WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kay Smyth and Galway Walking Club v. Yuen Wei

Case No. D2003-0100

 

1. The Parties

The Complainant in this administrative proceeding is Ms. Kay Smyth acting in her capacity as Secretary and on behalf of the Galway Walking Club, Oranmore, County Galway, Ireland, represented by Mr. Edmund Fry, Esq. of William Fry Solicitors, Dublin, Ireland. Hereinafter, the term "Complainant" thus refers to the Galway Walking Club. The Galway Walking Club is a legal entity constituted under the laws of Ireland.

The Respondent is Mr. Yuen Wei, of Baltimore, Maryland, USA, represented by Mr. James Ryley of San Antonio, Texas, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <galwaywalkingclub.com> (the "Domain Name"). The Registrar is Intercosmos Media Group Inc. of New Orleans, Lousiana, USA.

 

3. Procedural History

The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 10, 2003. On February 12, 2003, the Center received a hard copy of the Complaint, with supporting evidence.

On February 12, 2003, a Request for Registrar Verification was transmitted to the Registrar, which confirmed the following day that it had received a copy of the Complaint, that the Domain Name was registered with it, and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full whois details related to the Domain Name and confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name.

On February 17, 2003, the Center determined that the Complaint satisfied the formal requirements of 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 "Supplemental Rules"). On the same day, the Center notified the Respondent of the commencement of this proceeding and set March 9, 2003, as the date for the submission of a Response.

The Center received a Response by email on March 5, 2003, hard copies on March 12, 2003, and acknowledged receipt of said Response on March 14, 2003. On the same day, the Center invited the undersigned to act as Sole Panelist, as the Complainant had elected to have the Complaint resolved by a sole Panelist. On March 18, 2003, the undersigned provided a Statement of Acceptance and Declaration of Impartiality and Independence. On March 19, 2003, the Center appointed the undersigned, notified the Parties by email of this appointment and set April 2, 2003, as the Projected Decision Date.

The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.

The language of this administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The individual Complainant, Ms. Kay Smyth, is the Secretary of Galway Walking Club, a not-for-profit outdoor recreation group based in Bohermore, County Galway, Ireland. Galway Walking Clubís legal status is that of an unincorporated association with its own constitution, which comprises a committee including Chairman, Vice-chairman, Secretary, Treasurer, Public Relations Officer and Membership Officer (hereinafter "the Committee"). A copy of Galway Walking Clubís Constitution was provided to the Panel. It was founded in 1995 by a group of enthusiastic hill-walkers and hikers who, individually, had spent many years walking throughout the Galway area. County Galway is renowned as having beautiful unspoiled scenery.

Galway Walking Club promotes social walking activities in the Galway area. Since 1995, members of Galway Walking Club gather at a designated spot every Wednesday evening during summer and every second Sunday afternoon throughout the year. From this point the members are taken by bus and private transport organized by Galway Walking Club and upon reaching an appointed destination the members spend several hours on prearranged walks through the countryside of County Galway and the neighboring counties of Mayo and Clare.

Galway Walking Club has been active without interruption for the last seven years. At present, Galway Walking Club has 140 members. Its members include people of all ages and also people with varying fitness, strengths and abilities. Its priority is the enjoyment and promotion of the varied scenic routes throughout Galway. Galway Walking Club has a very high profile and is one of the best known walking groups in the West of Ireland. Although Galway Walking Club is primarily concerned with arranging excursions on behalf of its members, it also allows non-member tourists to the Galway area to take part in its walks and thus the name Galway Walking Club has become known well beyond County Galway and the West of Ireland. Galway Walking Club is affiliated with the Mountaineering Council of Ireland, a National body made up of a variety of walking and mountaineering groups throughout the country. Furthermore, Galway Walking Club is affiliated with the IVV (the Internationaler Volkssport Verband), an international walking organization.

In 1999, the Committee decided to register "GALWAY WALKING CLUB" as a Business Name in the Registrar of Business Names in the Companies Registration Office, Dublin, Ireland. Since then, Galway Walking Club is regularly featured in "Walking World Ireland" magazine. Galway Walking Club also organizes an annual walking marathon event along a route known as the "Western Way." This marathon walk is advertised internationally including in the IVV "Calendar of Arrangements 2000." The Complainant avers that walkers from all over Ireland, the UK, France, Germany, Holland, Australia, Japan, New Zealand, South Africa and the USA have participated in the past.

In or about 2000, the Committee began to enhance Galway Walking Clubís profile by establishing a web-site to promote its activities and registered <galwaywalkingclub> as a domain name with <homestead.com>. The registered domain name was <galwaywalkingclub.homestead.com> it being impossible to use the software available with "homestead.com" without having the suffix ".homestead." included in the domain name. Since registration, Galway Walking Club has always had a website at this address and continues to do so. The website is used by members of the club, tourists, and Internet browsers to obtain information regarding upcoming events and walks. For convenience, and to avoid confusion, the Committee decided that it would register the domain name <galwaywalkingclub.com> with the Internet registrar "domainnameforfree.com". Using a service made available by "domainnameforfree", Galway Walking Club was able to automatically redirect any person who logged onto the domain name <galwaywalkingclub.com> to the pre-existing web presence at "galwaywalkingclub.homestead.com". This domain name <galwaywalkingclub.com> was used on promotional material relating to the Galway Walking Club and was distributed widely.

As mentioned above, the registrar of the <galwaywalkingclub.com> domain name was "domainnameforfree.com" with whom an annual fee of $15 dollars was paid for the registration. The Complainant asserts that it was a term of the agreement that "domainnameforfree.com" would alert Sean OíNeill (the "galwaywalkingclub.com" webmaster and billing contact) when registration fees were due. Mr. OíNeill was never alerted in this manner. In April 2002, the registration inadvertently lapsed.

On May 5, 2002, the domain name <galwaywalkingclub.com> was registered by the Respondent and is being used as the domain name for a web-site for the dissemination of images of "teen nudes" and other pornographic material. Nowhere within the website are the terms "Galway" or "Walking" used.

The name Galway Walking Club is recognized and associated with promoting a social, tranquil and healthy lifestyle and it causes considerable embarrassment to its members that the name has been hijacked by a purveyor of pornographic material for commercial gain, who has absolutely no connection whatsoever with the club.

 

5. Parties' Contentions

A. Complainant

The Complainant asserts that the Respondent does not own a trademark that is identical, similar or in any way related to the disputed domain name and is not in any way connected to the Complainant and has not and never had membership in the group. The Respondent is based in Maryland, United States and does not have any connection with any walking activities or groups of walkers whatsoever in the Galway area. The pornographic material on the Respondentís website (with domain "galwaywalkingclub.com") does not have any connection (bona fide or otherwise) with the activities conducted by Galway Walking Club, nor does it purport to have any connection. Furthermore, none of the material available on the Respondentís website (with domain "galwaywalkingclub.com") has any connection, bona fide or otherwise, with any walking activities whatsoever in the Galway area and nor does it purport to have any connection. The Respondent does not use the domain name <galwaywalkingclub.com> in connection with any bona fide offering of goods or services.

The Complainant further asserts that the Respondent is using the domain name in bad faith. For the reasons above, particularly (a) the lack of any connection between the Respondent and the name "Galway Walking Club"; (b) the lack of any connection between the current material available on the website and "Galway" and "Walking"; and (c) the fact that the Respondent only registered the domain name <galwaywalkingclub.com> after the registration lapsed in April 2002, it is reasonable to conclude that the Respondentís ultimate purpose is to offer to resell the domain name back to the Complainant. The Complainant would respectfully suggest that no other reason is plausible and would submit that this use is in clear breach of paragraph 4 (b) (i) of the ICANN Policy.

The unusual word make up of "galwaywalkingclub.com" makes little sense in a circumstance where the Respondent has no connection with Galway or walking activities and where the content of the website is pornographic and has no reference to "Galway or "Walking". Instead, it must reasonably be concluded that the use of the domain name is identical or confusingly similar to the Complainantís and was chosen by the Respondent for the purpose of attracting customers to its pornographic site and at that point for the supply of pornographic material for commercial gain and by using the Complainantís goodwill. The Respondent seeks to callously capitalize on the huge interest in walking activities in Galway, Ireland in order to confuse and attract prospective visitors to the first entry resulting from such a search for the purpose of selling or distributing pornographic material. The Complainant avers that such use is in bad faith and is clearly in breach paragraph 4 (b) (iv)of the Policy.

The Complainant continues to maintain a web presence at "www.galwaywalkingclub.homestead.com". For a variety of reasons this is a most unsatisfactory situation. Many people, particularly those not long accustomed to Galway Walking Club or its promotional material, may forget the extra suffix "homestead" in the name or may consider it superfluous and will inadvertently be brought to the Respondentís pornographic website. Furthermore, those members or tourists who "bookmarked" the website "galwaywalkingclub.com" before May 2002, have been inadvertently brought to a pornographic site.

The abuse of the domain name <galwaywalkingclub.com> in this manner clearly tarnishes the reputation which Galway Walking Club has spent many years in creating and use of this identical or confusingly similar domain name continues to regularly mislead tourists, members and prospective members of the club into entering a pornographic website without intending to, thereby causing significant embarrassment and damage to Galway Walking Clubís substantial reputation and goodwill.

The Complainant also introduced into evidence an email dated May 21, 2002, from the Respondent basically offering to move his site to a different domain name, but stating that would entail "substantial work and financial loss."

B. Respondent

The Respondent submitted a Response in which he alleges the following:

(a) The Complainantís mark is unregistered and not famous, but does not dispute that the Domain Name is similar to the mark claimed by the Complainant;

(b) The Respondent had never heard of the club until they were contacted by the Complainant, and the fact that the Complainant claims to have had people from several countries participate in their walks hardly makes their club famous, even in their home country, much less the United States where the Respondent is located;

(c) Redirection to a pornographic site is a bona fide offering of goods or services, based on the decision in Etam, plc v. Alberta Hot Rods (WIPO Case No. D2000-1654);

(d) There is no confusion that the use of a web site for redirecting to another web site that has been judged a bona fide use;

(e) There is no evidence that the Respondent registered the domain to harm to Complainant, nor that the Respondent even knew of the existence of the Complainant;

(f) Regardless of the Complainantís claim of the popularity of their walking club, no one could believe that the Respondentís intent was to draw "ÖInternet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant's markÖ" as stated in 4(B)(iv) of the Policy;

(g) In its email of May 21, 2002, to the Complainant, Respondentís representative asserted that Internet users would not stumble on his site while looking for the Complainantís, once "search engines were updated."

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);

2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.

There is no need to belabor the similarity (identity) between the Complainantís alleged mark and the Domain Name, a point conceded by the Respondent in his Response.

The question of whether the Complainant has rights in a trademark or service mark is more difficult. Initially, the Complainant only had a trade name, which would be insufficient to claim a remedy under the Policy because the only claim that the Complainant can make under the Policy is concerning a trade or service mark. Here, because the mark, if it exists, is unregistered, it can only be a common law trademark, the rights in which stem from actual use, which, in respect of services, means minimally advertising and availability.

In this case, on balance and in light of the evidence provided, the Complainant was successful in establishing that, while GALWAY WALKING CLUB is somewhat descriptive, it was used in relation with certain services, namely the provision of walking tour services and customized personal walking tours and destination management for several years to the point of acquiring secondary meaning, before the Domain Name was registered by the Respondent. The mark is in fact composed of two parts that are rather descriptive but for different reasons: Galway, as to a geographic area, and "walking club" referring (though not very precisely) to the nature of the services. Together, these two parts from an expression that can, in time, acquire secondary meaning. The evidence provided by the Complainant tends to indicate that that point has in fact been reached.

Indeed, the relationship between the Complainantís services and GALWAY WALKING CLUB was established through continuous advertising, including in international catalogs and on the Internet. The availability of such services has also been established, as have hundreds of normal commercial transactions concerning such services with clients in several countries, including the United States. See, e.g., Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, Owen OíNeill (WIPO Case No. D2001-0472); Galatasaray Spor Kulubu Dernegi et al. v. Maksimum Iletisim A.S. (WIPO Case No. D2002-0726); and The National Deaf Childrenís Society et al. v. Nude Dames, Chat, Sex (WIPO Case No. D2002-0128).

The Panel thus finds that the Complainant has rights in the GALWAY WALKING CLUB mark, and that the Domain Name is similar to such mark.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?

The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainantís prior use of the GALWAY WALKING CLUB mark and was never authorized to use Respondentís mark. The Respondent alleges that redirection to a pornographic website is a bona fide offering of goods or services.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

The Respondentís case rests on subparagraph (i), since there is no evidence or contention concerning subparagraphs (ii) or (iii). Turning to the alleged bona fide offering, the fact that the services offered by the Respondent cannot by any stretch of the imagination be linked to the type of services actually offered, and the fact that those services are not offered under that name (i.e., the URL containing the Domain Name is the only place where the Internet user will see the words "Galway Walking Club") or that any link to the Galway area or even to Ireland is made leads the Panel to reject the Respondentís contention.

The Panel similarly case rejects the Respondentís argument based on the already-mentioned case Etam, plc v. Alberta Hot Rods, because in that case the words registered as domain names were first names of women, which created a possible (though distasteful) plausible association between the domain names and the types of services (pornography).

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site 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 web site or location or of a product.

The Complainant must prove that the Domain Name was both registered and used in bad faith.

The Respondent categorically denies knowledge of the Complainant and the Complainantís services prior to the discussions that led to these administrative proceeding and, in the absence of evidence to the contrary, the Panel accepts that statement. However, that in itself is not sufficient to exculpate the Respondent in a case where the domain name at issue is descriptive in nature and where such description is related to services totally unrelated to those of the Respondent. The date of registration tends to indicate that the Respondent simply picked up a domain name the registration of which had just lapsed but which had generated substantial traffic in order to divert people to its pornographic offerings, a form of free-riding as it were. In this panelís opinion, the Respondent did not simply "invent" the Domain Name. Rather, the intent was to use a domain name the registration of which had inadvertently not been renewed, with the intent to leverage the goodwill previously associated with the Domain Name and belonging to the Complainant.

Basically, in a case such as this where the Respondent registered a descriptive expression as a domain name with a view to offering completely unrelated services (i.e., redirection to a pornographic website), a panel should be able to find that registration was effected in bad faith. When registering the Domain Name, the Respondent could not have ignored the fact that this Domain Name was generally descriptive of a type of service and of a geographic area. The Domain Name was not a coined, invented or fanciful word.

Several administrative panel decisions have found that the fact that the Domain Name was registered by the Respondent almost immediately after its registration by the Complainant accidentally lapsed indicates that the Respondent knew of the Complainantís interest and that in itself was sufficient to indicate bad faith registration. See BAA plc v. Spektrum Media Inc., WIPO Case No. D2000-1179 (October 17, 2000) ("The Respondent took advantage of the Complainantís failure to renew a domain name that must have been known by the Respondent to refer to transport services to and from Heathrow Airport, an enterprise with which he had no connection. The inference that he intended to deal with the name in some way to the detriment of the Complainant is inescapable"); InTest Corp. v. Servicepoint, Nat. Arb. Forum case FA 95291 (August 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); and OTEX Corporation Limited v. Wongi Lee Nat. Arb. Forum case FA0206000114688 (August 14, 2002). Here, when adding this element to the other signs of bad faith mentioned above, the Panel finds that, on balance, the Complainant was successful in showing that the Domain Name was registered in bad faith.

Two additional arguments dealing with bad faith registration should be addressed by the Panel. First, there is some evidence of a willingness by the Respondent to transfer the Domain Name in exchange for compensation for his "substantial work and financial loss," but not to the extent necessary under Paragraph 4(b)(iv). It is, however, an additional factor that supports a finding of bad faith registration (and use).

Second, because the Respondent is based in the United States, the issue of "tarnishment" or dilution of the Complainantís mark (under US law, more precisely the Lanham Trade-Mark Act, ßß 43(c)(1), 45, 15 U.S.C.A. ßß 1125(c)(1) and 1127) raised by Complainant could be relevant, as was pointed out in a number of decisions under the Policy. However, the Panel does not wish or need to express an opinion as to whether dilution may constitute a ground to justify a finding of bad faith (under the Policy) in this case. In addition, in light of the recent decision by the US Supreme Court in Victor Moseley and Cathy Moseley, dba Victor's Little Secret v. V Secret Catalogue, Inc., et al. (123 S.Ct. 1115 (2003)), it seems that additional evidence of actual dilution (as opposed to a presumption of harm arising from a subjective "likelihood of dilution" standard) would have to be adduced, at least under US law.

Now as to bad faith use, numerous administrative panel decisions have found that redirection to a pornographic website is itself bad faith use under the Policy. See, e.g., Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing (WIPO Case No. D2001-0610); Arizona Board of Regents for and on behalf of Arizona State University v. Value Holdings, Inc. (WIPO Case No. D2001-0445); National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net (WIPO Case No. D2000-0118); Reckitt Benckiser (Belgium) S.A./N.V. v. Will Tell, a/k/a J. Sernets (WIPO Case No. DNU2001-0002):and Libro AG v. NA Global Link Limited (WIPO Case No. D2000-0186).

In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

 

7. Decision

On the basis of the elements set out above, the Panel finds that:

1. The Domain Name <galwaywalkingclub.com> is identical to the service mark GALWAY WALKING CLUB, in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;

3. The Domain Name was registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <galwaywalkingclub.com> be transferred to the Complainant.

 


 

Daniel Gervais
Sole Panelist

Dated: March 31, 2003