WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Associated Newspapers Limited v. DomainsInvest.net

Case No. DBIZ2002-00097

 

1. The Parties

The Complainant is Associated Newspapers Limited, a United Kingdom corporation with its principal place of business in London, United Kingdom. The Complainant is represented by Ms. Dawn Osborne of Willoughby & Partners, Solicitors, London, United Kingdom.

The Respondent is DomainsInvest.net, of Greensboro, NC, United States of America. The Respondent is represented by Mr. Jonathan Douglas, Manager of the Legal Team for Resource Marketing of Greensboro, NC, Unites States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <dailymail.biz>. The domain name is registered with 1st Domain.Net, of Kihei, HI, United States of America. ("the Registrar"). The domain name was registered on March 27, 2002.

 

3. Procedural History

The Complaint was received on April 26, 2002 (email) and April 30, 2002 (hard copy), by the World Intellectual Property Organization and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for .BIZ adopted by Neulevel Inc. and approved by ICANN on May 11, 2001 ("the STOP"), and the Rules under that Policy ("the STOP Rules").

The STOP is incorporated into the Respondentís registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.

Having verified that the Complaint satisfied the formal requirements of the STOP Policy and Rules, the Center on May 5, 2002, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on May 25, 2002 (email), and May 25, 2002 (fax).

The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that Complaint be determined by a sole Panelist.

The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.

On June 3, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by June 17, 2002.

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.

 

4. Factual Background

The Complainant is the management company and publisher of three major newspapers in the United Kingdom of which the ĎDaily Mailí, founded in 1896, is its leading publication. The Complainant is a division of Daily Mail & General Trust Plc. which is involved on a large scale in newspapers, national and regional, in international business and financial media as well as in other forms of information publishing. In 2001, the Groupís total turnover was £1,963 million, with £834 million thereof relating to national newspapers.

The ĎDaily Mailí has a circulation in the United Kingdom, as at September 2001, of 2,431,000 which makes it the second highest-selling national newspaper in the United Kingdom. The ĎDaily Mailí is printed at 5 cities outside the United Kingdom including Orlando in the United States. The ĎDaily Mailí is thus readily available in that country. The monthly supply is around 177,868 copies. The Complainant has an office in New York to provide American material for its publications.

The Complainant owns UK and European Community trademarks for ĎDAILY MAILí. In 1998, it filed a trademark application in the U.S. Patent & Trade Mark office for the registration of ĎDaily Mailí as a trademark. That application is still pending.

Complainant has operated a digital publishing division since 1995 under the name ĎAssociated New Mediaí. It or associated companies own the domain names <dailymail.co.uk> and <daily-mail.co.uk>. The former website receives some 3 million page impressions per year.

The Respondent is a division of Resource Marketing. It claims to have been created to help Resource Marketing acquire "good domains". Respondent has no trade mark rights to the name ĎDaily Mailí.

 

5. Partiesí Contentions

Complainant

The disputed domain name is identical to the marks in which the Complainant has rights. Complainant gave the Respondent no authority to use its mark in a domain name.

The Complainant has a substantial reputation in various countries throughout the world including United States of America and has an office in New York. Because of the Complainantís reputation and its pending U.S. trade mark application filed in November 16, 1998, the Respondent knew of or should have known of the Complainantís rights in the mark DAILY MAIL at the time of the registration of the domain name.

In an attempt to find out why the domain name had been registered by the Respondent, on April 23, 2002, the Complainantís solicitors instructed an agent to make contact with the Respondent. The Complainantís agent telephoned the contact number given for the Respondent on the WHOIS database. The number was answered by a person who confirmed that he was answering on behalf of the Respondent. The agent identified himself as calling on behalf of the Daily Mail newspaper in the UK and asked why the domain name had been registered and whether the domain name was for sale. The representative stated that the domain name was registered to advertise the Respondentís business services of web design. The Respondent would consider selling it for a substantial sum to compensate for setting up the domain name. The Respondentís representative then suggested the sum of US$15,000.

On the following day, the Complainantís agent sent an email to the address given on the WHOIS database for the disputed domain name seeking confirmation that the sum of US$15,000 was the asking price for the domain name. Later that day the agent received an email reply from a Richard Wilson stating that the disputed domain name was now being offered for US$20,000 because the Respondent had received another offer for the domain name earlier that morning.

The Respondent registered the disputed domain name solely for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs related to the domain name.

The Respondent intended to capitalize on the repute of the DAILY MAIL mark by registering the domain name. On the Complainantís initial contact, the Respondent requested the extortionate sum of US$15,000. This sum was increased by a further US$5,000 within a day of receiving the Complainantís enquiry. Reference to another bidder for the name is an attempt to put pressure on the Complainant to purchase the name and an excuse to raise the price demanded.

The intended purpose for the <dailymail.biz> domain name to advertise web design services means that the Respondent is showing an intention to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainantís DAILY MAIL trade mark, as to the source, sponsorship, affiliation or endorsement of the Respondentís website or products or services thereof. It is difficult to see any other reason for the choice of the Daily Mail name for web design services.

Respondent

Respondent was registered by Resource Marketing ("RM") to help RM acquire good domain names for the marketing of products. A high quality domain name makes marketing products and services more efficient.

The process undertaken to acquire the disputed domain name was "very challenging" due to the fact that it was "lottery-based". To increase the chances of acquiring it, Respondent had to work with multiple registrars. Respondent had the necessary knowledge of the domain industry to acquire the disputed domain name. Respondent has never registered the disputed domain name or any other .biz domain with the intent to sell. An example of a name acquired by Respondent for this purpose is <topcomputers.biz>. It sells .com and .net names which is a legitimate business enterprise.

The disputed domain name was registered by Respondent with full knowledge of the rules set by ICANN, for the purpose of setting up a site to market which RM had developed. This product is software, designed for mail centers to post information via the internet about mail received. This software was designed to be used by large companies or institutions such as Universities. RM developed the idea and had software designed which would allow mail centers at Universities to post information on the net pertaining to mail it has received. The system would prevent students and faculty members from making pointless trips to the mail center.

The only way Respondent would consider selling the disputed domain name is if the buyer was willing to compensate it for the cost incurred in developing business for the domain name. This process would have to be initiated by the buyer because Respondent does not post or advertise any .biz domains for sale. Every domain that Respondent is selling has the sale information listed at the domainís website.

The Complainantís accusation that Respondent registered the disputed domain name for on-sale is incorrect. There is no evidence that the name is being advertised or posted for sale on the internet.

The Complainant contacted Respondent about purchasing the name. It was made clear over the telephone that Respondent was planning to use the name to advertise internet email services and that it had spent over $15,000 in having software developed for the site. The person who spoke to the Complainantís agent advised that the issue would be sent to "upper management" for further consideration. "Upper management" decided that Respondent would sell the name because it had not started to market it and a sale would allow focus on other products and services which the Respondent offers. The price for the name would be determined on the development cost. Complainant was notified that Respondent would sell the name for $20,000 and that a recent offer for $18,000 had been received. This offer had been made by a company wanting to use the domain to publish news information on the internet.

Respondentís purpose in registering the disputed domain name was for its parent company, RM to set up a demonstration for and to market software designed to allow users to check the internet to see if mail has been sent to them at their respective mail centers. RM saw a need for a more efficient system for students and faculty to determine whether or not they should check their mail box in person. Up to now, RM has spent some $20,000 on the work done for the online email portal. Respondent produces the front page of the web portal developed for the disputed domain name and a copy invoice for $19,981.50 dated April 18, 2002, from Tower Graphics Printing of Charlotte, NC for database development, web graphics and hotmail design. Marketing the email portal by the end of the month of May 2002 is planned. By that time, Respondentís marketing strategy and the software will be finalized.

The goods and services listed under the Complainantís trademark are in no way similar to the web email portal RM has designed for the disputed domain. Respondent makes a special effort not to infringe trademark ownersí rights. Its usage of the name for an online mail center portal will in no way conflict with the listed trademark usages of "daily mail". Respondent registered the disputed domain name with full knowledge of the "daily mail" trade mark owned by the Complainant and of two trade marks which relate to "daily mail" owned by Wallace Computer Service, Inc. and Champion Papers Inc. The services that will be offered at <dailymail.biz> will have no similarities to the services offered by the Complainant or the other two companies which own a trademark for "daily mail". It is highly unlikely that consumers would confuse the name as being related to business operated by Complainant.

 

6. Discussion and Findings

Under the STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a .BIZ domain name, Neulevel, the Registry operator of the .BIZ gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. Neulevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is pled by the priority claimant. The service provider (in this case WIPO Center) is required to advise the Panelist if a given domain name in dispute is subject to more than one claim. In the present case there is another IP claim.

Under STOP, the Complainant must show:

(a) That the domain name is identical to the Complainantís trademark or service mark.

(b) That the Respondent has no rights or legitimate interests in the domain name.

(c) That the domain name was either registered or used in bad faith.

A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.

Likewise, the instances of bad faith exemplified in UDRP can be invoked by a Complainant. However, because the STOP Policy and Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.

In the present case, the disputed domain name is identical with the marks owned by the Complainant. The Respondent acknowledges this fact in its Response. It does not matter for what category of goods and services registration of the mark was based for the purpose of a Complainant fulfilling this criterion. Likewise it does not matter that the Complainantís business (or in this case businesses) appears to be different from the business that the Respondent claims to operate under the disputed domain name.

As to the second criterion, the Complainant gave no rights to the Respondent to use the mark in a corresponding domain name. The Respondent relies upon Para 4(c)(ii) of STOP, i.e. Respondent seeks to prove that before any notice to it of the dispute it used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

The Respondent registered the domain name in March 27, 2002. In its response, it claims that the process of acquisition was "challenging" because it was said to be "lottery based" and Respondent claimed to have had to work through "multiple registrars". One would not have thought that any work would have been done on developing a name-specific site before the name had been acquired. The Complaint was filed on April 26, 2002, and the invoice from Tower Graphics annexed to the Complaint was dated April 18, 2002.

The onus is on the Respondent to show that, before notice of the dispute, it had made demonstrable preparations to use the disputed name in connection with its bona fide offering of services, i.e. its proposal to institute a mail box advice system for universities. The Respondent knew about the Complainantís marks at the time it acquired the name. The case is unlike the usual successful invocation of Para 4(c)(ii), i.e. of somebody operating a business which uses a domain name identical to a mark about which the Respondent was ignorant. Usually that occurs in circumstances where the mark is registered or is famous in a country other than that where a Respondent operates.

Here, even if the Respondent or its parent was developing a website as claimed, it did so in the knowledge that the domain name was identical to a well-known mark. It is hard to see how its proposed offering of services was bona fide in those circumstances.

It is no excuse for the Respondent to say that, just because Complainantís marks relate to newspapers, the Respondent is entitled to develop a website utilising the mark and allege that the business promoted by the website has nothing to do with newspapers. The simple truth is that an internet user, typing in the name <dailymail.biz> will do so usually as someone wanting to find out something about the Daily Mail newspaper. The ĎDaily Mailí newspaper is well-known, not just in the United Kingdom, but in the United States and many other countries around the world where the newspaper is printed and/or distributed. It is a matter of judicial notice for the Panel that internet users visit the sites of well-known newspapers in order to view material that has been published in such newspapers. The number of hits (3 million) on the website <dailymail.co.uk> exemplifies this proposition.

A sophisticated dealer in domain names such as Respondent should have expected a challenge under STOP when it registered the disputed domain name Ė particularly when it knew of the Complainantís marks at the time of acquiring the name. It would also know of the popularity of sites using the names of well-known newspapers.

Whilst some of the above considerations are relevant to the third criterion under STOP, they merge with a consideration of the Respondentís claim under the second criterion. There is no evidence when RMís plan of developing the mail box facility for universities was conceived Ė i.e. before or after the acquisition of the disputed domain name. There is no detail apart from a spartan invoice as to how the site was developed.

As to bad faith, the Panel concludes that there was registration and use in bad faith for the following reasons:

(a) Respondent knew of Complainantís marks at the time of registration and elected to proceed with registration despite the likelihood of a challenge under the STOP.

(b) Use of the domain name will inevitably attract to the site persons seeking information about or articles from the ĎDaily Mailí newspaper with a consequential likelihood of confusion with the Complainantís mark and an inference of some connection with the source, sponsorship, affiliation or endorsement of the Complainant of the Respondentís website or service on the website. (See STOP Para 4(b)(iv)).

(c) Respondentís willingness to sell the name to the Complainant for more than the cost of registration. (See STOP Para 4(b)(i)).

Accordingly, the Panel finds all the criteria under the STOP proved.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) The domain name registered by the Respondent is identical to trademarks in which the Complainant has rights.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

(c) The Respondent has registered and is using the domain name in bad faith.

Accordingly, the Panel orders the transfer of the disputed domain name <dailymail.biz> to the Complainant.

 


 

Hon. Sir Ian Barker Q.C.
Sole Panelist

Dated: June 11, 2002