The panel finds the disputed domain name

is virtually identical and confusingly similar to the Complainant’s trademark

THE BRITISH COUNCIL [8]. The Complainant has

established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The names of the Respondent and his client

are not and do not include any part of the disputed domain name.

Descriptive names such as "Chinese Restaurant" may be legitimately

used by anyone, provided the goods or services they provide conform to the description

and are thus not misleading. But there is only one organization known as "The

British Council" and accordingly it alone may use that name without misleading.

The Respondent does not officially represent Britain or things British, nor

does his client. Although the Respondent’s web site remains under construction,

any use of the disputed domain name to provide information about Britain must

necessarily mislead Internet users into the false belief that the operator of

the web site represents Britain or things British. The inherent deceptiveness

of the disputed domain name in the hands of the Respondent or his client negates

any possibility that the Respondent has rights to or a legitimate interest in

the disputed domain name.

"A name which will, by reason of its similarity to the name of another,

inherently lead to passing off is [an instrument of fraud]". [9]

The Panel finds the Complainant has established this element. The Respondent

has no rights or legitimate interests in the disputed domain name.

Bad faith Registration and Use

The Respondent claims to have been "totally unaware of the existence of

the Complainant, not to mention the Complainant’s mark, until he received this

Complaint". Further, the Respondent claims he has "never approached

the Complainant before this dispute" and "never attempted to offer

the disputed domain name to the Complainant or to any parties for sale".

The terms of the Respondent’s email of June 6, 2001, disprove all

of these statements.

Having regard to the fact that the disputed domain name was registered only

one month before the email of June 6, 2001, was sent, and the clear aim of that

email to extract a price from the Complainant for the disputed domain name in

excess of the Respondent’s registration costs, the Panel finds the disputed

domain name was registered primarily for the purpose of sale to the Complainant

for such a price. This constitutes evidence of both bad faith registration and

bad faith use.

The Complainant has established this element. The panel finds the Respondent

registered and is using the disputed domain name in bad faith.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs

that the domain name <britishcouncil.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: October 7, 2001

Footnotes:

1. Powrachute Inc., v. Buckeye Industries

(AF-0076).

2. Successful Money Management

Seminars Inc. v. Direct Mail Express, (AF-96457).

3. Asphalt Research Technology, Inc. v

Anything.com (D2000-0967).

4. See, for example, Cedar Trade Associates,

Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven

S. Lafwani (D2000-0014); SeekAmerica

Networks Inc. v. Tariq Masood (D2000-0131)

and Passion Group Inc. v. Usearch, Inc. (AF-0250).

5. Film Council v. Boolean Consulting

Limited (AF-0503).

6. (AF-0563).

7. See The Stanley Works and Stanley Logistics,

Inc v. Camp Creek. Co., Inc. (D2000-0113),

Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S

Enterprises Ltd. (D2000-0802) and

Nokia Corporation v. Nokiagirls.com a.k.a IBCC (D2000-0102).

8. See John Fairfax Publications Pty Ltd

v. Domain Names 4U and Fred Gray (D2000-1403).

9. British Telecommunications plc

and others v. One In A Million Ltd and others [1998] EWCA Civ 1272 (UK Court

of Appeal).

More cases by this complainant

• The British Council — D2001-0998 · Terminated