The Complainant is Overture Services, Inc., Pasadena California, United States of America (“USA”), represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Overture Search, Mullumbimby, New South Wales, Australia,
represented by Goran Simunovic, Australia.
2. The Domain Name and Registrar
The disputed domain name <overture.com.au> is registered with Melbourne
IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2004. On August 6, 2004, the Center transmitted by email to the registrar a request for registrar verification in connection with the domain name at issue. On August 9, 2004, the registrar 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 contacts for the disputed domain name. The Center verified that 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 on August 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2004. The Response was filed with the Center on September 3, 2004.
The Center appointed James A. Barker as the sole panelist in this matter on September 14, 2004. The Panel finds that it was properly constituted. 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.
Supplementary Submission
On September 14, 2004, the Center received a supplementary
submission from the Respondent providing details of the Respondent’s trademark,
the registration of which was advertised after the appointment of the Panel.
Panels have held that additional submissions are inappropriate except in rare
circumstances, such as where evidence is not available at the time of the party’s
original submission. (See The Crown in Right of the State of Tasmania trading
as “Tourism Tasmania” v. Gordon James Craven, WIPO
Case No. DAU2003-0001.) Such a circumstance applies in this case. So the
Panel admitted the supplementary submission.
Other Legal Proceedings
Paragraph 3(b)(xi) of the Rules requires that a Complaint shall “identify any other legal proceedings” commenced or terminated in connection with the disputed domain name. In this case, the Complainant stated that there were no such proceedings, and certified the completeness and accuracy of the Complaint. The Complainant did not identify opposition proceedings which it brought against the Respondent’s registration of a trademark corresponding to the disputed domain name. Those proceedings were referred to, with supporting evidence, in the Response.
The term “other legal proceedings” is
not defined in the Rules. On one view, the term “legal proceedings”
has a narrow meaning: equivalent to “judicial proceedings”. If so,
the Complaint would not strictly be in breach of the Rules. (Trademark opposition
proceedings in Australia are administrative.) On another view, the use of the
word “other” in paragraph 3(b)(xi) suggests a broader meaning: including
proceedings generally, such as those under the Policy which are not judicial.
However, as the term “legal proceedings” has no settled meaning
the Panel makes no adverse finding against the Complainant in this respect.
4. Factual Background
The following facts appear to be uncontested:
The Complainant is a wholly owned subsidiary of Yahoo! Inc., and provides commercial search services on the Internet. It has more than 100,000 active, paying advertisers and distribution partners, including Yahoo!, MSN and CNN. The Complainant was formed in September 1997, as GoTo.Com, Inc. to provide a search engine service to consumers all over the world, including Australia. In October 2001, the Complainant changed its name from GoTo.Com, Inc. to Overture Services, Inc. The Complainant has registered trademarks in Australia and other jurisdictions for the mark OVERTURE, in classes 35, 38 and 42.
The Respondent registered OVERTURE SEARCH as a business name in New South Wales, Australia, and the disputed domain name on January 30, 2002. In August 2002, the Respondent started operating a search engine website at the disputed domain name. After receiving a letter of demand from the Complainant on October 15, 2002, and after further correspondence between the Complainant and Respondent, the Respondent changed the website at the disputed domain name. The changed website was stated to offer “Musical Instruments and Items”. On October 31, 2002, the Respondent applied to register the trademark OVERTURE in Australia in class 15, musical instruments. Although the Complainant brought opposition proceedings against it, the Respondent’s mark was registered with effect from the date the application was lodged – October 31, 2002.
The Respondent in this case does not appear to be
legally separate to its authorised representative in these proceedings. Consistently,
the Respondent’s representative appears to treat itself as the same as
the Respondent, as does the Complainant. Accordingly, both the Respondent and
its representative are treated as the Respondent in this case.
5. Parties’ Contentions
A. Complainant
The following is summarised from the Complaint:
Identical or Confusingly Similar
The OVERTURE trademark has, since October 2001, been internationally well-known, including in Australia, and the Complainant has developed a substantial and valuable reputation and goodwill in the OVERTURE trademarks throughout the world including Australia. The disputed domain name is identical or deceptively similar to the Complainant’s OVERTURE trademarks.
Rights or Legitimate Interests
While the Respondent has registered the business name “OVERTURE SEARCH”, and applied to register “OVERTURE” as a trademark, the Respondent has no rights or legitimate interest in respect of the disputed domain name. The very name of the Respondent’s registered business name - “OVERTURE SEARCH” - combined with the stated nature of the Respondent’s business of “internet advertising” suggests that the Respondent intended to use the disputed domain name with respect to services similar to those offered by the Complainant. The Complainant has not licensed nor authorised the registration and/or use of the disputed domain name and/or use of its trademark OVERTURE.
Since the Respondent received the letter of demand from the Complainant, it has attempted to portray an unrelated, so called “legitimate” website, with a view to prevent the Complainant recovering the disputed domain name under procedures such as the Policy. At the time of being put on notice by the Complainant’s first letter of demand, the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services.
Bad Faith
The Complainant attached a statutory declaration made by its USA-based attorney of a telephone conversation between the Respondent and that attorney on May 19, 2003. The declaration indicates that the Complainant offered 2,000 United States dollars to the Respondent to transfer the disputed domain name and that, in response, the Respondent “said that Overture would need to offer more than 40,000 United States dollars for [the Respondent] to even consider transferring the domain name.”
B. Respondent
The following is summarised from the Response:
Identical or Confusingly Similar
The word “overture” is generic. It is not exclusively associated with the Complainant, but is incorporated into 42 active trademarks in the USA and appears on 2.62 million Internet web pages. If the Complainant is worried about confusion one would think that the Respondent’s website, “www.overture.com.au”, would receive visitors who mistakenly type “overture.com.au” instead “overture.com”. However this is not the case. The Respondent is using the word “overture” outside the Complainant’s channels of commerce. Therefore there is no confusing similarity with the Complainant’s trademark.
Rights or Legitimate Interests
The Respondent is a registered business name and trademark in Australia. The Respondent has used in the past, and intends in the future to use, the domain name in connection with its legitimate business.
Bad Faith
The disputed domain name has neither been registered nor used in bad faith. The Respondent is in the business of offering musical instruments for sale at its website. The Respondent’s website is a fully operational, with various hand crafted drums, including pricing, description etc, offered for sale. The Respondent’s website has been operating in this mode since May 2003.
In August 2002, “overture.com.au” started operating as a search engine website. The Respondent was not aware of any trademarks owned by the Complainant at the time. The Complainant’s website, under the name “overture.com”, began trading in the USA (not in Australia) on October 10, 2001. This was only around 3 and half months before the Respondent registered the disputed domain name.
The Respondent never tried to sell the disputed domain name or any other domain name. And there is no evidence to show otherwise. The Complainant contacted the Respondent and offered to buy the domain name. The Respondent refused that offer. The Respondent denies the content of the Complainant’s attorney’s statutory declaration.
Reverse domain name hijacking
This is a case of reverse domain name hijacking. The
Complainant has no legitimate basis for bringing this Complaint. The Complainant
attempted to manufacture a bad faith offer to sell the disputed domain name
by luring the Respondent into sales discussions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
- the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
- the Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and
- the domain name was registered or subsequently used in bad faith (paragraph 4(a)(iii)).
These three elements are addressed below. In doing so, the Panel notes that, with some substantive differences, the Policy is in similar terms to the Uniform Domain Name Dispute Resolution Policy (UDRP) on which it is based. As such, past proceedings under the Policy have referred to relevant decisions under the UDRP. The Panel has taken the same approach.
A. Identical or Confusingly Similar
The Complainant provided evidence of its rights in the registered mark OVERTURE in a number of jurisdictions, including Australia where the Respondent resides. The Complainant also provided evidence of its use of the mark in relation to Internet search engine and directory services, both on-line and in print advertising.
The disputed domain name is only different to the Complainant’s mark by the addition of the “.com.au” extension. It is widely accepted that the “.com.au” extension is not relevant to determine identicality or similarity, being only a technical and necessary requirement. The Panel accordingly finds that the disputed domain name is identical to the mark in which the Complainant has rights.
The Respondent argues that there is no actual confusion with the Complainant’s mark. As the domain name is identical to the Complainant’s mark the Respondent’s argument is not relevant. Being identical, the likelihood of confusion is obvious.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, if found by the Panel to be proved, demonstrate a Respondent’s rights or legitimate interests. Relevantly, one of those circumstances in paragraph 4(c)(i) is: “before any notice to you [the Respondent] of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name…in connection with an offering of goods or services.”
There is no dispute that the Respondent first received a letter of demand from
the Complainant on October 15, 2002. That letter was obviously notice of the
dispute for the purpose of paragraph 4(c)(i). (See the final report of the auDA
Dispute Resolution Working Group, June 2001, Note 12: “a letter of demand
or similar communication from the complainant is sufficient to constitute notice
to the respondent of the subject matter of the dispute.” See also, for
example, T. Rowe Price Associates, Inc. v. J A Rich, WIPO
Case No. D2001-1044.)
Bona fide use prior to notice
Prior to notice of the dispute, the domain name reverted to the Respondent’s website which indexed links to other websites and operated a search engine. The Respondent itself appears to accept that its use, prior to notice from the Complainant, was not bona fide. Relevantly, in relation to its receipt of the notice, the Response states that:
“After verbal consultation with an Intellectual property solicitor I was advised I may be infringing the Complainant’s trademark and should take some action. Acting on this advice, I removed the search engine box, search engine software and the content from my web site...”.
If the Respondent were confident that it was making a bona fide use of the disputed domain name prior to the notice, it would not be expected to change that use after receiving the notice, unless it believed the notice had some merit. But after receiving the notice, the Respondent altered its website to one offering “Musical Instruments and Items”. The Respondent gave no explanation as to why it made that particular change.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy. The Respondent raises other arguments in support of its rights or legitimate interests, which the Panel addresses as follows.
Use after notice
Firstly, the Respondent suggests, in effect, that it made bona fide preparations to use the domain name after notice to it of the dispute. The terms of paragraph 4(a)(ii) of the Policy do not explicitly preclude the possibility of a bona fide use or preparations by a Respondent after notice of a dispute. Paragraph 4(c)(i), along with the other illustrative circumstances set out in paragraph 4(c), are stated to be “without limitation”.
It is naturally difficult for a respondent to show its innocence, where there is evidence that its actions occurred only after notice of a dispute. Use after a notice naturally suggests that the use is motivated by the notice - not by a bona fide intention. It might be possible to demonstrate bona fide use occurring after a notice if, for example, the notice had no merit at all. But that is not the case here.
Further, the Respondent does not present strong evidence of its preparations to use the domain name. In this respect, the Respondent quickly (by its own account, 2 days after receiving the Response) “changed the nature of [its] business”. The Respondent also changed its use of the domain name, so that it reverted to a website offering “Musical Instruments and Items”. The Respondent gave no explanation for that particular change. The Respondent’s evidence of its preparations over the last 2 years was a single page print out of the Respondent’s website as it was shortly after the notice, and as it was from May 2003, and a single page “business contract” for the supply to it of hand crafted drums. Although the Respondent states that its website is “fully operational”, the May 2003 print out indicates that it was “still under construction.”
The Respondent states that it did not significantly promote its new website, because of “the constant harassment of the Complainant and the resultant uncertainty.” Even allowing for this, as noted above, the Respondent bears a difficult burden to demonstrate it was making preparations for bona fide use. For the reasons above, the Panel finds that the Respondent has not met that burden.
Generic meaning
Secondly, the Respondent argues that the Complainant does not have “an exclusive right” because the word “overture” has a generic meaning. That argument ignores the Complainant’s rights in its registered mark. It also ignores the existence of the Policy. The Policy does not require a Complainant to have an exclusive right. It only requires that a complainant relevantly “has rights” and that the Respondent does not.
Respondent’s registered trademark
Thirdly, shortly after receiving notice of the dispute on October 15, 2002, the Respondent lodged an application to register OVERTURE as a trademark in Australia, in Class 15, musical instruments. Despite opposition proceedings brought by the Complainant, the trademark was registered with effect from its lodgement date of October 31, 2002.
The issue is whether the Respondent’s right in its registered mark now gives it a right or legitimate interest in the disputed domain name. The Panel finds that it does not. The domain name was registered in bad faith (see below). Only after notice of the dispute did the Respondent apply to register the trademark and change its business. In similar circumstances, Panels have stated:
“It would be a mistake to conclude that mere registration of a trademark
creates a legitimate interest under the Policy… to establish cognizable
rights, the overall circumstances should demonstrate that the registration was
obtained in good faith for the purpose of making bona fide use of the mark in
the jurisdiction where the mark is registered and not obtained merely to circumvent
the application of the Policy.” (Madonna Ciccone, p/k/a Madonna v.
Dan Parisi and Madonna.com, WIPO Case
No. D2000-0847.) That general principle has been accepted in other cases.
Most recently, see BECA Inc. v. CanAm Health Source, Inc.,WIPO
Case No. D2004-0298 and the cases cited in that one.
C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate the registration or use of the disputed domain name in bad faith. The Complainant argues that there is evidence of bad faith under paragraphs 4(b)(i) and (iv) of the Policy.
Paragraph 4(b)(i)
The Panel does not find sufficient evidence of bad faith for the purpose of paragraph 4(b)(i). In this respect, the Complainant provided a “statutory declaration” that the Respondent offered to sell the disputed domain name to it for a large sum. The Respondent denied doing so. There is no other evidence that the Respondent offered to sell the domain name.
Paragraph 4(b)(iv)
Paragraph 4(b)(iv) provides that there is evidence of bad faith where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website…by creating a likelihood of confusion with the complainant’s name or mark…”.
The Respondent states that it operates as a business, and so it clearly operates for commercial gain. There is an obvious likelihood of confusion because the disputed domain name and the Complainant’s mark are relevantly identical.
For the Complainant to establish a case under paragraph 4(b)(iv), the Respondent must also have had some knowledge of the Complainant’s mark. The Respondent contends that it had no such knowledge when it registered the disputed domain name, and contends that the Complainant’s mark is not well-known. The Respondent referred to previous cases under the Policy, which found that the fact a mark is well-known in one country does not indicate that it is well-known in another.
However the Panel finds that it is likely that the Respondent knew of the Complainant when it registered the disputed domain name. As stated in the Response, the disputed domain name was registered shortly (around 3 months) after the Complainant launched its services under the OVERTURE mark. The disputed domain name was initially used to offer services very similar to those offered by the Complainant. The word “overture” is not particularly descriptive of Internet search services. As such, it is unlikely that the Respondent would, by accident, choose a domain name identical to the Complainant’s mark, choose it so soon after the Complainant launched its own mark, and use it in relation to similar services.
The Respondent states that it chose the domain name because it incorporates “a common English word, it is easy to remember and it has a certain style.” But the same could be said of any number of English words. The Respondent gave no explanation as to why it chose “overture” in particular.
D. Reverse Domain Name Hijacking
The Respondent requests a finding that the Complainant has engaged in reverse
domain name hijacking, as defined in paragraph 1 of the Rules. Consistent with
its findings above, the Panel makes no such finding.
7. Decision
For all the foregoing reasons, in accordance with
Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the
domain name <overture.com.au> be transferred to the Complainant.
James A. Barker Sole Panelist
Dated: September 28, 2004
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