PETER and FRANCES TATE
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Notice of Decision

Attached is the decision of the Panel in:
Laurent Giles Naval Architects Ltd v Peter J. Tate, FA0602000639047

Decision: Denied

PARTIES’ RIGHTS
· Complainant’s rights – If the Respondent prevailed in this UDRP action, the Complainant is not barred from seeking other relief in court as provided by law. The timeliness of such action is governed by the applicable law.

· Respondent’s rights – If the Complainant prevailed and the domain name has been ordered cancelled or transferred, the Registrar will wait 10 days before taking action. Within that period, the Respondent may begin a lawsuit, in an appropriate jurisdiction, against the Complainant. The Respondent must properly notify the Registrar of such legal action. ICANN Policy 4(k).

REGISTRAR’S RESPONSIBILITIES
If the Panel's decision was cancellation or transfer of the domain name(s), the Registrar will wait 10 days before implementing the decision. ICANN Policy 4(k). The cancellation/transfer (if ordered) will take place unless appropriate legal action is commenced against the Complainant within the 10-day period.

Official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) must be sent to the Registrar to prove that legal action has been commenced. Then, the Registrar will not implement the Panel's decision, and will take no further action, until the following is received:
(i) satisfactory evidence of a resolution between the parties;
(ii) satisfactory evidence that the lawsuit has been dismissed or withdrawn; or
(iii) a copy of a court order dismissing the lawsuit or ordering that the party does not have the right to continue to use the domain name.

NOTE: This document should not be construed as legal advice. If you need legal advice, consult an attorney in your jurisdiction.

NATIONAL ARBITRATION FORUM

DECISION

Laurent Giles Naval Architects Ltd v. Peter J. Tate
Claim Number: FA0602000639047

PARTIES
Complainant is Laurent Giles Naval Architects Ltd (“Complainant”), PO Box 130, Lymington, Hampshire, S041 0YR, UK. Respondent is Peter J. Tate (“Respondent”), Club de Mar, Palma, MA, II 07080, ES.


REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Register.com.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Olivier Iteanu as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2006.

On February 6, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 8, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@laurentgiles.com by e-mail.

A timely Response was received and determined to be complete on March 6, 2006.

On March 13, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Olivier Iteanu as Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant

1. Complainant makes the following assertions in relation to its trademark rights:

- that it is the owner of a trademark "Laurent Giles" registered under the Trade Marks Act 1994 of Great Britain and Northern Ireland under No. 2360490 as of the date April 7th, 2004 for certain services relating, in particular, to yacht design services,
- that it has been using the name "Laurent Giles" in the business of yacht design itself and through its company predecessors Laurent Giles Ltd. and Laurent Giles & Partners Ltd. since 1927, and that it is now the beneficial owner of the name Laurent Giles,
- that it is the owner of the domain name since September 1998 during which time the domain name has been fully active,
- that the name "Laurent Giles" has international reputation in the field of yacht design,
- that the disputed domain name is identical to its trademark and confusingly similar to its domain name .

2. Complainant makes the following assertions in relation to Respondent's lack of rights or legitimate interests in the disputed domain name:

- that Respondent is not related or affiliated in any way to Complainant,
- that it hasn't been commonly known under the name "Laurent Giles",
- that it is not a licensee of the "Laurent Giles" trademark.

3. Complainant makes the following assertions in relation to Respondent's bad faith:

- that Respondent knew, or must have know of the Complainant when registering the disputed domain name,
- that the disputed domain name resolves to a Website which sole purpose is to discredit and malign the Complainant and individuals associated with the Complainant.

B. Respondent

In its response, the Respondent argues that:

- it was involved in a prior litigation with the Complainant relating to its purchase of a yacht or a yacht design with a "now liquidated company formerly known as Laurent Giles Ltd." according to its Response,
- that the Website was created as a warning to other prospective design purchasers from Laurent Giles or any other designer,
- that since Respondent was the purchaser of a design from Laurent Giles Ltd., it is allowed to use the name Laurent Giles Ltd. when referring to the vessel,
- that the Website was formed before the trademark registration of the Complainant,
- that the Website only lays out its experiences.

FINDINGS

The Panel finds that the disputed domain name was registered on October 23rd, 2002, while the trademark certificate provided by the Complainant mentions a registration date of April 7th, 2004.

The Panel finds that the Complaint shall be rejected as not meeting with the Policy requirements and that that the requested relief should be denied.


DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in 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 in bad faith.

1. Identical and/or Confusingly Similar to a trademark or service mark in which the Complainant has rights

1.1 Trademark certificate evidence provided

The "Laurent Giles" trademark certificate provided by the Complainant mentions a registration date of April 7th, 2004. Respondent’s registration of the disputed domain name (October 23rd, 2002) predates the Complainant’s trademark registration date.

Therefore, this documentary evidence cannot be used to satisfy the requirements of Policy 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration. of the domain name”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as the respondent’s registration of the domain name predated the complainant’s alleged rights (the respondent registered the disputed domain name more than two years prior to the complainant’s stated first use in commerce) the complainant did not have standing to bring a claim under the UDRP).

1.2 Use of the name "Laurent Giles" in the business of yacht design

Complainant asserts that it has been using the name "Laurent Giles" in the business of yacht design itself and through its company predecessors Laurent Giles Ltd. and Laurent Giles & Partners Ltd. since 1927, and that it is now the beneficial owner of the name Laurent Giles.

Complainant also asserts that its is the owner of the domain name since September 1998 during which time the domain name has been fully active

To succeed in the requirement of Policy 4(a)(i), the Complainant would then be required to provide documentary evidence of common law rights in the "Laurent Giles" name predating the registration date for the domain name, whether through its regular use in the business of yacht design or through its use of the domain name if this use can be regarded as a trademark use.

1.2.1 Absence of documentary evidence of the alleged uses

Nevertheless, the Complainant has not provided any single documentary evidence of its contentions that could allow the Panel to attribute to the Complainant unregistered or "common law" rights to protection of the unregistered mark "Laurent Giles" against misleading uses for use of "Laurent Giles" in commerce.

As reminded above, Policy 4(a) specifically requires that the Complainant must prove each of the cited three elements to obtain an order that a domain name should be cancelled or transferred, and especially, the existence and ownership of an earlier trademark.

The Complainant only asserts: "The Complainant celebrates an international reputation for design excellence and the name Laurent Giles is synonymous with high quality yacht and super yacht design. The Complainant has created or owns a portfolio of over 1300 different yacht designs most of which are recognised and identifiable by the name Laurent Giles". The Complainant does not support such allegations with any dated documentary evidence such as market surveys, press articles, proof of advertising, catalogs, etc.

Whatever is or would actually be the asserted fame of the Complainant, the Panel cannot compensate for this lack of evidence, the burden of which lies on the Complainant.

1.2.2 Possible partial acknowledgment from Respondent is insufficient in view of the absence of documentary evidence of the claimed fact that the Complainant is a successor in rights to Laurent Giles Ltd.

The Panel acknowledges that the Respondent, in the Annexes to its Response, mentions that, in 1986 "[he] commissioned Laurent Giles Ltd., to design [him] a new yacht. [He] chose Laurent Giles Ltd., above others for the good name, and the fact that both directors were (…)".

The Panel believes this statement is certainly an acknowledgement that the entity Laurent Giles Ltd. (which the Complainant claims to be one of its "predecessors") was well known to the Respondent, and that Respondent believed it had a good reputation.

It could be discussed whether or not this single declaration would suffice to consider the requirement of Policy 4(a)(i) as fulfilled in view of the Rules 15 (a), which state "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.". The generality of these terms seem to imply that the Panel may use evidence provided by the Respondent to support assertions of the Complainant, and vice versa.

Even though this statement alone could be used to establish "common law" rights to protection of the unregistered mark "Laurent Giles" against misleading uses for use of "Laurent Giles" arising to the benefit of the entity Laurent Giles Ltd. in commerce prior to the date of registration of the disputed domain name, the Complainant would still fail to establish evidence that it has acquired rights from this entity which it designates as its "predecessor".

The Complainant does not provide any documentary evidence supporting this fact, or more generally that it has acquired any rights from its alleged company predecessors Laurent Giles Ltd. and Laurent Giles & Partners Ltd. since 1927, and nothing in the documentary evidence submitted establishes the existence of any transfer of rights.

1.3 Identity or similarity of the disputed domain name.

In view of the fact that no ownership of existing trademark rights acquired prior to the registration of the disputed domain name has been documented for the purpose of the Policy in the present case, the Panel shall not be required to examine identity or similarity of the disputed domain name with the trademark invoked by the Complainant.

1.4 Conclusion on first condition set by Policy 4(a)(i)
The Panel considers that the Complainant has failed to meet the first condition set by Policy 4(a)(i).


2. Rights or Legitimate Interests & Registration and Use in Bad Faith Policy 4(a)(ii) & (iii)

The Panel shall not be required to examine these Policy requirements, in view of the fact that the first condition is not met.


DECISION
Having established that the Complainant has failed to meet the first condition set by Policy 4(a)(i), the Panel concludes that relief shall be DENIED.

Olivier ITEANU, Panelist
Dated: April 11, 2006



NATIONAL ARBITRATION FORUM