1. Parties and Contested Domain Name
The Complainant is the British Heart Foundation, a charity registered in the United Kingdom, with its headquarters in London, England. The Respondent is Harold A. Meyer III, an individual resident in New Milford, Connecticut, the United States of America.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on July 26, 2001. The hardcopy of the Complaint Form and annexes were received on July 26, 2001. Payment was received on August 15, 2001.
Upon receiving all the required information, eResolution's clerk 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 of eResolution to the following conclusions: the Registrar is bulkregister.com, 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.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on August 22, 2001. The requested information was received August 23, 2001.
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's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on August 23, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the email@example.com were returned 'undeliverable'. No fax number was provided.
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 respondent required an extension of delay that has been granted.
On September 19, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on September 19, 2001.
On September 19, 2001, the Clerk's Office contacted Mr. Bernardo Tobar, and requested that he acts as panelist in this case.
On September 20, 2001, Mr. Bernardo Tobar, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On September 21, 2001, the Clerk's Office forwarded a user name and a password to Mr. Bernardo Tobar, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 21, 2001, the parties were notified that Mr. Bernardo Tobar had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 05, 2001.
On October 22, 2001, Mr. Bernardo Tobar indicated that he would no longer be able to decide this case because of unforeseen circumstances.
On October 23, 2001, the Clerk's Office contacted Dr. Andrew Christie, and requested that he acts as panelist in this case.
On October 26, 2001, Dr. Andrew Christie accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 30, 2001, the Clerk's Office forwarded a user name and a password to Dr. Andrew Christie, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 30, 2001, the parties were notified that Dr. Andrew Christie had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 13, 2001.
3. Factual Background
The Complainant is a registered charitable organization, established in the United Kingdom in 1961. The Complainant's objective is to play a leading role in the fight against heart disease so that it is no longer a major cause of disability and premature death. To this end, the Complainant undertakes the following activities:
* Funding research into the causes, prevention, diagnosis and treatment of heart disease.
* Providing support and information to heart patients and their families through the British Heart Foundation nurses, rehabilitation programmes and support groups.
* Educating the public and health professionals about heart disease, its prevention and treatment.
* Promoting training in emergency life support skills for the public and health professionals.
* Providing vital life-saving equipment to hospitals and other health providers.
The Complainant has registered the following domain names:
The Complainant operates an active website accessible under a number of these domain names.
The Respondent registered the domain name <bhf.org> on February 6, 2000. On December 28, 2000, the Respondent sent an email to the Complainant, stating as follows:
"We are the registrants of the following prime generic acronym domain which is now for sale. =[BHF.org]= Obviously, it offers tremendous marketing, identity, and convenience. Please let us know your interest."
Further emails and letters, by and on behalf of the Respondent, were sent to the Complainant on January 16, 2001, May 3, 2001, and May 8, 2001. In the latter communication, the domain name was offered for sale to the Complainant for amount of £20,000. Copies of these communications were Annex A to the Complaint.
At some time in January 2001, after the Complainant declined to make a purchase offer, the Respondent used the domain name as a URL which directed to the website of the British American Tobacco corporation. In May 2001, the Respondent used the domain as a URL which directed to a website that acted as a portal to various pornography sites. Copies of printouts of webpages for these sites were Annexes B and C to the Complaint. These facts were admitted by the Respondent in the Response.
4. Parties' Contentions
The Complainant contends, either expressly or by implication, that each of the three elements specified in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Respolution Policy ("Uniform Policy") are proven in relation to the domain name that is the subject of this dispute, as follows.
In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant states that "we are known nationally and internationally by our initials BHF and have registered the [previously stated] internet website domain names", and that "the initials, BHF, are recoghised (sic) throughout Britain and Europe as the abbreviated name of the British Heart Foundation". The implication is that the Complainant has an unregistered trademark being the letters BHF, and that the domain name <bhf.org> is identical to this unregistered trademark.
In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint states that the Respondent has "demonstrated no intention to use the site for any activity that could justify use of the letters BHF".
In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant states that it has "received a number of complaints from users who have clicked onto [the Respondent's] site, believing it to be ours, and been outraged, thinking that the BHF is responsible for the content". The implication is that the Complainant contends that the Respondent is using the domain name to attract, for commercial gain, Internet users to a website, by creating confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website, of the type identified in Paragraph 4(b)(iv) of the Uniform Policy. The Complainant also states that "the only conclusion that can be drawn from [the Resondent's] actions is that he is trying to extort money from the BHF", and so by implication contends that the Respondent has engaged in conduct of the type identified in Paragraph 4(b)(i) of the Uniform Policy.
The Respondent contends that the Complainant has failed to prove any of the three elements specified in paragraph 4(a) of the Uniform Policy in relation to the domain name <bhf.org>, as follows.
In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Respondent contends that the Complainant does not have any trademark rights in the letters BHF. The Complainant does not have a trademark registration for these letters. Also, the Complainant has not led any evidence to demonstrate widespread use of the letters BHF, such as to prove that it is a distinctive mark associated in the minds of the public with the Complainant.
In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Respondent contends that the group of letters BHF is "a generic acronym that stands for a multitude of entities that have nothing whatsover to do with Complainant". The Respondent proceeds to identify 13 such entities, and provides URLs for each of them. (It is noted by this Administrative Panel that none of the URLs for these entities in fact resolves to a website at which the letters BHF used - in nine instances, the URL does not resolve to any web page, and in the remaining four instances the URL resolves to a web page at which different letters, namely BFH, are used.) The Respondent argues that it has a legitimate interest in the domain name on the ground that "where a domain name is generic, the first person to register it in good faith is entitled to the domain name". (It is noted by the Panel that the Respondent appears to be confusing the concept of descriptiveness with the concept of genericism - whilst the group of letters BHF might be "descriptive" of various entities, it can't be said that it is "generic" in the sense that it denotes a whole group or class of entities.) Finally, the Respondent contends that it "was always his intention to develop the domain as an entertainment website", although no evidence to support this asserted intention was provided.
In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Respondent contends that he registered the domain name in good faith "because it was short, easy to remember, and generic". In relation to the redirections to the British American Tobacco corporoation site and to the pornography portal, the Respondent states that this "temporary ill-considered reaction to Complainant's perceived rudenes in correspondence cannot be said to be such bad faith as to negate all of the necessary grounds that Complainant must prove to obtain the transfer of the domain name".
5. Discussion and Findings
Domain Name is Identical or Confusingly Similar to Complainant's Mark
The Complainant does not assert that it has a trademark registration for the mark BHF. The Complaint must, however, be read as implying that the mark BHF is an unregistered (ie. common law) trademark owned by the Complainant. In support of this, the Complainant makes the bald assertions that "we are known nationally and internationally by our initials BHF and have registered the [previously stated] internet website domain names", and that "the initials, BHF, are recoghised (sic) throughout Britain and Europe as the abbreviated name of the British Heart Foundation".
This Administrative Panel recognises that the Uniform Policy is not limited in application to a registered trademark - an unregistered, or common law, trademark is sufficient for the purposes of Paragraph 4(a)(i). To succeed in a complaint under the Uniform Policy in relation to an unregistered mark, however, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that it provides goods or services under the unregistered mark, and that it has a reputation in the provision of those goods or services under that mark such that members of the public would associate those goods or services with the Complainant and not with others not authorised by the Complainant to use that mark. That is to say, the Complainant must prove that it has a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent.
No such evidence has been provided by the Complainant in this case. The most the Complainant has done, beyond making the assertion that it is nationally and internationally known by the initials BHF, is refer to the 14 domain name registrations detailed in section 3 above, some of which include the letters BHF. These are, however, simply irrelevant to the issue of whether the Complainant has a trademark or service mark to which the domain name <bhf.org> is identical or confusingly similar. The registration of a mark (eg. the letters BHF) as a domain name does not, by itself, confer any trademark rights in relation to that mark. Trademark rights in a mark can only arise by virtue of a trademark registration, or by virtue of use of the mark in relation to the supply of goods or services such as to generate a reputation of the type described in the preceding paragraph. A domain name registration, by itself, does not and cannot generate this sort of reputation. (Were it otherwise, it would never be possible to make a finding in favour of a Complainant under the Uniform Policy, because every registration of a domain name would, by itself, give rise to a right or interest in the domain name of the type described in Paragraph 4(a)(ii) of the Uniform Policy.)
Given the complete absence of any evidence proving that the Complainant has a reputation in the mark BHF of the type described above, it is not possible for this Administrative Panel to conclude that BHF is an unregistered trademark owned by the Complainant. Thus, this Administrative Panel finds that the Complainant has failed to prove the first requirement for a remedy under the Uniform Policy. Accordingly, this Complaint fails.
Respondent's Rights or Legitimate Interests, and Respondent's Bad Faith
Given the conclusion above, it is not necessary for the Panel to determine whether the Respondent has a right or legitimate interest in the domain name, as required by paragraph 4(a)(ii) of the Uniform Policy. It is also not necessary for the Panel to determine whether the Respondent registered and is using the domain name in bad faith, as required by Paragraph 4(a)(iii). Accordingly, the Panel makes no finding on those matters.
This Administrative Panel decides that the Complainant, the British Heart Foundation, has not proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint. Accordingly, the Panel
denies the Complaint's request to have the domain name <bhf.org> transferred to it.
(s) Andrew F. Christie
Durham, North Carolina, USA
November 13, 2001