WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tabmag Publishing Ltd. v. A-Z Group/A-Z Publications Ltd.
Case No. D2001-1354
1. The Parties
The Complainant is Tabmag Publishing Ltd. of Headline House, Chaucer Road, Ashford, Middlesex TW15 2QT, United Kingdom.
The Respondent is A-Z Group/A-Z Publications Ltd. of Darby House, Bletchingley road, Merstham, Surrey RH1 3TT, United Kingdom.
2. The Domain Name and Registrar
The domain name is <aircargonews.com>, registered with Network Solutions Inc of 505 Huntmar Park Drive, Herndon, Virginia 20170-5142, USA.
3. Procedural History
(1) The Complaint in Case D2001-1354 was initially filed by E-mail on November 13, 2001, and by hard copy on November 15, 2001, but the formal requirements were not completed until December 5, 2001, when the Complaint was duly notified to the Respondent.
(2) Even before this, the Respondent's representative, Mr. Brian May, had on November 21, 2001, contacted the WIPO Arbitration and Mediation Center to indicate that he was in correspondence with the Complainant. There was further correspondence from him on December 17, 2001, which inter alia requested an extension of time for the filing of a Response. This was granted by the Center so as to require that filing to be by January 3, 2002. The Response was received by that date.
(3) The WIPO Arbitration and Mediation Center has stated that:
- the Complaint was filed in accordance with the requirements of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules");
- payments for filing were properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed on January 3, 2002; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in the UDRP.
(1) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(2) The date scheduled for issuance of a decision is January 31, 2002.
(3) While no other extensions have been granted or orders issued in advance of this Decision, the Respondent's communications to the Center, which preceded the submission of its formal Response, gave the Complainant the opportunity to reply to certain claims in that Response before it was received.
(4) The language of the proceedings is English.
4. Factual Background
The Complainant publishes "Aircargo News", a fortnightly newspaper for airfreight businesses. The front page of the issue for October 19, 2001, is annexed to the Complaint. Its mast-head uses those words in a distinctive design format, whereas the words in script alone are used in the content. It has been published continuously since 1983, and an edition for October 24, 1984, is annexed, showing that on the then masthead the word "International" was added in a different typeface. The paper had a global circulation in January-June 2001, of 20,440 according to an independent circulation audit by BPA International (also annexed), its major areas being Europe, North America and Asia Pacific.
The Respondent publishes directories and offers consultancy services and management advice in the air cargo field.
5. Parties’ Contentions
(1) The Complainant has a substantial trade reputation in the title of its paper, "AirCargo News", the goodwill in which would entitle it to protection in the United Kingdom and elsewhere as a trade mark by virtue of proceedings for passing off or equivalent rights.
(2) That mark is in essence identical to the domain name in issue.
(3) At the date on which the domain name was registered (March 7, 1997), the Respondent knew of the Complainant's goodwill in its mark and could not therefore claim any right or legitimate interest in registering the identical domain name at that date, since it then had no connection with the Complainant and had no authority from it to make, hold or use the registration.
(4) The domain name in issue was obtained and is being used in bad faith:
- because if it were used to promote the Respondent's rival publication, Air Cargo Week, this would constitute passing off;
- because it prevents the Complainant from holding a domain name comprising the well-known name of its paper, thereby disrupting its business and disadvantaging it commercially;
- because the very act of registration constitutes a threat of future infringement of rights in the mark (as in British Telecommunications v. One in a Million  F.S.R. 1; Telstra v. Nuclear Marshmallows WIPO Case D2000-0003);
- because the Respondent must have had actual (or at least constructive or deemed) knowledge of the Complainant's right in "Aircargo News", from the course of dealing when in 1991, the Complainant sold the Respondent the publishing rights in its "A-Z Air Freight Directory"; from the market research it must have done before launching its own "Air Cargo Week" in 1998; and from its attraction of staff from the Complainant to work on that production (reference being made to Reuters v. Global Net 2000 WIPO Case D2000-0441; Chase Manhattan v. Jones WIPO Case D2000-0731).
(5) The Respondent's assertions concerning the alleged third party beneficiary of the domain name registration are substantiated only in respect of conduct between them, which strengthened the allegation of bad faith. The domain name was not used until after the Complaint was notified and consists of the third party now making use of an associated website during a period when the UDRP, paragraph 8(a) imposes an embargo upon transfer of the domain name.
(1) The Complainant's publication was known and listed as "Air Cargo News International" until 1992.
(2) A third party, ("ACN"), which is based in the United States, has since 1975, published its own "Air Cargo News". This is "a widely read and respected newspaper, is published variously in English and Spanish and enjoys a worldwide reputation for providing expert news and review coverage of the global air cargo business. It has won various international and national awards including The International Air Cargo Association (TIACA) Award for Excellence in 1994, and a US Department of Transportation Merit Award."
(3) ACN unquestionably has the right to use the domain name, <aircargonews.com>.
(4) The Respondent registered that domain name at a time when it was providing consultancy services and management advice to ACN. The Respondent indicated to ACN's owner, Geoffrey Arend, at the time that he was the beneficial owner of the registration and could receive a formal transfer of the domain name at any time at his request. "This longstanding arrangement Mr. Arend understood and accepted appreciatively".
(5) When in March 1997, the Complainant objected to the domain name registration and the Respondent explained the circumstances the attempt to claim it was dropped. This indicates that the Complainant is now attempting to harass the Respondent by this dispute resolution claim.
(6) The Respondent has never sought to gain commercially or competitively in any way from the domain name in issue, ACN having a legally binding right to all benefits from it and it will be transferred immediately to ACN as soon as ICANN permits.
(7) In proof of these claims three annexes are provided:
- a copy of the third party's Air Cargo News (which is in Spanish and English) for November 1997;
- a copy of the first number of the Respondent's "A-Z Plus" Newsletter for April 1997. The back page of this is mast-headed "Air Cargo News – the Original …. The Only American-owned and edited AirFreight Monthly Newspaper". It announces cooperation with ACN, quoting Geoffrey Arend, who is identified as Publisher/Editor of Air Cargo News;
- A letter from Geoffrey Arend, dated December 10, 2001, to Brian May, Group Chief Executive, A-Z Group. This states that ACN's "Air Cargo News" has been in publication since 1975, and enjoys an international reputation and also; that in October 1996, ACN discussed a joint venture with the Respondent, certain details of which are mentioned. The writer then states:
"Obviously in response to our above gestures of good faith and keeping in mind ACN's long-standing reputation, you informed me (Geoffrey Arend) that you registered the domain name <aircargonews.com> for our benefit and would eventually transfer the domain name to us.
We are now delighted to note your formal confirmation and intention to transfer the domain name registration and all rights attached to it to ACN.
However, keeping in mind all attendant and relevant circumstances, we request you to please confirm that at the instance of any party there will be no liability, monetary or of any other nature or kind whatsoever, for ACN and/or its owner resulting from this long-awaited transfer.
To put it briefly and very clearly, we would like to use the domain name peacefully and without any interference of any kind from any party whatsoever.
Please provide us the above assurance so that the proposed transfer of the database registration to ACN can be implemented immediately."
6. Grounds for Decision
According to Paragraph 4(a) of the UDRP, the Complainant must establish each of the three following elements:
(i) that the domain name in issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no right or legitimate interest in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant has shown that it has used "Aircargo News" as the mark, which identifies its widely distributed newspaper. Although the title is descriptive of its contents, there can be no doubt that many subscribers and other readers have been treating the title as the name, which identifies the source of the product. As such it has a reputation and associated goodwill, which in England would ordinarily found an action against passing off. One complication is raised by the allegation in the Response that the third party, ACN, also produces its own "Air Cargo News" which has an international reputation. I have, however, been provided with no specific evidence that this paper is still extant or what its circulation is. I cannot therefore look upon it as giving rise to rights similar to those, which the Complainant has established and which fall within the concept of a trademark in the UDRP. Since the domain name in issue is in material respects identical to this mark, the Complainant has established the first requisite element.
As to the second and third elements, the Response asserts that neither of these requirements is made out because the domain name in issue was procured on behalf of ACN at a time when a joint venture was under consideration and has been held ever since for ACN, which is characterised both as "legal owner" and "beneficial owner". I am not able to accept Mr. May's explanation of this relationship in those terms. Although he procured from Mr. Arend the letter from which extracts have been quoted, the final paragraphs of that letter do not suggest that the writer regards his business as all along have been the real holder of the domain name. To the contrary, he states that the transfer is "long-awaited". He pretty clearly has reason to suspect that there may be a contest over entitlement and therefore makes acceptance now conditional upon an assurance that no liability will ensue to ACN or himself. Nothing in the letter explains why, if he has a flourishing paper of the same name, he has not, before the date of the complaint, sought to obtain it for development of a website, and the Response is no more forthcoming.
While I am left in the dark about the position at present and so can find no basis for saying that ACN's current interest gives it a right or beneficial interest in the domain name in issue, there is some evidence about ACN's operations in early 1997, i.e. at the time when the registration of the domain name was initially procured. The first and second annexes to the Response appear to demonstrate that ACN's paper was appearing and that an association was then projected with the Respondent Group (though it did not come to fruition). Mr. Arend's letter gives a modest amount of detail about the discussions and I have no sufficient basis for doubting what he says about this stage of the events. The Respondent has accordingly shown some justification for his actions at that time. The Policy specifically requires it to be shown that the Respondent acted in bad faith not only in its use of the domain name but also in obtaining it. The present case accordingly seems to me one where, however unsatisfactory the explanation of the Respondent's subsequent motivations and acts may be, there is evidence that the actual procurement of the domain name was part of an intended collaboration. Since this was to involve ACN's "Air Cargo News" it was legitimate for the Respondent to register the domain name in suit in order to foster business in that paper. It would appear from the rather sketchy submissions before the Panel that its actions were not at that point in bad faith.
In consequence, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, the Panel declines to order that the domain name, <aircargonews.com>, be transferred to the Complainant.
William R Cornish
Dated: January 31, 2002