WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rapido TV Limited v. Jan Duffy-King
Case No. D2000-0449
1. The Parties
The Complainant is :
Rapido TV Limited, 14-16 Great Pulteney Street, London WIR 3DG, United Kingdom
Victoria Botsoff, Head of Legal Affairs, Rapido TV Limited, 14-16 Great Pulteney Street, London WIR 3DG, United Kingdom
The Respondent is:
Jan Duffy-King of Eurotrash.Com, 20 River Road, #19J, New York, N.Y., United States of America.
Represented by Peter MacConnell Orr, of Tods Murray WS, Solicitors, 33 Bothwell Street, Glasgow G2 6NL, United Kingdom.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: "eurotrash.com"
The Registrar with which the domain name is registered is:
Network Solutions Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 17 and May 22, 2000 respectively.
3.2 On May 20, 2000 the Registrar verified that the current registrant of the domain name is the Respondent, that the Registrar's 4.0 Service Agreement is in effect, that the domain name is in "Active" status.
3.3 On May 30, 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the complaint.
3.4 The Complaint was communicated to Respondent on May 20, 2000 and the Administrative Proceeding commenced on that date.
3.5 On June 15, 2000 Respondent filed his Response. The response was timely filed.
3.6 On June 15, 2000 Complainant contacted WIPO Center asking whether Complainant has an opportunity to respond to the Response. WIPO Center replied by telephone on June 16 and on June 21 Complainant submitted further material ("the Further Complaint") in rebuttal of the Response with a request that this material be considered by the Panel.
3.7 Respondent personally and through his representative objected to the filing of the further Complaint and following further communication between Respondent and WIPO Center, Respondent, on July 31, 2000 filed submissions with respect to the admissibility of the Further Complaint ("the Submissions") and a response to the Further Complaint ("the Further Response").
3.8 Complainant elected to have the dispute decided by a three member Administrative Panel and on August 4, 2000 the Panel comprising Dawn Osborne and Dennis Foster, Panelists and Desmond Ryan, Presiding Panelist was duly appointed in accordance with Rule 6(e) and the due date for the Panel's decision was set as August 17, 2000. Due to exceptional circumstances set out in the Panel's Procedural Order of August 15, 2000 this date was extended to August 24, 2000.
4. The Further Complaint
4.1 The question of the admissibility of further submissions after the filing of the Response will be dealt with as a preliminary issue by the Panel. In this case, in response to an enquiry from Respondent, WIPO Center correctly informed Respondent that the decision whether or not to admit further submissions is one for the Panel, not for the Center. It further pointed out that while Rule 12 provides that the Panel may call for further submissions, the Rules neither expressly permit nor prohibit the filing of further submissions on a party's own motion. Rule 10(d) provides that the Panel shall conduct the proceedings in such manner as it considers appropriate in accordance with the Policy and the Rules. Rule 10(d) provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Accordingly, the Panel considers that it is within the Panel's discretion, properly exercised, to accept or refuse such further submissions.
4.2 The acceptance or refusal of further submissions and the weight to be attributed to them has been considered in a number of cases. Respondent in his submission refers to the decisions of the Panels in Gordon Sumner p/k/a Sting v. Michael Urvan (Case D2000-0596) and Document Technologies Inc., v International Electronic Communications, Inc. (Case D2000-0270). The Panel respectfully agrees with the views expressed by the Panels in those cases. Consistent with the Policy's objective of providing a simple and speedy process for the resolution of cases where the domain name has been registered and used without legitimate reason and in abuse of the trade mark rights of another, the Rules specifically provide only for the submission of a Complaint and a Response. Whilst the Rules provide some flexibility to the Panel to call for or permit further submissions, this should occur only in exceptional circumstances such as those exemplified in the decision of the Panel in the Document Technologies Case (supra).
4.3 The Panel has considered the Further Complaint and in the opinion of the Panel it adds nothing of substance to the Complaint as filed and no special circumstances have been made out. The Panel therefore upholds the objection of Respondent and declines to admit the Further Complaint to the record save for the purpose of paragraph 8 of this decision. It is therefore unnecessary to consider the Further Response otherwise than for the purpose of paragraph 8 but the Panel notes that it contains comprehensive and documented rebuttals of Complainant's further submissions.
4.4 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.
5. Factual Background
5.1 Complainant is a United Kingdom company and is a producer of television programs including a program called "Eurotrash".
5.2 Complaint does not assert ownership of any registered trade marks nor does it expressly assert common law trade mark rights in the domain name. Such assertion is however implicit in its assertion that the domain name and Complainant's trade mark are identical.
5.3 Respondent is an individual. He asserts that he holds the domain name as nominee for and on behalf of Eurotrash.com a company incorporated in the State of Delaware, United States of America and operating principally from New York, N.Y., United States of America. (Respondent and Eurotrash.com are hereinafter collectively and individually referred to as "Respondent"). Respondent carries on business as a "new technology and strategic marketing consultancy".
5.4 Respondent registered the domain name in 1996.
6. Parties Contentions
Complainant contends that:
(i) it is a well known United Kingdom television production company;
(ii) it has since 1996, produced a television program called "Eurotrash";
(iii) the program has been Complainant's most successful program and is shown on UK Channel 4 and other countries throughout the world;
(iv) the program is in its thirteenth series and is its most successful and valuable asset;
(v) the program has a wide audience and has established a greater awareness than is usual for television programs.
Complainant further asserts that each of the conditions required to be satisfied by paragraph 4(a) of the Policy is satisfied and that the domain name has been registered in bad faith because:
(a) Respondent registered the domain name three years after Complainant's "Eurotrash" programs were first broadcast;
(b) Respondent approached Channel 4 to see whether they wanted to buy the domain name;
(c) Respondent has recently offered Complainant the opportunity to buy the domain name;
(d) the software and layout used on Respondent's web-site is unsophisticated and not what would be expected of a site for a new technology business;
(e) there is an image of the Channel 4 studios on Respondent's web-site;
(f) the name "Eurotrash" is inappropriate to Respondent's business and would deter customers.
Complainant does not expressly assert that the domain name is being used in bad faith, but such assertion is implicit sub-paragraphs 6.2(c), (d) and (e).
Complainant seeks transfer of the domain name to it.
Respondent has submitted a detailed and documented Response in which he asserts that he has legitimate rights and interests in the domain name and that he did not register, and has not used, the domain name registration in bad faith.
Respondent denies that:
(a) he approached Channel 4 to ascertain whether they wished to buy the domain name. Respondent asserts that he notified them of his intention to register it to give them the opportunity to object and absent a reply he proceeded to register it. Respondent's contention is supported by one Christopher B. O'Connell of Thomas Regional Directory Co of New York (Annexure 4 to the Response).
(b) he has recently offered Complainant the opportunity to purchase the domain name. Respondent asserts, and supports by evidence (Annexures 1 to 3 of the Response) that an approach was made to him by Adam West of Complainant for that purpose and that negotiations, unsuccessful, took place only after Complainant's approach in January 2000.
(c) the software at the domain name web-site is unsophisticated or inappropriate for the purpose. Respondent asserts that the web-site is used fundamentally as a marketing tool and the commercial software used (Net Objects Fusion) has been modified for his site. Respondent further asserts that the site has been successful in marketing Respondent's services and submits evidence in support in the form of several CD-ROMs which Respondent has produced for customers (Annexures 12 and 13);
(d) the domain name is inappropriate or likely to deter customers. Respondent asserts that the domain name is appropriate and explains his reason for adopting the name and points to the success of the site in terms of Respondent's business.
Respondent further asserts that:
(a) for almost four years he has been using the domain name unhindered as the name and site address for his legitimate business providing technology and Internet marketing services to companies in the United States of America, Germany, Ireland, Singapore and Japan. Respondent employs five full time staff in Cologne, Edinburgh and New York and a further seventeen staff in partnership with another entity in Cologne. Respondent cites a number of United States and European clients to which he supplies consulting services through Eurotrash.com and provides copies of letters (annexures 4 to 9) and the aforesaid CD-ROMs in support of these citations;
(b) the expression "eurotrash" was an apt express for Respondent. It was coined in New York in the early 1980's as a slang term to describe, apparently light-heartedly, upwardly mobile, and somewhat affectatious, Europeans in that city. Respondent provides a copy of a letter from Mr O'Connell, an Irishman working at Thomas Regional Directory Co., with Respondent, a Scot, stating that the nick-name "eurotrash" had been applied to them both by Eileen Markowitz, the President of Thomas Regional Directory Co. A confirming letter from Eileen Markowitz is also supplied (Annexures 4 and 14 to the Response);
(c) before registering the domain name he undertook due diligence to ensure there were no existing trade mark registrations for "eurotrash" in the United States of America. Searches at the USSPTO disclosed one registration in respect of musical sound recordings by an individual, Harold Kleiner;
(d) Respondent is not in competition with Complainant. He does nothing to attract Complainant's viewers to his web-site, his web-site does not create a likelihood of confusion with Complainant's program and Complainant has not suffered damages by virtue of Respondent's domain name registration;
(e) Respondent was not aware that the building shown on the web-site was the Channel 4 building and he is prepared to remove it on Complainant's request.
(f) Respondent has a substantial business and reputation and the name "Eurotrash.com" is distinctive of his company in the world of e-commerce.
7. Applicable Dispute
To succeed in their complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar Trade Mark
Complainant asserts that the domain name is identical with Complainant's trade mark.
(i) A threshold question arises as to whether the title of a television program is a "trade mark or service mark" within the meaning of those expressions in the Policy. Complainant has no trade mark registration for the name, and to succeed in establishing trade mark rights it would, at least in English law, need to establish that use of the name by another would amount to a misrepresentation in the course of trade which is likely to injure its business or goodwill. (see Ervan Warnick B.V. v. Townsend & Sons Hull Ltd  RPC 31, per Lord Diplock @ p.31). However, in the opinion of the Panel the Policy is not intended to be restricted by a technical interpretation of what is a trade mark. In view of the conclusions which the Panel has reached in relation to paragraphs 4(a)(ii) and (iii) of the Policy it is not necessary to decide this question. The Panel accepts, but does not decide, that Complainant has trade mark rights in the name "Eurotrash".
(ii) The Panel therefore proceeds on the basis that the domain name is identical or confusingly similar to Complainant's trade mark.
Respondent's Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the domain name.
(i) The Panel concludes that Respondent has successfully rebutted this contention. Respondent has shown that, before any notice to him of the dispute, he had used the domain name in connection with the bona fide offering of his services to a substantial range of customers in the United States of America and elsewhere. Respondent has provided cogent and corroborated reasons for his adoption of the domain name and of his continued use of it in the bona fide conduct of his business. The Policy does not aim to adjudicate between genuine conflicting interests. The Policy modifies the Justinian principle of "qui prior est tempore, potior est iure" – "first in time, first in right" - only where there is clear and unjustifiable misappropriation of Complainant's mark.
(ii) The Panel therefore finds that Respondent has established his claim to rights and legitimate interests in the domain name.
Use and Registration in Bad Faith
In the light of the Panel's finding in relation to paragraph 4(a)(ii) of the Policy it is unnecessary to consider the further ground under paragraph 4(a)(iii). However, in the view of Complainant's assertions of bad faith the Panel records its finding that Complainant has failed to establish bad faith registration or use of the domain name by Respondent. As pointed out above Respondent has demonstrated legitimate reasons for the adoption of the domain name. There is no evidence that Respondent registered the name with the intention of selling it to Complainant or to a competitor of Complainant or that it did so in order to prevent Complainant from reflecting its trade mark in a domain name. Participation in negotiations for sale initiated by a complainant, by a respondent with a legitimate interest in the domain name, is not evidence of bad faith. Respondent is not a competitor of Complainant and there is no evidence that Respondent's registration has disrupted the business of Complainant or that it was registered for that purpose. Similarly, there is no evidence that Respondent has used the domain name to attract users to the web-site by creating a likelihood of confusion with Complainant's mark.
8. Domain Name Hijacking
Respondent, in his Further Response, asserts that Complainant is in breach of Rule 3(b)(xiv) and that the Complaint has been presented for an improper purpose. He requests a declaration pursuant to Rule 15(e) that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.
The Panel has considered the record, including, for this purpose, the Further Complaint and the Further Response and whilst it finds that the Complaint fails and may in some respects have been misconceived, it finds no sufficient evidence to show that the Complaint was brought in bad faith to attempt to deprive Respondent of the domain name.
The Complaint is dismissed and transfer of the domain name is refused.
The Panel declines to make a declaration pursuant to Rule 15(e).
Dawn Osborne Dennis A Foster
Dated: August 17, 2000