xfm.com

WIPO Arbitration and Mediation Center

The complainant is XFM Limited, a limited liability company incorporated in England whose registered office is at 30 Leicester Square, London WC2H 7LA, UK; a subsidiary of Capital Radio Plc, a public company whose registered office is at the same address.

The respondent is Intervid Limited whose addresses are 1 Maltravers Street, London WC2R 3EX, UK, 10 Maltravers Street, London WC2R 3EX, UK, and Conduit House, 24 Conduit Place, London W2 1 EP, UK.

The domain name, the subject of this dispute is "xfm.com".

It was first registered on 10 February 1996.

The registrar of the domain name is Network Solutions Inc, of Herndon, Virginia, USA ("the Registrar").

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on October 2, 2000, and in hardcopy on October 4, 2000. Payment in the required amount to the Center has been made by the complainant.

On October 4, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.

On October 4, 2000, WIPO received a verification response from the Registrar.

On November 13, 2000, a response to the complaint was received by WIPO.

On November 17, 2000, WIPO received from the respondent an objection to the complainant filing further submissions.

On November 17, 2000, WIPO received from the respondent its reply to the complainant’s further submissions.

On November 27, 2000, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the complainant and the respondent. In accordance with the complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott. Because of the Christmas vacation the decision was delayed, being delivered in late January 2001.

The complainant was incorporated as a company on December 18, 1991. Since 1993, the complainant has broadcast a radio station on 104.9fm in the London area under the name XFM. In January 1998, the complainant was granted an official FM license in the UK. The broadcast under the name XFM can also be accessed by streaming over the Internet through "xfm.co.uk" and on digital radio through Sky Digital.

The complainant has registered the trade mark XFM and Xfn (stylized) in the UK (February 27, 1997), and Xfm (stylised) in the EC (March 20, 1997), in a variety of classes.

It appears the respondent is a business involved in the provision of market research and Internet related services. None of these services seem to have been rendered in relation to the XFM name.

The respondent is currently in the process of a creditor’s voluntary liquidation. An annual return indicates that Nicholas Rosen is a shareholder of the respondent.

The complainant asserts that it owns the XFM name by virtue of its trademark registrations and has acquired reputation and goodwill in the name XFM since 1993, by its early use, as evidenced in British press articles in 1993, 1994 and 1996. It organized and promoted a music concert in London’s Finsbury Park on June 13, 1993, and subsequently released a compact disc of that concert under the title "Great Xpectations". It also advertises extensively on the London underground.

The complainant has a web site using its XFM trademark at "xfm.co.uk"

The complaint asserts that the respondent owns the domain name intervid.co.uk with web site links to online-agency.com, a business involved in the provision of market research services. The registrant of online-agency.com is Internet Daily Planet Limited (now called The Online Research Agency Limited), a company of which Nicholas Rosen is a director. These web sites have no connection with the name XFM.

The complainant says that given that XFM has been used by the complainant since 1993, and the complainant had been incorporated under the name XFM Limited since 1991, the respondent in 1996, must or ought reasonably to have known or should have known that a third party had rights in the name XFM. Alternatively, it is said that it ought reasonably to have made all reasonable enquiries and searches prior to registration of the domain name.

The complainant has not licensed or otherwise permitted or authorized the respondent to use its trademarks or to apply for any domain name incorporating such marks.

The domain name was registered on February 10, 1996; over 4 ˝ years ago. It is asserted that the domain name xfm.com is not being hosted and there is no indication of any future positive use of the domain name by the respondent in connection with an XFM branded business or non-commercial organization.

The respondent in turn asserts the complainant has not provided evidence indicating that the letter "X" when combined with a generic indication of an FM radio station is solely and exclusively indicative of the complainant’s services.

The respondent says the letters "XFM", also in stylized form, are used by an Irish, Portuguese, Canadian and Norwegian radio station and others and there is no reason for the complainant to have a distinctive and exclusive claim to use of the letter "X" in association with the designation for an FM radio station.

The respondent asserts that because the complainant operates in the UK, registration of the complainant as "xfm.com" would cause confusion with other radio stations that employ domain names in their own country-code top level domains.

It is also said that the complainant enjoys registration of "xfm.co.uk", registered later than the domain name at issue here, and at a time when the complainant would have been on notice of the prior registration of "xfm.com".

The respondent asserts that the complainant has misrepresented its business activities when it claims to have accrued rights to the "XFM" mark since it began broadcasting in 1993. That is, on the basis that the complainant did not obtain a full broadcast license until January 1997.

It is argued by the respondent that in a Music Week "promotional feature" dated November 1996, the article establishes that the complainant was not using the claimed mark "XFM" in association with any goods or services at that time, although it may have had an "aim" or plan to broadcast in the future. On this basis it is asserted that whether the complainant would obtain a broadcast license was merely speculative.

Paragraph 4(a) of the policy requires that the complainant must prove each of the following:

(i) The domain names are identical or confusingly similar to the trade mark; and

(ii) The respondent has no right or legitimate interest in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.

The domain name, which is the subject of this complaint, is identical to the name and trademark in which the complainant claims to have rights. It appears that the domain name was registered 5 years after the complainant was incorporated and 3 years after the complainant commenced trading using the XFM name.

The mere fact that other radio stations use the name XFM does not mean that the complainant cannot claim rights in the XFM name, at least in the United Kingdom, where it seems to be the only entity using the XFM designation.

This ground is made out.

Timing is important on this issue. The respondent registered the domain name on February 10, 1996. The XFM trademark was first registered by the complainant a year later, on February 27, 1997. The question of right or legitimate interest needs to be addressed as at February 10, 1996. The complainant had, at that time, no protectable trade mark rights, through registration, even if such rights might now exist.

The complainant had however been operating a limited low power radio station since 1993 and as at 1996, the substantial Music Week feature indicated that the company had a clear following and was among the favorites to clinch the last London FM broadcasting license. It also seemed that the complainant company had major plans for the radio station as an alternative rock station.

The question is whether, as at February 1996, it was legitimate for the respondent to have registered XFM as a domain name. The following factors are relevant:

• XFM seems to be a reasonably popular name for radio stations in a variety of countries (but all outside the UK);

• In 1996, the XFM name seems to have recognition in the London area, through the activities of the complainant;

• The complainant’s plans for the future were publicly known and the expected future importance of the XFM designation was public knowledge, it seems, at least to those in the music business in London;

• The respondent and/or Mr. Rosen seems to be in the domain name registration business. However, the vast majority of the names registered seem to fall into the generic/descriptive category – rather than the names of well-known businesses;

• The respondent seems to operate a legitimate Internet related business;

• The parties are in different industries; and

• There is no satisfactory evidence (other than allegation, which is in turn denied) that the respondent offered to sell the domain name to the complainant.

For reasons apparent below I form no view on whether this ground has been made out, other than to say that the above factors do, to a large extent, balance each other out.

Both elements of this ground need to be established.

The complainant submits that any relevant business conducted by the respondent would amount to an infringement of its trade mark rights. It also submits that the lack of use of the domain name since it was registered is, in accordance with the principles of Case D2000-0003 (the Telstra case), sufficient to constitute bad faith registration and bad faith use of the domain name.

The respondent claims it intends to use the domain name in relation to multimedia services. These services are said to be unrelated to radio broadcasting and to be in particular to a service to be known as "Xtreme For Men". It also claims to have registered its various domain names for its clients who may wish to use terms for their on-line services.

I accept the principle enunciated in the Telstra decision that passive holding of a domain name can amount to evidence of bad faith. However, in that case Telstra was found to be a newly coined word in which strong rights existed. The respondent in that case had proffered no explanation as to why Telstra had been adopted and there was no evidence of any actual or contemplated good faith use.

In the present case the name XFM is used by others, it is not newly coined as such and the respondent has proffered an explanation as to why it was chosen.

The respondent argues that it was not possible for the domain name to have been registered in bad faith, as at the time of registration the complainant had no trade mark registrations and was not in operation as a broadcaster. This would not in itself be a bar to relief. The respondent also notes that the complainant has provided no evidence that the domain name was registered primarily for sale to the complainant. Finally it is submitted that the complainant has delayed and acquiesced in waiting so long to raise its complaint. While these factors are far from pivotal they do inform the panel, in a case that is finely balanced and difficult to decide.

While the respondent’s explanation that it is planning to offer a service in the future - "Xtreme For Men", seems somewhat contrived, there is no way, in this forum, that that proposition can be disproved. Had the balance been strongly or even more markedly in favor of the complainant at this point, this issue may have been sufficient to tip the scales against the respondent. However, in the Panel’s view that is not the case and it is felt that the respondent is entitled to the benefit of the doubt.

As indicated above, this question of where to draw the line in this case is a difficult one. At the end of the day, the onus lies on the complainant and, on careful consideration, it is felt that it has not done quite enough to shift that onus.

In view of the above, the claim for relief is denied.

Clive Elliott
Panelist

Dated: January 22, 2001