WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings Inc. v. JB Designs
Case No. D 2000 - 0216
1. The Parties
The Complainant is TPI Holdings, Inc., a corporation organized and existing under the laws of the State of Delaware having its principal place of business in Atlanta, Georgia, U.S.A. The Respondent is JB Designs, having an address at Box 20515, 732, Davie Street, Vancouver, BC V6S 2N8, Canada.
2. The Domain Name(s) and Registrar(s)
The domain names <yachtrader.com> and <yachtrader.net> are the subject of these Administrative Proceedings.
3. Procedural History
On March 28, 2000 the Complainant submitted the Complaint to the WIPO Arbitration and Mediation Center (hereinafter "the Center") by e-mail. Said Complaint was submitted to the Center pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as "the Policy") adopted by the Internet Corporation for Assigned Names and Numbers hereinafter referred to as "ICANN") on October 24, 2000.
On the same date the original Complaint was sent to the Center by courier together with four hard copies of the complaint and the Complainants fee for these Administrative Proceedings. These documents were received by the Center on March 29, 2000. At the same time the Complainant sent a copy of the Complaint to the Registrar with which the domain names in dispute had been registered.
On March 29, 2000 the Center sent an acknowledgement of receipt of the Complaint to the Center.
In accordance with rule 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and rule 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules") the Center verified that the Complaint satisfied the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Complainant.
On April 4, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent by post/courier (with enclosures), by facsimile without attachments and by e-mails (without attachments). A copy of said Notification was sent to the Complainant's authorized representative, by e-mail (without attachments), and to ICANN and to the Registrar by e-mail (with attachments) on the same day.
Said Notification advised inter alia that these Administrative Proceedings commenced on April 4, 2000 and that the Respondent was obliged to furnish a Response within 20 days.
On April 26, 2000 the Center received the Response from the Respondent and acknowledged receipt of same on April 27,2000.
On May 3, 2000, in accordance with rule 6(f) of the Rules, as the Parties had elected to have the dispute decided by a single member panel, the Center appointed James Bridgeman as the single member Administrative Panel, having received a Statement of Acceptance and Declaration of Impartiality and Independence from him. On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and a copy of same was sent to the Administrative Panel by e-mail.
On May 3, 2000 the Center sent the case file to the Administrative Panel and notified the Parties of same.
This Administrative Panel concludes that it was properly constituted and appointed.
4. Factual Background
The Complainant is the registered owner of the registered trademark <YACHT TRADER>. This trademark was registered in the United States Patent and Trademark Office on June 18, 1991 and given registration number 1, 648, 145. The mark was registered in Class 16 registered in respect of "periodic magazines" and subject to a disclaimer that "no claim is made to the exclusive right to use 'yacht' apart from the mark as shown". The predecessor in title to the Complainant applied for registration of said trademark on June 21, 1990 and the application was assigned to the Complainant on March 25, 1991.
The Complainant operates www sites accessible via the domain names <yachttraderonline.com>, <boattraderonline.com> and <traderonline.com>.
The Respondent operates a www site accessible via the domain name <yachtrader.com>. The Respondent has not to date used the domain name <yachtrader.net> and states that it is not yet operational but that the Respondent intends to use this domain name as the address of a www site that will be identical to the site accessible via the <yachtrader.com> domain name.
5. Parties’ Contentions
The Complainant's Trademarks
The Complainant claims that the Complainant, its predecessors, affiliates and licensees have adopted and used a number of marks incorporating the word <TRADER> since at least as early as 1974. It claims continuous use in the U.S.A. of the trademark <YACHT TRADER> since 1990 in connection with print publications that provide advertising and information about yachts and goods and services related to boating.
The Complainant claims to have extended its activities and use of the <YACHT TRADER> mark to provide advertising and information about yachts and other boating products and services via an online electronic communications network, using the <yachtraderonline.com> domain name and also providing information about the publication YACHT TRADER. Furthermore the Complainant claims to have provided information about this magazine on the other www sites owned by the Complainant including <boattraderonline.com> and <traderonline.com>.
As regards the Complainant's trademark rights, the Complainant submits that the domain names <yachtrader.com> and <yachtrader.net> are virtually identical and confusingly similar to the Complainant's <YACHT TRADER> trademark.
Furthermore the Complainant states that the services which the Respondent is providing or expects to provide are identical to the services being provided by the Complainant under its <YACHT TRADER> trademark.
The Respondents Rights or Legitimate Interest
As regards any rights or legitimate interest in the domain name which the Respondent might claim, the Complainant points out that the Respondent registered domain names <yachtrader.com> and <yachtrader.net> on December 29, 1999, this was eight years after the date of registration of the said trademark <YACHT TRADER> and nine years since its first use by the by the Complainant and it's predecessors in title and that the Respondent would have been aware of the Complainant's magazine prior to its registration of the said domain name.
The Complainant points out that the Respondent has not previously distributed a magazine under the name Yachtrader and that the magazine promoted by the Respondent on its www site is entitled <YACHTING> and the first time any exerpts from the magazine <YACHTING> appeared on the Respondent's www site was on March 20, 2000.
As regards claiming bad faith on the part of the Respondent in registering the said domain names, the Complainant has submitted that the Respondent must have known that the Complainant was the owner of the trademark <YACHT TRADER> when it registered the domain names <yachtrader.com> and <yachtrader.net> because of the long-standing marketing and distribution of the Complainants publications, including on the internet.
As regards claiming bad faith on the part of the Respondent in the use of the said domain names <yachtrader.com> and <yachtrader.net>, the Respondent submits that the Respondent, without authorization, is using the Complainants hard-copy magazine and its online magazine as a source for the information the Respondent is providing on its www site at the <yachtrader.com> address.
Furthermore the Complainant submits that the Respondent is providing and touting to consumers a purported relationship with the Complainant by (a) referencing the Complainant's magazine and <TRADER> marks, including the <YACHT TRADER> trademark, (b) referencing the Complainant's affiliate's division, Trader Electronic Media on its site, (c) referencing the Complainant's affilliate Trader Publishing Company on its site, (d) providing links to the Complainant's sites, (e) mimicking completely the look and feel of the Complainant's site by imitating the configuration, design and selection of the same elements, and (f) using the Complainant's copyrighted materials on the said site.
The Complainant submits that the Respondent clearly studied the Complainant's www site at <boattraderonline.com> to design its own site because it is claimed that the Respondent meticulously copied page for page and element for element much of the Complainant's site. The Respondent was clearly aware of the existence and content of the Respondent's sites because the Respondent provides a link on its site to the Complainant's <yachttraderonline.com> www site.
It is submitted by the Complainant that a comparison of the home page of the Complainant on the <boattraderonline.com> www site with the Respondent's home page on <yachtrader.com> www site shows that both Parties offer the same services and information and that it is clear that the Respondent has displayed these services in the same format and lay-out as the Complainant's <boattraderonline.com> www site, with virtually identical "click-on" components for the services being offered, including "Search", "Place an Ad", "Brokers/Dealers", "Links", "Quick Search" and "Price Checker". Furthermore when a visitor to the Respondent's www site clicks on any of the elements in this menu the resulting displayed www page is virtually identical to the corresponding www page on the Complainant's site. It submits that the Respondent has copied this content.
The Complainant points to the fact that the Respondent has put links on its www site to the sites of the Complainant and its affiliates. On March 8, 2000, the Complainant sent a cease and desist letter to the Respondent and the Complainant submits that although the Respondent did not respond to said cease and desist letter, the Respondent changed the content of its site including deleting references to the Complainant's affiliate, deleting the Complainant's copyright notice and reducing the reference to the Complainant's <SOUNDINGS> publication.
The Complainant claims that the Respondent has continued to attempt to trade off the Complainant's goodwill and consumer recognition of the Complainant's family of <TRADER> marks generally and its <YACHT TRADER> trademark in particular.
The Complainant has submitted documentation supporting these claims in particular print-outs of the Parties respective www sites. On the basis of the above content of the Respondent's www site the Complainant submits that the Respondent is using the <yachtrader.com> domain name to promote itself and to offer goods and services similar to those offered by the Complainant and the Respondent is therefore intentionally attempting, for commercial gain to attract internet users to its www site by creating a likelihood of confusion with the Complainant's trademark as a source of sponsorship, affiliation or endorsement of its www site or of its products.
Furthermore the Complainant intends to use the <yachtrader.net> domain name in order to trade on the public's recognition of the Complainant's <YACHT TRADER> trademark and the goodwill associated with it or to prevent the Complainant from using the domain name.
The Complainant requests this Administrative Panel to issue a decision that the <yachtrader.com> and <yachtrader.net> domain names be transferred to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
Complainant's Trademark Rights
As regards the Complainant's trademark rights the Respondent submits that while accepting that the Complainant is the owner of the above mentioned registered trademarks and is the publisher of various magazines bearing the name <TRADER> in the U.S.A., the Respondent submits that these products are not available in Canada.
The Respondent's <yachtrader.com> www site is hosted on servers in British Colombia and the Respondent has not initiated any direct marketing in the USA.
The Respondent submits that there are numerous publications in Canada, none of which is published by the Complainant. These include magazines entitled <Auto Trader>, <Truck Trader>, <Canada Trader>, <Bike, Boat & RV Trader>. The Respondent has submitted photocopies of the cover pages of these magazines.
The Respondent claims to be an unincorporated proprietorship, carrying on business in Vancouver, British Colombia, Canada and is the publisher of a relatively new magazine published under the title <WEST COAST YACHTING MAGAZINE>. This magazine is published in Vancouver and has a circulation in British Colombia. The Respondent states that it hopes that this magazine will grow to provide comprehensive coverage of West Coast news and events in the yachting community.
The Respondent claims that it registered the domain names in December 1999 and intends to develop its www site in conjunction with, and as a companion to its < WEST COAST YACHTING MAGAZINE >, to serve as a forum for buying and selling yachts for readers of the magazine and others interested in, and connected with, the yachting industry.
The Respondent submits that many domain names relating to yacht trading have been registered and/or are being operated as yacht trading sites and many serve as Internet addresses for active sites. The Respondent submits print outs of the home pages of some of these sites and provided this Administrative Panel with the following list which includes the Complainant's domain names, to illustrate this point: viz. <yachts.com>;<yachts.net>;<yachting.com>;<yachting.net>;<yacht.com>; <yachtrader.com>;<yachtrader.net>;<yachttrader.com>;<yachttrader.net>; <yachttraderonline.com>; <yachttraderonline.net>; <shiptrader.com>; <shiptrader.net>; <trader.com>; <trader.net>; <boating.com>; <boatsource.com>; <boatsforsale.net>; <boattrader.com>; <boattrader.net>; <boattraderonline.com>; <boattraderonline.net>; <canadatrader.com>; <canadatrader.net>.
The Complainant submits that under Canadian law the words <YACHT TRADER> would not be registrable as as a trademark as they are descriptive of the character or quality of the wares or services in association with which it is used.
The Respondent submits that the Complainant should not be permitted to monopolise the words <YACHT TRADER> simply on the basis of a trademark registered in the U.S.A.. It is argued that the courts of law in the U.S.A. would not have jurisdiction over the Respondent. To support this contention the Respondent cites Zippo Mfg. Co. v. Zippo Dot Com, Inc. 952 F. Supp. 1119 (W.D.Pa. 1997) which distinguished three types of use of wwwsites. At one end of the spectrum there are cases where individuals can directly interact with a company over the internet site, download, transmit, or exchange information with the company, and enter into contracts with the company via computer. In such cases, personal jurisdiction is appropriate. At the other end of the spectrum are cases in which the defendant has done nothing more than advertise on the internet. Such cases are called "passive sites" and personal jurisdiction is generally not found. In the middle are cases where parties can interact with the www site but may not be able to contract with it over the internet. In these cases, whether jurisdiction can be found is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the www site. [VP Intellectual Properties, LLC v. Imtec Corp. N.J. Civil Action No 99-3136] The Respondent submits that its www site is at best an example of the middle category and as there is no commercial activity by the Respondent in the U.S.A., the courts in the U.S.A. would not have jurisdition over the Respondent.
The Respondent further submits that there is no evidence of confusion between its www site and the Complainant's <yachttraderonline.com> www site as the <yachttraderonline.com> www site is used to advertise and promote the Complainant's magazine and not as a vehicle for buying and selling yachts.
Furthermore the Respondent submits that to the extent that the Complainant and the Respondent are offering competing services, they are doing so under two entirely different domain names viz <boattraderonline.com> and <yachtrader.com> respectively.
The Respondent submits that the said domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Respondents Rights or Legitimate Interest
As regards having rights or a legitimate interest in the domain names, the Respondent repeats that the Complainant does not have a monopoly over the use of the term, <YACHT TRADER> which is a purely descriptive term. It claims to have a legitimate interest in using a term which is purely descriptive of the Respondent's services.
The Respondent denies that the said domain names were registered and are being used in bad faith.
As regards the choice of the domain names, the Respondent claims that they were chosen because they are descriptive of the services that the Respondent planned to provide. The Respondent further stated that at the time of registration, it was not aware of that the Complainant was the owner of the <YACHT TRADER> trademark. It claims to have been aware that there was a myriad of different print publications in Canada, including <Auto Trader Magazine>, <Truck Trader Magazine> <Canada Trader Magazine>, <Bike, Boat & RV Trader Magazine> as well as numerous on-line trading sites listed above.
With regard to the similarity between the Parties’ www sites, the Respondent admits that it studied the Complainant's <boattraderonline.com> www site as well as other www sites as a model for designing the <yachtrader.com> www site. The Respondent also accepts the Complainants claim that originally the Respondent's www site contained links to the Complainant's <yachttraderonline.com> www site, but that all links to the Complainant's products have been removed, except a link to the Complainant's search-engine which use, it claims to be authorised and in fact encouraged by the Complainant. The Respondent has exhibited a print-out of one of the Complainant's www sites which offers the facility to users to make their own search-engines.
It further argues that sites offering similar services are bound to have similar "click on" components, such as, in this case: "search"; "links"; "price checker"; and "charters".
Furthermore, with regard to the Complainant taking issue with the fact that the Respondent had links to the Complainant's sites, the Respondent argues that there is nothing inherently wrong with offering links from one site to another. In a recent Californian decision, Ticketmaster Corp. v. Tickets.com, Inc., ( U.S. District Court, Central District of California, March 27, 2000) the court concluded that hyperlinking does not involve a violation of U.S.A. copyright law.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must show that:
(i) the Respondent's domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names, and
(iii) the domain names were registered and are being used in bad faith.
The Complainant's Trademark Rights
It is common case between the parties that the Complainant is the owner of the above reference registered trademark <YACHT TRADER> and has an established goodwill in the U.S.A. in this trademark.
To satisfy the first part of the test set out in paragraph 4(a)(i) it remains for the Complainant to prove that the domain name is identical to or confusingly similar to this trademark. It is clear that the Complainant is correct in its submission that these are virtually identical and confusingly similar. In reaching this conclusion this Administrative Panel is conscious that the Complainant's registered trademark is the subject of a disclaimer in relation to the use of the word "yacht".
While this Administrative Panel accepts that the Respondent may have merit in the argument that the said trademark is descriptive and that there are other similar trademarks and that the trademark may not be registrable in certain jurisdictions, these are questions outside the scope of this Administrative Proceedings and it concludes that the Complainant has satisfied the first part of the test.
The Respondents Rights or Legitimate Interest
As regards the Respondent's rights or legitimate interest in the domain names, this Administrative Panel notes that Respondent is the publisher of a relatively new magazine published under the title <WEST COAST YACHTING MAGAZINE>. The Complainant erroneously described this as being entitled <YACHTING>. This magazine is published in Vancouver and has a circulation in British Colombia. A photocopy of the first page of the first edition of this magazine is dated April 2000. This is very recent and the Respondent has not made any claim to the use of the words <YACHT TRADER> or <yachtrader> prior to the registration of the domain names.
It submits that there are numerous publications in Canada, none of which is published by the Complainant, but it does not claim to be the owner or licensee of any of these.
The Respondent claims to have a right and legitimate interest in the use of the domain name <YACHT TRADER> by virtue of the fact that this term is descriptive of the Respondents services. While accepting that in many cases use of a descriptive term could well amount to a legitimate interest, this Administrative Panel is conscious that in these Administrative Proceedings neither party claims to be a trader in yachts, but each claim to be publishers of magazines and providers of internet services. In addition, there seems to be a prima facie case that the Complainant has accrued common-law rights in addition to its rights in its registered trademarks in the use of these words <YACHT TRADER> which it has adapted to its use on its publications in the U.S.A.. This Administrative Panel is not required to consider the extent, if any of such common law rights in the next neighbouring jurisdiction, British Colombia which has an extensive maritime commerce.
This Administrative Panel therefore concludes that the Respondent has no rights or legitimate interest in the said domain names and the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
There is a clear contradiction in the Respondents submissions relating to its knowledge or otherwise of the Complainant's activities when the domain names <yachtrader.com> and <yachtrader.net> were registered.
On the one hand the Respondent denies any knowledge of the Respondent at the time of the registration, whereas on the other hand it states that it was aware of the numerous www sites incorporating the words <yacht>, <trader> and <boat>. These include the Complainant's www sites and this Administrative Panel is not convinced that a publisher planning to launch a hard-copy and on-line magazine for people with an interest in yachts and boats would not be aware of the likely competitors in the next-neighbouring maritime jurisdiction. Any reasonably thorough search of the www sites offering similar publications would have disclosed the Complainant's sites.
Furthermore, the Complainant has exhibited print-outs of its www site and of the Respondents <yachtrader.com> www site. This Administrative Panel accepts that it is likely that www sites offering similar services may have similar menus and "click on" components, such as in this case, the words "search" and "links" on the home page linking to other pages on the site. It is possible even that this logic may extend even to the use of the words "price checker" and "charters" as the Respondent claims.
However, in the print-outs of the home pages furnished, there is clear evidence of slavish copying of the Complainant's www site by the Respondent which may or may not amount to copyright infringement. This slavish copying extended beyond the links themselves to the text describing the links. For example in on both www sites the following words are used to describe links: "Search…powerboats, sailboats, yachts, personal watercraft, kayaks"; "Brokers/Dealers Search our online dealers and brokers!";" Real Estate Search through waterfront property listings provided by Soundings!"; "Charters Everything from listing your charter for free to tips to help you plan your next trip!"
A comparison of the other pages on these www sites, demonstrates a prima facie case of copyright infringement by the Respondent on the <yachtrader.com> www site. The Respondents "Charters" page, "Price Checker" page and "Boating Links" page, copies of which have been furnished by the Complainant, show that the Respondent slavishly copied the content of these pages from the Respondent.
The Complainant has established a prima facie case that the Respondent slavishly copied content from its www site. The Respondent has accepted that it studied the Complainant's www site but has not admitted slavish copying. This Administrative Panel is convinced that the Respondent has used the domain name <yachtrader.com> in bad faith by using it as the address to a www site which contains content slavishly copied, without licence or authority, from the Respondent's site.
Taken together the registration and use of a domain name <yachtrader.com> which is almost identical to the Complainants well established trade mark, in circumstances where the Respondent had no legitimate interest in the use of the domain name and the slavish copying of content from one of the Complainant's www sites and the provision of links to the Complainants www sites, must lead this Administrative Panel to conclude that the Respondent intentionally intended to attract for commercial gain, internet users to its www site by creating a likelihood of confusion with the complainant's mark as the source, sponsorship, affiliation, or endorsement of its www site and as such in accordance with the examples given in paragraph 4 (b) of the policy is evidence of the registration and use of the domain name in bad faith by the Respondent.
This Administrative Panel feels further supported in this conclusion that the domain names were registered in bad faith by the Respondent's unconvincing denial that it had no knowledge of the Complainant at the time of registration, while at the same time it stated that it had knowledge of the Complainant's www sites.
Furthermore intentional infringement of the Complainant's copyright would in itself amount to use in bad faith.
As regards the <yachtrader.com> domain name, there is a number of decisions to date which agree with the principle that inaction may amount to use in bad faith such as Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D 2000-0003; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs (WIPO Case No. D2000 –0131, April 13, 2000); Moana Pacific Fisheries Limited v. Turner New Zealand (WIPO Case No D2000-0139, April 26, 2000); Mondich v. Brown (WIPO Case No. D 2000 – 0004).
In Telestra the Administrative Panel stated:" The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i),(ii) and (iii) (of the Policy) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract, the question can only be answered in respect of the particular facts of a specific case."
In the circumstances outlined above this Administrative Panel concludes that the passive holding of the domain name <yachtrader.net> by the Respondent amounts to use in bad faith. The Respondent has expressed its intention to use this domain name <yachtrader.net> as the address of a www site that will be identical to the www site accessible via <yachtrader.com>. Since this Administrative Panel has already concluded that the said <yachtrader.com> is being used in bad faith because of the content on that www site, it follows that the Respondent has registered and is using the <yachtrader.net> domain name in bad faith.
With reference to Paragraphs 4(i) of the Policy and rule 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain names <yachtrader.com> and <yachtrader.net> identical or confusingly similar to the Complainant's trade mark, that the Respondent has no rights or legitimate interest in respect of either or both of said domain names and that the Respondent has registered and used these domain names in bad faith. Accordingly, this Administrative Panel decides that said domain names <yachtrader.com> and <yachtrader.net> should be transferred to the Complainant.
Date: 22 May 2000