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#Farrer .com : Complainant in #domain UDRP cites 1769 as the year of mark’s first use

Transfer: Denied

A British law firm claimed rights to the FARRER & CO mark going back to the year of our Lord, 1769, and attempted to wrestle the domain Farrer.com from its British registrant by filing a UDRP.

The domain Farrer.com was acquired in 2013, apparently on NameJet where it was sold for $3,100 dollars.

Its original registration date of 1997 was referenced in the UDRP – the decision was based on the fact that the Respondent operates a legitimate business on that domain. The Complainant operates from the matching .co.uk.

A three member panel ordered the domain to remain with the Respondent, but delivered no finding of Reverse Domain Name Hijacking.

Full details on this decision follow:

Farrer & Co LLP v. FARRER DOT COM LIMITED
Case No. D2019-1010

1. The Parties

The Complainant is Farrer & Co LLP, United Kingdom (“UK”), internally represented.

The Respondent is FARRER DOT COM LIMITED, UK, internally represented.

2. The Domain Name and Registrar

The disputed domain name <farrer.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on May 10, 2019, to address a discrepancy in the Mutual Jurisdiction section of the Complaint.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. Upon the Respondent’s request, an automatic extension of the Response due date was granted until June 6, 2019, under paragraph 5(b) of the Rules. The Response was filed with the Center on June 6, 2019.

On June 13, 2019, the Complainant submitted an unsolicited Supplemental Filing, and on June 14, 2019, the Respondent submitted an unsolicited Supplemental Filing. These Supplemental Filings were forwarded to the Panel with the case file.

The Center appointed Dr. Clive N.A. Trotman, Dr. Luca Barbero, and The Hon Neil Brown Q.C. as panelists in this matter on June 26, 2019. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a major law firm that can trace its origins back to 1769 and the use of the style “Farrer and Co” to 1855. The Complainant has some hundreds of support staff, legal staff and partners, and had a turnover in 2017-2018 of GBP 64 million. It is also known for its sponsorships and social media activities.

The Complainant holds the trademarks FARRER AND CO and FARRER & CO, filed at the UK Intellectual Property Office on July 8, 1992, registered on June 24, 1994, registration number 1509565, stated to be in classes 35, 36, and 42.

The Complainant owns and uses the domain name <farrer.co.uk>. The corresponding website has been receiving over 900,000 page views annually and the corresponding email address has been receiving over 19,000 emails per weekday.

The Respondent is a company registered under information technology consultancy activities and management consultancy activities other than financial management. The Respondent was established on April 22, 2013, either before or after but contemporaneously with its purchase of the disputed domain name, which was first registered on September 10, 1997, by another and had changed hands since. Avtar Taggar, who is the Respondent’s Company Secretary and one of its two Directors, has worked in information technology for more than 25 years and has a Master of Science (MSc) degree in eBusiness Management. The Respondent has informed the Panel of a small number of commissions in which it has been involved. The disputed domain name resolves to a standard Google G-Suite landing page at which persons authorised by the Respondent may log in with their email address and password.

5. Parties’ Contentions
A. Complainant

The Complainant’s extensive contentions may be summarised as follows. The Complainant contends that the disputed domain name <farrer.com> is confusingly similar to its registered trademarks FARRER AND CO and FARRER & CO. The Complainant is commonly known as “Farrer”, and uses its domain name <farrer.co.uk> for email. Actual confusion is occurring because correspondents sometimes address emails intended for the Complainant, and which may be confidential, to the corresponding “@farrer.com” address by mistake. The Respondent’s email address is evidently set up to “catch all” incoming mail and has received some hundreds of misdirected emails (which it has forwarded to the Complainant).

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In pre-emption of the Respondent’s options of proving such rights or legitimate interests under paragraph 4(c) of the Policy, the Complainant says it has found no evidence that the Respondent has used the disputed domain name or a similar name in connection with a bona fide supply of goods or services, as it is used solely as a Gmail landing page; or that the Respondent is commonly known by the disputed domain name; or that it has been used in a legitimate noncommercial or fair manner.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name was first registered in 1997. This was five years after the Complainant registered its trademark and over 200 years after the name was first used by the Complainant in connection with legal services. The Respondent must have known about the Complainant and its trademark, which appear prominently in an Internet search for “Farrer”.

The Complainant says there is bad faith as the Respondent has registered the disputed domain name primarily to disrupt the business of a competitor. The administrative contact on record for the disputed domain name is also the registrant of companies and their equivalent domain names coincident with well‑known entities, namely Al-Saud Dot Com Limited, AVFC.Com Limited, and EIIB.Com Limited, which the Complainant says are references to the Saudi Royal Family, Aston Villa Football Club, and European Islamic Investment Bank, respectively. The Complainant says this demonstrates a pattern of conduct. Furthermore the same person at one time owned Castigliano.Com Limited and the corresponding domain name, before selling it to the prominent wedding designer business Castigliano Limited.

The Complainant says the Respondent’s registration of Farrer Dot Com Limited and the disputed domain name are part of the same pattern of conduct.

The Complainant requests the transfer of the disputed domain name.
B. Respondent

The Respondent denies the Complaint and makes extensive contentions that may be summarised as follows.

The Respondent denies the disputed domain name is entirely identical to either the Complainant’s formal name or to the name “Farrers” (with an “s”) by which it is commonly known. “Farrer” is a common surname and the Respondent lists 69 registered companies incorporating the name “Farrer”.

The Respondent says it has rights and legitimate interests in the disputed domain name, which was first registered about 22 years ago. From 1997 to 2007 it was used by the company Farrer Associates, a sound, lighting and video company, of Atlanta, United States of America (“USA”). A Wayback Machine (“www.archive.org”) capture of July 13, 2004, shows its website at that time. From 2008 to 2013 it was used by a private USA individual as an email address. The disputed domain name was not acquired by the Respondent until April 2013, 6 years ago. At present it is used by the Respondent for a modest amount of IT business and is equipped with a paid subscription to the facilities of Google G-Suite. Annexed are receipts in connection with some of the Respondent’s assignments, and references to the online presences created for clients.

The Respondent denies that the disputed domain name was registered or is used in bad faith. The corresponding email address is set to receive all emails addressed to “@farrer.com”, irrespective of the individual addressee. This is a commonly available option and is activated by this Respondent because the name Avtar is commonly spelt wrongly, as are the names of other legitimate users of “@farrer.com” email addresses. An unintended consequence is for the Respondent to receive emails intended for other entities that the respective sender has addressed to “@farrer.com” in mistake for some other similar email address, the receipt of which the Respondent has routinely reported back to the sender. Annexed or listed examples include emails intended for nine different addressees in Australia, Brazil, Canada, Singapore, USA, and for the Complainant. Wayward emails intended for the Complainant have been forwarded since April 2013 (until July 2018, when blocked by the Complainant), and in October 2017 the Complainant was requested to ask correspondents to use the correct email addresses. There has been no offer to sell the disputed domain name to the Complainant or to anyone else. The Respondent says it is not responsible for the typographical mistakes made by others.

Avtar Taggar’s field, and the title of his MSc dissertation (University of Warwick, 2008), is “Essential IT for New Small Businesses (Start-ups)”. The Respondent refers to certain domain names that the Complainant says were registered by Avtar Taggar. The Respondent denies that the registration of the domain name <eiib.com> on May 11, 2004, could have pertained to the European Islamic Investment Bank, which was incorporated on January 11, 2005. The Respondent denies that the domain name <avfc.com> had anything to do with Aston Villa Football Club, and has produced copies of electioneering material for UK parliamentary elections in 2015 and 2017, promoting Avtar Taggar as a candidate under the slogan “A Vote For Change”. In respect of the domain name <al-saud.com> the Respondent says it was created for its credibility for business use in the Middle East, and that the name “Saud” (“Al” meaning “the” or “of the”) is a common first name or surname, irrespective of being that of the Royal Family of Saudi Arabia. The Respondent says the domain name <castigliano.com> was freely available and was sold amicably to Castigliano Limited, which had inadvertently allowed it to lapse. Enquiries about the possible purchase of <avfc.com> and <al-saud.com>, and from the Complainant in respect of the disputed domain name, received the reply that they were not for sale.

The Respondent says the Complainant should be barred under the doctrine of laches.

The Respondent requests a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant.
6. Discussion and Findings
A. Procedural Matters

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. As the distinguished panelist stated in the decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: “A Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” The Panel did not find the Supplemental Filings of either the Complainant or the Respondent to be of further assistance and they are not admitted.
B. Identical or Confusingly Similar

The Panel is satisfied by the evidence that the Complainant holds the registered trademarks FARRER AND CO and FARRER & CO. The disputed domain name <farrer.com>, of which the significant component is “Farrer” and of which the generic Top-Level Domain (“gTLD”) “.com” may be disregarded, is found to be confusingly similar to the Complainant’s trademarks within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests

The Complainant has made a prima facie assertion to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complaint is dated May 2, 2019. The date of a complaint may be later than what is meant by the date of notice of the dispute, although in this instance there is no evidence that the correspondence between the Complainant and the Respondent around October 2017 over wayward emails signalled any complaint by the Complainant within the meaning of the Policy. The Respondent began using or trading under the name “Farrer Dot Com Limited” through the disputed domain name some five years before the formal Complaint. Invoices have been produced for work done for a UK executive consultancy business dated February 24, 2014, and for a Hong Kong restaurant business dated September 30, 2015, together with copies of the website pages and applications produced for those clients. Financially redacted invoices for the Respondent’s outgoings show subscriptions for Google G-Suite facilities in respect of the disputed domain name in 2015 and 2019. The Respondent’s business is presently occasional, apparently for personal reasons supported with documentary evidence, but the Panel does not find the business to be unreal. Furthermore, Companies House returns have been made by the Respondent, albeit with dormant accounts in the interim for reasons ascribed to the low level of activity of the Respondent’s business.

Thus, the Panel finds the Respondent, before notice of the dispute, to have been credibly conducting IT business as the company of a qualified postgraduate in the field, in the terms of paragraph 4(c)(i) of the Policy. Provided no finding of bad faith negates the bona fide nature of that business, the Respondent will have established rights or legitimate interests in the disputed domain name.

The provisions of paragraph 4(c) of the Policy are without limitation and in this case a broader view may be taken of the question of rights or legitimate interests. Three other entities, namely Farrer Associates of Atlanta, a USA individual, and since 2013 the Respondent, have taken the opportunity to acquire the disputed domain name. The Complainant is a major and presumably resourceful law firm. Facilities exist to watch for, backorder and bid for desired domain names in anticipation of expiry and the Panel cannot answer for why the Complainant never acquired the disputed domain name. The Respondent as a company can choose a name that, among other constraints, is not intended to deceive. As the evidence shows, many companies incorporate the name “Farrer”, and the Respondent was free to do so provided this was not done with bad faith intent.
D. Registered and Used in Bad Faith

In order to succeed under this heading, the Complainant needs to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are, however, without limitation. The Complaint was not brought until May 2019. On the evidence and submissions, the disputed domain name was available and first registered by another more than 21 years earlier in September 1997 (and 2 years before the Policy was promulgated in late 1999). The disputed domain name may have become generally available for purchase in 2008 when it changed hands from Farrer Associates of Atlanta to an individual, and evidently did become available when the Respondent acquired it in 2013. The Complainant does not say that it attempted to acquire the disputed domain name, by either purchase or complaint, at any time.

In order to prove registration and use in bad faith, the Complainant would need to make a showing under paragraph 4(b) of the Policy or otherwise. “Farrer” is not an uncommon name and the Respondent has produced a list of 69 companies from the UK Companies House alone incorporating the name (which may include businesses of the Complainant). It would therefore be difficult for the Complainant, despite its antiquity, prominence and stature, to show that it was specifically targeted.

The Respondent declined to sell the disputed domain name to an enquirer in March 2017, and has not tried to sell it to the Complainant. Nothing in the evidence indicates a primary intention to sell it under paragraph 4(b)(i) of the Policy.

In the terms of paragraph 4(b)(ii) of the Policy, the evidence shows the guiding mind behind the Respondent to have registered or acquired five domain names that may fit the pattern of corresponding to the trademarks of others. The Respondent has offered an explanation in respect of each. The domain name <castigliano.com> was freely available after lapsing, and its transfer to Castigliano Limited by the Respondent was described as amicable. A well-documented explanation for the domain name <avfc.com> has been provided. The domain name <eiib.com> was registered eight months before the European Islamic Investment Bank was incorporated and there is no evidence the Respondent could have anticipated this. Almost any group of four letters is likely to be coincidentally the acronym of one or more entities somewhere in the world. The name Saud is common and there has been no complaint in respect of the domain name <al-saud.com>. The Panel does not find it more probable than not that the Respondent intended to block the Complainant from registering the disputed domain name as part of a pattern.

Far from disrupting the Complainant’s business in terms of paragraph 4(b)(iii) of the Policy, it would appear that the Respondent’s business, through no fault of its own, has been troubled by the receipt of “hundreds” of emails intended for other recipients, which it has taken the trouble to attempt to notify or redirect to their respective senders.

The Panel cannot find through the above criteria or otherwise that the disputed domain name was registered in bad faith.

In the terms of paragraph 4(b)(iv) of the Policy, which deals with usage, there is no evidence that the disputed domain name, the website of which requires login credentials, has been set up to create confusion with the Complainant, which does business in a different sphere. The propensity for people to address emails wrongly or by guesswork does not equate, in this case, with an attempt by the Respondent to attract Internet users for commercial gain.

On the totality of the evidence and on the balance of probabilities, the Panel does not find either registration or use in bad faith, both of which must be proven, of the disputed domain name by the Respondent in the terms of paragraph 4(a)(iii) of the Policy. Collaterally, on the balance of probabilities, the finding that the Respondent has rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy is confirmed.

It has not been necessary to discuss the doctrine of laches, invoked by the Respondent, which is not recognised under the Policy 1 . In any case there is no evidence the Complaint was delayed in order to increase the discomfiture of the Respondent. Nevertheless, a delay of 19 years (since the inception of the Policy) cannot be helpful to any complainant’s case.

The onus of proving RDNH rests with the Respondent and requires more than a clear failure of the Complaint. Notwithstanding the weakness of the Complaint, the Panel does not find that the Respondent has tipped the balance sufficiently in its favour to establish that the Complaint was brought in a bad faith attempt to deprive the Respondent of the disputed domain name, or to harass the Respondent, or otherwise for a finding of RDNH to be made.
7. Decision

For the foregoing reasons, the Complaint is denied.

Dr. Clive N.A. Trotman
Presiding Panelist

Dr. Luca Barbero
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: July 4, 2019

1 Panelist Brown wishes to state that although there are decisions of UDRP panels to that effect, there are also a series of decisions, some of them unanimous decisions of three person panels, which have decided that laches may be considered and that the application of that principle may well influence the result of the proceeding. Indeed, delay on the part of a complainant in enforcing its rights, whether it be described as laches or in some other way, may give rise to a right or legitimate interest or negate what otherwise might be a finding of bad faith. In the present case, the Panel has been able to decide the case by reference to substantive issues and does not need to make reference to laches or delay.


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