WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consignia Plc and Post Office Limited v. Aly Ramzan
Case No. DBIZ2002-00180
1. The Parties
The First Complainant is Consignia plc, a public limited company incorporated in the United Kingdom and having its registered office and principal place of business at 148 Old Street, London, EC1V 9HQ, United Kingdom.
The Second Complainant, Post Office Limited, is a wholly owned subsidiary of the First Complainant. It is a private limited company incorporated in the United Kingdom and having its registered office and principal place of business at Gavrelle House, 2-14 Bunhill Road, London, EC1Y 8HQ, United Kingdom.
The Complainants' authorized representatives in this administrative proceeding are Lovells, London, United Kingdom.
The Respondent is Aly Ramzan of F88/1 Block 7, Kehkashan, Clifton, Karachi, Sind, 00000, Pakistan.
2. The Domain Name and Registrar
The disputed domain name is <postoffice.biz>.
The Registrar with which the disputed domain name is registered Tucows Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada ("Registrar").
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on April 27, 2002.
On May 23, 2002, the WIPO Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent, advising him that a Response was due within 20 calendar days, i.e. by June 12, 2002.
On June 12, 2002, the Center received a Response from the Respondent.
On July 26, 2002, the Center advised the parties that a single Panelist had been appointed.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Center’s assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
The First Complainant's predecessor, The Post Office, was established as a statutory corporation in 1969. The goods and services supplied by the Complainants originally involved collection and delivery of letters and of messages. Telegrams, telephone and telex were added subsequently and in the last 10 to 15 years the Complainants have also provided electronic communication and electronic mail services (both national and international).
Internet users in more than 100 countries can now use the Complainants' electronic hybrid mail services where users e-mail documents and telegrams to the electronic services centre of the First Complainant, for printing and dispatch by first class mail. The Complainants provide more than 170 "core services" across the United Kingdom from bill payment to travel and banking services under the sign POST OFFICE.
As at the date of the First Complainant's IP Claim the First Complainant was the registered proprietor of a number of UK registered trademarks for POST OFFICE and THE POST OFFICE. On October 1, 2001, these trademarks were assigned to the Second Complainant "for internal reorganisation purposes". The assignment agreement has been registered at the UK trademarks registry.
The Respondent appears to be an individual, although according to the Response, the disputed domain name is owned by a Pakistani company which has operated as an Internet Service Provider ("ISP") since 1997.
The Respondent registered the disputed domain name on March 27, 2002.
5. The Parties’ Contentions
A. The Complainants
The Complainants rely on both registered and unregistered trademark rights in the trademarks POST OFFICE and THE POST OFFICE.
The Second Complainant is the registered proprietor of a number of trademarks for "POST OFFICE" and "THE POST OFFICE" in the United Kingdom. The registrations for the trade mark "POST OFFICE" are all in the form of logo marks.
The Complainants claim that the disputed domain name is identical to the Second Complainant's registered logo marks "POST OFFICE". They claim that the removal of the space between the textual elements and the absence of the lozenge shape used in the logo marks do not distinguish the domain name from these registered trademarks.
The Complainants also claim that the disputed domain name is identical to trademarks THE POST OFFICE as the words "post office" in the disputed domain name are identical to the distinctive element "POST OFFICE".
The First Complainant claims to be a national institution in the United Kingdom. Its turnover and post-tax profits for the last financial year were very significant. The Complainants claim that "POST OFFICE" is a household name in the UK and has also become recognised internationally as a result of the Complainants' international services.
The Complainants state that they intend to create a virtual branch that would be available to every home and office in the UK via the internet, digital television and mobile (WAP) phones. In addition, another company in the group of companies of which the Complainants form part provides a service that enables secure electronic commerce through the use of encryption technology and digital certificates.
The Complainants allege that the Respondent has no right or legitimate interests in respect of the disputed domain name for the following reasons:
(a) There is no evidence that the Respondent is the owner or beneficiary of a trademark or service mark that is identical to the disputed domain name;
(b) The Respondent is not using the disputed domain name and there is no holding page or any other indication that the Respondent is making any preparations to use the disputed domain name;
(c) The Respondent (as an individual, business or other organisation) has not been commonly known by the disputed domain name <postoffice.biz> or any name corresponding to that name.
The Complainants also assert that the disputed domain name was registered in bad faith. They rely on the following allegations:
(a) WhoBIZ searches undertaken by the Complainants indicated that the Respondent has registered at least 296 different .BIZ domain names. The first 75 matching records (which can be obtained on a non-chargeable basis) were annexed to the Complaint. Also, the results for the searches performed on different dates showed different domain names. This suggests that the Respondent must be dealing in the domain names he has already registered and/or is actively registering more .BIZ domain names.
(b) Given that the Respondent has registered a very large number of .BIZ domain names and the fact that the Respondent is dealing in those domain names or actively registering further .BIZ domain names there is a prima facie presumption that the Respondent registered the disputed domain name for the purpose of selling it.
(c) The disputed domain name is not being used (and there is no evidence of any demonstrable preparations for use). The Complainant claims that this indicates a "wait and see" approach towards the disputed domain name constituting passive bad faith.
(d) The WhoBIZ search results showed that the Respondent is the owner of the domain name <zeetv.biz>. The domain name <zeetv.com> resolves to a substantial website which appears to be operated by the ZEE Network which offers TV, movies, entertainment and other services. At paragraph 10 of the Legal Disclaimer at that website it is stated that "ZEE…are trademarks of Zee Network…". Accordingly, the Respondent appears to have registered the <zeetv.biz> domain name knowing that a third party has trademark rights in the trademark ZEETV. The Respondent's intention in registering this domain name must have been with the aim of selling, renting or otherwise transferring it to the operator of ZEETV.com or the owner of the associated trademark.
(e) The search result also showed that the Respondent is the owner of the domain name <mgmt.biz>. The domain name <mgmt.com> resolves to a website offering web site design, e-commerce, and related services. The operator of this web site appears to have rights in the trademark MGMT. The Complainant claims that the Respondent must have registered the domain name with the aim of selling, renting or otherwise transferring this domain name to the operator of the web site at <Mgmt.com> or the owner of the associated trademark.
(f) This claimed pattern of behaviour by the Respondent of registering domain names which incorporate third parties' trademarks illustrates the Respondent's "less than virtuous" intentions in registering the domain name <postoffice.biz>, that is, to transfer the domain name to the Complainants or to a competitor of the Complainants for valuable consideration.
(g) The Respondent chose to proceed with registration process for the disputed domain name having been notified by the Registry Operator that the First Complainant had submitted an IP Claim in respect of the trademark POST OFFICE.
(h) It is likely that the Respondent was aware of the Complainants' rights and goodwill in the trademarks POST OFFICE and THE POST OFFICE at the time of his application to register the disputed domain name because of "the international renown of the Second Complainant". A trademark search (in the United Kingdom) for the term POST OFFICE would have revealed the Second Complainant's registered trademarks POST OFFICE and THE POST OFFICE.
B. The Respondent
The Respondent’s main contention is that the words "POST OFFICE" is generic and is used by many different entities throughout the world. It states that while the UK Post Office has used the word POST OFFICE in the United Kingdom (and may also be known outside of United Kingdom as the United Kingdom’s Post Office), the word POST OFFICE does not signify only the UK Post Office.
The Respondent states that many countries have a post office system operated under the mark "POST OFFICE". A Google search for "postoffice" shows a mix of post offices around the world. It does not specifically point to a single owner of the trademark.
The Respondent noted that the US Post Office and the Australian Post Office also filed IP claims in respect of the disputed domain name. The Respondent states, "[w]e are neither operating in UK, Australia nor USA. Our business is located in Pakistan." It also claims that the very fact that other businesses filed IP claims in respect of the same trademark demonstrates that the mark is generic and does not belong to any single entity, or country’s post office system.
The Respondent also claims that it has every intention of using the disputed domain name. It states that it provides extensive electronic communications service nationally and internationally. The Respondent states that it "already has a product, which has easy to use interface to integrate existing mail accounts, certified mail, secure mail, PDA functions, quick language translations etc".
The Respondent claims to have been in the virtual post office business for about 5 years via "multiple messaging and mail services" and that it was the first ISP (Internet Service Provider) in Pakistan to introduce IMAP web based mailing service.
The Respondent explained the fact that it appears to have registered hundreds of domain names on the basis that he it a Tucows registered reseller and in the business of registering domain name, and has taken part in lottery type schemes in respect of many TLDs. It states that:
"We have only registered a few .biz domains for our group companies for bona fide business use, details of which have already been submitted to Neulevel through Tucows. All names besides the few registered for our group’s bona fide businesses are registered for our clients. Explanation of registering many names under our name due to the nature of the lottery process and the local laws has been explained to Neulevel in detail through Tucows.
Respondent does not and cannot take responsibility for the domain names registered by its customers if they violate any trademarks or copyrights."
The Respondent states that it paid little regard to the notification of the Complainant’s IP claim through Neulevel as the Respondent considered the name to be generic. Also, the notice had other IP Claimants from other countries in the same business as the Complainant, which the Respondent took as evidence confirming this view.
6. Discussion and Panel Findings
Domain name is identical to a trademark or service mark in which the Complainant has rights
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
The disputed domain name is identical to the Second Complainant’s logo marks "POST OFFICE".
No rights or legitimate interests in respect of the disputed domain name
Paragraph 4(c) of the STOP sets out certain circumstances that, in particular but without limitation, demonstrate the Respondent’s rights or legitimate interest in the disputed domain names:
(i) that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name; or
(ii) before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(iii) that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has not acquired any trademark or service mark rights.
The Panel does not consider that any of the factors in (i) – (iii) above have been established. The Respondent asserts that it has every intention to use the disputed domain name and that it already has a product which has "easy to use interface to integrate existing mail accounts, certified mail, secure mail, PDA functions, quick language translations etc". However, no evidence has been provided to the Panel either of this product or its relevance to the disputed domain name.
The Respondent also attempted to rely on the fact that it has operated as a virtual post office for a number of years by virtue of providing email services and the like. Even if this were the case, the Panel does not consider that this is sufficient to demonstrate that the Respondent falls within the terms of the STOP. The Respondent has not demonstrated that this constitutes use or demonstrable preparations to use to disputed domain name before any notice of the dispute.
The Panel therefore finds that the Respondent has no right or legitimate interest in the disputed domain name.
Domain name was registered or is being used in bad faith
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:
i. Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the 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 Complainant from reflecting the mark in a corresponding domain name; 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 Complainant's 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."
There is no evidence that the Respondent has attempted to sell the disputed domain name in terms of paragraph (i) as the Complainant alleges nor that the Respondent registered the disputed domain name primarily for that purpose.
Nor does the Panel see any reasons to disbelieve the Respondent’s assertion that it considered the mark to be a generic one which it was entitled to register as a domain name. In global terms, the term "POST OFFICE" is generic – it is used by many different entities in many different countries around the world. It is highly unlikely that the Complainant would be able to obtain trademark registrations for the marks "POST OFFICE" or "THE POST OFFICE" in any country outside the United Kingdom. Even in the United Kingdom, the mark "POST OFFICE" is registered only as a logo mark.
While the Panel does have some difficulty with the Respondent’s explanation for the registration of hundreds of domain names, the fact remains that to the extent that these domain names are generic terms which many traders are entitled to use around the world, then the registration of these domain names cannot be said to be in bad faith in terms of the STOP.
The Panel finds that the disputed domain name was not registered in bad faith, nor is it being used in bad faith. The Complainant has not proven paragraph 4(a)(iii) of the STOP.
The Panel finds that:
(a) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) The Complainant has failed to demonstrate that the disputed domain name was registered or is being used in bad faith.
The Complainant having failed to prove the requirements of the STOP, the Panel dismisses the Complaint.
Pursuant to paragraph 15(e)(iii), the Panel finds that as the Respondent has not demonstrated legitimate rights to disputed domain name, subsequent challenges against the domain name shall be permitted.
A H Brown QC
Dated: August 6, 2002