WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Atlantic Recording Corporation v. Virginia Web Resources, LLC

Case No. DBIZ2002-00275

 

1. The Parties

The Complainant is Atlantic Recording Corporation of 1290 Avenue of the Americas, New York, New York 10104, United States of America, which is represented in the present proceeding by Claire Shelley, Cogent IPC, Jubilee Business Centre, 109-111, Farringdon Road, London, EC1R 3WD, United Kingdom.

The Respondent is Virginia Web Resources, LLC, 4873 Oakcrest Drive, Fairfax, VA VA 22030, United States of America, represented by Robert B. Webb of the same address.

 

2. The Domain Name and Registrar

The disputed domain name is <atlantic.biz> and the registrar is I.D.R. Internet Domain Registry Ltd., PO Box 1057, 12 Hasharon Way, Kfar Saba 44110, Israel.

 

3. Procedural History

3.1 The Complaint was received by email by the WIPO Arbitration and Mediation Center ("the Center") on June June 20, , 20022002, and in hard copy on July July 2, , 2002.

3.2 On June 21, 2002, the Center acknowledged receipt of the Complaint.

3.3 On July 3, 2002, the Center completed a check of whether the Complaint complied with the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").

3.4 On July 3, 2002, the Respondent was notified of the STOP Complaint and Commencement of the Administrative Proceedings and was sent a copy of the Complaint and attachments. . This was sent by post/courier and email to the addresses appearing under the Registrant and Administrative Contact for the domain name registration. . In accordance with the Rules, the date for the filing of a Response was set at July July 23, , 2002.

3.5 The Respondentís Response was received by email by the Center on July 23, 2002, and in hard copy on July July 26, , 2002.

3.6 On July 29, 2002, after receiving the required Statement of Acceptance and Declaration of Impartiality from the proposed panelist, the Center notified the parties of the appointment of Staniforth Ricketson as the single member Administrative Panel in the proceeding. The date for transmission of the Panelís decision to the Center was set at August August 12, , 2002, in accordance with paragraph 15 of the STOP Rules.

3.7 After perusing all the materials filed in the proceeding, the Panel finds that the relevant requirements of the STOP, the STOP Rules and WIPO Supplemental STOP Rules have been complied with.

3.8 In accordance with paragraph 11 of the STOP Rules, the language of the proceedings is English (this being the language of the registration agreement).

 

4. Factual Background

4.1 The following matters appear to be uncontested.

4.2 The Complainant is part of the AOL Time Warner Group, and is one of the major record companies under the Warner Music Group, the main music arm of the AOL Time Warner Group.

4.3 The Complainant was founded in 1947, and has had a long line of famous recording artists associated with it. . Even though now a part of the AOL Time Warner Group, it appears that the ATLANTIC name and mark, used on all the Complainantís entertainment and music-related goods and services have a very high consumer recognition. . In this regard, the Complainant cites various Google and Yahoo! Searches for ATLANTIC showing that the Complainant is listed in the top of these searches (Annexes C, D, E and F). . It should also be noted that these searches indicate that there are other very high profile uses of the word ATLANTIC, as in the Atlantic Quarterly, Atlantic University and the North Atlantic Treaty Alliance. . In the case of the Complainant, these searches show that the name under which the Complainant is recognized is that of "Atlantic Records", not just "Atlantic".

4.4 The Complainant has more than 100 trade marktrademark registrations for the word ATLANTIC singly and in combination with other elements. . These include registrations in the USA, EC and numerous other countries and are mostly in respect of goods falling within Class 9 (Complaint, pp 8, 11-12). . It also has a number of domain name registrations for the word ATLANTIC and ATLANTICRECORDS in the <.com>, <.us>, <.info>, <.net>, <.biz> and <.org> domains (Complaint, p 9).

4.5 The Respondent is a privately owned company which controls a large number of domain names in the <.biz>, <.info> and <.us> domains. . It appears to be linked to MrMr. Robert Webb, a business lawyer practicing in Northern Virginia (Annexes G and H). . MrMr. Webbís activities appear to be directed at using these domain names as the hubs for a series of websites dealing with local business and community matters (see further below). . He also controls several others, more directly concerned with legal matters.

 

5. Partiesí Contentions

A. Complainant

A successful complaint brought under STOP must establish each of the three elements that are listed in paragraph 4(a). . The Complainant in the present proceeding addresses these elements as follows:

- As to the first element (domain name identical to a trade or service mark in which the Complainant has rights), the Complainant refers to its registered trade marktrademarks for ATLANTIC referred to in 4.4 above. . On the question of identity with the disputed domain name, the Complainant submits that this requirement is clearly satisfied (Complaint, p 12).

- As to the second element (Respondentís lack of rights or legitimate interests in domain name), the Complainant states that the Respondent cannot claim trade marktrademark rights in ATLANTIC because of its geographic and generic character and it would not be legitimate for it make such a claim. . It refers to an earlier Panel decision to the effect that the mere act of registering a domain name cannot confer a legitimate interest on the Respondent: see AIMS Pty Ltd v Banyin Lee (Case No DBIZ2001-00001). . It argues further that its researches have not shown that the Respondent has ever been commonly known by the name ATLANTIC or any variation thereof and that the Respondent does not appear to have trade markstrademarks, registered or unregistered, consisting of the word ATLANTIC. . Furthermore, there has been no licensing of the Respondent to use the mark and there is no association or affiliation between it and the Complainant. . Finally, the Complainant has prior and better rights in the ATLANTIC mark by virtue of its long user and national and international recognition.

- As to the third element (bad faith by the Respondent in the registration or use of the domain name), the Complainant notes that it can only argue bad faith in registration because any use of the domain name has been frozen for 30 day period from the date of registration by the <.biz> registry. . So far as the act of registration is concerned, however, the Complainant argues that the Respondent would have been made aware of the Complainantís rights through the IP Claim notification service when it (the Respondent) applied to register <atlantic.biz>. . Nonetheless, with this knowledge the Respondent continued with its application, which the Complainant asserts is evidence of its bad faith, particularly in view of the fact that the Respondent must have known of the Complainantís worldwide reputation in the mark.

B. Respondent

The Respondent has filed a lengthy Response in which it makes the following points.

- While it acknowledges that the Complainant has certain trade marktrademark rights, it argues that these are confined to certain classes of business use and do not give the Complainant exclusive rights in relation to the word ATLANTIC. . It points here to the geographic connotation of ATLANTIC, and notes the widespread use of the word by a wide variety of businesses, governments and people of all kinds and variety. . While conceding that the Complainant may have "legitimate rights" in ATLANTIC for certain business uses, it argues that these do not give it exclusive rights with respect to other uses of that word that may be made by other parties (including itself).

- So far as its own legitimate rights and interests are concerned, the Respondent points to the matters referred to in paragraph 4(c) of the STOP that may go to show such rights and interests, including evidence of "demonstrable preparations to use, the domain name". . In this regard, it refers to its business plan to use the domain name and other similar <.biz> names for the Virginia region as part of a series of websites displaying local business and legal information and services. . Central to these matters is the role of MrMr. Webb, which is explained in great detail at pp 7-8 of the Response. . In particular, the Respondent explains how MrMr. Webb plans to use the ATLANTIC domain name as a regional site for legal and business information related to the Atlantic region of Virginia and for the Atlantic Ocean (since many Virginia businesses in that region are governed by various maritime, fisheries and environmental laws relating to the Atlantic Ocean). .

- As to the question of bad faith registration and use of the domain name, the Respondent denies this and refers here to its business plan for the domain name as well as to its general policy of respecting third IP rights that it is displayed on its web sitewebsites. . It also notes that, because of the STOP proceeding, it has been unable to proceed with any of its plans for development of the domain name. . In addition, it asserts that it has not offered the domain name or any of its other Virginia related domain names for sale.

 

6. Discussion and Findings

Under paragraph 4(a) of STOP, the Complainant must prove the presence of each of the elements listed in that paragraph.

Domain name identical to trade or service mark in which the Complainant has rights (sub-paragraph 4(a)(i))

The Complainant has stated that it has numerous registrations for the mark ATLANTIC, and has listed these at pages 11-12 of the Complaint. . Although it would be preferable for the Complainant to exhibit at least one or several of these registrations, the Panel is prepared to accept that there is sufficient here to establish that the Complainant has shown that it has "rights" in a trade or service mark, and this appears to be acknowledged by the Respondent. . It will be noted that the word "rights" is not qualified here, iei.e. whether these must be "exclusive" or "legitimate" rights, a distinction made by the Respondent. . Nonetheless, in view of the longevity and extent of its registrations, the Panel accepts that, at the very least, the Complainant has established that it has "legitimate" rights in the mark ATLANTIC for the purposes of the first of the requirements listed in sub-paragraph 4(a)(i). . It should be noted that the classes in which these marks are registered are relatively narrow, being focused mainly upon goods falling within class 9.

As to the second requirement of that sub-paragraph, namely that of identity between the domain name and the Complainantsí mark, this is also satisfied: the domain name <atlantic.biz> is clearly the same as the trade marktrademark ATLANTIC, and, for the purpose of this comparison, it is appropriate to disregard the <.biz> suffix in the domain name.

Accordingly, the Complainant has satisfied the requirements of sub-paragraph 4(a)(i).

Lack of rights or legitimate interest of Respondent in domain name (sub-paragraph 4(a)(ii))

Paragraph 4(c) refers to various matters that can be shown by a Respondent that will be evidence of rights or legitimate interest in a domain name by a Respondent, including ownership of an identical trade marktrademark, the use of, or "demonstrable preparations to use", the domain name or a corresponding name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by that name.

In the present proceeding, although the Complainant has established its rights in trade or service marks comprising the word ATLANTIC, this is in relation to specific goods and services, notably those goods listed in Class 9. . As a general matter, if a third party were to use the same mark on unrelated goods or services, it is unlikely that the Complainant would have any recourse against that third party under the law of registered trade marktrademarks and the question of whether it would have a remedy under general unfair competition law would be very much one of evidence as to reputation and likelihood of confusion. . This must be particularly so where the mark itself consists only of an unqualified geographical term, such as ATLANTIC. . Where the term has such a general geographical ambit as the name of an ocean bordering four continents, it is difficult to conceive of any situation where there will not be third parties with a legitimate interest in using that term in relation to their own activities. . In its Response, the Respondent cites a number of these, ranging from maritime, coastguard and fishing organizations that all feature the word "Atlantic" somewhere in their name. . In the Respondentís case, it seems that it bases its right to use this term on its proximity to the Atlantic area of Virginia and the number of businesses operating offshore in that area of ocean. . In support, it refers to its wider business plan of developing a web or network of sites using domain names that are based on the names of the various localities of the Commonwealth of Virginia. . These will be used for local business and legal services, and there is some evidence that this is a legitimate enterprise that the Respondent is undertaking, linked, presumably, to MrMr. Webbís business law practice. . None of these plans seem in any way fanciful or unrealistic, and it is therefore reasonable for the Panel to conclude that the Complainant has failed to show that the Respondent lacks any legitimate right or interest in its registration and proposed use of the domain name.

It may, perhaps, be unfortunate that the Respondent will therefore be able to gain a series of geographical <.biz> and <.info> registrations to use in its proposed business, and that this will thereby deny other businesses and traders in those areas from applying for those exact domain names. . But there is nothing in the STOP to prevent this occurring, and the Respondent does not thereby gain any trade marktrademark rights in those names Ė such rights will only arise where it registers those names as marks in respect of particular goods or services or where it can build up the appropriate goodwill and reputation to support common law trade marktrademark rights. . In addition, there will be nothing to prevent other traders from using these names in their own domain name registrations, in the present case, for instance, by registering a compound name such as "Atlantictourism", "Atlanticfisheries", and so on. . The only advantage gained by the Respondent is that it has been the first to register these geographical names on their own.

Regrettable as the above conclusion may be from the perspective of the Complainant, it can only be said that this is the "price to be paid" for the advantages of having a trade marktrademark that is so obviously geographical in its connotations: see here comments of the High Court of Australia in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (1978) 140 CLR 216, 227 in relation to the analogous question of descriptive terms. . To similar effect, see also Ing mag Hans Schneider v ALLRisk Management GmbH, WIPO Case No DBIZ2002-00001. . In the present case, the Complainant loses none of the benefit of its registered trade marktrademarks, but it has not been able to show that the Respondent lacks any legitimate right or interest in seeking to register and use the domain name <atlantic.biz> in relation to its proposed website business.

Accordingly, the second element of paragraph 4(a)(ii) has not been established.

Bad faith in registration or use of the domain name (sub-paragraph 4(a)(i))

In view of its finding on sub-paragraph 4(a)(ii), there is no need for the Panel to consider whether the requirements of sub-paragraph 4(a)(iii) have been made out. . Nevertheless, in the light of the partiesí submissions on this question, the Panel makes the following observations. . Unlike the UDRP, there is no requirement under the STOP to show bad faith at both the stages of registration and use of a disputed domain name: the presence of bad faith at either stage will suffice. . In determining this, it is relevant to consider whether any of the circumstances listed in paragraph 4(b) of the STOP are present.

In the present proceeding, there is no evidence of any sale or offer to sell the domain name, such as might fall within the circumstances described in sub-paragraph 4(b)(i). . Nor is it easy to point to facts or circumstances from which it might be inferred that the requirements of sub-paragraphs 4(b)(ii)-(iv) are satisfied. . The most relevant factor form which bad faith (in registration) can be argued is that the Respondent must have had knowledge of the Complainantís interest in the domain name <atlantic.biz> by virtue of the latterís IP Claim, but nonetheless continued with his application to register the name: see further Compagnie Gervais Danone v Roland Metzler, WIPO Case No DBIZ2002-00196. . The Complainant asserts further that the Respondent must have known of the Complainantís global recognition as a recording company, and this confirms its bad faith in continuing with the registration.

Against these contentions is the evidence that the Respondent was preparing to use the domain name as part of its own business and legal services enterprise, and its assertion that it did not believe that the Complainant had exclusive rights in the mark ATLANTIC above and beyond those for which it had registered trade marktrademark rights. . Once again, the geographical connotations of the mark tell against the Complainant, and the finding against it in relation to sub-paragraph 4(a)(ii) must lead to the conclusion that, if the Respondent has some legitimate right or interest in the name ATLANTIC, its registration and proposed use of that domain name cannot be in bad faith.

Accordingly, if it were necessary to do so, the Panel would find that the third element of paragraph 4(a) has not been established in this proceeding.

 

7. Decision

The Panel concludes that while the Complainant has satisfied the first element of paragraph 4(a), it has not shown that the remaining two elements under sub-paragraphs 4(a)(ii) and (iii) are met. . The Complaint is dismissed.

 


 

Staniforth Ricketson
Sole Panelist

Dated: August 12, 2002