United Business Media LLC v. 4 Square Media Pty Ltd
Case No. DAU2008-0008
1. The Parties
The Complainant is United Business Media LLC, New York, United States of America, represented by David Stewart, Perth, Australia.
The Respondent is 4 Square Media Pty Ltd, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name <channelweb.com.au> is registered with NetRegistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 18, 2008, the Center transmitted by email to NetRegistry Pty Ltd a request for registrar verification in connection with the Domain Name at issue. On April 24, 2008, NetRegistry Pty Ltd transmitted by email to the Center its verification response and confirmed that the Respondent was the registrant of 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 April 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2008.
An informal response (an email from David Weston Richards, the Respondent’s sole director and shareholder) was emailed to the Center on April 30, 2008. Mr. Richards stated: “Please find our response to this dispute. We hope that it is in a format that is acceptable as we do not want to incur expensive legal costs in defending our ownership of this domain name.”
On April 30, 2008, the Center pointed out to Mr. Richards that he was entitled to a 20 day term to file a detailed response, and stated that if Mr. Richards wished the Center to consider his April 30, 2008 e-mail communication as the Respondents’ final response, he should let the Center know.
There was no response to that request. In the absence of such a confirmation, the Center regards the informal response as the Response.
On June 18, 2008, the Center appointed Alistair Payne, Neil Brown and Alan L. Limbury as panelists on this matter. 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.
4. Factual Background
The Complainant in this proceedings is United Business Media LLC. CMP Media LLC was a subsidiary of United Business Media. CMP Media LLC has recently changed its corporate structure so that all of its assets were assigned to United Business Media LLC. The Complainant is one of the leading technology publishers in the world, publishing a wide range of specialised computer and technology magazines. It produces websites that offer internet versions of its print publications and portals such as the Channelweb network.
Since May 19, 1997, the Complainant in its own name and under the name of its predecessor in title, CMP Media LLC, has used the name “channelweb” in connection with its Channelweb network. The Channel Web network delivers breaking news, channel news, product reviews, technology and event-driven topic centres, in-depth analytical features, exclusive research, expert opinion, newsletters and video.
The Complainant under the name of its predecessor in title, CMP Media LLC registered the domain name <channelweb.com> on July 2, 1996.
Since May 1997, “channelweb” has featured in the Complainant’s and its predecessor in title CMP Media LLC’s, publications, websites and other promotional material.
CMP Media LLC, when purchased by United Business Media on June 29, 1999, had developed a global reputation in relation to technology publications. This reputation has continued to grow and is now maintained globally under the name of the Complainant.
The Respondent is a media company. David Weston Richards is the sole director and shareholder of the Respondent. From the period, April 1998 to 2001, certain publications were published by DWR Media, an IT media company, under license from the Complainant’s predecessor in title, CMP Media LLC. Mr. Richards was the Chief Executive Officer of DWR at the time. The Respondent registered the Disputed Domain Name <channelweb.com.au> on October 31, 2006.
By a letter dated August 23, 2007, the Complainant’s authorized representative wrote to the Respondent setting out the Complainant’s concerns in relation to the Disputed Domain Name.
On September 11, 2007, the Complainant’s authorized representative left a telephone message for Mr. Richards to return his call.
The Complainant’s authorized representative sent a letter dated September 26, 2007 to the Respondent advising that as the Respondent has not acknowledged the letter of August 23, 2007 and the telephone message of September 11, 2007, the Complainant would now take all appropriate steps to protect his rights.
By an email to the Complainant’s authorized representative dated on October 2, 2007, Mr. Richards advised that the Respondent is not using the Disputed Domain Name as a news or technology source website and that the Respondent did not intend to give the domain name up as “it will not compete with any [Complainant] properties unless [the Complainant] has gone into the adult entertainment market”.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainant has shown in evidence that in its own name and under the name of his predecessor in title, CMP Media LLC, it registered the Domain Name <channelweb.com> on July 2, 1996. The Complainant also states that he and his predecessor in title, CMP Media LLC, has since May 19, 1997, had a reputation both within Australia and globally in the name CHANNELWEB. Therefore, the name CHANNELWEB is identified with the Complainant’s services. The Disputed Domain Name, <channelweb.com.au>, consists of the entirety of the word “channelweb” and is therefore identical or confusingly similar to a name, trade mark or service in which the Complainant has rights.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant argues that there is no evidence that at any time the Respondent has been using the Disputed Domain Name for any bona fide purpose in the offering of goods or services and that there is no evidence that the Respondent is or has been commonly known by the Disputed Domain Name. The Complainant asserts that the Respondent has not been authorised by nor obtained the consent from the Complainant to use the Disputed Domain Name.
The Complainant further argues that the Respondent was aware prior to registering the Disputed Domain Name of the Complainant’s rights in CHANNELWEB. The Complainant states that the Respondent registered the Disputed Domain Name to prevent the Complainant from using the trademark CHANNELWEB in the corresponding “.au” domain name, to intentionally attract, for commercial gain, Internet users to the Respondents proposed website. Finally, the Complainant asserts that the Respondent’s threat to use the Disputed Domain Name to distribute pornography is an attempt to disrupt the business or activities of the Complainant and to tarnish the name CHANNELWEB.
B. Respondent
The Respondent did not submit a formal Response to the Complainant’s contentions. However, it did send an informal response to the Center which is taken to be regarded as the Response.
The Respondent asserts that he does not intend to use the Disputed Domain Name for a business that competes or infringes upon the Complainant’s Channel Web operations in the United States.
The Respondent argues that the Complainant’s predecessor in title has had over ten years to register the domain name in Australia.
The Respondent also states that in May 1997, he asked Mario Salinas of CMP Media LLC as to whether they should register a “channel web” domain name in Australia. The Respondent asserts that Mario Salinas said words to the effect that the Respondent could do whatever he wants as CMP was not interested in launching a web site operation in Australia.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision on the facts.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii). The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The CHANNELWEB trademark relied on by the Complainant is a common law trademark. If proven, unregistered trademarks are sufficient to establish trademark rights for the purposes of a UDRP claim, as well as for an auDRP claim. In Above All Advertising Inc. v. Belize Domain Whois Service Lt,WIPO Case No. D2007-0775, the Panel states:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
It is not enough merely to assert a common law trademark. Rather, it must be proved. CHANNELWEB has been widely used by the Complainant and its predecessor in title since May 19, 1997. Since that date, CHANNELWEB has featured in the Complainant’s publications, websites and other promotional material. The Panel is satisfied that the Complainant has developed a reputation both within Australia and elsewhere in the name CHANNELWEB and that the name CHANNELWEB is accordingly identified with the Complainant’s services.
The Panel finds that the domain name is identical to the asserted trademark CHANNELWEB which as a whole has been incorporated into the Disputed Domain Name. The addition of the top-level domain “.com.au” can only be regarded as a minor difference and may in any event be disregarded for the purpose of assessment under the first element of the Policy.
Accordingly, the Complainant has established a common law trademark and the Domain Name is identical or confusingly similar to that trademark, in which the Complainant has rights. The Complainant has therefore satisfied Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under Paragraph 4(a)(ii) of the Policy, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the .auDRP.
The Panel, after considering all the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case.
Given the previous relationship between Mr. Richards and the Complainant’s predecessor in title, the Respondent was aware of the existing rights in CHANNELWEB prior to registering the Disputed Domain Name. In these circumstances it is very difficult for the Respondent to demonstrate any legitimate interests in the Disputed Domain Name. In fact the Respondent admits in the response that:
“CMP is an organisation that I personally have had a long relationship with in the past and an organisation that was a key partner with a previous company of mine.”
In the Panel’s opinion the Respondent has failed to fulfill any of the elements of Paragraph 4(c) of the Policy or to otherwise rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests. The Respondent was at all times well aware of the Complainant’s use of its CHANNELWEB mark, and use of the domain name in a related field of activity in these circumstances, unless expressly authorized by the Complainant, could not amount to bona fide use for the purposes of this limb of the Policy.
The Respondent’s intended use for IT technology related fields is confirmed in the Response as follows:
“The name CHANNELWEB was initially registered with the intent of rolling out a new website and information stream for web developers”; and
“When we registered the ChannelWeb name we were also developing a new information stream for resellers and solution providers in the consumer technology and Pro AV market.”
The fact that the Respondent expressly states that it has moved this service to a new Domain Name and now intends to utilise the Disputed Domain Name for adult entertainment services is in the circumstances even more compelling evidence of its lack of intent to use the Disputed Domain Name for bona fide purposes.
The Respondent also maintains that around May 1997 when it was in the business of IT publishing (and in fact had a business relationship with the Complainant) it asked a representative of the Complainant whether the business could register “Channelweb” as a domain name in Australia and was told that it could do so as the Complainant was not interested in launching a website in Australia. However it appears that the Respondent did not in fact register a domain name for “Channelweb” at this time but waited approximately 9 years by which time the Complainant’s business had become considerably more established and better known in Australia. However the Respondent did not approach the Complainant again in 2006 to confirm its consent before registering the Disputed Domain Name and neither had the Respondent used “Channelweb” as a name or mark during this period. Accordingly the Panel does not accept that the Complainant consented to the registration in 2006 of the Disputed Domain Name.
The Panel therefore finds that the Respondent has not rebutted the Complainant’s case and has no rights or legitimate interests in the Disputed Domain Name. The Complainant has therefore satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith, or, that it has subsequently been used in bad faith.
Paragraph 4(b)(iv) of the Policy states:
“that using a domain name and intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a website or location is clear evidence of the registration and use of a domain name in bad faith”.
As already stated the Respondent was well aware of the Complainant’s existing rights in the CHANNELWEB mark. The Respondent nevertheless registered the Disputed Domain Name and before being approached by the Complainant had intended to use it in a field broadly related to the Complainant’s activities. In such circumstances the Panel infers that the Respondent registered, and intended to use the Disputed Domain Name in order to capitalise on the Complainant’s goodwill. The Panel is therefore of the opinion that the requirements of Paragraph 4(b)(iv) are satisfied.
In addition, on being approached by the Complainant, the Respondent subsequently refused to transfer or to stop using the Disputed Domain Name and instead in an e-mail to the Complainant’s representative dated 2 October 2007, the Respondent stated the following:
“We do not intend to give this name up as it will not compete with an CMP properties unless CMP has gone into the adult entertainment market.”
This statement is completely at odds with the Respondent’s original plans and he offers no explanation for this change of plans. It seems to the Panel that the Respondent’s intention is simply to use the Disputed Domain Name to channel website traffic to a pornographic website. The Panel considers that this behaviour is also indicative of the Respondent’s plans to use the Disputed Domain Name in bad faith and notes that in similar decisions other panels have made similar findings (for example Caledonia Motor Group Ltd. v. Amizon,
WIPO Case No. D2001-0860, in which the use of a disputed domain name to divert users to a pornographic website was evidence that the Respondent had registered and was using the Domain Name in bad faith, irrespective of the Respondent’s motivation).
Accordingly for the reasons listed above, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy.
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 <channelweb.com.au> be transferred to the Complainant provided that the Registrar (or Registry) is satisfied that the Complainant is eligible to be the holder and registrant of a domain name in the “.com.au” domain name space. In the alternative, should the Registrar (or Registry) not be so satisfied, the Panel orders that the Disputed Domain Name be cancelled.
Alistair Payne Presiding Panelist
Neil Brown Panelist
Alan L. Limbury Panelist
Date: July 2, 2008
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