WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Examiner Publications (Cork) Limited v. DallasConsultants.com and Ken Baylor

Case No. D2001-1187

 

1. The Parties

The Complainant is Examiner Publications (Cork) Limited, PO Box 21, Academy Street, Cork, Ireland. The Complainant is a company incorporated in Ireland pursuant to the laws of Ireland. It is represented by Ronan Daly Jermyn, Solicitors, Cork, Ireland.

The First Respondent, DallasConsultants.com, is the registrant of the first disputed domain name <eveningecho.com>. The First Respondentís address is given as Newark, CA, United States of America.

The Second Respondent, Ken Baylor, is the Registrant of the second and third disputed domain names <evening-echo.com> and <cork-echo.com>. The Second Respondentís address is given as, San Jose, VA, United States of America.

 

2. The Domain Names and Registrar

The domain names at issue are:

<eveningecho.com>
<evening-echo.com>
<cork-echo.com>

The Registrar with which all the disputed domain names are registered is Network Solutions, Inc., Herndon, VA 20170, United States of America.

 

3. Procedural History

On October 1, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On October 4, 2001, the Registrar responded to a request for verification of the disputed domain names, confirming details of the Respondents, that the Policy applied to the disputed domain names and that the Respondents are the current registrants of the disputed domain names.

On October 5, 2001, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceedings to the Respondents. The Respondents were advised that a Response to the Complaint was required within 20 calendar days i.e. by October 25, 2001.

On October 25, 2001, the WIPO Center received the Respondentsí Response.

On October 30, 2001, the WIPO Center appointed a sole panelist.

The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

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

On November 9, 2001, the Complainant forwarded further submissions to the Center, and requested that the Panel accept and consider those further submissions. On the same day, the Panel advised that it was prepared to accept and consider the further submissions from the Complainant on the basis that the Respondent was given an opportunity to respond to those submissions.

On November 26, 2001, the Center received the Respondentís further submissions in Response.

 

4. Factual Background

The Complainant is an Irish Company which publishes and distributes two newspapers in Ireland Ė the Evening Echo and its sister publication, the Irish Examiner. The Complainant states that the Evening Echo is distributed primarily in the City and County of Cork, Ireland. It is the only evening newspaper distributed in its geographical area.

The Complainant is the registered proprietor in Ireland of the trademark EVENING ECHO in respect of newspapers. The Complainant has been using the mark in respect of a newspaper distributed by it in and around the City and County of Cork in Ireland continuously since 1892. Approximately 28,000 copies of the newspaper are distributed per day.

The Complainant is the registered owner of the following domain names:

<eveningecho.com>
<corkecho.com>
<corkeveningecho.com>
<limerickeveningecho.com>
<eecho.ie>
<cork-echo.ie>
<limerick-echo.ie>
<e-echo.ie>

At least some of these domain names were registered after the registration of the disputed domain names.

The first disputed domain name, <eveningecho.com>, was registered on May 10, 1999. The Respondents established a website under that domain name in or around April 2001.

On June 1, 2001, the Second Respondent registered the second disputed domain name, <evening-echo.com>. The second disputed domain name now resolves to the same website as the first disputed domain name, <eveningecho.com>.

On June 11, 2001, the Complainant offered to purchase the domain name <eveningecho.com> from the Respondents. This offer was made anonymously via an independent broker. The Respondents refused this offer.

On June 16, 2001, an entity known as Zerobarriers LLC Corporation Delaware, which is affiliated to the Respondents, applied to register the mark EVENING ECHO as a trademark in the United States of America. The goods and services in respect of which the application was made are:

"Free speech site primarily dedicated to providing feedback by individuals on the work of the formalized media Electronic transmission of news, information, messages or images; providing access to news and information over the internet and other computer networks; providing telecommunication access and links to computer databases and to the internet and other computer networks; providing multiple user access to the internet and other computer networks; portal site services and website services; electronic information communication services; electronic mail services; and information services relating to all of the foregoing."

On June 29, 2001, the Second Respondent registered the third disputed domain name, <cork-echo.com>. This domain name resolves to part of the Complainantís Irish Examiner website.

On July 9, 2001, Mr. Roddy, an employee of the Complainantís parent company, sent a letter to the Second Respondent, putting him on notice of the Complainantís registered trademark and reputation in the trademark EVENING ECHO. The writer requested the Second Respondent to transfer the domain name <eveningecho.com>.

On July 12, 2001, the Second Respondent replied to that letter, stating:

"I should hope people would not be confused as there are disclaimers of any affiliation posted in various parts of the site.

I must admit your letter has come as a surprise to me. As you initiated the thread, I suppose the questions I must ask you are the following:

(a) Are our e-mail interactions to remain private and confidential, and never to be disclosed to anyone including lawyers?

(b) If we do have issues, shall we sort them out between ourselves and not resort to the usual threats etc?"

On July 19, 2001, Mr. Roddy wrote to the Second Respondent stating that he could not guarantee that the emails would not be disclosed to anyone. Mr. Roddy said:

"Nonetheless I am extremely anxious to resolve the issues amicably. Again we are willing to reimburse you for any expense incurred in registering the domain name and in transferring it to us."

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that:

(1) The domain names <eveningecho.com> and <evening-echo.com> are identical to the Complainantís mark EVENING ECHO, or alternatively, are confusingly similar to that mark.

(2) The domain name <cork-echo.com> is confusingly similar to the Complaintís mark EVENING ECHO. It claims that the word "ECHO" is the most distinctive part of the Complainantís mark. The Complainantís Evening Echo publication is distributed primarily in the Cork region of Ireland and the Complainant claims that the mark is associated with the area in the minds of the (Irish) public. It contends that a substantial number of Irish residents would, on seeing the domain name <cork-echo.com>, assume that this domain name was associated with the Complainantís publication.

(3) The filing of a trademark application for the mark EVENING ECHO in the United States of America does not render the Respondentsí use of the disputed domain names lawful in Ireland.

(4) It does not believe the Respondents to have offered any goods or services under the name EVENING ECHO prior to registration of the first disputed domain name on May 10, 1999, and that the Respondents had not established any rights or legitimate interests in respect of the disputed domain names prior to that date.

(5) The Respondents have never been commonly known by any of the disputed domain names. The Complainant confirmed that it has never licensed or otherwise permitted the use of its mark by the Respondents.

(6) The Respondents were aware of the Complainantís newspaper and its mark at the time of registering all of the disputed domain names and at the time of establishing their website under the first and second disputed domain names. It bases this belief on the following:

(a) The first Respondent gives the email address "noc@dallasconsultants.com" in its registration details for the first disputed domain name. A Whois search carried out on July 30, 2001, revealed that DallasConsultants had registered the domain name <dallasconsultants.com> . The address of DallasConsultants provided in respect of that domain name registration was 11 Murmont Road, Montenotte, Cork, Ireland.

(b) DallasConsultants also registered the domain name <dallasducati.com> on May 10, 1999. The address given is the same Cork address. The contact name is Ken Baylor.

(c) The Cork City telephone directory indicates that 11 Murmont Road, Montenotte, Cork, Ireland, is occupied by a person or persons with the surname Baylor. The solicitors for the Complainant telephoned this number and established that this was the home of a mother of a Ken Baylor. (However, in a subsequent telephone discussion Mrs. Baylor asserted that her son, Ken Baylor, lived in Britain.)

(d) The Whois search carried out on July 30, 2001, also revealed that a Ken Baylor, having the same Californian address as the Second Respondent, is also the contact person for a number of domain names registered by Zerobarriers.com. The address for Zerobarriers.com is the same Californian address as that given for the Second Respondent.

(e) An Internet search revealed a curriculum vitae for a Ken Baylor, Senior Director of a Zerobarriers.com. In this curriculum vitae, Ken Baylor allegedly states that he possesses degrees from University College, Cork.

(f) On June 29, 2001, the Second Respondent Ken Baylor registered the third disputed domain name <cork-echo.com>, demonstrating that at least by that time the Respondents were aware of the Complainant. This registration occurred prior to any Complaint being made by the Complainant to the Respondents.

(g) The content on the Respondentsí website under the first and second disputed domain names demonstrates that the Respondents were aware of a newspaper called the Evening Echo. For example, it contains the following headings:

"What do you think of the Evening Echo?
Ö
Is the paper truly biased?
Ö
Other NewsPapers
Are others better?"

In light of this, the Complainant submits that there is overwhelming evidence that Ken Baylor is a former resident of Cork and that the "Evening Echo" newspaper referred to on the Respondentsí website was and is intended to denote the Complainantís publication.

(7) As a former Cork resident, Ken Baylor would inevitably have had some knowledge of the Complainantís newspaper and its mark prior to registering any of the disputed domain names and establishing the website under the first and second disputed domain names.

(8) The first and second disputed domain names were registered and are being used for the purpose of disrupting the business of the Complainant "through the knowing deception of consumers."

(9) The third disputed domain name, which resolves to part of the Complainantís "Irish Examiner" website, is deceptive in the hands of the Respondents. It claims that the Respondents are retaining it for some further use.

B. The Respondent

The Respondents claim that the Ken Baylor named as the Second Respondent is not the same person as the Ken Baylor of 11 Murmont Road, Montenotte, Cork, Ireland. They contend that the Second Respondent lives in the United States of America and has never lived in Ireland. The Respondentsí explanation as to how the First and Second Respondents came to be associated with the Ken Baylor who lives in the United Kingdom, and how the Respondents came to have used that Ken Baylorís Cork address is as follows.

The Respondent claims that in the last week of December 1998, Ken Baylor (the Second Respondent) and a group of his and his wifeís friends decided to capitalize on the Internet boom. As many of them had skills in some technical areas but none in others, the group began by teaching each other their skills. These lectures were held in Ken Baylorís home in Dallas.

In early February 1999, the group considered that it had enough skills to offer benefit to business customers. They searched the domain registry for a "catchy" name under which to promote the services of the group, but many were gone.

Ken Baylor discovered that the domain name <dallasconsultants.com> was available and immediately registered it. Ken Baylor subsequently became responsible for registering or updating all the other domain names held by the partners and consultants in the group and became the designated contact in all communications with the InterNic (as it then was).

On May 1, 1999, the group registered the domain name <integrationexperts.com> and it was proposed that the group use this domain name as its new internal mail system.

At a weekly group meeting held on September 5, 1999, at Ken Baylorís home, there was strong objection to the <integrationexperts.com> domain name proposal. Also at that meeting, the need for the mail system was repeated Ė it was emphasized that whenever a member of the group was at an employerís place of business and needed help, that person should use a common system to contact the rest of the group. It was also emphasized that daily reports should be provided each evening by 8.00 pm. Daily reports were to be in the HTML format, and FTPíd into the password-protected section of the site (once built).

The Respondents state that a member of the group, Scott Boyd, advised that he did not know HTML and that he would have to prefix every line of his evening report with "echo" (an MS DOS and UNIX command for outputting characters to a screen or to a web page). The Respondents claim that for the rest of the night everyone joked about having to do their "evening echo".

That weekend, Scott Boyd and Ken Baylor searched for a better domain name. Scott Boyd subsequently called Ken Baylor and suggested <eveningecho.com> and asked that Ken Baylor obtain it. The Second Respondent Ken Baylor did so on May 10, 1999.

As the group grew in competency, and completed further projects, the Respondents claim that it was recognized that attempting to solicit business in California with the name "DallasConsultants" would be counterproductive. The group considered that the "integrationexperts" name was too unwieldy and "eveningecho" insufficiently descriptive. It therefore decided to adopt the name "ZeroBarriers".

On December 16, 1999, Ken Baylor registered the domain name <zerobarriers.com>. ZeroBarriers LLC was incorporated on August 8, 2000, and it applied for the trademark ZEROBARRIERS on June 16, 2001.

The Ken Baylor named as the Second Respondent claims to be a genealogist who is interested in the history of the Baylor family. In December 1999, he claims that he tried to register the logins <kbaylor@hotmail.com> and <kenbaylor@hotmail.com>. Both names were already taken. The Second Respondent claims that he sent a quick email to each hotmail address, stating that he was Ken Baylor and that he would like to find out a little more about them and perhaps swap life stories. "K Baylor" never replied, but "Ken Baylor" did.

This Ken Baylor (referred to by the Respondents as "the Londoner") said that he was originally Irish by birth, but was currently living and working in England.

In 2000, the Londoner invited the Second Respondent to visit him at his family home in Ireland.

The Second Respondent claimed that he immediately accepted the invitation and asked his ZeroBarriers partners if they were happy for him to go. No serious objections were raised, but no-one was willing to take responsibility for the Second Respondentís InterNIC related work. The Second Respondent asked the Londoner if he could forward his mail to the Londonerís home in Cork and use his address as a contact for his InterNIC work. The Londoner said this would be "no problem".

The Second Respondent states that just before he was scheduled to leave the trip was cancelled.

The Second Respondent states that at the start of 2001, he received an email from the Londoner, suggesting that the <eveningecho.com> site be used for comparing the physical newspapers in his area. The Londoner informed the Second Respondent that he knew of a "great many" newspapers of the name "Evening Echo". He was not too happy with the quality of the journalism in newspapers in his area.

The Second Respondent stated that he thought it sounded like a lot of work, but nevertheless, during one free weekend in April 2001, he created a website in the form of a bulletin board. He claims that thereafter he mostly just ignored the site, but checked on it for blatant abuse (links to pornography, very strong language etc). He states that some columns were added by legitimate visitors (e.g. classified columns) and he had no reason to object to this.

The Second Respondent claims that a full disclaimer regarding ownership and affiliation of the domain was posted on the site. The disclaimer was updated whenever a new "Evening Echo" entity was identified. A notice requesting users to view the disclaimers on the site is posted before users are able to access the site. For a full five seconds, users must stop and wait as the notice is displayed.

The Respondents claim that in May 2001, a user of the site mentioned a Corkonian Evening Echo owned by a Thomas Crosbie Media. The Second Respondent states that this was the first the Respondents had heard of the Complainant and the Complainantís name was immediately added to the disclaimer.

The Second Respondent stated that on June 11, 2001, an anonymous and unsolicited offer was sent to "noc@<integrationexperts.com". This email offered $1,000 for the domain <eveningecho.com>. The Second Respondent called his colleague, Kevin Harland, to look at the email, and asked "what do you think?". The Second Respondent claims that after about a three second pause, they both said "reject". The Second Respondent states that he followed through the wizard, using the default options for rejecting the offer, and in less than three seconds the offer was rejected.

The Second Respondent states that in June 2001, traffic to the site increased, particularly traffic from Ireland. He also states that the site became the victim of many hundreds of hacker attacks during this time. Many of these emanated from Cork in Ireland.

The Second Respondent confirms the Complainantís assertion that by the time the Respondents registered the third domain name, the Respondents associated the Complainant with Cork and that the Complainant occupied much of their minds, as the Respondents believed one of the hackers to be the Complainant.

The Second Respondent states that "Cork" was so much to the forefront of their minds that on June 20, 2001, when Jon Cook (a Network Engineer and firewall administrator) was trying to register the name <cook-echo.com> he accidentally registered <cork-echo.com>.

The Respondents claim that they attempted to cancel the domain name when alerted to the problem by Jon Cook on July 8, 2001, but due to a "DNS issue", the return mail bounced. The Respondents then ensured that the website corresponding to the domain name <cork-echo.com> resolved to the Complainantís Irish Examiner site. (The Complainant did not have an active Evening Echo website.) The Respondents state:

"This unsolicited good faith gesture was to minimize any potential for confusion while the cancellation was proceeding."

The Second Respondent states that the Respondents attempted to cancel the domain name again on July 12, 2001.

The Second Respondent alleges that parts of the resume which the Complainant annexed to its Complaint (alleging it to be that of the Second Respondent) are fabricated. The Second Respondent states that he is not, contrary to what is stated on the resume, a lawyer, nor has he ever received any degrees in computer science, especially not at the stated University. He claims that he has never held the title of Senior Director at any time at any company.

The Respondents emphasize that no money was ever derived from the sites, including banner ads, and no links whatsoever connect the sites with the groupís commercial activities such as <zerobarriers.com> and <dallasconsultants.com>.

C. The Complainantís further submissions

The Complainant submits that the explanation proffered by the Respondents for the registration of the disputed domain names and for the existence of the apparent connection between the Respondents and Cork is fanciful. It completely rejects any allegation that it forged part of the Second Respondentís curriculum vitae.

The Complainant notes that the Respondent Ken Baylor has failed to offer readily available evidence, such as a copy of his birth certificate, passport or driving licence in support of his contention that he has no connection with Ireland.

The Complainant also contends that the alleged email correspondence between the two Ken Baylors does not serve to rebut the possibility that the Respondent Ken Baylor has family connections in Cork, from whence this correspondence might originate.

The Respondents explain the use of "the Londoner" Ken Baylorís family home address in Cork on the basis that this would be a convenient home address for correspondence in respect of certain domain names. The Complainant points out that it is not apparent why the Second Respondent felt the need to change his address details to the Cork address in anticipation of his travels, but felt no need to change them back when his travel plans were cancelled. The correspondence address for the domain name <dallasducati.com> remains the Cork address. Also, the Complainant drew the Panelís attention to the fact that the <dallasducati.com> domain name was registered in May 1999, prior to the two Ken Baylors allegedly coming into contact in December 1999.

The Complainant also submits that the filing of a change of postal address by the Respondents so as to administer certain domain names is inherently improbable because it would be more convenient to supply Network Solutions with a suitable email address from which the site could be administered rather than a new correspondence address as well.

The Complainant referred the Panel to the email correspondence between the Respondent Ken Baylor and the Londoner Ken Baylor. An email dated October 3, 2001, from the Respondent Ken Baylor to the Londoner Ken Baylor is sent from the email address <ken@clickmarks.com>. The Complainantís representative telephoned Clickmarks in the United Kingdom, and spoke to Steve Foster, an employee of Clickmarks. Apparently, Mr. Foster stated that there was only one Ken Baylor working for Clickmarks. That Ken Baylor was currently in the United States but was born in Ireland.

The Complainant completely rejects any allegation that it forged part of the Second Respondentís curriculum vitae. It states that the Second Respondentís curriculum vitae has now been removed from the Internet, but is accessible using Alexa Internetís WayBackMachine web archive, which allows users to access material which was previously on the Internet that has been removed or updated. The Second Respondentís curriculum vitae was accessible as recently as July 22, 2001.

The Complainant states that it has located a further curriculum vitae of Ken Baylor on the Internet which gives the title of a doctorate thesis written by Ken Baylor as "Biochemical studies on the toxicity of isocyanate". The doctoral degree was conferred at University College, Cork. A doctoral thesis with the same title, written by a Ken Baylor and conferred at University College, Cork has been displayed on the website <biochemists.com>, which is registered by the Second Respondent.

D. The Respondentís further submissions

The Respondents claim that the resume provided by the Complainant is in fact the Londonerís resume, albeit with various inaccuracies.

The Respondents explain the coincidence that a domain name registered by the Respondents contained a thesis written by the Londoner Ken Baylor as follows:

"As previously stated the two Ken Baylors began corresponding in Dec 1999. In Jan 2000 a number of e-mails were exchanged. One of these stated that the Londoner owned a domain and asked if we could "host" it for him. He did not have any content for it at this time. The Second Respondent offered to host the DNS free of charge on our servers and point the root and www A records to a server of the Londonerís choosing."

The Respondents claim that it was over a year later before the Londoner posted any content on the site and that the content on the site went unnoticed. That content included the thesis "Biochemical studies on the toxicity of isocyanate".

The Respondents submit that the Complainantís selection of the domain name <eveningecho.com> was "bizarre" and the Respondents disclaim any responsibility for confusion arising between that name and the first disputed domain name, <eveningecho.com>.

The Respondents in fact annexed copies of both the Ken Baylorsí passports to their further submissions. The Second Respondent has an American passport; the Londoner an Irish passport

Apart from the name, none of the other details were coincident.

The Respondents submit that the conversation with Steve Foster of Clickmarks.com was a "farce" and that he was misquoted. They annex an email from Mr. Foster in support of this allegation. That email states:

"ÖI didnít say that you were from IrelandÖIím worried that something I said may have got twisted or misunderstood and thereís some trouble as a result."

The Second Respondent submits that it was not strange that he changed his postal address to the Cork address in anticipation of his holiday but did not change it back again once his holiday was cancelled. The Respondents submit that all the Second Respondentís mail was forwarded to Cork, and that the forwarding service was cancelled along with the holiday.

The Respondents contend that while the registration of the domain name <dallasducati.com> predated the first contact between the two Ken Baylors, the address provided at the time of the initial registration was not the Cork address Ė it has changed subsequently.

 

6. Discussion and Findings

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

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

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

- That the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondents have no rights or legitimate interests in respect of the domain names; and

- That the domain names have been registered and are being used by the Respondents in bad faith.

Domains name are confusingly similar or identical to a trademark or service mark in which the Complainant has rights

The Complainant is the registered owner of the trademark EVENING ECHO in Ireland.

The first disputed domain name, <eveningecho.com>, is identical to the Complainantís registered trademark, and the second disputed domain name, <evening-echo.com>, is identical to the Complainantís registered trademark but for the inclusion of a hyphen between the two words comprising the mark.

The third disputed domain name, <cork-echo.com>, comprises a material part of the Complainantís registered trademark together with the word "cork" Ė the geographical area in which the Complainant operates.

The Panel finds that all of the disputed domain names are identical or confusingly similar to the trademark EVENING ECHO in which the Complainant has rights.

No legitimate rights or interest in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentsí rights or legitimate interest in the domain names. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

<eveningecho.com>

The name and trademark EVENING ECHO has been used by the Complainant for many years in the City and County of Cork. However, there is no evidence that the Complainantís name and trademark has a reputation outside Ireland.

The mark itself, while reasonably distinctive, is not so distinctive that it is inconceivable that the Respondents might have independently adopted the name. The Respondents have provided an explanation for adopting the name and have identified at least three other newspapers called The Evening Echo Ė The Basildon Evening Echo, The Bournemouth Evening Echo and The Dorset Evening Echo.

Also, the Respondents have supplied some evidence that they used the name "evening echo" prior to this dispute. The Respondents first registered the first disputed domain name, <eveningecho.com> on May 10, 1999. The Respondents claim that on May 13, 1999, a colleague of the Second Respondent sent out an email to the group requiring all the consultants to send a reporting email each evening to <evening@eveningecho.com>. The Respondents annexed an example reporting email dated October 11, 2000, to their submissions.

The web site <eveningecho.com> (and <evening-echo.com>) operates as a bulletin board, and also offers free vanity "@eveningecho.com" email addresses together with 20 megabytes of free email space. The Second Respondent used an "@eveningecho.com" email address in pre-dispute correspondence.

The Second Respondent has also annexed evidence of his e-Bay transaction record used to purchase computer-related goods for clients of ZeroBarriers. The account was registered on February 10, 2000. The account is under the name ZeroBarriers and is an active account with approximately 50 transactions containing feedback. The email address of the account is <ken@eveningecho.com>. The Respondent submits that this amounts to a bona fide use of the domain name.

The Panel therefore finds that before any notice to the Respondents of the dispute, the Respondents had used the first disputed domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services in accordance with paragraph 4(c)(i).

The Panel also considers that the Respondents are making a legitimate non-commercial or fair use of the first disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in accordance with paragraph 4(c)(iii).

The Respondent has asserted that it is not making any commercial gain from the website, and nor does it intend to. While it is clear that some consumers have been misled into believing that the site is associated with the Complainant, the Respondents have not made any financial gain from this confusion, and have placed a notice on the site disclaiming any affiliation with the Complainant and several other newspapers of the same name.

<evening-echo.com>

The second disputed domain name, <evening-echo.com>, currently resolves to the same site as the first disputed domain name, <eveningecho.com>. This domain name was not registered until June 1, 2001, more than two years after the registration of the first disputed domain name. No reasons were given for the registration of the second disputed domain name. The registration occurred shortly after the Respondents say they became aware of the Complainant in May 2001. The registration does, however, precede any notification of this dispute Ė the Complainantís first contact with the Respondents took place on July 9, 2001.

In these circumstances, and given the similarity between the second disputed domain name and the first disputed domain name, which the Respondents had been using for some time, the Panel considers that the Complainant has failed to show that the Respondents do not have any rights or legitimate interest in the domain name <evening-echo.com>.

<cork-echo.com>

The Respondents state that the third disputed domain name was registered in error, and that they have taken steps to try and cancel this domain name. The Respondents do not assert that they have any right or legitimate interest in this domain name.

In summary, the Panel finds that:

(a) the Complainant has failed to establish that the Respondents have no rights or legitimate interests in the first and second disputed domain names, <eveningecho.com> and <evening-echo.com>; and

(b) the Complainant has established that the Respondents have no rights or legitimate interests in the third disputed domain name, <cork-echo.com>.

Domain names have been registered and are being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

<eveningecho.com>

The Panel places little weight on the fact that the Respondents rejected the anonymous, unsolicited offer made on behalf of the Complainant (using the default options on the offer screen), which resulted in an email being sent to the Complainantís agent stating "the Seller has declined your offer and has exited negotiations for the domain name <eveningecho.com> because your offer price was too low." The "decline offer" screen states:

"Please specify your reason for declining this offer:

- Not interested at offered price (default option)

- The domain is in use.

- No longer have rights to sell this domain.

- Other."

Once the Respondents had elected to reject the offer, it is likely that they had not given careful consideration to this selection. The Panel accepts the Respondentsí assertion that the whole transaction took place in a matter of seconds and there is little significance in the Respondentsí selection of the default option.

The Respondents are not competitors of the Complainant and the Respondents are not making any commercial gain from the website, so paragraphs 4(b)(iii) and (iv) could have no application.

The only real issue is whether the Respondents registered the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name, and the Respondents have engaged in a pattern of such conduct.

Arguably, the registration of the three disputed domain names <eveningecho.com>, <evening-echo.com> and <cork-echo.com> could amount to a pattern of conduct.

However, in the face of the extensive and contradictory evidence before it, the Panel is unable to conclude that the Respondentsí reason for registering the first disputed domain name was to prevent the Complainant from registering the name.

The Respondents assert that at the time of registration, they had not heard of the Complainant or the Complainantís Evening Echo publication. If the Respondentsí evidence is to be believed and the Second Respondent has never been to Ireland, this is entirely plausible. The Complainant has not shown an international reputation, and its daily circulation is very modest. The mark itself is not highly distinctive. In the absence of any conclusive evidence that the Second Respondent knew of the Complainantís mark before registering the first disputed domain name in 1999, the Panel is unable to conclude that the Respondents registered the domain name in bad faith.

<evening-echo.com>

Given the similarity between the first and second disputed domain name, the Panel considers that the same considerations apply to this domain name as those set out above in respect of the first disputed domain name, <eveningecho.com>.

<cork-echo.com>

This domain name was registered after the Respondents became aware of the Complainant and the Complainantís association with Cork, Ireland. The Respondents allege the registration of this domain name was an error Ė they claim that the Complainant and Cork were so much on their minds that in attempting to register <cook-echo.com>, Jon Cook misspelled his own name and registered <cork-echo.com>.

The Panel finds this explanation implausible. Given the Respondentsí awareness of the Complainant and their claimed frustration with the hacking attacks which the Respondents attributed to the Complainant, the Panel considers that the registration was made in bad faith in response to those hacking attacks.

This case involved detailed factual allegations from both parties, with very little common ground. The submissions from the Respondents in particular have involved allegations of forgery, mistaken identity as well as significant disputes of fact.

Disputes of this factual complexity would be difficult to resolve even in the context of a traditional forum where there would be an opportunity for cross-examination. The Panel believes it is important to emphasize that the Policy is designed to deal only with the issue of cybersquatting involving consideration only "on the papers". In the absence of cross-examination, it has simply not been possible for the Panel to resolve all the factual disputes and the Panel has been forced to decide the key issues on the basis that the Complainant has not been able to meet the burden of proof in relation to <eveningecho.com> and <evening-echo.com>.

While the multiplication of coincidences in this case borders on the extraordinary, in many instances the Panel has not been able to satisfy itself on the evidence before it that those coincidences may not in fact be genuine.

The Panel wishes to further record that it finds no basis for the allegations of forgery made against the Complainant.

 

7. Decision

The Panel therefore decides that:

(a) the disputed domain names <eveningecho.com>, <evening-echo.com> and <cork-echo.com> are confusingly similar or identical to a trademark or service mark in which the Complainant has rights;

(b) the Respondents have a legitimate right or interest in respect of the first and second disputed domain names, <eveningecho.com> and <evening-echo.com>. The Respondents do not have a legitimate right or interest in respect of the third disputed domain name <cork-echo.com>.

(c) the Complainant has not established that the first and second disputed domain names have been registered and are being used in bad faith. The Complainant has, however, established that the third disputed domain name, <cork-echo.com>, was registered and is being used in bad faith.

Accordingly, the Panel orders the transfer of the third disputed domain name, <cork-echo.com>, to the Complainant and otherwise denies the relief sought by the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: December 11, 2001