WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reuters Ltd. v. Teletrust IPR Ltd
Case No. D2000-0471
1. The Parties
The Complainant in this administrative procedure is Reuters Limited, England, represented by Bruce P. Keller Esq., Debevoise & Plimpton, USA.
The Respondent is Teletrust IPR Ltd., Switzerland, represented by Kurt Rohner, Switzerland.
2. The Domain Names and Registrars
This dispute concerns the domain names:
All names are registered by Register.com Inc, New York, New York, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 20, 2000, and the signed original together with four copies was received by the WIPO Center on May 23, 2000. The WIPO Center sent an Acknowledgement of Receipt to the Complainant, dated May 26, 2000.
On May 23, 2000, a Request for Registrar Verification was transmitted to the Registrar, Register.com. May 30 Register.com confirmed that they had received the Complaint, the disputed domain names were registered with Register.com and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain names were in "Active" status.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on May 31, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent on June 1 (with copies to the Complainant, Register.com and ICANN), setting a deadline of June 20, 2000, by which the Respondent could file a Response to the Complaint.
A response to the Complaint was filed on June 20, 2000 and was acknowledged by the WIPO Center on June 21, 2000.
The Complainant had requested a single-member panel to be appointed. The Respondent, however, chose a three-member panel and paid the prescribed fees after some exchange of e-mail with the WIPO-Center as to the correct size of the fee.
Consequently, on August 3, 2000, the WIPO Center invited Mr. Knud Wallberg, Mr. Tony Willoughby and Mr. Bernhard Meyer-Hauser to serve as panelists in Case No. D2000-0471, and transmitted to them a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received their Statement of Acceptance and Declaration of Impartiality and Independence, on August 8, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision Date was August 22, 2000. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Respondent submitted an e-mail to the WIPO Center on August 17 requesting the possibility to provide further exhibits in support of the Response. The exhibit should allegedly consist of papers showing that Respondent is undertaking negotiations with Swisscom Mobile Com to take over a license of a car-tracking patent. No exhibits were attached to the request. Having been notified of this request the Panel stated in an e-mail to the WIPO Center of August 18 that the Rules in principle do not allow for further submissions but that such submissions can be accepted by the Panel if they are accepted by the other party. Complainant recognised in an e-mail on August 21 that further submissions under certain circumstances can be allowed, but that the possible evidence in question here would be irrelevant for the case. The Respondent sent a fax to the WIPO Center on August 24. Enclosed was a statement from Swisscom that the two parties had talks about a car tracking Patent.
The Panel notes that at the time of the request by the Respondent to submit additional documents, the Panel had already been appointed and that the parties had been informed of the appointment and of the Projected Decision Date. At the time of the request the Panel had finalised the drafting of the decision based on the existing documents. The Panel further notes that the request was not followed by the said documentation immediately and that the Complainant declined to accept a submission of further evidence with a content as described in the request.
It is the Panels duty to ensure that the administrative procedure takes place with due expedition. The Panel finds that the submission of further documents at that late stage of the proceedings should only be allowed in exceptional cases. Having briefly reviewed the Parties supplementary documents the Panel finds that they do not present any new facts of particular relevance to the case. The Panel thus finds that each Party has had a fair opportunity to present its case through the Complaint and the Response. The Panel therefore does not take into consideration the content of the Respondent's e-mail of August 17 and fax of August 24 or the content of the Complainants e-mail of August 21.
The Administrative Panel shall thus issue its Decision based on the Complaint, the Response, the e-mails exchanged, the Policy, the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
The Complainant Reuters is a leading international news and financial information services group. It is also said to be the largest international news and television agency in the world, serving both traditional and new media.
The Reuters® mark is registered in many countries throughout the world, including, but not limited to, the United States, the United Kingdom, Canada, Spain, France, Benelux, Denmark, Switzerland, Austria, Germany, Italy and the European Union. A schedule of Reuters’ trademark registrations and copies of the United States and United Kingdom registration certificates for the Reuters® mark were attached to the Complaint.
Reuters has recently expanded its products and services to offer mobile data services to the global wireless market under the Reuters® mark. Since 1998, Reuters also has offered mobile data services under the mark Reuters Mobile™, providing customers with remote access to real-time Reuters information and news via the Internet. The Reuters Mobile™ service is currently available in the United States, Canadian and Latin American mobile markets. A press release announcing Reuters’ introduction of Reuters Mobile™ in Latin America was attached to the Complaint. Reuters has plans to further expand Reuters Mobile™ into the European market.
The Reuters® mark has been used extensively on television and the Internet, in newspapers and in various other media. Complainant also has spent many millions of dollars annually on various types of advertising involving the Reuters® mark.
Complainant has an active presence on the Internet. The principal domain name currently registered and used by Complainant is reuters.com. Complainant registered reuters.com with NSI on June 3, 1993. Complainant also owns the domain names reuters.net and reuters.org.
The Respondent TeleTrust IPR Ltd. is a corporation duly organised and existing under the laws of Switzerland. According to the published information from the Companies Register of the Kanton Zug, the purpose of the company is to acquire and exploit intellectual property rights as well as to engage itself in the buying, renting and administering of real estate. The contested domain names were all registered on December 1, 1999.
5. Parties’ Contentions
The domain names used by Respondent are identical to the famous Reuters® and Reuters Mobile™ trademarks owned by Complainant. The Reuters® mark was both famous and distinctive at the time that Respondent registered the Infringing Domain Names.
Respondent has no rights or legitimate interests with respect to the Infringing Domain Names. There is no legitimate reason for Respondent to use the world-famous Reuters® mark in connection with its mobile data services. The only justification for Respondent’s intended use of the Infringing Domain Names is to unlawfully trade off the value and goodwill of the Reuters® mark. Moreover, the Infringing Domain Names bear no relationship to the business of Respondent.
The Infringing Domain Names have been registered and will be used in bad faith by Respondent. Respondent is a cybersquatter who is seeking to take advantage of the owner of a famous mark and to attract traffic to its own Web sites and services by improper use of a famous mark.
Respondent intends to use the Reuters® mark to drive visitors to its Web sites which will be used in connection with Respondent’s mobile data services. As such, its activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name because Respondent is attempting to generate commercial gain by creating confusion as to the affiliation of its mobile data services with the Reuters® mark.
Respondent also has exhibited a pattern of cybersquatting behavior pursuant to paragraph 4(b)(ii) of the Policy because Respondent registered the Infringing Domain Names in order to prevent Complainant from having access to and reflecting the mark in a corresponding domain name. Respondent has registered six variations of the Reuters® mark together with the word "mobile." These domain names are the obvious names Reuters would choose for a Web site about its Reuters Mobile™ service. As such, Respondent’s activities constitute bad faith registration and use of a domain name under paragraph 4(b)(ii) of the Policy.
Respondent has not used the Infringing Domain Names in connection with any legitimate offering of goods or services, has not been commonly known by the domain names, and has not made any non-commercial or fair use of the domain names.
The unlawful acts of Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of Complainant and, unless restrained, will cause further irreparable injury.
In accordance with the Policy, and for the reasons described above, Complainant requests that the contested domain names mobilereuters.com, mobilereuters.net, mobilereuters.org, reutersmobile.com, reutersmobile.net and reutersmobile.org be transferred to the Complainant.
In accordance with Article 4 (a) of the UDRP, Complainant should prove that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
The Complainant fails to prove that each of these three elements are present.
i) "Reutersmobile" and "mobilereuters" is not confusingly identical to the name "Reuters". Moreover, "reutersmobile" and "mobilereuters" respectively are not even registered as trademarks by the Complainant. Additionally, the service "Reuters Mobile" is not used by "Reuters" in Europe and not known in North or South America to the public.
The Respondent does not know that Reuters is one of the most famous marks. Reuters mark might be famous in the financial world or in the news service industries but that does not mean that everybody should know the Reuters mark.
It might be true that a service called "Reuters Mobile" exists, that this service is available in North and South America and that Reuters plans to further expand the service "Reuters Mobile" into Europe. That service might be known by insiders or in the "News Business" but is for sure not known for persons as the Respondent who has no special knowledge about that business and who has no possibilities to get information about Reuters’ business plans. The Complainant states that there were press releases announcing Reuters' introduction of "Reuters Mobile" in Latin America and that on Reuters’ Web page was described Reuters future plans for "Reuters Mobile", but the Respondent had no knowledge of this.
The given information proves only that the service "Reuters Mobile" is known by insiders with special access to such information. The Complainant does not prove the spread of "Reuters Mobile" into Europe and not even in Latin America.
Additionally, it seems that the mark "Reuters Mobile" is not even registered. The Respondent could not find in exhibit C of the Complaint a registered trademark named "Reuters Mobile".
It seems quite daring to allege that the public generally identifies Reuters as a company which is active in the news service and is distinguished from others and the services of others. This statement is in any way not relevant because the Complaint deals with the names "reutersmobile" and "mobilereuters" respectively and not with the name "Reuters".
Respondent did not need the authorisation of Reuters because "reutersmobile" and "mobilereuters" respectively are not registered marks and is not identical or confusingly similar to the name "Reuters".
The mark "Reuters wireless Services" is not relevant to this Administrative Proceeding because there is no connection between "Reuters wireless Services" and "reutersmobile" and "mobilereuters" respectively.
ii) Respondent’s legitimate interest is shown with the Respondent’s business idea of the localisation of cars and car drivers based on the new technology "Mobile Positioning System". There is in no way any connection to the information business in which Reuters is active. The only common ground between the intended services of Reuters and the intended Respondent’s service is the use of the mobile technology. And that can not be a ground for a domain name grabbing complaint. Otherwise, it would not be possible anymore to register any domain names.
The background of the idea of "reutersmobile" and "mobilereuters" is what follows:
"reutersmobile" is the abbreviation of the following German word which contains several parts:
The idea of this service is to locate a car and/or driver that are experiencing problems, for example if there has been a car accident. This service is based on the new function of Mobile Positioning Systems (MPS) related to WAP (Wireless Application Protocol) and to GSM (Global System for Mobile Communications).
This service is a business idea, which has to be developed. At the moment, the conversion of the idea to a service, which can be used, is in the initial phase.
Attached to the Response was a business plan showing that the Respondent’s intended service does not provide any information and is not used in the information business where the Complainant is active.
iii) Respondent has not registered and used "reutersmobile" and "mobilereuters" respectively in bad faith. Respondent has not, by the use of these domain names, the intention to attract, for commercial gain, Internet users to its web site. Moreover, a Web site has yet to be created. At least, the Respondent does not have the intention to sell, rent, or otherwise transfer the domain name registration to the Complainant.
Based on the potential use of "reutersmobile", it is not apparent how the Respondent should profit from the goodwill of "Reuters" mark. On the one hand, "Reuters Mobile" is not known and therefore, customers of Reuters seek for the name "Reuters" and not "Reuters Mobile" in the Internet world and on the other hand, the business between Respondent and Complainant is completely different.
This Administrative Proceeding does not deal with the name "Reuters" but with "reutersmobile". "Reutersmobile" was neither famous nor distinctive at the time the Respondent registered "reutersmobile". "Reuters Mobile" is not even a registered trademark and the service is not even offered in Europe. Moreover, even Reuters is not so famous, the name "Reuters" is known to the public at large. It might be true that "Reuters" is known in the information business but the Respondent is not able to confirm this because he does not know it.
The Complainant claims bad faith but he can not prove it. At this time, the domain name is not even in use. The Respondent does not the intention to generate commercial gain based to the name Reuters. That is not possible because the domain name is "reutersmobile" and not "Reuters". Moreover, the Respondent did not know that the name "Reuters Mobile" existed. Further, the proceeding deals with "reutersmobile" and not "Reuters". Visitors of the Internet do not know "reutersmobile" and will seek information under the name "Reuters". Therefore, there can not be any confusion to a visitor.
In the business world it is common to register all kinds of domain names to prevent similar names being registered by third parties. It is not understandable why the Respondent should not act as other member of the business world, and as Reuters does as well.
The Respondent requests that the Administrative Panel reject the request to transfer "reutersmobile.com", "reutersmobile.net" and "reutersmobile.org" and "mobilereuters.com", mobilereuters.net" and "mobilereuters.org" respectively to the Complainant.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
1) Similarity with Complainants rights
Complainant is the holder of several registrations of the trademark Reuters world-wide, including in the Respondents’ country of residence, Switzerland. The Complainant has also used the mark Reuters Mobile in North and South America but has not demonstrated that they have any registered rights to said mark.
On the other hand, the Panel recognises that the mark Reuters has been extensively used for many years and that it must be considered to be a well-known mark.
The Panel remarks that for the purpose of deciding this dispute it is irrelevant under which gTLD the domain name is registered. Further, for the assessment of similarity between the domain names and Complainants’ rights it is significant whether the mark is <reutersmobile> or <mobilereuters>. Consequently all the disputed domain names will be treated on equal footing.
The distinctive part of the disputed domain names is the word "reuters". In relation to the services offered by the Complainant as well as to the services for which the Respondent allegedly intends to use the names, the word "mobile" must thus be considered non-distinctive. It should be noted that at present the Respondent does not offer any services under the domain names. The corresponding web sites are all without content and are simply hosted by the Registrar.
Based on these assertions, it is the view of the Panel that all the domain names must be considered confusingly similar to the well-known mark Reuters, cf. Case D2000-0034 <worldcup2002.com et al>, Case D2000-0670 <ereuters.com> and several others.
The provision in Article 4, (a), (i) is thus fulfilled.
2) Respondents legitimate interests
Respondent has not demonstrated to have any registered rights or rights acquired through use to the sign <reutersmobile> or <mobilereuters>.
The Respondent has furnished an exhibit showing the business plan for the service that is apparently intended to be marketed under the domain names. The business plan is not dated and no concrete evidence as to the content of the service has been put forward before the Panel. The Panel also notes that the service described in the Business Plan is of a nature that is not within the registered purpose of the company.
Respondent claims that the domain names were chosen, since it is a contraction of the words
The Panel finds it difficult to be convinced by this explanation. First, the proposed combination of words can not be considered a natural combination of words in German. Neither from a grammatical point of view, nor from a conceptual point of view, the combination gives any particular meaning. Second, the Panel notes that even if the combination of words could be accepted as a description of the service in question, a more natural acronym for the combination of words would be RUTESMOBILE. Third, the Respondent has not made any showing why the syllable "Reuters" which inevitably will be associated and confused with Complainants well-known trademark should be used in connection with its proposed business.
Under these circumstances the Panel finds that the Respondent has not demonstrated legitimate interests in respect of any of the domain names, cf. Article 4 (a), (ii) and 4 (c) of the UDRP.
3) Bad faith
The third element is that the domain name has been registered and is used in bad faith cf. Article 4 (a), (iii) and 4 (b).
The mark Reuters must be considered to be a well-known mark, which is registered and is used in many countries around the world including in the Respondents country of residence, Switzerland. It seems unbelievable that the Respondent has had no knowledge of the mark.
Reuters is usedfor a wide range of information and news services in different media including the Internet where Reuters has been present for many years. Most often only the mark itself, i.e. Reuters, is used, but the Complainant has demonstrated that Reuters is also used in combination with other elements. It is undisputed that the Complainant in 1998 issued a press release describing the new service Reuters Mobile and that this was posted on its web-site. The Respondent denies having knowledge of this release and also denies having received other information of this particular service. No evidence has been put before the Panel that shows the contrary. The Panel does however note that the Complainant registered all the domain names after the announcement of the new services.
However, the important factor is not whether the Respondent has had actual knowledge of the name of this particular service but the fact that the disputed domain names are confusingly similar to the mark Reuters, or create a likelihood of confusion with this mark. The Panel finds that it is unbelievable that the Respondent had no knowledge of the Reuters mark, and the Panel finds that not only must he have had the Complainant’s mark in mind when he registered the domain names but that he must also have been aware of the deception and confusion that would inevitably follow if he used them in relation to his business.
Consequently, the Panel finds that the domain names have been registered in bad faith.
It is further required that the domain names are being used in bad faith.
Article 4 (b) of the UDRP gives a non-exclusive list of factors that can be considered as evidence of bad faith.
There is no evidence that the Respondent has tried to sell the domain names to the Complainant. Neither has the Respondent yet used the domain names actively to offer any services.
On the other hand the Panel finds that by registering the 6 (six) domain names the Respondent has effectively prevented the Complainant from reflecting the name of their new service, which incorporates as a natural element their distinctive and well-known mark, in the corresponding domain names, cf. Article 4 (b), (ii). The Panel notes in this context that in many jurisdictions the mere warehousing of domain names that contains the well- known trademark of others is considered a trademark infringement and thus is believed to be use in the course of trade.
As stated above, the Panel also finds that the threatened use of the domain names by the Respondent inevitably (and to the Respondent’s knowledge) will lead people to believe that the Respondent and the Respondents site was in some way associated with the Complainant. For this purpose threatened use is equivalent to actual use.
The Panel observes in this context of bad faith that the Respondent’s explanation for the supposed acronym REUTERS involves first stringing together an unnatural combination of words and then selecting a peculiar selection of initials, not all of them being the initial letters of the selected words.
The conditions set out in Article 4 (a), (iii) are thus also met.
In conclusion the Panel finds that all the conditions set out in Article 4 (a) of the UDRP are fulfilled.
In view of the above circumstances and facts the Panel decides, that the domain names registered by Respondent are confusingly similar to the trademark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain names has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain names:
be transferred to the Complainant.
Tony Willoughby Bernhard Meyer-Hauser
Dated: September 8 2000
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