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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mercer Human Resource Consulting Inc v IMO International Ltd [2006] DRS 3733 (28 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3733.html Cite as: [2006] DRS 3733

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Nominet UK Dispute Resolution Service DRS 03733 Mercer Human Resource Consulting Inc. and IMO International Ltd. Decision of Appeal Panel Dated: 28 November 2006

1. Parties:

Complainant: Mercer Human Resource Consulting Incorporated.

Country US

Respondent and

Appellant: IMO International Limited

Country: UK

2. Domain Name in dispute:

mercer.co.uk ("the Domain Name")

3. Procedural Background:

02/06/2006 Dispute entered into system

13/06/2006 Hardcopies received in full

13/06/2006 Complaint documents generated and sent to Respondent

28/06/2006 Non-Standard electronic response received by e-mail

29/06/2006 Response hardcopies received

29/06/2006 Response forwarded to Complainant

06/07/2006 Signed hard copy Response received

11/07/2006 Reply due date amended by 1 working days because Electronic version received within deadline, awaiting signed copy

11/07/2006 Reply entered into system awaiting signed hard copies

12/07/2006 Reply hard copy received and Mediation initiated

01/08/2006 End of Mediation documents generated

14/08/2006 Fees for Expert Decision received from Complainant

15/08/2006 Mr David King selected as expert

29/08/2006 Expert Decision documents received and circulated

06/09/2006 Notice of intent to appeal received from Respondent

11/09/2006 Complainant informed of intent to appeal

03/10/2006 Full Appeal Notice received

05/10/2006 Appeal Notice sent to Complainant

10/10/2006 Appeal Notice response received and copied to Respondent

19/10/2006 Mr Tony Willoughby selected as chair of Panel, Mr Iain M Tolmie selected and Mr Andrew Lothian selected as experts

19/10/2006 Mr Lothian – having checked the papers – has to recuse himself

20/10/2006 Mr Adam Taylor selected as replacement expert

3.1. Each of Messrs. Tony Willoughby, Adam Taylor and Iain M. Tolmie (the undersigned, "the Panel") have individually confirmed to the Nominet Dispute Resolution Service that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

3.2. The Panel for this Appeal was appointed as from 24^th October 2006 to respond on or before 5^th December 2006. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available for inspection on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).

4. The Nature of This Appeal:

4.1. The Panel has considered the nature of this appeal process and the manner in which it should be conducted. The Policy §10a provides that: "the appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters".

4.2. The Panel concludes that, insofar as an appeal involves matters other than purely procedural complaints, the appeal should proceed as a re-determination on the merits. Accordingly, the Panel does not propose to undertake a detailed analysis of the decision at first instance and will only refer to it where the Panel feels it would be helpful to explain any difference in approach.

5. Formal and Procedural Issues:

5.1. The Respondent is the Appellant in this appeal and the Complainant is the Respondent. However, for simplicity's sake, the parties will be referred to in this decision by their original designations of Complainant and Respondent.

5.2. In its Appeal Notice the Respondent makes the following plea:

"This decision was not lost because this was an abusive registration, or because the complainant has exclusive or greater rights to this domain, but by mere fact the complainants case was more expertly and aggressively conducted than mine and was apparently largely accepted without question at face value by the expert who I feel has made a number of reasoning errors. I admit inadequacies in my response due to inexperience of these matters and lack of resources, in particular that of failing to provide evidence to support my position. Given this was decisive in this case the result of which represents an incorrect and unfair decision it is in the interest of justice that this evidence now be considered. I have annexed it to this document and would kindly like to ask that this be given your consideration given these circumstances."

5.3. The Panel considers the directions to the Parties in the Procedure both generally and in §18c (as regards the appeal) to be quite clear. The Panel has discretion to admit additional evidence under §18h of the Procedure if it "believes that it is in the interests of justice to do so". However the Panel is not minded to do so in this instance because:

5.3.1. The Respondent is in no different a situation to any other respondent. It can be said that a respondent is always at a disadvantage, since a complainant has as much time as he likes to create his complaint documentation, and there is always only a limited time for a respondent to make his response; however that is the nature of these and similar proceedings. This is not exceptional.

5.3.2. The Panel does not accept that discounting any "new evidence" in accordance with §18h of the Procedure would be contrary to "the interests of justice", whether natural or otherwise. Many appeal systems restrict the extent to which new evidence can be considered under appeal. This is not exceptional either.

5.3.3. The matter has already been addressed in the appeal decision in Bravissimo v Gander, DRS 01295. In that case the panel stated: "Should the principles developed by the judges in a line of legal authority dealing with the criteria to be applied when considering whether or not to admit fresh evidence in a case after there has been a judgment on the merits be applied to complaints under the administrative DRS Policy and Procedure?" It concluded that in general terms it should follow those principles. In doing so it stated:

" … the purpose behind adopting principles on the admission of further evidence is to protect the integrity of the DRS. They would do this by encouraging parties to use the DRS sensibly and efficiently. If there were no limits, there would be little incentive (apart from moderate costs to [parties]) for parties to get it right first time. It should not be forgotten that if these principles are to apply, they would apply not just to complaints in the context of re-filed complaints; they apply equally to the filing of further evidence prior to an appeal" [our emphasis].

5.3.4. We agree with that view, and, in our judgment, for the Respondent to be permitted to adduce further evidence in this appeal he must show exceptional circumstances. No such exceptional circumstances have been shown to exist in this case.

5.4. The Complainant (in its response to the Appeal Notice) also attempted to adduce further evidence. For the following reasons, permission is denied:

5.4.1. The Complainant has had adequate opportunities to make its case and to reply to any new material raised by the Respondent.

5.4.2. The Complainant has not provided any evidence of exceptional circumstances which would cause the Panel to consider accepting further documents.

5.4.3. The Respondent's new material was struck out by the Panel, and therefore any reply to that material is inadmissible.

5.5. The Panel draws to the notice of all potential users of the DRS that Nominet provides (in the Dispute Resolution area of its website at http://www.nominet.org.uk/disputes/drs) substantial advice and guidance to complainants and respondents on how to submit their cases. Parties to disputes ignore this advice at their peril. Whilst mechanisms exist in the Procedure for additional evidence to be adduced in an Expert's discretion, Experts are likely to exercise that discretion only in demonstrably exceptional cases. Parties should ensure that their documentation meets the requirements of the Procedure and has regard to the advice available or, failing that, parties must clearly and unequivocally demonstrate the exceptional circumstances which give rise to their need to submit additional evidence or documentation. Whilst Experts must have care for the individual and/or an unrepresented party, given that there is adequate assistance available, pleas of ignorance or inexperience will not generally carry much weight.

5.6. Finally, on this topic, it should be noted that the Panel's decision in this case turns on a disputed issue which is clearly outlined in the original Complaint and Response: that is, was the Respondent aware or was it not aware of the Complainant when the former registered and/or commenced use of the Domain Name? Nothing in the subsequent documentation has assisted the Panel in determining that issue.

6. The Facts:

6.1. The Panel accepts the following as facts:

6.2. The Complainant and its subsidiary, Mercer Human Resource Consulting Limited (incorporated in England and Wales), offer human resources consulting services in the UK, Europe, the United States, Canada and elsewhere around the world.

6.3. The name Mercer Human Resource Consulting Limited stems from a company first incorporated in England and Wales on 10^th July 1970 in the name of William M Mercer Limited under company number 00984275. Following changes of name to William Mercer Fraser Limited in 1986 and to William Mercer Limited in 1993, the name of the company became Mercer Human Resource Consulting Limited on 5^th April 2002.

6.4. Mercer Human Resource Consulting Limited is the owner of UK Trade Mark Number 2352832 (filed on 7^th January 2004 and registered on 15^th October 2004) and Community Trade Mark Number 004803251, filed on 9^th December 2005 and registered on 9^th October 2006), for the mark MERCER. Both trade marks are for classes 9,35, 36, 38, 41, 42 and 44.

6.5. The Complainant is the owner of US Service Marks for MERCER under Numbers 2902605 registered on 16 November 2004, 2907461 registered on 7^th December 2004 and 2945426 registered on 3^rd May 2005. The Complainant is also the owner of the US Service Mark for MERCER BENEFITSUITE under number 3060178 registered on 21^st February 2006. A stylised version of the Service Mark MERCER was registered in the US in the name of William M. Mercer Incorporated on 22^nd October 2002.

6.6. The Complainant is the registrant of the domain names mercer.com (registered on 7^th January 1992), mercerhr.com (registered on 3^rd April 2000) and mercerhr.co.uk (registered on 12^th March 2001).

6.7. The Domain Name was registered in the name of the Respondent on 1^st November 2004.

6.8. At some point thereafter, the website at the Domain Name consisted of a page of sponsored (revenue earning) links on the subject of names (baby names, company names, domain names etc.) and included a link to follow for those who may be interested in the purchase of the Domain Name. A print-out of the page for such enquiries as at 25^th May 2006 shows a Domain Name Purchase Enquiry Form, in which anyone interested in purchasing the Domain Name was invited to make an offer to purchase it for a minimum of £500, 730 euros, $920 or equivalent. A print-out as at 5^th July 2006 comprised a Domain Name Purchase Enquiry Form inviting offers to purchase the Domain Name for a minimum of £995, 1450 euros, $1830 or equivalent.

7. The Parties' Contentions:

Complainant

7.1. The Complaint as submitted was set out in full in the original Decision. The salient points are summarised here:

7.1.1. The Domain Name is identical to trade marks registered by Mercer Human Resource Consulting Ltd. and to marks held by the parent company in the USA, The Complainant has a long history of operating in the USA and UK, and has been known in the UK as Mercer Human Resource Consulting Limited since 5^th April 2002

7.1.2. The Complainant describes its roots as: "extend[ing] as far back as 1937 through the establishment of an employee benefits department of Marsh & McLennan, Inc., their parent. The name MERCER was adopted in 1959, when Marsh & McLennan acquired William M. Mercer Limited, a Canadian firm, founded by William Manson Mercer in 1945. In 1975, Mercer-U.S. became a wholly owned subsidiary of Marsh & McLennan Companies, Inc. The company has grown over the years to over 14,000 employees in offices in 140 cities in 40 countries."

7.1.3. The Complainant asserts that the name MERCER has been used since 1959 and that for over 40 years the mark MERCER and variants have been advertised and promoted throughout the world, and in the UK since at least 1976. Appropriate documentation to that effect has been produced.

7.1.4. It is claimed that the Respondent must have known about Mercer and its trade marks, and his registration of the Domain Name was therefore a blocking registration under the Policy §3a1B.

7.1.5. Further it is claimed that the Respondent "has not engaged in any legitimate use of the domain name" but has sought to sell it for sums in excess of its costs – in violation of the Policy §3a1A.

7.1.6. Finally if is asserted that the "Respondent has registered a domain name which embodies a world famous trademark. In response to a request from Complainants to transfer the domain name to the rightful owner, Respondent has retained the domain name without legitimate use thereof. When viewed as a whole, the circumstances indicate that the Respondent has registered the domain name for the purpose of depriving Complainants of the benefit and use of the domain name MERCER.CO.UK with the hope of harassing Complainants and causing them to expend corporate resources to track down the cybersquatter. Respondent's actions represent conduct directed at Complainants to deprive them of the use of this domain name. Accordingly, Respondent's Abusive Registration of the domain name MERCER.CO.UK is clearly established. See Dispute Resolution Service Policy § 3(a)(1)(C)".

Respondent

7.2. The Response was set out in full in the original Decision. The main points are as follows:

7.2.1. The Respondent attacks in some detail the proposition that the name Mercer is exclusively associated with "Mercer Human Resource Consulting". In short he says:

7.2.1.1. The name Mercer is a common surname and descriptive of an entire group of people. Hence the name is generic and descriptive.

7.2.1.2. Many other companies use the name as part of their business name, and the Complainant's name is not Mercer but Mercer Human Resource Consulting.

7.2.1.3. Evidence is produced which purportedly shows that the Complainant's business is overwhelmingly known as "Mercer Human Resource Consulting" by both the Complainant and those familiar with it and it is not known by the form "Mercer" as the Complainant alleges.

7.2.1.4. That the trade mark MERCER is not of itself exclusive – it covers only certain areas of business.

7.2.1.5. There are numerous other trade marks which include the name Mercer.

7.2.2. In responding to the specific allegations in the Complaint the Respondent says:

7.2.2.1. That it did not register the Domain Name for the purposes of sale or rent as alleged. It has at no point approached the Complainant to sell it the name.

7.2.2.2. When the Respondent registered the Domain Name it was unaware of the existence of the Complainant or its UK subsidiary.

7.2.2.3. The name was registered as a representative surname with a large number of others with a view to offering a service based around offering clients the possibility of using e-mail in the form joe@.co.uk. The project has not come to pass, and so the name is being used to gain revenue through Google Adverts to defray costs – "this is done on a page and in a format which makes it obvious the content is advertisements and our logo, company name and business activities are clearly displayed on the page at www.mercer.co.uk and it could not conceivably be in any way confused with the business of Mercer Human Resource Consulting, Inc. or seen as passing off as them. Advertising represents a legitimate and fair use of this domain name".

7.2.2.4. That the name is not famous – in the Respondent's words – "We would suggest based on the evidence one could ask numerous members of the general public about this company and it is highly unlikely that any will have heard of this company let alone associate it exclusively with the term mercer. They are much more likely to associate mercer with a friend or acquaintance of this name. This is an attempt by the complainant to put this domain name in the same category as a well known mark such as Coca-Cola® and thereby infer we must have been familiar with the mark because of the clear notoriety of it. This situation however is obviously not the case in this instance and the mercer mark, it is not a "world famous trademark" as the complainant alleges".

7.2.3. Finally it is alleged that the Complainant has distorted the facts in its complaint and has attempted to use the DRS as a mechanism to obtain the Domain Name which is a misuse of the DRS and in bad faith.

Complainant's Reply

7.3. The Complainant's Reply was included in full in the Decision in the first instance, the six main points that they made can be summarised as follows:

7.3.1. Mercer is not a surname and generic and the grant of a trade mark registration "for the mark MERCER provides presumptive evidence of Complainant's exclusive rights in and to the mark MERCER".

7.3.2. The name Mercer may be used by other businesses but it is always distinguished by other words (such as the U.K. accounting firm of "Mercer & Hole") and that therefore the name Mercer would only be used to refer to the Complainant and "Accordingly, there is no doubt that consumers and Internet users would likely be confused into believing that Respondent is somehow affiliated with, sponsored by, or connected to Complainant and/or Complainant's services."

7.3.3. The claim that there are large numbers of registered domain names including "mercer" is unsupported by evidence. Furthermore the Complainant is unaware of anybody who uses the name Mercer without another distinguishing component, and thence that the Complainant is the only user of the word Mercer.

7.3.4. Even if the Respondent is correct that "Mercer" is used by others as a surname, that fact is irrelevant to the case at hand because the Respondent does not and has never claimed that its surname is Mercer or that it is using MERCER to connote a surname

7.3.5. The Claimant routinely refers to itself as Mercer, its logo shows the name, its web site uses the name and logo, and extracts from various publications are introduced to show that they refer to them as Mercer.

7.3.6. The Respondent's claim that "mercer.com" is not the Complainant main web site is rejected with supporting evidence of 50,000 hits per month. It is alleged that by projection, "mercer.co.uk" would similarly be thought of by Mercer clients in the UK as the appropriate web site for them to use.

7.3.7. The use of the Domain Name is not legitimate because "[the Respondent] clearly registered the domain name with a view to blocking the Complainant and with the ultimate objective of provoking an offer to purchase the domain name at a price far in excess of the Respondent's out of pocket expenses". The suggested price of £995 is regarded as excessive and only obtainable "because MERCER is identified with Complainant and its fame and goodwill". The use of the Domain Name is rejected because "[the] Respondent's registration constitutes .an abusive registration because any use by Respondent of the MERCER.CO.UK domain name, identical to Complainant's famous mark, constitutes an opportunistic attempt to attract visitors via Complainant's famous mark. The Respondent is accused of blatant and deliberate opportunism.

The Respondent's Appeal Notice

7.4. The Respondent's Appeal Notice is set out in full below and notwithstanding that, for the reasons given above, sections of it have been disregarded by the Panel :

7.4.1. This decision was not lost because this was an abusive registration, or because the complainant has exclusive or greater rights to this domain, but by mere fact the complainants case was more expertly and aggressively conducted than mine and was apparently largely accepted without question at face value by the expert who I feel has made a number of reasoning errors. I admit inadequacies in my response due to inexperience of these matters and lack of resources, in particular that of failing to provide evidence to support my position. Given this was decisive in this case the result of which represents an incorrect and unfair decision it is in the interest of justice that this evidence now be considered. I have annexed it to this document and would kindly like to ask that this be given your consideration given these circumstances.

7.4.2. I maintain our assertion that "mercer" is both generic and descriptive based on the established definitions of these terms. It is a surname, a dictionary word meaning "a dealer in textile fabrics" and also the name of several towns.

7.4.3. Abusive registration under 3(a)(i)(A) requires registration of the domain name with the primary intention to sell it to the complainant or one of their competitors. I can state categorically that I had not heard of this company at the time of registration and there can be no evidence provided to contradict this fact. The expert's assumption that this is "difficult to believe" is invalid and it appears is based largely on the complainant's current registration of the mercer.com domain name. Whilst Whois records show this was registered by someone in 1992 there is no evidence to indicate that the complainant has held this domain or had an active website here either since this time or at the time of registration of mercer.co.uk. It is neither a requirement nor normal for anyone to check who owns any other domain name extensions before registering a .co.uk domain name and this should not be relevant.

7.4.4. Furthermore mercer.com is not the complainant's primary website; traffic statistics provided are not evidence of this. Their principal website is Mercerhr.com as independently verifiable by Alexa.com traffic rankings. Mercerhr.com has a reach per million users of 18.5 as opposed to 6.6 for mercer.com, traffic rankings are 80,978 and 178,871 respectively, equating to 3 times more visitors to mercerhr.com than mercer.com. Also only 16% of visitors to mercer.com actually visit the website itself compared to 99% for mercerhr.com, the remainder immediately following a link away, demonstrating mercer.com is primarily a link or 'gateway' page as previously claimed.

7.4.5. Mercer is also not as claimed the "primary name" of their company. There is confusion by the expert in this case in the distinction between abbreviation of a company name within written text and use of that name representing a trademark, trading style or brand. The carefully selected evidence of the complainant the expert relies upon simply represent an abbreviation of the full business name, such contractions are commonly used both informally in speech and in writing in non-official documents where companies have longer and more complex names to give greater flow and brevity to the text, typically where full and correct trading style has already been established as in most of these examples.

7.4.6. Also If "mercer" were the "primary name" in which the complainant had such longstanding interest they would surely have taken the opportunity to register it in the UK as a first choice when available given that they registered wmmercer co.uk back in 12/04/1995 and mercerhr.co.uk on 12/03/01, amongst a portfolio of 29 other.uk domain names registered prior to 01/11/04. Even adding mercerhr.org.uk on 15/11/01, but failing to register mercer.org.uk which was available until 04/03/03,

7.4.7. The expert also assumes design and content of mercer.com and complainants other websites evidenced by printouts from June/July 2006 equate to that at 01/11/2004, clearly such a conclusion cannot be drawn and this could have changed substantially over this period.

7.4.8. Google advertisements displayed at www.mercer.co.uk and the supposition that some revenue was perhaps generated by visitors looking for complainant's website is interpreted as taking unfair advantage of complainant's rights and evidence of abusive registration. It is not understood how this conclusion can conceivably be drawn, especially given the facts. I only began to use these Google adverts on this page in March 2006, importantly, they never relate to complainant's businesses, business areas or those of competitors. I am not a PPC business, advertisements are used fairly and solely to recoup domain registration costs. Traffic and revenue gained from this domain name is negligible, August 2006, 23 visits daily, total monthly revenue 39p.

7.4.9. Of the complainant's several relevant trademarks all except one are registered subsequent to registration of mercer.co.uk so cannot be relevant. UK Trademark 2352832 was registered just two weeks prior to mercer.co.uk on 15/10/2004 (incorrectly stated in Facts). There are two other active trademarks specifically for "mercer" for UK companies significantly predating complainants and 9 others in USA. The complainants are prolific registrants of trademarks, at least 84 various trademarks that we were able to identify. The fact it has registered so many over such a long period yet only principally registered "mercer" in 2005 suggests this term only then became desirable to them.

7.4.10. The expert apparently holds that there is something inherently wrong with the resale of domain names for profit, but this has been established not to be the case. Any domain name registered will potentially attract purchasers; certainly any like mercer.co.uk by their very nature will always do so, this does not mean if later put on sale they were deliberately targeted at time of registration or abusive.

7.4.11. The registration of mercer.co.uk was done using a "dropcatching" service. This process is essentially random, unpredictable with low probability of success in any given case and therefore registration of mercer.co.uk could not have been premeditated as implied. We were simply trying to secure surnames where possible for our planned email project and registered more than 300 in 2003/2004 for this purpose.

The Complainant's Response to the Appeal Notice

7.5. The Complainant's Appeal Notice response is set out in full below, notwithstanding that sections of it have been disregarded by the Panel for the reasons stated above:

RESPONDENT CANNOT INTRODUCE NEW EVIDENCE ON APPEAL

7.5.1. In its Notice of Appeal, the Respondent urges this Board to consider evidence not submitted in the dispute resolution process and repeats its arguments that MERCER is generic, that MERCER is not Complainant's primary mark, and that Respondent's registration is not abusive because it had never heard of Mercer before registration.

7.5.2. Under Paragraph 18(c), (f) and (h) of the Procedure, an appeal notice "shall contain no new evidence or annexes," and "[t}he appeal panel should not normally take into consideration any new evidence presented in an Appeal Notice or Appeal Notice response, unless they believe that it is in the interests of justice to do so." Respondent must show "exceptional circumstances" to admit additional evidence. See The Procter & Gamble Company v. Michael Toth (2006) DRS3316. The only support for admission of new evidence proffered in the Notice of Appeal is Respondent's claimed "inexperience of these matters and lack of resources" and its lament that "Complainant's case was more expertly and aggressively conducted..." The Respondent has not alleged insufficient notice of the Complaint, nor did it request additional time to prepare a Response. In fact, Respondent had sufficient opportunity to submit evidence. Any failure to do so prior to July 5, 2006 resulted from its own decision not to take the proceeding seriously or to prepare adequately. All of the newly submitted evidence was available prior to the filing of Respondent's brief. Respondent does not now have some new expertise that it lacked when the record was created. Further, Respondent's implication that it lacked the experience necessary to provide adequate submissions is belied by the facts that its entire business consists of providing domain name registration services in the U.K. and that it owns thousands of domain name registrations. The only reason Respondent now wishes to introduce new evidence is because it lost the dispute resolution proceeding. That cannot and should not qualif5i as an "exceptional circumstance." If receiving an unfavorable Expert decision were all that is required to show "exceptional circumstances," all losing parties would thereby be able to introduce new evidence on appeal. Clearly, this would contradict the letter and spirit of Paragraphs 18 (c), (I), and (h) of the Procedure.

MERCER IS NEITHER GENERIC NOR DESCRIPTIVE

7.5.3. It is beyond dispute that "MERCER" is not the name for the category of human resource consulting services offered by Complainant, and that "MERCER" does not describe any characteristic of such services. Complainant's trademark registrations are evidence that such term is distinctive.

MERCER IS A VALID TRADEMARK AND MERCER.CO.UK IS AN ABUSIVE REGISTRATION

7.5.4. Respondent maintains that its registration of MERCER.CO.UK is not abusive because it "had not heard of this company at the time of registration Further, Respondent also goes to great lengths to compare MERCER to other variants of Complainant's marks and concludes that MERCER is not Complainant's "primary mark."

7.5.5. The facts in the record prove that MERCER was exceedingly well..known at the time of Respondent's registration. MERCER has been extensively and continuously advertised and promoted by Complainants worldwide for many years, and in the U.K. since at least 1976, leading the Expert to conclude that the Complainant's MERCER mark "has a high profile in the business and financial community in Europe and North America." Further, Complainant's MERCER.COM website, which is Complainant's principal business website, was registered in 1992. Indeed, the Expert noted that it was "difficult to believe that the Respondent was not aware of the Complainant's [MERCER.COM] website when it registered the Domain Name in 2004." Whether or not other marks are also used by Complainant is wholly irrelevant and any such facts would not refute the Expert's conclusion.

7.5.6. Furthermore, it is significant that the Respondent did not produce any evidence of demonstrable preparations to use the MERCER.CO.UK domain name as a surname e-mail service, nor did it provide any legitimate explanation as to why it chose to register the MERCER name in particular.

7.5.7. The Respondent presently seeks to introduce new evidence suggesting that it registered "more than 300" surnames, including the MERCER name, for its "planned email project." As stated above, such evidence cannot be introduced by the Respondent on appeal.

7.5.8. However, to the extent that the Panel considers such evidence, the Complainant responds as follows:

7.5.8.1. Contrary to Respondent's suggestion, most of Respondent's registered domain names are not surnames. Although Respondent claims to have "more than 300" surnames registered, Respondent has a total of more than 2,000 registered domain names, the vast majority of which are not surnames. See Exhibit A. More importantly, however, is the fact that the "more than 300" surnames that Respondent lists for its "planned email project" are all currently available for purchase by any interested party. See Exhibit B. If the Respondent truly had a bona fide intention of carrying out its alleged "[email protected] Project," none of Respondent's surname domain names would be up for sale in anticipation of said project. Therefore, Respondent's post-registration rationalization regarding its "planned email project" is refuted by Respondent's own actions.

7.5.8.2. Further, Complainant notes that Respondent has among its portfolio of domain names a number of names featuring the well-known trademarks of others, including halliburton.co.uk (the multinational oil and gas exploration company), rollingstone.co.uk (the magazine devoted to music, politics, and popular culture), vanheusen. co. uk (the multinational dress shirt manufacturer and distributor), and ViCkY. CO. uk (the line of over-the-counter medications owned by Procter & Gamble). See Exhibit C. Accordingly, it is clear that Respondent has a track record of hijacking other people's names and marks, This further evidences Respondent's pattern of Abusive Registrations.

7.5.9. In view of the foregoing, Complainant respectfully submits that the Expert's decision was correct and should be upheld on appeal.

8. Discussion and Findings:

Burden of Proof

8.1. The Panel is considering this appeal based on a complete review of the evidence. This means that the process is exactly the same as the one followed by the Expert in the first instance.

8.2. In order for the Complainant to succeed it must (Policy §2) prove to the Panel, on the balance of probabilities, both:

i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

8.3. Rights are defined in the Policy as:

Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business;

Complainant's Rights

8.4. The Complainant relies on its registered trade marks, its extensive use in business and its ownership of various ".com" domains to show that it has rights in the name "MERCER".

8.5. The Panel finds that the Complainant has rights in the name "MERCER" and that the name is identical to the Domain Name.

Abusive Registration

8.6. Having made the finding that the Complainant has relevant rights, the Panel must consider whether the registration by the Respondent of the Domain Name is abusive.

8.7. An Abusive Registration is defined in the Policy as follows:

Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights;

8.8. Key to the issue as to whether or not the Domain Name is an Abusive Registration within the meaning of paragraph 1 of the Policy is the date when the Respondent first became aware of the existence of the Complainant.

8.9. The Respondent claims that it was unaware of the existence of the Complainant until after it had registered and started using the Domain Name. It says that it first became aware of the Complainant when it started receiving letters from the Complainant's representatives demanding transfer of the Domain Name and threatening proceedings.

8.10. The Complainant claims that given the fame of the Complainant, its services and trade mark, the Respondent must have known of the Complainant at the time of registration of the Domain Name.

8.11. This issue is key to the outcome of this case because all four of the Complainant's stated bases for branding the Domain Name as an Abusive Registration depend upon the Respondent's state of knowledge in this regard.

8.12. The Complainant claims in the Complaint that the Respondent registered the Domain Name primarily:

(i) to sell it at a profit to the Complainant

(ii) to prevent the Complainant registering it

(iii) to disrupt the Complainant's business

Necessarily, each of those allegations presupposes that at time of registration of the Domain Name, the Respondent had the Complainant in mind.

8.13. In the Reply the Complainant introduces a fourth basis for contending that the Domain Name is an Abusive Registration, namely

"…. Any use by the Respondent of the MERCER.CO.UK domain name, identical to Complainant's famous mark, constitutes an opportunistic attempt to attract visitors via Complainant's famous mark. Respondent is profiting from Complainant's goodwill in the mark MERCER insofar as visitors are attracted to the MERCER.CO.UK website because of the Complainant's famous mark, and insofar as said visitors click on any of Respondent's Google advertising links. The more that visitors click on Respondent's links, the more revenue that is generated for the Respondent through Google's advertising program. This blatant and deliberate opportunism takes unfair advantage of, and is unfairly detrimental to, Complainant's rights and goodwill in its famous mark." [Emphasis added]

8.14. Here again the Respondent has to have known of the Complainant and its famous mark at the date at which it commenced the abusive use in question.

8.15. Interestingly, paragraph 3a.ii of the Policy, which deals with this basis for complaint (confusing use of a domain name), does not expressly call for abusive intent on the part of the Respondent, but plainly, such knowledge/intent has to be present. For a domain name to qualify as an Abusive Registration, there has to be an element of abusive behaviour on the part of the Respondent.

8.16. In its Reply the Complainant invited the Expert to infer an abusive intent on the part of the Respondent not only on the back of the fame of its mark, but also on the basis that the Respondent had provided no explanation as to why it had registered the Domain Name in the first place. The Complainant stated:

"Even if the Respondent is correct that "Mercer" is used by others as a surname, that fact is irrelevant to the case at hand because the Respondent does not, and has never, claimed that its surname is MERCER, or that it is using MERCER to connote a surname. Indeed, the Respondent has yet to provide any explanation whatsoever as to the derivation of its MERCER.CO.UK domain name or why it chose to register said domain name in the first place, since it is quite apparent that the Respondent bears no relation to the name or mark MERCER."

8.17. The Panel is somewhat puzzled by the above, for in the Response the Respondent makes it very clear that it regarded the name MERCER as a surname and registered the Domain Name as the basis for an email service to people with the surname "Mercer". The Domain Name was said to be one of many in the same surname category. The Respondent goes on to say that the planned service has 'not yet transpired' and in the interim the Domain Name is being parked at a Google advertising page. The Panel can appreciate that that explanation might be thought by the Complainant to be an explanation conveniently arrived at to deal with the Complaint, but on its face it is an explanation and it is not entirely unreasonable.

8.18. In order to dismiss the Respondent's clear denial of any prior knowledge of the Complainant, there has to be something concrete to justify such a course. As the Expert has pointed out, there is no direct evidence against the Respondent. There is no evidence, for example, that the Respondent has had any prior contact with the Complainant or its business. Both the Expert and the Complainant appear to rely exclusively on the fame of the Complainant's mark to conclude that the Respondent had the relevant knowledge. But how famous is the mark? The Expert recognises that it may well not be well-known to the public at large. Nor is it well-known to all members of the business community. The mark is unknown to two members of the Panel and to the third, while known to him, it is not the Complainant which immediately comes to mind when the name, MERCER, is mentioned. In the case of this member of the Panel the first person to come to mind is an acquaintance having that surname; the second thing to come to mind is the name given to a member of the Mercers' Company, the premier livery company of the City of London.

8.19. The indication on the Respondent's website that the Respondent was willing to sell the Domain Name for a sum in excess of its registration expenses is of itself of no assistance to the Complainant. Trading in domain names for profit is a well-established business and unexceptionable. To get off first base the Complainant must ordinarily at the very least produce something to show that the Respondent had (or is likely to have had) the Complainant in mind at the relevant time. Even then, that may not be enough in all cases to demonstrate an abusive intent, but it will ordinarily be an essential pre-requisite.

8.20. In these circumstances and having regard to the fact that, however well-known the name may be in the human resources business, the name is not in the Coca-Cola category of famous names, the Panel is more than ready to accept that prior to receiving complaining communications from the Complainant's representatives, the Respondent was unaware of the existence of the Complainant or its business.

8.21. The Complainant has therefore failed to satisfy the Panel that the Respondent had the Complainant in mind when it registered and/or commenced use of the Domain Name and the Complaint must fail.

8.22. Finally, the Respondent accuses the Complainant of abusive use of the Policy designed to deprive the Respondent of the Domain Name unfairly. The Panel rejects the allegation. The Complainant had a bona fide basis for the Complaint. The Panel can understand that the Respondent's use of the Domain Name may well lead to a degree of so-called 'initial interest confusion', which could reasonably be of concern to the Complainant. Had the Complainant satisfied the Panel that the Respondent's choice of domain name had been motivated by knowledge of the Complainant's trade mark, the Complaint would have succeeded. The Complaint failed simply because the Panel was not satisfied that the Complainant's trade mark is as broadly known in the UK as the Complainant thinks it is.

9. Decision:

9.1. For the reasons set out above the Panel finds that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name but has not established that the Domain Name in the hands of the Respondent is an Abusive Registration.

9.2. The Panel therefore allows the Appeal and directs that no action should be taken in relation to the Domain Name.

Adam Taylor Tony Willoughby Iain M Tolmie

Dated: