WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sibyl Avery Jackson v. Jan Teluch

Case No. D2002-1180

 

1. The Parties

1.1 The Complainant is Sibyl Avery Jackson of Houston, Texas, United States of America, represented by Fulbright & Jaworski, L.L.P., of Austin, Texas, United United States of America.

1.2 The Respondent is Jan Teluch of Bratislava, Slovakia.

 

2. The Domain Name and Registrar

2.1 The disputed domain name <sibylaveryjackson.com> (the "domain name") is registered with Intercosmos Media Group Inc. d/b/a directNIC.com (the the "Registrar").

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on December 31, 2002. On January 3, 2003, the Center transmitted by email to Intercosmos Media Group Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name. On January 6, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the the "Supplemental Rules").

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2003. No response was filed. Accordingly, the Center notified the Respondentís default on February 7, 2003.

3.3 The Center appointed Matthew Harris as the sole Panelist in this matter on February 19, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

3.4 A decision is due to be provided by March 5, 2003.

 

4. Factual Background

4.1 The Complainant is the self-published author of the book Degree of Caution. She has been using her personal name in connection with the promotion of that novel since November 7, 2001.

4.2 The Complainantís book has sold over 5,000 copies and has appeared as No.1 on the fiction bestseller list of the worldís largest African-American products-selection website. Additionally, her book has been nominated for the 2002 African American Authors Guild Award for the "Mystery" category.

4.3 The Complainant registered the domain name on November 7, 2001, but her failure to renew the registration resulted in its lapse, and hence its availability for registration by the Respondent. The Complainant contends that her failure to renew the registration was inadvertent, and as a direct result of a mistaken belief that the Registrar would provide her with notice that renewal of the domain name was due. The Complainant does not identify the exact date when the domain name lapsed.

4.4 On December 12, 2002, the domain name was registered by a Mr. Jeff Jeff Hicks of Walla Walla, Washington, United States of America.

4.5 On December 16, 2002, the Complainant contacted Mr. Hicks in an attempt to reclaim the domain name. A brief exchange of email correspondence followed between the Complainant and Mr. . Hicks the following day. In the last of these emails the Complainant asserted that Mr. . Hickís registration of the domain name was contrary to Louisiana law. Within 30 minutes of the Complainant sending this email, the domain name was transferred into the name of the Respondent.

4.6 On December 23, 2002, the Complainant sent both Mr. Hicks and the Respondent a letter demanding the transfer of the domain name to the Complainant and that the Respondent cease to use the site. Neither the Respondent nor Mr. Hicks replied to the letter.

 

5. Partiesí Contentions

A. Complainant

5.1 The Complainant contends as follows:

The Complainantís Trademark

5.2 The Complainantís book has been well received, has been nominated for awards, and through the Complainantís efforts to promote herself as an author and through the sale of her novel, the Complainant has developed valuable goodwill as well as enforceable common law trademark rights in her name "Sibyl Sibyl Avery Avery Jackson." The Complainant contends that the domain name is identical to the Complainantís common law trademark.

5.3 According to the Complainant such common law rights have been established under the Rules as being sufficient to establish a right to own that personal name as a domain name in the cases of Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001), and Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000). Further, it is claimed that when a personal name is associated with particular goods and services, the personal name can function as an unregistered trademark, and in particular the Complainant relies on previous WIPO decisions that have recognized the rights an author has in his or her personal name i.e. Dr. Michael Crichton v Alberta Hot Rods, WIPO Case No. D2002-0872 (November 25, 2002).

No Rights or Legitimate Interests

5.4 The Complainant contends that the Respondent has made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. At the time the Complainant was preparing her Complaint, the Respondent had posted an Internet site on the domain name which depicted the letters "KGB" with a Ďhammer and sickleí emblem and the statement: "This site is currently under reconstruction and should be back up soon. Please accept our apologies and check back later. We hope to bring you the best that this site will possibly have to offer."

5.5 The Complainant further contends that the Respondent is not commonly known by the name ĎSibyl Avery Jacksoní and operates no business or other organization under the domain name.

5.6 Accordingly, the Complainant asserts that the Respondent is not making a legitimate non-commercial or fair use of the domain name and therefore has no right or legitimate interest in the domain name.

Registration and Use in Bad Faith

5.7 The Complainant contends that Mr. Hicks registered the domain name primarily for the purpose of selling it to the Complainant or using the Complainantís previously established website traffic under the domain name for his own benefit.

5.8 Accordingly, the Complainant maintains that the transfer of the domain name to the Respondent was in bad faith and the Respondent is continuing to use the domain name in bad faith. By using the domain name, Internet users who would expect a site relating to goods or services associated with the Complainant, are taken to a site with no association with the Complainant or her book. The Complainant contends that such use by the Respondent attempts intentionally to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainantís mark as to source, sponsorship, affiliation or endorsement of the website.

5.9 The Complainant further contends that by registering her name as a domain name, the Respondent has prevented her from using it in connection with her website, resulting in immediate and irreparable damage on the Complainant and her ability to market the novel. According to the Complainant the previous WIPO panel decision in Bernardo Neustadt v Link Commercial Corp., WIPO Case No. D2000-1256 (November 16, 2000), is authority for the proposition that such activity is evidence of bad faith.

B. Respondent

5.10 The Respondent has not replied to the Complaint and has made no submissions to the Panel.

 

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In light of this material, the Panel sets out its findings below.

6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent it from determining the Complaint, notwithstanding the failure of the Respondent to lodge a response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

6.3 Irrespective of the default of the Respondent, the Complainant must "prove" each of the following elements of the Rules, which are set out in paragraph 4(a) of the Policy as follows:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

6.4 Nevertheless, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, "the Panel shall draw such inferences therefrom as it considers appropriate."

Identity of the Respondent

6.5 Before addressing whether the elements of paragraph 4(a) are satisfied, it is necessary for the Panel to determine one issue of fact. That is whether the Complainant is correct in her contention that Mr. Jeff Hicks and the Respondent, Mr. . Jan Jan Teluch, are either the same person or are in some way connected and that the purported transfer from Mr. Hicks to Mr. Teluch is a sham. The reasons put forward by the Complainant for that contention are that:

(i) Emails from Mr. . Hicks were signed not Jeff but "Jan."

(ii) Mr. Hicks had asked the Complainant to post a link to "http://johny.sk", which is the website of Mr. Teluch.

6.6 Another factor that the Panel believes is relevant to this question is the fact that transfer took place within 30 minutes of receiving an email in which the Complainant alleges that the registration of the domain name was contrary to Louisiana law. All these factors lead the Panel to conclude that the Complainant has put forward a strong prima facie case that the Respondent and Mr. Hicks are either the same person or in some way connected and that the transfer was a sham. In the absence of any submission of the Respondent on this point, the Panel finds as a matter of fact that the Complainant is correct. Accordingly, for the purposes of this Complaint the Panel will proceed to treat the transferee and transferor as one.

Identical or Confusingly Similar

6.7 To succeed under this head, the Complainant first has to prove that she has rights in the trademark or service mark. Secondly, she must prove that the domain name is identical or confusingly similar to the trademark or service mark.

6.8 The second element is straightforward since, in common with the facts of Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2000), the alleged mark is the Complainantís name with the addition of the generic ".com" suffix. On the same basis, the Panel finds that for the purposes of paragraph 4(a)(i) of the Policy, the domain name <sibylaveryjackson.com> is identical to the Complainantís name ĎSibyl Sibyl Avery Avery Jacksoní.

6.9 The remaining element of paragraph 4(a)(i) that the Complainant must prove, is whether ĎSibyl Avery Jacksoní is a "trademark or service mark in which the Complainant has rights."

6.10 As far as the Panel is aware, the Complainant has not registered her name as a trademark in any jurisdiction, therefore she cannot claim registered trademark rights in the mark ĎSibyl Avery Jacksoní. Instead, the Complainant relies on common law trademark rights in that name and relies upon the decisions of Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2000), and Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000), as being authority for the proposition that "an unregistered personal name that has common-law trademark rights is sufficient to establish a right to own that personal name as a domain name."

6.11 In the Panelís opinion the Complainantís characterization of the Louis de Bernieres and Jeanette Winterson decisions goes too far. Since the question of when a personal name can constitute a trademark for the purposes of the Policy is not an uncontroversial one, it is perhaps worthwhile if the Panel briefly describes the extent to which personal names are amenable to protection under the Policy.

6.12 It is undoubtedly the case that numerous UDRP decisions can now be identified in which the panel held that a Complainant had common law trademark rights in a personal name and proceeded to apply the UDRP on that basis. Examples include Louis de Bernieres v Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2000), Dr Michael Crichton v Alberta Hot Rods, WIPO Case No. D2002-0872 (November 25, 2002), Jeanette Winterson v Mark Hogarth, WIPO Case No. D2000-0235 (May 22, 2000), Bill Withers v Robert Dominico et al., D2000-1621 (January  28, 2001), and Julia Fiona Roberts v Russell Boyd, WIPO Case No. D2000-0210 (May 29, 2000).

6.13 These decisions are all authority for the proposition that a personal name insofar as it is also recognized under the common law as an unregistered trademark, is to be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy. However, the question of the scope of protection under the Policy of personal names that may qualify for protection as an unregistered trademark (and indeed as unregistered trademarks in general) is not without difficulty.

6.14 As is explained in chapter 5 of the Report of the Second WIPO Internet Domain Process, if the Policy is to be interpreted as applying to common law trademarks, then the application of the Policy in a particular case may well depend upon the extent to which the law of the country in which the Complainant carries on his activities recognizes or does not recognize such unregistered rights. In particular, Complainants from countries with a common-law tradition that tend to recognize the concept of unregistered trademarks would appear to have greater protection under the Policy than Complainants from countries that do not recognize this concept.

6.15 The Panel has some considerable sympathy with those that argue that this should not be the case. Such persons maintain that insofar as unregistered trademarks are recognized by the Policy, there should be some common standard as to what constitutes such a trademark that is not dependent upon the jurisdiction in which the Complainant carries on his activities. Not only would this ensure uniformity of application of the Policy but would also avoid the need for the Panel when deciding a particular case to have to asses the extent to which the law of the jurisdiction or jurisdictions in question (which may be a jurisdiction with which the Panel has little familiarity) did or did not protect unregistered marks. When one considers that the Policy is supposed to be a relatively quick, easy and cost-effective method to resolve domain name disputes, this latter point is not an insignificant one.

6.16 However, such sympathies do not justify this Panel seeking to discern such a common standard and then to apply that standard to this case. The obligation on the Complainant in this case is clear. She must show that she has common law rights in the jurisdiction relevant to this case, and the relevant jurisdiction in this case would appear to be the United States.

6.17 As the Panel has already noted, in this case the Complainant has made reference to the Louis de Bernieres and Jeanette Winterson UDRP decisions. These are indeed authorities for the proposition that insofar as a Complainant has unregistered trademark rights they can be used to found a claim under the Policy. However, both cases involved cComplainants and rRespondents based in the United United Kingdom and involved a detailed analysis of the extent to which English law, through the law of passing off, recognizes unregistered trademark rights. These cases are therefore not authority for the proposition that outside of England and Wales a Complainant in the position of the Complainants in these two cases necessarily has unregistered trademark rights sufficient to avail him of the UDRP procedure.

6.18 Happily for the Complainant, this is not the sole extent of the Complainantís contentions in this respect. In particular, the Complainant asserts and the Panel accepts that the Complainant uses her name in the creation, promotion, and commercial exploitation of her work and that name identifies the work to customers. The Panel also accepts from the evidence that has been put before it, such as the number of successful hits from Internet searches using the Complainantís name as a search term, and from sales of the book and nominations for awards in respect of the book, that the Complainant has developed valuable goodwill in her name in the literary field.

6.19 The Complainant further asserts that as a result of these activities the Complainant has developed enforceable unregistered trademark rights in her name. The Respondent has not put in any Response denying this assertion. Further it is clear from the previous UDRP decisions in Dr. Michael Crichton, Bill Withers, and Julia Roberts, that such unregistered rights are recognized in the United States of America. Accordingly, the Panel accepts that the Complainantís assertion is correct.

6.20 The Panel concludes that the Complainant has proved the relevant elements of paragraph 4(a)(i).

Rights or Legitimate Interests

6.21 There is no evidence to show that the Respondent had any legitimate basis on which to register the domain name or any intent to use it in any manner unconnected with the Complainantís business. The Respondent has no agreement with the Complainant for use of her personal name. As far as the Panel can tell, the Respondent has not prepared to use the domain name in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the domain name and nor is the Respondent making any legitimate non-commercial or fair use of the domain name.

6.22 In the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interest in the domain name and that the Complainant has proved the relevant elements of paragraph 4(a)(ii).

Registered and Used in Bad Faith

6.23 Paragraph 4(a)(iii) of the Policy requires that the domain name has been registered by the Respondent in bad faith and that it is being used by the Respondent in bad faith.

6.24 A non-exhaustive list of what constitutes bad faith for the purposes of paragraph 4(a)(iii) of the Policy is set out in paragraph 4(b) of the Policy. The Complainant relies on paragraphs 4(b)(i) and 4(c)(iv) and the decision in Bernardo Neustadt v Link Commercial Corp., WIPO Case No. D2000-1256 (November 16, 2000). There is no paragraph 4(c)(iv) in the Policy but the Panel believes that this is a typographical error and is intended to be a reference to paragraph 4(b)(iv).

Paragraph 4(b)(i)

6.25 Under paragraph 4(b)(i) the following constitutes evidence of bad faith:

"circumstances indicating that [the Respondent has] registered or [the Respondent has] 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 [the Respondentís] documented out-of-pocket costs directly related to the domain name."

6.26 The Complainant relies in this respect upon the correspondence between the Complainant and the Respondent, which the Complainant maintains shows that the Respondent registered the domain name "primarily for the purpose of selling the domain name to [the] Complainant or using [the] Complainantís previously-established website traffic under the domain name for his own benefit ."

6.27 The Respondentís alleged use of "the established website traffic" is not directly relevant to paragraph 4(b)(i). However, what about the allegation of sale? To deal with this allegation it is necessary to describe the nature and content of the email correspondence between the Respondent and the Complainant in some detail. The correspondence proceeded as follows:

(a) On December 16, 2002, the Complainant sent two emails to the Respondent seeking the return of the domain name and suggesting that they "work something out."

(b) At 9:51 am CST on December 17, 2002, the Respondent responded:

"Well I havenít registered the domain name to make some quick profit from it, the domain name was available and it had a decent search engine rating which I could find a use for Ö But well, what do you think you can offer me in exchange for this domain name? By the way, why did you let the domain name expire?

Iím open to any discussion, maybe you have luck, because the other people who work with expired domains wouldnít even reply to you I think :-)"

(c) At 10:44 CST the same day, the Complainant, inter alia, gave an explanation as to why the domain name had expired and asked why the Respondent wanted it.

(d) The Respondentís response 30 minutes later was as follows:

"I would want it just because it could help my other sites to be placed on higher positions in search engines, it has nothing to do with the domain name or the traffic to the domain itself.

Actually it would be no problem if you placed some invisible link to the site of my choice at the main page of your site (http:/www.sibylaveryjackson.com)

If you agreed to this, I can point the domain records to the IP address of your hosting company so that you will be able to use the domain."

(e) At 12:11 CST the Complainant asked for clarification of what the Respondent sought and also asked that he provide details of the web address of the Respondentís "other sites."

(f) The Respondentís answer at 2:10 pm CST was:

"Well Iíd like the link to http://johny.sk"

(g) At 3:55 pm CST the Complainant sent an email asserting that the Respondentís activities broke Louisiana law, but also adding that she was willing to reimburse the Respondent his $15 registration fee.

(h) The Respondent did not reply to this email.

6.28 The fact that the Respondent asked the Complainant what she would offer in exchange for the domain name and the fact that the Respondent did not respond to the Complainantís offer to pay the Respondentís registration fees are suggestive that the Respondent was willing to sell the domain name to the Complainant at a price in excess of his out-of-pocket expenses. However, this is far from compelling evidence. Indeed, it appears to the Panel that this correspondence suggests that the primary concern of the Respondent was to secure an "invisible link" to his website.

6.29 Further, even if the Complainant can show that the Respondent was willing to sell the domain name to the Complainant for a sum greater than out-of-pocket expenses in December 2002, this is not sufficient. She must also show that this was the "primary purpose" for the domain nameís registration.

6.30 The Panel of course accepts that in many cases a Panel will be willing to infer that primary purpose from the subsequent actions of the Respondent. However, in the circumstances of this case the Panel finds it difficult to do so. This is particularly the case given that the Respondentís first email can reasonably be read as a direct denial of any such allegation.

6.31 The Panel is aware that any attempt to divine the Respondentís intentions from very limited correspondence and in circumstances where the Respondent has not set out his case in a Response is fraught with danger. The Respondentís comments also beg numerous questions. For example, why does the Respondent in his first email deny that he registered the domain name in order to make a "quick profit" at a time when the Complainant had yet to make any such allegation? Further, the Respondentís reference to "other persons who work with expired domains" suggests that he is someone who has registered such domains before. Nevertheless, it is for the Complainant to put forward at least a prima facie case in respect of this allegation and the Panel concludes that on balance the Complainant has failed to do so. In the circumstances, it holds that the allegation under paragraph 4(b)(i) is not made out.

Paragraph 4(b)(iv)

6.32 Paragraph 4(b)(iv), of the Policy provides that the following constitutes evidence of bad faith:

"by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the Respondentís] website or location or of a product or service on [the Respondentís] website or location."

6.33 The Complainant refers the Panel to the fact that Internet users who enter "www.sibylaveryjackson.com" would find a site "that has no association with the Complainant or her book" and asserts that they would expect to find a site offering goods or services associated with the Complainant or her book. The Complainant then goes on to quote the Panel in Dr. Michael Crichton, and asserts that it therefore follows that the Respondent is using the domain name "intentionally to attempt to attract, for commercial gain, Internauts to its website by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of its website."

6.34 The Panel accepts that the intention of the Respondent was to take advantage of the high search engine ranking of the domain name to direct web traffic to his website and that this high search engine ranking directly resulted from the Complainantís goodwill in the name ĎSibyl Avery Jacksoní. Indeed, the Respondentís intentions are admitted in his emails of December 17, 2002. However, paragraph 4(b)(iv) also requires such activity to be for "commercial gain."

6.35 In the Dr. Michael Crichton case relied upon by the Complainant, "Internet users who accessed the disputed domain name were automatically transferred to the Respondentís commercial website at "celebrity1000.com"." Therefore, the "commercial gain" requirement was thereby satisfied. Is there similar evidence in this case? In the Panelís view there is not. At the time that the Complaint was prepared, the Respondent posted a web page that contained an "image depicting the letters "KGB" in block format with the symbol from the flag of the former Union of Soviet Socialist Republics in the background." There was nothing in the website to suggest commercial activity. In email correspondence between the Respondent and the Complainant, the Respondent suggested a link to the site located at "http://johny.sk." This website consists of a gallery of photographs, but there is nothing to suggest commercial activity.

6.36 The Panel notes that at the present time the domain name is being used for a website that, insofar as it makes any coherent sense at all, is being used as some form of anti war protest site. However, again there is no suggestion of commercial activity. Therefore, the Panel finds that the allegations under paragraph 4(b)(iv) are not made out by the Complainant.

Bad Faith Generally

6.37 Although the Panel finds that the Complainant has failed to make out her case under paragraphs 4(b)(i) and 4(b)(iv), that is not the end of the matter. The factors set out in paragraph 4(b) are not exhaustive. Therefore, the question arises whether the Complainant can show bad faith in this case nevertheless.

6.38 The Complainant relies in this respect on the previous WIPO decision in Bernardo Neustadt v Link Commercial Corp, WIPO Case No. D2000-1256 (November 16, 2000). This was a case where an Argentine journalist possessing common-law rights in his personal and professional name was held to be entitled to the domain name that contained his name even though the Respondent was only passively holding the domain name. This, the Complainant contends, is authority for the proposition that where a Complainant has common law trademark rights in a name, a registration that prevents that person from reflecting his or her mark in a corresponding domain name is evidence of bad faith.

6.39 In the Panelís opinion the Complainant again puts her case far too high. The Bernardo Neustadt decision is difficult to interpret since the decision is short and the reasoning limited. Nevertheless, given the importance the Complainant attaches to the decision it is necessary to analyse it in some detail.

6.40 Firstly, it is clear that the Respondent in that case, was based not in Argentina but in the Bahamas. However, the panel appears to have accepted the Complainantís contention that he had had an outstanding career in newspaper, radio and television. Further that reputation appeared to extend outside of Argentina, the Complainant having been recognised for his work at international radio awards in New York in the year 2000.

6.41 The panel in Bernardo Neustadt then went on to expressly hold that the Respondent "deliberately chose a personís name which was well known to the Argentinean public." In the Panelís opinion this phrase should be interpreted as a finding of fact by the panel in Bernardo Neustadt that the Respondent was aware of the Complainantís reputation at the time that the domain name in issue was registered. There is no other explanation given as to why the Respondent registered the domain name.

6.42 It was against this background that the panel in Bernardo Neustadt then went on to hold that there was bad faith even though there was no evidence that the Respondent had engaged "in a pattern of registering third party names" (presumably a reference to paragraph 4(b)(ii) of the Policy) and there was no evidence "that the domain name had been used intentionally to attract Internet users for a commercial gain" (presumably a reference to paragraph 4(b)(iv)).

6.43 The panel in Bernardo Neustadt does briefly make reference to the fact that the domain name cannot be registered or used by another person. However, the Panel rejects any contention on the part of the Complainant that the decision sets out a general principle that where common law trademark rights exist in a name the registration of a domain name using that name is evidence of bad faith.

6.44 It is noticeable in the case currently before the Panel that nowhere in the Complaint is there to be found any assertion on the part of the Complainant that the Respondent must have known of the reputation of the Complainant at the time that the domain name was registered. At first sight this looks odd given the alleged reputation of the Complainant in the United States and the fact that the address for "Mr. Hicks" is known to be in the United States. However, given that the number of copies of the Complainantís book alleged to be sold is relatively small, the fact that this is not alleged is perhaps understandable.

6.45 Does this mean that the Complainant has no remedy in this case? In the Panelís opinion the answer is no. Particularly relevant here is the decision in Red Nacional De Los Ferrocarriles Espanoles v Ox90, WIPO Case No. D2001-0981 (November 21, 2001), in relation to the <renfe.com> domain name. This was a decision involving a three-member panel. The panel was split with a majority coming down in favour of the Complainant.

6.46 In the <renfe.com> case the Complainant had since 1941 been responsible for the exploitation of the Spanish Railway system and did so under the RENFE name. RENFE was also registered by the Complainant as a trademark. As a result of the Complainantís extensive use, the mark RENFE was very well known in Spain. <renfe.com> was initially registered by the Complainant but that registration was allowed to lapse.

6.47 The Respondent in <renfe.com> was engaged in the provision of domain name registration services and was based in the United States. It used relatively sophisticated techniques to establish which words and terms were commonly used when searching the Internet and also to identify recently expired domain names. The Respondent admitted that it had registered <renfe.com> having noticed that RENFE was a term that was commonly searched for on the Internet and that <renfe.com> was a registration that had recently expired. However, it denied that at the time of the registration, it had any knowledge of the RENFEís reputation in Spain.

6.48 The majority of the Panelists noted that RENFE was a name that was unlikely to be of any significance to anyone unfamiliar with Spain and its railways but also noted that anyone doing the most basic search of the Internet using this name would quickly discover the connection between that name and the Complainant. They then went on to hold that "where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith."

6.49 The presiding Panelist, although not favourably disposed to the Respondentís modus operandi, came to a different conclusion. He noted that RENFE was not a common term in the English language and that "RENFE, as a commonly-searched term, might have been a place name, a personal name, a word in a foreign language, an acronym or a trademark." In his view "a cybersquatter (within the UDRP definition) has to know of the existence of the Complainantís trademark as a trademark when registering the domain name in question." He accepted that a simple search would have given the Respondent the requisite knowledge but there was no evidence that he undertook that search.

6.50 The presiding Panelist went on to assert:

"If a concept of constructive knowledge (i.e. "he must have guessed and had he made the simplest of searches he would have known; he ought to have made the search, therefore he is to be taken as having known") is introduced into the UDRP, there is no knowing where this will all lead."

6.51 There is no suggestion that the Respondent in the current case is involved in activities as extensive as the Respondent in <renfe.com> but there are clear parallels between the two cases. Both cases involved registration of expired domain names. In both cases the reason why the domain name was registered was because of the high degree of recognition of the term by search engines.

6.52 However, with <sybilaveryjackson.com> there is even less of an excuse for the Respondent not to have undertaken at least an Internet search than in <renfe.com>. <sybilaveryjackson.com> is obviously not a place name, an acronym or a word in a foreign language. It is only intelligible in English as the name ĎSybil Avery Jacksoní with the spaces removed. The fact that the Respondent was aware that the name had a high search engine rating meant that it was clear that this was a name of an individual of at least some fame and reputation. The Complainant has put evidence before the Panel that a search on the Internet against the name Sibyl Avery Jackson, would immediately have made it clear to the searcher that this reputation was as a result of her activities as an author. Accordingly, to impose (in the words of the dissenting Panelist in <renefe.com>) a concept of constructive knowledge in the circumstance of the current case is of far more limited consequence than even was the case in <renfe.com>.

6.53 The sham transfer of the domain name following the allegation of the Complainant that the Respondent had broken the law in registering the domain name is a further peculiar factor in this case that points to bad faith.

6.54 In the circumstances, the Panel concludes that bad faith has been shown in the present case.

 

7. Decision

7.1 For these reasons, the Panel concludes that the Complainant has sufficiently proved:

- The domain name is identical or confusingly similar to an unregistered trademark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

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

7.2 Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

 


 

Matthew Harris
Sole Panelist

Dated: March 4, 2003