womad.com

WIPO Arbitration and Mediation Center

The Complainant is Real World Holdings Limited, a Company incorporated in England and Wales which has its registered office at Mills Lane, Box, Corsham, Wiltshire. It is represented by Mr. Michael Thomas of Sheridans, Solicitors, London, UK.

The Respondent is Global Media Resources SA of PO Box N4825, Nassau, NS, Bahamas. The Supplier however is based in Toronto, Ontario, Canada. The Respondent is represented by Michelle Wassenaar of Dimock Stratton Clarizio LLP, Barristers & Solicitors, Toronto, Ontario, Canada.

The domain name at issue is "womad.com". The domain name is registered with the Internet Council of Registrars ("CORE"), World Trade Centre II, 29, Route Pre-Bois, Ch-1215, Geneve, Switzerland.

The Complaint submitted by Real World Holdings Limited was received on July 21, 2000, (electronic version) and July 25, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

Following clarification that the Complainant had notified the wrong Registrar, on August 24, 2000, a request for Registrar verification was transmitted by the WIPO Center to CORE, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with CORE.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

Indicate the current status of the domain name.

By email dated August 24, 2000, the Registrar advised WIPO Center as follows:

CORE had not received the Complaint sent by the Complainant.

CORE is the Registrar of the domain name registration "womad.com".

The Respondent is shown as the "current registrant" of the domain name "womad.com". The Registrant’s contact details are as above.

The administrative and billing contact is: COCO-116428.

The technical and zone contact is: COCO-116429.

The Uniform Name Dispute Resolution Policy has been in place since December 1, 1999.

The domain name registration "womad.com" is in "Active" status.

CORE has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from CORE that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with CORE. Accordingly, the Respondent is bound by the provisions of CORE’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on August 31, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 19, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent has submitted a Response to the Complaint which was acknowledged by the WIPO Center on October 9 2000.

On October 25, 2000, the WIPO Center invited Andrew Brown, Barrister, of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On October 25, 2000, Andrew Brown advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On October 27, 2000, WIPO Center forwarded to Andrew Brown by email and hard copy the relevant submissions and the record. The electronic copy of the file was received by him on or about October 27, 2000. The Panel subsequently received a hard copy of the file by courier mail from WIPO Center. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by November 9, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

Details of the Complainant and Respondent are provided in the Complaint and Reply (which the Panelist has agreed to receive and consider).

The Complainant is a company which is controlled by the musician, Mr. Peter Gabriel. The Complainant is the registered proprietor of the trademark WOMAD in Canada and the US with effect from dates in 1996 and in the European Community with effect from July 1998 (classes 9, 16, 25 and 41).

The Complainant states that WOMAD stands for World of Music Arts & Dance and that WOMAD exists to bring together and to celebrate these three different art forms drawn from countries and cultures around the world. The first WOMAD festival was in 1982 and since then WOMAD has presented more than 90 events in 20 different countries and islands. A number of WOMAD events are scheduled to take place in the remainder of 2000.

The Respondent is a supplier and developer of internet content and websites based in Toronto, Canada. The Respondent states that the content developed by it is wide ranging and includes two websites devoted to womens interests – a fortune telling site called psychicrealm.com (in existence for two years) and womenstoplist.com (in existence for five months). The Respondent also offers adult entertainment material for websites and these are showcased on its website pythonvideo.com. This contains adult and gay photographic and video material available for use on websites.

A. The Complainant

The Complainant notes that its registered trade marks for WOMAD were all registered before December 24, 1998 when the domain name "womad.com" was registered. The Complaint alleges that the Respondent has no sanction from or involvement with any WOMAD project and has no rights to use of the name.

There is no site operating at "womad.com". The Complainant submits that bearing in mind its registered trade marks and substantial public awareness of WOMAD, that the domain name was registered in bad faith – either with a view to selling it to the Complainant or at some time in the future to developing the site of the domain name to misleadingly divert customers. It is also claimed that there may be a detrimental effect on the Complainant’s business where any individual or organisation wrongly assumes a connection between the adult entertainment site pythonvideo.com and the Complainant’s business.

B. The Respondent

The Respondent states that "it intends to continue developing content for its websites and has registered "womad.com" as a future site name for a website devoted to women in advertising. The domain name "womad.com" was coined from the words "women" (‘wom’) and "advertising" (‘ad’). "The development work on this site is still at an early stage."

The Respondent states that there has been no linkage between its adult entertainment websites (there are more than one) and the domain name "womad.com". It claims that it does not sell domain names and has never offered "womad.com" to the Complainant or anyone else.

The Respondent strongly challenges the Complaint in the following respects:

(a) that another company, Womad UK Limited, has a registered trade mark for WOMAD in the US and registered trade marks for the same mark in the UK (three lapsed and one registered). Further the Complainant has failed to show that it has validly established rights in the WOMAD trade mark;

(b) that the Respondent has a legitimate purpose in registering "womad.com". The website is part of its corporate strategy and has appeal in that it suggests women in advertising in an e-business format;

(c) that although the Complaint alleges bad faith, it has not advanced any evidence of bad faith use. Further, that the Complainant and Respondent are not competitors and the domain name was not an attempt to attract internet users to the Respondent’s website or to create a likelihood of confusion with the Complainant’s mark.

C. Replies

Both the Complainant and Respondent have filed replies. The Panel has ruled to consider both of these.

The Complainant states in reply that as to trade marks for WOMAD, Peter Gabriel controlled both it and Womad UK Limited (now in voluntary liquidation) and that the trade marks held by Womad UK Limited are being transferred to it.

As to bad faith, the Complainant relies on the principle that bad faith can be shown through inactivity on the part of a respondent. Here the Respondent has only suggested the use of the domain name when prompted to do so by the Complaint. But this use is not supported by any evidence. Nor is the site in use.

The Respondent distinguishes those cases relied on by the Complainant on the basis that in each of them the Complainant tried to contact the Respondent without success or any satisfactory response. Here the Complainant never attempted to contact the Respondent to determine its good faith. The Respondent also claims to be an active and professional creator of original content for websites and objects to any characterisation of it as a "cybersquatter".

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(i) 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

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used by the Respondent in bad faith.

Identical or Confusingly Similar to Trademark

The Panel finds that the Complainant does have registered trade marks for WOMAD and has demonstrated sufficient rights in that trade mark. The domain name "womad.com" is identical to the trademark WOMAD. This point is conceded by the Respondent (para 11 of the Response).

The Respondent’s claim is that the domain name was coined from the words "women in advertising". On balance, the Panelist finds that the Respondent has no rights or legitimate interest in respect of this domain name. The reasons for this are:

- That WOMAD is a distinctive and invented name with substantial recognition. It was first used in 1982 and has been in significant use across a number of countries around the world since that date.

- The Respondent appears to have been aware of the existence of the WOMAD trade mark. In its response (para 9) the Respondent states that it "did not register <womad> and other top level domains or in any way seek to monopolise the word WOMAD". Further in para 11, the Respondent "concedes" that the Complainant is associated with the "Womad festivals organised around the world".

- Although the Respondent claims that "womad" is a short and distinctive name and that abbreviations have a significant business advantage, in fact this choice of domain name was made against an apparent awareness of the Complainant’s existing use of the WOMAD trade mark. The Respondent has not put forward any evidence of previous use of the mark or any demonstrable preparations to use this name in connection with the bona fide offering of goods or services.

Paragraph 4(b) of the ICANN Policy outlines four separate circumstances which may be taken as evidence of the registration and use of a domain name in bad faith. However, the Policy expressly states that this is non-exhaustive.

None of the four grounds provided in Paragraph 4(b) apply in this case.

- there is no evidence that the Respondent acquired the domain name primarily for the purposes of selling, renting or transferring it to the Complainant. The Complainant did not provide any evidence to support its claim that the domain name was registered by the Respondent with a view to selling it to the Complainant. The domain name was registered in December 1998. There has been absolutely no contact between the Complainant and Respondent since that time (except for the service of this Complaint).

- there is no evidence of a pattern of conduct by the Respondent in registering domain names to prevent owners of service or trade marks reflecting these in a corresponding domain name.

- there is no evidence that the domain name was registered primarily for the purposes of disrupting the business of a competitor. The Respondent and Complainant are not competitors.

- there is no evidence of any use of the domain name to attract internet users to the website for commercial gain either now or in the future. The website is not in use – although the registration has been in place for almost two years.

The ICANN Policy was developed to cover situations of overt cybersquatting and it is important to bear this in mind. No evidence has been put forward by the Complainant to show registration and use in bad faith. In its Reply, the Complainant strongly claimed that the Respondent had only suggested a use of the domain name when prompted to do so by the Complaint and that this was not supported by any evidence other than the Respondent’s submission. However, the Complaint was the first time that the Respondent was aware of any issue over the domain name. There was simply no contact made by the Complainant at any earlier stage and no occasion for it to explain the registration. Therefore, the Panelist cannot draw the adverse inference requested by the Complainant. In addition, it must be noted that the Respondent operates in a field of services quite unconnected with the Complainant.

The Panel is, therefore, unable to find that the domain name was registered in bad faith. The Complainant fails to satisfy the requirement of paragraph 4(a)(iii) of the Policy.

Despite this finding based on the Policy, it may well be that if and when the domain name is ever used by the Respondent, the Complainant will have rights to bring proceedings based on its well-known registered trade mark WOMAD or on its reputation in that mark.

The Panel finds it unnecessary to refer in any depth to principles of law. However, reference is made to the decision in Case No D2000-0704 Dow Jones & Company, Inc v The Hephzibah Intro-Net Project Limited on the issue of bad faith.

For the foregoing reasons the Complaint is therefore denied and transfer of the domain name "womad.com" is refused.

Andrew Brown
Presiding Panelist

Dated: November 2, 2000