WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Private Media Partners v. Martin Hallier
Case No. D2007-0325
1. The Parties
The Complainant is Private Media Partners, Collingwood, Victoria, Australia, represented by Omond & Co., South Melbourne, Victoria, Australia.
The Respondent is Martin Hallier, Burwood, Victoria, Australia and Attn: CRIKEY.COM, c/o Network Solutions, Herndon, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <crikey.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2007. On March 7, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 7, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 March 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2007, and the Respondent was so informed in the formal notification. The Respondent did not submit any Response within that time. Accordingly, the Center notified the Respondent’s default on April 5, 2007. That day the Respondent communicated with the Center, saying he had been on a 12-day fishing trip from March 15 to March 26, 2007, that he totally rejected the Complainant’s assertions and that he sought a 12-day extension of time within which to submit his Response. The Center replied the same day, referring to that part of the default notification which makes clear that the Panel has discretion to consider a late Response. No late Response has been received.
The Center appointed Alan L. Limbury as the sole panelist in this matter on April 18, 2007. 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
In the absence of a Response, the Panel accepts the following facts, asserted in the Complaint or contained in the exhibits to the Complaint, as having been established.
The Complainant, a partnership of four persons, conducts an online news publication business under the name “Crikey”, having purchased that business in February 2005, from its previous owner, Mr. Stephen Mayne, who had operated it since March 2000. The business consists of a daily email sent free of charge to the Complainant’s database of 32,000 recipients and a website at “www.crikey.com.au” containing news reported in the daily emails, some of which is available only to paying subscribers, of which there are approximately 12,000. The website receives an average of close to 18 million hits and over one million page views per month.
In March 2007, Wikipedia described “Crikey” as an independent Australian email-based reporting service, well known in Australian political, media and business circles, with the mainstay of its coverage being its political and business commentary.
On February 7, 2007, the Complainant applied to register CRIKEY as an Australian trademark (Application No. 1159815) for electronic publications including those sold and distributed online in Class 9.
The disputed domain name was registered with Network Solutions on September 22, 1997, by a Mr. Smith, who is based in Seattle. Between August 2000 and June 2002, there was a “free re-direct” arrangement between Mr. Smith and Mr. Mayne, under which a link to the “www.crikey.com.au” web site was placed on the “www.crikey.com” web site.
In August 2002, Australia’s best read national magazine put ‘crikey.com’ on its front cover, in mistaken reference to Mr. Mayne’s CRIKEY publication.
Over several months, Mr. Mayne negotiated either to buy the <crikey.com> domain name or to lease the “www.crikey.com” site from Mr. Smith, but these negotiations were unsuccessful and in October 2002, Mr. Smith sold the disputed domain name to the Respondent for US$7,500. Shortly before the transfer was complete, Mr. Smith reported to Mr. Mayne that “the buyer didn’t want to be put in contact with you”.
On October 28, 2002, Mr. Mayne emailed Mr. Smith:
“Well there’s a surprise. You’ve sold it to someone in Melbourne who is obviously going to try and pass themselves off as us and trade on our coat tails”.
Shortly thereafter, Mr. Mayne published an article in his newsletter entitled “Chasing Crikey.com” in which he described the Respondent as “an Australian with bad intentions”, mentioned that “everyone continues to call us by the wrong name” and quoted a subscriber saying “You are known as Crikey.com” and suggesting WIPO arbitration “rather than have to pay a fortune for the crikey.com name”. This prompted the Respondent, on November 20, 2002, to publish an ‘open letter’ to Mr. Mayne, which began:
“The only fact contained in your short article is that I am Australian. The crikey.com ‘global’ domain name was purchased in good faith from Mr. Smith after several weeks of dialog. The website under-development is being hosted by a US-based server (Florida), since potentially this is the target market. We have no intention of publishing a newsletter, gossip column, or trading on your coat tails…
…If we had “bad intentions” then we would not have continued to manually forward any misdirected email.”
The Respondent then posted his ‘open letter’ on the “www.crikey.com” website, together with correspondence between himself and Mr. Smith and correspondence between Mr. Smith and Mr. Mayne prior to the sale to the Respondent. That was the sole content of the Respondent’s website from November 25, 2002 until June 6, 2003, when it was replaced by a web page entitled “Crikey…it’s for sale”, illustrated by a picture of the well-known wildlife personality Steve Irwin (since deceased) holding a crocodile, with a small disclaimer of any association with Mr. Irwin. Mr. Irwin’s signature exclamation was Crikey! The page announced that the disputed domain name would soon be listed for sale by online auction at an asking price of US$45,000.
That page remained substantially unchanged until it was replaced on March 14, 2006, by reproductions of and commentary on the “Danish cartoons”, originally published on September 30, 2005 in the Danish newspaper Jyllands-Posten and which prompted violent protests in the Muslim world and debate as to whether the cartoons were blasphemous to people of the Muslim faith or a legitimate exercise of the right of free speech. The website included an Australian flag and referred to ‘the Australian media’. By the time the material was published on the Respondent’s website, the global furor had seen embassies burned and people killed.
On March 21, 2006, Diana Gribble, the publisher of the Complainant’s CRIKEY publication and one of the partners, by email to ‘[the Respondent]@hotmail.com’, noted “the confusion that regularly arises between <crikey.com> and <crikey.com.au>” and asked the Respondent to take the content down because it “has the capacity to incite physical violence against my staff”. That material was not removed and at the time of Decision remains the sole content of the “www.crikey.com” website.
An investigation report dated February 9, 2007, conducted in Australia on behalf of the Complainant, concluded: “it cannot be established that Martin Hallier is a real name”. Searches of numerous national and state databases for that name drew a blank. The telephone number of the Respondent as appearing in the domain name registrant details is the number of an unrelated business which has no knowledge of the Respondent. There is no “Main Street” in Burwood, Victoria, the name of the street specified in those registrant details. The only references found to the Respondent were Internet references to him as registrant of the disputed domain name.
5. Parties’ Contentions
The Complainant says that notwithstanding the status of its Australian trademark application, the disputed domain name is identical to the mark CRIKEY, in which the Complainant has common law trademark rights which pre-date the Respondent’s acquisition of the disputed domain name. Alternatively, the Complainant has rights to the trademark CRIKEY.COM.AU and the disputed domain name is confusingly similar to that mark.
The Complainant says the Respondent has no rights or legitimate interests in respect of the disputed domain name, which he bought for US$7,500 and then offered to sell to the Complainant for US$45,000. There has been no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. The Respondent used the disputed domain name first to embarrass the Complainant’s predecessor-in-title by publishing the correspondence regarding his failure to purchase the domain name from Mr. Smith; then to attempt to sell the domain name and in doing so to trade off the reputation of Mr. Irwin; and then to post hateful, offensive and inflammatory material from March 14, 2006, until the present. This latter use is not a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers.
The Complainant says the failure to sell the domain name during an almost three year period demonstrates that there was no genuine intention to sell. As there is no evidence that a person by the name of the Respondent exists, there is certainly no evidence that the Respondent has been commonly known by the domain name.
The Complainant says the disputed domain name was registered and is being used in bad faith. As to registration, the Respondent gave a demonstrably false address and telephone number and an almost certainly false name at the time of registration. As to use, each of the three uses to which the domain name has been put indicate bad faith: embarrassing the Complainant’s predecessor-in-title; purporting to auction the domain name for a figure far in excess of the price paid for it, when the Complainant would be the only person likely to pay a premium; and publishing offensive material designed to tarnish the “Crikey” name as a result of the likelihood of confusion with the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions other than as indicated above (under Procedural History).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation v. Harold A Meyer III, eResolution Case No. AF0957.
The Panel is satisfied on the evidence that the old exclamation of surprise or amazement ‘crikey’, associated more recently with the late Mr. Irwin, has acquired secondary meaning in Australia as an identifier of the Complainant’s online news publications. The Complainant therefore has common law rights in the word CRIKEY in relation to such publications. Its application for registration does not afford it any rights. It is unnecessary to consider whether the Complainant has trademark rights in crikey.com.au.
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel finds the disputed domain name <crikey.com> to be identical to the Complainant’s CRIKEY mark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name. That burden shifts to the respondent once the complainant establishes a prima facie case and by virtue of paragraph 4(c), it is open to a respondent to establish its rights or legitimate interests in the disputed 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 trademark 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 trademark or service mark at issue.
As to paragraph 4(c)(i), neither the first nor the last of the three uses to which the Respondent has put the disputed domain name was use in connection with an offering of goods or services, since they involved merely the posting on a website of correspondence, cartoons and commentary.
Turning to the second use and leaving aside the element of bona fides, does an offer to sell a disputed domain name constitute use in connection with an offering of a service, namely the right to acquire and register the domain name itself? The Panel finds that it does not, since the language of the Policy, paragraph 4(c)(i) contemplates that the domain name and the service in connection with which it is used be separate and distinct.
Accordingly, none of the apparent uses to which the disputed domain name has been put falls within paragraph 4(c)(i).
There is no evidence before the Panel that the Respondent is commonly known by the disputed domain name. Paragraph 4(c)(ii) does not apply.
As to paragraph 4(c)(iii), in this case, an examination of the Respondent’s probable knowledge and purpose is required. The Panel infers from all the material before it that the Respondent, most likely an Australian, was well aware of the Complainant’s predecessor-in-title, its CRIKEY mark and its Australian-based online news service before he acquired the disputed domain name. The service had been operating for two and a half years by then. Australia’s most read magazine had referred only a few weeks earlier to that service on its front cover, mistakenly naming it “crikey.com”. The opportunity to cause mischief or obtain an advantage by acquiring the <crikey.com> domain name would have been apparent to anyone who knew the true situation.
The Respondent appears to have paid US$7,500. for the domain name, a not insignificant price and one that the Panel finds likely reflected an expectation of receiving traffic intended for Mr. Mayne, as in fact had happened during Mr. Smith’s ownership. Mr. Smith informed the Respondent of Mr. Mayne’s wish to be in contact with the Respondent before the domain name was registered in the Respondent’s name but apparently tellingly the Respondent did not wish to be in contact with Mr. Mayne at that time.
Having secured registration of the domain name, the Respondent initially posted correspondence indicating that he had received email intended for Mr. Mayne, then advertised the domain name for sale for six times what he had paid for it, a price which it is unlikely anyone other than Mr. Mayne or, later, the Complainant might be prepared to pay. When these steps failed to result in sale to either of them, he posted material of an inflammatory nature which, knowing of the frequency of confusion amongst consumers who reached his website when seeking that of the Complainant, he must have known would tarnish the Complainant’s CRIKEY mark. Even after the publisher of the Complainant’s service asked for the material to be removed because of the risk of violence to her staff, the Respondent left that material on his website, where it remains as at the time of Decision.
Despite the Respondent’s statement in his open letter of November 20, 2002, that “the website under-development is being hosted by a US-based server (Florida), since potentially this is the target market” there is no evidence of any steps having been taken in the intervening years to target any US-based market. Even the posting of the ‘Danish cartoons’ included reference to the Australian media and depicted an Australian flag. The Panel concludes that in all likelihood there never was an intention on the part of the Respondent to develop a website directed to a US-based market.
In these circumstances and in the absence of any attempt by the Respondent to provide an explanation from which an innocent conclusion might be drawn, the Panel finds it reasonable to conclude that the Respondent registered the disputed domain name primarily in order to sell it at a profit to the Complainant or its predecessor-in-title and that all the uses to which the domain name was put thereafter were directed to putting pressure on them to secure that result. It follows that none of those uses was legitimate, noncommercial or fair, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademark. Paragraph 4(c)(iii) does not apply.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that it is evidence of bad faith registration and use if there is proved registration primarily for the purpose of profiting from sale, rent or transfer at a profit to the trademark owner or its competitor. The Panel has already found that this must have been the Respondent’s purpose when he registered the disputed domain name. The apparent provision of false contact details reinforces the conclusion that the domain name was registered and is being used in bad faith.
Accordingly the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has established this element of its case.
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 <crikey.com> be transferred to the Complainant.
Alan L. Limbury
Dated: April 26, 2007