John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray
Case No. D2000-1403
1. The Parties
The Complainant in this administrative proceeding is John Fairfax Publications Pty Ltd, an Australian corporation with a principal place of business in Sydney, NSW, Australia.
The Complainant is represented by Ms. Gail Hambly, its General Counsel.
The Respondents are Domain Names 4U of 30 Manchester Square, Portsmouth, NH, United States of America and Fred Gray of Rockycoast Sportswear, Rockycoast Printworks Inc., 6 Sumner Drive, Dover, NH, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is "financialreview.com".
The domain name is registered with Network Solutions Inc. ("NSI"), of Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was submitted electronically on October 23, 2000, and by hard copy on October 17, 2000, by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On October 20, 2000, a request for Registrar verification was transmitted by WIPO Center to NSI requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain name at issue is registered with the Registrar.
Confirm that the Respondents are the current registrants 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 is applicable to the domain name at issue.
Indicate the current status of the domain name.
By email dated October 25, 2000, NSI advised the WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the disputed domain name registration.
The Respondent, Domain Names 4U, is the current registrant with NSI of the said domain name. Fred Gray is the administrative and billing contact for the domain name. He advised the Complainant that he owns the disputed domain name.
NSI’s 5.0 Service Agreement is in effect.
The disputed domain name registration is in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active," neither Respondent has requested that the domain name at issue be deleted from the domain name database, nor sought to terminate the agreement with NSI. Accordingly, the Respondents are bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on October 26, 2000, transmitted by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to both Respondents. A copy of the notification of Complaint and Commencement of Administrative Proceedings was also emailed to NSI and ICANN.
The Respondents were advised that a Response to the Complaint was required within 20 calendar days (i.e., by November 15, 2000). They were also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondents sought an extension of time which was granted by the WIPO Center. The Respondents filed a Response by email on November 15, 2000, and by hard copy on November 17, 2000.
The Complainant elected to have the Complaint resolved by a 3-member Panel. The Complainant has duly paid the amount required to the WIPO Center.
On November 30, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It had earlier invited Dr. Richard Hill of Geneva, Switzerland, and Dr. Andrew Christie, presently of Toronto, Canada, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised their acceptance and forwarded to WIPO Center their statements of impartiality and independence. On November 30, 2000, the Complainant and the Respondents were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On November 30, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. The Panel is to forward its decision by December 14, 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 for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is the owner of the following registered trademarks in Australia:
Mark
Class
Goods/Services
Registration
Number
Date
The Financial Review
16
Newspapers
243143
14/10/1970
The Financial Review
38
Provision of newspapers and current information by means of electronic communications networks including the Internet.
727706
12/02/1997
A copy of the renewal certificate for the Class 16 trademark and a copy of the registration certificate for the Class 38 trademark were annexed to the Complaint.
The Complainant is also the owner of six other registrations containing the words "Financial Review" as described in Annex 6 to the Complaint.
The Complainant is the publisher of the newspaper The Australian Financial Review ("the Newspaper"). The Newspaper’s current circulation is 94,500 per day. The Complainant has published the Newspaper since August, 1951. It is published daily, Monday to Saturday. As well as being distributed in Australia, copies of the Newspaper may be purchased in other countries via the "PressPoint" service. "PressPoint" is a service operated by Press Point Inc. and allows the main editorial pages of a newspaper to be provided to PressPoint and made available to purchasers in the United States of America, the United Kingdom, Brazil, Hong Kong, Canada and Russia.
In addition, articles from the Newspaper are purchased electronically around the world by customers of Reuters Limited and by customers of Dow Jones Interactive’s "Factiva" online information service.
Advertising space in the Newspaper is marketed and sold to advertisers in the United Kingdom, the United States of America, Hong Kong, Singapore and New Zealand.
The Complainant is the publisher of the electronic version of the Newspaper, published at "www.afr.com.au". This site has been established since 1995. On this site the Complainant currently publishes, Monday to Saturday, approximately 30% of the content of the Newspaper, together with a wire news service which is updated at regular intervals each day, under the trademark "Financial Review". In July, 1999, this site received 3 million page impressions from 158,000 visitors.
The Complainant promotes the trademark "Financial Review" through sponsorship opportunities, advertising and merchandise sales.
The Complainant intends to relaunch the online version of the Newspaper. The Complainant wishes this site to be the premier source of online business and financial information in the Asia-Pacific region. The relaunched site will include up to 100% of the content of the Newspaper together with news generated by a dedicated team of reporters and information tools and functionality designed to assist individuals and business professionals. The Complainant will continue to use the trademark "Financial Review" as the name of this site. The Complainant wishes to use the domain name as the domain name for this site as opposed to "afr.com", to keep the branding consistent and to remove any conceptions that the website is aimed only at Australian Internet users.
The Complainant has not licensed or otherwise permitted the Respondents to use any of the Complainant’s trademarks, nor has it licensed or otherwise permitted the Respondents to apply for or use any domain name incorporating any of those marks.
A search of the online Trademarks database at the USA Patent Office does not show that the Respondents own any registered trademarks in the USA comprising of or including the words "Financial Review.
The Respondents do not appear to carry out a business using the domain name or the mark "Financial Review". The domain name does not resolve to a website or other online presence. The domain name is not being used by the Respondents or by any third party as a uniform resource locator.
A search conducted on yellowpages.com on October 6, 2000, for a business with the name "Financial Review" in New Hampshire, U.S.A., the location of the Respondents, was recorded as Annex 10 to the Complaint. This search did not reveal any listing for a business with the name Financial Review.
The domain name is advertised for sale "at www.netname.net" and has been for some time. The advertisement invites "offers" to be emailed to [email protected]. This is also the email address given as the contact details for the domain name registration as shown on the WHOIS database at "www.networksolutions.com" referred to above.
Prior to the issuing of this Complaint, the Complainant wrote to the first Respondent, in response to the advertisement appearing on www.netname.net offering the domain name for sale. The second Respondent refused to transfer the domain name to the Complainant. The second Respondent advised that the domain name is owned by him and would be developed by him. However, the name has remained for sale on "www.netname.net" as shown in Annex 11 to the Complaint.
The first Respondent is the registered owner of other domain name registrations offered for sale at www.netname.net. Examples of these advertisements dated October 6, 2000, and copies of some searches in the WHOIS database at www.networksolutions.com of these domain names dated October 6, 2000, show the first Respondent to be the registrant of those domain names: see Annex 14 to the Complaint. The email address for contact given in these advertisements is "[email protected]", the email contact given in the WHOIS database listing for the domain name. These advertisements and the advertisement offering the domain name for sale do not specify a sale price. All invite "offers".
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s registered trademark "The Financial Review" and (it appears) its unregistered trademark "Financial Review"; that neither Respondent can prove any legitimate interest or rights in the domain name in issue; and that the facts establish that the Respondents (or one of them) registered and use the domain name in bad faith.
The Respondents submit in summary:
(a) The domain name is not identical to either the registered trademark "The Financial Review" or (by implication) the unregistered trademark "Financial Review", which is a generic term.
(b) The domain name "thefinancialreview.com" is available for registration by the Complainant.
(c) The Respondents have held the disputed domain name for 3 years and it was secured solely for future commercial application.
(d) They have not acted in bad faith.
6. Discussion and Findings
The Panel has carefully weighed the evidence presented and determines on the balance of probabilities that the Complainant has not established all of the elements required under paragraph 4(a) of the Policy against the Respondents.
The Complainant alleges that the domain name is identical to its marks. This is not the case with its registered marks because those marks are "The Financial Review", while the domain name is "financialreview.com", without the "the". However, this difference would not be fatal to its case if the Panel were to hold that the domain name is confusingly similar to trademarks.
The Complainant does not argue this point nor present evidence to that effect. While there can be no doubt that the definite article does not affect the confusion created by the words "financial review" in both mark and domain name, the Panel is divided on whether the fact that the Complainant has only Australian marks is determinant. It is not in dispute that the geographical location of the mark is irrelevant with respect to the rights accorded to the mark under the Policy. However, a minority of the Panel believes that a ".com" domain name does not necessarily create confusion with a non-US trademark: it may or may not create confusion, depending on the circumstances. Since the Complainant has presented neither arguments nor evidence showing confusion, a minority of the Panel holds that the Complaint should fail on this point. By a majority opinion, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s registered marks. It is also identical to the Complainant’s common law mark. The domain name therefore comes within paragraph 4(a)(i) of the Policy.
A majority of the Panel, however, does not consider that the Complainant has proved that the Respondents have no legitimate interest in the domain name. The first Respondent is clearly a dealer in generic domain names. There is no evidence that the Respondents, in New Hampshire, knew or ought to have known about a financial newspaper in Australia.
As stated in WIPO Case No. D2000-0638 ("manchesterairport.com"):
"Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest."
Since registering generic names, even with the intent to resell them, is a legitimate business activity, a majority of the Panel holds that the Respondents have a legitimate interest in the contested domain name. A minority of the Panel considers that the Complainant has discharged the onus of showing that the Respondents have no legitimate interest in the domain name because the Respondents are not operating any business under the disputed domain name.
The minority view is that the Respondents have not established any legitimate use of the domain name. The Respondents’ statement that the name is required "solely for future commercial application" is unsubstantiated and is without any of the indicia of commercial use, such as a business plan.
Clause 4(b)(I) of the ICANN Policy states that the following shall be evidence of the registration and use of a domain name in bad faith:
"Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." [emphasis added]
The Complainant has not argued, much less provided evidence, that the Respondents registered the domain name specifically for the purpose of selling it to the Complainant or to a competitor of the Complainant. In fact, it would appear unlikely that the Respondents were aware (before the Complaint was filed) that an Australian organization had a registered trademark or a common law mark in what would appear to be a generic term.
For the same reason, the Panel holds that bad faith registration cannot be assumed. The situation is similar to WIPO Case No. D2000-0527 VZ VermögensZentrum AG v. Anything.com, where the marks of a financial services company in Switzerland and Germany would not have been known to a domain name registrant in the Cayman Islands. Bad faith use might be presumed from the lack of development of the website and the Respondents’ attitude to the Complainant’s "cease and desist" letter. However, those circumstances are not sufficient for an inference of bad faith registration to be made.
7. Decision
(a) The Panel, by a majority, considers that the disputed domain name is confusingly similar to the Complainant’s registered marks and identical to the Complainant’s common law mark.
(b) The Panel, by a majority, considers that the Complainant has failed to establish that the Respondents have no legitimate interest in the disputed domain name.
(c) The Panel unanimously considers that the Complainant has failed to prove that the Respondents registered the disputed domain name in bad faith.
(d) Accordingly, the Panel refuses to order the transfer to the Complainant, or the cancellation, of the domain name "financialreview.com".
Hon. Sir Ian Barker QC
Presiding Panelist
Andrew Christie Dr. Richard Hill
Panelists
Dated: December 13, 2000
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