Administrative panel decision the Economist Newspaper Limited V. Te internet Services Case No. D2007-1652




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WIPO Arbitration and Mediation Center



ADMINISTRATIVE PANEL DECISION



The Economist Newspaper Limited v. TE Internet Services
Case No. D2007-1652

1. The Parties
The Complainant is The Economist Newspaper Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Rouse Legal, United Kingdom of Great Britain and Northern Ireland.
The Respondent is TE Internet Services, Gaithersburg, Maryland, United States of America, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, Inc.

3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007. On November 12, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 12, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 November 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2007. In response to a request from the Respondent, which was agreed by the Complainant, the Center granted an extension to file Response until December 12, 2007. The Response was filed with the Center on December 12, 2007.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 21, 2007. 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.
On January 16, 2008, the Panel issued the following order:
“The Panel has reviewed the record of the present case and believes that additional information from the Parties would be helpful for reaching a final determination. Accordingly, pursuant to paragraph 12 of the Rules, the Parties are requested to submit a reply to the following questions to the WIPO Arbitration and Mediation Center by January 23, 2008. Both filings should be signed and sent by e-mail in .pdf format (domain.disputes@wipo.int), or by fax (+41 22 740 3700), to the Center and to the other Party.
Complainant

1. What circumstances led the Complainant to wait apparently for 11 years since the registration of the disputed domain name before filing the present complaint? What other action did the complainant undertake in this regard?


2. Was the effort to purchase the disputed domain name that is the subject of an email exchange in the Response record dated 31 August and 3 October 2007 made on behalf of the Complainant?
Respondent

3. According to the Respondent, the disputed domain name is registered in the name of TE Internet Services (as opposed to “TE Interent Services” as registered in the Whois), but the response primarily features one “Jason Rose”. The Respondent is invited to document Mr. Rose’s identity and his relationship with TE Internet Services.


4. In the correspondence referred to in question 2 above, if the Respondent wished to protect its “privacy” why did it not do so by simply using its business name TE Internet Services, instead of by using the name “Judy”?
5. Apparently the disputed domain name has been used to present a photograph of Mr. Alan Greenspan “for over 5 years”. The Response indicates that Mr. Rose has not developed the site further due to “personal and health reasons”, but that he hopes to expand the site in the future. If the Respondent’s intention was to “honor” Mr. Greenspan, why did it take the Respondent approximately six years to post the one photograph mentioned?
6. The Respondent is invited to provide further particulars about his stated interest in economics and economists that led it to register the disputed domain name and use it to announce Mr. Alan Greenspan ‘The Economist of the Century’.”
Both parties filed submissions in response to this procedural order.

4. Factual Background
The Complainant is the proprietor of ‘The Economist’ newspaper/magazine which has a long history as a publication featuring comment on and analysis of international news, world politics, business, science, technology and cultural matters. Although published in the United Kingdom, of its circulation of 1.2 million, almost four-fifths is located outside of that country. North America accounts for half of the publication’s circulation.
The Complainant owns trademark registrations for the words ‘The Economist’ in the United Kingdom (1992) and the United States of America (1985). The United States trademark registration is for, inter alia, “a weekly magazine devoted to world-wide political and financial matters.”
The disputed domain name was registered on November 1, 1996. The Complainant tried unsuccessfully recently to purchase it through an intermediary. The Complainant had been aware of the existence of the disputed domain name “for some time”. The Complainant gave the Respondent no rights or interests in its registered trademarks.
The disputed domain name is connected to a single-page website depicting Mr. Alan Greenspan. Below his picture is the legend “Alan Greenspan, Chairman Federal Reserve Board is The Economist of the century.” There are links to websites concerning Mr. Greenspan and the Federal Reserve System.

5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s registered trademarks. The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not using the disputed domain name as a genuine tribute site for Mr. Greenspan because:
(a) The website has been static for some years and is now out-of-date in that Mr. Greenspan no longer holds the position indicated on the website.
(b) It is inconceivable that anyone in the United States with a serious interest in world affairs and economics would be unaware of the ‘The Economist’ publication.
(c) The replication of the name of the Complainant’s publication (including the capital letters) shows that there is no attempt to distinguish the Respondent’s website from that publication.
(d) The name of the Complainant’s publication is an unlikely name for a genuine tribute site.
The disputed domain name must have been registered in bad faith because it is inconceivable that anyone in the United States with an interest in economics would have been unaware of the Complainant’s publication. However, the Complainant says that it “… cannot know what the Respondent was thinking when the Domain Name was registered …”. The use of uppercase for ‘The Economist’ and lower case for the initial letter of ‘century’ puts the matter beyond reasonable doubt. The static and rudimentary nature of the site underlines the point. The website is nothing more than a ‘spoof’ site.
The Respondent may have wished to ‘block’ the Complainant or it may wish to wait for a high offer for the disputed domain name.
A website called “Alexa” which has links to well-known newspapers and broadcasters is connected to the Respondent’s website. Persons searching via Alexa would expect to reach an official website of the Complainant’s.
B. Respondent
The disputed domain name is composed of the definitive article plus a common word. The Complainant does not have exclusive rights to the term ‘The Economist’. There are two other third-party registered marks for this term.
In June 1996, not long before the Respondent registered the disputed domain name, the Complainant’s circulation in the United States of America and Canada together was only 273,757. According to the Complainant’s own sources, it was not until after 9/11 that its exposure in the United States of America grew.
The Respondent does business under the name “TE Internet Services”. The Respondent supplied to the Panel a signed statement (mentioned to be “under penalty of law for making false statements.”). He is Jason Rose who stated that he registered the disputed domain name in 1996, to use as a website dedicated to Mr. Greenspan whom he regarded as an economist of great note – the leading economist of the present time. The Respondent deposed that he had no knowledge of the Complainant or its website, business name or trademark when he registered the disputed domain name.
The Respondent’s website has featured Mr. Greenspan in the ways mentioned above since April 2002. He hopes to expand and update the site “in the future”. He has not developed the site “due to personal and health reasons”.
The Respondent submits that the quality of the Respondent’s website is irrelevant under the Policy. There are no minimum standards (Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204).
The Complainant initiated the idea of purchasing the disputed domain name for $500 in August 2007, which fact constitutes a tacit acknowledgement of the Respondent’s legitimate interest. The Respondent refused to sell.
The Respondent has made no commercial use of the website and has done nothing to suggest an association with the Complainant.
The Respondent argues that there is no evidence to justify a finding of bad faith registration in 1996. At that time, the Complainant’s “niche” market in the United States was much smaller. There is no evidence of the fame of the Complainant’s publication then and, therefore, evidence of its current fame and Alexa ratings is irrelevant.
The Complainant has produced no evidence to show that the Respondent registered the disputed domain name in 1996 with the Complainant in mind. Mere allegations of bad faith are insufficient.
The Respondent submits that the Complainant brought this complaint 12 years after registration of the disputed domain name (the Panel notes that 11 years have passed). In the Respondent’s view, there is no credible explanation for the delay other than that the Complainant did not believe that there had been bad faith registration.
Nothing can be inferred against the Respondent from his refusal to sell the disputed domain name. There can be no inference therefore that the Respondent registered the disputed domain name with the intention of selling it.
C. Complainant’s Response to Procedural Order
The Complainant did not become aware of the disputed domain name until 2001. On April 3, 2001, it wrote to the Respondent, seeking a transfer. No reply was received. There was a reference in this letter to the Respondent being aware of the Complainant’s trademark. Although the letter said “You are clearly aware of this since you acknowledge our ownership of the trademark on your website”, the Complainant has now no record of what was in the website in that regard. The Complainant states that in 2001 it was uncertain whether a complaint under the Policy would succeed and it believed it was possible that the Respondent’s website was genuine.
It was not until a domain name review in 2007, that the Complainant became aware of a significant amount of internet traffic going to the Respondent’s website. It took external advice which was to the effect that this was probably a “spoof” site with intentional reference to the Complainant’s publication.
The Complainant stated again that it did not know the Respondent’s intentions at the time when it registered the disputed domain name, and asks the Panel to make inferences against the Respondent of bad faith registration.
The Complainant confirmed that it was behind the exchange by an intermediary with the Respondent (acting under a pseudonym) to buy the disputed domain name for $500, which was initiated on August 31, 2007.
The Complainant stated that it had discovered material supporting its claimed reputation and goodwill in the United States of America prior to the registration of the disputed domain name. It regretted the non-inclusion of this material and offered to supply it.
(The Panel does not consider that it would have been proper to receive this sort of material at this stage of the proceedings. It would constitute a bad precedent. The onus is on a complainant to put its best case forward when it files its complaint.)
D. Respondent’s Response to Procedural Order
Jason Rose is the owner of TE Internet Services, as set forth in the Response. “TE Interent Services” in the Whois is a typographical error. He chose to give a personal pseudonym in the personal response to the Complainant’s overture and not use TE Internet Services which is impersonal.
He made another declaration stated to be “under penalty of law”. The Panel quotes from this document, paras 3-4.
“3. I state with confidence and truthfulness that there was a picture of Alan Greenspan and link at the page during the first 2 years but it was interrupted during the following 2 years due to hosting issues. I have changed computers numerous times in the past 11 years so do not have the actual page. Archives.org does not show any pages going back that far.
4. I registered the Disputed Domain to develop a web site dedicated to Alan Greenspan, at that time, considered “the most powerful man in the world” according to President Reagan. I considered this powerful man, who was an economist to be “the Economist.” I do not have any particular interest in economics. I was simply fascinated with Alan Greenspan.”

6. Discussion and Findings
The Complainant is required by paragraph 4(a) of the Policy to establish:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s registered trademarks. The Complainant therefore succeeds under paragraph 4(a)(i) of the Policy.



B. Rights or Legitimate Interests

Since the Complainant gave the Respondent no rights in respect of its trademarks the onus shifts to the Respondent to show that he comes within one or other of the limbs of paragraph 4(c) of the Policy. Only one of these has been invoked by the Respondent i.e. paragraph 4(c)(iii) which provides:


you are making a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or servicemark at issue.”
Essentially, the Respondent says that, in April 2002, some five and a half years after registering the disputed domain name, he created a website proclaiming Mr. Greenspan to be ‘The Economist’ of the century. The site has not been developed for a further five and a half years “due to personal and health reasons.” The Respondent hopes to expand and update the site in the future. No date is given for the redevelopment. Nor is any detail given of preparations to develop the website. He claimed in his second declaration that there was a photograph and a link during the first two years. The Respondent has made no commercial use of the website and has done nothing to suggest an association with the Complainant.
The Panel expresses some scepticism at this scenario. One would expect a “tribute site” to contain a reference to the name of the person being honored in the domain name itself. Anyone searching the disputed domain name would expect to find a website about the prestigious publication ‘The Economist’ rather than one about a distinguished individual who happened to be an economist. The term ‘The Economist’, said to apply to Mr. Greenspan, could arguably apply to other economists, depending on one’s point of view.
The facts that for half the time since registration of the domain name the site was inactive and that for the other half it has had only the use detailed above, combine to cast doubt on the alleged legitimate non-commercial and fair use plea. Although there is no time limit for creating a website after registration of a domain name, 11 years’ delay must be indicative of a lack of intention to establish a bona fide use.
Accordingly, in the view of the Panel, the Complainant has discharged the onus under paragraph 4(a)(ii) of the Policy and the Respondent has failed to establish a defense under paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The requirement of the Policy is that a complainant must establish both bad faith at the time of registration and bad faith continuing use since then. These are cumulative conditions. See a summary of cases on this point in Guildline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157, at p. 4.


The Policy is inflexible in this requirement, unlike, the Nominet system applicable in the United Kingdom and in New Zealand, where a complainant need prove that the domain name is an abusive or unfair registration, assessed on all the circumstances existing at the time of the complaint, and abusive current use suffices for a transfer finding.
Successive WIPO UDRP Panelists have held in the interests of consistency that renewal of a domain name registration in bad faith by the same registrant who may not have registered the name in bad faith, does not constitute bad faith registration under paragraph 4(a)(iii) of the Policy. See the discussion in PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.
In the present case, the Complainant, as it says in its Complaint, does not know why the Respondent registered the disputed domain name in 1996. The Complainant has to show facts from which the Panel can infer on the balance of probabilities that the disputed domain name was registered in bad faith in 1996. To prove this, the Panel must be able to infer that the Respondent knew of the Complainant’s mark then.
The Panel has read the declarations stated to have been signed under penalty by Jason Rose, the true Respondent. He attests that he did not know of the Complainant and its mark at the time the disputed domain name was registered in 1996. The Panel notes:
(a) the declarations are unwitnessed. Normally affidavits and affirmations in most jurisdictions have to be witnessed by persons authorized by the law, such as a notary.

(b) There is no reference to the law under which the declarations are made. Presumably, the laws of the State of Maryland permit declarations of this sort but there is no guidance offered.


Even if doubts thus attach to the Respondent’s statement, the Complainant, on the other hand, frankly states that it does not know what the Respondent was thinking when he registered the disputed domain name.
Although that case concerned a different type of statement, this Panel notes the approach taken by a distinguished three-member Panel in Document Technologies Ltd, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, a case decided in the early days of the Policy. As in the present case, there was no evidence of circumstances at the time of registration which could give rise to inferences.
“Bad faith is not proven by showing that Respondent lacks any rights to or legitimate interests in the Domain Name. That is a separate and distinct factor, with its own proof requirements. If the Panel adopted Complainant’s approach, it would have the practical effect of conflating the second and third requirements. Such an approach is not supported by the clear wording of the Policy which separates the requirements in Paragraph 4(a) into three distinct elements, and provides separate examples (Paragraphs 4(b) and 4(c)) of how to satisfy the second and third factors.
More relevant to the bad faith issue is Complainant’s allegation, albeit on information and belief, that Respondent knew of Complainant’s trademark rights in the mark HTML EASE at the time it registered the Domain Name. If correct, and given that the parties are direct competitors, this fact would go far to suggest bad faith. In reply, the Respondent asserts in a sworn statement that it “had no knowledge of dTech’s intent to use HTML EASE as a trademark”. The Panel does not consider that this assertion, of itself, compels it to conclude that the Respondent did not register in bad faith. If the evidence discloses circumstances that are consistent with a complainant’s allegation that the respondent registered the domain name in bad faith, a finding of bad faith may be made notwithstanding a sworn statement from the respondent that it did not know of the complainant’s trademark, or did not know that complainant intended to use its mark as a trademark. In this case, however, the Complainant has not shown evidence of such circumstances. For example, there is no documentary evidence that someone from the Respondent actually did visit, or is likely to have visited, the Complainant’s website in the period prior to the registration of the Domain Name, or that the Complainant’s promotional literature actually was, or is likely to have been, received by the Respondent during that period. Accordingly, the Panel must credit Respondent’s statement as true. If Complainant believes that cross examination of Respondent’s evidence would successfully prove bad faith registration and use, it will need to resort to a forum, like a United States court, that permits for a more probing, searing search for the truth. See EAuto L.L.C. v. Triple S. Auto Parts. d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000). This proceeding is not conducive to such credibility determinations given the lack of discovery and, in the normal course, the lack of live testimony.”
In the present case, the Panel is highly sceptical and almost incredulous about the Respondent’s claim that he registered the disputed domain name in 1996 in order to establish a website dedicated to Mr. Greenspan whom he considered “The Economist”. Especially when the disputed domain name gives no clue that it was intended to lead to a site in honor of Mr. Greenspan. Furthermore, the Respondent has done nothing in 11 years other than to have posted a picture of Mr. Greenspan on the site.
The Panel also has some doubts about the Respondent’s denial in paragraph 6 of his first declaration that he had never received any correspondence from the Complainant, in view of the letter sent to him by the Complainant in April 2001. His statements generally appear somewhat self-serving.
The Respondent’s failure to respond to that letter and his ongoing use of the disputed domain name, which resolves only to a site showing a picture of Mr. Greenspan, is enough to show ongoing bad faith use in this case. However, in view of the Respondent’s declarations under penalty, the Panel cannot find bad faith registration proved on the balance of probabilities. Despite the Panel’s misgivings about the credibility of his claim, this proceeding under the Policy is not the proper forum for testing its validity more than 11 years after the domain name was registered. The only way that Mr. Rose’s assertions can be tested is in litigation where a judge would have proper opportunity of assessing the quality of this evidence. A proceeding under the Policy is not the proper forum for determining such a belated issue of fact (cf. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., supra).
Accordingly, the Complainant has failed to prove bad faith registration of the disputed domain name and therefore has not satisfied paragraph 4(a)(iii) of the Policy.
This case exemplifies, very vividly, the difficulties faced by a complainant who brings proceedings under the Policy many years after a disputed domain name has been registered. The delay of 11 years between registration of the disputed domain name and the filing of the Complaint is the longest this Panelist has encountered in over eight years of adjudicating on domain name disputes.

7. Decision
For all the foregoing reasons, the Complaint is denied.

                                            

Hon. Sir Ian Barker, QC



Sole Panelist
Dated: February 5, 2008



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