WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jon Danzig, trading as Look-Hear v. Oscar Music and Media Ltd

Case No. D2000-0562

 

1. Parties

The Complainant is Mr. Jon Danzig, trading as "Look-Hear" of Westland Studios, PO Box 111, Watford, Herts, WD1 1PQ, England. The Respondent is Oscar Music and Media Ltd whose registered office is at 8 Rhoda Street, London E2 7EF, England.

 

2. Domain Name(s) and Registrar(s)

The domain name in issue is "lookhear.com"; the Registrar is Network Solutions, Inc.

 

3. Procedural History

3.1 The Complaint was dated June 6, 2000 and received by the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2000 (hard copy sent June 7, 2000, and received June 9, 2000). The Complainant requested a single member Administrative Panel.

3.2 The Response to the Complaint was due to be filed July 3, 2000. However, on June 14, 2000, the Respondent requested an extension of time for filing the Response given that the sole representative of the Respondent was on holiday and would be unable to liaise with his legal advisers for a period. After inviting the Complainantís views on June 15, 2000, the Center exercised its discretion and granted the Respondent an extension of time to file its Response until July 7, 2000.

3.3 The Response to the Complaint was filed on the July 7, 2000. The Respondent requested a single member Administrative Panel.

3.4 The Complainant sent a letter dated July 10, 2000, to the Center in which the Complainant purported to clarify a factual and/or misleading statement allegedly made in the submission filed by the Respondent. The Center circulated a copy of this further submission to the Respondent on July 17, 2000, and subsequently to the Panel noting that the ICANN Uniform Domain Name Dispute Resolution Policy and Rules (the "Policy") do not foresee submission of any pleadings other than the Complaint and the Response. However, the Center indicated that pursuant to the Policy it is in the sole discretion of the Panelist appointed whether to take the further statement into account. This further statement has been taken into account, but nothing turns on this clarification so far as this Panel is concerned.

3.5 A Panel was constituted on July 17, 2000, with a single Panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.

3.6 The date scheduled for the Panel to render its decision is July 30, 2000.

3.7 The Complainant is represented by himself. The Respondent is represented by Morag Macdonald of solicitors Bird & Bird of 90 Fetter Lane, London EC4A 1JP, UK.

 

4. Factual Background

4.1 The Complainant describes his business as being engaged in the field of multimedia and educational video films and related publications, music and audio-visual materials. The Complainant states that he intends to expand his business worldwide. The Complainant claims that he has traded as Look-Hear since 1983. The Complainant also claims to have registered and to own the company, Look-Hear Limited. The Complainant owns a number of domain names, including www.look-hear.com, www.lookhear.co.uk, www.look-hear.co.uk, www.look-hear.org, www.lookhear.org, www.look-hear.net and soon will have acquired www.lookhear.net.

4.2 The Complainant registered "LOOK-HEAR" as a trademark in the United Kingdom on October 12, 1995, in Classes 38 and 41 (No. 2041070). This registration is relevant to this Panel Decision.

4.3 The Complainant has since applied to register the trademark in a number of other jurisdictions including, the USA, New Zealand, Australia and Canada and under the Community Trademark regime. For present purposes the relevant factor, in relation to all of these trademark applications, is that the earliest application date in question was December 24, 1999, which is a date which postdates the Respondentís obtaining of the domain name in dispute (see below).

4.4 The Respondent applied for and obtained registration of the "lookhear.com" domain name on March 4, 1999, such registration being effected in the name of the Respondent.

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions may be summarized as follows:-

5.1 The "Look-Hear" word mark as used by the Complainant is highly reputed and has been extensively used by the Complainant for a range of multimedia and educational services business not just in the UK, but also in an increasing number of jurisdictions worldwide. Further, the Complainant is building an international web-based interactive multimedia business for which the brand name "Look-Hear" is key. In this regard, the Complainant cites a number of instances where third parties have decided to acknowledge the Complainantís rights and offer undertakings.

5.2 The domain name "lookhear.com" is identical with the Complainantís UK registered trademark for "LOOK-HEAR". It has caused confusion to the Complainantís potential customers, suppliers and investors and undermines and devalues the Complainantís brand and the Complainantís plans to extend the brand internationally.

5.3 The Respondent has no right or legitimate interest in respect of the domain name "lookhear.com". In relation to this allegation, the Complainant alleges that:-

a) the Respondent has never established a worldwide web page under the domain name www.lookhear.com or confirmed that it has legitimate plans to use the domain name; and

b) the Respondent is a potential competitor to the Complainant in the media business.

5.4 The Respondent registered the domain name in bad faith because:

a) The Complainant has built up a considerable reputation in media circles under the brand name "Look-Hear" of which the Respondent is unlikely to be unaware. The Complainant relies upon a range of material in this regard (see below); and

b) the Respondent has a tendency to opportunistically register other "brands" as domain names. The Complainant refers in particular to the domain name "skam.com" registered by the Respondent. The Complainant relies upon a letter from Andrew Maddocks of, what he says is, the well-known music and record producer, "Skam" dated June 2, 2000;

c) the Respondent asserts in protracted correspondence between the parties that it will only consider transferring the domain name to the Complainant once the Complainant has become more established and achieved a greater brand recognition internationally. The Complainant relies upon the correspondence between the parties; and

d) the financial position reflected in the Respondentís company accounts and the statement that it did not do any business outside the UK and had no interests outside the UK and do not indicate any apparent interest in the use of the domain name outside the UK.

B. Respondent

The Respondentís contentions may be summarized as follows:-

5.5 The word "Look-Hear" would not be considered, in trademark terms and arguably elsewhere, to be identical to the domain name, "lookhear.com".

5.6 The domain name is not confusingly similar to the trademark when used in relation to services other than those for which the mark is registered. Even if the domain name was similar to "Look-Hear", the Complainant has supplied no actual evidence of possible confusion. The parties are not in business competition and are very unlikely to be in the future. The Complainant does not have sufficient reputation in the mark to support his Complaint.

5.7 The Respondent has not registered and is not using the domain name in bad faith. The Respondent is in the practice of developing online brands and related websites and not in profiteering from the bare sale of domain names. The Respondent has not approached the Complainant with an offer to sell the domain name, "lookhear.com". The Respondent would prefer to use the domain name and, therefore, rejected the Complainantís offer to buy the domain name for a nominal fee.

5.8 The fact that the Respondent is not using the domain name is not indicative of bad faith. The Respondent has expressed intentions and possibilities of using the domain name.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the Response, the documents annexed to the Complaint and the material filed with the Response, and as mentioned above, the further statement of the Complainant dated July 10, 2000. In the light of this material and matters that are either expressly conceded or are, on the evidence, not challenged, this Panel finds as set out below.

6.2 The Respondentís domain name is, at least, confusingly similar to the Complainantís UK registered trademark "LOOK-HEAR". The Panel does not find it necessary to resolve the argument canvassed at length as to whether or not inclusion of the hyphen does or does not prevent the domain name and the trademark being considered as being identical.

6.3 The exact extent of the Complainantís reputation arising out of his activities is not clear to the Panel, as relatively little detail has been provided. On the basis of what the Panel has seen it will accept, in the Complainantís favor, that it has been carrying out trading activities in its business under and by reference to the name "Look-Hear" at least in a localized area of the UK since about 1983. However, the Complainant has provided little or no evidence as to the extent of this use. Examples of the material the Complainant has provided are as follows:-

a) a newspaper report in the Watford Observer in 1985;

b) press reports in: a publication called EDUCA, dated September 1995; People Management, dated November 1995; Agenda, dated November 1995; Training Officer, dated October 1995 and The Watford Observer dated September 1995; and

c) "Look-Hear" brochure materials from 1985; Editions of "Look-Hear" News from 1988; and details of "Look-Hearís" range of video programs from 1992.

6.4 The Complainant relies upon a number of instances where various individuals or organizations have given to him undertakings to cease use of certain alternatives involving the term "LOOK HEAR" (or variations thereof). This argument of the Complainantís does not assist the Panel in determining precisely what reputation the Complainant has in the mark "LOOK-HEAR". It may very well be, faced with stiffly-worded letters, and threats of proceedings, that third parties decided they did not want a fight with the Complainant Ė that does not in itself help prove (at least to any material respect) the Complainantís reputation. The Panel notes the Complaint is singularly silent as to turnover figures, sales activity, details of customers or other material which would assist more usefully in this area.

6.5 There is no evidence that the Respondent had heard of the Complainant at the time it effected the registration. The Complainantís assertion is that "it is unlikely that the Respondent, which is also in the media business, had never heard of it [the UK brand name]". In the light of the limited evidence as to the Respondentís reputation (see above) the Panel is not satisfied this is necessarily the case. The Panel also notes that the brand name "Look-Hear" involves the juxtaposition of two common English words in a manner that could have been independently derived.

6.6 The mere fact that the Respondent has not used the domain name to set up a website is not conclusive of the domain name being registered in bad faith. The subsequent discussions which have taken place since the domain nameís registration between the Complainant and the Respondent provide little support for the Complainantís contention that the Respondent must have registered the domain name in bad faith. The Panel is not satisfied that the subsequent inter-parties correspondence in which the Complainant seeks to acquire the domain name itself constitutes bad faith if the Respondentís original registration was bona fide.

6.7 The Panel does not attribute any significance to the registration of "skam.com". The Respondentís evidence is this was one of the few four letter domain names which was pronounceable and still available. Whether that is right or not would need to be the subject of further evidence, but in any event this activity is of no material significance Ė this is not a case where a Respondent is shown to be registering large numbers of third party names which manifestly infringe third partiesí rights.

 

7. Decision

7.1 In the light of the above findings, the Panelís decision is as set out below.

7.2 The Panel concludes in the Complainantís favor that it has a similar trademark within the meaning of paragraph 4(a)(i) of the Policy.

7.3 The Panel is unable to conclude on the evidence what, if any, further reputation the Complainant has in the name "Look Hear".

7.4 The Panel is not satisfied that the evidence before it establishes that the domain name was registered in bad faith, as required by paragraph 4(a)(iii) of the Policy. The Panel takes the view that under the Policy the burden of proof falls upon the Complainant and that in this case he has failed to provide sufficient evidence as to his reputation in the brand name "Look Hear". In particular, the Claimant seeks to impugn the Respondentís registration by suggesting it must have been aware of his brand name or reputation. If he is to do this he must first himself establish the necessary reputation that gives rise to such an inference. He has failed so to do.

7.5 In the light of the above finding the Panel does not need to determine whether or not the Respondent itself has any rights or legitimate interests in the domain name (paragraph 4(a)(ii) of the Policy) or whether the Respondentís use of the name (if any) is use in bad faith. The Panel expresses no views on these matters.

7.6 In reaching this conclusion, the Panel wishes to make clear that it is determining the matter only under the Policy. The Panel expresses no view at to whether the Respondentís actions in registering the domain name, "lookhear.com", or the events which have occurred, on any future use which it may make of such domain name would or would not amount, under English law, to trademark infringement, passing-off or any other actionable wrong.

7.7 The Panel, therefore, declines to find that the domain name should be transferred or cancelled.

7.8 No further action is required to implement the Panelís decision.

 


 

Nick Gardner
Panelist

Dated: July 30, 2000