Decisión del Panel Administrativo nº D2013-0685 of WIPO Arbitration and Mediation Center, June 21, 2013 (case London Court of International Arbitration (LCIA), International Chamber of Commerce (ICC), Singapore International Arbitration Centre (SIAC), Arbitration Institute of the Stockholm Chamber of Commerce (SCC), American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) v. ICSID Lawyers, LLC)
| Resolution Date | June 21, 2013 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer, denied in part |
| Dominio | Generic Domains |
The Complainants are London Court of International Arbitration (LCIA) of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); International Chamber of Commerce (ICC) of Paris, France; Singapore International Arbitration Centre (SIAC) of Singapore; Arbitration Institute of the Stockholm Chamber of Commerce (SCC) of Stockholm, Sweden; American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) of New York, United States of America, represented by Freshfields, Bruckhaus, Deringer, United Kingdom. For the purposes of this decision each of the Complainants will be referred to by their acronyms as indicated above.
The Respondent is ICSID Lawyers, LLC of Charlestown, Saint Kitts and Nevis, represented internally.
The disputed domain names [aaaarbitrations.com], [difclcia.com], [iccarbitrations.com], [icdrarbitration.com], [icdrarbitrations.com], [internationalchamberofcommercearbitration.com], [internationalchamberofcommercearbitrations.com], [lciaarbitration.com], [lciaarbitrations.com], [lciamiacarbitration.com], [londoncourtofinternationalarbitration.com], [londoncourtofinternationalarbitrations.com], [sccarbitration.com], [sccarbitrations.com], [siacarbitration.com], [siacarbitrations.com] and [stockholmarbitration.com] (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 12, 2013, 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 Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Response was filed with the Center on May 13, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 31, 2013. The Panel finds that it was properly constituted. 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.
It has also been necessary to extend the due date for the decision by a brief period to the date indicated under section 7 below.
The London Court of International Arbitration, commonly known as the LCIA, was established in 1892 in London. Since its establishment it has provided arbitration and commercial dispute resolution services to various private parties, both within the United Kingdom and overseas. The LCIA extensively promotes itself under the names London Court of International Arbitration and LCIA.
The LCIA holds a registered trade mark for the acronym “LCIA” (the “LCIA Mark”) which was registered on March 25, 2009 in the United Kingdom.
In February 2008, the LCIA entered into an agreement with the Dubai International Financial Centre Authority (DIFCA) and Dubai Arbitration Centre for the purposes of opening and operating an arbitration centre known as the DIFC-LICA Arbitration Centre.
In July 2011, the LCIA entered into an agreement with the Government of Mauritius and the Mauritius International Arbitration Centre Limited (MIAC) for the purposes of opening an operating an arbitration centre known as the LCIA-MIAC Arbitration Centre.
The International Chamber of Commerce, commonly known as the ICC, was established in 1920 in Paris. It has three main activities, being rule-setting, dispute resolution and policy advocacy. In 1923 the ICC established the International Court of Arbitration. Through the International Court of Arbitration the ICC provides private international commercial arbitration services. The ICC has administered over 19,000 arbitration cases involving parties and arbitrators from over 180 countries and territories.
The ICC has registered a number of trade marks for its services. In particular, the ICC holds a registered trade mark for the acronym “ICC” (the “ICC Mark”) which was registered on July 23, 2007 in the European Union. The ICC also holds a registered trade mark for the word-mark “INTERNATIONAL CHAMBER OF COMMERCE” (the “INTERNATIONAL CHAMBER OF COMMERCE” Mark). The “INTERNATIONAL CHAMBER OF COMMERCE” Mark has been registered in numerous jurisdictions in particular the European Union, where it was registered on August 20, 2008.
The Singapore International Arbitration Centre, commonly known as the SIAC, was established in 1991 in Singapore. Its purpose was to provide an efficient, reliable dispute resolution institute in Asia. The SIAC maintains an international panel of 340 independent arbitrators who provide services in SIAC arbitrations. The SIAC maintains a website at “www.siac.org.sg” which was registered on 16 July 1999 and prepares and distributes numerous publications and marketing materials, which normally use the acronym “SIAC” to describe the SIAC.
The Arbitration Institute of the Stockholm Chamber of Commerce, commonly known as the SCC, was established in 1917 in Stockholm. The SCC is a division of the Stockholm Chamber of Commerce and provides arbitrations and dispute resolution services. In particular the SCC has specialized in disputes involving investment treaties.
The SCC maintains a website at “www.sccinstitute.com” and owns a number of other related domain names, including [sccinstitute.se], [stockholmchamber.com] and [arbitrationinsweden.com]. The SCC has prepared publications and marketing materials for the purpose of advertising its services, including practitioner, academic and legal texts, all of which make reference to the SCC as the “SCC” and the “Arbitration Institute of the Stockholm Chamber of Commerce”.
The American Arbitration Association, commonly known as the AAA is a not-for profit organization with offices in the United States, Singapore, Bahrain and Mexico City. It maintains an international division, the International Centre for Dispute Resolution, commonly known as the ICDR (collectively the AAA/ICDR). The AAA/ICDR was founded in 1926. In 2012, tens of thousands of commercial disputes were submitted to the AAA, with nearly 1000 submitted to the ICDR.
The AAA/ICDR has registered a number of trade marks for its services. In particular, the AAA/ICDR holds a registered trade mark for the acronym “AAA” (the “AAA Mark”) which was registered on July 19, 2005 in the United States and the INTERNATIONAL CENTER FOR DISPUTE RESOLUTION (the “INTERNATIONAL CENTER FOR DISPUTE RESOLUTION” Mark), registered on June 25, 2002 in the United States. On November 5, 2012 it applied to register ICDR as a trade mark in the United States. The AAA/ICDR also prepares and distributes substantial marketing materials which are branded with “ICDR”, the AAA Mark or INTERNATIONAL CENTER FOR DISPUTE RESOLUTION Mark.
The Respondent is a law firm that specializes in international arbitration matters. Its principal is Eric Rabkin, who is the authorized representative of the Respondent as well as the administrative and technical contact for the Domain Names. The Domain Name [difclcia.com] was registered on March 24, 2011. The Domain Name [lciamiacarbitration.com] was registered on July 28, 2011. The Domain Name [stockholmarbitration.com] was registered on June 3, 2010. The remaining Domain Names were all registered on 16 May 2010.
The Domain Names, [lciamiacarbitration.com], [lciaarbitration.com], [lciaarbitrations.com], [londoncourtofinternationalarbitration.com], [londoncourtofinternationalarbitrations.com], and [difclcia.com] formerly linked to a website maintained by the Respondent at “www.icsidlawyers.com” (the “Respondent’s Website”) but following a cease and desist letter sent by the LCIA, now are inactive. The remaining Domain Names link to the Respondent’s Website, which promotes the Respondent and its legal services.
For the purposes of this decision all of the marks that are claimed to be owned by the Complainants will collectively be known as the “Complainants’ Marks”.
The Complainants make the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainants’ Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of any of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The ICC is the owner of the ICC Mark which was registered on July 23, 2007 in the European Union and the INTERNATIONAL CHAMBER OF COMMERCE which registered on August 20, 2008 in the European Union.
The LCIA is the owner of the LCIA Mark which was registered on March 25, 2009 in the United Kingdom. The SCIA has unregistered trade mark rights in “SCIA” (the “SCIA Mark”). The SCC has unregistered trade mark rights in “SCC” (the...
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