Lloyds TSB Bank PLC v. Daniel Carmel Brown Case No. D2008 1889
1. The Parties The Complainant is Lloyds TSB Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Taylor Wessing, UK.
The Respondent is Daniel Carmel Brown of Essex, UK, represented by Andrew Klein, UK.
2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 9, 2008, and in hard copy on December 11, 2008.
The Center transmitted its request for registrar verification to the Registrar by email on December 10, 2008. The Registrar responded the same day, confirming that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the date of expiry of the Domain Name was November 3, 2010, that the Domain Name would remain on registrar lock pending this proceeding, and that the registration agreement was in English. The Registrar also: stated that it had not received a copy of the Complaint; provided the contact details recorded on its Whois database in respect of the Domain Name; and did not dispute that the Respondent had submitted in the registration agreement to the jurisdiction of the Courts at the location of the Registrar.
The Center notified the Complainant on December 17, 2008, that the Complaint had a formal deficiency in that the registrar was incorrectly identified. The Complainant submitted an amended Complaint rectifying this deficiency by email on December 18, 2008 and in hard copy on December 19, 2008.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UDRP, 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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 11, 2009. The Response was filed with the Center on January 9, 2009.
The Center received unsolicited Supplemental Filings from the Complainant on January 13, 2009, and January 21, 2009, and an email in response from the Respondent on January 21, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on January 19, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint as amended complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Procedural Ruling The Center has rightly put before the Panel for consideration (or otherwise) at its discretion under the Rules the Complainant’s unsolicited Supplemental Filings and email in response received from the Respondent. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003 0447, this Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
“These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In the present case, the Complainant’s first Supplemental Filing essentially consists of observations on the evidence which the Panel is capable of discerning by itself. The second contains a recent decision in another case in favour of the Complainant, which does not appear to establish any new principle of assistance in resolving the present case.
The Panel is not satisfied that exceptional circumstances justifying the admission of either Supplemental Filing have been made out. Furthermore, if the Complainant’s Supplemental Filings were admitted, the Panel would feel bound to afford the Respondent an opportunity to comment on them. This would delay the conclusion of the procedure without any apparent benefit. The Panel has therefore decided not to admit the Complainant’s Supplemental Filings.
5. Factual Background The Complainant is a large UK based banking group formed by the merger in 1995 of the Lloyds Bank and the TSB Group in 1995. Lloyds Bank had traded under that name since 1865. The group now has some 16 million personal customers and its revenues in the first half of 2008 amounted to £4.6 billion. It expended over £50 million on advertising in 2007, including £8.5 million on internet based advertising. The Complainant is registered as the proprietor of the marks LLOYDS and LLOYDS BANK in respect of banking and financial (and other) services in the UK.
On November 3, 2008, the Complainant issued its formal offer to take over HBOS plc, another large UK bank. The offer document indicated that the Complainant would change its name to Lloyds Banking Group plc. The takeover, including the proposed change of name, received extensive publicity.
The Respondent registered the Domain Name on November 3, 2008. At the date of the Complaint, the Domain Name was pointed to a standard holding page provided by the Registrar. The Domain Name was subsequently pointed to a web page which was headed “Lloyd’s Baby Girl” and informed the reader: “Since leaving to live in Spain Lloyd and Daniel have remained the best of friends so when Lloyd’s baby girl came along earlier in the year, Daniel promised to create a website about Hannah”.
A representative of the Complainant contacted the Respondent by email on November 11, 2008, expressing concern about the registration of the Domain Name “because of the confusion it causes to web users”, requesting its transfer to the Complainant and offering to compensate the Respondent reasonably for his time and effort involved.
The Respondent replied on November 12, 2008, stating: “I would of course be interested in considering a transfer but only at an appropriate price. Please indicate what kind of price we are talking about and, after consultation with my advisers, I would be happy to come back to you.”
The Complainant’s representative responded on November 13, 2008, that the Complainant was willing to compensate the Respondent £200 for his time and effort involved in the transfer. The Respondent emailed back the same day stating that he had passed over responsibility for liaising with the Complainant’s representative to Andrew Klein. The Complainant’s representative contacted Mr Klein on November 14, 2008, asking him whether the transfer of the Domain Name for £200 could proceed.
Mr. Klein reverted on November 17, 2008, confirming that he represented the Respondent and stating: “Whilst my client is happy to consider a sale of the domain name(s) required, I am afraid that your offer for £200 is not really at the level that would interest us. Perhaps you might want to look more closely at the attached weblink which will bring you more in line with what this ‘market’ dictates”.
The Complainant’s adviser responded on November 23, 2008, stating that the examples of domain name sales to which Mr Klein referred were not relevant comparisons since they did not include other parties’ trademarks. She added that the Complainant was fully prepared to commence UDRP proceedings, that it was not reasonable for the Complainant to pay any sum which would exceed what it would cost to recover the Domain Name legally, and that the offer could be increased to £500 in the interest of getting it done quickly.
Mr Klein replied on December 4, 2008, stating that according to his lawyers the process for the Complainant to claim ownership of the Domain Name was not straightforward or guaranteed and that it would involve the Complainant expending considerable time, effort and cost. He went on: “My client is prepared to sell. However, your offer is frankly derisory. We are not seeking to gain unfair advantage but simply obtain a price which properly reflects your clients desire to own the name. In the circumstances, I would be prepared to recommend suggesting to my client that he accept something in the order of £25,000 as a minimum”.
6. Parties’ Contentions A. Complainant The Complainant refers to its trade mark registrations and states that it continues to be known and referred to as “Lloyds”, that LLOYDS TSB and LLOYDS are household names in the UK, and that it has a substantial reputation and goodwill under these marks in the UK and other countries. The Complainant accordingly contends that it has registered and unregistered rights in the marks LLOYDS, LLOYDS BANK and LLOYDS TSB.
The Complainant alleges that the Domain Name is confusingly similar to these marks, pointing out that it includes the LLOYDS mark in its entirety and submitting that the “bg” element has little or no distinctive character and does not suffice to counteract the similarity of the Domain Name to its marks. The Complainant further contends that many people in the UK would understand the Domain Name to refer to the enlarged group to be named “Lloyds Banking Group”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent must have been aware of its trademarks when he registered the Domain Name, and points out that (at the date of the Complaint) the Domain Name connected to a website with no meaningful content. According to the Complainant, none of the circumstances indicating a right or legitimate interest set out in paragraph 4(c) of the Policy is present in this case, nor is the Domain Name generic. The Complainant submits that it has made a prima facie showing that the Respondent does not have rights or legitimate interests in respect of the Domain Name, and that the onus lies on the Respondent to come forward with proof that he does.
Finally, the Complainant maintains that the Domain Name was registered and is being used in bad faith. According to the Complainant, the absence of any legitimate use of the Domain Name or credible motive for registering it, the timing of the registration following media coverage of the Complainant’s intention to use the name Lloyds Banking Group plc on its acquisition of HBOS plc, and the offer on behalf of the Respondent to sell the Domain Name to the Complainant for at least £25,000 are indications that it was registered in bad faith in accordance with paragraph 4(b)(i) of the Policy. The Complainant also alleges that the Respondent registered the Domain Name primarily for the purpose of disrupting its business.
The Complainant seeks a decision that the Domain Name be transferred to it.
B. Respondent The Respondent denies that the Complainant has trademark rights to the Domain Name. He points out that numerous other companies own rights in marks which include the word “lloyds”, that the Complainant has not registered “Lloyds Banking Group” as a trademark and that the Complainant did not register the Domain Name itself before announcing its intention to adopt the name “Lloyds Banking Group plc”.
The Respondent also denies that the Domain Name is confusingly similar to any mark in which the Complainant claims to have rights, given the use of names containing “Lloyds” by many other commercial entities and the fact that the Domain Name is not identical to any of the Complainant’s alleged marks.
The Respondent states that he had not made use of the Domain Name until recently because his father had been very ill. He points out that the Complainant contacted him only eight days after he registered it. He alleges that he has a legitimate interest in the Domain Name, having registered it for a website for the baby girl of his friend, Lloyd Herman. He maintains that he is not making unfair use of the Domain Name with intent for commercial gain misleadingly to divert consumers or tarnish the Complainant’s trademarks.
The Respondent denies that the Domain Name was registered in bad faith. He points out that the parties are not competitors and that the Domain Name was not registered primarily to disrupt the Complainant’s business. He states that the Domain Name was not registered in an intentional attempt to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. He denies that the Domain Name was registered primarily for the purpose of sale to the Complainant, pointing out that the Complainant’s representative first approached him asking him whether he was willing to sell, and referring to the decision in Manchester Airport plc v. Club Club Ltd, WIPO Case No. D2000 0638. He states that the Domain Name is the first he has purchased and therefore he cannot have been involved in a pattern of blocking trademark owners from reflecting their marks in corresponding Domain Names.
The Respondent asks the Panel to reject the Complaint and make a finding of reverse domain name hijacking, on the grounds that the Complainant should have known that it did not have relevant trademark rights and that it deliberately used a third party to draw the Respondent and his representative into correspondence for the purpose of bringing a complaint under the Policy.
7. Discussion and Findings In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn below.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the marks LLOYDS, LLOYDS BANK and LLOYDSTSB. The fact that other parties may have rights in identical or similar marks does not deprive the Complainant of its rights in these marks.
The Panel also finds that the Complainant has unregistered rights in the mark LLOYDS BANKING GROUP as a result of the extensive publicity given to its intention to use this name following its takeover of HBOS plc. It is well established that a high profile announcement of this nature can very rapidly create sufficient goodwill to found a claim for passing off under UK law: see, for example, the Judgment of the High Court in Glaxo Plc and another v. Glaxowellcome Limited and Others  FSR 388. It is also clear that the right to protect a mark by such a claim constitutes a right in the mark for the purposes of the Policy: see Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000 0235. Indeed, complaints have succeeded under the Policy in a number of cases where domain names reflecting the name of a merged group have been registered shortly after the merger was announced: see Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003 0112 and cases cited there.
The Panel further finds that the Domain Name is confusingly similar to each of these marks. In the view of the Panel, many members of the public would overlook the letters “bg” in the Domain Name or would assume that they stand for “Banking Group” in the Complainant’s new name. As is recognized by the Respondent in his explanation of his choice of the Domain Name, it is natural to suppose that the letters “bg” in this context are initials.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
It is common ground that the Respondent has not used the Domain Name for a bona fide offering of goods or services and that he is not commonly known by the name.
As at the date of the Complaint, the Respondent was not making a legitimate non commercial or fair use of the Domain Name. The Panel considers that the Respondent’s use of the Domain Name following the Complaint, for a website ostensibly about his friend’s baby girl must be disregarded for this purpose. As observed in Poker Host Inc. v. Russ “Dutch” Boyd, WIPO Case No. D2008 1518, if use following complaints were taken into account, the Policy could be rendered wholly ineffective by respondents rapidly posting websites which ostensibly constituted fair use of disputed domain names.
Even if the Respondent’s use of the Domain Name following the Complaint could be taken into account, the Panel does not consider that it would confer a right or legitimate interest on the Respondent per se, since he claims to have created the website not for himself, but for his friend, Lloyd Herman, to whom the Domain Name is said to refer. In any case, in view of the Panel’s finding of bad faith, discussed below, the Panel does not regard this use of the Domain Name as legitimate or fair.
In the circumstances, the Panel does not consider that there is any other basis on which the Respondent can claim to have any right or legitimate interest in the Domain Name.
The Panel finds that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
Having reviewed the evidence, the Panel finds that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his out of pocket costs.
The Panel notes first that the Domain Name was registered the very day of the Complainant’s widely reported announcement that it would take the name Lloyds Banking Group plc on its forthcoming acquisition of HBOS plc. The Respondent does not deny that he was aware of this when he registered the Domain Name.
Secondly, when the Complainant’s representative objected to the Respondent’s registration of the Domain Name, expressing concern about confusion, the Respondent made no mention of any intention to use the Domain Name for a website about his friend’s baby girl. Even when the Respondent’s representative suggested that the Complainant’s claim was not straightforward or guaranteed and that it would involve considerable time, effort and cost, he made no reference to the Respondent’s intention to use the Domain Name for this alleged purpose. This concept only surfaced after the Complaint was filed. The Panel infers that it was an afterthought devised to provide an appearance of justification for the registration and was not the true purpose of the registration.
Thirdly, when the Complainant’s representative offered to compensate the Respondent reasonably for his time and effort involved, the Respondent and, subsequently, his representative took the Complainant to be offering to buy the Domain Name and sought to sell it at a market value reflecting the Complainant’s desire to own the name. This indicates that they had it in their minds to sell the Domain Name to the Complainant for valuable consideration not reflecting the Respondent’s costs, or his time and effort, but rather what it was worth to the Complainant.
In accordance with paragraph 4(b)(i) of the Policy, this constitutes evidence of registration and use of the Domain Name in bad faith. The Panel finds that this presumption is not displaced by any other evidence in the file. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
D. Reverse Domain Name Hijacking
Since the Panel finds that the Complaint is justified, the allegation of reverse domain name hijacking must be rejected.
8. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.