Jupitermedia Corporation and Australia.Internet.com Pty Ltd v. Spotpress
Pty Ltd. trading as Internet Printing
Case No. DAU2003-0005
1. The Parties
The Complainants are Jupitermedia Corporation, Darien, Connecticut, United
States of America, and Australia.Internet.com Pty Ltd, Sydney, New South Wales,
Australia, represented by Callinan Lawrie, Australia.
The Respondent is Spotpress Pty Ltd. trading as Internet Printing, Marrickville,
New South Wales, Australia, represented by Tress Cocks & Maddox, Australia.
2. The Domain Name and Registrar
The disputed domain name <internet.com.au> (hereafter the "domain
name") is registered with Melbourne IT trading as Internet Name Worldwide
(hereafter "Melbourne IT").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
"Center") on November 7, 2003. On November 7, 2003,
the Center transmitted by email to Melbourne IT a request for registrar verification
in connection with the domain name at issue. On November 11, 2003,
Melbourne IT transmitted by email to the Center its verification response confirming
that the Respondent is listed as the registrant and providing the contact details
for the administrative, billing, and technical contact. In response to a notification
by the Center that the Complaint was administratively deficient as regards minor
technical requirements in the naming of potential panelists, the Complainant
filed an amendment to the Complaint on November 12, 2003, rectifying
the defects. The Center verified that the Complaint together with the amendment
to the Complaint satisfied the formal requirements of the .au Dispute Resolution
Policy (the "Policy"), the Rules for .au Dispute Resolution Policy
(the "Rules"), and the WIPO Supplemental Rules for .au 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 November 14, 2003.
In accordance with the Rules, paragraph 5(a), the due date for filing a Response
was set at December 4, 2003. The Response was filed with the Center
December 4, 2003.
The Center appointed Dan Hunter, John Swinson and Philip N. Argy as panelists
in this matter on December 18, 2003. The Panel finds that it was properly
constituted. Each member of 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.
On December 23, 2003, the Complainant made a Supplemental Filing
which was circulated to the Respondent and to the Panel members.
The language of the proceedings is English.
4. Factual Background
A. The Complainants and their Mark
The first-named Complainant is the registered proprietor in Australia of the
word-mark "australia.internet.com" in class 41 in respect of various
computer services (Australian Trademark Number 854919) (hereafter the "australia.internet.com
mark") and has applied for the word-mark "internet.com" in class
41 in respect of various computer services (Australian Trademark Application
Number 927249) (hereafter the "internet.com application").The second-named
Complainant is a wholly-owned subsidiary of the first-named Complainant, and
is registered in Australia as an Australian Proprietary Company.
B. The Respondent
The Respondent is an established printer of newspapers and magazines, currently
printing about 50 titles and employing around 30 people. It undertakes much
of the production process and consultation with its client via the Internet.
C. The Use of the Domain Name
At the time of the Complaint the domain name resolved correctly to website
controlled by the Respondent. The default file for the site loads a title-bar
containing the words "Internet Printing", has a splash-screen with the
words "INTERNET.COM.AU" and "PRINTING" superimposed on each
other, and has textareas for the insertion of a username and password.
5. Parties’ Contentions
A. Complainant
The Complainants assert that the Respondent’s domain name is identical or confusingly similar to the Complainants’ mark and application. Specifically, the Complainants assert:
(1) At all material times the first-named Complainant has been the registered owner of the trademark and trademark application mentioned in section 4.A. above.
(2) There is confusing similarity between the domain name and the australia.internet.com mark because both the domain name and the mark feature the dominant words "internet.com". The additional word "australia" in the mark only links the provision of services of the mark to the country Australia.
(3) There is confusing similarity between the domain name and the <internet.com> application because both the domain name and the applied-for mark feature the words "internet.com". The addition of <.au> to the domain name is not enough to distinguish the domain name from the application.
(4) The test for confusing similarity should include marketing and use factors where (as here) the Complainants are business entities with significant international reputations. The first-named Complainant has done business under the name <internet.com>, and in various countries, since 1997, it has trademark registrations including the words "internet.com" in a number of countries, and it operates numerous web-sites with the name "internet.com" included in them. It has expended significant advertising resources—some tens of millions of dollars per annum—on publicizing the name "internet.com" in numerous countries. As a result the name "internet.com" is associated in the minds of potential users with the Complainants.
The Complainants assert that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainants assert:
(1) Until April 2003 the Respondent had not activated the domain name. Lawyers for the Complainants advised the Respondent of the Complainants’ claim to the domain name in January 2003, but has never received a reply to this letter. Some time in April of 2003 a web-site was associated with the domain name. The details of it are provided in Section 4.C. above. An employee of the Complainant was unable to obtain access through the username/password combination. The site then became inactive in July 2003, and was reactivated in October 2003. It is clear from the foregoing facts that the Respondent was making no use of the domain name, and has only activated the domain name as a sham, possibly motivated by the letter sent to them. It has never been used for commercial use. The Respondent is not making any legitimate fair use of the domain name. It is not contributing to any "value-added" to the Internet. The broad community of Internet users would be better served by transferring the disputed domain name to a party with a legitimate use for it.
(2) The Respondent is not commonly known by reference to the domain name. There is no close or substantial connection between the Respondent and the domain name. This is true also of the Respondent’s business name "Internet Printing" since it appears that the Respondent does no business by reference to the business name.
(3) The Respondent was licensed to use the domain name under the terms of an auction of generic domain names undertaken by the Australian Domain Name Authority ("auDA") on June 27, 2002. To participate in this auction, participants had to fulfill auDA registration requirements for domain names in the <.au> namespace, which included a relevantly similar business name or corporate registration. The Respondent was not eligible to participate in the auction since it did not have a registration for the "Internet Printing" business name until after the relevant period.
(4) For the reasons expressed above, the domain name and mark "internet.com" are distinctive of the Complainants and hence users would expect that the disputed domain name would lead to a web-site affiliated with the Complainants.
The Complainants assert that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainants assert:
(1) The Respondents only associated the domain name with their web-site after being advised of the dispute by lawyers for the Complainants. They failed to make commercial use of the site. Subsequently the site ceased operation.
(2) The Respondent failed to reply to the lawyers’ letter advising them of the dispute.
(3) The Respondent is not commonly known by reference to the domain name and has no good reason to register the domain name, other than to block registration by the Complainants.
(4) The Respondent failed to conduct searches of the trademark register, corporate name searches and Internet searches to establish whether another party had acquired rights in the domain name. If it had done so it would have been aware of the Complainants’ rights.
(5) As documented above, the Respondent was ineligible to participate in the generic domain name auction, and to so participate it made false statements to auDA.
Accordingly, the Complainants submit that the Panel should order that the domain name be transferred to the Complainants.
B. Respondent
The Respondent asserts that its domain name is not identical or confusingly similar to the Complainants’ marks. Specifically, the Respondent asserts:
(1) The Complainants’ australia.internet.com mark and internet.com application are not identical to the domain name.
(2) Neither the Complainants’ mark or application are confusing similar to the domain name.
(3) The Complainants did not become the registered owners of the marks until after the date the Respondent acquired the license to use the domain name.
(4) The Complainants’ mark and application are limited to the colours red, black and white, and their claim to the words which are the subject of the domain name are limited only to those colours. The domain name is not confusingly similar to the marks as limited.
(5) Trademarks which are generic when applied to domain names (such as the term "internet") cannot distinguish the goods and services of the Complainants and hence cannot give rise to exclusivity. A very large number of other businesses have used the word "internet" in their corporate name, business name, or trademarks and hence the Complainants do not have trademark rights in the word "internet". Moreover, the Complainants cannot use the domain name system to monopolize the term "internet" and thereby prevent other traders from making bona fide use of the term.
(6) Under relevant Australian law, use of descriptive trademarks confers a lower level of protection than highly distinctive marks, and the risk of confusion must be accepted with such generic marks, see Hornsby Building Centre v. Sydney Building Information Centre (1978) 140 CLR 216.
The Respondent asserts that it has a legitimate interest or rights in the domain name. Specifically, the Respondent asserts:
(1) The Respondent is an established printer of newspapers and magazines, and operates an internet-based dissemination mechanism for clients to provide access to content during the production process.
(2) The Respondent is seeking to extend its activities on the internet, and has developed a business plan for this expansion. This is to occur through the disputed domain name, and will launch some time in the 3rd quarter of 2004. The Respondent has registered the business name "Internet Printing" as part of this activity.
(3) The Respondent has provided photographic and other evidence of its activities as a legitimate operator, including details of its significant expenditure and preparations for the use of the domain name for the internet printing business that it is developing.
(4) The Respondent asserts that the domain name was being used by October 2002, prior to the date asserted by the Complainants. Moreover, any attempt by the Complainants to enter the website would have been futile at any stage, since the access was provided to members only and the Complainants were not members.
The Respondent asserts that it registered the domain name and is using it in bad faith. Specifically, the Respondent asserts:
(1) The Respondent has been making preparations to make use of the domain name.
(2) The Respondent was not obliged to answer the letter from the Complainants.
(3) The Respondent conducted searches of the relevant registers and databases and discovered some 3000 businesses using the word "internet" in their names. None of the searches disclosed an entity with better claim to the domain name than the Respondent.
(4) The Respondent did not make any untrue statements to auDA, as it had registered the relevant business name prior to the announcement of the auDA generic domain name auction. It registered the business name on January 4, 2002, and the auction was only announced January 16, 2002. auDA examined the application of the Respondent for the domain name, and found that it fulfilled the eligibility requirements.
Accordingly, the Respondent submits that the Panel should not order that the domain name be transferred.
Moreover, the Respondent asserts that the Complainants have sought to use the Policy in bad faith in an attempt to deprive the Respondent of the domain name. On this issue of "reverse domain name hijacking" the Respondent specifically asserts:
(1) The Complainants have made selective disclosure of information, and had knowledge or means of knowledge of the Respondent’s legitimate interest in the domain name (viz. the evidence of the "Internet Printing" business name).
(2) The Complainants have made no real use of the name "internet.com" in Australia. They have only registered the name when they were unsuccessful in their attempt to have auDA release the domain name to them prior to the generic domain name auction.
6. Discussion and Findings
The Dispute Resolution Policy for the <.au> country code top level domain adopted by the auDA Board on August 13, 2001, on the recommendation of auDA's Dispute Resolution Working Group, applies to domain name registrations made in the <.com.au> namespace. Domain names within the <.com.au> namespace are subject to mandatory administrative review, and an affected Complainant may seek transfer of a name registered in this namespace. For the transfer to take place, paragraph 4(a) of the Policy requires the Complainant to make out three elements:
(1) The Complainant has rights in a name, trademark or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and
(2) The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and
(3) The Respondent registered or is subsequently using the domain name in bad faith (Paragraph 4(a)(iii)).
We shall deal with each aspect in turn, however there is one procedural decision that must be made. After the Complaint and Response were filed, the Complainant made a Supplementary Filing, seeking to address some of the matters raised in the Response. Rule 12 of the Rules for <.au> namespace provide only for the submission of a Complaint by the Complainant and a Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Panel. No such deficiency notice or request was made. Though the Panel has read the Supplementary Filing it declines to consider any of the matters raised by it.
A. Identical or Confusingly Similar
There are two elements that a Complainant must establish under this paragraph; that it has rights in a name, a trademark or a service mark, and that the domain name is identical or confusingly similar to the name or mark.
The Complainants have provided the registration documents for the "internet.com" and "australia.internet.com" marks. These are all registered in the name of the first-named Complainant. The Complainants further provided evidence of the use of "internet.com" in various contexts and with significant advertising in a number of jurisdictions, all of which contexts were related to the first-named Complainant. In the ordinary course of events this would be sufficient to establish that the first-named Complainant has rights in a trademark (without, of course, saying anything about whether the domain name is identical or confusingly similar to those rights). However, the Complainants have also provided evidence of the registration of the company name of the second-named Complainant. Under the auDRP, and unlike the UDRP, rights in a name, including a company name, are enumerated grounds for a complainant’s claim under paragraph 4(a)(i). Therefore, it would seem that the second-named Complainant has also established its claim under the first element of paragraph 4(a)(i). That is, the second-named Complainant appears to have established that it has rights in a name pursuant to paragraph 4(a)(i) (but again, without saying anything about whether the domain name is identical or confusingly similar to those rights).
The remedy claimed is to transfer the domain name "to the Complainants,"
a remedy which is impossible as the transfer can only be to one legal person.
Various panels have concluded that it is permissible for multiple Complainants
to request a transfer to all of themselves—and for the panel to choose which
of the Complainants to transfer the name to—where the Complainants have the
same interest in the domain name, see Bettina Liano and Bettina Liano Pty
Limited v. Khanh Kim Huynh, WIPO Case
No. D2000-0891; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO
Case No. D2000-0128; Mucos Emulsions, GmbH and Marlyn Nutraceuticals,
Inc. v. Esex.org and Kim Taeho, WIPO Case
No. D2000-1513; National Hockey League And Lemieux Group Lp v. Domain
For Sale, WIPO Case No. D2001-1185.
However, it is impermissible for the panel to choose one of the Complainants
to transfer the name to, where the interests in the name are divergent, where
the Complainants requested an ambiguous remedy by not stating to which of the
Complainants the contested domain name should be transferred to, and where the
Complainants avoided the identification of each party's stake in the remedy,
see Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under
Pty Limited v. Ted Gibson, eResolution Case No. AF-0638.
We conclude that the principle laid down in the Ken Done case applies here. It is obvious that the Complainants’ interests in the domain name stem from different interests in, respectively, the trade mark registration and application, and the company name registration. Moreover the Complainants have requested an ambiguous remedy by not stating to which of the Complainants the contested domain name should be transferred to. Even upon a close reading of the Complaint it is impossible to parse out who is the "real" Complainant in this case. As a result, it is impermissible for the panel to choose arbitrarily whose interests are the relevant ones in the paragraph 4(a)(i) requirements.
This conclusion occurs as a result of the way in which the Complainants plead their case. Although we make no finding as to the second requirement of paragraph 4(a)(i), it is possible that both Complainants could independently satisfy the requirements of 4(a)(i). This would pose a difficulty in a case where the Complainants made out all of the other necessary elements of paragraph 4(a) However, as we shall shortly conclude, the Complainants fail on the other elements of paragraph 4(a) Therefore, we need not make a decision about how to reconcile such a difficult case. We can merely conclude that, by defect of pleading, the Complainants have failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants assert that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. The Respondents deny this, pointing inter alia to the registration of the business name "Internet Printing" in January of 2002 and the preparations for use of the name in their new business.
We accept the evidence of the Respondent, and conclude that it clearly has a legitimate interest in the name. Our analysis on this ground is influenced by the genericness of the domain name and the mark. In the case of a term as generic as "internet" we consider that a Complainant must make a strong showing of the absence of legitimate interest if it is to succeed. This the Complainants have utterly failed to do. The Respondent has provided adequate evidence that it is using and will use the domain name in conjunction with its business.
We find that the Respondent has a legitimate interest in the domain name. We conclude that the Complainants have not satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The final issue under paragraph 4(a) is that of bad faith registration or bad faith ongoing use by the Respondent. As with much of its case, the Complainants’ arguments on this point are extremely weak. Their best argument is that the Respondent perpetuated a fraud on auDA by misrepresenting its eligibility to participate in the generic name auction. However the Respondent clearly demonstrated that this assertion is factually false, and that it had registered its business name an appropriate period before the auction; indeed an appropriate period before the announcement of the auction.
We conclude therefore that the Complainants have not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
Under Rule 15(e) of the Rules of the Policy:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
The Respondent argues that this Panel should find that the Complainants have used the Policy in bad faith, in an attempt to reverse domain name hijack as provided under Rule 15(e). Though the Complainants’ case fails on all elements of paragraph 4(a) and is weak overall, they nonetheless had an arguable case on each point. It does appear to the Panel that the Complainants may have emphasized certain facts and features in order better to make their case. This is, however, the nature of pleadings: one presents the most favourable case for one’s position. The Complainants do not appear to have crossed the thin line between "forcefully arguing their case" and "bad faith." We conclude that there is insufficient evidence to warrant a finding of bad faith on the part of the Complainants.
We therefore make no declaration as to reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Dan Hunter
Presiding Panelist
John Swinson
Panelist
Philip N. Argy
Panelist
Date: February 17, 2004
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