WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited
Case No. D 2000-0158
1 The Parties
1.1 Complainant is a corporation operating in Kingston, Jamaica under the business name IRIE FM. Complainant is represented in this proceeding by Mr. Brian Schmidt, who is the marketing manager of Complainant.
1.2 Respondent is a corporation with an office at Hempstead New York. Respondent also has a presence in Kingston, Jamaica. Respondent is represented in this proceeding by Mr. Fitzroy Beckford, the President of Respondent.
2 The Domain Name and Registrar
2.1 This proceeding is concerned with the domain name ("Domain Name"):
2.2 The Domain Name is registered with Network Solutions, Inc., of Herndon, Virginia, United States of America.
3 Procedural History
3.1 This proceeding was initiated under and is being conducted pursuant to:
(a) the Uniform Domain Name Dispute Resolution Policy ("Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, and approved by ICANN on October 24, 1999;
(b) the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") adopted by ICANN on August 26, 1999, and approved by ICANN on October 24, 1999; and
(c) the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999.
3.2 The Complaint was submitted to the World Intellectual Property Organization ("WIPO") in hard copy on March 14, 2000. On March 20, 2000, WIPO notified Complainant that the Complaint was received in hard copy but not electronic form and was deficient in other respects. Complainant corrected all the deficiencies in the Complaint on or before March 20, 2000.
3.3 On March 22, 2000, WIPO forwarded a Notification of the Complaint to Respondent by post, facsimile, and e-mail, providing a copy to Complainant by facsimile and e-mail.
3.4 WIPO received Respondent's Response in hard copy on April 10, 2000, and in electronic form on April 11, 2000.
3.5 On April 18, 2000, WIPO issued a Notification of Appointment of Administrative Panel and Projected Decision Date. Copies of that document were forwarded to Complainant and Respondent by facsimile and e-mail.
3.6 On April 22, 2000, the Panel issued a request to Complainant and Respondent under Paragraph 12 of the Rules for:
(a) evidence from Complainant that Respondent has no rights or legitimate interests in respect of the Domain Name;
(b) evidence from Respondent that Respondent has rights or legitimate interests in the Domain Name; and
(c) any additional evidence or statements that Complainant and Respondent might wish to make on the subject of rights and legitimate interests that Respondent may or may not have in the Domain Name.
The Panel dispatched the request to Complainant and Respondent by e-mail on April 22, 2000, and by facsimile on April 24, 2000. That request established a deadline for compliance of 5:00 p.m., April 26, 2000, in Vancouver, Canada.
3.7 On April 27, 2000, Respondent replied to the Panel's request of April 22, 2000, by e-mail. The e-mail referred the Panel to the arguments and evidence previously submitted by Respondent.
3.8 Also on April 27, 2000, Complainant replied to the request of the Panel made April 22, 2000, with an e-mail. Complainant's e-mail stated that the Panel's e-mail request of April 22, 2000, was not received until the evening of April 27, 2000, preventing Complainant from responding to the request by the deadline of April 26, 2000. Complainant stated that it would attempt to provide the requested information as soon as possible.
3.9 On April 28, 2000, the Panel decided that the late receipt by Complainant of Panel's e-mail of April 22, 2000, constituted "exceptional circumstances" within the meaning of paragraphs 14(a), 14(b) and 15(b) of the Rules. On account of those exceptional circumstances, the Panel:
(a) extended the deadline for complying with the Panel's request for additional information to 5:00 p.m. (Geneva time) on Wednesday, May 3, 2000; and
(b) extended the deadline for issuing this decision to Tuesday, May 9, 2000.
3.10 On April 29, 2000, Respondent submitted an e-mail advising that Respondent would not be making any further submissions.
3.11 On May 4, 2000, Complainant submitted:
(a) an e-mail contesting an allegation made by Respondent in Respondent's original submission; and
(b) a facsimile transmission providing searches from the Office of the Registrar of Companies of Jamaica confirming the subsistence of a certain trade-mark registrations and applications establishing the "legitimacy" of Complainant's ownership of the name IRIE FM.
4 Factual Background
4.1 Complainant operates a radio station named IRIE FM in Kingston, Jamaica, specializing in reggae music. Complainant says that its radio station is the most popular radio station in Jamaica and has been very well known among the population of Jamaica for close to ten years.
4.2 Complainant says that it has recently begun to establish its own website and that it intends to sell reggae music via the Internet. Complainant has registered the trade-mark IRIE FM in the Jamaican Trade-mark Office on February 10, 1995 under no. B30,934 in association with electrical apparatus and instruments, radio, television, photographic and cinematographic instruments.
4.3 No evidence or other information has been provided by Complainant or Respondent on the nature of Respondent's business, products or services.
4.4 Respondent registered the Domain Name with Network Solutions Inc. in August of 1998. In September of 1998, Respondent registered the domain name <iriefm.com.jm> with the Registrar for the <jm> top level country code domain.
4.5 Respondent has not used the Domain Name as a uniform resource locator for any website.
4.6 On behalf of Respondent, Mr. Beckford says that IRIE is a Jamaican noun meaning good, excellent, great and good quality. He also says that IRIE is a greeting used in Jamaica that is synonymous with "hello". He says that a number of companies and traders in Jamaica use IRIE in their names. Mr. Beckford provided excerpts from the Jamaican telephone directory showing use by others of IRIE in their names and trade-marks.
4.7 Mr. Beckford says that he lived and studied in Budapest between 1986 and 1994 and did not return to Jamaica until 1996. Mr. Beckford says that IRIEFM denotes IRIE FEKETE MEGYE, a social club of foreign students who studied in Budapest, Hungary between 1986 and 1994. He says that the group met regularly at Martos Flora Kollegiuma in Budapest and comprised individuals from all over the world. Mr. Beckford says that the site that Respondent intends to operate using the Domain Name is intended to serve as a forum and portal for members of the social club. He says that the launch of the website was delayed until the fourth quarter of 2000 because several of the members had budding careers and young families.
4.8 Mr. Beckford says that he advised Complainant to initiate this proceeding under the Policy.
4.9 Mr. Beckford says that Complainant's radio station IRIE FM is not entertaining or intellectually stimulating, hence, he "...would not have been acquainted with IRIE FM before a few years."
4.10 Mr. Schmidt says that the Ministry of Commerce and Technology in Jamaica has written to Respondent requesting that Respondent desist from using the Domain Name. A copy of that letter was provided by Complainant.
4.11 Mr. Beckford asserts that the letter from the Ministry of Commerce and Technology in Jamaica should be disregarded. Mr. Beckford also calls into question the authenticity of the letter from the Ministry of Commerce and Technology.
5. Parties' Contentions
5.1 Complainant asserts that:
(a) IRIE FM is the number one radio station in Jamaica and is very well known, if not famous, in Jamaica;
(b) the Domain Name is identical to Complainant's business name and trade-mark;
(c) Complainant is the creator and owner of the trade-mark IRIE FM; and
(d) because Mr. Beckford is a Jamaican who resides in Jamaica, he must have been aware of the name of Jamaica's number one radio station.
5.2 Respondent asserts that:
(a) IRIE was not invented by Complainant but is a Jamaican noun meaning good, excellent, great, and good quality and is also used in Jamaica as a greeting synonymous with hello;
(b) the Domain Name represents the name of a social club for foreign students who studied in Budapest, Hungary between 1986 and 1994 (IRIE FEKETE MEGYE), and the Domain Name was registered for use for a website that would serve as a forum and portal for members of that group;
(c) a number of companies and traders in Jamaica use the word IRIE in their names;
(d) Respondent does not have a long-term familiarity with Complainant's radio station; and
(e) Respondent has never offered the Domain Name for sale to any party.
6. Discussion and Findings
Complainant's Burden of Proof
6.1 Paragraph 4(a) of the Policy places a burden on Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the Domain Name is identical or confusingly similar to a trade-mark or service mark in which Complainant has rights; and
(b) Respondent has no rights or legitimate interests in the Domain Name; and
(c) the Domain Name has been registered and is being used by Respondent in bad faith.
The First Element
6.2 The first element of the test established by Paragraph 4(a)(i) of the Policy has two components, namely:
(a) the complainant must establish that it has rights in a particular trade-mark or service mark; and
(b) the complainant must establish that a domain name being used by the respondent is identical or confusingly similar to the complainant's mark.
6.3 Complainant has established rights in the trade-mark IRIE FM by virtue of use and registration. Complainant asserts that its trade-mark is very well known or famous in Jamaica (that is, the trade-mark is the name of Jamaica's number one radio station and has been a household name for nearly ten years). Respondent does not deny the popularity of the radio station or the fame of the trade-mark.
6.4 The second level of the Domain Name is identical to Complainant's trade-mark IRIE FM except for the space between the "E" and "F".
6.5 The Panel finds that Complainant has satisfied its burden regarding Paragraph 4(a)(i) of the Policy.
The Second Element
6.6 The second element of the test set out in Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
6.7 It is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be relatively light. In any event, Paragraph 4(c) of the Policy gives respondents ample opportunity to demonstrate their rights and interests.
6.8 The Complaint does not allege that Respondent has no rights or legitimate interests in the Domain Name. Complainant has not provided any proof or made any statements showing that Respondent does not have any rights or legitimate interests in the Domain Name even though Complainant was expressly requested by the Panel to do so. Specifically, on April 22, 2000, the Panel requested such evidence and statements and stated that this request could be satisfied "with searches and/or search reports from the Jamaican Trade-mark Office and the Jamaican Company Law Office showing whether or not Respondent has any trade-mark registrations, pending trade-mark applications, corporate names, society names, business names or trading styles that include the words IRIE or IRIE FM."
6.9 On the record before the Panel, the Panel finds that Complainant has failed to satisfy its burden regarding paragraph 4(a)(ii) of the Policy.
The Third Element
6.10 The third element of the test set out in Paragraph 4(a) of the Policy requires Complainant to prove that Respondent has registered and is using the Domain Name in bad faith.
6.11 Because Complainant has failed to satisfy its burden regarding Paragraph 4(a)(ii) of the Policy, it is not necessary to consider whether Complainant has satisfied its burden regarding the ground of registration and use in bad faith under Paragraph 4(a)(iii) of the Policy.
6.12 However, if Complainant had proven the presence of the second element of the test set out in Paragraph 4(a)(ii) of the Policy, the Panel would have been inclined to find that there was sufficient proof demonstrating that Respondent registered and is using the Domain Name in bad faith for the following reasons:
(a) Respondent does not deny that the trade-mark IRIE FM was, in fact, very well known if not famous in Jamaica at the time that the Domain Name was registered;
(b) the second level of the Domain Name is identical to Complainant's trade-mark except for the space that appears in the trade-mark between IRIE and FM;
(c) the inclusion of the letters FM in the Domain Name is consistent with Respondent intentionally targeting Complainant's trade-mark; and
(d) Respondent's stated rationale for selecting and registering the Domain Name is far-fetched on its face and is inconsistent with ownership of the Domain Name by a company named Telesystems Communications Limited rather than by Mr. Beckford personally or a genuine social club.
7.1 To succeed in this proceeding, the Complainant must prove the presence of all three elements identified in Paragraph 4(a) of the Policy. Under Paragraph 15(a) of the Rules, Panels are required to decide Complaints 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 the Panels deem applicable.
7.2 Complainant has not made any statements or provided any proof regarding the presence of the second required element (that is, that Respondent has no rights or legitimate interests in respect of the Domain Name). The Complaint does not address the issue at all. Accordingly, based on the record before the Panel, the Panel finds that Complainant has not established entitlement to the remedies it has requested.
7.3 For the reasons given above, the Panel finds that Respondent is successful in this proceeding and declines to order the remedies requested by Complainant.
Robert A. Fashler
Date: 9 May 2000