ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is the Film Council, a legal person with civic address at Queen's Yard, 10 Little Portland St. London, UK, W1W 7JG.
The Respondent is Boolean Consulting Limited, a legal person with civic address at Chittenden Horley, Charlotte House, 30 Dudley Road, Manchester, UK, M1B 8DT.
The Registrar is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, USA, 20170.
2. Procedural History
On October 9th, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the eResolution Clerk's Office [hereinafter the Clerk]. The Clerk then proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk to the conclusions that: the Registrar is Network Solutions, inc.; 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.
On October 10, 2000 the Clerk requested the Registrar to provide confirmation that the Domain Name was registered with the Registrar and a copy of the Registration Agreement. The requested information was received on October 11, 2000.
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 [hereinafter the ICANN Rules]. The Clerk fulfilled all its responsibilities under paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on October 18th, 2000. This date is the official commencement date of the administrative proceeding.
The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.
The Panel has reviewed the documentary evidence provided by the Parties and the Clerk and agrees with the Clerk's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the eResolution Supplemental Rule [hereinafter the eResolution Rules].
On November 5th, 2000, the Respondent's representative requested an extension to submit his Response, alleging exceptional circumstances. On the same date the Clerk granted an extension to the Respondent until November 8th, 2000.
On November 8th, 2000, the Respondent submitted, via the eResolution Internet site, the Response.
On November 16th, 2000, the Parties were notified that the Panel had been appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the eResolution Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On November 17th, 2000 the Clerk informed the Panel that the Parties had requested approval to submit further documentation. Although the submission of additional documentation after appointment of a panel is not foreseen within the ICANN Rules, a panel is entitled, under its general powers of administration of the proceedings granted at section 10 of the ICANN Rules, to accept additional documentation if it considers this just and equitable under the circumstances. The Panel therefore decided to grant approval to the Parties to submit further documentation [referred to hereinafter as the Supplemental Complaint and the Supplemental Response] and has taken into account this additional documentation in its deliberations.
The Panel is obliged to issue a decision on or prior to November 30th, 2000, in the English language.
3. Factual Background
The Complainant is a legal person incorporated in July 1999 under the laws of the United Kingdom. The Complainant was established by the UK Government Department of Media, Culture and Sport as an agency responsible for developing the film industry and film culture. The Complainant serves to co-ordinate film industry bodies, which receive money from the UK government. In part, the Complainant is also responsible for National Lottery money, which had formerly been allocated to the Arts Council.
In July 1998 the UK Government first announced its proposal to create the agency, which evolved into the Complainant. This announcement received some national coverage in both film industry and general press and was followed by public consultation. The initial name proposed for the Complainant was "British Film" although the press had initially referred to the Complainant as the "Film Council".
In May 1999 the Culture Secretary announced that the name of the Complainant would in fact be the "Film Council" and that appointment of a Chief Executive for the Complainant would take place in the following months. Advertisements for the appointment of a Chief Executive appeared in the British Press at the end of May, 1999.
The Complainant was incorporated under the name of the "Film Council" in July 1999 with the celebrated director Alan Parker being appointed in early August to the position of Chief Executive. This appointment received broad coverage in the British Press.
The Respondent is a legal person incorporated in November 1997 under the laws of the United Kingdom. Initially the Respondent provided consulting services to the financial and telecom market but in 1999 began development on transforming the Respondent's company website into a portal.
The Respondent registered the Domain Name on September 23rd, 1999 and at the same time registered the domain name "artscouncil.co.uk".
The Respondent maintains links to the Domain Name from the Respondent's web site located at the domain name "boolean.demon.co.uk". The meta tags for this web site, which were subsequently removed by the Respondent following the threats of the Complainant, included the key words "Arts Council" and "Film Council".
Prior to notice of the Complaint, on the Respondent's corporate web site under the title "Future Developments", the link to web site "www.filmcouncil.com" was described as "A multimedia site for the promotion of independent film production." No mention was made of the Complainant at this time, but the website was subsequently amended to include a disclaimer in this regard.
4. Procedural Issues
The Complainant commences the Complaint by listing a number of criteria by which it appears to be arguing rights in the common law mark FILM COUNCIL. It is interesting to note that 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 FILM COUNCIL.
The Supplemental Complainant and Supplemental Response contain allegations regarding an offer to transfer on behalf of the Respondent the Domain Name to the Complainant. The series of documents in support of the allegations represent communications, which took place between the Parties' solicitors and are labeled in part "without prejudice". In summary, the documents contain an offer on behalf of the Respondent to transfer the Domain Name for a large sum.
The Panel has reflected on whether or not to include this series of documents and what conclusions should be drawn from them in the context of these proceedings. The Panel is of the opinion that the documents are both relevant to and should be included in the proceedings and the Panel is also of the opinion that it is entitled to draw adverse conclusions from the contents of the documents. On one hand, it would be too simple to disguise the sale of a domain name for a sum in excess of out of pocket expenses as an agreement to settle thus avoiding a finding of bad faith pursuant to paragraph 4(b)(i) of the ICANN Policy. On the other hand, it makes no sense to discard what would otherwise be valid as evidence of bad faith merely because the parties had conducted their dealings through an intermediary who is also a solicitor. In any case the transaction in question was commenced before these proceedings and neither of the Parties has objected to its inclusion.
5. Parties' Contention
5.1 The Complainant
At paragraph 10 of the section of the Complaint dealing with Illegitimacy the Complainant maintains that the FILM COUNCIL could only refer to an organisation, that the Respondent has never suggested that he has any rights, legitimate interests or involvement in such an organisation and therefore it is clear that the Respondent has no rights or legitimate interest in respect of the Domain Name.
The Complainant continues by alleging at paragraph 11 that the Respondent registered the Domain Name in full knowledge of the use and proposed use of FILM COUNCIL by the Complainant. This the Complainant proposes as evidence of bad faith.
Additionally, at paragraph 12 as additional evidence of bad faith the Complainant maintains that the Respondent registered the Domain Name, which does not refer to any actual branding on the web site.
The Complainant maintains at paragraph 13 that the Respondent, by using the Domain Name, has attempted to attract Internet users, searching for the Complainant's web site, to the Respondent's web site for commercial gain.
At paragraph 14 the Complainant alleges that evidence of bad faith is provided by the inclusion of the keywords "Film Council" in the meta tags for the Respondent's corporate website.
At paragraph 15 the Complainant alleges that further evidence of bad faith is provided by the inclusion of the keyword "Arts Council" in the meta tags for the Respondent's corporate website, the Arts Council being a national funding body for the arts in England set up in 1994.
At paragraph 16 the Complainant alleges that by attracting users in this manner to his web site, potential commercial gain to the Respondent is generated given that the increase in hits on the web site would enable the Respondent to obtain higher advertising revenues.
At paragraph 17 the Complainant continues by maintaining that the description of the web site "www.filmcouncil.com" prior to notice of the Complaint was clearly intended to attract Internet users who were in fact intending to seek assistance from the Complainant.
In the Supplemental Complaint the Complainant alleges that the Respondent tried to obtain £35,290.00 in return for the transfer of the Domain Name. Additionally, the Complainant contends that this was an attempt on behalf of the Respondent to "dress-up" what was in fact an attempt to extort money from the Complainant by arguing that the sum represented wasted costs. Furthermore, the Complainant maintains that no evidence was provided to support this sum. Finally, the Complainant alleges that the Respondent's reference to the considerable value of the Domain name on the open market is a threat to sell the Domain Name to another party.
5.2 The Respondent
At paragraph 3 of the section of the Response dealing with copy or similarity the Respondent maintains that one of the aims in turning the web-site into a portal was to provide free services to the arts and media world and states at paragraph 4 that this was the reason both the Domain Name and the domain name "artscouncil.co.uk" were registered. The Respondent continues by maintaining that the word "film" was chosen as it "... describes the business film script writers and film developers are in...". Additionally, the Respondent chose council as it was felt this appropriate to describe the forum within which artists display their work, and "... also because the word reminded him of a pop group called "the Style Council"".
At paragraph 8 the Respondent maintains that the fact that there have been press releases concerning the Complainant does not mean there is public awareness and states furthermore that he did not become aware of the Complainant until March 22nd, 2000 when the Complainant first wrote to the Respondent.
At paragraph 9 the Respondent continues by maintaining that the exhibits provided by the Complainant with the Complaint do not establish that the Complainant has a right in the mark FILM COUNCIL. This the Respondent bases partly on the assertion that "... Press releases stating an intention to create a body do not establish goodwill in its name...".
At paragraph 1 of the section of the Response dealing with illegitimacy the Respondent asserts that he does have a legitimate right or interest in that he was intending to use it for legitimate non-commercial purposes.
At paragraph 4 the Respondent maintains that it should not be penalized because the Complainant chose a descriptive name for the provision of its services said description being the same as that of the Respondent.
At paragraph 5 the Respondent maintains that it is disingenuous of the Complainant to assert that the FILM COUNCIL could denote only an organisation, and states that the words can just as well denote a forum of scriptwriters to display their work.
At paragraph 8 the Respondent maintains that the Parties operate in different fields of activity (which is somewhat in contradiction to the Respondent's assertion at paragraph 4 that they provide the same services). The Respondent continues at paragraph 9 that it has therefore been making a legitimate non-commercial and fair-use of the Domain Name nor that it has intended to divert nor has it diverted customers of the Complainant for commercial gain.
At paragraph 10 the Respondent maintains that the meta tags "Arts Council" and "Film Council" were placed on the Respondent's corporate web site by mistake.
At paragraph 2 of the section of the Response dealing with bad faith the Respondent denies that it registered the Domain Name in bad faith.
At paragraph 4 the Respondent continues by maintaining that the services offered on the Complainant's and the Respondent's web sites are "completely different". in this regard, the Respondent says that the use of the ".com" Top Level Domain (TLD) refers to a commercial site whereby the Complainant is a public body, and therefore it is unlikely that users seeking the Complainant would type in a ".com" TLD.
At paragraph 8 the Respondent maintains that it has engendered no confusion between the Complainant and its site, but if it has, then this confusion has arisen purely due to the descriptive nature of the Domain Name.
In the Supplemental Response the Respondent's representative states that the offer made by the Respondent to transfer the Domain Name to the Complainant does not amount to an offer to sell and that the Respondent is entitled to recoup "... its wasted costs in relation to the transfer of the domain name and reasonable costs to compensate it for the cost of rebranding and redesigning its web-site." The Respondent's representative continues by claiming that the sum requested represents an initial estimate based on business experience and therefore the lack of evidence to show that the sums were expended is a disingenuous argument.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
i) that the Domain Names is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Names; and
iii) that the Domain Names was registered and used in bad faith.
These three elements are considered below.
6.1 Identical or Confusingly Similar
As stated above, the Complainant does not rely on a registered trademark but rather alleges that FILM COUNCIL is a common law mark. Common law rights have been found sufficient for the purposes of the Complaint in a number of cases (see e.g. Vincent Lecavalier v. Jean Lecavalier, AF-0282a, AF-0282b, AF-0285, Anne McClellan v. Smartcanuk.com, AF-0303a and AF-0303b and Estate of Tupac Shakur v. Shakur Info Page, AF-0346)
Common law courts have a long tradition of protecting unregistered trade or service marks through an action in passing-off. The protection at common law is determined on a case by case basis and depends greatly on the factual basis of each individual case. At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc.. One key principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered.
The Panel is of the opinion that, notwithstanding the relatively short span in time which passed between the incorporation of the Complainant and the registration of the Domain name by the Respondent, the prior incorporation of the Complainant under the name FILM COUNCIL combined with the broad press coverage in the United Kingdom, both prior to the incorporation and following incorporation during advertising for the position of chief executive and subsequently following his appointment, are sufficient to vest a right in the mark FILM COUNCIL in the Complainant. Furthermore, the fact that the sectors in which the Parties' businesses are engaged is the same, only supports the appropriateness of this finding.
As a result, the Panel is of the opinion that the Domain Name is confusingly similar with marks in which the Complainant has rights. The Panel is therefore of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
6.2 Rights or Legitimate Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
The Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under all three heads of paragraph 4(c). The Panel finds that, apart from a limited number of partially completed and essentially naked web pages, the Respondent has produced no evidence of any kind, save his own assertions, to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent also failed to show that he is commonly known by the Domain Name.
The Respondent has relied heavily on his contention that he was making a legitimate non-commercial or fair use of the Domain Name and that this was without intent for commercial gain to misleadingly divert consumers. The Panel on the balance is unable to reach the same conclusion. In light of:
- the registration of the Domain Name at the time in question (shortly after the incorporation and subsequent media interest in the Complainant and the Complainants chief executive);
- the coincident registration of the domain name "artscouncil.co.uk"; and
- the inclusion of "Film Council" and "Arts Council" (in capitals, no less) in the meta tags for the Respondent's corporate website;
the Respondent's grounds for registering the Domain Name do not, in the Panel's opinion, provide a credible basis for a finding that it was not the Respondent's intention to divert traffic to the Respondent's web site.
Even if it was the Respondent's intention to set up a bona fide web site as a forum for film script writers and film developers (which in the Panel's opinion is not reflected in the evidence provided) the Panel is of the opinion that the Respondent would have used the web site in some manner to further financial gain, for example through the sale of portions of the web-site for advertising purposes. In fact, nowhere in the Response does the Respondent state that the web site will not be supported through advertising revenues but rather says, as reviewed above, that the objective of the website is to offer free services to the arts and media world. Based on this it appears that the Respondent has come to the erroneous conclusion that this entitles him to claim a non-commercial use for the web site. The Panel disagrees. The provision of "free" services alone does not qualify the Respondent, in the Panel's opinion, to claim a non-commercial use. Therefore, the Panel is of the opinion that the Domain Name was to be used for non-commercial purposes cannot be sustained.
Additionally, the Panel finds that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; and the Complainant has prior rights in that trademark which precede Respondent's registration of the Domain Name.
6.3 Bad Faith
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) of the ICANN Policy holds that, if the circumstances indicate that the Domain Name was registered primarily for the purpose of selling the Domain Name to the Complainant, that the Complainant is the owner of the trademark and that the consideration sought by the Respondent is in excess of documented out-of-pocket costs directly related to the Domain Name, then this is evidence of bad faith registration and use on behalf of the Respondent.
The Respondent through his representatives offered to transfer the Domain Name to the Complainant for the sum of £35,920.00. The Panel directs the Parties attention to the wording of paragraph 4(b)(i) of the ICANN Policy which states clearly that the consideration sought must be directly related to the Domain Name AND that this consideration must be documented. On one hand, the Respondent has provided no documentary evidence for the sum in question but rather maintains that it is "an initial estimate based on business experience". On the other hand, the Panel is of the opinion that, even if bona fide, the costs in question (Company formation, computer hardware and development software and development time for graphic design) are not those directly related to the Domain Name. Therefore the Panel is of the opinion that Respondent's offer in this regard amounts to an attempt to sell, rent or otherwise transfer the Domain Name to the Complainant for a significant amount of money, much in excess of sums directly related to the Domain Name.
The Panel is also of the opinion that there is sufficient evidence of bad faith pursuant to paragraph 4(b)(iv) of the ICANN Policy, i.e. that by using the Domain Name the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location. The Panel is of the opinion that under the circumstances the Respondent was aware of the Complainant and the Complainant's intended business and therefore on the balance is of the opinion that the only conclusion that can be arrived at, if the Respondent was in fact intending to operate a web site offering services arts and media world, is that the Respondent was intending to create a likelihood of confusion with the Complainant. Furthermore, since the Complainant is a creation of the UK Government it cannot be excluded that the Respondent's use of the Domain Names may be likely to lead to the belief that the services in association with which is used have received, or produced, sold or performed under, royal or governmental patronage, approval or authority.
Finally, the Panel is also of the opinion that under the circumstances, and given the similarity of the businesses within which the Parties are active, that both Parties are located in the same country and the broad coverage of the Complainant's activities at or around the time of registration, that the Respondent could not have been unaware of the Complainant, the Complainant's incorporation and subsequent intentions at the time of registering the Domain Name. In the Panel's opinion the evidence shows bad faith on behalf of the Respondent.
For the foregoing reasons, the Panel concludes that:
1. the Domain Name registered by the Respondent is confusingly similar to the trade mark to which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name "filmcouncil.com" be transferred to the Complainant and so directs the Registrar to do so forthwith.
Date: November 27th, 2000
(s) Hugues Richard