W. & G. Foyle Limited v. Robert Foyle

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W. & G. Foyle Limited v. Robert G. Foyle

Case No. D2002-0039

1. The Parties

Complainant, W. & G. Foyle Limited, is a private limited company located

in London, United Kingdom.

Respondent, Robert G. Foyle, is an individual located in Christchurch,

New Zealand.

2. The Domain Name and Registrar

The Domain Name at issue is <foyles.biz> (the Domain Name).

The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon,

VA, 20170,

3. Procedural History

The Complaint was received on January 17, 2002.

The Response was received on February 27, 2002.

Mark V. B. Partridge was appointed Sole Panelist on March 18, 2002.

The Panel finds that the parties' submissions and the actions of WIPO comply

with the Uniform Domain Name Dispute Resolution Policy ("the Policy"),

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

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("the Supplemental Rules"), applicable to this proceeding.

4. Factual Background

Complainant and its predecessors have operated a book store in London called

FOYLES since 1906. Complainant owns trademark registrations for the mark

FOYLES in many countries including Australia, dated August 10, 1994;

Canada, dated September 15, 1995; European Community, dated July 22, 1996;

United States, dated August 12, 1997; Japan, dated July 14, 2000;

and the United Kingdom, dated September 16, 2000. Complainant

also has pending applications for the marks in New Zealand, filed February

28, 2000.

Respondent is the sole director of Foyle's Books Limited, a company incorporated

in New Zealand on November 24, 1995. Respondent registered the domain name

on November 7, 2001.

The parties have been involved in prior domain name disputes. WIPO

Case No. D2000-1544 related to the domain name <foyles.com> and

WIPO Case No. D2000-1543 related

to the domain name <foylesbooks.com>. In both cases, the Panel required

transfer of the domain names to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to a mark

in which Complainant has rights; that the Respondent has no right or legitimate

interest in the Domain Name; and that the Domain Name was registered in

bad faith.

B. Respondent

Respondent contends that he has a legitimate interest in the Domain Name

because it is based on his surname and the name of his business. He further

contends he has not registered or used the Domain Name in bad faith. The

Respondent also contends that the prior decisions should not be controlling

and acknowledges that he failed to present evidence of his interest in the

Domain Names in those proceedings.

6. Discussion and Findings

The parties agree that the Domain Name is identical to a mark in which

Complainant has rights. It also appears that Respondent was aware of Complainant's

use and rights in the mark FOYLES when he registered the Domain Name.

The parties disagree on Respondent's interest in the Domain Name. Respondent

is the grandson of Gilbert Foyle, a founder of Complainant's business. In

addition to the book business, Gilbert Foyle also was the founder of Foyle's

Educational Ltd., in London. Complainant's business and Foyle's Educational

Ltd., operated in London as two separate businesses for over 20 years. In

1977, Respondent moved the business of Foyle's Educational Ltd., to New

Zealand and Australia. In 1995, Respondent founded Foyle's Books Ltd., in

New Zealand. Since 1997, Respondent has conducted business via the Internet

at <foyles.co.nz>. That domain name currently directs Internet users

to Respondent's site at <robertfoylebooks.com>.

Complainant denies that Respondent has a legitimate interest in the Domain

Name, stating:

It is not accepted that FOYLES has been used innocently in the possessive

sense to indicate ROBERT FOYLE'S, or that the Respondent has a right to

register FOYLES because it reflects his name.

Complainant's position is not persuasive in this proceeding as a matter

of fact or as a legal interpretation of the Policy.

Under the Policy, a legitimate interest may be found when there is evidence

that the Registrant was commonly known by the domain name prior to the dispute.

Thus, the fact that Respondent registered FOYLES because it reflects his

name is very significant. Here, there is no dispute that the Respondent

is named Robert Foyle and that he owns or is associated with operating businesses

known as Foyles Educational Ltd., and Foyle's Books Limited. Further, this

is not a case where the similarity of surnames appears to be a convenient

excuse for a deliberate infringement. Rather, this appears to be the case

of two different businesses coexisting under the virtually identical names

for many years.

Under the circumstances, it appears that the Respondent has a legitimate

interest in the Domain Name <foyles.biz> due to the fact that it is

the possessive form of his surname and it is the short form of a business

name under which he has operated for many years prior to this dispute.

It also seems more likely than not that Respondent selected the Domain

Name primarily because it corresponded to the short form of his business's

name, and not for the purpose of trading on Complainant's name.

The prior decisions in which similar Domain Names were challenged and transferred

are not controlling here since the Panels in those proceedings did not have

the benefit of the record presented here regarding Respondent's interest

in the name.

Under the circumstances here, I find that Complainant has failed to meet

its burden of proving a lack of legitimate interest in the Domain Name or

of proving bad faith use or registration.

In reaching this conclusion, I recognize that both parties are using identical

names for similar goods, that a likelihood of confusion may exist, and that

relief may be available through other proceedings. However, the scope of

actions under the Policy are properly limited to acts of cybersquatting.

The WIPO report on which the Policy was based specifically states: "good

faith disputes between competing right holders or other competing legitimate

interests over whether two names were misleadingly similar would NOT fall

within the scope of the procedure" (emphasis added). Paragraph 172, WIPO,

"The Management of Internet Names and Addresses: Intellectual Property Issues,"

April 30, 1999. Given the summary nature of proceedings under the Policy,

it is appropriate that good faith disputes between competing legitimate

interests are decided in the courts where a full record can be developed.

I believe this case presents exactly the type of good faith dispute that

is outside the scope of the Policy. The evidence fails to demonstrate that

Respondent is engaged or intends to engage in cybersquatting within the

ambit of the Policy.

7. Decision

For the reasons stated above, Complainant's request for transfer of the

Domain Name <foyles.biz> is denied.

Mark V.B. Partridge

Sole Panelist

Dated: April 11, 2002

More cases by this complainant

• W. & G. Foyle Limited v. Foyle's Books Limited — D2000-1544 · foyles.com · Transfer · 13 Jan 2001
• W. & G. Foyle Limited v. Robert G Foyle — D2000-1543 · foylesbooks.com · Transfer · 24 Jan 2001