WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Data Group, Inc. v. K McGovern
Case No. D2005-0960
1. The Parties
The Complainant is International Data Group, Inc., Framingham, Massachussetts, United States of America, represented by Venable, LLP., United States of America.
The Respondent is K. McGovern, Kilkenny, the Republic of Ireland, representing himself.
2. The Domain Name and Registrar
The disputed domain name <pc-world-online.com> is registered with Direct Information Pvt. Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2005. On September 9, 2005, the Center transmitted by email to Direct Information Pvt. Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On September 10, 2005, Direct Information Pvt. Ltd. dba Directi.com transmitted by email to the Center its verification response. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2005. The Response was filed with the Center on September 29, 2005.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 17, 2005. 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.
On October 13, 2005, the Complainant transmitted a proposed supplementary filing to the Center entitled Complainant’s Reply to Respondent’s submission and on October 14, 2005, the Respondent transmitted a proposed supplementary filing entitled Re: Complainant’s Response. The question therefore arises whether either or both of the proposed supplementary filings will be accepted by the Panel. The Panel will deal with this question after setting out the factual background to the proceedings and the contentions of the parties.
4. Factual Background
The Complainant is an American company founded in 1964, and a provider of services relating to computers and information technology. In 2004, its revenue was 2,46 billion United States dollars. Among its activities is the publication in some 85 countries of over 300 magazines and newspapers. Two of those magazines are PC World and GamePro. The company also has some 400 websites offering technology information and has registered many domain names including <pcworld.com>, <pcworld.com.cn>, <pcworld.idg.com.au> and <pcworld.be>.
The Complainant has registered PC WORLD ONLINE and PC WORLD as trademarks in the United States of America and it relies on the following registrations in the United States Patent and Trademark Office:
(a) PC WORLD ONLINE, Reg. No. 2,278 042 registered on September 14, 1999, for ‘Providing a website for the transfer and dissemination of information relating to information technology; online services in the nature of a newsletter in the field of information technology delivered on a computer network by e-mail; providing on-line newsletters, magazines, journals and newspapers in the field of information technology’;
(b) PC WORLD ONLINE TOP 400, Reg. No. 2, 284,627 registered on October 12, 1999, for ‘providing a website in the field of computers, computer software, communications and information technology, featuring a buyers’ guide for goods in these fields;’
(c) PC WORLD, Reg. No. 1, 498,563, registered on August 2, 1988, for use as a trade journal;
(d) PC WORLD, Reg. No. 1, 883,550, registered on March 14, 1995, for books relating to computers, computing and computer software;
(e) PC WORLD, Reg. No. 1, 923, 417, registered on October 3, 1995 for computer programs in the nature of CD-ROMS, disks and cassettes containing information relating to the field of computers, computing, computer software, multimedia and information technology; and
(f) PC WORLD, Reg. No. 2,252,668 registered on June 15, 1999, for ‘providing a website for the transfer and dissemination of information in the fields of computers, computing, high technology, communications and information technology’.
The Complainant also relies on registered trademarks that it has in some 180 other countries in the term PC world. Copies of these registrations are set out in Exhibit B and new proposed Exhibit N to the Complaint and are verified by the Complainant’s attorney.
The Respondent’s online publishing business is conducted at Kilkenny in the Republic of Ireland. He registered the domain name <pc-world-online.com> on June 5, 2004, to conduct its business of ‘publishing a wide range of information relevant to computers and technology, not constrained by platforms, brands or manufacturers’.
It is common ground that the Respondent’s website “www.pc-world-online.com” displays links to other third party sites including a link to another website “www.netmagazines.com” which carries advertisements for subscriptions to magazines including PC World and GamePro.
5. Parties’ Contentions
The Complainant contends that the domain name should be transferred to it because it is able to make out a case under all three of the elements set out in Paragraph 4(a) of the Policy. The Complainant states, first, that the domain name is confusingly similar to its trademark PC WORLD, that the Respondent has no rights or legitimate interests in the domain name and that the Respondent has registered and used the domain name in bad faith. In support of these contentions the Complainant says that the bulk of the domain name consists of the entirety of the trademark and that the Respondent has merely added are two hyphens and the generic term ‘online’, which, because the trademark is a famous mark, does not detract from the confusing similarity between the two. It also says that the confusion is exacerbated because the domain name resolves to the Respondent’s website, where the Respondent is offering the Complainant’s magazines PC World and GamePro for sale. The Complainant also says that the Respondent has no right to the domain name <pc-world-online.com> because he has no trademark anywhere in that name and because his use of the domain name cannot be legitimate when it is using it to lure consumers to its own website. Finally, the Complainant contends that the Respondent registered and used the domain name in bad faith, for the Respondent must have known of its trademark and that consumers would assume that its website was PC World’s website, thus creating the likelihood of confusion that the goods and services being promoted on the site were those of the Complainant.
The Respondent contends that, in the Republic of Ireland, the Complainant’s trademark PC WORLD applies only to print media and not to online services and that he, the Respondent, was not aware of the Complainant or its trademark rights before the dispute arose. He then contends that the Complainant has not shown that he had knowledge, constructive or otherwise of the trademark. In any event, the Respondent says, the domain name is not identical or even similar to the trademark and certainly not confusingly similar to it, for they are different expressions and the constituent words in the domain name are all generic. The Respondent contends that he chose the domain name because it consisted of generic words. Moreover, the fact that the three generic words of the domain name are separated by hyphens makes a further distinction from the trademark. The Respondent argues there can be no confusion with the Complainant’s mark that comes from displaying PC World and GamePro on its site and that no consumer would be confused, for the Respondent does not sell that or any other magazine, but simply displays links to services like “www.netmagazines.com” where such items may be bought. Finally, the Respondent says that it did not register and has not used the domain name in bad faith. In support of this position, he makes detailed criticisms of the Complainant’s submissions and also says that there is no evidence of the sale or marketing of the magazine PC World in the Republic of Ireland, that the Complainant does not have ‘an Irish or a UK website’ and that accordingly it cannot be said that there was an intention to attract consumers by creating a likelihood of confusion with the Complainant’s products, for the Complainant, its products and the trademark PC WORLD were not as famous as the Complainant contends.
It is convenient to deal here with the supplementary submissions filed by both the Complainant and the Respondent.
The Policy and Rules do not provide for an automatic right for the parties to make further submissions in addition to the Complaint and the Response. However, the Panel has a sole discretion given to it by paragraph 12 of the Rules to accept or reject such submissions which, of course, the Panel must do judicially and having regard to all of the circumstances. The principles that will be applied when a panel is asked to admit supplementary filings are discussed in a series of UDRP decisions conveniently set out in the Legal Index to WIPO panel decisions found on its website “http://www.wipo.int/amc/en/cgi-bin/domains/search/legalindex?lang=eng”. A convenient statement of those principles is to be found in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 where it was said:
‘However, it is now well-established that a supplemental filing will rarely be considered. In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 the panel stated as follows:
“As is by now well established the Rules do not provide any right of reply. Parfums Christian Dior S.A. v Jadore, WIPO Case No. D2000-0938. Although supplemental submissions may be accepted to address new legal developments, see e.g., Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, or to rebut unexpected factual assertions, see e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237, they should be allowed sparingly.”
In the present case it is clear that the initial stimulus for the additional filings came from the fact that the Complainant did not serve on the Respondent a full and complete copy of Exhibit B to the Complaint. The Complainant had alleged that it owned many trademarks in the name PC WORLD both in the United States of America and other countries and it referred specifically to the numbers of three US trademarks that it relied on. The Complaint referred to Exhibit B, where evidence of these matters was to be found. However, the copy of Exhibit B filed with the Center and apparently the copy also served on the Respondent did not contain any of that evidence, but only one photocopied page of a document in the Spanish language which seemed to be from the Spanish Office of Patents and Trademarks, but which did not bear the expression PC WORLD anywhere.
What was not contained in Exhibit B was more significant than what was in it, for the Exhibit did not contain any evidence of the US trademarks relied on or those held in any other country. It is also clear from the Respondent’s Response that he was put at a disadvantage in presenting his defence by these apparent deficiencies in the material of the Complainant. This encouraged him to search the Irish and United Kingdom trademarks registers to see what trademarks were actually held by the Complainant and that lead to his making a submission on the marks held and not held by the Complainant in both countries and to his subsequent contentions that the Complainant did not have any rights in the trademark as claimed.
At that stage, the material of the Complainant was deficient and it sought to remedy this deficiency by submitting a Reply as a supplementary filing. It annexed to this Reply a new Exhibit B which included the missing page of the Spanish document which now carries the name PC WORLD. It also exhibited for the first time copies of many trademark registrations that it had obtained around the world in the name PC WORLD. The Reply also relied on and exhibited for the first time, three other United States trademarks, at least one of which is of real significance as it is in the name PC WORLD ONLINE.
However, the Reply also contains the Complainant’s reply to submissions made by the Respondent, which it says are themselves new. Those new submission were said to be an admission for the first time that the Respondent displays the magazines PC WORLD and GamePro on his website, an admission that the Respondent has linked his website to “www.netmagazines.com” where the magazine could be ordered, an admission that he is in the same business as the Complainant and a series of evidentiary matters said to stem from those admissions.
The Respondent then lodged his own reply. He contended that much of the Complainant’s Reply was new and he objected to the Reply being allowed in at all. To preserve his position, however, he understandably went on to reply to the new matters raised by the Complainant.
Clearly it would have been better if all of the Complainant’s proof had been included in and exhibited to the Complaint. That would have avoided the necessity for much of the Response and in turn much of the Complainant’s Reply. However, it is also true that the Complainant was replying to some matters that were at least new to it. Equally, if the Complainant is to be allowed a supplementary filing for any reason, the Respondent must be given an opportunity to reply to it.
Having read and considered all four documents carefully, the Panel is of the view that only by allowing the additional filings will all of the facts be before the Panel and only by that means can a rational decision be made in this matter. Without the supplementary filings, the proceedings would be conducted in a vacuum. Both parties are therefore replying to ‘unexpected factual assertions’ within the principles referred to in DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers (supra) and the case should be seen as covered by that principle. That is the only justification for allowing the Complainant to submit and rely on its supplementary filing and, that being done, the Respondent must be allowed to reply to it.
The Panel will therefore allow both supplementary filings. Parties and their advisers, however, should remember that the nature of UDRP proceedings is such that they should submit all of their evidence in the Complaint and Response respectively and that supplementary filings will in general not be allowed.
One of the consequences of allowing the supplementary filings is that the proceedings henceforth must also consider the Complainant’s trademark PC WORLD ONLINE which was first raised in the Complainant’s Reply.
6. Discussion and Findings
By virtue of paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The enquiry under paragraph 4(a)(i) of the Policy is a somewhat narrow one. It requires the Complainant to show by acceptable evidence that it has rights in a trade or service mark and that the domain name is either identical or similar to it and, if the latter, that the similarity is confusing. It is clear that the Policy requires this to be done by a straight comparison of the words and numbers in the domain name and the trademark.
Applying that test, the Panel concludes that the domain name <pc-world-online.com> is confusingly similar to each of the Complainant’s United States trademarks PC WORLD ONLINE and PC WORLD set out in detail above. That is so for the following reasons. First, the trademark covered by Reg. No. 2, 278,042 is for PC WORLD ON LINE which is identical to the domain name except for two hyphens and the suffix ‘.com’. Neither of those variations can rebut an otherwise identity or similarity. Secondly, the substance of the domain name consists of the entirety of the various PC WORLD marks. Thirdly, the addition in the domain name of the word ‘online’ does not detract from or dilute the presence of the trademark PC WORLD; the focus of the reader or the listener is still on a domain name whose substance is ‘PC World.’ Fourthly, the addition of added words can obviously on occasions so qualify a trademark that the substance of the domain name is no longer the same as the mark. But in the present case, the additional word is ‘online’ and the subject of the trademark is computers and the notional world that they inhabit; to add that computers and their world are online is surplus age and stating the obvious and does nothing to qualify or dilute the use of the trademark. Finally, it has been held many times that it does not absolve a domain name registrant on this issue if, as in the present case, it takes the entirety of a trademark and then adds a descriptive or generic word that simply describes the business or trade of the trademark owner: Rada Mfg.Co. v. J. Mark Press, WIPO Case No. D2004-1060. In the present case, although the parties do not agree on the fame of the Complainant and its mark, nevertheless the evidence shows that the Complainant operates internationally and also that a substantial part of its business is using the trademark for the provision of online services, including the use of online services to sell its publications. The domain name therefore tends to suggest that it is the online business of the trademark owner that is being invoked in the domain name. Similarly, in one of the cases cited by the Complainant, International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398, which concerned the same Complainant, the Panel observed:
“The disputed domain names are made up of the Complainant’s mark and the generic word ‘download’. The Panel finds that the addition of the word ‘download’ to the Complainant’s mark PC WORLD does not serve to distinguish the Respondent’s domain names from the Complainant’s mark. Instead, the Panel accepts the Complainant’s submissions that in the present case, the addition of the generic word ‘download’ to its widely known mark PC WORLD is likely to confuse customers and cause them to believe mistakenly that a domain name using PC WORLD in connection with a website that discusses computer software, and uses the Complainant’s trademarks is associated with the Complainant.”
That decision is analogous to the present case and the Panel is of the view that the principle enunciated in it should be applied.
Likewise, in Myer Stores Limited v. Mr David John Singh, WIPO Case No. D2001-0763, where the domain name had been created by taking the trademark MYER and adding ‘online.com’, the Panel observed: “… the disputed domain name incorporates the whole of the Complainant’s well-known trademark MYER and is followed by a descriptive word denoting a modern form of communication and trading with which customers and others familiar with the Complainant would expect the MYER mark to be or to become associated. Thus the disputed domain name is likely falsely to convey to Internet users an association with the Complainant that does not exist.” See also, as further examples of the same principle when “online” was added to a trademark: Dixon’s Group Plc v. Mr. Abu Abdullah, WIPO Case No. D2000-1406, Dixons Group Plc v. Mr. Abu Abdullah, WIPO Case No. D2001-0843 and Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447.
The Respondent has argued that the Complainant’s trademarks apply in the Republic of Ireland only to the print media and not to online services, as the Complainant’s only Irish trademark is so limited. The Internet is not divided into classes as the trademark registrations. It is irrelevant for the purpose of the first element of the Policy in which class the trademark is registered, moreover it is clear that, as the internet itself is international, the Policy is also to be applied internationally and if the Complainant can establish a trademark anywhere, it is enough to meet the first requirement. The Complainant’s trademarks in the United States of America and its many trademarks elsewhere, more than meet that requirement.
The Complainant has made out the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
If a complainant can make out a prima facie case that a respondent has no rights or legitimate interests in the domain name, the onus shifts to the respondent to prove on the balance of probabilities that it does have such rights or legitimate interests. See Compagnie General des Matieres Nucleaires v. Greenpeace Int’l., WIPO Case No. D2001-0376 and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
In the present case, the Complainant has made out a prima facie case by showing that the Respondent is using the Complainant’s PC WORLD ONLINE and PC WORLD trademarks in a confusingly similar domain name, <pc-world-online.com> and that it is using the domain name and the corresponding website to provide similar technology news and information to that provided by the Complainant and to enable consumers to buy two of the Complainant’s magazines, PC World and GamePro without its permission and other goods and services such as publications and software downloads that are not the Complainant’s. If that prima facie case is true, it means that the Respondent’s conduct is misleading and that he has been making an improper use of the domain name.
In reply to the prima facie case, the Respondent says that he has a ‘perfectly legitimate interest’ in the domain name, as he registered it and built his website around it as part of his legitimate online publishing business.
The Panel accepts that the Respondent conducts an online publishing business and, that being so, it is understandable that the Respondent would take this to mean that he had a legitimate interest.
However, the proper enquiry on this issue is not whether a respondent is conducting a legitimate business, but whether he has a right or legitimate interest in the domain name itself; thus, a respondent might have a legitimate business and yet be obliged to conduct it under a different name from the complainant’s trademark. For that reason, it has long been held that the mere fact that a respondent has used the domain name to set up a business is not sufficient to show that it has a right or legitimate interest in the domain name. The Panel must therefore reject the initial ground on which the Respondent relies.
On the other hand, a respondent may still be able to show that his interest in the domain name itself is legitimate. The Policy shows how this may be done and sets out three criteria in paragraph 4(c), any one of which a respondent may try to use to establish a right or legitimate interest in the domain name. They are that:
(i) before any notice to the respondent of the dispute, its 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) the respondent has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The respondent may also rely on any other evidence in addition to that enumerated in paragraph 4(c) that shows such a right or legitimate interest.
There is no evidence to suggest, for the purposes of paragraph 4(c)(ii), that the Respondent has been commonly known by the domain name, so that sub-paragraph need not be pursued further.
Sub-paragraphs (i) and (iii), however, raise more substantial questions and show the fundamental differences between the parties. The Complainant says that the Respondent’s offering of goods and services via his domain name is not bona fide and that his use of the domain name is not legitimate because he has been trading on the Complainant’s name and attracting consumers to the Respondent website by misleading them into believing that they were using the Complainant’s domain name and entering it’s website. Alternatively, Complainant says that Respondent was out to disrupt the Complainant’s business.
The Respondent replies that the Complainant’s use of the PC WORLD mark in the Republic of Ireland is ‘not high profile’, that it is not actively promoted in the Republic of Ireland, that he had never heard of the Complainant before the dispute arose, was not aware whether or not the Complainant had rights in the PC WORLD mark and did not have notice, constructive or otherwise, of that fact. The Respondent also makes the point that the natural place for consumers to look if they were minded to visit the Complainant’s website would be to use the domain <pcworld.com> and that it is ‘insulting to consumers’ to suggest that the display of PC World and GamePro on the Respondent’s website was ‘likely to lead consumers to believe the site belongs to or is associated with complainant…’ when it also displayed 23 other titles not published by the Complainant.
The resolution of these two contending positions will determine the outcome of most of the issues in this proceeding. If the Respondent’s interpretation of events is accepted, its offering of goods on the website is bona fide for the purposes of Paragraph 4(c)(i) of the Policy and its use of the domain name is ‘legitimate’ for the purposes of Paragraph 4(c)(iii).
The Panel has the task of resolving this issue having regard to the balance of probabilities. Applying that principle, the Panel finds that it was more probable than not that when the Respondent registered the contentious domain name and subsequently whilst he has been using it, he knew of the trademark PC WORLD, that the owner of the trademark published the magazines PC World and GamePro and that there was a likelihood that some consumers would be attracted to the Respondent’s website, believing that it was the website of the owner of the trademark and that the goods and services promoted on the website were those of the trademark owner. Offering goods and services in this manner is not bona fide and the use of the domain name for that purpose is not legitimate. The reasons for this conclusion are as follows:
The PC WORLD ON LINE and PC WORLD trademarks were all registered and well-entrenched by the 1990s, and long before the domain name was registered. It is therefore clear that trademark searches would have revealed the fact of registration, the worldwide extent of those registrations and the interest of the Complainant in them. In this regard, it is significant that the Complainant owns over 180 trademark registrations that consist of the PC WORLD mark. Copies of many of them are contained in Exhibit B to the Complaint and new Exhibit N reinforces the longevity and extent of the United States registrations. As well as the United States trademarks, the Complainant also owns the PC WORLD trademark in The Republic of Ireland where the Respondent conducts his business. The Respondent bases part of his case on the fact that the Complainant’s registration in the Republic of Ireland is only for Class 16 ‘which includes print media, but does not include internet services’ and that there are other registrations for PC WORLD in the Republic of Ireland in the name of another company. He has produced a useful Exhibit to his Response that relates to those matters. However, the Exhibit also shows that the Complainant was first in time with its registration in the Republic of Ireland, that it registered the mark in 1995, and that its full name is set out in the registration. The Exhibit shows that the information is currently available to the public and it was presumably available to the public and to the Respondent in 2004, when the domain name was registered.
Moreover, the Complainant’s registration of the mark is in fact for ‘Publications relating to computers, computing, computer software and information technology’ which seems as clear an announcement as could be devised that the Complainant itself, from 1995, in the Republic of Ireland, owned a trademark in the name PC WORLD in respect of publications on those subjects.
In addition, the evidence is that the Complainant has had an extensive presence on the Internet through its 400 websites offering technology information. One of those sites is “www.pcworld.com” which claims to have an average of over 5 million unique visitors per month and which carries reviews of technology products, pricing information, technology news, and what is described as ‘an extensive library of downloads including carefully evaluated freeware and shareware, interactive tools, and free e-newsletters’.
Taking all of this evidence together, the Panel is obliged to conclude that at the time the Respondent registered the domain name, the Respondent most likely knew of the existence of the trademarks, in the Republic of Ireland and elsewhere and of the Complainant’s ownership of them and similar notice that the trademarks related to services through the internet and publications in the same field as the Respondent intended to promote and did in fact promote on his website after the domain name was registered.
The Respondent and anyone in his line of business of online publishing must have known or should reasonably have appreciated that in registering the domain name <pc-world-online.com> it was appropriating world-wide and very prominent marks in this field and that even by adding the word ‘online’ to the PC WORLD mark it was not distinguishing the domain name from the mark in any real or meaningful way, but merely asserting that PC WORLD operated online, which is common knowledge.
From that point onwards, it was likely that the website would attract at least some consumers looking for PC WORLD. The Respondent is, of course, correct in saying that some consumers would type the Complainant’s own web address, <pcworld.com>, and not <pc-world-online.com> if they were looking for the owner of the trademark. But the word ‘online’ is so much a part of the same nomenclature and so intimately associated with computers and the use of the internet and its milieu that it is not only possible, but likely, that at least some consumers would add the word ‘online’ to the domain name if they were seeking the computer and business that operated under the name PC WORLD and the services and publications for which it was known.
Moreover, some consumers at least, although of course not all, would be convinced that they had arrived at the PC WORLD site when they saw the two magazines of the Complainant being promoted there. When one of them is actually titled PC WORLD, it is not only probable but almost certain that some consumers would assume that they had reached the PC WORLD website.
The Respondent must also be presumed to have known of both of the magazines PC World and GamePro as he promoted them on his own website. This must be so, even if he also promoted other publications on his website. Indeed, it is hard to believe that the Respondent did not know the publisher of the magazines promoted on his own website or at least their agents or distributors. He could certainly have ascertained that fact by contacting “www.netmagazines.com” to whom he had apparently assigned the actual task of handling subscriptions.
In this regard there is a further disagreement between the parties that the Panel must resolve. The Complainant says that the magazine PC World is the world’s largest computer publication, ‘reaching’ 36 million buyers in 65 countries. Its supporting evidence in the form of a statement by Ms. McGee states that the hard copy of the magazine PC World ‘has subscribers in the Republic of Ireland and is also sold in the Republic of Ireland on newstands’. The Respondent says in reply that PC World is not actively promoted in the Republic of Ireland and he rightly draws attention to the fact that Ms. McGee’s statement tells us nothing about the number of subscribers or sales. In this regard it is significant that the Complainant publishes another similar magazine in the Republic of Ireland, namely PC LIVE. The evidence is not entirely satisfactory, but the Panel is left with the bare facts that PC World is sold and subscribed to in the Republic of Ireland and that the Respondent has promoted it through his website by means of a link to <netmagazines.com> where the magazine is clearly displayed. The Respondent must therefore be fixed with some degree of knowledge of the presence of the magazine in the Republic of Ireland.
The conclusion must therefore be drawn that the Respondent has been using the Complainant’s mark PC WORLD ONLINE, with the minor addition of two hyphens and also the Complainant’s mark PC WORLD with the minor additions of the word ‘online’ and two hyphens, to sell the Complainant’s own products and other products and to offer the same or similar services as the Complainant.
There is also some force in the allegation by the Complainant that “www.netmagazines.com” is a United States of America website and that, at the Respondent’s behest, <netmagazines.com> is selling the Complainant’s publication PC World not only into the Irish market, but into the United States market as well and presumably beyond. It would seem that this, even if unintentionally, is being aided by the Respondent in that consumers in any country, the Republic of Ireland or anywhere else, who type “www.pc-world-online.com” into their computers and who then choose to subscribe to PC World will be directed to “www.netmagazines.com”. The consequences of that process may not therefore be confined to the Republic of Ireland.
Finally, this case is not one where the domain name registrant can claim he is a reseller of trademarked goods and hence that his rights or legitimate interests in the domain name comes from that status, a right confirmed in such cases as Oki Data Americas,Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and discussed in the helpful WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The present Respondent falls well outside that principle, first because he claims that he is not selling anything at all, but simply putting people in contact with “www.netmagazines.com” where they may buy magazines if they wish and, secondly, because he is clearly offering goods and services not covered by the trademark as well as two magazines that are. It was one of the conditions laid down in Oki Data and followed in other cases, that ‘…the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods.’ See: Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447. That principle is particularly appropriate in the present case as the Respondent’s website promotes ‘other goods’ such as telephones and cameras and it also solicits investment capital.
In view of the above findings of fact, the Respondent has not been able to show that its offering of goods or services was bona fide within paragraph 4(c)(i) or a legitimate use of the domain name within paragraph 4(c)(iii) of the Policy. The Complainant has therefore established the second element, that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third element that the Complainant must establish is that the Respondent both registered and is using the domain name in bad faith. Paragraph 4(b) lists four circumstances, the proof of any one of which by the Complainant will satisfy the requirement that the domain name has been registered and used in bad faith.
The Complainant relies on all four of the circumstances.
The Panel is not satisfied that a case has been made out under any of sub-paragraphs 4(b)(i)–4(b)(iii) as there are simply no facts to justify such findings on the balance of probabilities.
The issue of sub-paragraph 4(b)(iv), however, is a different matter. Both sides have put conflicting arguments and evidence and the Panel has therefore had to apply to that material the two principles used to resolve such conflicts, namely that the onus is on Complainant to prove every element of its case including the present element and that the standard of proof to be applied is the balance of probabilities. Applying those principles, the Panel’s conclusion is that Respondent’s conduct comes within the provisions of sub-paragraph 4(b)(iv) of the Policy.
Applying the words of paragraph 4(b)(iv), the Respondent, first, has clearly registered and used the domain name; secondly he has intentionally used it to attract users to his website “www.pc-world-on-line.com” or to another online location, “www.netmagazines.com” and, thirdly, the whole project is clearly part of a business and must be one that is being undertaken for commercial gain. The remaining and most contentious issue is whether this activity has been engaged in by creating a likelihood of confusion with the Complainant’s marks as to its association with the Respondent’s site or the products being offered on it.
The following facts and observations support the conclusion that, within the meaning of paragraph 4(b)(iv) of the Policy, the conduct has been engaged in with the intention of creating such a likelihood of confusion:
(a) as the Panel has already found, it was more probable than not that when the Respondent registered the contentious domain name and subsequently whilst he has been using it, he knew of the trademark PC WORLD, that the owner of the trademark published the magazines PC World and GamePro and that there was a likelihood that consumers would be attracted to the Respondent’s website, believing that it was the website of the owner of the trademark and that the goods and services promoted on it were those of the trademark owner;
(b) as the Panel has also found, the PC WORLD ONLINE and PC WORLD trademarks had been well-established and entrenched by the 1990s and long before the domain name was registered and the number and provisions of those marks could easily have been established by searches.
(c) in particular, the fact that the Respondent promoted or allowed to be promoted on his website two of the Complainant’s publications, one of which is actually called PC World, is highly persuasive evidence that the Respondent knew of the magazine, that its name was similar to his domain name and that he was content to allow consumers believe that his website was associated with the publisher of the magazine and that it endorsed the website and approved or sponsored its contents.
Indeed, as the panel observed in Deutsche Post AG v. MailMij LLC., WIPO Case No. D2003-0128, the conclusion must be reached that the Respondent ‘… will have known that, as the Complainant contends, there would be a very real likelihood that Internet users would assume the Respondent’s service under the Domain Name to be in some way associated with the Complainant…’. It must also be concluded that this was done for a commercial purpose.
The Panel has also taken into account that the Respondent had no permission to use the name, that the diversion of users to “www.netmagazines.com” is at least in part a diversion to a competitor of the Complainant and that the Respondent could have chosen any name other than the Complainant’s trademark for his domain name but did not do so.
Conduct such as the Panel has found in the present case has been regarded as bringing a case within the meaning of bad faith in paragraph 4(b)(iv) of the Policy, of which the following cases are examples: Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; and IHC, Inc. and Nordstrom, Inc. v. John Zuccarini, WIPO Case No. D2001-1260.
The Complainant has therefore established the third element required.
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, <pc-world-online.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: October 31, 2005