WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd.
Case No. D2001-0941
1. The Parties
The Complainant is Cosmos European Travel AG of LFT Treuhand, Stadtle 28, FL-9490 Vaduz, Fustentum, Liechtenstein.
The Respondent is Eurotech Data Systems Hellas Ltd. of 41 Posidonos Ave., Paleo Faliro, Athens 17561, Greece.
2. The Domain Name and Registrar
The domain name at issue is <cosmos.com> and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on July 20, 2001 [electronic version] and on July 25, 2001 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is July 27, 2001.
On July 25, 2001, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on July 26, 2001, Network Solutions, Inc. transmitted by email, to the Center, Network Solutions' verification response confirming that the registrants is Eurotech Inc. and that the contact for both administrative and billing purposes is Ritzakis Stelios at Eurotech Systems Hellas, Ltd., both at the same address as the Respondent.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted to the Respondent, on July 27, 2001, the Notification of Complaint and Commencement of the Administrative Proceeding at the postal and e-mail addresses provided in the Complaint and supplied by the Registrar and to email@example.com. The Center advised that the Response was due by August 16, 2001.
A Response was received from the Respondent on August 15, 2001 [electronic version] and on August 21, 2001 [hard copy]. Acknowledgement of Receipt of Response was sent by the Center on August 16, 2001, to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.
On September 4, 2001, the Center received an email from the Complainant stating that the Complainant intended to file a Reply to the Respondent's allegation in the Response of reverse domain name hijacking.
On September 6, 2001, the Center received from the Respondent an objection to the Complainant's stated intention to file a Reply. The Respondent contended that the Panel should not accept the Complainant's proposed Reply for 3 reasons. First, the Complainant's basis for its entitlement to serve a Reply was not made under the Policy or the Rules. Second, the Rules (paragraph 12) provided that only the Panel may, in its sole discretion, request further statements or documents from either of the Parties. Third, an allegation in a Response accusing a Complainant of reverse domain name hijacking is not sufficient basis for permitting that Complainant to submit a Reply. In this respect, the Respondent cited two WIPO Decision, World Wrestling Federation Entertainment Inc. v. Ringside Collectibles [Case No. D2000-1306] and Goldline International Inc. v. Gold Line [Case No. D2000-1151].
On September 10, 2001, the Panel issued a Procedural Order permitting the Complainant to submit a Reply dealing solely with the allegation of reverse domain name hijacking by September 14, 2001. The Procedural Order drew attention to paragraph 10(d) Rules which provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Due to the events of September 11, 2001 which precluded the Complainant's counsel from access to her office at 2 Wall Street, New York, USA, the Complainant requested that time be extended to September 21, 2001. The Respondent agreed and the Center so ordered.
On September 20, 2001, the Complainant duly served its Reply to the Respondent's allegation of reverse domain name hijacking with supporting Declaration from Mr. Steve Born, Director of Marketing of Group Voyagers Inc., a US Affiliate of the Complainant. The Complainant also sought to substitute a replacement paragraph 17 in the Complaint.
On September 24, 2001, the Respondent served a Motion to strike the Complainant's Reply, Mr. Born's Declaration and the Motion to amend paragraph 17 of the Complaint. Alternatively, the Respondent sought the opportunity to submit an Answer.
On September 25, 2001, the Complainant served a Response to the Respondent's said Motion to strike.
These submissions made subsequent to receipt of the Response on August 15, 2001, will be dealt with in Sections 5.23 to 5.41 and 6.5 to 6.13 below.
Having received Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was September 13, 2001. In light of the submissions made by the Parties subsequent to August 15, 2001 (recited above), the projected Decision Date has necessarily been extended. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents." Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, such of the Parties' subsequent submissions as the Panel determines admissible, relevant and material, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
4.1.1 The Complainant is a Liechtenstein corporation which has been in business since the 1960s. It is in the travel industry, specialising in Group tours in Europe, North America, Australia and New Zealand. It claims to have virtually invented the European budget vacation.
4.1.2 Exhibited to the Complaint are advertisements for Cosmos tours in Europe, including Britain; as well as Israel, Egypt, Morocco, Turkey, Australia, New Zealand, Fiji, Tahiti, Circle Pacific, Hawaii, the United States and Canada. These are for the most part described as escorted tours.
For the past several years, the Complainant states that its annual worldwide vacation sales have amounted to approximately US$350 million per annum. From the Panelist's own knowledge, COSMOS tours have been well known in the United Kingdom for many years.
The Complainant's Trademarks
4.1.3 The Complainant is the proprietor of, inter alia, the registered trademark COSMOS in Australia, Canada, the United Kingdom and the United States. Particulars of its US registrations are as follows:
Date of Application / Registration
Filed March 18, 1987
Filed March 18, 1987
The Complainant asserts that its right to use these registered trademarks is incontestable pursuant to sections 7 and 15 of the Lanhan Act (15. U.S.C. 1057(b) and 1065].
The Complainant's Website
4.1.4 The Complainant's travel website has been available worldwide since 1995, accessible from COSMOS domain names including <cosmostours.com> and <globusandcosmos.com>.
The Complainant's Clientele
4.1.5 The Complainant asserts that over the years it has developed a significant customer base for its COSMOS and COSMOS TOURAMA services, with over one million customers returning for a second or even a third COSMOS or COSMOS TOURAMA vacation.
The Complainant's activities in Greece
4.1.6 In the Declaration of Steve Born served with the Reply of September 20, 2001, the Complainant states that it regularly conducts tours in the Respondent's homeland, Greece, all with the COSMOS mark featured in large red letters on motorcoaches, nametags, and marketing and other materials.
4.2 The Respondent
4.2.1 The background to the business of the Respondent is set out in an Affidavit of Dino Matingas. Mr. Matingas states that the Respondent Company was founded in 1996 and that in 1998 he joined the company as Managing Director, which is the position he continues to hold.
4.2.3 He states that since 1998 the Respondent Company has operated under the name Cosmos.com and that it is currently in the process of formally changing the name of the Company to Cosmos.com.
4.2.4 The domain name in issue was created on September 21, 1994. The registrant was Margaret Young of Palo Alto, California, USA.
4.2.5 In May 1998, that domain name was purchased from her by Eurotech, Inc., an Illinois corporation with its registered office in Chicago, for the sum of US$13,000.00. Eurotech Inc. appears to be the parent of the Respondent Company [see Exhibit 5, page 1 to the Response].
4.2.6. Mr. Matingas states that the Respondent Company
"… offers information and technology services (including facilitator, clearance and systems technology). Cosmos.com offers goods and services of third parties to enable third parties to more easily post, manage, market and distribute their products. By joining Cosmos.com, companies will be able to achieve substantial savings by not having to operate their own websites."
4.2.7 Mr. Matingas says that since 1998 the Respondent Company has committed over US$4 million (both out of pocket and deferred costs) to preparations to provide a bona fide business service through the domain name in issue.
4.2.8 Mr. Matingas says that since 1998 the Respondent Company has used the following email addresses:
- Administration - firstname.lastname@example.org;
- Public Relations - email@example.com; and
- Customer Service - firstname.lastname@example.org.
4.2.9 By the end of 1998, the Respondent Company had produced a Business Plan, which is exhibited to the Response. The following are extracts from that Business Plan. The references to travel are emphasised in bold.
cosmos.com is a dot com start up business venture that combines information portal, vortal and e-commerce services.
cosmos.com global-local and local-global approach is the new democratic way of doing things in the new economy. It gives the opportunity to small and family companies to market their products globally and to the larger companies to have access to the remotest markets locally. It does that by country (portal) and by industry (vortal).
On the consumers' side and in order to create not just customers loyalty but their involvement in the business model described above a Consumer Network Marketing (CNM) model is adopted by cosmos.com. Through this CNM model, consumers earn monetary and non-monetary bonuses based on the level of monthly or quarterly purchases they make through cosmos.com and the network members that they personally have encouraged to join and sign up as cosmos.com.
cosmos.com adopts a B2B2C e-commerce business model on the first stage and B2B2D2C on the second stage.
cosmos.com creates revenue through sponsorships and commission on the sales of the products of its sponsors.
Sponsorship is multi-level. There is a major sponsor for each cosmos.com channel, and then there is a scaling down to small firms that cannot afford to have their own web sites to provide information and general business.
For the Travel Channel, a probable sponsor could be Olympic Airways in Greece, or Lufthansa in Germany. This could change on a yearly basis, according to offer-demand criteria.
Similarly, for the Finance Channel, Eurobank in Greece or Deutsche Bank in Germany could be the major sponsors, while various insurance and security firms could be smaller sponsors.
Sponsorships are quarterly, yearly-based, or multi-year. Commissions to cosmos.com are paid by each sponsor.
As a B2B2C e-firm, cosmos.com must and will apply advanced techniques for managing its currently planned 24 channels (Travel, Infonews, Finance, Sports etc) as Business Units. Each Business Unit is responsible for its own bottom line performance according to measurable targets set by the cosmos.com management.
Balanced Scorecard technologies will be adopted to track monitor and control Business Unit performances, while recognising that some channel performances (e.g. Infonews, Sports, Polis, etc) will be more tied to sponsorship revenues while others (e.g. Travel, Finance etc) to commission revenues. [Emphasis added]
4.2.10 In the Fall of 1998 the Respondent Company activated a website using the domain name in issue, which has been operational since that time. It is hosted at Hellas On Line (HOL). HOL is shown as the Technical Contact for the domain name in issue in the Network Solutions' verification report (referred to in paragraph 3 above). The website offers:
… free of charge, a world almanac containing information for 33 countries, including information concerning climate, history, people, general data, general information, lifestyle, government, education, health, transportation, communications, business and finance, economics, resources, wealth, business information, and travel information.
The almanac also provides information for at least one city per country, together with a description of the regions into which each country is divided. A further 11 more countries are presently being added to the almanac.
4.2.11 Mr. Matingas explains that during 1999 the Respondent Company further analysed and synthesised the services to be offered through the COSMOS website to which the domain name in issue is planned to resolve.
4.2.12 In 2000, at a cost of US$50,000.00, the Respondent Company retained SAS Institute of Greece to prepare a comprehensive Business Plan detailing the proposed business model. That Plan, which runs to a total of some 180 pages including appendices, is exhibited to the Response. In paragraphs 1.3 of the Plan, the COSMOS concept is described as follows:
COSMOS is a software package offering information and services that are custom designed by country and by industry. COSMOS is designed differently from the existing services on the Internet, as it offers an integrated solution.
The architectural structure of the Internet product will be the same in every country where COSMOS will operate. It is designed to be easy to browse from country to country and from field to field. This eliminates unnecessary steps to find the desired information. It also incorporates selective audio and eventually audio to complement its service offerings.
The Plan then goes on to identify several business areas including Information.
COSMOS plans to offer data that will prove useful to the user by providing his / her with daily information. All the information will be organised into channels such as News, Business, Finance, Sports, Travel, Home, Religion, Weather, Classified etc. [Emphasis added]
The Plan also contains an outline of the proposed TRAVEL channel, including the sub-categories of, inter alia, air transport, hotels and travel agencies.
4.2.13 Also exhibited is the proposed Travel Vortal, a 75 page document. COSMOS Travel is described in the following terms:
COSMOS Travel will emphasise the services and informational aspects. COSMOS plans to offer data that will prove useful to the traveller by providing him / her with information he / she needs in order to make the choices that suit him / her best.
Within this vortal there is a micrography of a portal. Information is organised in three different ways, either by topic / services (cruises, vacations etc) by country or by industry.
It illustrates the services it will provide for air transportation, hotel reservations, car rental and includes a vacation and cruise finder.
4.2.14 Another exhibit to the Response is the Respondent Company's 5-year Feasibility Plan for services to be offered through its COSMOS website in Greece and Taiwan. These together total a further 80 pages.
4.2.15 Mr. Matingas says that in 2000 the Respondent Company completed the first demonstration modules for its COSMOS website, as well as the first live demos. Mr. Matingas explains that during the current year the Respondent Company began the final stages towards implementing the Business Plan, which it anticipates will be fully launched by the beginning of the second half of 2002. As part of that implementation, Mr. Matingas says that the Respondent Company:
… contacted various companies in the travel industry in an effort to establish business relationships with those companies for the Travel Vortal.
The Respondent does not intend to offer through the COSMOS website any travel tours or other travel services other than on behalf of third party vendors, such as the Complainant, who themselves provide such tours and services. He goes on to state:
One of the products Cosmos.com is developing is designed to provide back-office type services (facilitate transactions and to execute transactions) for the travel industry. This would provide an opportunity for travel vendors (travel companies, hotels, airlines, car rentals, ferries etc) and distributors (travel agents) of any size to post their products on Cosmos.com for purchase by internet consumers. It is what we call Global-Local and Local-Global. There is not a single company in the world today that offers this integrated service, in the Travel Industry.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the Respondent has registered as a domain name a mark which is identical to its COSMOS and COSMOS TOURAMA trademarks, that the Respondent has no rights or legitimate interests in the domain name in issue, which the Respondent has registered and is using in bad faith.
Identical and Confusingly Similar
5.2 Apart from its trademark registrations for COSMOS and COSMOS TOURAMA, those marks are famous in the travel industry and are known worldwide by reason of the tours / vacations which extend to very many countries, extensive advertising and the very large clientele which the Complainant has developed since the inception of its business in 1962.
The domain name in issue is identical to the COSMOS mark and confusingly similar to the COSMOS TOURAMA mark. Given the renown of those marks in the travel / tourism industry, consumers on seeing the domain name in issue will believe it is related to the Complainant. Further, consumers who search the Internet for the Complainant's services under COSMOS will be directed to the Respondent, thus increasing the likelihood of confusion.
Rights or Legitimate Interests
5.3 The Complainant has neither authorised nor licensed the Respondent to own or use a domain name incorporating the COSMOS or COSMOS TOURAMA marks.
Registered and Used in Bad Faith
5.4 Because of the worldwide renown of the COSMOS trademark, the Respondent must have known of the Complainant's rights in that mark when it acquired the domain name in issue. This is evidenced by the Respondent contacting the Complainant:
… in an attempt to sell it the cosmos.com domain name. Respondent initially attempted to extort US$350,000.00 per year for the Domain Name. When Complainant rejected that proposal, Respondent demanded instead that Complainant enter into a partnership venture with it. As Respondent's proposals demonstrate, Respondent seeks large amounts of money from Complainant to provide leads to potential customers. These leads would be generated when consumers, purportedly looking for Complainant's COSMOS and COSMOS TOURAMA services, clicked onto Respondent's website and provided personal information.
5.5 The Complainant cites Veuve Cliquot Ponsardin v. The Polygenix Group [WIPO Case D2000-0163] and Harrods Ltd. v. Robert Boyd [WIPO Case D2000-0060] as comparable cases where bad faith registration and use was found.
5.6 In the Veuve Cliquot case the Respondent was in the business of trafficking in domain names. It had over 100 domain names on offer, including a large percentage of third party trademarks or services marks. The Panel found registration and use in bad faith for, inter alia, the following reasons:
- <veuvecliquot.org> (the domain name in issue) was so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.
- Respondent's offer to treat with persons with a "property interest" in the domain name was powerful evidence of bad faith - citing the Harrods v. Boyd case [see below].
The Panel then quoted from Educational Tertiary Service v. TOEFL [WIPO Case D2000-0044];
"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of the Complainant's trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant's trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant's trademark in connection with the domain name at issue."
5.7 In the Harrods case, the Respondent placed the domain name in issue <dodialfayed.com> for sale at US$400,000.00. The Panelist found that the Respondent had no right or legitimate interest in the domain name in issue. The Respondent's obvious target was to sell to the Complainant, of which the late Dodi Fayed had been a director and which was owned by his father. The Panelist cited the Panavision case [Panavision v. Toeppen 141 F 3d 1316 (9th Circuit) 1998] as supporting his view that the domain name had been registered and was being used in bad faith. He approved of the characterisation of the Respondent in Panavision as a "Spoiler" who prevented the trademark holder from doing business on the internet under its trademark name unless it paid the Respondent's fee.
Rights in the Trademark
5.8 The Respondent's case is that whatever rights the Complainant may have in the COSMOS mark they are not such as should preclude the Respondent from registering and using that trademark as a domain name for its planned COSMOS website.
- First, COSMOS is a common word, the dictionary definition being, inter alia, an orderly systematic universe.
- Second, COSMOS is a very widely used a word. The Google search engine reveals 906,000 hits for COSMOS, Altavista 740,647 hits and Excite 66,000 hits.
- Third, it is a common registered trademark. In the United States alone, there are 183 live registrations for a mark including COSMOS and 35 registrations for COSMOS simpliciter.
- Fourth, the Respondent denies that the COSMOS mark is well known in the travel industry.
- Fifth, the Respondent denies that the domain name in issue is confusingly similar to the Complainant's COSMOS TOURAMA mark.
5.9 However, the Respondent admits that the domain name in issue is identical to the Complainant's COSMOS trademark and then concedes that Respondent does not dispute that the Complainant has made out its case under paragraph 4.1(a) of the Policy. The Panel, therefore, assumes that the Respondent's challenge to the Complainant's rights in the COSMOS trademark go to the issue of registration in bad faith (see below).
Rights or Legitimate Interests
5.10 The Respondent's case is that it satisfies each of the 3 circumstances of paragraph 4c of the Policy which demonstrate the Company's rights and interests to the domain name in issue.
- First, before any notice of this dispute, the Respondent had made actual use and demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In that respect the Respondent relies upon the work from 1998 to date towards establishing the COSMOS website, evidenced by its use of email addresses incorporating COSMOS [paragraph 4.2.8 above], various Business Plans produced in 1998 and 2000 [paragraphs 4.2.9 and 4.2.12 to 4.2.15] and the use of the domain name in relation to the Almanac which has been hosted by HOL since the Fall of 1998 [paragraph 4.2.10].
- Second, that the Respondent as a business - or, in this case, a putative business - has been commonly known by the domain name. Here, the Respondent relies on the assertion that since 1998 it has operated under the name Cosmos.com, even though the actual mechanics of the corporate name change in Greece have not yet been completed [paragraph 4.2.3. above].
- Third, that the Respondent is making a legitimate non-commercial and fair use of the domain name in issue, without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant's COSMOS trademark. Here the Respondent relies upon the Almanac provided free of charge on its existing website for which the domain name in issue is used.
- Fourth, that the Complainant's COSMOS trademark is generic.
Additionally, preparatory work on the COSMOS website has involved investments of US$1.5 million in 2000 and US$800,000 in 2001.
5.11 The Respondent has cited a number of authorities to support its case that it has satisfied the requirements of paragraph 4c of the Policy. They are:
Cottonsmith LLC v. Resources Services Ltd. [NAF Claim No. FA0104000097096]. The domain name in issue was <cottonsmith.com>. The Panel found that the Complainant had common law service mark rights in COTTONSMITH and that there was identicality between that mark and the domain name in issue. The Respondent, however, succeeded in proving that prior to notice of the dispute it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services [paragraph 4c(i) Policy]. The Respondent produced affidavit evidence, one affidavit being from a third party not involved in the dispute, to the effect that for just over a year he had worked with the third party, who owned an active website known as WORLD SERVICE, to test the effectiveness of the Respondent's proposed website. The plan was to use that website, after making some refinements, on the domain name in issue and to use the business name COTTONSMITH on the website.
Condotels International Inc. v. Surfside Rental Management [NAF Claim No. FA0105000097127]. The domain name in issue was <condotels.com>. The Complainant owned US trademark registrations for CONDOTELS. The Respondent had been a franchise of the Complainant for the Garden City area of Myrtle Beach, South Carolina. That franchise was terminated by a Settlement Agreement between the parties which granted the Respondent rights to use the CONDOTEL mark for a defined territory. The Settlement Agreement was made in September 1994 and the Respondent registered the domain name in issue in December 1996. The Panel, as in the COTTONSMITH case, found for the Complainant under paragraph 4a(i) of the Policy. But, by reason of the Respondent's operation and provision of bona fide services under the domain name in issue before notice of the administrative proceeding and having become commonly known by that domain name through long use and promotional advertising, the Respondent made out its case under paragraph 4c of the Policy and the Complaint was denied.
Smart Design LLC v. Hughes [WIPO Case No. D2000-0993]. The domain name in issue was <smartdesign.com> registered in May 1997. The Respondent's case was that Smartdesign.com was a real entity and a companion business to another part of her business. It was the thinkubator, research and development lab in which patentable intellectual property used in her business was developed for market. A third party patentee attorney, who was representing the Respondent in relation to an application for a business method patent, confirmed that prior to the date when the Complaint was brought the Respondent had been doing business as SmartDesign.com. This was sufficient to find for the Respondent under paragraph 4a(ii) of the Policy. Notwithstanding the time it took (from May 1997) for the Respondent to get her business up and running under the name, this was in the Panel's view not indicative of bad faith under paragraph 4a(iii) of the Policy either.
Shirmax Retail Ltd. v. CES Marketing Group Inc. [eResolution Case No. AF-0104]. The domain name in issue was <thyme.com> registered in 1996. The Complainant marketed maternity clothing in Canada under a registered trademark granted in 1994. For some time, until September 1999, the Respondent used the domain name in issue on the web to redirect HTTP requests to a different site, at the domain name <cesmarketing.com>. That website described the Respondent's business as the development and marketing of valuable internet domain names, The Complainant showed that the Respondent had some 50 registered domain names, mostly relatively generic (e.g. <decimals.com>, <default.com>, <dill.com> and <doughnut.com>). The Complainant succeeded in making out its case under paragraph 4a(i) of the Policy. However, the Panel rejected the Complaint under paragraph 4a(ii) in the following terms.
The panel finds that the admittedly perfunctory preparations made by CES for use of the domain name <thyme.com> in bona fide commerce are sufficient to demonstrate the rights or legitimate interests required by paragraph 4a(ii). In addition, given the generic nature of the domain name, CES has at least a tenable argument that its use on the web merely for the purpose of redirecting customers to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark.
Playboy Enterprises Inc. v. Netscape Communications Corp. 55F. Supp. 2d 1070, 1074 (C.D. Cal. 1999). The Defendants operated search engines on the Internet. They sold advertising space on the search result pages, known as banner ads. The Defendants' servers were programmed to link a pre-selected set of banner ads to certain key search terms. This context-sensitive advertising ability was a value-added service for which a premium was charged. The Defendants keyed various adult entertainment ads to a group of over 450 terms related to adult entertainment, including the terms Playboy and Playmate. The Plaintiffs sued for infringement of their trademark rights in those terms and for trademark dilution. Their motion for a preliminary injunction was denied.
Cello Holdings LLC & Anor. v. Lawrence-Dahl Companies & Anor. 2000 WL 335737 at 8 (S.D.N.Y May 29, 2000). In 1997, the Defendants registered <cello.com> as a domain name. The Plaintiffs had been selling high-end audio equipment under the CELLO name since 1985 and, in 1995, registered the mark CELLO for use in the audio equipment business. They claimed that the Defendants actions in registering and offering to sell the domain name were diluting their CELLO trademark. The Defendant was a former musician who sold vintage audio equipment and accessories from his home in California under the name Audio Online.
The Court found that CELLO was registered as a trademark, either alone or in combination, for a variety of other goods and services. Numerous Business Names include CELLO as part of the name. At the time the Defendant registered the domain name in issue, he also tried to register some 20 other musical instruments - such as <guitar.com>; <drums.com>; and <violin.com> - but found they were already taken and only <cello.com> was available.
The Plaintiffs subsequently also claimed under the Anticybersquattering Consumer Protection Act [ACPA] 15 U.S.C. section 1125(d). The Court held that the Plaintiff's CELLO mark was neither famous nor distinctive within the meantime of the ACPA, "cello" being a common noun that is widely used by third parties. It was a weak trademark.
The Plaintiffs' motion for summary judgment was denied but the judge found there were genuine issues of fact for trial, including that of whether the Defendant had registered the domain name in bad faith with intent to profit from the mark [a requirement of the ACPA].
Allocation Network GmbH v. Steve Gregory [WIPO Case No. D2000-0016]. The domain name in issue was <allocation.com>. The Complainant had a German trademark registered in April 1999 but filed in September 1998 for ALLOCATION in Classes 9, 35 and 42. It had been using the Company Name, Allocation Network GmbH in Germany since 1997. The Complainant had also registered domain names for <allocation.net>; org; and .de. The Respondent registered the domain name in issue in March 1999. The Panel found that the Complainant succeeded under paragraph 4a(i) of the Policy. The Respondent was a domain name broker with over 400 registered domain names, all of which contained or were composed of common words or short phrases from the English language.
After the Complaint was submitted, the Respondent started to use the domain name in issue for a portal site giving access to certain categories of the Yahoo portal site. The Panel found for the Respondent under paragraph 4c(i) of the Policy on the basis that its intent to sell the domain name in issue existed before receiving notice of the Complaint and that this was in connection with its bona fide business of selling domain names. On the evidence, there was nothing to show a bad faith intent. The strong likelihood was that the Respondent would not have been aware of the Complainant's activities in Germany. Further, in Germany, trademark applications are not published until they are granted. This was in April 1999, after the domain name in issue was registered in March 1999.
Hasbro Inc. v. Clue Computing Inc., 66F Supp. 2d 117, 125 (D Mass. 1999). Hasbro owned the trademark CLUE for a popular detective board game which had been registered since 1950 and which Hasbro had supported by millions of dollars of advertising. The Defendant, Clue Computing Inc., was formed in 1994 and conducted a computer consulting and Internet access services business. The Defendant registered <clue.com> as a domain name and used it as the Internet address for its business web site. Hasbro sued the Defendant for trademark infringement and dilution of the CLUE mark.
The District Court dismissed the trademark infringement claim on the basis that there was no significant evidence to establish the likelihood of confusion necessary for conventional trademark infringement. There was very little similarity between Hasbro's products and services and those of Clue Computing.
Similarly, the dilution claim was rejected for lack of proof of any likelihood of confusion, tarnishing or blurring. The US Court of Appeals for the First Circuit rejected Hasbro's appeal on both counts. The District Court held that the kind of confusion that was more likely to result from Clue Computing's use of the domain name in issue, namely that consumers will realise that they are at the wrong site and go to an Internet search engine to find the right one, was not substantial enough to be legally significant.
As to the strength of the CLUE mark, the Court held that neither was it of the strongest category [arbitrary and fanciful] nor was it of the weakest [generic]. Despite Clue being a common word, it was not generic. Generic terms are those which refer to a category of goods or services without distinguishing the source or origin of the specific product. CLUE obviously does not refer to a general category of goods.
But, Hasbro succeeded in satisfying the Court that the CLUE mark had secondary meaning by reason of long and exclusive use, extensive advertising and promotion and public recognition. Although it was, therefore, clearly a strong mark it was not in the most protected category of trademark, a famous mark. Held, it was not a famous mark for the purpose of the Dilution Statute [15 USC section 1125(c)(1)].
Registered and Used in Bad Faith
5.12 The Respondent seeks to demonstrate that none of the circumstances set out in paragraph 4b of the Policy as evidencing registration and use in bad faith apply in this case.
5.13 The Respondent states that it did not acquire the domain name in issue from the original registrant for the purpose of selling, renting or otherwise transferring it to the Complainant trademark owner or to a competitor of the Complainant for a consideration in excess of the Respondent's costs relating to the domain name. In this case, the cost of acquiring the domain name from Margaret Young was US$13,000.00 [paragraph 4.2.5 above].
5.14 In support of this the Respondent states
- At the time of the purchase of the domain name in issue (1998) it was unaware of the Complainant or of its COSMOS trademark.
- Notwithstanding, knowledge of a trademark does not constitute bad faith registration and use.
- Here, the Complainant has failed to assert that its COSMOS trademarks are known worldwide.
- As evidence of the Respondent's intent not to sell the domain name, it refers to rejecting an offer to purchase from the Carl Sagan Foundation in 1999 for US$400,000.00 as well as to offers to purchase from other third parties.
5.15 Both the Response and Mr. Matingas’ affidavit deal in detail with the dialogue between the Parties in 2001 [see paragraph 5.4 above]. It is the Complainant's statement in the Complaint, set out in full in paragraph 5.4 above, which gives rise to the Respondent's allegation against the Complainant of attempted reverse domain name hijacking. This is the subject of the Complainant's Reply of September 20, 2001 and the affidavit from Mr. Steve Born. The facts and sequence of events appear to be as follows:
- Group Voyagers Inc. is a US Affiliate of the Complainant, which uses the COSMOS trademark under license in the United States.
- In March 2001, Mr. Matingas telephoned Group Voyagers and was put through to Mr. Born. Mr. Matingas states that in conjunction with the development of the Respondent's back office service products (described in paragraph 4.2.15 above], the Respondent Company initiated discussions with numerous companies it believed would be appropriate channel partners. Group Voyagers Inc. was one such company.
- Mr. Born says that Mr. Matingas told him that the Respondent's <cosmos.com> website was receiving about 2,500 emails a month from Cosmos' clients / prospective clients seeking Cosmos' services. [It will be remembered that at this time the domain name in issue was used in two respects. One as an email address, see paragraph 4.2.8. above. The other as the address to the World Almanac web site, see paragraph 4.2.10 above].
- Following that conversation, on March 29, 2001, Mr. Born sent an email to Mr. Matingas requesting further details about the Respondent's website and the Respondent's suggestion that there might be a basis for a partnership between the two companies. (Incidentally, from this email it appears that Mr. Matingas original telephone contact with Group Voyagers was not with Mr. Born but with his colleague, Karen Krudwig). Mr. Matingas acknowledged by email the same day indicating that he would call Mr. Born and would be prepared to travel to Denver to meet with him.
- On March 30, 2001, Mr. Matingas called Mr. Born. The Respondent has produced a log of telephone calls to Group Voyagers over the period March 30 to June 15, 2001. This shows 2 calls of some length, one on March 30 and the other on April 17.
- On April 12, 2001, as a result of the March 30 telephone conversation, the Respondent sent Group Voyagers an outline proposal containing 3 possible partnership arrangements. The Respondent's First Proposal [sent by email on April 5, 2001] involved the Respondent designing and installing a database to contain all Group Voyager's travel products, those products being listed on the Respondent's <cosmos.com> web site for sale to consumers. The consideration proposed was a one-time fee of US$250,000.00 to cover the cost of establishing the database, plus US$400,000.00 per annum with an additional fee of US$80.00 per ticket for sales in excess of 5,000 tickets per year through the web site.
- Mr. Born responded by email on April 14, 2001 explaining that Group Voyagers already had in place an on-line business with a number of travel agents. Further, new web sites for both GLOBUS and COSMOS were being developed in any event. Mr. Born explained that he could not see how the Respondent could generate the level of business which would justify the fees contained in the Proposal. By way of counterproposal Mr. Born suggested:
What would be viable is for us to provide a link to our own Cosmos site from yours, assuming that many of the hits you're receiving are actually consumers and agents looking for us. What proposal could you provide to facilitate a simple link exchange between the two sites, or us having a Cosmos link from your site?
- On April 17, 2001, Mr. Matingas called Mr. Born. This is the second of the two logged calls of any length. The upshot of that conversation was a revised Proposal sent by the Respondent the same day. This tied payment to referrals made by the Respondent to Group Voyagers. The relevant provisions of the Proposal read:
6. One-time fee: The Vendor [Globus & Cosmos Tours] will pay a one-time fee of US$20,000 and the Distributor [the Respondent] will release the most appropriate emails in relation to the Vendor (potential customers). It is estimated that the Distributor has about 2,000 potential customers that are seeking the Vendor's products.
7. Distributor's fee: The Vendor will be obliged to pay US$10,000 monthly.
There was to be an additional fee payable to the Respondent over 250 emails. Mr. Born said that he rejected this second Proposal because he did not see why Cosmos should be required to pay for access to its own potential customers, since the hits on the Respondent's web site were clearly attracted there only because of the drawing power of the Complainant's COSMOS brand.
- The text of Mr. Born's April 18, 2001 email follow-up to the telephone conversation of April 17, 2001, read as follows:
Thanks for your revised proposal, Dino. I appreciate that you were willing to adjust the price so aggressively.
Involvement with your site may have some interest to us. Let's do this -- allow us to get our own site up and running (this fall), as well as our own web marketing strategy. We'll include your proposal in those discussions.
That may also allow you to assemble a "track record" of performance for similar clients, so when the time comes, you can demonstrate booking performance for us.
Thanks again for your proposal -- let's plan on talking again in late summer.
- Mr. Matingas states that Mr. Born subsequently requested additional copies of the 2 Proposals, which Mr. Matingas duly emailed to Mr. Born on May 28, 2001.
5.16 The Respondent then cites 6 cases to support its case that the facts do not amount to evidence of bad faith under paragraph 4b(i) of the Policy.
A Prompt Corp v. Aprompt Computers Inc. [eResolution Case No. AF-00816]. The domain name in issue was <aprompt.com>. The Complainant had been in the business of selling computer products in the United States since 1984 under the name A-Prompt Corporation. The Respondent traded from 1991-2000 in selling computer hardware, packaged and custom software, and consulting services primarily in the south east US. In 2000 the Respondent Company collapsed. In December 2000, the Respondent contacted the Complainant, explained that Respondent no longer needed the domain name in issue and offered to sell it. The Complainant declined that offer but asked if the Respondent would forward to the Complainant any emails intended for it but addressed to the Respondent's <aprompt.com> email address. The Respondent requested payment for doing so, negotiations ensued, but the parties failed to reach agreement.
The Panel held that the Complainant failed to meet any of the requirements of paragraphs 4a(i) to (iii) of the Policy. As to registration in bad faith, the Complaint failed and so the Panel's holding that the Respondent had used the domain name in bad faith in the form of an auto-reply was of no avail. Paragraph 4a(iii) requires that both registration and use in bad faith must be shown by a Complainant.
Rusconi Editore SpA v. Bestfino [WIPO Case No. D2001-0656]. The domain name in issue was <vitalityonline.com>, one of Complainant’s magazines being named VITALITY. The Complainant owned four trademark registrations for VITALITY, all over 10 years old, two in Italy and two International Registrations covering a total of 10 other countries. The Respondent was a retired mechanical engineer living in Texas. He registered the domain name in May 2000 and it was not connected to any online facility. The Respondent said he had never heard of VITALITY Magazine. He was proposing to use the domain name for a web site offering nutritional products for sale in the United States. He alleged reverse domain name hijacking by the Complainant.
The Panel found in favour of the Complainant under paragraphs 4a(i) and (ii) of the Policy. But, it failed as to bad faith. The Respondent was clearly not a cybersquatter. The Panel accepted that he had not known of the Complainant's magazine when registering the domain name in issue.
The Panel knows of no reason why he might have been. As the Respondent points out, the Complainant's trade mark registrations are restricted to non-English speaking countries in Europe and while the Complainant broadly asserts a worldwide notoriety for the trade mark, no evidence of world wide notoriety is provided. Specifically, the Complainant has produced no evidence that its Vitality magazine is distributed or known in the United States.
KSBJ Educational Foundation Inc v. World Scope Press Inc [WIPO Case No. D2001-0480]. The domain name in issue was <godlistens.org>. The Complainant owned and operated a Christian radio station and used the mark GOD LISTENS for its radio services. The Complainant had the mark registered in the United States in Classes 38 and 41 with effect from September 1997. The Respondent registered the domain name in issue in August 1999 on behalf of Russell Ministries. The Respondent's website was activated in April 2000 using the domain name. That Website promoted the idea that God listens to people of all faiths. It provided a forum for spreading Mr. George Russell's religious and philosophical beliefs and included links to related sites, some of which permitted viewers to join Russell Ministries or make a donation.
The Panel found for the Complainant under paragraph 4a(i) of the Policy. No finding was made under paragraph 4a(ii), since the Panel held that the Complaint failed to satisfy the bad faith requirements of paragraph 4a(iii). The Complaint rested its claim on paragraph 4b(i) and on the evidence the Panel found that the claim on that ground was not made out. The Complainant submitted insufficient evidence to prove the Respondent's bad faith. Mere knowledge, constructive or otherwise, of a trademark does not, in the Panel's opinion, constitute bad faith registration and use.
Amana Company LP v. Vanilla Ltd. [WIPO Case No. D2001-0749]. The domain name in issue was <deepfreeze.com>. The Complainant had been manufacturing and selling refrigerators and freezers for many years. It had owned a US trademark registration for DEEPFREEZE since 1941. The Respondent was a well-known cybersquatter which had engaged in a pattern of bad faith domain name registrations. The Panel referred to three Complaints against the Respondent under the Policy and to a successful action in the Courts of New York brought by Virgin Enterprises arising out of 23 domain names registered by the Respondent incorporating the VIRGIN mark. The Respondent stated, however, that it had registered the domain name in connection with the development of a website called "Deep Freeze News" relating to the frozen food industry, which would be promoted by its associated company, World News Inc.
The Panel found for the Complainant under paragraphs 4a(i) and (ii) of the Policy. As to bad faith, the Panel stated:
A Complainant has to prove bad faith both at the time of registration and continuing bad faith after knowledge of the Complainant's mark. It is hard to say that the words "Deep Freeze" as an expression for freezing food was not known to the Respondent at the time of registration. However, because the Complainant has made no claim about the worldwide fame of its mark, one cannot infer that a registrant in the United Arab Emirates could be assumed to know about the Complainant's mark at the date of registration. The notional registrant would know of the expression "deep freeze" which has become a noun in common use (e.g. "I shall take a meal out of the deep freeze") or a verb (e.g. "I shall deep freeze that fish"). No strong secondary meaning has been established.
Because it is not a made-up word, "Deep Freeze" does not impinge as a distinctive mark on the average person in the same way as a made-up brand name (e.g. Coca-Cola) or a personal name (e.g. McDonalds).
Accordingly, the Panel considers that bad faith registration has not been proved. It is unnecessary to consider whether there has been bad faith use.
Vita Health Products v. E M Linha Ltd. [eResolution Case No: AF-0804]. The domain name in issue was <vigorex.com>. No Response was filed. Although VIGOREX was a registered US trademark for, inter alia, homeopathic formulations, the Complainant failed to show any evidence of its ownership of that registration. The Complaint was, therefore, held to fail for failing to satisfy paragraph 4a(i) of the Policy. The Panel's comments in relation to bad faith were, in the circumstances, obiter dicta. However, there was evidence that the Respondent had offered to sell the domain name in issue to the Complainant for US £50,000.00. The Panel held that this of itself, without evidence that the Respondent acquired the domain name primarily for the purpose of selling it to the trademark owner, was not sufficient to establish the circumstances of paragraph 4b(i) of the Policy.
The Panel quoted from the Manchester Airport case [D2000-0638] the proposition that selling a domain name is not per se prohibited by the Policy. [It should, however, be noted that the Complainant in that case failed under all three heads of paragraph 4a(i) to (iii) of the Policy, two of the three Panelists taking the view that the Respondent had made adequate preparations to use the domain name for a bona fide offering of services, namely building an Internet presence for Mandate, a group of businesses based at the airport at Manchester. In the Manchester Airport case, there was dialogue between the parties following a letter from the Complainant's counsel demanding transfer of the domain name in which the Respondent first offered to sell that name for US £10,000.00 later reducing the price to £3,000.00].
Cottonsmith LLC v. Resources Services Ltd. the facts of this Complaint are summarised in paragraph 5.11 above. There, the Respondent succeeded in demonstrating legitimate rights and interests under paragraph 4c(i) of the Policy. The Panel's subsequent holding under paragraph 4b(i) was, therefore, again obiter dicta. The Panel, wrongly in this Panel's view, stated that paragraph 4b(i) required the Complainant to show that there is a pattern of conduct by the Respondent of offering domain names to trademark owners for a consideration exceeding out-of-pocket costs directly related to the domain name. Pattern of conduct is a requirement under paragraph 4b(ii) of the Policy. The bad faith allegation under paragraph 4b(i) that was rejected by the Panel in the Cottonsmith case was the following text of a letter from the Respondent's counsel to the Complainant's counsel.
However, Mr. Nager has advised me that you wish to resolve this matter in a "cooperative fashion". We remain willing to discuss any proposal you have including your client's purchase of the domain name 'Cottonsmith.Com'.
5.17 The Respondent denies that it has registered the domain name in order to prevent the Complainant owner of the COSMOS trademark from reflecting that mark in a corresponding domain name. As noted above, to succeed under this head, a Complainant must demonstrate that the Respondent has engaged in a pattern of such conduct.
5.18 The Respondent's contentions in this respect are as follows:
- The Respondent was not the original registrant of the domain name. It was bought for valuable consideration in May 1988 from Ms. Young [paragraphs 4.2.4 and 4.2.5 above].
- There is no evidence that the Complainant was interested in the domain name in May 1998 when the Respondent purchased it. The Complainant had, by that time, already established its own websites under the following domain names
Website / domain name
October 17, 1995
February 3, 1996
January 18, 1996
- The Complainant itself failed to register <cosmos.com> from the outset and it still fails to register another domain name which remains available, namely <cosmostourama.com>, which is identical to one of the registered trademarks asserted by the Complainant in this Complaint.
- The Complaint totally fails to point to any pattern of conduct by the Respondent of registering as domain names other third party trademarks.
5.19 In support of the first of the above contentions, the Respondent cites Apian Software Inc. v. Scott M Smith & Associates Inc. [National Arbitration Forum Case No. FA 0104000097019]. The domain name in issue was <surveypro.com>. Survey Pro was a survey design and analysis product first released by the Complainant in 1991. The Complainant also had a registered US trademark for SURVEY PRO since 1991.
The Complainant had attempted in the past to purchase the domain name in issue from the original registrant. The Respondent acquired the domain name in July 2000 from Survey America [a market and public opinion research company doing business in the greater Los Angeles area] and that month began selling, under the mark "SurveyPro," software enabling the user to design online surveys, gather data and generate reports.
The Panel found that the Respondent's use of the disputed domain name in fact caused confusion with the Complainants SURVEY PRO trademark. However, the Panel held that, on the facts, the Complainant failed to show the Respondent's lack of rights or legitimate interests in the domain name. As to bad faith, whether the original registrant registered and used the domain name in bad faith was not relevant. There was no evidence of any connection between the original registrant and the Respondent. The Policy is concerned with the present registrant and the history with an earlier registrant was not relevant under the facts of this case [emphasis added]. This Panel notes that acquisition of a domain name can, however, be material in relation to paragraph 4b(i) of the Policy.
5.20 The Respondent denies that it registered the domain name primarily for the purpose of disrupting the business of a competitor. The Panel does not read the Complaint to be putting forward a case under the circumstances of paragraph 4b(iii) of the Policy, Nevertheless, so that each party is given a fair opportunity to present its case, set out below are the Respondent's contentions in this respect.
- First, the Respondent is not the original registrant of the domain name in issue: see again paragraphs 4.2.4. and 4.2.5 above.
- Second, each page of the cosmos.com website carries the following disclaimer:
cosmos.com states that is not associated owned or make any representation that is associated or represent any other Company directly or indirectly which its Corporate Name or Trademark is Cosmos or synthesis of it anywhere in the World. If you are seeking another company other than cosmos.com you should cosult any search engine or use any legal means to locate such Company. If your Company or your Website (domain name ) or Trademark is or includes the Name or Word " cosmos "or any syntesis of it, we will make a link from this page to your Website, provided it does not lead to any other Website, or associate, or affiliate Companies and your Wbsite is not commingle with other Websites and or Corporate Entities.
The Respondent cites Giddings & Lewis LLC v. Neal McKean [WIPO Case No. D2000-1150]. There, the domain names in issue were <usedfadal.com> and 10 other variants on the words used and fadal. The Complainant had numerous trademark registrations for FADAL, which had been in use since 1974 in connection with machine tools and computer controls for the operation of machine tools. The Respondent and predecessor entities had been in the business of selling used machine tool equipment for over 52 years. The Respondent added in 2000 an e-commerce business selling and brokering the sale of used machine tool equipment over the Internet. Of the 11 disputed domain names, only <usedfadals.com> was linked to the Respondent's web site. The following Disclaimer was carried at the bottom of the Respondent's home page.
"Usedfadals.com is not affiliated with Fadal Machinery Centers or Giddings & Lewis"
More recently the Disclaimer was copied to the top of the Respondent's home page as well and a link to the Complainant's web site was added.
With the exception of <fadals.com>, which the Respondent offered to transfer to the Complainant, the Panel rejected the Complaint based upon a showing by the Respondent of rights or legitimate interests in the remaining usedfadals domain names. The Panel's comments on bad faith were, therefore, obiter. The Panel did, however, observe that
… attributing bad faith to the Respondent would be difficult to reconcile with its early and diligent effort to distinguish itself from the Complainant through an appropriate disclaimer … .
- Third, the <greatdomains.com> auction site offers many domain names containing the word cosmos, including <tourcosmos.com>; <tourcostmos.net>; and <cosmosholidays.com>. Mr. Matingas states that none of these are owned by the Respondent Company.
- Fourth, the Complainant's case is undermined by its failure to register <cosmostourama.com> as a domain name [see paragraph 5.18 above].
- Fifth, the fact that Internet users may not arrive at the web site they are seeking does not, in itself, constitute bad faith. The Respondent cites the KSBJ Educational Foundation case in support of this proposition. The facts and findings of that case are summarised in paragraph 5.16 above.
- Sixth, the Complainant is already successfully using its COSMOS trademark to access customers to the <globustours.com>, <cosmostours.com> and <globusandcosmos.com> web sites evidenced by the fact that the Google search engine currently shows 137 websites currently link to those domain names.
5.21 The Respondent denies that by using the domain name in issue, it has intentionally attempted to attract, for commercial gain, Internet users to its <cosmos.com> website, by creating a likelihood of confusion with the Complainant's COSMOS mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of a product or service of that website. Its case in this respect is as follows:
- The Respondent intends to use the domain name in issue to launch a portal [per country on a franchise basis as proposed in its Business Plan] and a vortal for the travel industry [but not solely for that industry, again as evidenced by the Business Plan]. The Business Plan is summarised at paragraphs 4.2.9 and 4.2.12 to 4.2.15 above.
- The Respondent does not intend to offer any travel tours at that website, other than on behalf of third party vendors who themselves provide such tours.
- Consequently, there will be no likelihood of confusion.
The Reverse Domain Name Hijacking Issue
5.22 As noted in paragraph 5.4 above, this is centered around the statement in the Complaint that the Respondent attempted to sell the domain name in issue to the Complainant, followed by a summary of the dialogue between the parties in which the Respondent initially sought a consideration of US$350,000.00 per annum for the right of the Complainant's affiliated US company, Group Voyagers Inc. to, effectively, use the domain name. The Respondent contends that this is not an issue entitling the Complainant to submit a Reply.
Why the Complainant should be denied a Reply
5.23 The Respondent's case is that:
- The Rules apply, not the WIPO Arbitration Rules cited by the Complainant. This, of course, is correct.
- The Rules, paragraph 12, provide that the Panelist may, in his sole discretion, request further statements or documents from either of the parties. The Respondent refers to World Wrestling Federation Entertainment Inc. v. Ringside Collectibles [WIPO Case No. D2000-1306] where the Complainant's Reply to the Response and the Respondent's Sur-Reply thereto were both rejected by the Panelists as inadmissible. This was after the Panelists had reviewed the two additional submissions. The Panel's Decision reads:
Rule 12 unambiguously provides that only the Panel may request further submissions. The Panel has not done so. In these circumstances, it generally is inappropriate for a party to file further submissions on its own accord. As numerous panels have repeatedly emphasized, additional submissions may be filed by a party only in very limited circumstances, such as the existence of new, pertinent facts that did not arise until after the submission of the Complaint, or the desire to inform the Panel of new, relevant authority.
… In addition, as a number of these decisions make clear, if a party believes that additional submissions are warranted, it should not simply file them with the Center, rather, the better practice is to seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Because the materials in this case do not meet the limited circumstances in which additional submissions are warranted, the Panel declines to consider the materials in the Reply or Surreply.
In this case, the Complainant followed the recommended practice of seeking consent from the Panel before submitting the Reply. The question, therefore, is whether an additional submission is justified on the facts. This will, obviously, vary from case to case.
- The circumstances justifying an additional submission include where new, pertinent facts have arisen since submission of the Complaint, or where there is new, relevant authority that should be put before the Panel [see the World Wrestling case above]. The fact that the Response contains an allegation of reverse domain name hijacking by the Complainant is not adequate justification. In support of this proposition, the Respondent cites Goldline International Inc. v. Gold Line [WIPO Case No. D2000-1151]. The domain name in issue was <goldline.com>. The Complainant dealt in goods and services relating to coins and precious metals. It owned a US trademark and service mark for GOLDLINE for those goods and services. The Respondent operated since 1995 a consulting business specialising in vanity toll-free numbers, domain name addresses and the creation of intellectual property. He had registered the domain name in issue in 1997. He requested the Panel make a finding of reverse domain name hijacking on the basis that, although he had informed the Complainant's representatives both orally and in writing of the facts underlying his bona fide non-confusing use of the domain name, the Complainant had nevertheless proceeded to file the Complaint.
The Complainant filed a Reply and this was rejected as inadmissible by the Panel, the Presiding Panelist being the same as in the World Wrestling case [supra]. In rejecting the Reply, the Panel followed the principle enunciated in the World Wrestling case, adding as another example of circumstances justifying an additional submission,
… arguments by the respondent that the complainant could not reasonably have anticipated.
In the event, the Panel in Goldline found the Respondent's allegation of reverse domain name hijacking made out.
Why the Complainant should be entitled to Reply
5.24 The Complainant's answer is as follows:
- The COSMOS and COSMOS TOURAMA US registrations are incontestable. They are based on use since 1962 which is prima facie evidence of the validity of those registration [see paragraph 4.1.3 above].
- At the date the Respondent acquired the domain name in issue in May 1998, the Respondent was on constructive notice of the COSMOS and COSMOS TOURAMA US registrations. The Lanhan Act [15 USC section 1072] provides:
§1072Registration as constructive notice of claim of ownership Registration of a mark on the principal register provided by this Act or under the Act of March 3, 1981, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof.
- The domain name in issue is identical to the COSMOS trademarks.
- The Respondent has not yet made use of the domain name in issue for any commercial purpose, other than in pursuance of preparing to implement its Business Plan.
- One of the intended uses of the Respondent's prospective website is the provision of a travel portal, fully knowing that the Complainant's COSMOS mark has long been used for travel services, including on the Internet.
- This is, therefore, demonstrably not a case of reverse domain name hijacking.
5.25 The Complainant's Reply then goes on to expand its case on the Respondent's registration and use in bad faith for the purpose of rebutting the allegation of reverse domain name hijacking. In doing this, inevitably the Complainant is bolstering its case on those elements of paragraph 4a(iii) of the Policy but, in the Panel's view, such is the likely consequence of the Respondent raising the allegation.
5.26 The Complainant argues that the Respondent's acquisition of the domain name in issue and the Respondent's intention to use that domain name for the venture set out in its Business Plan infringes the Complainant's prior rights in its COSMOS trademark. This, it seems to the Panel, straddles the Complainant's response to the Respondent's case under paragraph 4c(i) [rights or legitimate interests] and the Complainant's case in chief under paragraph 4b(i) of the Policy. To an extent the Panel considers this inevitable as so often a lack of rights or legitimate interest is a powerful indicator of registration and use in bad faith. The circumstances evidencing bad faith are not limited to those set out in paragraph 4b of the Policy.
5.27 The Complainant cites Valio Oy v. Tcova Oy [WIPO Case No. D2001-0805]. The domain name in issue was <valio.com>. The Complainant had been in the dairy business in Finland since 1905 and had numerous trademark registrations in Finland and in Europe and other countries for the trademark VALIO. The Respondent was Telecommunications Consultants Olii Valtonen Associates Oy which had been in business since 1994 offering telecommunications consultancy services. Although the Respondent contended that VALIO was a common word in the Finnish language, this was not found by the Panel to impact on the validity of the Complainant's VALIO trademark. The Complaint was upheld and the domain name directed to be transferred to the Complainant.
5.28 The Complainant equates COSMOS for travel as arbitrary, not generic, so that it is entitled to a broad scope of protection. The Complainant cites in support Abercrombie & Fitch v. Hunting World [537 F. 2s. 4, 9-11 (2d Cir. 1976)]. There the Plaintiff's trademark was SAFARI used for men's and women's clothing. The Defendant argued that safari is an ordinary, common, descriptive, geographical and generic word. The judgment at First Instance held the SAFARI mark invalid for descriptiveness. The US Court of Appeals for the Second circuit, however, whilst affirming the Court below on its finding of no infringement in relation to descriptive use by the Defendant, substantially affirmed the validity of the Plaintiff's SAFARI registrations. The SAFARI mark was not generic.
5.29 Further, in addition to its inherent strength, the COSMOS mark by reason of its long and extensive use has acquired secondary meaning [Lanhan Act 15 USC section 1052(f)].
5.30 The Complainant's trademark rights in COSMOS for the purpose of paragraph 4a(i) of the Policy are not invalidated by the existence of other COSMOS trademark registrations. From the Panel's own review of the 34 live COSMOS US registrations exhibited to the Response, only two claim an earlier date for use in commerce than the Complainant (1962), one in Class 16 for school supplies and the other a COSMOS + device mark in Class 7 for electronically operated heat sealing machines for plastic materials. The only Class 39 registration is for electronic tracking of courier packages, with a first use in commerce dating from 1981.
5.31 The Goldline case [paragraph 5.23 above] is not in point, since the businesses of the Parties were quite disparate - the Complainant dealing in coins and precious metals and the Respondent providing vanity toll-free numbers etc - whereas here they do or may operate in closely related fields - the Complainant being a travel / tour operator and the Respondent intending to establish, inter alia, a travel vortal.
5.32 The World Wrestling case [also at paragraph 5.23 above] is, again, distinguishable. There, the Panel rejected the allegation of reverse domain name hijacking and ordered transfer to the Complainant of the two domain names in issue, <wwfauction.com> and <wwfauction.net>, where the Parties were both in the business of selling wrestling collectibles [i.e. autographed merchandise and clothing].
5.33 Under US law, even where a registered trademark is weak, that is of little importance where the conflicting marks are identical and the goods are closely related. The Complainant cites Sands Taylor & Wood Co v. Quakers Oats Co [978 F. 2d. 947 (7th Cir. 1992)]. There the Plaintiff owned the trademark THIRST-AID and the Defendants were found to infringe by their advertising slogan "GATORADE is Thirst Aid". The Plaintiff, a small Vermont based company established at the beginning of the Nineteenth Century, acquired in 1973 a soft drinks manufacturer and thereby the THIRST-AID trademark which was registered in 1953. The US Court of Appeals for the 7th Circuit held that the mark was not descriptive and found infringement. It defined closely related product as one which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner. The Court quoted with approval from McCarthy on "Trademarks and Unfair Competition":
Whether a mark is weak or not is of little importance where the conflicting mark is identical and the goods are closely related.
5.34 Finally, it is not relevant that the Complainant may have failed to register other available COSMOS domain names, citing Ruby's Diners Inc. v. Joseph W Popow [WIPO Case No. D2001-0868]. There the domain name in issue was <rubysdiner.com>. The Complainant has used the marks RUBY'S and RUBY'S DINER for diner-style restaurants in California since 1982 and had US registrations for both, together with counterpart registrations in a variety of other countries. The Complainant also owned the <rubys.com> domain name. The Respondent was a former General Manager of one of the Complainant's restaurants. In relation to bad faith under paragraph 4b(ii) of the Policy, the Panel said:
By registering the Domain Name in the ".com" TLD, Respondent obviously deprived Complainant of the opportunity to do so. Mitigating this conclusion, however, is the fact that Complainant's original foray into cyberspace was limited to registering <rubys.com>, and likewise it originally chose to register only RUBY'S as a federal trademark. Only later did Complainant wake to the realization that it had valuable trademark rights in the mark RUBY'S DINER. Nonetheless, under US law, trademark rights inhere not in those fastest to register them but in those who first make commercial use of them, and here that was Complainant.
In fact, although the Complaint succeeded, the Panel rejected the case under paragraph 4b(ii) for lack of evidence of a pattern of conduct by the Respondent.
5.35 To rebut the allegation of reverse domain name hijacking, the Complainant's Reply then goes on to amplify why it maintains the Respondent registered and used the domain name in issue in bad faith. The Complainant runs a 3 pronged case.
5.36 First, that the Respondent acquired the domain name in issue in bad faith. In this respect:
- The Respondent admits that from 1995 the Complainant's affiliate, Group Voyagers Inc., was using domain names, including the COSMOS mark, for a website. [see paragraph 5.18 above].
- The Respondent has yet to make any commercial use of its <cosmos.com> web site, which it proposes to use in the future for, inter alia, travel / vacation - related services.
- The Respondent cannot credibly deny prior knowledge of the COSMOS trademark and/or the Complainant's COSMOS travel / vacation business when it acquired the domain name in issue in May 1998. The Complainant's COSMOS tours were famous internationally in the travel field.
Further, under US trademark law the Respondent had a duty to clear the mark and failure to do so may imply bad faith, citing International Star Class Yacht Racing Association v. Tommy Hilfiger [80 F. 3d 749 753-754 (2d Cir. 1996)]. That case concerned infringing use by the Defendant, clothes designer Tommy Hilfiger, of the Plaintiff's STAR CLASS registration in relation to the Defendant's classic nautical sportswear 1994 Spring Collection. The Defendant's pre-use trademark clearance search was limited to Class 25 [clothing] registrations. The Plaintiff succeeded in its claims for common law trademark infringement, but was not awarded damages, since the Court did not consider that Hilfiger had acted in bad faith. The US Court of Appeals for the Second Circuit reversed the District Court's finding that Hilfiger did not act in bad faith. The failure of the Defendant to have a full trademark search carried out - as advised by its lawyers - was evidence of bad faith. The Court held that the restricted Class 25 search did not exonerate the Defendant. The Appeal Court remanded the case back to the District Court to decide on bad faith and the Plaintiff's claim to damages.
In relation to the Complainant's notoriety internationally in the travel field under the COSMOS mark, the Complainant cites both the Valio case [paragraph 5.27 above] and Riyad Bank v. Boschert [WIPO Case No. D2001-0820]. There, the domain name in issue was <riyadbank.com> registered in June 1998. The Respondent was located in Missouri, USA. The Panel distinguished the case from Amana where the mark was DEEP FREEZE and the Panel in that case considered it quite reasonable that the Respondent in the United Arab Emirates would never consider the words to be a registered trade mark [see paragraph 5.16 above]. The Panel considered that the common law mark was sufficiently well known, at least in the United States, by reason of the Complainant's extensive banking operations since 1957. The Panel upheld the Complaint and rejected the Respondent's allegation of reverse domain name hijacking. In that case, it is to be noted that the Panel permitted the Complainant to file a Reply to the Response.
Because of the allegation by the Respondent in the Response of reverse domain name hijacking, the Panel considered it appropriate to give the Complainant an opportunity to file, in effect, a defence to what amounted to a counterclaim.
As to the Respondent's alleged lack of prior knowledge of the Complainant's trademark the Panel held:
A critical question is whether the Respondent was aware of the Complainant's mark before it registered the domain name. The Panel notes that the Respondent resides in a non-Arab country. Yet he has alleged neither absence of knowledge of the Complainant's mark nor any legitimate interest in using the name. The Complainant's mark is reasonably well-known throughout the world. The website co-developer is an ex-employee of the Complainant. In the absence of any suggestion to the contrary, the Panel infers that the Respondent was aware of the Complainant's mark when he registered the name. The fact that the Respondent intends to use the site as a repository for opinions, stories and employee grievances about the Complainant further shows that he was aware of the Complainant's mark at the date of registration.
- There is no merit in the Respondent's assertion that it was entitled to acquire the domain name in issue by reason of the Respondent Company then being known as cosmos.com. The decision by the Respondent to pursue a change of corporate name to cosmos.com after it had been in negotiations with Group Voyager in 2001 is additional evidence of bad faith.
5.37 Second, that the Respondent has warehoused the domain name in issue in bad faith. In support of this, the Complainant points to the fact that the Respondent has never used the Almanac website at <cosmos.com> for commercial purposes. In the meantime, to negotiate to benefit from the ownership of the domain name is a further indication of bad faith. The Complainant cites in this respect the World Wrestling case [paragraph 5.23 above]. There, in relation to one of the two domain names in issue, the Panel said:
Respondent does not use wwfauction.net to resolve to any website. Warehousing this domain name, as a companion to the wwfauction.com domain name that Respondent is using to redirect to its RINGSIDE COLLECTIBLES site, also constitutes bad faith use under the Policy. See, Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000); CMG Worldwide, Inc. v. Naughtya Page, Case No. FA0009000095641 (NAF November 8, 2000).
5.38 Third, the Respondent has attempted to benefit from the confusion caused by its <cosmos.com> domain name in direct violation of paragraph 4b(iv) of the Policy. Here, the Complainant points to Mr. Matingas' statement that the parties should enter into a partnership because the domain name in issue was receiving about 2,500 emails per month from the Complainant's clients / prospective clients, all seeking the Complainant's services [see paragraph 5.15 above and the Respondent's Second Proposal, paragraph 6]. The likelihood of substantial confusion is, therefore, apparent. Mr. Matingas has admitted that he would not agree to a link from the Respondent's site to the Complainant's site to ameliorate that confusion and damage to the Complainant's goodwill in its COSMOS market.
The Respondent's Motion of September 24, 2001 to strike the Response, Mr. Born's Declaration and the substituted paragraph 17 of the Complaint
5.39 The Respondent urges two arguments in this respect. First, that these submissions go beyond the Panel's Procedural Order permitting the Complainant to submit a Reply dealing solely with the Respondent's charge of reverse domain name hijacking. That charge is based solely on the allegation in paragraph 17 of the original Complaint that the Respondent attempted to sell the domain name in issue to the Complainant. That allegation is no longer made in the proposed amended paragraph 17 submitted with the Complainant's Reply. The amended paragraph 17 summarises the Parties' negotiations in 2001 more precisely.
5.40 Second that all the documents upon which the Reply, the Declaration and the amended Complaint are based were available from the outset and could have been submitted with the original Complaint.
The Complainant's Counter Motion
5.41 The Complainant's answer is as follows. First, on the facts, the allegation of reverse domain name hijacking must fail. The Complainant is entitled to respond to the allegation and its Reply, the Declaration and the amended Complaint are all directed to demonstrating why the allegation is without foundation. Second, the Reply etc., introduces new and fuller testimony [the Born Declaration] on the facts surrounding which the allegation is made. Further, the new cases introduced in the Reply were all decided after the Complaint was filed in this administrative proceeding. They, therefore, additionally fall within the category of justifiable additional submissions. Third, consistent with the aim of the Policy to provide a streamlined procedure for determining domain name disputes, the Complaint as filed was proportionate in length and detail. By comparison, the Response and its exhibits run to more than 500 pages and it is only proper that the Complainant be given a fair opportunity to present its case. Fourth, that there is no need for the Respondent to be given leave to submit a Rejoinder to the Complainant's Reply.
6. Discussion and Findings
6.1 The Policy, paragraph 4a, provides that the Complainant must prove each of the following:
- that the Respondent's name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4c of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of the evidence, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4a(ii).
6.3 Paragraph 4b of the Policy sets out circumstances, again in particular but without limitation, which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4a(iii) of the Policy.
6.4 The circumstances set out in paragraphs 4b and 4c are, therefore, not limiting. Other circumstances may apply to whether the requirements of paragraphs 4a(ii) and (iii) are met.
The Reply, Mr. Born's Declaration and amended paragraph 17 of the Complaint
6.5 The Panel's duty to ensure that the administrative proceeding takes place with due expedition [Rules paragraph 10(d)] must be proportionate to the Panel's duty to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
6.6 What then is the issue here? Quite simply, that in paragraph 17 of the original Complaint the Complainant asserted that the Respondent had offered to sell the domain name to it. This the Respondent vehemently denies and, based upon what the Respondent sees as a false allegation, makes a charge of reverse domain name hijacking against the Complainant. The Complainant then seeks to defend itself against that allegation, hence the Reply, the Declaration of Mr. Born and the amendment to paragraph 17 of the Complaint.
6.7 The relevant text of original paragraph 17 of the Complaint is set out in paragraph 5.4 above. In the Panel's opinion use of the word sell falls to be read in the context of what follows in that paragraph. This is that the Respondent attempted to extort US$350K per annum from the domain name. Strong language perhaps but the paragraph should be read in the context of exhibit F to the Complaint, a partnership proposal from the Respondent involving a down payment by the Complainant of US$250K in relation to start-up work to be carried out by the Respondent, plus US$100K on a quarterly basis and a potential additional charge. A second Proposal involved a down payment of US$20K, US$10K monthly and a potential additional charge.
6.8 It is quite clear from Mr. Born's Declaration that the Complainant did regard these Proposals as extortionate or at the least not good value. The bottom line as far as the Complainant was concerned was that the Respondent was seeking to extract money from the Complainant by referring on to the Complainant emails from would-be COSMOS customers who had mistakenly used the Respondent's <cosmos.com> domain name to access the Complainant's websites. In other words, were it not for what the Complainant considers to be the Respondent's bad faith acquisition and use of the domain name in issue, the Respondent would not be in this position of attempting to extract money for directing trade to the Complainant.
6.9 The Respondent rightly points to Decisions under the Policy [the World Wrestling and Goldline cases summarised in paragraph 5.23 above] setting guidelines for the restricted circumstances in which the Panel should permit further submissions by the Parties after the Response. On the facts of the Goldline case the Panel refused to admit a Reply by the Complainant designed to answer an allegation of reverse domain name hijacking made in the Response. By contrast, in the Riyad Bank case [paragraph 5.36 above] the Panel admitted a Reply to such an allegation as being
… appropriate to give the Complainant an opportunity to file, in effect, a defence to what amounted to a counterclaim.
The principle on admitting further submissions by a three-member Panel in World Wrestling is, in this Panelist's view, correct, but the illustrations of the circumstances justifying such additional submissions are not exhaustive. As to the Goldline case, this Panelist prefers the view of Sir Ian Barker, the Panelist in the Riyad Bank case. Each case is dependent on its own particular facts.
6.10 The next question to be answered is whether the content of the Reply, Mr. Born's Declaration and the Amended Complaint exceed the Panel's Procedural Ruling made on September 10, 2001 [paragraph 3 above]. As noted in paragraph 5.25 above, dealing with the allegation inevitably involves demonstrating that the Complainant's bad faith case is properly made out. One of the indicia which the Panelist considers relevant to evaluating bad faith on the evidence submitted is whether or not the Respondent can demonstrate rights or legitimate interests in the domain name. There is, therefore, likely to be some spill-over in relation to dealing with the requirements of paragraphs 4a(ii) and (iii) of the Policy.
6.11 The language of the Respondent's allegation of reverse domain name highjacking is concluded in the following somewhat intemperate terms:
This case is an egregious example of an effort at reverse domain name hijacking by a trademark owner attempting to use the ICANN Dispute Resolution Policy and Rules to take a domain name from an entity that has been using that domain name in accordance with the law and consistent with the intent of the ICANN Rules. Having seen Respondent's business proposals, Complainant has apparently determined that it would be much cheaper to steal Respondent's business ideas by reverse hijacking the domain name than to enter into a valid business relationship with Respondent. Its complaint here is an instrumentality of that attempted theft. Its misrepresentations to WIPO that Respondent offered to sell the domain name to Complainant are knowingly false, as both the exhibits attached to the Complaint as well as the Exhibits attached hereto demonstrate. The Panel should not reward Complainant's fraud on the Internet community. Consequently, in accordance with Policy ¶ 15(e), Respondent respectfully requests that the Panel make a finding of bad faith attempted reverse domain name hijacking.
6.12 The Panel considers that the Complainant is entitled to defend itself and that, in all the circumstances, the Reply, the Born Declaration and the Amended Complaint should be admitted in their entirety. In making its decision in relation to the substantive dispute, the Panel's view of the relevance, materiality and weight of the additional evidence and submissions will become apparent. It follows that the Respondent's motion to strike is denied.
6.13 What, however, of the Respondent's request to submit a Rejoinder to the Complainant's Reply? Is that necessary to give the Respondent a fair opportunity to present its case? In the Panel's view, it is not necessary. There is nothing in the Reply and Mr. Born's Declaration that constitutes new matter of substance beyond that set out in the Reply, Mr. Matingas’ Affidavit and the very full 26 Annexes to the Response, supplemented by the Respondent's Submissions on September 6 and September 24, 2001.
Identical or Confusingly Similar
6.14 Coming now to the substantive issues to be determined, although the Respondent attacks the ambit of the Complainant's COSMOS trademark, ultimately the Respondent says that it does not dispute this element of the claim. Namely, that the domain name in issue is identical to the Complainant's COSMOS trademark, although the Respondent denies any confusing similarity to the COSMOS TOURAMA trademark. The Complainant, therefore, succeeds in establishing the requirements of paragraph 4a(i) of the Policy.
6.15 The following issues raised by the Respondent are, in the Panel's view, not relevant to this requirement of the Policy;
- that COSMOS is a common word with a dictionary definition;
- that COSMOS is very widely used as a word, evidenced by the large number of hits when typed into three popular search engines;
- that there are COSMOS trademark registrations in the United States owned by third parties. Note in this respect the Panel's own analysis of the 35 US COSMOS registrations cited by the Respondent [see paragraph 5.30 above];
- whether or not the domain name is confusingly similar to the Complainant's COSMOS TOURAMA trademark. It is sufficient that it is identical to the Complainant's COSMOS trademark.
6.16 There is, however, one position taken by the Respondent under this requirement of the Policy which impacts on the other requirements addressed below. This is the denial that the COSMOS mark is well known in the travel industry. On the evidence presented and from the Panelist's own knowledge, the Panel takes the view that COSMOS is well known - certainly, very well known in the United Kingdom - for the provision of Group vacations.
Rights or Legitimate Interests
6.17 In this respect, the Respondent cites Union des Associations Européenes de Football [UEFA} v. Chris Hallam [WIPO Case No. D2001-0717]. The case centered on rights or legitimate interest in the domain name <uefa2004.com>, where the Respondent, a self-confessed fanatic supporter of football, intended to create a website using that domain name as a non-commercial discussion forum relating to the forthcoming football event in 2004. The Panel found for the Respondent on this requirement of paragraph 4a of the Policy because the Complainant had failed to produce sufficient evidence to overcome the Respondent's case. In so deciding the Panel stated:
… The panel recognises that it may be difficult for a Complainant to prove the absence of something on the part of the Respondent but it is nevertheless Complainant who has to prove that Respondent has no rights or legitimate interest in the domain name at issue.
6.18 With this in mind, has the Respondent brought himself within any of the circumstances set out in paragraph 4c of the Policy or shown other evidence of rights or legitimate interests in the <cosmos.com> domain name? Mr. Matingas’ view that cosmos is a generic, generally available word is doubtless genuinely held but what has to be decided here is how the Policy applies to the Complainant's COSMOS trademark.
Actual use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services
6.19 The Respondent has exhibited various Business Plans produced in 1998 and 2000 relating to the COSMOS website. The Plans for this website are summarised in paragraphs 4.29 and 4.2.11 to 4.2.15. Significantly, one business area to be included is a Travel Channel and in that connection, in March 2001, Mr. Matingas of the Respondent contacted the Complainant's US affiliate, Group Voyager Inc., to suggest a co-operation for selling its COSMOS and COSMOS TOURAMA holiday packages through the planned website. There is no evidence to rebut the existence of this demonstrable preparation to use. The question is whether such use is bona fide.
6.20 The Respondent has also produced evidence of actual use in two respects. First, use of email addresses incorporating cosmos [paragraph 4.2.8 above]. Second, non-commercial use of the domain name in issue in relation to the free Almanac website established in late 1998 and currently expanding its content [paragraph 4.2.10 above]. Again, the question is whether such existing uses have been bona fide. Paragraph 4c(i) is not concerned with whether the use has been or is intended to be commercial. The cases cited by the Respondent all, naturally, turn on the facts as one would expect where issues of bona fides are concerned. These cases are summarised in paragraph 5.11 above.
6.21 In Cottonsmith, the bona fides of the Respondent's intention to use was bolstered by independent third party affidavit evidence. No such evidence is submitted in this case.
6.22 In Condotels, the Respondent was the Complainant's former franchise and could show bona fide actual use of the domain name for hotel services. Additionally, the Respondent succeeded in showing that he had also become commonly known by the domain name. On the facts, the Decision is not relevant to this case.
6.23 In SmartDesign the bona fides of the Respondent's intention to use the domain name in relation to a thinkubator was confirmed by evidence from her patent attorney. No such third party evidence is submitted in this case.
6.24 In Shirmax, the Respondent was in the business of selling generic domain names. As well as <thyme.com>, he had registered <dill.com>, <doughnut.com> etc. He used the domain name in issue to direct customers to another of his sites, which offered the generic domain names for sale. This was regarded as actual bona fide use, since there was no intent to cause confusion with or to tarnish the Complainant's THYME trademark use for its maternity clothing products. Shirmax presents an entirely different fact set to the facts involved in this case and the Panel finds it neither helpful nor unhelpful.
6.25 Playboy is a US case. Here the Complainant is based in Liechtenstein and the Respondent in Greece. The Respondent's proposals refer, however, to Headquarters in Chicago. The Rules provide that the Panel may have regard to principles of law that it deems applicable in addition to the Policy. There is, in the Panel's view, sufficient connection in this case with the United States to justify having regard to US case authority, always subject to its relevance.
The Playboy case is not relevant to the issue of bona fides to be decided here. The Court specifically stated that cases involving domain names "... have nothing to do with the issues in this case." The phrase from the judge's Conclusions of Law cited by the Respondent:
Trademark owners can never take words out of the English language
relates to trademark use and likelihood of confusion under US trademark law and in the Panel's opinion has no relevance whatever to a dispute under the Policy.
6.26 Cello is another US Court Decision. The Plaintiff's motion for summary judgment was denied but the Court found that there were genuine issues of fact for trial, including whether the Defendant had registered the domain name in bad faith with intent to profit from the Plaintiff's trademark. Since the issue of bona fides was therefore left to be decided at trial, the Panel considers the decision totally lacking in relevance to this case.
6.27 In Allocation, the Respondent was a domain name broker [as in Shirmax]. Held, there was no bad faith in the Respondent's intention to sell the domain name. He had no means of knowing of the existence of the Complainant's German trademark application when he registered the domain name. Here, however, the Respondent had every means of knowing about the Complainant's COSMOS US trademark and its worldwide longstanding COSMOS holiday tour business. From the Respondent's own evidence and that of Mr. Joel Miller, when he acquired the domain name in issue from Margaret Young he used the services of a law firm. On the issue of bona fides in relation to actual use or intent to use, the case does not assist the Respondent.
6.28 Hasbro is another US Decision. It involved CLUE for the well known board game against actual use of <clue.com> for computer consulting. Held, no likelihood of confusion or tarnishment of the Plaintiff's CLUE trademark because the businesses were quite dissimilar. Here, however, a part of the Respondent's intended use would involve providing a travel vortal. Further, the Respondent approached the Complainant's US Affiliate offering to use the domain name in issue to enhance the Complainant's business by offering COSMOS products to would-be COSMOS customers who had mistakenly accessed the Respondent's website through that domain name.
As to the Respondent's existing uses of the domain name, these appear to be stop-gaps pending the Respondent implementing its commercial <cosmos.com> website planned for the second half of 2002.
6.29 The above cited cases do not, in the Panel's view, assist in relation to deciding bona fides here. At the end of the day, the Panel takes the view that it is scarcely credible that when the Respondent Company acquired the domain name in mid 1998 and set up the Almanac website under the domain name it and its Managing Director, Mr. Matingas, were unaware of the extent and reputation of the Complainant's COSMOS trademark. He is resident in the United States, but a United Kingdom citizen. COSMOS is an exceptionally well known mark in the United Kingdom. Its tours extend, inter alia, to Greece the address of the Respondent Company and on the Complainant's evidence they are prominently advertised in the United States. But, Mr. Matingas has stated on oath that he, as the Chief Executive, was unaware.
The Policy does not provide for cross-examination or document discovery which are available in a number of jurisdictions to test the veracity of evidence Notwithstanding the foregoing factors, this Panelist considers it would be wrong - in the absence of clear evidence from the Complainant to the contrary - to rule in this administrative proceeding that Mr. Matingas' evidence in this respect should not be believed.
6.30 However, that evidence relates only to the state of affairs in mid 1998. Paragraph 4c(i) is concerned with the position before any notice to the Respondent of the dispute. What, if anything, occurred subsequent to mid 1998 to put the Respondent Company on notice of the existence of the Complainant and its widespread use of the COSMOS mark in relation to its tour / vacation business?
In 2001, Mr. Matingas represented to the Complainant's US Affiliate that the domain name in issue was attracting would-be customers of the Complainant. In the Respondent’s Second Business Proposal of April 17, 2001, reference is made to about 2,000 would-be customers of the Complainant. This was not, presumably, a new occurrence since the domain name in issue had, apparently, been in use in relation to the free Worldwide Almanac website since late 1998.
6.31 It follows that for quite some time before notice to the Respondent of this dispute, the Respondent Company was on notice that continued use of that domain name would be contrary to the Complainant's rights in the COSMOS name and mark. Has, however, the Complainant slept on it rights such that it should now be precluded from asserting this Complaint? Not in the Panel's view. There is no evidence in the Response that the Complainant had any knowledge of the Respondent Company or of its use of the domain name in issue until after Mr. Matingas contacted Group Voyagers Inc. in March 2001. The Respondent was not a trading company, its only activity being provision of the free Worldwide Almanac website.
In the circumstances, the Panel does not consider that the Respondent has provided convincing evidence to bring itself within the circumstances of paragraph 4c(i) of the Policy. By the time that the Respondent Company began its preparations to use the domain name in issue for the <cosmos.com> website or from a date shortly thereafter the evidence indicates that it was inevitably on notice of the existence of the Complainant, its business under the COSMOS name and mark and the attendant risk of conflict as and when the <cosmos.com> website might be brought into operation. From that date - which precedes notice of this dispute - the Panel does not regard the continuing preparations to use the domain name for offering goods or services through that website were bona fide.
6.32 With regard to actual use of the Worldwide Almanac website since 1998, it follows from the foregoing that from a date well before receiving notice of this dispute such continued use cannot be regarded as bona fide, even though at the outset it may have been.
6.33 The Panel does not consider that utilising email addresses using the <cosmos.com> domain name constitutes use in connection with an offering of goods or services.
Has the Respondent been commonly known by the domain name?
6.34 The Business Plans both identify the Respondent Company as the vehicle which will market the services to be marketed under the COSMOS website, as do the Respondent Company's 5 year Feasibility Plans for COSMOS services to be offered through the website in Greece and Taiwan. The Response states that it was not until the Spring of 2001 that the Respondent Company decided to change its name from Eurotech to Cosmos.com Inc. However, Mr. Matingas' Affidavit states that since 1998 the Respondent Company has been known as and has operated under the name Cosmos.com. But, the Respondent's own evidence is that its commercial venture is not due to be launched until the second half of 2002 and that the domain name in issue has only been used thus far for email addresses and for the Almanac. Only an outline of the contents of the Almanac is exhibited. There is, in the Panel's view, no evidence to support the proposition that the Respondent Company has been commonly known by the Cosmos.com name.
Legitimate Non-Commercial or Fair Use of the domain name
6.35 The Respondent relies upon use of the domain name in issue in relation to the free Almanac service. For the reasons set out above in relation to the Respondent's case under paragraph 4c(i), the Panel does not consider that the Respondent's use of the domain name in issue has been legitimate or fair as required by paragraph 4c(iii) of the Policy.
Conclusion under paragraph 4a(ii) of the Policy
6.36 The Panel concludes that the Respondent has not succeeded in showing rights or a legitimate interest in respect of the domain name in issue.
Registered and Used in Bad Faith
6.37 There is no evidence that the Respondent Company acquired the domain name in May 1998 from Margaret Young primarily for the purpose of selling or renting it to the Complainant for valuable consideration in excess of the costs directly related to the domain name. Indeed, Mr. Matingas states on oath that at the time of that purchase neither he nor the Respondent Company were aware of the Complainant or its US trademarks. The Complaint, therefore, fails to demonstrate bad faith under paragraph 4b(i) of the Policy.
6.38 Nor is there any evidence of the Respondent engaging in a pattern of conduct of registering as domain names third party trademarks to prevent the owners of such trademarks from reflecting the marks in corresponding domain names. The Complaint fails to demonstrate bad faith under paragraph 4b(ii) of the Policy.
6.39 Mr. Matingas' evidence is that the Respondent did not acquire the domain name primarily for the purpose of disrupting the business of a competitor. It was, as stated, acquired without knowledge of the Complainant. Further, the intended use in relation to the <cosmos.com> website is designed to be complementary to the business of the Complainant. The Complainant and the Respondent are not competitors. Accordingly, the Complaint fails to demonstrate bad faith under paragraph 4b(iii) of the Policy.
6.40 On Mr. Matingas' evidence, the Respondent Company could not - at least in 1998 - have intended to attract, for commercial gain, Internet users to the Worldwide Almanac website by creating a likelihood of confusion with the Complainant's COSMOS mark as to the source, affiliation or endorsement of that website. For a start, the Worldwide Almanac is free. But, it appears from the Respondent's evidence that the domain name in issue does, as a fact, attract would-be customers of the Complainant. How then, if at all, has the Respondent subsequently sought to exploit that actual confusion for commercial gain?
The dialogue between the parties in April 2001, particularly the Respondent's email of April 2, 2001, and the Second Business Proposal of April 17, 2001, demonstrate an attempt by the Respondent to obtain commercial gain from, effectively, referring to the Complainant's US Affiliate emails from confused would-be customers of the Complainant. Paragraph 6 of the April 17, 2001 Proposal is set out in full at paragraph 5.15 above.
6.41 The Panel, therefore, finds that the Complainant has made out its case under paragraph 4b(iv) of the Policy. As stated [paragraph 6.4 above], the circumstances set out in paragraph 4b are not limiting and other circumstances can be considered when evaluating bad faith. The Panel's holding that the Respondent has failed to show rights or legitimate interest in the domain name is also evidence of bad faith.
6.42 The authorities cited by the Respondent in relation to paragraph 4a(iii) of the Policy are as follows:
- under paragraph 4(b)(i) the A Prompt case; the Rusconi case; the KSBJ case; the Amana case; the Viral Health case; and the Cottonsmith case.
These cases have been reviewed in paragraph 5.16 above and in the Panel's view can and should be distinguished on the facts. Further, the Policy clearly states that a finding in the Complainant's favour under paragraph 4b(iv) shall be evidence of registration and use in bad faith.
- Under paragraph 4(b)(ii) the Apian Software case [reviewed in paragraph 5.19 above], relates to alleged bad faith by the previous owner of the domain name <surveypro.com>, not by the Respondent. As stated in that case, the Policy is concerned with the present registrant. It does not assist the Respondent in this administrative proceeding.
- Under paragraph 4(b)(iii), the Respondent relies on the Giddings & Lewis disclaimer case. The difference there was that, unlike the Respondent's general disclaimer on its Worldwide Almanac website, the disclaimer in relation to the <usedfadals.com> website was specific to the Complainant [see paragraph 5.20 above]. The Respondent also cited the KSBJ case [see paragraph 5.16 above]. On the facts in that case the Complainant only suggested that Internet users might be misdirected to the Respondent's website. By contrast, in this case the Respondent states that the Complainant's would-be customers have in fact been misdirected by the <cosmos.com> domain name. Neither case, therefore, assists the Respondent here.
- Under paragraph 4b(iv), no cases are specifically cited by the Respondent.
The allegation of Reverse Domain Name Hijacking
6.43 In the light of the foregoing, the Panel rejects the Respondent's allegation.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that the registration of the domain name <cosmos.com> be transferred to the Complainant.
Dated: October 8, 2001