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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PENGUIN BOOKS LIMITED v. THE KATZ FAMILY and ANTHONY KATZ
Case No. D 2000 - 0204
1. The Parties
The Complainant is Penguin Books Limited, a corporation organized and existing under the laws of England, having its principal place of business in Harmondsworth, Middlesex, England and maintaining corporate offices in New York, New York, U.S.A.
2. The Domain Name(s) and Registrar(s)
These Administrative Proceedings relate to the domain name <penguin.org>.
3. Procedural History
On June 24, 1998, the Complaint filed a Request of Action on Domain Name Dispute with Network Solutions Inc.
On August 31, 1998, in the course of said Action the Parties agreed on 90 days simultaneous use of the <penguin.org> domain name by each of them.
On December 11, 1998, Network Solutions Inc. placed the said domain name <penguin.org> on hold status and the said domain name <penguin.org> remains on hold status pending the outcome of these Administrative Proceedings.
On March 23, 2000, the WIPO Arbitration and Mediation Center (hereinafter the "Center") received the Complaint by e-mail. On the same date the Complainant sent a copy of the Complaint as prescribed by rule 3 of the Rules for Uniform Domain Name Dispute Resolution Policy ( hereinafter "the Rules") together with the cover sheet as prescribed by rule 4 of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution (hereinafter the "Supplemental Rules"). A copy of the Complaint was sent by the Complainant to the Registrar on the same date.
On March 27, 2000, the Center received the hard copy of the Complaint and in accordance with rule 4(a) of the Rules and rule 5 of the Supplemental Rules verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Respondent.
On March 28, 2000, the Center sent to the Respondent by Courier (with enclosures) and by e-mail a Notification of Complaint and Commencement of Administrative Proceeding. Copies of said Notification were sent by the Center to the Complainant's authorised representative by facsimile and e-mail on the same date. On the same date, the Center also sent communicated the Response to the Internet Corporation for Assigned Names and Number (ICANN) and the Registar of the domain.
On April 17, 2000, the Center sent a Notification of Respondent Default to the Respondents by post and courier and to the authorized representatives of the Complainant by e-mail. On the same date, the Center received the Response from the Respondent which had been sent on April 16, 2000. The Respondent requested the appointment of a three member Administrative Panel and paid the appropriate fee.
On April 20, 2000, uninvited, the Complainant sent a Reply to the Respondent's Response.
On April 21, 2000, the Center sent an acknowledgement of receipt of Response to the Respondent and on the same date sent a notification to the Complainant that the Respondent had designated a three-member Administrative Panel and set in motion the process for the appointment of a three-member panel set out in rule 6(d) of the Rules.
On April 24, 2000, the Respondent then, uninvited, filed a Sur-Reply to the Complainant's Reply.
On May 4, 2000, in accordance with rule 6(f) of the Rules, the Center appointed this Administrative Panel, each panellist having submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by rule 7 of the Rules. Notification of said appointment was communicated to the authorised representatives of the Parties by e-mail on the same date.
On May 4, 2000, the Center sent the case file to the Administrative Panel.
This Administrative Panel concludes that it was properly constituted and appointed.
4. Factual Background
The Respondents registered the said domain name <penguin.org> with Network Solutions Inc. (NSI) on June 24, 1997. On June 24, 1998, the Complainant initiated proceedings under the NSI's Domain Name Dispute Policy and consequently on December 11, 1998, following a period of simultaneous use, the said domain name <penguin.org> was put on "hold" by NSI. The registration was renewed by the Respondents by credit card on June 17, 1999.
The Complainant is a well known company engaged in the business of publishing in the English language in various media including print, audio, visual, computer, electronic and multi-media.
Since 1935, the Complainant has been using the word <PENGUIN> and a device of a representation of a penguin bird as its trademarks and these have been registered and have become well known throughout the anglophone world and beyond.
The Complainant and its associated company Penguin Books, Inc., Baltimore, Md. are the owners in the U.S.A. of various trademark registrations viz.
Books, prints, and publications
Books, prints, and publications
Pre-recorded computer programs
Audio and videotape, phonographic records, compact, audio and video discs and motion pictures
Audio and videotape, phonographic records, compact, audio and video discs and motion pictures
In addition to the domain name <penguin.org>, the Respondents have registered three other domain names viz. <penguinland.org> registered on August 24, 1998, <penguinland.com> registered on October 5, 1998, and <penguinland.net> registered on October 5, 1998.
5. Parties’ Contentions
The principal point in the Complainant’s analysis of its own submissions are: -
i. The registration of numerous domain names by the Respondents is the type of conduct which has been held to be a factor in finding that a registrant has no legitimate interest in a domain name and that the domain name was registered and is being used in bad faith [Nabisco Brands Company v. The Patron Group, Inc. WIPO Case No. D2000-0032, February 23, 2000, David W. Plant, Presiding Panelist].
ii. Failure to provide a product or service or develop the www site demonstrates that the Respondents have not established any rights or legitimate interests in the said domain name <penguin.org>. [Ziegenfelder Co. v. VMH Enterprises, Inc. WIPO Case No. D2000–0039], March 14, Richard W. Page, Presiding Panelist, Section 6].
iii. The Second Named Respondent has no rights in the name <Penguin> and has registered the said domain name <penguin.org> to hold for his future use and profit relating to the promotion of LINUX software.
iv. It is logical that consumers world-wide would search for the Complainant by using the said domain name <penguin.org>.
v. It is illogical to assume that someone attempting to locate the Respondents would use the name <penguin> or believe that the name <penguin> is associated with an organisation or not-for-profit company.
vi. The circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant, or to a competitor of the Complainant or to the Third Party which is associated with the promotion of the LINUX operating system software for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name. It is argued that the Respondent has thus far been prevented from transferring said domain name <penguin.org> to said Third Party because the domain name in issue has been put on hold status by Network Solutions Inc. The intent to sell, an offer to sell, rent or otherwise transfer the domain name to a complainant "for valuable consideration in excess of out-of-pocket costs directly related to the domain name" has been held to be use of the domain name in bad faith as defined in the ICANN Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No D1999–0001, January 14, 2000, M. Scott Donahy, Presiding Panelist, at paragraph 6, also Panavision International L.P. v. Toeppen, 14 F. 3d 1316 (9th Cir 1998) and Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. III. 1996)
vii. The circumstances indicate that the said domain name <penguin.org> was registered by the Respondent to prevent the Complainant from registering its <PENGUIN> trademark or the Complainant’s Penguin Device trademark in a corresponding domain name.
viii. The circumstances indicate that the said domain name <penguin.org> was registered by the Respondent primarily for the purposes of disrupting the business of the Complainant.
ix. The Respondents have no common law rights in the domain name. It is logical that the Complainant would use the <PENGUIN> trademark and the Complainant’s Penguin Device mark as a domain name. It argues that this is evidence of bad faith on the part of the Respondent (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No D1999–0001, January 14, 2000, M. Scott Donahy, Presiding Panelist, Section 6)
x. The Respondent’s failure to develop its www site in a two year period raises the inference that the domain name was registered without a bona fide intent to make good faith use of that domain name [Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown d/b/a Big Daddy’s Antiques, WIPO Case No. D2000-0004, February 16, 2000, Mark Partridge, Presiding Panelist].
xi. The passive holding of a domain name has been held to be use of that domain name in bad faith. [Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000–0003, February 18, 2000, Andrew F Christie, Presiding Panelist].
xii. In the Complainant's Reply it is submitted that there was contact made on April 6, 2000, by a representative of the Respondent's employer to the Complainant's representative offering to sell the domain name to the Complainant for $10,000. This offer was repeated by Mr Katz on April 12, 2000. Such an offer demonstrates use of the name in bad faith [Christian Dior Couture SA v. Liage International, Inc., WIPO Case No. D2000-0098, March 24, 2000, and other numerous WIPO decisions]
xiii. As for the Respondents reliance on Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000–0067, in that case the Administrative Panel characterized the respondent's defence that the domain was named after a dog as being suspicious and invited the Complainant to file a federal lawsuit where discovery could be conducted.
xiv. Other uses of the word "penguin" by third parties are for such goods as ice-cream and candy and are not related to computers.
xv. The common name defence put forward by the Respondent should be rejected as it has been stated in Fintner Bank Zurich v. Gialucia Olivieri, WIPO Case No. D2000-0091, March 23, 2000, that "the interest of a middle-sized bank in Zurich… is clearly deserving a priority over the interests of a later web registrant to name his site after his pet [A name under which the pet is commonly known]."
xvi. While Mr Katz did nothing to develop the www site and has not revealed any plans so to do, he now puts up a full fight in these Administrative Proceedings requiring a three member panel while at the same time furnishing affidavits which avoid telling of his intentions with respect to the www site and also avoiding any reference to his offer to sell the domain name for $10,000.
The principal points in the Respondent’s Response are as follows:
i. Anthony Katz was known as "Penguin" long before said domain name <penguin.org> was registered.
ii Mr Katz has made only two uses of the said domain name <penguin.org>, firstly as a personal e-mail address and secondly as the address of a personal www site. [Avery Dennison Corp. v. Sumpton, 1999 WL 635767 (9th Circuit. August 23, 1999), use of names a e-mail addresses does not constitute commercial use]
iii. Mr Katz registered said domain name <penguin.org> to establish a www site dedicated to penguins (the birds).
iv. Mr Katz did not register the said domain name <penguin.org> with intent to sell or transfer rights in it and does not intend to sell or transfer such rights.
v. Mr Katz denies any intention to associate with the Third Party to exploit the said domain name <penguin.org>
vi. Mr Katz has a legitimate interest in the domain name citing paragraph 4(a)(ii) of the ICANN Policy that he as an individual has been commonly known by the domain name. He cites supporting decisions of Administrative Panels viz. Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000–0067, Avnet, Inc. v. Aviation Network, Inc. WIPO Case No. D2000–0046 also Gateway, Inc. v. Pixelera.com, Inc. WIPO Case No. D2000–0109.
vii. He also submits supporting decisions of courts in the U.S.A. viz Hom Ltd. v. Hatfield, 71 F. Supp 2d (D. Md. 1999) and Giacalone v. Network Solutions, Inc. and Ty, Inc. Civ Action No C-96 20434 (N.D. Cal. Filed May 30, 1996).
viii. He states that if another internet user has an innocent and legitimate reason for using even a famous mark as a domain name and is first to register it, that user should be able to use the domain name provided that it has not otherwise infringed upon or diluted the trademark Hasbro Inc. v. Clue Computing Inc. 66 F. Supp. 2d. 117 (D. Mass. Sept 2. 1999) also Allocation Network Gmbh v. Steve Gregory WIPO Case No. D2000–0016)
ix. The Respondent registered the said domain name <penguin.org> in good faith. The Complainant must prove both elements of the test in paragraph 4(a)(iii) of the Policy i.e. that the domain name has been both registered and used in bad faith. [Telaxis Communications Corp. v. William E. Minkle, WIPO Case No D2000-0005]
x. Penguin had every opportunity to register the domain name but did not do so and should not now benefit having sat on its hands.
xi. The use by Mr Katz of the domain name as a personal internet address and the address of a non-commercial www site establishes a legitimate interest. The case Ziegenfelder Co. v. VMH Enterprises, Inc. WIPO Case No. D2000–0039], March 14, Richard W. Page, Presiding Panelist, Section 6 is not relevant to this Administrative Action because in that case the only use by the respondent was to post a message offering to sell the domain name for a substantial amount of money.
xii. Mr Katz is not a cybersquatter: he is known as "Penguin"; he did not register the other domain names <penguinland.org> (registered August 24, 1998); <penguinland.com> (registered October 5, 1998) and <penguinland.net> (registered October 5, 1998) with the intention of re-sale. His circumstances can be distinguished from the position of the Respondent in Nabisco Brands Company v. The Patron Group, Inc. WIPO Case No. D2000-0032, February 23, 2000, David W. Plant, Presiding Panelist, as in that case the Respondent owned at least 53 domain names identical or virtually identical to registered U.S.A. trade marks of other companies such as Nestle, General Mills, Nabisco, AT&T, Pfizer, Proctor & Gamble and Warner-Lambert. In that case the Complainant established a continuous and obvious pattern of cybersquatting whereas Mr Katz registrations do not even remotely approach the pattern reviewed in Nabisco Brands.
xiii. Mr Katz has not attempted to engage in any pattern of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy. He registered the other domain names <penguinland.org> (registered August 24, 1998); <penguinland.com> (registered October 5, 1998) and <penguinland.net> (registered October 5, 1998) in accordance with the standard advice given by internet consultants and lawyers advising any person or entity contemplating a www presence to register related names.
xiv. Mr Katz did not register the domain name primarily for the purpose of disrupting the business of a competitor: The Respondents do not compete with the Complainant in any respect and they have no intention so to do.
xv. Mr Katz did not intentionally attempt to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as a source of sponsorship, affiliation or endorsement of his www site.
xvi. The Complainant seems to suggest that a small, static www site with only a small amount of content is worthless and is evidence of use in bad faith. This is refuted by the Respondent. The Respondent's www site provides a considerable amount of information about the Respondent: his name, his e-mail address, information about his prior employment, his personal interest in the "open source" operating system LINUX and his wry sense of humour.
xvii. It is inappropriate to judge the "quality" of an individual www site in determining whether bad faith exists, unless a pervasive pattern exists suggesting that the content is just a sham to avoid a finding of bad faith. Such pattern is not present on the Respondent's www site.
xviii. Hundreds, if not thousands of domain names have been registered in the name of families. It is not wrongful conduct so to do.
xix. When registering a domain name, there is no obligation to disclose the nature of the entity identified as the registrant. There is no obligation under Texas law to register an alias of an individual or entity such as a partnership that does not conduct any business or commercial activities whatsoever.
xx. There is no evidence that Mr Katz registered the domain name in the name of the Katz Family to conceal his identity, as the WHOIS database identifies him as the administrative contact and provides his e-mail address at his current place of employment.
xxi. The word "Penguin" and the mascot character "Tux" have become irreversibly associated with the LINUX computer system. Accordingly there is no bad faith in Mr Katz electing to show his personal allegiance to the LINUX operating system by posting an image of Tux on his homepage.
xxii. Non commercial sites often identify the software that underlie the site Mr Katz has elected to identify the LINUX software and he gives a number of examples of other sites that do this.
xxiii. The Complainant's trademarks are weak marks, despite their renown.
xxiv. In the Sur-Reply to the Complainant's Reply the Respondent states that paragraph 4(b)(i) does not state that any offer to settle is in bad faith. The Policy surely does not mean that every offer to settle any domain name dispute is evidence of cybersquatting.
xxv. The Complainants opened the door to the Respondents offer to settle.
xxvi. The Complainants neglect to state in their submissions that they rejected Mr Katz's offer to enter into a consent agreement to limit the types of uses that the Respondent could make of the www site.
xxvii. The Respondent’s Counsel authorised the Second Named Respondent to provide the President of Mr Katz's employer for the purposes of securing an affidavit from him in support of the Respondent's case. This man then contacted the Complainant in an effort to negotiate a settlement and made the offer without the Respondent's authority.
xxviii.The Complainant fails to state that it did not reject the Respondent’s offer but stated that a monetary settlement would only be possible if all four of the Respondent’s domain names were transferred.
xxix. The Respondent is using the www site as intended i.e. as an e-mail address, to provide information about the family and possibly in the future to provide information about penguin birds.
6. Discussion and Findings
The Administrative Panel decided to admit and consider the Complainant’s Reply and the Respondent's Sur-Reply as they were transmitted to the Administrative Panel at the same time as Complaint and the Response.
The Complainant must establish 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 Respondents have 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.
Complainant's Trademark Rights
This Administrative Panel accepts that Complainant has established that <penguin.org> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights but we are not satisfied that the Complainant has established the second and third elements of the proofs.
Respondent's Legitimate Interest
The Respondent has produced evidence, which this Administrative Panel must accept in the absence of any rebuttal evidence from the Complainant, that Mr Katz has for many years been known by the nickname "Penguin". Furthermore, because of her husband's nickname, Mrs Katz is sometimes referred to as "Mrs Penguin". It is reasonable for someone to register a domain name based on a nickname such as "Penguin," and it follows that the Respondent had legitimate interests in that name. It is not for this Administrative Panel to decide on whether such use would in any way infringe any intellectual property rights of the Complainant and this must be left to other fora.
This Administrative Panel therefore concludes that on the evidence submitted, the Respondent has established a legitimate interest in the domain name.
Having decided that the Respondent has such a legitimate interest, this Administrative Panel must conclude that the Complainant's application must be refused and it is not necessary for this Administrative Panel to proceed to consider whether the domain name has been registered and is being used in bad faith.
Nonetheless, for completeness, in the circumstances of these Administrative Proceedings, the Administrative Panel has proceeded to consider this aspect also.
The ICANN policy provides that registration and use of the domain name in bad faith can be established if:
(i) there are circumstances indicating that the Respondents registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, or, to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) there are circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) the Respondents have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on their web site or location.
On reviewing the submissions and evidence of in these Administrative Proceedings, this Administrative Panel finds that there is no convincing evidence that the Respondents registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant and the Respondent has rebutted the Complainant’s allegations in this regard.
This Administrative Panel is unwilling to infer such an intent from the fact that the Parties subsequently entered into settlement negotiations, in which the Complainant apparently made the first offer.
There is no creditable evidence of circumstances indicating that the Respondents registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and in any event the Katz's have not engaged in a pattern of conduct as required by subparagraph (ii).
Neither has the Complainant established that the Respondents have registered the domain name primarily for the purpose of disrupting the Respondent's business. To date there has been no interference by the Respondent with the Complainant's business. The Complainant has put the domain name to only limited use on its very basic www site.
This Administrative Panel, notes that the Respondents did not develop the Web site much. It is also conscious that the Respondent's claim that they intended to use the www site to further their interests in penguin birds is not in any way supported by the content of their www site to date and this raises some suspicion in the minds of the Administrative Panel as to their intentions.
This Administrative Panel is reluctant to engage in the activity of policing how much development the owner of a clearly personal Web site must do, in the absence of any other evidence of bad faith. Any attempt to apply any objective minimum standards for development could well impose a significant economic burden on innocent registrants as a precondition of holding their domain names.
It follows that the Complainant has not satisfied this Administrative Panel that the Respondents registered and used the domain name in bad faith.
Having discussed the submissions and evidence of the Parties this Administrative Panel therefore concludes that:
h whereas the Complainant is both the owner of registered trademarks and has a well established international reputation in its fields of activities under the name Penguin, giving it common law rights in the use of this name,
h the Complainant has not succeeded in establishing that the Respondents did not have a legitimate interest in the use of the domain name and
h furthermore the Complainant has not established that the Respondents registered and are using the domain name in bad faith.
This Administrative Panel therefore decides that the said domain name may be retained by the Respondent.
Dean Henry H Perritt Jr. David H. Tatham
Dated: 20 May 2000