WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Prisma Presse v. Bill Connelly

Case No. DBIZ2002-00175

 

1. The Parties

1.1 The Complainant is Prisma Presse, a French commercial partnership having its registered office at 6 rue Daru, 75008, Paris, France.

1.2 The Respondent is Bill Connelly, an individual residing at 5720 Jackrabbit Jct., Farmington, NM 87402, United States of America.

 

2. The Domain Name and Registrar

2.1 The domain name upon which this Complaint is based is <geo.biz>. The registrar of the domain name <geo.biz> is PSI-JAPAN, Inc. ("PSI").

 

3. Procedural History

3.1 The Complaint was made in accordance with the Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), the Rules for Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the ICANN on May 11, 2001 (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition STOP for .BIZ (the "WIPO Supplemental STOP Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint together with the cover sheet to the Complaint had been sent to the Respondent as prescribed by the WIPO Supplemental STOP Rules, and that a copy of the Complaint had been sent to the concerned registrar of the domain name in dispute.

3.3 On May 8, 2002 the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to PSI on February 4, 2002 by email. No response to the Request for Registrar Verification was received from PSI. The Center then conducted its own .BIZ Registry WHOIS data search, which confirmed that the sponsoring registrar of the domain name in dispute was PSI, and confirmed the identity and contact details of the Respondent.

3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on June 5, 2002, to the Respondent by post/courier, facsimile and email and to the Complainant by email.

3.6 The Center received the Response from the Respondent on June 25, 2002.

3.7 The Center acknowledged receipt of the Response on June 26, 2002.

3.8 The Center sent a Notification of Appointment of Panelist and Projected Decision Date to the Complainant and the Respondent on July 19, 2002.

3.9 The Center sent a transmission of case file to the Panel by email on July 19, 2002. The documentation was received in hard copy by the Panel on July 29, 2002, in Sydney, Australia.

3.10 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted in the Complaint regarding the activities of the Complainant.

The trademark GEO is used for the title of a notorious magazine <GEO>. It has been published in France since 1979 and due to the quality of its articles, it has a strong reputation with the public, with approximately 5,000,000 readers and 450,000 copies sold per month.

GEO magazine also has an international reputation. The French version is distributed in Belgium, Germany, Switzerland, Canada, Italy, Portugal, Greece, Morocco, etc. Four different language versions of the magazine are published: the French, German, Spanish and Russian versions.

4.2 The Complainantís trade marks

The following is asserted as fact in the Complaint.

The trademarks on which the Complaint is based are:

- GEO nį 1 547 064, French trademark registered on August 18, 1989, in classes 9, 16, 28, 35, 38, 39 and 41;

- GEO nį 95587179 (with device), French trademark registered on September 7, 1995, in classes 9, 16, 28, 35, 38 and 41;

- GEOWORLD nį 99815093 (with color device), French trademark registered on September 24, 1999, in classes 9, 16, 28, 35, 38 and 41.

- GEOWORLD nį729773 (with color device), International trademark (Algeria, Benelux, Morocco, Monaco, Switzerland) registered on March 10, 2000 in classes 9, 16, 28, 35, 38 and 41.

It should also be noted that Prisma Presse owns the following domain names: <geo.info>, <geo-mag.fr>; <geo.presse.fr>; <geo-mag.com>; <geomagazine.com>; <geo.tm.fr>; <geotourisme.net>; <geotourisme.org>; <geotourisme.com>; <geo-guides.tm.fr>; <geo-guides.net>; <geo-mag.org>; <geo-guides.org>; <geomagazine.fr>; <geoworldmusic.com>; <geotourisme.org>; <geotourisme.net>; <geotourisme.com>; <geo-mag.org>; <geo-mag.com>; <geo-guides.org>; <geo-guides.com>; <geo-guide.net>; <geotravel.fr>; <geoworldmusic.info>; <geoworldmusic.biz>; <geoworldmusic.com>; <geographic.fr>; <geoguides.com>.

The Complainant has spent several million French Francs on the Internet to develop its activity under its trademarks <GEO>.

The Complainant has also registered several trademarks with the word "GEO":

- GEO COLLECTION nį DP325345, French trademark registered on December 1, 1991, in classes 16,35,38 and 41;

- GEO GUIDE nį 1602483, French trademark registered on March 28, 1990, in classes 16,35,38,39 and 41;

- GEO TELE nį 93 72 622, French trademark registered on June 17, 1993, in classes 16, 35,38 and 41;

- GEO VISION nį 93 472 624, French trademark registration on June 17, 1993, in classes 9, 35 and 38;

- GEO VIDEO nį 93 472 623, French trademark registered on June 17, 1993, in classes 16, 35,38 and 41;

- GEO MUSIQUE nį 94 500 102, French trademark registered on January 1994 in classes 9,16,35,38 and 41;

- GEO MAGAZINE DíEXCEPTION nį 97 700 446, French trademark registered on October 21st, 1997, in classes 16 and 38.

4.3 Activities of the Respondent

The following information concerning the activities of the Respondent is asserted as fact in the Response.

The Respondent, Dr. William Connelly, is chief geologist and founder of Pangea International, Inc. The Respondent and his company have, since 1996, been the registrants and operators of a website at "www.geology.com". The main page at "www.geology.com" provides links to various sources of information about the science and practice of geology. Other pages at "www.geology.com" provide information about the Respondentís company.

The Respondent has a B.S. in Earth Sciences from California State University at Hayward, and a Ph.D. in Geology from the University of California at Santa Cruz. The Respondent has been employed as a geologist for over 30 years, and his company provides petroleum consulting services internationally.

The Respondentís website at "www.geology.com" provides general interest information about the science of geology and also provides information about the Respondentís petroleum geology consulting company. The Respondent registered the domain name <geo.biz> to provide a separate Internet presence for his business.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the STOP have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the STOP, the Complainant alleges that the <geo.biz> domain name is totally identical to the registered trademarks "GEO" owned by the Complainant.

5.3 In reference to the element in paragraph 4(a)(ii) of the STOP, the Complainant alleges that the Respondent has no rights or legitimate interests in the <geo.biz> domain name because:

(a) the Respondent is not a licensee of the Complainant, and is in no way authorized to use the Complainantís trademarks;

(b) the Respondent does not own any trademark including the word "GEO"; and

(c) the Complainant is consequently the sole owner of the before mentioned trademarks and is the only one authorized to use said trademarks.

5.4 In reference to the element in paragraph 4(a)(iii) of the STOP, the Complainant alleges that the Respondent has registered or used the <geo.biz> domain name in bad faith. In support of this assertion, the Complainant states:

(a) GEO is a notorious magazine protected by the trademarks before mentioned. The Respondent cannot ignore the existence of the "GEO" magazine, which has a strong reputation, and is well known all around the world. Therefore, the domain name <geo.biz> has been registered in bad faith;

(b) prior to any notice to the domain name registrant of the dispute, there is no evidence of the registrantís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; and

(c) nothing indicates that the domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name.

 

6. The Respondentís contentions in the Response

6.1 In response to the Complainantís contentions, the Response states that this proceeding raises the issue of whether the Respondent, a professional geologist, is entitled to use the term "geo" in connection with geological activities he has been conducting for longer than the Complainant has existed.

6.2 In reference to the first condition, which the Complainant must prove under paragraph 4(a)(i) of STOP, the Respondent states that the Complainant is by no means the only party in the world, or indeed even in France, which is capable of claiming a trademark interest in the term "Geo". The Response refers to numerous French and U.S. trademarks incorporating the term "Geo", and states that the Complainantís claim to be the "sole owner" and "only one" capable of legitimate use of the term "geo" is facially absurd. The Response states that trademark law is not intended to provide a monopoly in words, but is a recognition that certain terms may have exclusive significance in connection with particular goods and services. Concerning the term "GEO", there is a multitude of parties capable of concurrent use of the term for different goods and services, and there is simply no "sole owner" of the term.

6.3 In reference to the second condition, which the Complainant must prove under paragraph 4(a)(ii) of STOP, the Respondent states that it is not necessary for the Respondent to claim a trademark right in order to show "legitimate rights or interests" under the Policy. Indeed, as here in the case of generic terms used in their generic sense, there can be no trademark claim of right at all. The Respondent operates a business concerned with geology, has been operating "www.geology.com" for some seven years, and the Respondent has gotten as far as obtaining and setting up a hosting account for the domain name <geo.biz> before receiving the Complaint in this proceeding.

The Response further states that a professional geologist has every right to use the term "geo" in connection with his activities, and that had the Complainant bothered to do a simple Internet search for information about the Respondent, the Complainant would have been immediately apprised of the Respondentís legitimate rights and interests in the field of geology. However, the Respondent had, prior to the filing of the Complaint told the Complainant that he is a professional geologist and planned to use the domain name for that purpose. The Complainant deceptively omits any mention of this correspondence from the Complaint, and pretends not to know why the domain name was registered.

6.4 In reference to the third condition, which the Complainant must prove under paragraph 4(a)(iii) of STOP, the Response states that the bad faith element of STOP is directed, through several non-limiting examples, to registration or use undertaken with a specific intent to appropriate the goodwill of anotherís trademark. The Respondent alleges that the term "GEO" is widely used and claimed as a trademark by a multitude of different parties. The effect of this widespread concurrent use is to limit the scope of any one partyís claim to the particular goods and services for which the trademark is claimed. The Respondent is not seeking to publish a magazine of the type published by the Complainant, which relates to travel and social geography. The Respondent is not seeking to publish a magazine at all, or to publish any information about travel and social geography. The Respondent continued with the registration process for the <geo.biz> domain name after receiving notification of the trademark claim of the Complainant, because no reasonable person would believe that having a trademark for the title of such a European magazine would, under the law of any jurisdiction, pre-empt an American geologist from using the term "geo" in connection with business relating to petroleum geology consulting. The parties to this dispute are simply not competitors, the Respondent is simply not a cybersquatter, nor is the Respondent conducting any present or planned activity in violation of STOP;

The Response cites the decision in Alpha Technologies Inc. v. Swarthmore Associates L.L.C., NAF Case No. 112449, in connection with the term "alpha", in which it was "the linchpin of Respondentís defence" that it intended "to utilize the generic disputed domain name in a non-trademark manner", and in which it was held that "When a non-trademark use is madeÖ.it is then appropriate to use the trademark as anotherís domain.".

The Respondent alleges that STOP Panels have, with few exceptions, determined that where a Respondent has a legitimate non-competing business purpose for registering the domain name, then the Respondent must prevail. This is particularly true where there is no evidence that the Respondent had abusively registered the domain name to appropriate the goodwill of anotherís trademark relating to the goods and services for which the complainant may claim a trademark right.

The Respondent finally states that the Complainant does not claim to provide petroleum geology consulting services, and the record in this case shows that the Respondent has been engaged in business relating to geological sciences for the entirety of his academic and professional careers. There is thus no reason to conclude, in view of this record, that the Respondent has in bad faith sought to appropriate the reputation or goodwill of a European travel magazine.

 

7. Discussion and Panel Findings

7.1 This section is structured by reference to the elements required by paragraph 4(a) of STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical to Complainantís trade mark or service mark

The domain name in dispute is <geo.biz>. The Complainant owns, inter alia, a French trade mark registration of the word "GEO".

The Panel accepts the Respondentís contentions, discussed in paragraph 6.2 above, that the Complainant is not the only party in the world capable of claiming a trademark interest in the word "geo", and that trademark law is not intended to provide a monopoly over words.

Nevertheless, the Complainant does have trade mark rights in the term "geo", and the Panel finds that the domain name in dispute is identical to a trade mark owned by the Complainant, the only difference being the gTLD suffix ".biz" (which is incapable of differentiating the domain name in dispute from the Complainantís trade mark). The Panel therefore finds that the domain name in dispute is identical to the Complainantís "geo" mark.

Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i) of STOP.

7.3 The Respondent has no rights or legitimate interests in respect of the Domain Name

As noted, above, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the reasons set out in paragraph 5.3 above.

Whilst the Panel accepts that the contentions made by the Complainant and listed in paragraph 5.3 (a), (b) and (c) are probably true, it does not necessarily follow that the Respondent has no rights or legitimate interests in respect of the domain name <geo.biz>.

As stated in the Response, it is not necessary for a Respondent to own trade mark rights in a disputed domain name to be able to show legitimate rights or interests in that domain name for the purposes of STOP. In the Panelís view, the fact that the Respondent is a professional geologist, who has been employed as a geologist for over 30 years, and who owns a petroleum geology consulting company, establishes that the Respondent does have rights or legitimate interests in using the word "geo" sufficient to prevent the Panel drawing any inference solely from the Respondentís use of the disputed domain name without the Complainantís authority. Although the Respondent does not have any trade mark or service mark rights in the word "geo", this word is a common prefix (from the Greek word for "earth") in which the Respondent can and does have rights by virtue of his profession as a geologist and by virtue of the fact that he operates a business concerned with geology.

The Panel further accepts that the Respondent intended to migrate the information on his "www.geology.com" web site concerning his petroleum geology consulting business to a web site at the URL "www.geo.biz", and may have made preparations to do this by obtaining and setting up a hosting account for <geo.biz> prior to receiving notice of the Complaint (although no evidence of this is annexed to the Response).

The Panel finds that the Respondent has rights or legitimate interests in respect of the disputed domain name for the reasons discussed above and that the Complainant has failed to prove paragraph 4(a)(ii) of STOP.

7.4 Domain Name has been registered or is being used in bad faith

The Complainant asserts that the domain name in dispute has been registered and is being used by the Respondent in bad faith for the reasons set out in paragraph 5.4 (a), (b) and (c) above.

The first of the Complainantís assertions suggests that the Respondent must have been aware of the reputation of the Complainantís "GEO" magazine, and for this reason the disputed domain name must have been registered in bad faith. The Panel disagrees with both of these statements. As far as the Panel is aware, the Complainantís "GEO" magazine is not distributed in the U.S., where the Respondent resides, so it is quite possible that the Respondent had never heard of this publication at the time he registered the domain name in dispute. Even if the Respondent had heard of the Complainantís "GEO" publication, it does not necessarily follow that the domain name in dispute was registered or used in bad faith.

Secondly, the Complainant asserts that bad faith registration is established by the fact that there is no evidence of the Respondentís use or preparations to use the domain name in connection with a bona fide offering of goods or services. Whilst no such evidence has been annexed to the Response, in the Panelís view it is entirely plausible (as well as quite logical) that the Respondent should wish to separate the petroleum consulting business aspects on his "www.geology.com" web site from the general information aspects, and that he should register a new .BIZ domain name for this purpose.

The third argument in support of the Complainantís assertion that the domain name in dispute was registered or is being used in bad faith (namely, that nothing indicates that the Respondent has been commonly known by the domain name) carries little weight because the domain name in dispute is a common prefix that an individual or business would be unlikely to use as a name.

Finally, the Panel agrees with the Panelistsí decisions in the cases cited by the Respondent, which have held that where a Respondent intends to use a generic disputed domain name in a non-trademark manner, then it is appropriate for the Respondent to use the domain name despite the fact that the Complainant owns a trade mark identical to the domain name. This conclusion can be applied to the circumstances of this dispute. Although the Complainant owns a trade mark registration of the term "GEO", this is a generic prefix which the Respondent intends to use, in a non-trade mark manner, for a business connected with the meaning of the prefix.

7.5 In conclusion, there is no evidence before the Panel that the Respondent has registered or is using the disputed domain name in bad faith. The Panel finds that the Complainant has failed to prove paragraph 4(a)(iii) of STOP.

 

8. Decision

The Panel, having found that the Complainant has not proven all of the requirements of paragraph 4(a) of STOP, dismisses the Complaint.

 


 

Philip N. Argy
Sole Panelist

Dated: August 5, 2002