WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Koninklijke KPN N.V. v. Telepathy Inc.

Case No. D2001-0217

 

1. The Parties

The Complainant in this proceeding is Koninklijke KPN N.V., a Netherlands corporation of The Hague, Netherlands. The Complainant is represented by Mr. Ronald van Tuijl, its intellectual property counsel.

The Respondent is Telepathy Inc. of Washington D.C., U.S.A. The Respondent is represented by Ms Susan C. Chaires and Ms Jacqueline M. Stelling of Chaires and Associates, Attorneys, of Washington D.C., U.S.A.

 

2. The Domain Names and Registrars

The domain names at issue are <moneyplanet.com> registered on November 21, 2000, and <travelplanet.com> registered on September 28, 2000.

The domain name <travelplanet.com> is registered with Network Solutions Inc. ("NSI"), of Herndon, Virginia, United States of America. The domain name <moneyplanet.com> is registered with Internet Names Worldwide / Melbourne IT of Melbourne, Victoria, Australia ("Melbourne IT").

 

3. Procedural History

A Complaint was submitted electronically on February 16, 2001, and by hard copy on February 28, 2001, by the Complainant to the World Intellectual Property Organization and Mediation Center ("WIPO Center"). An amendment to the Complaint was filed on February 28, 2001.

On February 19, 2001, and on February 26, 2001, requests for Registrar verification were transmitted by the WIPO Center to the appropriate Registrars requesting the appropriate Registrars to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain names at issue are registered with that Registrar.

Confirm that the person identified as the Respondent is the current registrant of the domain names.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the building contact for the domain names.

Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.

Indicate the current status of the relevant domain name.

Both Registrars advised WIPO Center as follows:

Both Registrars had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name <travelplanet.com> and Melbourne IT is the Registrar of the domain name <moneyplanet.com>.

The Respondent is the current registrant in each case.

The UDRP applies to each domain name.

The disputed domain namesí registration are either in "Active" status (NSI) or in "licensed" status (Melbourne IT).

As can be deduced from the advice of the respective Registrars that the domain name in question are "active" or "licensed", the Respondent has not requested that the domain names at issue be deleted from the domain name database, nor sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of the Domain Name Dispute Resolution Policy, i.e. the ICANN Policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on March 6, 2001, transmitted by courier, email and facsimile a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Notification of Complaint and Commencement of Administrative Proceedings was also emailed to the Respective Registrars and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response by email on March 31, 2001, and by hard copy on April 3, 2001. The Respondent had sought from and was granted by WIPO Center an extension of time within which to file a reply.

The Complainant elected to have the Complaint resolved by a single Panelist: The Respondent elected a three-member panel. Both parties have paid the requisite amounts to WIPO Center.

On April 23, 2001, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It had earlier invited Ms Diane Cabell of Berkman Center for Internet & Society at the Harvard Law School, Cambridge, MA, U.S.A. and Professor Charles Gielen of Nauta Dutilh, Amsterdam, The Netherlands, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.

All Panelists duly advised their acceptance and forwarded to WIPO Center their statements of impartiality and independence. On April 25, 2001, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On April 26, 2001, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. The Panel is required to forward its decision by May 9, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

Complainant claims to be the owner of the trademarks and servicemarks "Money Planet" and "Travel Planet". No copies of trademark applications were attached to the Complaint as is customarily done by Complainant to verify their claims to a mark. Details of the alleged marks are:

- Money Planet; Benelux Registration No 672953, priority filing date July 14, 2000 (no registration certificate received yet);

- Money Planet; Application for international registration based on the above Benelux registration. The application was filed on December 22, 2000 and confirmed by the Benelux Trademark Office on January 5, 2001 (no registration certificate received yet).

Designated countries: Germany, Austria, Switzerland, France, United Kingdom, Spain, Hungary, Italy, Portugal and Poland.

The trademark is filed for the following foods and services:

Intl. Class 9: Devices for recording, transmitting and reproducing sound, image and data; dataprocessing equipment and computers; electronic, magnetic and optic image, sound and datacarriers; software.

Intl. Class 28: Games, toys.

Intl. Class 35: Advertising and commercial matters; business administration; administrative services; database management; giving information related to matters.

Intl. Class 36: Insurance, financial matters, monetary matters.

Intl. Class 38: Telecommunication.

Intl. Class 41: Education; training; relaxation; organizing of sport and cultural activities; publishing of magazines and other printed matters.

Intl. Class 42: Automation services; computer programming; software development for the benefit of websites on computer networks; advising and giving information with respect to the use and application of computer networks.

- Travel Planet; Benelux Registration No 673051; priority filing date May 25, 2001 (no registration certificate received).

- Travel Planet; International Registration No 749684; registration date February 5, 2001 (no registration certificate received yet). Designated countries: Austria, Switzerland, Germany, Denmark, Spain, Finland, France, United Kingdom, Italy, Liechtenstein, Norway, Portugal, Sweden and Greece.

The trademark is filed for the following goods and services:

Intl. Class 9: Devices for recording, transmitting and reproducing sound, image and data; dataprocessing equipment and computers; electronic, magnetic and optic image, sound and datacarriers; software.

Intl. Class 35: Advertising and commercial matters; business administration; administrative services; database management; giving information related to matters.

Intl. Class 38: Telecommunication.

Intl. Class 41: Education; training; relaxation; organizing of sport and cultural activities; publishing of magazines and other printed matters.

Intl. Class 42: Automation services; computer programming.

Complainant is the owner of various "Planet" related Benelux and International trademarks of which Planet Internet is the best known. Planet Internet (a subsidiary of Complainant) is an Internet Service Provider that operates in the Netherlands, Belgium and Germany.

Money Planet N.V. (a public company with limited liability, incorporated under the laws of the Netherlands) is a joint venture between Complainant and ABN AMRO bank, through which the two companies will jointly offer Internet-based financial services to consumers in Europe, starting in the Netherlands, Germany and Belgium. On July 18, 2000, the two companies announced the signing of a Memorandum of Understanding.

News of the above joint venture was published in newspapers and magazines worldwide including the U.S. "Financial Times". The joint venture is to launch in the first half of 2001. Several days before the announcement, the application for registration of the trademark MoneyPlanet was filed with the Benelux Trademark Office in The Hague. Complainant granted Money Planet N.V. the right to use the trademark Money Planet.

For the benefit of the proposed activities of Money Planet, various national domain names were registered. Complainant also immediately tried to register or acquire the domain name <moneyplanet.com> to offer services that are not limited to a specific country as well as corporate information.

On the same date as the trademark application (July 14, 2000), the domain name <moneyplanet.com> was registered in the name of Internet Research Associates. The domain name expired on August 8, 2000, after which the domain name was Ďon holdí until November 21, 2000, when the Respondent registered it.

On November 24, 2000, KPN sent a letter to the Respondent demanding that it transfer the domain name, based on the alleged infringement of the trademark Money Planet. Respondentís counsel in reply denied that <moneyplanet.com> infringed the Complainantís trademark rights.

Travel Planet is a co-operation between Planet Media Group N.V. (a subsidiary of Complainant) and Travel Unie International (TUI) and one of the largest portals of Planet Internet. It offers booking facilities for travelling and travel information.

The Respondent is a Washington D.C. based web development company. Its primary focus is the development of Internet businesses, most importantly a network of local content sites at <Maryland.com>, <NorthCarolina.com>, <Pennsylvania.com> and <Missouri.com>, which provide free services, including local news, travel guides, classified postings, community forums, business directories, maps and directions, and email. Each month over 300,000 visitors make use of these services. It has acquired at least a hundred domain names, such as <Annapolis.com> (the capital of the state of Maryland) and <OceanCity.com> (a popular tourist destination), allegedly to offer more geographically targeted information and services.

Respondent offers Internet business services, including online branding services, website design, website hosting, and domain registration. As part of its online branding service, it acts as a consultant to businesses seeking an online presence, suggesting appropriate Internet addresses and helping companies avoid naming mistakes. It maintains an inventory of generic domains that it can offer its clients. It purchases domain names from third parties. It has provided online branding solutions to leading companies throughout the world.

 

5. Partiesí Contentions

Complainant

(a) The disputed domain names are identified or confusingly similar to the Complainantís marks.

(b) The disputed domain names are not in use.

(c) Accordingly, the Respondent did not use, or make demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with the bona fide offering of goods or services prior to registration or acquisition of the domain name.

(d) Respondent is not commonly known by any of the domain names.

(e) Respondent is not making legitimate non-commercial or fair use of the domain names. <Mailplanet.com> is the only Ďplanet.comí domain name owned by Respondent.

(f) The domain names were registered and being used in bad faith.

(g) Respondent has registered or acquired more than 50 domain names consisting of words that may be the trademarks of others or are generic words. Of these domain names only the ones used for state portals are in use. All other domain names are either not in use, or are linked to especials.com. With this pattern of conduct, Respondent prevents Complainant (and also others) from making bona fide use of desirable domain names that correspond to its trademarks.

(h) Respondent is in the business of offering its domain names for sale as expressly stated on its website under ĎOnline Branding Solutionsí # viz:

"Telepathy, Inc. offers online branding solutions for companies seeking an attractive Internet address.(Ö)Telepathy pursues a variety of avenues to arrive at the best online branding solution (Ö)including(Ö)providing domain names from our collection of registered domains (Ö)." The examples of these solutions that are shown on the website are all generic words or three letter combinations. None of them seem to have been Ďdevelopedí for any of the current owners. Instead they seem to be the results of selling a domain name to a third party that was registered or acquired for this specific purpose. This is a matter for speculation and, as such, proof of Ďbad faithí on Respondentís part. Accordingly, the domain names <moneyplanet.com> and <travelplanet.com> were registered in bad faith.

Respondent

(a) The Complainant has failed to prove any association of the word "Planet" exclusively with it, or to present any evidence showing that the marks MONEY PLANET and TRAVEL PLANET are associated exclusively with the Complainant. "Money" and "travel" are both generic words and, combined with the generic "planet", have many possible uses.

(b) Internet research reveals that MONEY PLANET has been used in connection with such varied purposes as making money on the Internet, a musical group and a mail program, all unrelated to the Complainant. TRAVEL PLANET has been frequently used in connection with travel businesses unrelated to the Complainant, compact disks and even in connection with astrological services. Moreover, there are numerous domain names incorporating either "moneyplanet" or "travelplanet" registered and operated by third parties, many of whom are actually operating in Europe, including <moneyplanet.net>, <freemoneyplanet.com>, <moneyplanet.org>, <travelplanet.co.uk>, <travelplanetholidays.co.uk> and <travelplanet.net>.

(c) A competitor of the Complainant, E-NOW, has registered the domain name <travel-planet.nl> and is using this domain name in the Complainantís home country for travel-related services, one of the services which the Complainant purports to offer pursuant to the mark TRAVEL PLANET. The <travel-planet.nl> name links automatically to the website operated by E-NOW also accessible at <travelsource.nl>. So much third party use worldwide, and in the Complainantís home country, of the two marks claimed by the Complainant, shows that consumers do not associate these marks exclusively with the Complainant.

(d) Although the Complainant has attached as an exhibit a chart purporting to reflect its various trademark interests in MONEY PLANET, TRAVEL PLANET, and various "Planet" marks, the Complainant has not provided proof of even one registration. No copies of any document from or filed with any Trademark Office have been provided.

(e) The Complainant has not asserted rights or filed for trademark registration of either MONEY PLANET or TRAVEL PLANET in the United States, the Respondentís home country. Moreover, by the Complainantís own acknowledgement, the mark MONEY PLANET was not in use anywhere in the world by the Complainant as at date of the filing of the Complaint. Although the Complainant claims that it is using TRAVEL PLANET through a joint venture involving a subsidiary, no evidence of such use has been provided by the Complainant. The Complainant has not provided evidence of common law marks.

(f) According to the Complainantís chart (for which no independent evidence is included), it applied to register the mark TRAVEL PLANET in the Benelux countries in May 2000. Respondent registered <travelplanet.com> 18 months before the Complainantís Benelux filing.

(g) In 1998, Respondent attempted to register several other "planet" domains. It succeeded in registering <outdoorplanet.com>, <recordplanet.com>, <playplanet.com> and, later, <bannerplanet.com>, <energyplanet.com>, <loanplanet.com>, <natureplanet.com>, and <mailplanet.com> which it is developing for email services. Respondent periodically checked the status of the unavailable "planet" domains that it had initially attempted to register in 1998. When, after two years of waiting, the registration on <moneyplanet.com> expired, Respondent was successful in registering <Moneyplanet.com> when it became available again in late 2000.

(h) The Complainant claims to have applied to register the mark MONEY PLANET in the Benelux countries in May 2000. Respondent had been systematically attempting to register "planet" domain names as part of its business interests since 1998. Moreover, despite the "laundry list" of countries where the Complainant ostensibly has rights in MONEY PLANET, the Complainant did not file its application for an international trademark registration of MONEY PLANET until December 22, 2000, after Respondentís registration of the <Moneyplanet.com> domain name. The rights claimed by the Complainant in MONEY PLANET are not rights arising from good faith use and the build-up of goodwill in the Benelux countries and elsewhere Ė they are no more than limited paper rights and grant no superior claim to the <Moneyplanet.com> domain name over that of Respondent.

(i) The Complainant admits that it was aware the domain name <Moneyplanet.com> was owned by Internet Research Associates, at the time it filed its Benelux application for registration of MONEY PLANET and that it engaged in competition with others (including presumably the Respondent) to register <Moneyplanet.com> after Internet Research Associatesí registration expired in August 2000.

(j) Thus, at the time the Complainant filed its registrations for TRAVEL PLANET and MONEY PLANET in the Benelux countries, it was a newcomer to the idea of developing services under the terms "Travelplanet" and "Moneyplanet": it knew that the corresponding .com domain names were owned by other parties. Complainant was aware it did not have superior rights to the <Travelplanet.com> and <Moneyplanet.com> domain names.

(k) Respondent registered <Travelplanet.com> in 1998 and <Moneyplanet.com> in 2000 along with several other "Planet" domain names during this period as part of its inventory of available generic domain names integral to its web-development business and online branding services. Many names were purchased for substantially more than the registration fee. Respondent has received equity stakes in start-up businesses with multi-million dollar capitalizations, which businesses were formed to develop generic domain names contributed by it. Respondent has also used generic domains as partial compensation for the acquisition of a domain name important for the development of its network of state and local websites, allowing it to reduce the cash purchase price. A supply of readily available generic domains is a business necessity for Respondent.

(l) There is no requirement under ICANN Policy that a domain name registrant have in mind a specific use as of the date of registration of the name. Nor is there any prohibition against warehousing multiple names for future use.

(m) The Complainant has cited the decision in J. Crew International Inc. vs. Crew.com, WIPO Case No. D2000-0054, as support of its position that Respondent has no right or legitimate interest in any domain names it registers for which it does not have an immediate use in mind. However, the Complainant has neglected to mention that there was a very strong dissenting opinion in this decision that argued emphatically that the two panelists finding for the Complainant were not applying the law correctly. Gervaise Davis, the dissenting panelist, stated: "In my judgment, the majorityís decision prohibits conduct which was not intended to be regulated by the ICANN Policy. This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross. I cannot and will not agree to any such decision, which is fundamentally wrong."

(n) The <travelplanet.com> domain name has previously been used by Respondent for over a year, commencing in July 1999, (prior to the date of the Complainantís Benelux application in May of 2000), for high-end retail services in collaboration with a licensee. A licensee now operates a website at travelplanet.net and has applied for U.S. trademark registration of the mark TRAVEL PLANET. The licensee has made no trademark claims to the domain name <Travelplanet.com> and Respondent fully intends to use the <Travelplanet.com> name in the future without creating confusion with the services offered by the prior licensee. Thus, <Travelplanet.com> has actually been used commercially by Respondent and this use constitutes a legitimate interest.

(o) In the other two ICANN proceedings in which Respondent was a party, In re Craftwork.com and In re Daf.com, each three-person panel unanimously found in favor of Respondent, determining that its Internet business activities, including its branding services which involved the registration of multiple domain names for later resale, was a legitimate business activity.

(p) The Complainant has not shown either registration or use of <Moneyplanet.com> and Travelplanet.com in bad faith by Respondent.

(q) The Complainant has provided no evidence that the Respondent should have been aware of its trademark claims at the time of registration of the names. By its own admission, Complainantís business dealings, both current and prospective, are limited to the European region. As of the date of its Complaint, the Complainant has not sought trademark registration in the United States for MONEY PLANET or TRAVEL PLANET. An Internet Yellow Pages search for "moneyplanet" and "travel planet" in the Washington D.C. area produced no references to the Complainant or any other company. A business operating in Washington D.C. cannot be expected to know of every potential use of a domain name in every part of the world. Moreover, by its own acknowledgement, the Complainant has not yet begun use of the mark MONEY PLANET anywhere in the world. The Complainant has not announced any intention of offering its services under either MONEY PLANET or TRAVEL PLANET in the U.S. Although the Complainant provided a list of publications in which it allegedly placed a press release of its proposed services in Europe under MONEYPLANET, it has provided no evidence or argument as to why Respondent should have had access to or read these publications, and indeed has provided no evidence that Respondent was aware of the press release or the Complainantís trademark claims at the time it registered <Moneyplanet.com>. Respondent denies that it was aware of any claims to the mark MONEY PLANET by the Complainant at the time it registered this name.

(r) The Complainant has not offered any evidence that Respondentís registration or use of <Moneyplanet.com> or <Travelplanet.com> infringes or dilutes its claimed trademark rights.

(s) Complainantís allegation of bad faith is apparently based on Respondentís ownership of numerous domain names, and its provision of branding services, leading Complainant to the unsupported assumption that Respondent therefore must have registered the names only for some improper purpose.

(t) Respondent registered <moneyplanet.com> and <travelplanet.com> because of their functions as multiple use generic terms combined with the "planet" brand under which it is actively developing several businesses, not because of any existing trademarks. It has never registered or purchased domain names knowing that they are the trademarks of others with the intent to sell them to the trademark owners or their competitors, or merely to prevent a trademark owner from using them. Respondent was unaware of any existing trademarks at the time of its registration of <moneyplanet.com> and <travelplanet.com>.

(u) There was no contact between the parties until the Complainant demanded that the domain name <Moneyplanet.com> be turned over to the Complainant on the sole basis that the Complainant had filed a Benelux trademark application and had future plans to use "Money Planet" in Europe. The domain name <Travelplanet.com> was not even mentioned in this correspondence, nor was there any later communication about this domain until the Complainant filed this case. The Complainant has offered no evidence that Respondent registered the domain names with the intent to sell the names to the Complainant for a profit or to prevent the Complainant from registering them.

(v) The Complainant attempts to characterize Respondentís success in registering the domain name <Moneyplanet.com> as a successor to a prior registrant over its own unsuccessful attempt as an act of bad faith. Rather, the domain name registration system is designed to work on a "first come, first served" basis. Respondent was acting fully within its rights when it registered an available domain.

(w) By initiating this Complaint, the Complainant is engaging in reverse domain name hijacking. The Complainantís claims are not substantiated by the facts or the prevailing legal authority, and can only be described as speculative and far-fetched. Without any supporting evidence to demonstrate that Respondent engaged in bad faith when it registered the domains or that it has used, or is currently using the domains illegitimately, the bringing of this Complaint is nothing more than an attempt at reverse domain name hijacking. Specifically, the Complainant itself has engaged in bad faith in instituting this action because:

(x) The Complainant was aware that it was not the exclusive proprietor of the marks Money Planet and Travel Planet.

(y) The Complainant has asserted specious trademark claims in an effort to obtain domain names legitimately registered by the Respondent. The Complainant has presented no evidence that Respondent had any reason to know about the Complainantís claimed trademark interests in either MONEY PLANET or TRAVEL PLANET. To the contrary, the Complainant was aware, at least with respect to the domain name <Travelplanet.com>, that Telepathy had interests in this name prior to the Complainantís filing of its Benelux application and that the <Travelplanet.com> registration was unlikely to have been undertaken for any bad faith purpose directed at the Complainant. The Complainant knew before initiating the Complaint that it was without merit and unlikely to be successful. The Complainant has misused the UDRP process in a calculated attempt to expropriate valuable assets from the Respondent without paying compensation. The Complainant is a multi-million dollar company that has used its superior resources in order to try to wrongfully obtain property belonging to the Respondent, a small business. The circumstances of this case justify a finding of reverse domain name hijacking against the Complainant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no legitimate interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

In the opinion of the Panel, the domain names registered by the Respondent are identical to the Complainantís marks which await or have been granted Benelux registration. The Policy does not require that the mark be registered in the country in which the Respondent operates. It is sufficient that a complainant can demonstrate a mark in some jurisdiction. The Panel assumes that the Benelux trademark applications have been made, although there was no copy annexed to the Complaint of any application to the relevant Trademark Office nor any affidavit confirming the contents of the Complaint. Because of the view it takes in other aspects of the Complaint, the Panel does not find this omission on the party of the Complainant fatal.

The Policyís only requirement is that the Complainant should possess rights in a mark which is identical or confusingly similar to the disputed names. This it has done.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) He has made 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 prior to the dispute;

(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Because of the clear view that the Panel has formed on the bad faith criterion, it does not find it necessary to consider evidence on the right or legitimate interest criterion. However, the Panel considers that the Respondentís case, as summarized above, is strong under this heading.

The Panel is of the view that the Complainant has not proved registration by the Respondent in bad faith. The Respondent operates in the United States. There is no evidence that at the dates of registration of the names it could reasonably have been expected to know about the Complainant or its Benelux trademark application filed on July 14, 2000 for Money Planet. Nor is the fact that the Complainant owns "Planet" trademarks and is an Internet Service Provider under the name "Planet" in the Netherlands, Belgium and Germany of any assistance to the Complainant. Nor does the Panel consider the fact that Respondent is in the business of acquiring domain names a reason to infer bad faith registration of a name that consists of two generic words. There would have to have been some evidence of the fame of the conjunction of those two words before that inference could be drawn.

Even if the word "Planet" might be seen as having association with the Complainant, there is just no evidence that could lead to an inference that moneyplanet and travelplanet are associated exclusively with the Complainant.

The case is similar to other WIPO decisions where various panels have declined to infer bad faith registration by a respondent in a different country from that in which the complainant or its registered marks has any reputation.

For example: WIPO Case No. D2000-0527, VZ Vermögens ZentrumAG v Anything.com

WIPO Case No. D2000-1403, John Fairfax Publications Pty Ltd v Domain Names 4U and Gray

WIPO Case No. D2001-0154, KCTS Television Inc v Get-on-the-Web Ltd.

Accordingly, the Panel considers that the Complaint must fail because the Complainant has failed to prove bad faith registration on the part of the Respondent which has filed an affidavit from its president deposing that Respondent had no notice of the Complainant or its proposed services until its lawyers wrote the letter of demand to the Respondent on November 24, 2000. The Complainant has offered no evidence that could justify such an inference.

 

7. Reverse Domain Name Hijacking

Respondent has asked the Panel to make a finding of attempted reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". See also Rule 15(e). To prevail on such a claim, Respondent must show that Complainant knew of Respondentís unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g. Sydney Opera House v Trilynx Pty. Ltd., WIPO Case No. Case No. D2000-1224.

In Goldline International Inc v Gold Line WIPO Case No. (D2000-1151), Smart Design LLC v Carolyn Hughes WIPO Case No. (D2000-0993) and in Deutsche Welle v Diamond Ware Limited WIPO Case No. (D2000-1202) (by a majority), differently-constituted panels found that lack of any evidence by a complainant that the respondent had registered the name in bad faith was a powerful factor in favor of a finding of reverse domain name hijacking. In the Deutsche Welle case, there was not a shred of evidence to suggest that the respondent in the United States should have been aware of the complainant, a German broadcasting service, when it registered the disputed name in 1994.

A majority of the Panel (Sir Ian Barker and Ms. Cabell) considers the present case similar. The reply by the Respondentís lawyers on December 15, 2000 to the Complainantís email of November 24, 2000 demanding the transfer of <moneyplanet.com> clearly articulated the Respondentís defenses, ie:

(a) Respondent could not reasonably have been expected to have heard of Money Planet when the mark was presented for Benelux registration;

(b) There was no trademark registration in the United States. Respondentís registration of the name <travelplanet.com> preceded the Complainantís trademark applications for travel planet.

(c) There is no evidence of any "common law" reputation for the mark Travel Planet prior to the application for trademark registration.

In these circumstances, the Complaint had no prospect of success. Accordingly, a majority of the Panel considers that the Respondentís counterclaim of reverse domain name hijacking has been made out.

Professor Gielen dissents on the finding of reverse domain name hijacking. According to him the rationale behind the rule on reverse domain name hijacking is that it concerns a case of bad faith on the side of the Complainant. Rule 15(e) lists reverse domain name hijacking as an example of a complaint brought in bad faith constituting an abuse of the administrative proceeding. In this case there is no such abuse. The Complainant's business in Internet services under the name Planet Internet dates back from before the starting date of the activities of the Respondent. Although this has not been further explained by Respondent in the course of the proceeding the business under other "planet" brands was started soon after the start of Planet Internet. Therefore the Complainant as a prior user of the word "planet" in connection with its business cannot be considered to be a "hijacker" or in bad faith. To this can be added that at the time of filing of the Complaint it was not clear at all what the Respondentís activities were other than there were indications with respect to trading in domain names of which the Respondent owned a large collection. In Professor Gielen's opinion the filing of the Complaint can therefore not be considered as an abuse of the administrative proceeding which resulted in a denial of the Complaint with which he entirely agrees.

 

8. Decision

The Panel decides:

(a) The Complaint is denied.

(b) The Complainant is guilty of reverse domain name hijacking (majority decision) with Professor Gielen dissenting.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Ms Diane Cabell
Panelist

Professor Charles Gielen
Panelist

Dated: May 7, 2001