WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reuters Limited v. Ghee Khaan Tan

Case No. D2000-0670

 

1. The Parties

Complainant: Reuters Limited, 85 Fleet Street, London EC4P 4AJ, England

Respondent: Ghee Khaan Tan, B1K 436 Fajar Road, 12-398 Singapore 670436, Singapore

 

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

Domain Name: ereuters.com ("The Domain Name")

Registrar: register.com

 

3. Procedural History

The Complaint was received by WIPO by email on June 23 2000 and in hard copy on June 27 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the Respondent responded to the Complaint within time by email on July 25 2000.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panelís Decision is August 15 2000.

 

4. Factual Background

None of the main underlying facts are in dispute. In particular, the following are not in dispute:

(a) The Complainant and the group of which it forms part is world famous for its news and information services.

(b) The Complainant is proprietor of a large number of longstanding, valid and subsisting trade mark registrations for its name and mark REUTERS ("the Trade Mark").

(c) At all times material to this dispute the Trade Mark is recognised and relied upon by a large proportion of the trade and the public as identifying the Complainant and its financial information and news services and as distinguishing the Complainant from others and the services of others.

(d) The Complainant registered Ďreuters.comí with NSI on June 3 1993 and the Complainant also owns the domain names Ďreuters.netí and Ďreuters.orgí and many other domain names incorporating the Trade Mark.

(e) On March 21 2000 and without any authorisation from the Complainant, the Respondent registered The Domain Name.

On learning of the Respondentís registration of The Domain Name, the Complainant instructed its New York attorneys to write to the Respondent alleging that registration of The Domain Name violates the Complainantís rights. The letter of complaint alleged violation of Section 43(d) of the Lanham Act and violation of the US Trade Mark Dilution Act. It drew to the Respondentís attention that he was liable to statutory damages of up to US$100,000 for cybersquatting and that his registration and any use of The Domain Name constituted "unfair competition, deceptive trade acts and practices, and misappropriation of the valuable goodwill, reputation, and business property of Reuters under various other federal and state laws". The letter demanded an immediate transfer of The Domain Name to the Complainant.

The Respondent replied by email on 16 April in the following terms:

"this is ridiculous!!!! My site is a reflection and show case of my business nature (domestic help and services) and what I am doing is totally different from what Reuters is doing (news and IT financial). If you donít believe, just go to Ďwww.ereuters.comí and check for yourself!

So why should I return the name to you? Itís not as if I will be using your so call Ďfamous Reuters trade markí to do something similar."

On April 25, 2000 the Complainantís attorneys wrote again to the Registrant reiterating its complaints and drawing attention to certain US legal authorities.

On June 16, 2000 the Complainant visited Ďwww.ereuters.comí to find a web site which on its home page states:

"Welcome to EREUTERS.COMÖÖ..company profile: To maintain and ensure high standards of training and domestic help and servicesÖ.

Products

- "Providing maid training services all of Asia"

- Any comments to help making this possible?

- Site under construction."

Below the above text are various links principally to register.com, the Registrar.

 

5. Partiesí Contentions

A The Complainant contends that:

The Domain Name is confusingly similar to the Trade Mark.

The Respondent has no rights or legitimate interest with respect to The Domain Name and there is no legitimate reason for the Respondent to use the Trade Mark in connection with a maid services business. The Domain Name bears no relationship to the business of the Respondent.

The only justification for the Respondentís use of The Domain Name is to unlawfully trade off the value and good will of the Trade Mark.

The Domain Name has been registered and is being used in bad faith by the Respondent.

The Respondent is using the Trade Mark to drive visitors to the Respondentís web site. As such, the Respondentís 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 because the Respondent is attempting to generate commercial gain by creating confusion as to the affiliation of his purported maid services with the Trade Mark.

The Respondent has exhibited a pattern of cybersquatting behaviour because he has registered The Domain Name in order to prevent the Complainant from having access to and reflecting the Trade Mark in a corresponding domain name.

The timing of the registration was no accident. It coincided with the Complainantís announcement of a new internet strategy highlighting plans to increase the on-line delivery of its services. The Complainant goes on to assert that the Respondentís use of an "e" before the Trade Mark mirrors the exact way that businesses often identify their traditional services offered over the internet. 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.

Prior to having notice of the Complainantís claims, the Respondent did not use The Domain Name in connection with any bona fide offering of goods or services. The Complainant asserts (and in his response the Respondent has not denied) that the connection of The Domain Name to the web site took place after receipt of the April 6 letter from the Complainantís attorneys.

The Respondent has not been commonly known by the name "ereuters" and has not made any non commercial or fair use of The Domain Name.

The unlawful acts of the Respondent have caused and are continuing to cause irreparable injury to the goodwill and reputation of the Complainant and, unless restrained, will cause further irreparable injury.

The Complainant requests that the Panel issue a decision that the domain name be transferred to the Complainant.

B. The Respondent contends

As set out in the email of April 16, 2000 quoted in full at paragraph 4 above; and

As set out in his email in response to the complaint dated July 25, 2000 and reading as follows:

"Dear Panelist

This is my response.

I want to refute all charges against me by Reuters.

First, I have no intention of registering the name for the intention of selling, renting, for disruption purposes prevent the registering the disputed domain name of any trademark names.

There are no intentions or attempts to attract for any commercial gains, internet users to my site, thus creating confusion, nor any reason to disrupt the business of Reuters.

There is significant differences as to the lines of business. My domain is a forum for maid improvement discussions and non-profit orientated, while Reuters is in the financial and news world.

There has never been any attempts to sell the domain name back to Reuters, and an email has been sent to them indicating that the domain name is not up for sale.

There is only a registered company by name of Reuters Ltd, but there is no company or any registration for ereuters. Further, I have obtained this name prior to any Reuters claims. Meaning they are now turning around and say I am prohibiting the launch of their internet business unit, hence delaying their business unit launch. This is very absurb indeed.

Last of all, Reuters came to me before by threatening legal actions, but I responded by telling them to go ahead as they have no case, and I have engaged a lawyer on standby ready for them. Now theyíre using WIPO as the percentage of cases favouring the complainant is a high of 86%, while successful defence is only 14%, denoted from your website. This shows why they are using you to help them in this dispute as they felt the chances of winning is very high indeed. My plead to you is to please judge fairly.

Thank you and I shall await your decision."

 

6. Discussion and Findings

According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of The Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or Confusing Similarity

(i) In the Trade Mark context confusing similarity is measured not simply by reference to the marks themselves but also by reference to the categories of goods or services in relation to which they are used.

(ii) If the proper test is "Reuters" for financial and information services against "ereuters.com" for Asian maid services, the Panel would need a good deal of persuading that the latter is confusingly similar to the former.

(iii) If on the other hand one is to adopt the approach contended for by the Complainant, namely that in the international commercial community (the Complainant put it more broadly) the name ereuters.com will be read as "e" for electronic and "Reuters.com", then manifestly The Domain Name is confusingly similar to the Trade Mark.

(iv) In selecting the Ď.comí domain the Respondent put himself firmly (albeit not exclusively) into the international commercial sphere and the Panel finds that The Domain Name is confusingly similar to the Trade Mark.

Rights and Legitimate Interest of the Respondent

(i) Proving that the Respondent has no rights or legitimate interest in respect of The Domain Name involves proving a negative. Proving a negative is notoriously difficult and it is no doubt for this reason (at any rate in part) that by virtue of paragraph 4(c) of the Policy the burden of proof is to a certain extent shifted onto the shoulders of the Respondent. That sub paragraph sets out certain circumstances which, if found by the Panel to be proved, will demonstrate the Respondentís rights or legitimate interest to The Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.

(ii) The circumstances set out in that sub paragraph are:

- Before any notice to the Respondent of the dispute, the Respondentís use, or demonstrable preparations to use, The Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

- The Respondent, (as an individual, business or other organisation) has been commonly known by The Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

- The Respondent is making a legitimate non commercial or fair use of The Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(iii) The Respondent has produced no material to demonstrate any of these circumstances. The only tangible evidence of any intention to use The Domain Name in relation to a business is the home page quoted in paragraph 4.5 above, which first appeared after the Respondent received notice of the dispute. The only evidence that the Respondent might have been known as ereuters prior to receiving notice of the dispute is the Ďereuters@hotmail.comí email address, but that is not sufficient in the Panelís view to answer the complaint. While the web page is indicative of an intention to use The Domain Name in a field and in a manner far removed from anything that is likely to damage the Complainant, the Panel understands why the Complainant is suspicious and the Respondent has made no real effort to discharge the burden upon him.

(iv) In these circumstances, the Panel finds, albeit with some hesitation, that the Respondent has no rights to or legitimate interest in The Domain Name.

Bad Faith

(i) Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. The burden of proof here is clearly on the Complainant. The circumstances set out in paragraph 4(b) are:

- Circumstances indicating that the Respondent has registered or has acquired The Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondentís documented out of pocket costs directly related to The Domain Name; or

- The Respondent has registered The Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

- The Respondent has registered The Domain Name primarily for the purpose of disrupting the business of a competitor; or

- By using The Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his web site or other online location, by creating a likely confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís web site or location or of a product or service on the Respondentís web site or location.

(ii) The Complainant does not rely upon sub paragraph (i) and (iii) of paragraph 4(b) of the Policy. There has been no attempt to sell The Domain Name and the Respondent is not a competitor of the Complainant.

(iii) Paragraph 4(b)(ii) calls, inter alia, for a pattern of conduct. The Complainant asserts that there has been a pattern of cybersquatting conduct, but that is usually demonstrated by the Respondent holding two or more domain names in similar circumstances and to similar effect. The Complainant refers to the timing of the registration of The Domain Name, which apparently coincided with public announcements made as to its on-line services, but no details of those announcements are before the Panel. The Panel is unable to discern any relevant pattern of behaviour of the variety called for here.

(iv) Paragraph 4(b)(iv) calls for the Complainant to prove that by the Respondentís use of The Domain Name the Respondent has intentionally attempted to attract for commercial gain internet users to his web site by creating a likelihood of confusion effectively leading visitors to the site to believe that the Complainant is in some way associated with or has endorsed the services advertised on the web site. The Panel can only say that it has visited the web site in question and has examined all the evidence in the case carefully, but is unpersuaded that there is any likelihood of any such confusion or that it was the Respondentís intention to create such confusion. Of course, if the Respondent is as devious as the Complainant believes him to be, then he may alter his style, but that is something that the Panel cannot sensibly take into account unless the Respondentís behaviour to date justifies it.

(v) For the Panel to hold that the Respondent registered The Domain Name in bad faith and is now using it in bad faith, the Panel has to reject the Respondentís denial and find that he has not told the truth. That is a very serious finding to have to come to in circumstances such as these where there is next to no information on the Respondent and his business in the papers before the Panel and where the Panel has no opportunity of examining the demeanour of the Respondent. For the Panel to hold that the Respondent is a liar, the circumstantial evidence has to be overwhelmingly in favour of the Complainant. While, as indicated above, the Panel understands why the Complainant is suspicious, the Panel finds that the evidence is insufficient for that purpose.

     

 

7. Discussion and Findings

In light of the foregoing, while the Panel decides that The Domain Name is confusingly similar to the corresponding Trade Mark of the Complainant and that the Respondent has no rights or legitimate interests in The Domain Name, the Panel is unable to find that The Domain Name was registered and is being used in bad faith.

Accordingly, in light of the foregoing, the Panel dismisses the complaint.

 


 

Tony Willoughby
Presiding Panelist

 

Dated: August 4, 2000