WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Double T Radio Pty Ltd v. Michael Lopez

Case No. D2000-1600

 

1. The Parties

The Complainant is DOUBLE T RADIO PTY LTD, 2 Leabons Lane, Seven Hills, New South Wales 2147, Australia.

The Respondent is MICHAEL LOPEZ, Beech Ridge Road, Prattsville NY, 12498, USA.

 

2. The Domain Name and Registrar

The Domain Name is <ttfm.com>.

The Registrar is Network Solutions, Inc.

 

3. Procedural History

The Complaint was received by WIPO by email on November 29, 2000, and in hardcopy form on November 20, 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). The Registrar has confirmed that <ttfm.com> ("the Domain Name") was registered through Network Solutions Inc. and that Michael Lopez ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On December 6, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 25, 2000. No response having been received, on December 28, 2000, WIPO issued to the Respondent a notice of default.

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 January 25, 2001.

 

4. Factual Background

The Complainant operates and has operated since at least June 1990 an FM radio station broadcasting radio programmes across the Melbourne metropolitan area. The Complainant holds a radio broadcasting licence issued by the Australian Broadcasting Authority and is authorised by that licence to use TTFM as its call sign in Victoria.

The Complainant operates a website at <www.ttfm.com.au>. That domain name was registered on January 28, 1999. The website makes extensive use of the unregistered mark TTFM as part of the legend 101.1 TTFM..

The Respondent registered the Domain Name on February 13, 2000.

The Complaint was sent to the Respondent on November 14, 2000. The Respondent has not responded to the Complaint.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends as follows:

- Since 29 June 1990 the Complainant has developed a substantial reputation throughout the Melbourne region for its extensive broadcasting, advertising and other related activities under the TTFM and 101.1TTFM marks. The Complainant has expended approximately $7 million externally and commits over $10 million per year of its own air time on advertising and promotional expenditure for the station. The Complainantís radio station enjoys consistently high ratings in the broadcast area, and is currently rated as the number 1 ranked radio station to its target market in the Melbourne area with a cumulative average audience of 920,000 people per week. In the Complainantís submission, its long and extensive use of the call sign TTFM, combined with its significant expenditure on advertising and promotion of its radio station under and by reference to that call sign and mark and the associated mark101.1TTFM, establishes common law trade mark rights in each of those marks.

Identical or confusingly similar domain name:

The Complainant submits that the <ttfm.com> domain name of the Respondent is identical to the Complainantís TTFM mark and is nearly identical and/or confusingly similar to the Complainantís 101.1TTFM mark. Further, the Complainantís TTFM and associated marks are well-known marks. In these circumstances, the placing on the register of the domain name TTFM represents that the Respondent is connected or associated with the name registered and thus with the Complainant, being the owner of the goodwill in the TTFM marks. Further, any use by the Respondent of the domain name would be likely to be taken as an indication of such a connection, thus diluting the value of the Complainantís marks and adversely affecting the rights and interests of the Complainant. In the present case the Respondent has employed the domain name and its use is causing detriment to the Complainant. The circumstances of that use are set out below.

Respondent has no rights or legitimate interests in domain name:

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the <ttfm.com> domain name that is the subject of the Complaint. The Respondent is not and has not been commonly known by the domain name, nor has the Respondent to the Complainantís knowledge acquired any trade mark or service mark rights in the domain name. There is no evidence of the Respondentís legitimate use of, or demonstrable preparations to legitimately use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services under or by reference to the mark TTFM on any date prior to any notice to the Respondent of the dispute subject of this Complaint. There is no web address operating by direct reference to the domain name. Any attempt to access the web address operating under the <ttfm.com> domain name is diverted to an unrelated web address (S11.ORG) which is the web address of an "anti-globalisation" protest organisation which has been involved in highly publicised political demonstrations in Melbourne, Australia, the same area in which the Complainant operates its radio station under the TTFM call sign. Searches of the Australian Securities and Investments Commission National Business Names Index and of the Australian Trade Marks Register reveal no registrations for the mark TTFM or any associated marks in the name of the Respondent.

Evidence of bad faith:

The Complainant submits that the Respondent has registered and is using the domain name in bad faith. The Complainant refers to and repeats the matters submitted above in support of its submission. The Complainant further notes that the Respondent registered the domain name on February 13, 2000, a long period after the Complainant began using its TTFM and associated mark. Having regard to the Respondentís association with Melbourne, Australia (the billing contact address is in a suburb of Melbourne and the S11.ORG organisation address is noted in the Whois Lookup as Spencer Street, Melbourne), the Respondent would have been aware at the time of registering the domain name <ttfm.com> of the Complainantís extensive use of and reputation in the TTFM mark and the associated mark. In the Complainantís submission, the evidence suggests that the Respondent had and has no intention of making a legitimate use of the domain name and has registered and is using the name in bad faith solely for the purpose of misleading consumers of the Complainantís services and diverting legitimate attempts to access the Complainantís web address to another web address with which the Complainant does not wish to be associated and which has the effect of bringing the Complainant into disrepute and of adversely affecting the value of the Complainantís trade marks. It is reasonable to assume that online users looking for the Complainantís web address would try the Respondentís domain name in their search. In the Complainantís submission that domain name was selected and registered with the knowledge that it would divert internet users to the Respondentís site (and thereby to the S11.ORG site), creating a likelihood of confusion with the Complainantís trade marks and as to the Complainantís sponsorship or endorsement of, or affiliation with, that website. Initial interest confusion would occur no matter what information was actually posted on that website. In further support of the Complainantís submission as to the Respondentís bad faith it is noted that:

- the billing contact address given on the registration of the TTFM domain name is non-existent Ė there is no Torrington Avenue in Camberwell, Melbourne.

- A search conducted at the Australian Electoral Commission on 26 October 2000 disclosed no listing for a "Craig Cambridge" on the electoral roll in the Camberwell area. The only listing located was for a "Craig John Cambridge" with an address given as 3 Donax Road, Corio 3214.

- The facsimile number given for the billing contact is a number unassociated with the Respondent. The following recorded message is heard by dialing that number: "Thank you for choosing AAPT for your long distance calls".

- The Organisation name and address given for the S11.ORG domain name registration also appear to be false. Lachlan Murdoch is a well known business identity in Australia (and son of Rupert Murdoch, both of the Fairfax Group of international media and publishing companies) and it is most unlikely that Lachlan Murdoch would be in any way associated with the S11 organisation. The Spencer Street address given is in the immediate vicinity of the address for "The Age" newspaper, a Fairfax publication.

Taking into account all the matters noted herein it is, in the Complainantís submission, not possible to conceive any plausible use of the domain name by the Respondent that would be other than illegitimate and in bad faith, whether by being a passing off, an infringement of consumer protection legislation and/or an infringement of the Complainantís rights and established reputation in its trade marks.

B. Respondent

The Respondent has not responded.

 

6. Discussion and Findings

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

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

(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

The Domain Name comprises two elements, namely Ďttfmí, which is the Complainantís call sign and a prominent element of its trademark "101.1 TTFM", and Ď.comí, which is generic. TTFM is also the only distinctive element of the Respondentís domain name. Clearly, whether or not one disregards the Ď.comí element of the Domain Name, it is either identical to or confusingly similar to the Complainantís trademark.

The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.

The Complainantís call sign appears to be well known in Melbourne, Australia. The Domain Name is essentially the Complainantís call sign. In the absence of a Response and having visited the Complainantís website, the Panel accepts the Complainantís evidence as to its reputation. The Panel also accepts the Complainantís evidence as to the Respondentís connection with Melbourne.

There is no obvious reason why the Respondent might have a legitimate interest in the Domain Name. The Respondent has not sought to claim that it has any rights or legitimate interests in respect of the Domain Name and the Panel has no evidence before it to suggest any reason why the Respondent might have any rights or legitimate interests in the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive criteria, which shall be evidence of the registration and use of a domain name in bad faith. There is no evidence to support any of those criteria beyond the Domain Name itself.

Paragraph 4(b)(i) concerns acquisition of the Domain Name in order to sell it, but there is no evidence that the Respondent intends to sell it. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct, but there is no evidence of any such pattern of conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor, but there is no evidence that the Respondent is a competitor of the Complainant. Paragraph 4(b)(iv) involves use of the Domain Name for the purpose of attracting visitors for commercial gain to the Respondentís online location in the mistaken belief that they are visiting a location of or associated with the Complainant. While the Domain name links to another site (currently, it appears to be a different site from that identified by the Complainant at the time of filing of the Complaint), the Panel can find no evidence of any intent on the part of the Respondent to gain commercially from the activity complained of.

However, paragraph 4(b) does not comprise an exhaustive list of the circumstances, which shall constitute evidence of registration and use in bad faith. In the view of the Panel, such circumstances also exist where the Domain Name comprises a name which can only sensibly refer to the Complainant, where there is no obvious possible justification for the selection of the Domain Name, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Name and where it is difficult to conceive of any use of the Domain Name, which will not be likely to cause confusion of some kind.

The Panel finds that those circumstances exist here. If one accepts, as the Panel accepts, the Complainantís evidence as to (a) the Respondentís close connections both with Melbourne and the protest group active in the Melbourne area and (b) the link between the Respondentís use of the Domain Name with the activities of the protest group, the Domain Name must have been intended to refer to the Complainant and, in context, can only sensibly refer to the Complainant. There is no obvious possible justification for the Respondentís selection of the Domain Name and the Respondent has not sought to put before the Panel any justification for its selection of the Domain Name. It is difficult to conceive of any use of the Domain Name directed to residents of Melbourne, which will not be likely to cause confusion of some kind.

The Panel also accepts the Complainantís evidence as to the defects in the contact details relating to the Domain Name, which is strongly suggestive of bad faith registration and use of the Domain Name.

The Panel finds that the Domain Name was registered and is being used in bad faith.

 

7. Decision

In the result, the Panel having found that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.

The Panel directs that the Domain Name, <ttfm.com>, be transferred to the Complainant.

 


 

Tony Willoughby
Sole Panelist

Dated: January 23, 2001