WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liberty plc .v. Liberty Information Network
Case No. D2000-1454
1. The Parties
The Complainant is Liberty plc. of Lazenby House, 32 Kingly Street, London W1R 5LA, United Kingdom.
The Respondent is Liberty Information Network, c/o Trainweb Inc., 124 Santa Fe Avenue, Fullerton, CA92832, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <liberty.com> and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on October 25, 2000 [electronic version] and on October 30, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is November 9, 2000.
On November 1, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on November 2, 2000 Network Solutions, Inc transmitted by email to the Center the verification response confirming that the registrant is Liberty Information Network and that the contact for both administrative and billing purposes is Stephen Francis Grande of Trainweb Inc.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on November 9, 2000 to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by November 28, 2000. On the same day the Center transmitted by fax and by mail copies of the said Notification to the Respondent.
The Center received the Response on November 16, 2000 (electronic version) and on November 20, 2000 (hard copy). On November 23, 2000 Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent.
Having received on December 5, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was December 19, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
The Complainant is Liberty plc., a public limited company incorporated in England.
4.2 The Respondent
The Respondent is a part of Trainweb Inc of Fullerton, California, United States of America. The precise corporate structure of the Respondent is somewhat unclear, but the business known as Liberty Information Services appears to have been established as a set of Bulletin Board Systems [BBS] by Medcom Information Systems, Inc. [MEDCOM] in about 1993. Mr Stephen Grande, who submitted the Response on behalf of the Respondent appears to own MEDCOM. Particulars of the Respondent's business are given in Section 5 below.
4.3 The Complainant's Business
4.3.1 The Complainant owns the well known retail store in Regent Street, London. The Complainant's first LIBERTY store opened in London in 1875. Presently, the Complainant also operates LIBERTY stores at Windsor and at the London Heathrow Airport Terminals. The Complainant owns a controlling interest in KK Liberty Japan, which has traded successfully in Japan since 1988.
4.3.2 The Complainant manufactures and sells a wide variety of merchandise including fabric, linens, towels, curtains, apparel, gifts and housewares under the "LIBERTY" trade mark and brand name. The Complainant's products are not only sold through its own outlets but world-wide through retail stores, e-commerce and mail order.
4.3.3 The Complainant states that about one third of the Complainant's customers in its London stores are visitors to the United Kingdom from other countries. The Complainant has exhibited to the Complaint evidence which demonstrates that overseas customers purchased its goods variously in its stores, by mail order or by the Internet; its Sew Liberty Catalogue (a catalogue of Liberty's sewing material, needle craft and hosiery) was sent to some overseas addresses, principally in Japan; it had overseas Liberty Account Cardholders, principally in the United States; its Liberty Fabric Direct mail order catalogue was sent to a number of addresses, principally in France, Japan and the United States; and it had international customers outside France, Japan and the United States.
Also exhibited is a schedule of Liberty's Wholesale Customers in the United States by reference to fabrics and gifts.
4.4 The Complainant's Trade Marks
4.4.1 The Complainant has exhibited to the Complaint a schedule of its worldwide trade mark registrations for the mark LIBERTY and other marks incorporating LIBERTY mark. These span 57 countries. They include registrations of the mark LIBERTY in Australia: Canada: China: the European Union: Japan: the United Kingdom; and the United States of America. The classes covered include Classes 3: 5: 6: 8: 9: 14: 16: 18: 20-21: 24-28: 30-31; and 42. Many of the registrations date from the 1970's and 1980's but some date back to the very early part of the 20th century and span the years up to the 1970's.
4.4.2 A Marquesa listing of the Complainant's United Kingdom, European Union and United States registered trademarks for the word mark LIBERTY is separately exhibited. This lists 43 United Kingdom registrations in Classes 3: 5: 7: 9: 11: 12: 16: 18: 20: 22: 24-30: 34-37; and 39-42, the earliest 4 registrations dating from 1906, 1907 and 1908, 9 in 1920, 4 in the 1970's, 18 in the 1980's and so forth. It also lists CTM 207,712 registered with effect from April 1, 1996 covering a wide variety of classes of goods and services. Finally, it also lists 10 US trade mark registrations for the word mark LIBERTY, the earliest dating from 1905 and together covering a wide variety of goods.
4.5 The Complainant's Domain Names
4.5.1 In 1998 the Complainant registered the domain name <liberty-of-london.com>which it has used since then both as it email address and its Internet address for its website. The Complainant states that since 1999 it has used that domain name as its e-commerce site, making many transactions including a significant number to the United States.
4.5.2 The Complainant has also registered <liberty.co.uk; liberty-plc.co.uk>; and <e-liberty.co.uk> as part of its plans for a full scale launch of an e-commerce business using its LIBERTY name and mark.
5. The Parties' Contentions
5.1. The Complainant
5.1.1 The Complainant contends that the domain name in issue is confusingly similar to the Complainant's LIBERTY mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that it was registered and is being used in bad faith.
5.1.2 With regard to rights or legitimate interests, the Complainant points to the fact that the web page to which the domain name in issue resolves states that it is owned by Trainweb, Inc. It can be seen from the trainweb.com website that it is designed for train enthusiasts or users. From this, the Complainant submits that the true identity of the Respondent is Trainweb Inc and that it does not appear that the Respondent has previously conducted any commercial enterprise or non-commercial activity under the name Liberty Information Network or any name incorporating the LIBERTY mark. Further, it is apparent that the Respondent is not commonly known by the name LIBERTY. Finally, the Complainant has not licensed or otherwise permitted or authorised the Respondent to use its LIBERTY mark or to apply for a domain name incorporating that mark.
5.1.3 In the circumstances, the Complainant contends that the Respondent cannot bring itself within any of the circumstances of paragraph 4c of the Policy such as to demonstrate its rights to and legitimate interests in the domain name in issue.
5.1.4 As to registration and use of the domain name in issue in bad faith, the Complainant's case is that it does not appear that any use has been made of the domain name in relation to a website since it was registered in 1993;
the website to which the <liberty.com> domain name resolves constitutes an offer to sell that domain name at an asking price of US$2,500,000; the Respondent's website contains the following: "<liberty.com> is a simple and short domain name that is easy to remember. It can serve as a generic name for almost any Internet offering. <liberty.com> is a name that will stick in the minds of your prospective customers. The name lends itself to a great deal of creativity in marketing campaigns. For example "Visit <liberty.com> and free yourself from the hassles of shopping!"or <liberty.com> brings freedom of choice to e-commerce!" The possibilities are endless!".
5.1.4 On the basis of the foregoing, the Complainant's case is that all the circumstances of paragraph 4b of the Policy are present in this case such as to demonstrate evidence of registration and use in bad faith of the domain name in issue.
5.2 The Respondent
The Respondent deals with each of the elements of paragraph 4a of the Policy as follows.
5.2.1 The Complainant's Trade Marks
First, that, although the Complainant may have trade mark and service mark registrations for LIBERTY, such rights do not cover "all business sectors". This is correct - see the Classes of goods and services identified in paragraph 4.4 above. But, paragraph 4a(i) of the Policy does not require that a Complainant's trade mark must exclude every conceivable use of that mark.
Second, that many other companies and other organisations worldwide have LIBERTY as part of their name. The examples given in the Response are of companies with a descriptive suffix, such as LIBERTY BANK, LIBERTY TRAVEL, etc. The trade mark in issue in this Complaint is, however, the mark LIBERTY simpliciter.
Third, the Respondent points to the Decision in Liberty Plc .v. DJV Associates Case No. D2000-0708 in which the Panel stated the following in its Discussion and Findings:
"Most of the trade marks owned by the Complainant consist of the single word LIBERTY. If this had been the Complainant's only trade mark, the Complaint might have been difficult to sustain. The Panel considers that the word LIBERTY per se is not identical to any of the disputed domain names nor confusingly similar thereto. It is a common English word and there are over 40 entries in the London Business telephone book for companies or organisations having "Liberty" as the first word in their name."
That statement should, however, be read in the context that the domain names in issue in that Case were <libertysoflondon.com>; <libertyoflondon.net>; and <libertysoflondon.net>. This Panel considers that the Sole Panellist's concern in that case was with the suffixes to the mark LIBERTY. Clearly, this does not apply in relation to this Complaint where the Complainant's mark LIBERTY and the domain name in issue, <liberty.com>, are identical. No suffixes are involved.
5.2.2 Rights or Legitimate Interests
The Response states that the Respondent has operated a commercial computer time-share service since 1982 then known as MEDCOM [see paragraph 4.2 above]. In 1990 MEDCOM began providing dial-up computer services to home users by a network of Bulletin Board Systems. That system was called the MEDCOM BBS.
In 1992 MEDCOM created a second BBS named The Liberty BBS. The Liberty BBS and the Medcom BBS were the beginnings of the Liberty Information Network, which was specifically targeted at providing information on a broad range of Liberty related topics, including politics, philosophy, science and religion. Additional BBS were added to the Liberty Information Network and those services were marketed under both the names Liberty Information Network and Liberty BBS. The Response states that they were also commonly known to subscribers and suppliers as simply Liberty. It is apparent from the documents attached to the Response evidencing these activities that the network was also identified by a device mark incorporating the word LIBERTY above an upturned triangle containing a representation of the hand and torch from the Statue of Liberty.
The Response states that the Liberty Information Network grew to be one of the largest BBS in the United States with thousands of subscribers and hundreds of local dial-up numbers throughout the United States. Documentary evidence of this is attached to the Response.
Amongst the information services provided by the Liberty BBS is one advertised as
Shopping Mall & Photo Classified Ads
Pc-Catalog Online Magazine
The Response exhibits various advertisements for the Liberty Information Network and includes the following general description:
The Liberty BBS
Today, The Liberty BBS is the flagship of the Liberty Information Network. It was originally conceived to be a free eight line BBS dedicated to providing information and "live" on-line discussions of libertarian principles and politics and objectivist philosophy. Because of its popularity, due in great part to the intellectually mature callers that it attracted, The Liberty BBS has grown into a 134 line subscriber system!
Before the end of its first year of operation, The Liberty BBS placed as the 27th system in Boardwatch Magazine's annual "Top 100 Reader's Choice BBS Contest". The Liberty BBS was also the first system listed in On-line Access Magazine's article on "10 Bulletin Boards That Are Especially Easy To Use For Beginners".
The Liberty BBS is targeted to a general audience of all ages. Live discussions, electronic mail, message based forums, live on-line multi-player action/adventure games, downloadable shareware and specialised news sources are featured.
Even with our switch to a general audience and general features, we have not abandoned our efforts to provide information on Liberty based philosophies and politics. Liberty serves as the "official" BBS of organisations that promote constitutional principles and individual liberty, including being the official BBS of the Libertarian Party of Orange County. Since we do serve a general audience, we believe this presents more opportunity than ever to expose the principles of individual liberty and responsibilities to the general population, and especially to today's youth".
The Respondent goes on to explain that as knowledge of the worldwide web grew, interest in dial-up bulletin board systems waned. The Respondent, therefore, made a strategic decision to redirect its energies to the web and away from bulletin board systems. Rather than compete with a large number of companies directing their energies to the general web audience, the Respondent focused on one particular area, namely trains. Originally, this new train related website was operated at <www.liberty.com/trains> but this was later changed to <www.trainweb.com>. The Respondent incorporated under the name Trainweb Inc and registered a change of ownership of the domain name in issue, <liberty.com>, to Trainweb Inc.
The Response explains that the domain name in issue is still in active use. Because the Liberty BBS was not web based, the Respondent explains that the web page to which the domain name in issue resolves was not greatly utilised. Even when the Liberty BBS was at its peak of activity, the web page only carried an advertisement for the BBS and information about subscribing. The principal uses of the domain name in issue were to provide telnet access to The Liberty BBS and the Liberty Information Network, to serve as a main mail and news server, and to provide Pop email boxes for the Respondent's clients. <mail.liberty.com> remains the main mail server for the Respondent, who states that there are still Pop email boxes for more than 30 clients at the domain name at issue actively in use from which thousands of email messages are sent and received each day.
The Respondent also currently provides almost 4,000 web page hit counters to almost 300 clients at <web.liberty.com>. The HTML code for the counters includes the domain name in issue, which the Respondent states it has been using to provide subscribers with page hit counters since 1995.
The Respondent, therefore contends that it brings itself within all the circumstances set out in paragraph 4c of the Policy as demonstrating its rights to and legitimate interest in the domain name in issue.
5.2.3 Registration and Use in Bad Faith
Based on the facts and matters in paragraph 5.2.2 above, the Respondent asserts that none of the circumstances evidencing registration and use in bad faith set out in paragraph 4b of the Policy apply.
First, the Respondent states that it did not know of the existence of the Complainant company, its products and its relation to shopping prior to receiving this Complaint. Thus, the Respondent could not have acquired the domain name in issue primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant.
Second, the Respondent explains that it only advertised the domain name in issue for sale during the last year. It is only within the last year that the Respondent has explored the sales value of the domain name in issue. The price of US$2.5 million is what the Respondent believes would adequately compensate for the disruption to it and its business, covering the cost of moving its subscribers to new URLs assigning new email addresses to the Respondent's staff and subscribers, and modifying links on thousands of web pages that currently utilise services at <liberty.com>. Thus, the Respondent states that it would only consider selling the domain name in issue provided that a purchaser would agree an adequate transition period to minimise that disruption. The Response states:
"Thus, <liberty.com> was not acquired for the purpose of selling the domain name. The Respondent does not even desire to part with the domain name nor to deal with the disruption that would ensue. The Respondent would only consider selling the <liberty.com> domain name under terms that would more than compensate the Respondent for the disruption that would be caused to Respondent's business and Respondent's clients."
Third, since it has by reason of this Complaint become aware of the Complainant's activities, the Respondent states that it has removed from the web page the suggestion that the domain name in issue could be used in relation to the shopping.
Fourth, the Respondent denies having registered the domain name in issue in order to prevent the Complainant from reflecting the LIBERTY mark in a corresponding domain name. In this respect it points to the Complainant's existing domain names.
Fifth, the Respondent denies that it has engaged in a pattern of registering domain names in order to prevent trade mark owners from reflecting the mark in a corresponding domain name. The Response explains the purpose and use of each of the domain names referred to by the Complainant. AHO.com was obtained for Anaheim Hills Online, a site developed to provide information about Anaheim Hills, the Respondent's hometown. <CyberSpaceCafé.com> was obtained with a view to opening a café where computers would be available to patrons to use in order to access the Liberty Information Network BBS. NMP.net was obtained for the National Modem Pool Network and was in the past in active use permitting many BBS systems across the United States to share their modems. This allowed people to dial a local phone number to access a BBS system that was not local. But, as Internet Service Providers became common and access to BBS systems via telnet became common, there was no longer a need for the National Modem Pool. <WebChecker.com> was obtained to offer a service designed automatically to parse and detect problems with website HTML coding. This service has not yet been implemented. <Zq.com> was obtained for use with sub-domains for new web ideas. Those implemented and currently in use include <yachts.zq.com>; <artists.zq.com> and <forlease.zq.com>. Of these, <AHO.com<; <CyberSpaceCafe.com>; <NMP.net>; and <WebCkecker.com> are not in use and this is why they are currently available for sale.
Sixth, the Respondent states that it has not registered the domain name in issue primarily for the purpose of disrupting the business of the Complainant. The Response states:
"We have never received a single email or phone call from anyone attempting to find Liberty Plc".
Further, the Respondent believes that Internet users accidentally visiting the domain name in issue instead of the Complainant's website will quickly realise that there is absolutely no connection between them.
Seventh, the Respondent denies that it has used the domain name in issue to attract Internet users to its website by creating a likelihood of confusion with the Complainant's LIBERTY mark. However, with a view to eliminating any actual confusion that might occur, the Respondent states that it has added a link from the web page at the domain name in issue to the website of the Complainant.
6. Discussion and Findings
6.1 Under paragraph 4a of the Policy, the Complainant must prove three distinct elements in order to succeed with a claim for transfer of a domain name, namely:
- that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the LIBERTY mark, that the domain name in issue is identical to that mark and that the Complainant succeeds in establishing the requirements of paragraph 4a(i) of the Policy.
6.3 Rights or Legitimate Interests
The Panel is satisfied from the evidence presented in the Response that the Respondent has demonstrated circumstances which confirm its rights to and legitimate interest in the domain name in issue. The Respondent has brought itself within all three of the non-exhaustive circumstances set out in paragraph 4c of the Policy. For this reason, the Complaint must fail.
6.4 Registration and Use in Bad Faith
Again, the Panel is satisfied from the Response that the domain name in issue was neither registered nor has it been used in bad faith. Accordingly, the Complaint must fail on this ground also.
For the foregoing reasons, the Panel decides that the Complainant has failed to prove (1) that the Respondent lacks any rights or legitimate interest in the domain name in issue or (2) that the Respondent has registered and is using the domain name in issue in bad faith. Accordingly, the Panel finds in favour of the Respondent and denies the Complainant's request for transfer of the domain name in issue.
Dated : December 21, 2000