ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Preliminary Issues
Paragraph 14 ("Powers of the Panel") (a) and (c) of eResolution Supplemental Rules, describing the powers of the Panel, states that: (a) The Panel may rule on any question raised by a Party, including the interpretation of the Regulation, and that (c) The Panel may rule on any objection as a preliminary issue, or it may decide to continue the arbitration and rule on such an objection in its final decision.
In the case AF-00106 proposed to this Panel, two preliminary issues have arisen. The first issue concerns a request for a stay of the proceeding coming from the Complainant 'Computer Futures Recruitment Consultants Limited of London' ("CF-UK" or "Complainant"). The second issue concerns 'ComputerFutures Limited. of New York' ("CF-USA" or "Respondent") and its entitlement to be considered a Respondent. This Panel decides, in the following Paragraphs (1.1. and 1.2.), about these two preliminary issues.
1.1. Complainant's request for a stay.
Paragraph 18 ("Effects of court proceedings") states that "(a) in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discrection to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision".
This Panel received, on 23d of March, 2000, a formal request of a stay of the proceeding from the Complainant, because of the pendency of a civil action on foot in the High Court of London.
In this fax, the Berwin Leighton law firm specifically request that "the panel adjourns this matter until determination of the action currently on foot in the High Court".
John Hall, President of ComputerFutures Ltd, objected to this request, quoting the most significant ICANN policy rules, in a letter dated 24 March 2000.
This Panel noticed, first of all, that the Parties of the cause on foot in the High Court of London are the Complainant, Mr. Phillips, and his company Stylemode Data Limited.
As stated in Paragraph 1.2. of this decision, and according to a deep analysis of the whole documentation of the proceeding started in front of eResolution, this Panel noticed that the 'real' contentious about the domain name 'computerfutures.com' is between the two companies, 'CF-UK' and 'CF-USA'.
Mr. Phillips acted as a mere procurator of the New York based Company, but the real commercial interests for the domain name are connected to the U.S. Company.
The Complainant indicated Mr. Phillips as the Respondent, but Phillips, in the opinion of this Panel, is 'only' the registrant: the real, primary beneficiary of this domain name - and the one interested in this Issue - is the N.Y. company.
So this Panel, according to Rule 18, and considering that on the High Court of London is not present, as a party, 'CF-USA', the real beneficiary of the registration of the domain name, rejects the request for a stay, will examine the forms and the annexed documents and will proceed to a decision.
1.2. 'CF-USA' Respondent's Legitimation.
According to ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Respondent is the "holder of a domain-name registration against which a complaint is initiated" (Paragraph 1, "Definitions").
The Complainant, 'CF-UK', objected the rights of 'CF-USA' to intervent in this proceeding: as a matter of fact, in the Complaint Form 'CF-UK' identified as counterpart only Mr. Keith Phillips of Stylemode Data Limited, an England-based company. Mr. Keith Phillips is the one who registered the domain name 'computerfutures.com'.
On 7th March, 2000, a fax coming from Berwing Leighton offices (Complainant's Representative), directed to the law offices of John P. Bermingham (Respondent's Representative), affirms that "there is no provision in the ICANN rules or in the eResolution supplementary rules for the intervention of third parties in the dispute resolution procedure. There is no basis on which your contribution can be considered in the course of the decision making process and, as your client is not the registrant of the domain name, it has no interest in the dispute".
First of all, it is true - and the annexed documentation confirms it - that the registrant of the domain name is Mr. Keith Phillips.
Nevertheless this Panel, concerning the legitimatio ad causam of 'CF-USA', noted from the annexed documents that the English professional (Mr. Keith Phillips) did not act on personal interest basis, but under the directives and following the specific requests of 'CF-USA'.
He was a mere intermediary: he affirmed that he was planning to transfer, as soon as possible, the titolarity of the contested domain name to ComputerFutures Ltd. of New York.
According to this Panel, is obvious that Mr. Phillips acted as an agent/nominee of 'CF-USA': this consideration is based on several assertions of Mr. Phillips and of CF-USA representatives.
In particular: i) in Annex B to the Respondent's Form ('witness statement of Keith Phillips') the status of Mr. Phillips is clear. He declares: "I would be delighted to take on the job of creating and developing a web site for new american business" ... "my role in helping to select the final name was to check the availability of web-site domain names" ... "the name computerfutures.com was available. I reported back to Mr Hall the results of my research" ... "[he] instructed to me to register the domain name for him and commence the development of the site accordingly". ii) Mr. Phillips, explicit, declares: "in registering the domain name ... I was acting on behalf on my American clients. It was to be their website. My job was securing the domain name and then getting the website up and running and therefore maintaining the same" ... "Neither my company nor I have ... commercial interest in the domain name www.computerfutures.com. That is the domain name of the site I set up at the request of, on behalf of and for the benefit of my clients, Computerfutures Ltd of 10 Audrey Avenue, Oyster Bay, New York". iii) Also from the correspondence between 'CFRC-UK' and 'CF-USA' is clear that the position of Mr. Phillips is similar to the one of a simple agent/procurator, also if there is not a written proof about these commercial contacts or tasks between 'CF-USA' and Mr. Phillips' Company.
In the light of this, this Panel declares that 'CF-USA' has legitimate interest in joining this proceeding as a Respondent. The US Company is not a third party but is the real beneficiary of the domain name registration procedure. According to this, this Panel rejects the objection of 'CF-UK' and will consider, in the decision, also the documents and forms of 'CF-USA'.
2.1. The Parties and contested domain names.
Complainant: Computer Futures Recruitment Consultants Limited; Venture House, 27-29 Glasshouse Street, London, England. Prime contact Tania Akehurst, Representative Ian Lowe, Berwin Leighton, Adelaide House, London Bridge, London, England.
(1) Keith Phillips, Stylemode Data Limited, Rose Cottage, Stortford Road, Hatfield Heat, Bishops Stortford, Hertfordshire, England.
(2) ComputerFutures Ltd, 10 Audrey Ave, Oyster Bay, New York, USA. Prime contact: Kevin Stevens, Representative John Bermingham, Jericho Turnpike Suite 203, Jericho, New York, USA.
The contested domain name is computerfutures.com
2.2. Procedural History.
The electronic version of the Complaint form was filed on-line through eResolution's Website on February 2nd, 2000. The hardcopy of the Complaint Form was received on February 8th, 2000. Confirmation of wire payment was received on February 14, 2000. Upon receiving all the required information, eResolution's clerk proceeded to:
i) Confirm the identity of the Registrar for the contested Domain Name;
ii) Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
iii) Verify if the contested Domain Name resolved to an active Web page;
iv) Verify if the Complaint was administratively compliant.
The inquiry lead the Clerk of eResolution to the following conclusion:
the Registrar is Core Internet Council of Registrars, the Whois database contains all the required contact information. The contested Domain Name resolves to an active Web page and the Complaint is administratively compliant. The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on February 15th, 2000. That date is the commencement date of the administrative proceeding. On February 15th, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding. The Clerk's office was informed that the Respondent had problems filing the response online. An extension of delay was therefore granted until March 10, 2000. On March 9, 2000 the Clerk's office received the electronic version of the response and the hard copy version on March 10, 2000. On March 9th, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on March 10th, 2000. On March 14th, 2000, the Clerk's Office contacted Mr. Giovnni Ziccardi, and requested for him to act as panelist in this case. On March 15th, 2000, Mr. Giovanni Ziccardi, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality. On March 15th, 2000, the Clerk's Office forwarded a user name and a password to Mr. Ziccardi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System. On March 15th, 2000, a hard copy of file was sent to Mr. Giovanni Ziccardi. On March 15th, 2000, the parties, the Registrar and ICANN were notified that Mr. Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on March 29th, 2000.
2.3. Factual Background
CF-UK is a company registered in England and Wales, wich operate internationally as a recruitment consultant in a number of business areas, but most particulary in IT recruitment, and it has established a very substantial reputation in the name Computer Futures. CF-UK provide an Internet based recruitment service from its website computerfutures.co.uk. The Complainant is also the owner of the Community Trade Mark 'Computer Futures', the registration number of which is 00621201. The date of registration of this mark is 19 January 1999 (the registration documents and a copy of the trade mark certificate are at paper annex 1 to the Complainant form).
The mark relates to personnel recruitment services, personnel recruitment services in connection with personnel for the management, construction and programming of computers, provision of advice with respect to the recruitment of personnel, provision of advice with respect to the seeking of employment.
The Respondent is a company registered in the United States of America, and the registrant is the Respondent's IT consultant and agent.
The Respondent's IT consultant and agent Mr. Phillips registered the domain name 'computerfutures.com' on the 13th December 1999.
The incorporation of the company named 'ComputerFutures Ltd' was finalised on 11th January 2000 in the State of New York.
In order to make absolutely sure that there can be no misunderstanding, the Respondent has voluntarily put a red banner on every page of its' website displaying the following message: "We are ComputerFutures of New York, we have no connection with any European company. For legal reasons, we do not operate in Europe ".
On Friday 4 February 2000 the Complainant issued out of the High Courts of Justice, Strand, London, a claim form and application notice naming the registrant Keith Phillips and Stylemode Data Limited as Defendants to action number HC2000 0459 in which the Complainant is seeking an injunction prohibiting the use of the domain name 'computerfutures.com' by the defendants and its transfer to the Complainants.
3.1. Complainant's Contentions
1) The Complainant, first of all, asserts that, save for the generic Top Level Domain name '.com' at the end, the domain name 'computerfutures.com' is identical to the complainant's registered trade mark 'Computer Futures' and that the domain name 'computerfutures.com' is confusingly similar to the Complainants' trade mark in that it contains the words 'Computer' 'Futures'.
2) Claimant further asserts that this situation is resulting in confusion, and affirms that this is demonstrated by the e-mail at paper annex B to the Complainant form: it can be seen that this e-mail is from the operators of the 'computerfutures.com' site and it states that the operators of the site at 'computerfutures.com' have received 200 of the Complainant's e-mails.
3) The Complainant affirms that the registrant should be considered as having no rights or legitimate interest in respect of the contested domain name because: (a) the registrant Keith Phillips of Stylemode Data Limited has himself not been carrying on any legitimate business under the name computerfutures.com or by reference to the site at that address; (b) the site at 'computerfutures.com' is purportedly operated by a company which claims to be named ComputerFutures Inc of New York and Chicago. No records of this company can be located in the relevant registers for these areas and it is not known at the addresses given on the 'computerfutures.com' web site or on the e-mails from ComputerFutures Inc. The Complainant asserts that has obtained these facts by commissioning inquiry agents to verify the status of ComputerFutures Inc and a copy of their report is at paper annex C to the Complainant's form. (c) the site at 'computerfutures.com' has only been operational for three weeks, the quality of the site is such that little or no information can be obtained from it and there is no evidence that the registrants or the operators of the site have established any goodwill or reputation in the name 'computerfutures.com' by carrying on their activities at the web site or otherwise.
4) According to the Complainant, the domain name 'computerfutures.com' should be considered as having been registered in bad faith because:
a) the site being operated at the address 'computerfutures.com' claims to be an operative IT recruitment site offering services in the UK to the site user. The Complainant is the best known and most successful IT recruitment consultant in UK and Europe and has established substantial goodwill in the name Computer Futures since 1986.
b) the company claiming to operate the site, ComputerFutures Inc gives contact addresses at 10 Audrey Avenue, Oyster Bay, New York, NY 11771 and 700 Nicholas Boulevard , Elk Grove Village, Chicago, Illinois, 6007 United States. The Complainant has employed investigators to obtain details of the ComputerFutures Inc and to attend the addresses given above. ComputerFutures Inc is not registered in New York or Chicago and no-one at the addresses given has heard of it
c) the registrant and his company are both resident in the UK (Mr Phillips at Rose Cottage, Stortford Road, Hatfield Heath, Bishops Stortford, Hertfordshire CM22 7DL and Stylemode Data Limited at Atherton House, 13 Lowe Southend Road, Wickford, Essex SS1 8AB UK). This coupled with the information in paragraph b) above indicates an unlawful intent in the identification of ComputerFutures Inc as the website operator. The Complainant believes that the operator is in reality Mr Phillips and/or Stylemode Data.
d) the operator of the site at 'computerfutures.com' has e-mailed the Complainant stating that it has received e-mail which was intended for the Complainant. A copy of this e-mail is at paper annex B.
e) in the e-mail shown at paper annex B the persons operating the 'computerfutures.com' site attempted to open negotiations to buy the Complainants domain name 'computerfutures.co.uk'. The Complainant maintains that this was a pretext under which the defendant wished to open negotiations with the Complainant and in reality the Defendant hoped that the Complainant would buy the Defendant's domain name
f) the operation of a site at the 'computerfutures.com' address is disrupting the business of the Complainant in that jobseekers wishing to contact the Complainant are being diverted via the Defendant's domain name and this fact is evidenced by the contents of the e-mails at paper annex B.
g) by using the domain name for the purposes of and IT recruitment site the defendants have attempted to and have succeeded in directing internet users to their site and stand to make commercial gain thereby because:
i) if the operators of the site are capable of offering services those diverted internet users may contract with them in place of the Complainant; or
ii) by directing business to the site 'computerfutures.com' the registrants hope to sell the domain name to the Complainant for a fraudently inflated price; or
iii) by inflicting loss on a competitor they stand to gain generally.
The remedy requested is the transfer of the domain.
3.2. Respondent's Contentions.
1) The Respondent asserts, first of all, that the Complainant is a company registered in the United Kingdom, and its' business activities are limited to Europe.The Respondent is, on the other way, a company registered in the United States of America, and its' business activities are limited to the United States of America.
2) Concerning the position of Mr. Phillips, CF-USA asserts that the registrant is the Respondent's IT consultant and agent, responsible for the design and maintenance of the Respondent's website and the technical contact for them.
3) Then CF-USA affirms that the Complainant's trademark is limited to Europe, and it has no rights to any names or trademarks in the USA; it currently operates in Europe using the name 'compfutures' combined with Top Level Domain name for its' European Countries of operation ('.co.uk', '.de' etc). The Complainant has registered all the Top Level Domain names for the Countries in which it operates and so has clearly indicated where they do business; the Respondent only has the '.com' Top Level domain name registered indicating that it operates in the USA. So there is now no confusion whatsoever between the identities of the Respondent and the Complainant, their areas of their business operation, and their locations.
4) The Respondent should be considered as being the rightful owners of the contested Domain Name because: a) They have every right to use a consultant company, Keith Phillips of Stylemode data Limited, to organise the procurement, design and maintenance of their website. Their agent is contractually obligated to them to perform these tasks. The Registrant therefore has a clear legitimate business interest in the website, because if they are unable to perform their function, they will be in breach of contract with the Respondent. b) The Respondent is a company legally incorporated in the State of New York. A copy of the Certificate of incorporation is enclosed as annex A to the Respondent's form c) The Respondent's website is fully functional. It has been under development using test data but at that time was not being advertised and had not been registered with any search engines on the Internet. It now contains "live" data and is being used in support of the services the Respondent offers to its' customers.
5) The domain name "computerfutures.com" was not registered in bad faith because: a) The Respondent's site being operated at the domain address "computerfutures.com" does not offer services in Europe or indeed in any areas where the Complainant operates. The message on the Respondent's site makes this emphatically clear. The Complainant may be very successful in Europe, but it does not operate at all in the USA and so has no goodwill there. b) The addresses given on the Respondent's website are correct. The Respondent has office space at its' Chicago address, however at the moment, business activities have been temporarily suspended there because there is another company called Computerfutures operating in Illinois and the Respondent is making sure that there is no conflict of interest before proceeding to trade from that office. c) As previously explained, the Registrant of the domain name is the Respondent's contracted website programmer and is also the Respondent's technical contact. All of their actions, including the registration of the name and the programming of the website were on the specific instructions of the Respondent. The Respondent's agent originally bought the domain name via an online service with a credit card. It was therefore necessary to put the cardholders address in as the Registrant's address. The Respondent had asked for the Registrant details to be changed to their own name i.e. Computerfutures Ltd, 10 Audrey Ave, Oyster Bay, New York 11771 but no urgency was attached to this request because it was not foreseen that they would be attacked by another company for the name through the Courts in the UK or through a domain name dispute authority. That request has since been suspended pending the deliberations of the panel.
The Respondent urges the panel to assign the Domain name to its rightful owner, ComputerFutures Ltd of New York.
4.1. Considering the documentation, and according to the ICANN Rules, this Panel will analyze facts and statements of the Parties, and in particular will consider if:
a) the Complainant has proved each of the three requirements stated in Paragraph 4 of the ICANN Policy and if
b) the Respondent has demonstrated his rights to and legitimate interests in the Domain name computerfutures.com (Paragraph 3 (c) Policy)
The ICANN Policy in Paragraph 4.(a). requires 'CF-UK' to prove, with respect to the domain name at issue, each of the following:
4.2. Identity or confusing similarity.
Annex A to the complaint form is the Trade Mark Certificate. The office for harmonization in the internal market (trade marks and designs) states that the trademark Computer Futures is registered with the number 000621201. The applicant is Computer Futures Recruitment Consultants Ltd from London. The date of registration is 19 January 19999. According to the ICANN Policy, mere identically of a domain name with a registered trademark is sufficient to meet the first element.
Save for the generic Top Level Domain '.com', the domain name computerfutures.com is identical to the complainant's registered trademark Computer Futures and the domain name is also confusingly similar to the complainants trade mark.
The confusion is also demonstrated by the e-mail at paper annex B. The operator of the site computerfutures.com admits that have received 200 of the Complainant's e-mail.
About the 'dot com' question: Internet users generally understand www. as a possibile prefix and .com or any other generic top level domain identifier as a suffix. These prefix and suffix are related more to the structure of the Internet then they are to the activities, nature or name of an entity mantaining a presence on the Internet at that particular domain name. Internet users usually disregard these prefixes and suffixes and pay most attention to the terms in between.
In Europe a lot of companies use the .com TLD, especially if these companies have international activities or transnational businesses.
So it is not acceptable the presumption that CF-UK is not interested in having a .com domain: it is a company very well know in Europe, and has an international activity in the IT recruitment field.
The first requirement is satisfied: the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
4.3. Rights or legitimate interests.
Complainant has invested considerable time and effort in estabilishing an association between the trade mark Computer Futures and ist services; the Respondent has not evidently invested time and effort and expense beyond the establishment of a Web Page.
The registrant has no rights or legitimate interest in respect of the contested domain name because the registrant Keith Phillips of Stylemode data Limited has himself not be carryng on any legitimate business, as we know, under the name computerfutures.com or by reference to the site at that address.
Last but not least, there is a strange relationship betweek the choice of the domain name computerfutures.com and the incorporation of the US company.
The rights of the Parties are very different. On one side the UK company has got a registered trade mark and claims the paterninty of an existing domain name identical to that mark. On the other side the US Company was incorporated starting from a domain name found free, as declared by Mr. Phillips.
The Complainant has a solid background on the basis of a long business activity in this field and with the trade marl Computer Futures, the US company was created starting from the contested domain name.
Finally CF-USA did not use or was preparing to use the Domain Name in connection with a bona fide offering of goods or services, neither has been commonly known by the Domain Name.
According to this Panel also the second requirement is satisfied: CF-USA has no rights or legitimate interests in respect of the domain name.
4.4. Bad Faith registration and use.
On the 24th of January 2000 a mail was sent from firstname.lastname@example.org to email@example.com. The sender presented itsels as 'ComputerFutures Inc. of New York'. The request included in this mail seems to this Panel strange and pretextuos. The US Company, new, small and without a complete web site, is trying to open a negotiation with one of the biggest recruitment company in UK to buy the .co.uk domain name.
It is also strange because in several points Mr. Phillips and the U.S. Company declare that there was no intention in Computer Futures Ltd of New York to start a business in Europe.
According to this Panel, the name was primarily registered for the purposes of either selling, renting, or otherwise transferring it to the owner of the trademark or service mark, or a competitor, for valuable consideration in excess of the documented out of pocket costs directly related to the Domain Name, as demonstrated by the attempt made with the e-mail.
It is also probable that domain was registered as an attempt to attract clients of CF-UK.
This Panel think that the bad faith was above all in the agent procurator (Mr. Phillips) and secondly in the company (CF-USA).
Mr. Phillips, a computer technician in England, asserts that he did not know the existence of CF-UK, and this is difficult to believe because the company is well known in Europe, the principal shareholders of ComputerFutures New York are also from England and business activities of the US Company are in the same field.
The bad faith of the procurator, who found, registered and payed for the domain with the agree of submitting it to the US Company, reflects also on the employer.
The Company can not make use of a domain name registered in bad faith; partners of CF-UK trusted and gave a task to a person who operated in violation of the current rules, and they can not benefy of a similar behaviour hold by their procurator.
According to this Panel, the Domain Name has been registered and is being used in bad faith.
The evidence, submissions of the parties, ICANN Regulations compel this Panel to conclude and decide that
(a) the domain name registered by Mr. Phillips for CF-USA is identical to the registered mark of CF-UK. The registered domain name computerfutures.com is identical to complainant's registered trademark Computer Futures and is confusingly similar to a mark in which the complainant has rights.
(b) CF-USA has no legitimate interests in respect of the domain name.
The Respondent has not been commonly known by this domain name, and the Respondent is not making legitimate non-commercial or fair-use of the domain name. The respondent does not have rights or legitimate interests in respect to this domain name.
(c) the Domain Name at issue was registered and is being used in bad faith by Mr. Phillips and, consequently, by CF-USA because the Respondent acquired the domain name primarly for the purpose of selling or renting it, and then they have intentionally attempted to attract for commercial gain and at Complainan's expense and loss, Internet users to Respondent's website and have created a likelihood of confusion with respect to complainant's mark as to its source, affiliation or sponsorship of Respondent's website
The respondent has failed to prove any of the three circumstances set out in ICANN Policy at paragraph 4 (c).
Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the Domain Name at issue, computerfutures.com, be transferred from Mr. Phillips/CF-USA to CF-UK.
Thus done and signed in Castelfranco Emilia (Modena), Italy, on March 29, 2000.
(s) Giovanni Ziccardi