WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reuters Limited v Global Net 2000, Inc
Case No. D2000-0441
1. The Parties
1.1. The Complainant is Reuters Limited a corporation duly organized and existing under the laws of England and Wales (No. 145516) with a registered office at 85 Fleet Street, London, EC4P 4AJ, England. The Respondent is Global Net 2000, Inc., a business located at Record Building, Tehran, 15577, Iran.
2. The Domain Names and Registrar
2.1. The domain names the subject of this Complaint are:
For ease of reference, at various points throughout this Decision identification of each of these domain names is made by way of the number associated with it in the above list.
2.2. The Registrar of this domain name is Network Solutions, Inc of Herndon, Virginia, USA ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. The Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). The email copy of the Complaint was received by the WIPO Center on May 16, 2000, and the hard copy of the Complaint was received by the WIPO Center on May 18, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, by email dated May 18, 2000. A copy of the Acknowledgement of Complaint was sent to the Administrative Contact of the Respondent by courier and by email on the same day.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on May 17, 2000. By email to the WIPO Center on May 19, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain names the subject of the Complaint; confirmed that the current registrant of domain names (1) to (4) is the Respondent, and that the current registrant of domain name (5) is Reutersnews.com; informed that the administrative, technical, zone and billing Contact for each of the domain names is Siavash Behain, and provided postal, telephone, facsimile and email contact details for the Contact; and informed that the status of each of the domain names in issue is "active". The Registrar also confirmed that its 5.0 Service Agreement is in effect. Amongst other things, that agreement provides that the Respondent as registrant of the domain names agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3. Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier to the postal contact details of the Respondent and the Contact on May 22, 2000, and by email to the email addresses of the Respondent and the Contact on May 29, 2000. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on those dates.
3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5. No Response was filed by the Respondent within the time specified in the Notification of Complaint. As of the date of this decision, no Response had been filed by the Respondent.
3.6. A communication from the Contact for the Respondent was received by the WIPO Center by email on May 18, 2000. This communication was, presumably, in response to the copy of the Acknowledgement of Complaint that was sent to the Contact of the Respondent on that same day. The Contactís email communication stated as follows:
I have been waiting for the domain name transfer agreements to arrive from Kenneth Parks and Beatriz Roth. I have not received them. Our original agreement was once the domain names are transferred the following fees would be reimbursed:
1. $100 per domain name (for initial registration cost)
2. $10 per domain name transferred (notarization fee)
Please sent (sic) the domain name transfer agreements to:
11288 VENTURA BLVD.
STUDIO CITY, CA 91604
Constitution of Administrative Panel
3.7. Having received no Response from the Respondent within the specified time in the second-sent Notification of Complaint, on June 21, 2000, the WIPO Center issued to both parties a Notification of Respondent Default. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Dr. Andrew F. Christie to so act. On June 26, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On June 28, 2000 the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christieís appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by July 12, 2000. The case before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.8. This Administrative Panel notes that pursuant to rule 1 of the Uniform Rules, the "Respondent" means "the holder of a domain-name registration against which a complaint is initiated", and that pursuant to rule 3(c) of the Uniform Rules, "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder". This Administrative Panel also notes that the registrant of domain name (5) is Reutersnews.com, not the Respondent Global Net 2000, Inc.
3.9. Nevertheless, it is the case that the administrative, technical, zone and billing Contact for domain names (1)-(4), Siavash Behain, is also the administrative, technical, zone and billing Contact for domain name (5). In addition, the precise legal status (including whether it in fact exists) of the registrant for domain name (5) is not clear. Further, in his email communication to the Center of May 18, 2000 Siavash Behain did not distinguish between domain names (1)-(4) on the one hand and domain name (5) on the other hand, and accordingly asserted an authority in relation to all of the domain names in issue in this Complaint. Finally, the Respondent did not challenge the validity of any aspect of the formalities of the Complaint. In light of these facts, it appears to this Administrative Panel that in substance the one entity, the Respondent acting through Siavash Behain, is the legal person responsible for and beneficially entitled to the registration of each of the domain names in issue, and so may be said to be the "domain-name holder" for the purposes of rule 3(c) of the Uniform Rules. Accordingly, and taking into account the general principles underlying the Uniform Policy and the Uniform Rules, this Administrative Panel finds that the Complaint properly relates to each of the domain names in issue.
3.10. This Administrative Panel therefore concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.
Complainantís Activities and Trademarks
4.2. The Complainant is a leading international news and financial information services group. It is also the largest international news and television agency in the world, serving both traditional and new media.
4.3. The Complainant is the sole and exclusive owner of a number of trademark registrations for the REUTERS mark throughout the world, including, but not limited to, the United States, the United Kingdom, Canada, Spain, France, Benelux, Denmark, Switzerland, Austria, Germany, Italy and the European Union. A schedule of the Complainantís trademark registrations of, and copies of the United States and United Kingdom registration certificates for, the REUTERS mark are attached as Exhibit C to the Complaint.
4.4. The REUTERS mark has been used extensively on television and the Internet, in newspapers and in various other media by the Complainant. The Complainant also has spent many millions of dollars annually on various types of advertising involving the REUTERS mark.
4.5. The Complainant has an active presence on the Internet. The principal domain name currently registered and used by Complainant is "reuters.com". The Complainant registered "reuters.com" with NSI on June 3, 1993. The Complainant also owns the domain names "reuters.net" and "reuters.org".
4.6. Domain name (1) was registered by the Respondent on April 14, 1998. Domain names (2)-(4) were registered by the Respondent on June 8, 1998. Domain name (5) was registered by the Respondent on September 5, 1999.
4.7. In relation to domain name (1), the Complainant asserts that in the Spring of 1998, "the Respondent linked the domain name Ö to its Web site at www.global2000.com, which advertises Web hosting services, and to www.netbouncers.com, which displayed pornographic material". The Complainant further asserts that "the way this domain name was used varied over time but it was always linked to pornographic material". The Complainant provided no evidence in support of these assertions. This Administrative Panel does not find that these assertions are established as facts.
4.8. In relation to domain name (5), the Complainant asserts that "Respondent linked this domain name to its Web site at www.letssearch.com, a Web site that advertised links to pornographic Web sites". Again, the Complainant provided no evidence in support of these assertions. This Administrative Panel does not find that these assertions are established as facts.
4.9. The Complainant sent two letters of demand, one in November 1999 to the Respondentís Contact in relation to domain name (5), and the other in December 1999 to the Respondent in relation to domain name (1), both stating that the Respondentís registration and use of these domain names violated the Complainantís legal rights. Copies of these letters are attached as Exhibits F and G to the Complaint. The Complainant asserts that the Respondentís Contact, Mr. Behain, responded to the first letter by offering to sell the domain name to the Complainant. The Complainant provided no evidence in support of this assertion. This Administrative Panel does not find that this assertion is established as a fact.
4.10. The Complainant asserts that, as of April 28, 2000, when an Internet user typed "www.ruters.com" into a Web browser, the first Web page that appeared identified the Web site as the "Future Home of Ruters.com." The Internet user was then immediately transferred to Respondentís Web site at global2000.com. Copies of these Web pages as they appeared on April 28, 2000 are attached as Exhibit I.
4.11. The Complainant asserts that the Respondent has registered numerous domain names incorporating famous trademarks (including, but not limited to, "audidealers.com", "saabdealers.com" and "porschedealers.com") or incorporating common misspellings of famous trademarks (including, but not limited to, "acceshollywood.com", "washingtonpos.com" and "midspring.com"). Copies of the printouts of database searches conducted through WHOIS on April 28, 2000, listing Respondent as the registrant of these domain names, are attached as Exhibit D to the Complaint.
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to each of the domain names the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that each of the domain names are confusingly similar to the Complainantís registered trademark REUTERS.
5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the domain names bear no relationship to the business of the Respondent. Accordingly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names in issue.
5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances. First, the Respondent seeks to take advantage of the owner of a famous mark and to attract traffic to its own sites by improper use of a famous mark. In particular, the Respondent has registered other domain names that have no legitimate connection to its business and that contain other prominent marks (including "audidealers.com" and "acceshollywood.com"). Secondly, the Respondent has used the REUTERS mark to drive visitors to its Web site by forwarding visitors entering the domain names in issue to its site, www.global2000.com, used in connection with Respondentís Web hosting services. The Respondent thus attempts to generate commercial gain by creating confusion as to the affiliation of its Web hosting and pornographic services with the REUTERS mark, and as such, its activities correspond to those listed in paragraph 4(b)(iv) of the Policy as evidence of bad faith registration and use of a domain name. Thirdly, the Respondent has exhibited a pattern of cybersquatting behavior because it registered domain name (5) in order to prevent Complainant from having access to and reflecting the mark in a corresponding domain name. As such, the Respondentís activities correspond to those listed in paragraph 4(b)(ii) of the Policy as evidence of bad faith registration and use of a domain name. Fourthly, the Respondent has not used the domain names in connection with any bona fide offering of goods or services, has not been commonly known by the domain names, and has not made any noncommercial or fair use of the domain names.
5.5. The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
6.1. In relation to domain name (1), the relevant part of this domain name is "wwwreuters". Part of this name, "reuters", is identical to the Complainantís trademark REUTERS. The other part of this name, "www", is the well know acronym for "world wide wide", and is an extremely common, although not universal, prefix (when succeeded by a period) to the domain name in a URL for a web page on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain names. In fact, in the context of domain names, the letters "www" have the effect of focusing particular attention on the word succeeding them, in this case the word "reuters". This is because a casual reader of the domain name may wrongly think that there is a period between the "www" and the succeeding word, and so wrongly assume that the domain name is in fact comprised only of the succeeding word. In addition, this Administrative Panel acknowledges that the practical effect of preceding a trademark with the letters "www" in a domain name is so-called "typo-piracy" (see WIPO case D2000-0256 World Wrestling Federation Entertainment, Inc. v. Matthew Bessette) - that is, attracting to a different web site the Internet user who mistakenly fails to insert a period after the letters "www" when typing the URL of the intended web site. Because of both the visual similarity and the potential for typo-piracy, this Administrative Panel finds that the domain name "wwwreuters.com" is confusingly similar to the Complainantís trademark REUTERS.
6.2. In relation to domain names (2)-(4), the relevant parts of these domain names are, respectively, "reters", "ruters" and "reuers". In each case, the relevant part of the domain name differs from the Complainantís trademark REUTERS by one letter. It is clear that none of domain names (2)-(4) are identical to the Complainantís trademark. Are any them, however, confusingly similar to it? Answering this question is not without some difficulty. In seeking the answer, it is helpful to consider the context in which the domain names are being used, as well as the aural and visual similarity between the domain names and the Complainantís trade mark.
6.3. The context in which these domain names are being used provides only limited assistance in deciding the issue of confusing similarity. Domain names (2) and (4) have not been used at all. Domain name (3), "ruters.com", was used by the Respondent to attract Internet users to its web hosting web site at htpp://global2000.com. There is nothing about the context of this use which strongly supports an argument that the word "ruters" is confusingly similar to the Complainantís trademark.
6.4. An aural comparison of the domain names with the Complainantís trademark is not conclusive on the issue of confusing similarity. The likely pronunciation of "reters" and "ruters" is not particularly similar to the pronunciation of REUTERS. This Administrative Panel is not certain how a member of the Internet using public would pronounce "reuers". In any event, whilst some of the plausible pronunciations of this word are similar to the pronunciation of the Complainantís trademark, others are not.
6.5. A visual comparison of these domain names with the Complainantís trademark provides the strongest support for the assertion that they are confusingly similar to it. The trademark REUTERS derives from the surname of Baron Paul Julius von Reuter, who opened a telegraph office near the London Stock Exchange in 1851, a business which subsequently transformed into the worldís first news agency (see Encyclopedia Britannica CD 98). The trademark REUTERS is not descriptive of anything, and is thus highly distinctive of the Complainantís business. A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. In the absence of any argument to the contrary from the Respondent, this Administrative Panel concludes that, on balance, domain names (2)-(4) are confusingly similar to the Complainantís trademark.
6.6. In relation to domain name (5), the relevant part of the domain name is "reutersnews". This part of the domain name differs from the Complainantís trademark by the succeeding word "news". Given that the Complainantís trademark is distinctive of the Complainantís business of providing news services, the inclusion of the word "news" with the word "reuters" in domain name (5) makes the compound phrase "reutersnews" confusingly similar to the Complainantís trademark REUTERS.
Respondentís Rights or Legitimate Interests in the Domain Name
6.7. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain names. In light of this fact, the fact that the domain names bear no relationship to the business of the Respondent, and the fact that the mark REUTERS is not one that the Respondent would legitimately choose in the context of provision of goods or services via a web site unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in any of the domain names the subject of the Complaint.
Domain Name Registered and Used in Bad Faith
6.8. The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain names in bad faith. Rule 14(b) of the Uniform Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules. This Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts.
6.9. The Complainant made a number of assertions about the Respondentís activities which it claimed were relevant to the issue of whether the Respondent registered and is using the domain names in bad faith. Some of these assertions - namely the assertions of the linking domain names (1) and (5) to web sites either containing or advertising links to pornographic material, and the assertion of the Respondentís offer to sell domain name (5) - were found by this Administrative Panel not to be established as a matter of fact. Of the assertions found to be established as a matter of fact, the following are considered to be particularly relevant to the issue of bad faith registration and use. First, the Respondent used domain name (3), "ruters.com", to attract Internet users to its web site at htpp://global2000.com, and did so for commercial gain, by creating confusion with the Complainantís trademark as to the source, sponsorship, affiliation or endorsement of that web site and/or a product or service on that web site. Such use is use of type contemplated by paragraph 4(b)(iv) of the Uniform Policy, and accordingly is evidence of the registration and use of domain name (3) in bad faith. Secondly, the Respondent registered domain name (5), "reutersnews.com", in order to prevent the Complainant from reflecting its trademark REUTERS in a corresponding domain name, (namely "reutersnews.com"), and did so in circumstances where there is evidence of the Respondent engaging in a pattern of such conduct (namely in relation to the domain name registrations referred to in paragraph 4.11 above). This use is use of the type contemplated by paragraph 4(b)(ii) of the Uniform Policy, and accordingly is evidence of the registration and use of domain name (5) in bad faith. Accordingly, this Administrative Panel finds that domain names (3) and (5) were registered and are being used by the Respondent in bad faith.
6.10. Whilst there is no evidence of circumstances of the type contemplated in paragraphs 4(b)(i)-(iv) of the Uniform Policy in relation to domain names (1), (2) and (4), this Administrative Panel nevertheless considers that the circumstances proved by the Complainant do establish that these domain names also were registered and are being used by the Respondent in bad faith. The Complainantís registered trademark is long established and widely known and so, in the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainantís rights in the trademark can be imputed to the Respondent at the time of its registration of the domain name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain names, the fact that the Respondent has used the very similar domain names (3) and (5) in bad faith, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain names, there is sufficient grounds to persuade this Administrative Panel that domain names (1), (2) and (4) were registered and are being used by the Respondent in bad faith.
7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain names the subject of the Complaint.
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc, transfer to the Complainant, Reuters Limited, the following domain names:
Andrew F. Christie
Dated: July 13, 2000