WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediacorp Radio Singapore Pte Ltd v. HL Lim aka Hwee Lee Lim
Case No. D2004-0291
1. The Parties
The Complainant is Mediacorp Radio Singapore Pte Ltd, Singapore, represented by Messrs Rodyk & Davidson, Advocates & Solictors, Singapore.
The Respondent is HL Lim aka Hwee Lee Lim, Singapore, who is representing herself.
2. The Domain Name and Registrar
The disputed domain name <class95.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2004. On April 23, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On April 23, 2004, eNom transmitted by email to the Center its verification response confirming that it had placed the disputed domain name under a locked status, and advising that the Respondent had entered into a registration agreement with eNom. eNom also provided a link to its whois lookup for the current administrative, billing, and technical contacts relating to the disputed domain name. These were identified as “HL Lim” (with no street address other than “Singapore”) and a Singapore postal code 40000, with the country however stated as the “United States.” The Complainant has relied on the contact details obtained from an earlier whois search carried out on February 18, 2004, where the Respondent’s name, e-mail address, telephone number and Singapore postal code were supplied. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint using the contact details obtained from the February 2004 whois search, and the proceedings commenced on May 3, 2004. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 23, 2004. The Response was filed with the Center on May 19, 2004, in which the Respondent has acknowledged that she was the registrant of the site.
The Center appointed Richard Tan as the Sole Panelist in this matter on May 26, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company incorporated in Singapore and is a member of the MediaCorp group of companies in Singapore, which has television, radio and print media interests. The Complainant and its predecessors-in-title have been offering free-to-air radio broadcast programmes since 1936.
The Complainant operates 15 different radio stations in Singapore catering to different audiences and programming genres, one of which is “Class 95 FM.” Class 95 FM first commenced broadcast in Singapore 14 years ago in 1990.
In 2003, the Complainant filed trade mark applications for “CLASS 95 FM” and “MediaCorp Radio Class 95 FM (stylized)” with the Intellectual Property Office of Singapore in various classes, including inter alia Class 38 for “Music and radio broadcasting; and transmission of radio programmes,” and Class 41 for “Production of radio programmes; recording studio services and provision of recording studio facilities; audio recording services; radio entertainment services; show production services; live band performances; arranging and conducting air shows; and agency, management and impresario services for performing artists.” These marks have been registered, save for the stylized mark applications in Classes 16, 18 and 21, which are still pending.
In January 2000, the Complainant established its official Internet website for Class 95 FM at the domain name <class95.com.sg>, “.sg” being the country code for ccTLDs administered by the Singapore domain name registry.
Several months later, in August 2000, the subject domain name <class95.com> was registered by or on behalf of the Respondent.
It is not in dispute that after securing the subject domain name registration, the Respondent used it as a forwarding domain to various other internet websites, including that of ‘WKRZ 91.3’, which is a Singapore radio station operated by a competitor of the Complainant’s, UnionWorks Pte. Ltd.
It is also not in dispute that following a press article published on February 24, 2004 concerning the Respondent’s website, the Respondent redirected domain traffic to another website, “www.xwebx.com.” This site features a picture of a cartoon character from a cartoon series South Park, with the caption “I AM GOD OF THE SEA PEOPLE!! I AM MASTER OF THEIR GREAT SUNKEN EMPIRE!!!.” There is no other content on this site.
In early March 2004, the Complainant’s representatives contacted the Respondent to request that she transfer the domain name to the Complainant. The Respondent refused to do so.
On April 23, 2004, the Complainant filed the present Complaint.
5. Parties’ Contentions
The Complainant contends as follows:
(a) Although it is apparent that part of the name “Class 95 FM” is derived from the 95 MHz Frequency Modulation bandwidth on which the Complainant broadcasts, the Complainant contends that the name is a fanciful name invented by the Complainant. The Complainant also claims that Class 95 FM has consistently been voted by listeners to be Singapore’s No.1 English radio station and is heard by an average of about 313,700 listeners in Singapore each day. A copy of a media survey report conducted by AC Nielsen has been submitted in support of this contention. Members of the public would accordingly associate the radio station Class 95 FM with the Complainant and no other, and the Complainant has thus acquired common law rights over the mark.
(b) The domain name <class95.com> is confusingly similar to the trade and service marks owned by the Complainant notwithstanding the omission of the suffix “FM,” as this domain name is identical to the Complainant’s own operative domain name <class95.com.sg> save for the “.sg” reference. The Complainant also asserts that members of the Singapore public regularly refer to the Complainant’s radio station simply as “Class 95” without the “FM” suffix.
(c) The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name <class95.com> on the following grounds:
(i) The Respondent has not commenced any bona fide use of the domain name in relation to goods or services offered by the Respondent. The Complainant asserts that under Singapore’s Business Registration Act, all businesses must be registered prior to the commencement of any business activity. The Respondent registered a business on January 22, 2001 (after the subject domain name was registered on August 4, 2000) but this registration was terminated on September 26, 2002. The Complainant argues that there could thus be no use or demonstrable preparation to use the domain name for bona fide trade purposes either at the time of registration of the domain name or after September 26, 2002, since it would have been illegal for the Respondent to have conducted business without a business registration. For the period during which the Respondent’s business registration was in force, the Complainant was also unaware of any bona fide trade use, or preparation for trade use, by the Respondent in connection with the domain name.
(ii) The Respondent has not, to the Complainant’s knowledge and belief, been known by the domain name nor has the Respondent acquired any common law rights over the name. Broadcasters in Singapore have to be licensed by the Media Development Authority, and the Respondent holds no such licence. A search of the Registry of Companies and Businesses database also revealed that no company or business name containing either “Class95” or “Class 95” has been registered in Singapore.
(iii) The Complainant has acquired common law rights over the mark and name by virtue of its having used the same for more than 10 years prior to the registration of the domain name by the Respondent.
(iv) The Complainant has neither permitted the Respondent to use the mark and name nor is there any other connection between the Complainant and the Respondent.
(v) Up to the time the Complainant made contact with the Respondent by phone as well as by e-mail, the Respondent had not made use of the domain name for any legitimate purposes but had instead redirected traffic to the website of its competitor station, WKRZ91.3. The Complainant also relies on the Respondent not having claimed to be using the domain name for legitimate commercial or non-commercial purposes when interviewed by the press, or in her e-mail correspondence with the Complainant. In the press report of February 24, 2004 attached to the Complaint, headlined “Why’s another radio station at class95.com?”, the Respondent was reported as having claimed that a friend had used her credit card to register the domain name, but “she did not know what he did with the site and declined to give further details.”
(vi) The Respondent pointed the domain name <class95.com> to <xwebx.com> after the Complainant communicated with the Respondent, as described above. The Complainant argues that the cartoon “South Park” is not shown in Singapore but “it is commonly known” that characters from South Park regularly use “explicit language” that is “inappropriate” in the context of the Singapore cultural milieu.
(d) The domain name was registered and is being used in bad faith for the reasons set forth above, as well as the following:
(i) The Respondent’s redirection of traffic from <Class95.com> to the website of WKRZ91.3 was meant to disrupt the Complainant’s business and to divert traffic meant for the Complainant to another site or to confuse surfers that there is a connection between the WKRZ91.3 site and the Complainant’s site when in fact, no such connection exists.
(ii) Despite having been quoted in the newspaper report as having no knowledge of the domain name being registered in her name, she did not offer to make amends when contacted by the Complainant. The Complainant contends that if she had in fact made an honest mistake, the appropriate response would have been to either offer to de-register the domain name or transfer it to the Complainant. Furthermore, as the Respondent is a Singapore citizen, it was not possible or probable for her or her friend to claim that at the time of registration of the domain name, neither of them was aware of the Complainant’s rights and interest to the mark and name “Class 95” as the Complainant’s station is on air 24 hours a day and is famous in Singapore.
(iii) Almost immediately after the newspaper report was published, the Respondent amended the registration details of the subject domain name by deleting her first name, address, e-mail address and phone number. She substituted her first name with a set of initials and used a fictitious postal code. The Complainant contends these moves were made to deliberately frustrate attempts to contact the Respondent or at the very least, to fan confusion as to her actual identity and means of contacting her.
(iv) In changing the particulars of registration after the newspaper report appeared, the Respondent also began to use the domain name as an e-mail address. The Complainant argued that such use of the domain name as part of an e-mail address would create an impression that e-mails sent from that address originated from the Complainant or were associated with the Complainant. The use of such an e-mail address was intentional and calculated to mislead others, and such activity was calculated to disrupt, and was disruptive of, the Complainant’s business.
The Respondent contends as follows:
(a) The Complainant has no rights or legitimate interests in the domain name <class 95.com>, on the following grounds:
(i) As the Complainant registered the <class95.com.sg> ccTLD in January 2000, but not the gTLD <class95.com>, this indicated that the Complainant had no interest in the gTLD despite being available at the time the Complainant established its Internet presence.
(ii) This lack of interest was further supported by the Complainant having only registered “.sg” ccTLDs for its other stations’ websites. The Respondent also asserted that the Complainant’s radio station did not have a strong Internet presence, as traffic to the <class95.com.sg> ccTLD was redirected to the Complainant’s main website at “www.mediacorp.com.sg.”
(iii) The AC Neilsen report relied upon by the Complainant only concerned the listenership in 2003 and did not prove that the Complainant’s radio station had been successful before then, or that the Complainant had already established common law rights by being well-known in Singapore when the domain name in question was registered in 2000.
(b) The domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
(i) The Respondent registered the domain name on August 4, 2000, but the Complainant had only registered the “Class 95 FM” trade marks in Singapore in April 2003. The Complainant had as at August 2000 no protectable trade mark rights.
(ii) The combination of a generic noun and a number “Class” and “95” does not by itself denote a trade or service mark of the Complainant. “Class 95” is not a newly coined term and hence the Complainant cannot claim to hold exclusive rights in it. “Class 95” would ordinarily denote a particular category, system or school students of a particular year, rather than a particular company or mark.
(iii) The Complainant claims that the Singapore public regularly refer to the Complainant’s radio station simply as “Class 95” without the suffix “FM.” In all pages of the station’s website, the Complainant has never made any reference to itself as “Class 95,” and has always associated itself with the name “Class 95 FM.”
(iv) Although the Complainant had started operation of the radio station since 1990, there was no evidence that the station had been successful since then or that “Class 95 FM” was a well-known service mark in Singapore at the time or prior to the registration of the domain name in question. Hence, the Complainant had no rights to the service mark “Class 95 FM” until it was registered as a trademark in 2003.
(v) The term Class 95 is in common use by parties with no affiliation to the Complainant. A yahoo.com search on “class 95” yielded over 12,000,000 web pages having no affiliation with the Complainant.
(vi) The Complainant does not use an e-mail address associated with “Class95” as shown in the contact details page of its website. The Respondent has never received any complaints or enquiry from any customer or potential customer who claims to have been searching for the Complainant’s business through the domain name in issue since registration of the domain name.
(vii) No confusion is likely, particularly given that the Complainant’s other websites are all using the “.sg” ccTLDs and are all redirected to the Complainant’s main site at “www.mediacorp.com.sg.”
(c) The Respondent has rights or legitimate interests in respect of the domain name:
(i) The Respondent claims to have legitimate and substantial interests and rights in the domain name <class95.com> because the domain name was registered for a friend who had graduated from secondary school in 1995 and the intended use of the domain name was for a class alumni website. In support of this statement, a copy of an educational certificate of the Respondent’s friend was submitted as evidence.
(ii) The Respondent’s intention was to develop the domain name as a free website. There was no intent to register the domain name for commercial use, and hence the Complainant’s submissions based on the Respondent not operating a radio station or having a registered business in Singapore were irrelevant.
(iii) In the 44 months that the Respondent owned the domain name, the Respondent used the domain name primarily for e-mail, and the Respondent had plans to develop the website into a class alumni website in the future. Although the plan has not been executed, there is no direct evidence that Respondent’s plan is a sham. The Respondent relies on Hi Fibre Textiles (Sugoi) Ltd. v. Peter Anderson, eResolution Case No. AF-0232.
(iv) The domain name now points to the personal website of the Respondent. The fact that the Complainant found the content of the Respondent’s site to be objectionable is neither a necessary nor a sufficient condition for transferring the disputed domain name.
(d) The domain name has not been registered and is not being used in bad faith:
(i) The Respondent altered the registration details shown in the ‘whois’ output of the domain name to protect her privacy because the newspaper report had resulted in unsolicited e-mails and phone calls being made to her. The Respondent’s details were fully and accurately set out for more than three years before the newspaper report and this proved that the Respondent had a genuine interest and purpose in owning the domain name and had not intended to use it in bad faith.
(ii) Despite the Respondent’s contact details having previously been shown in the domain name registration details, the Complainant never attempted to contact the Respondent. This proved that the Complainant did not object to the Respondent’s use of the domain name.
(iii) The Respondent admitted to forwarding traffic from the domain name to the ‘WKRZ’ website. However, the Respondent had also been forwarding the same to several other unspecified sites over the years, and ‘WKRZ’, one of her favourite sites, was just one of them. There were no advertisements or submissions of the domain name to search engines, and the Respondent had only used it for personal emails and redirections to her favorite websites. The redirection to ‘WKRZ’ was promptly removed after the newspaper report, and before any attempts were made by the Complainant to contact the Respondent, to avoid any confusion.
(iv) Since the Respondent did not operate a business that was in competition with the Complainant’s, she did not gain any commercial interest or generate any revenue by “preventing the Complainant from registering the domain” or by redirecting the domain name to another site.
(v) The Complainant’s allegation that the Respondent “claimed that she had no knowledge of the site being registered in her name” was frivolous and misleading. The Respondent had only commented that her credit card had been used to register the domain name, but this did not imply that she had no knowledge of the registration being carried out. The domain name was registered for a friend who had graduated from school in 1995 and the intended purpose of the registration was to create a class alumni website. Since the registration of the domain name was for a legitimate purpose and not “an honest mistake” as alleged by the Complainant, the Respondent therefore saw no reason to transfer the ownership of the domain name to the Complainant when contacted by the latter.
(vi) The Respondent had been using the e-mail address associated with <class95.com> since registration of the domain name in 2000. The Complainant’s allegation that the Respondent had only begun using the email address associated with the domain name in question after the newspaper report was false. Also, the use by the Respondent of this e-mail address was not misleading as the Complainant itself did not use e-mail addresses associated with Class95.
(vii) The Respondent had registered over ten domain names, all of which are generic in nature. Seven of these domain names were identified in an exhibit to the Response, i.e., <2pg.net>, <98k.net>, <class95.com>, <jj8.net>, <nz8.net>, <x78.net>, <x98.net>. None was obviously identical to a recognized trademark. The Respondent relied on this to show that she was not in the “business” of registering domain names bearing registered trade/service marks.
(viii) The Respondent had never offered to sell the domain names in question and there was no evidence that the Respondent was motivated to attract users to her site for commercial gain.
(e) The Respondent also requested that the Panel make a finding of reverse domain name hijacking based upon various grounds, such as: that the Complainant was aware that it could not sustain a complaint under the Policy, as also demonstrated by the Complainant’s failure to contact the Respondent; misstatements and misrepresentations of material facts; failure of the Complainant to establish its rights in their mark by evidence; harassment of the Respondent by the submission of unsubstantiated arguments in knowing or reckless disregard of the likelihood that the Respondent possessed legitimate interests in the disputed domain name, so as to harass the Respondent into surrendering the disputed domain name to the Complainant; and intimidating the Respondent by contacting her without any attempt to determine any genuine personal interest or purpose the Respondent had in the domain name.
6. Discussion and Findings
Under the Policy, the Complainant has the burden of proving that each of the three elements in paragraph 4(a) of the Policy thereof is satisfied:
(i) the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant’s trademarks were only registered in 2003, some three years after the subject domain name had been registered. However, there is a considerable body of authority that a Complainant may rely on common law unregistered marks in establishing its rights under this limb - see e.g. The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050.
The Panel notes that whilst the individual components of the Complainant’s mark, “Class,” “95” and “FM” comprise relatively generic terms, the combination of these terms may be regarded as unique and distinctive. Furthermore, the Complainant’s radio station had been in operation for some 10 years before the registration of the subject domain name, and has been a leading English language radio station in Singapore. This fact cannot be seriously disputed by the Respondent. It is true that the evidence submitted by the Complainant as to the reputation and goodwill it enjoyed in the name “Class 95 FM” in 2000 and earlier, could have been more extensive and compelling. The Panel also recognizes that the AC Nielson report relied upon by the Complainant appears only to be a survey carried out in 2003. However, on balance, the Panel finds that as at the date on which the dispute domain name was registered, the Complainant had acquired sufficient goodwill and reputation in the mark “Class 95 FM” to be protectable at common law and that the Complainant is entitled to rely on these rights for the purposes of this limb.
The Panel also notes in this regard that broadcasting call letters can serve as trade marks, even if they are unregistered: see LIN Television Corporation v. Home In USA and Home In USA, Inc., WIPO Case No. D2000-0257, where the Complainant was held to have common law rights in its “WAVY 10” station name.
The Respondent has argued that as the Complainant has been identified and referred to as “Class 95 FM” in its own website, the omission of “FM” from the domain name materially differentiates the subject domain name from the Complainant’s marks.
The Panel is not persuaded by this. The similarities are too obvious to be ignored.
Indeed, the Panel notes that the thrust of the Straits Times newspaper article was the perceived association between the domain name <class95.com> and the Complainant caused by the similarity between the two names.
For the purposes of the comparison to be made under this limb of the UDRP, the Panel finds the Respondent’s domain name <class95.com> to be confusingly similar to the “Class 95 FM” name, trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is further required under paragraph 4(a)(ii) to prove that the Respondent has no rights or legitimate interests in the domain name.
Many Panels have recognized that proving that the Respondent lacks any rights or legitimate interests in the mark may be difficult, since it calls for the proof of a negative where the rights or interests at issue could be peculiarly within the knowledge of the Respondent. The Complainant’s initial burden on this element is therefore recognized as light, and it is sufficient that the Complainant demonstrates a prima facie case in order to shift the burden of proof to the Respondent (Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; Lucasfilm Ltd and Lucas Licensing Ltd v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.)
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. As the Respondent is not known to the Complainant, it has not licensed or otherwise permitted the Respondent to register the Domain Name. The Respondent has not secured a business registration under the Singapore Business Registration Act, nor has it secured a radio broadcast licence from the relevant authority.
The Panel finds that these arguments do not of themselves establish a sufficient basis for finding that the Respondent has no rights or legitimate interests in the domain name, for the Respondent may well have had a right or legitimate interest in using the domain name for non-commercial purposes, which will not require any of the licences referred to in the Complaint.
The Panel finds more persuasive the arguments that the Respondent has not made significant use of the domain name in the 44 months that it has been registered, the Respondent having redirected traffic to the website of the Complainant’s competitor station, WKRZ 91.3, and after newspaper reports highlighting this, further redirecting the domain name to yet another site featuring only a South Park cartoon character and a caption beneath it.
On balance, the Panel finds these arguments to be sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in the mark, such that the examination must now turn to the basis of the Respondent’s claim to having rights or legitimate interests in the mark.
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Respondent has not provided any evidence as to (i) and (ii), and has essentially argued that she had secured the domain name for the purposes of establishing a class alumni website for a friend of hers who had passed her secondary school examinations in 1995. The only evidence provided in support of this was her friend’s examination certificate.
The Panel is not persuaded by the evidence submitted by the Respondent. No other evidence has been produced of any discussions or other demonstrable preparations to establish a class alumni website.
Despite 44 months having elapsed since the domain name had been registered, the plan to establish the alumni website has, on the admission of the Respondent, never been executed, and the domain name has instead essentially been used for redirection to other sites (and e-mailing although no evidence of this was adduced). The Respondent has not provided any explanation for the delay in the execution of her intended plan.
A mere assertion that a Respondent intends to use the domain name does not establish such use: Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, nor can such use be found where a domain name is only used to link to another website: LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186.
The Respondent’s reliance on the Sugoi case cited above in arguing that an unexecuted plan is sufficient to confer rights to use the subject domain name is also misplaced. Indeed, the complainant in the Sugoi case has since filed a second complaint, Hi Fibre Textiles (Sugoi) Ltd. v. Peter Anderson, National Arbitration Forum Decision No. FA0403000243507, on the basis that the Respondent’s website at “www.sugoi.com” had not changed in any way after the first complaint filed 3 years previously (in defence of which the Respondent had argued he was “planning” to launch a website at the disputed domain name) – it remained a static website with a listing of links to other websites. The panel in the 2nd complaint held that the respondent’s inaction and passive holding of the website over the past three years was evidence of both illegitimate purpose and bad faith, and thus ordered the transfer of the domain name.
On the balance of the evidence, this Panel accordingly finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the domain name must have been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith,” namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 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 owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; 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.”
The Complainant argues that as a Singapore citizen, it was not possible or probable for the Respondent or her friend to claim that at the time of registration of the domain name, neither of them was aware of the Complainant’s rights and interest to the mark and name “Class 95 FM” as the Complainant’s station was and is on air 24 hours a day and is famous in Singapore.
Indeed, it would seem the Respondent was clearly aware of the Complainant’s station, since one of her justifications for registering the subject domain name in August 2000 was that the Complainant had registered the ccTLD <class95.com.sg> in January 2000 and since it did not register the gTLD at the same time, the Complainant was not interested in the gTLD.
The fact that the Respondent was aware of the Complainant’s mark and notwithstanding this, proceeded to register a domain name confusingly similar to the Complainant’s mark and the ccTLD is capable of constituting evidence of bad faith in the registration of the subject domain name: Infoglobo Comunicaçôes Ltda. v. Italo de Barros Naddeo, WIPO Case No. D2000-0533, where the respondent registered <oglobo.com> after complainant’s ccTLD registration of <oglobo.com.br>.
Furthermore, the Panel notes the subsequent lack of substantive use of the site and the Respondent’s redirection of traffic to the website of the Complainant’s competitor’s website. These acts suggest an intent on the part of the Respondent to disrupt the Complainant’s business and to divert traffic meant for the Complainant to its competitor, or to attempt to confuse surfers that there is a connection between the competitor and the Complainant’s site.
The Respondent asserts that the redirection to ‘WKRZ’ was promptly removed after the newspaper report, even before any attempts made by the Complainant to contact the Respondent “to avoid any confusion.” This itself is an acknowledgement on the part of the Respondent that her redirection could have caused confusion to members of the public.
Shortly after the appearance of the newspaper report, the Respondent also removed all of her whois contact information, and also ignored the Complainant’s approaches to her. She also thereafter redirected the domain name to yet another site without any substantive content.
The Panel also rejects the Respondent’s assertion that since the Complainant had not attempted to contact the Respondent over the 44 months that the latter held the domain name, the Complainant therefore had no objection to the Respondent’s use of the domain name.
For a defence based on acquiescence or estoppel to succeed, the Respondent must at least show that the Complainant was aware of the Respondent’s acts, and that the Respondent had relied on the Complainant’s inaction to her detriment. The use of the domain name by the Respondent has been entirely passive, and it is difficult to see what real “detriment” she has suffered as a result of the failure of the Complainant to object earlier: see also Starbucks Corporation and Starbucks U.S. Brands Corporation v. Duncan Freeman, WIPO Case No. D2003-0262.
It is also irrelevant that the Respondent “did not gain any commercial interest or generate any revenue” by “preventing the Complainant from registering the domain” or by redirecting traffic from the domain to a site other than the Complainant’s. The fact remains that the Respondent had deliberately redirected traffic from <Class95.com> to a competitor site and this was capable of disrupting the business of the Complainant and creating confusion. The Respondent is admittedly not a competitor of the Complainant. However, the list of bad faith factors in paragraph 4(b) of the Policy is illustrative, not exclusive, and there have been decisions where threats to disrupt a complainant’s business per se have been found to constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy: see The Regents of the University of New Mexico v. American Information Services, National Arbitration Forum Decision FA0002000094306, and Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.
The Panel accordingly finds that the Respondent has registered and used and is using the subject domain name in bad faith. It also follows from this that the Panel finds untenable the Respondent’s request that the Complaint be found to constitute an attempt at Reverse Domain Hijacking.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <class95.com> be transferred to the Complainant.
Dated: June 10, 2004