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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

CLT-UFA societe anonyme v. This Domain is for Sale / Sean Gajadhar

Case No. D2000-0801

 

1. The Parties

The Complainant is CLT-UFA sociйtй anonyme, a Luxembourg corporation of 45 boulevard Pierre Frieden, L-2850 Luxembourg. The Respondent is This Domain is for Sale, Sean Gajadhar, 117-13 107th Avenue, Queens, NY 11419, USA.

 

2. The Domain Name and Registrar

The domain name at issue is "rtlgroup.com", which domain name is registered with Register.com, Inc. (the Registrar), Domain Registrar, 575 Eighth Avenue 11th Floor, New York, NY 10018, USA.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on July 17, 2000, and in hardcopy on July 18, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated July 19, 2000.

On July 19, 2000, a Request for Registrar Verification was transmitted to the Registrar requesting it to:

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);

(2) confirm that the domain name at issue is registered with the Registrar;

(3) confirm that the Respondent is the current registrant of the domain name(s);

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);

(6) indicate the current status of the domain name(s).

On July 24, 2000, the Registrar confirmed by facsimile that a copy of the Complaint was sent to the Registrar by the Complainant, the domain name "rtlgroup.com" was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.

Effective December 1, 1999, the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on July 29, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a three-member Panel were paid on time and in the required amount.

No formal deficiencies having been recorded, on July 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of August 18, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in Register.com’s WHOIS confirmation, as well as to "postmaster@rtlgroup.com"; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by express courier.

On August 17, 2000, the Respondent submitted its Response to the WIPO Center. An Acknowledgment of Receipt was sent out by the WIPO Center, dated August 18, 2000. On September 28, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of Mr. Jonas Gulliksson, Mr. Nelson A. Diaz and Mr. Geert Glas.

The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complainant is the owner of the RTL trademark in numerous countries, registered and widely used in connection with television and radio broadcasting services and a broad variety of related and derivative services and goods. Complainant is a societe anonyme incorporated in Luxembourg in 1932.

The Complainant has registered or applied for registration of the RTL trademark in over 30 countries, including every major country in Europe and the United States. It owns over 200 trademark registrations, including 30 European Community trademark registrations (covering 15 jurisdictions) for the word trademark RTL as well as many variations and combinations using other words, numbers and designs in conjunction with the RTL trademark.

The trademark RTL in the United States was registered on June 13, 2000, by a German company related to the Complainant. An assignment of this Registration has now been executed and filed with the U.S.P.T.O. assigning this registration to Complainant.

Furthermore, the Complainant has 29 currently active websites using variations of the RTL trademark.

 

5. Parties’ Contentions

A. Complainant

The Complainant sets forth the following grounds upon which the Complaint is based. First, the domain name "rtlgroup.com" is legally identical or confusingly similar to the RTL trademark and the many variations in which it has been registered and used by Complainant as set forth above. It is a well accepted principle of trademark law that the mere addition of a descriptive or generic word, e.g., "group" to a well-known trademark is not sufficient to avoid consumer confusion or infringement. In this instance, confusion is highly likely given the fame of the RTL trademark and the public exposure to so many varying combinations of it used as or within names of radio and television stations, websites and businesses owned and administered by Complainant. It is quite likely that an average member of the public with some knowledge of the RTL trademark could be confused and diverted to a website using Respondent’s domain name, thinking it was associated with Complainant. Moreover, those members of the public who are cognizant of the fact that there are so many different RTL entities might readily think that "rtlgroup.com" is a likely composite name website for Complainant’s extensive group of stations, websites and businesses.

Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the domain name at issue. The Respondent has not received any permission or license from the Complainant, has no business or other reason for using Complainant’s RTL Mark and is not commonly known by the name RTL nor has it conducted any business under the name RTL. Respondent is not making a legitimate non-commercial or fair use of the domain name or the RTL trademark, but rather could use the domain name for commercial gain by potentially misleading the public when searching for one of the many legitimate RTL websites, and by blocking Complainant from using the RTL Group business name and trademark as a domain name.

To the contrary, Complainant is the only party that has legitimate rights to the domain name "rtlgroup.com", as the following facts will demonstrate. A brief recitation of the chronological events leading to the registration by Respondent of the domain name in issue will make it clear that Respondent had no intent to use the domain name for any bona fide purpose, but rather that Respondent’s sole intent was in bad faith: to obtain, prior to Complainant, a valuable domain name property consisting of Complainant’s well-known registered RTL trademark in combination with the word "group" so as to be able to block Complainant’s legitimate adoption of "rtlgroup.com", a domain name consisting of the natural and intuitive name for its new business, and to thereby obtain consideration from Complainant in excess of Respondent’s out-of-pocket costs.

On April 7, 2000, a Friday, Complainant and U.K.-based Pearson Television, one of the world’s leading international independent television production companies, announced the merger of their two companies in a worldwide press release (Annex 16 to the Complaint) followed by, on that same morning, a presentation to analysts and investors and a press conference in London, United Kingdom. Both the presentation and the press conference were simultaneously webcast live on the Internet to a global audience. The headline of the press release read: "Audiofina, CLT-UFA and Pearson Television merge to create Europe’s leading integrated broadcasting content group"(i.m.). Although the word "Group" was used at least 5 times in the short press release, and then quite extensively during the presentation and press conference, there was no specific mention of the precise name of the new merged entity.

On the next day, Saturday, in the press coverage of the merger announcement it was speculated, particularly in the German press, that the new name of the merged entity would be "RTL Group", a very natural assumption. Then, on April 9, 2000, Sunday, just two days after the worldwide press conference and one day after the press coverage, Respondent registered the domain name in issue. The speculation in the press concerning the name of the new merged entity continued on April 10 and 11, even in the United States, and, indeed, two other parties unrelated to Complainant and Respondent each registered domain names using variations of the RTL trademark on April 10, further evidencing the widespread nature of the rumors regarding the new name.

A few days later, when Complainant itself sought to register "RTL Group" as a domain name, to its surprise it discovered that it had been blocked by Respondent’s registration of "rtlgroup.com", the domain name in issue. Complainant then registered the domain names "rtlgroup.net" and "rtlgroup.org" on April 13, 2000, as a defensive measure to block further piracy. These domain names, of course, are nowhere near as important commercially to Complainant as rtlgroup.com, the domain name in issue, which virtually all members of the public familiar with Complainant’s television and radio stations would undoubtedly try first when wishing to find Complainant or the new entity created from the merger.

Indeed, the new merged entity has now been named RTL Group - on July 4, 2000, it was made official by an announcement that the name of the new entity is RTL Group with its stock to be listed on the London Stock Exchange.

Viewing all of these facts, Respondent’s acts can only be characterized as blatant piracy. It is inconceivable that Respondent coincidentally or accidentally registered the domain name in issue two days after Complainant’s worldwide press conference. Respondent’s action immediately following public speculation that the name of Complainant’s new company would be RTL Group is persuasive evidence in and of itself that Respondent believed that its new domain name was something that would have value to Complainant. As shown below, Respondent’s own words confirm this presumption.

Moreover, Respondent would appear to have a pattern of registering domain names including valuable trademarks of other parties. First, the name of the registrant of Respondent includes the heading "This Domain For Sale". Annex 19 to the Complaint is a list of many of the domain names registered by Respondent. It obviously includes many valuable trademarks of parties with no affiliation to the Respondent, e.g., disneystorelive.com, 20thcenturyfox.org., hyattlive.com, circuitcitylive.com, hiltonlive.com, safewaylive.com and hammacherschlemmerlive.com. It defies logic and any statistical probability that Respondent "accidentally" conceived of the domain names disneystorelive.com or rtlgroup.com for any other purpose except selling them to the rightful trademark owner.

Annex 22 to the Complaint is a copy of the April 21, 2000, letter from Respondent to Complainant which leaves no doubt as to Respondent’s intentions in registering and using the domain name in bad faith. In this letter, Respondent, only a mere 12 days after registering the domain name, admits that he has abandoned all plans for using the domain name and has put it up for sale. He further indicates that he is well aware of the merger involving Complainant and how valuable his domain name would be to Complainant. Respondent’s assertion that he had originally intended to use the domain name is not to be accorded any weight.

Respondent in his letter attempts to auction the domain name in issue to Complainant, mentioning a sum far in excess of his out-of-pocket costs, namely U.S. $75,000. In the typical modus operandi of someone without any legitimate interest in a domain name who is trying to profit from it, he emphasizes how valuable he believes this domain name would be to Complainant in view of the size of Complainant’s business.

Therefore Respondent’s activities clearly constitute bad faith registration and use of the domain name in issue. In the case in issue, Respondent’s bad faith was evidenced right from the beginning due to his quick, intentional grabbing of a domain name which was likely to constitute a new business name (as well as incorporating Complainant’s trademark) of great value to the Complainant. The only action Respondent has taken since his hijacking of the domain name has been to attempt to sell the name either to the public by announcing "This Domain For Sale" or by attempting to auction off the name to Complainant in direct correspondence.

Respondent, to the best of Complainant’s knowledge, has made no attempt to create or develop a website.

In conclusion, the totality of circumstances in this case clearly demonstrate a violation of the Uniform Domain Name Dispute Resolution Policy. The domain name in issue, "rtlgroup.com", consisting of Complainant’s well-known trademark RTL in a combination identical to the name of a new business entity to which Complainant belongs, was registered and has been used in bad faith by Respondent who has no rights or any legitimate interests in the domain name but rather, following his apparent pattern regarding other marks, acquired the domain name for the express purpose of preventing Complainant from using the natural and appropriate name for its business, thereby leading to an attempt to sell the domain name to Complainant for valuable consideration far in excess of his out-of-pocket costs. Moreover, if the domain name in issue is not transferred to Complainant there will be a continuing likelihood of confusion by the public and resulting harm to Complainant’s valuable trademark and business name rights.

Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name "rtlgroup.com" is transferred to Complainant.

B. Respondent

In its response, the Respondent has stated the following.

1. Response to the Complainant's claim that the domain name "rtlgroup.com" is confusingly similar or identical to a trademark in which they have rights.

Just because "RTL" is a registered trademark of the Complainant and is very popular in Europe, that doesn't mean this is true in America. As a matter of fact, RTL is relatively unknown in America. "RTL" in America stands for mainly one thing - Right to Life. Furthermore, though the WIPO may have ruled in favor of the Complainant (generally speaking) on other similar cases in the past where a suffix (in this case "group") was not sufficient to distinguish a trademark (in this case "rtl") from some other combination of the trademark (in this case "rtlgroup"), it is impossible to govern creativity on the Internet and the future of the medium. Just because some company out there owns a famous name, that doesn't give them the right to own every possible combination of that name no matter how famous they are. That is just unreasonable and unfair. So while the Complainant may own many trademarks in many places, it cannot be entitled to all and their popularity in America is nonexistent. Consider the following domain names, which have in them many famous brands, that are not owned by the famous companies associated with them:

Microsoftgroup.com - owned by Webvisions (registered 3/00)

Aolgroup.com - owned by Rafa Ocana (registered 1/00)

Timewarnergroup - owned by Exim Infotek Ltd. (registered 3/00)

Cocacolagroup.com - not yet registered

Bertelsmanngroup.com - not yet registered

The Complainant's trademark was registered with the US PTO after Respondent registered the domain "rtlgroup.com" (Complaint pg 6 and Annex 6). In the case of Netgrocer Inc. v. Anchor (Annex 2 to the Response), the panel held that: "Finally, the record contains insufficient evidence to establish that Respondent intentionally attempted to create a likelihood of confusion with Complainant's mark which, after all, was not registered with the U.S. PTO until after Respondent had registered the domain in question."

Furthermore, the facts are as follows:

- Respondent registered the domain "rtlgroup.com" on April 9th, 2000.

- The official name of Complainant's company was not disclosed until July 4, 2000.

- Regardless of whatever implications the Complainant has made against Respondent with respect to registering the domain "rtlgroup.com" around the time that their new entity was announced, Respondent does not live in Germany nor does he read German newspapers or understand German (the Complainant claimed the German press speculated about the name of the new entity). This claim is nothing more than conjecture by the Complainant.

- Respondent had no knowledge of the merger until after Respondent was solicited through e-mail by the Complainant.

- Respondent lives half a world away in North America.

2. Response to the Complainant's claim that Respondent has no rights or legitimate interests with respect to the domain "rtlgroup.com"

Respondent registered the domain name for a personal reason - not for commercial reasons, not for profit, and certainly not to disrupt the Complainant's business or any business for that matter by misleading or redirecting anyone to my website, claiming that Respondent is an associate or subsidiary of the Complainant. As a matter of fact, Respondent has not received one email to date regarding "rtlgroup.com" from someone looking for a business or suspecting an affiliation with RTL, except of course from CL-UFA and several others wanting to buy the domain (these offers turned out to be false offers). Consider the following: In the case of Infospace.com Inc. v. Brian Pianfetti (Annex 3 to the Response), the panel ruled in favor of the respondent and held that "it appears unlikely that the similarity in names was designed to attract Respondent's target users to his site based on confusion with Complainant's mark and services."

Getting back to the reason why Respondent registered the domain, it was registered because Respondent wanted to develop a personal website for him and a couple of his friends who strongly believe in the "Right to Life" cause, hence the name "rtlgroup" (rtl meaning "right to life" and group for a group of friends). Unfortunately, like most of the sites that Respondent has registered in the past, Respondent lost interest in it and eventually gave up my plans for the site, as Respondent was just too busy at that point in his life. For example, Respondent had registered "dollarandadream.com" with the idea of selling lottery tickets on the Internet, but it turns out that selling lottery tickets online in America is prohibited (Annex 8 to the Response). Respondent also registered "sale-quest.com" with the idea of building a supersite that contained real-time information on sales for many things, but that idea was just too common already (Annex 9 to the Response). "Stolenautos.com" was also registered by Respondent in the past, with the intention of helping people who had their cars stolen retrieve it through public involvement (Annex 10 to the Complaint). As with the 3 previously mentioned sites, including "rtlgroup.com", Respondent eventually lost interest in all of them for various reasons.

Consequently, Respondent put all of them up for sale, which from what Respondent understands is not illegal or wrong in any way. Additionally, it should be understood that because Respondent abandoned his plans for his websites (which is not in fact true because Respondent would like to develop some of them if Respondent would get a chance and when Respondent would be more prepared), this does not mean that Respondent gave up his rights to them. Consider the case of Gateway, Inc. v. Pixelera.com, Inc (Annex 1 to the Response)….."There is no foundation for contention that by changing its corporate name the Respondent abandoned any rights it might have acquired in the disputed domain name." Similarly, it could be argued that by changing Respondent’s plans to develop "rtlgroup.com" and putting it up for sale does not mean that Respondent has abandoned his rights.

3. Response to Complainant's claim that Respondent registered and used the domain "rtlgroup.com" in bad faith

Of all the claims that the Complainant has brought against, this one couldn't be further from the truth. As Respondent stated before in Section 2-B his interests were genuine and not abusive or disruptive when Respondent registered the domain "rtlgroup.com". Respondent’s interests was purely personal, and not meant to harm the Complainant nor anyone else. In addressing the Complainant's argument that Respondent abandoned all plans for "rtlgroup.com" just 12 days after he registered it, this is to be given no weight at all. For in a span of 12 days many things can happen.

In light of the above quote, the Complainant's argument that Respondent has used "rtlgroup.com" in bad faith by putting it up for sale should not be given any serious consideration. After all, by putting the domain up for sale in the WHOIS database, Respondent wasn't doing anything wrong. If register.com can re-sell domain names for people who aren't quite sure what to do with a domain(s) that they own, why can't Respondent do it himself? But that is not the point here. The point is that Respondent is not doing anything wrong by putting the domain up for sale.

Moreover, Respondent never tried to sell them anything - they came after Respondent and not the other way around. Respondent merely offered to sell it to them.

Finally, as further proof that the Complainant's case of bad faith is weak is the fact that the Complainant has falsely accused Respondent of registering domain names containing famous trademarks. In the Complainant's own words they state (Complaint pg 12):

"Annex 19 is a list of many of the domain names registered by Respondent - it obviously includes many valuable trademarks of parties with no affiliation to the Respondent, e.g., disneystorelive.com, 20thcenturyfox.org, hyattlive.com, circuitylive.com, hiltonlive.com, safewaylive.com, and hammacherschlemmer- live.com. It defies logic and any statistical probability that Respondent "accidentally" conceived of the domain names disneystorelive.com or rtlgroup.com for any other purpose except selling them to the rightful trademark owner."

In reference to the above excerpt, Respondent does not own any of the domains mentioned above, except of course for "rtlgroup.com".

In light of the previous paragraphs, the Complainant's attempt to portray Respondent as having a pattern of registering domain names with famous trademarks is clearly untrue.

 

6. Discussion and Findings

According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:

1) that 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,

2) that the Respondent has no legitimate interests in respects of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The RTL trademark and the characterizing part of the various tradenames is registered as trademark in several countries including the US. The US trademark registration was filed already on July 27, 1998, and was first commercially used in April 1985. The fact that the registration was applied for in the name of another company belonging to the "rtl-group" and was assigned to the Complainant after the registration of the domain name in question, does not mean that the present owner would not be entitled to derive any rights from that trademark registration.

Use of a trade mark by related companies shall inure to the benefit of the registrant or applicant also in the US.

This means that the Respondent's allegation concerning knowledge of the trademark rights in the US do not seem to be relevant.

Regarding the question of likelihood of confusion between RTL and "rtlgroup" the Panel is of the opinion that the addition of the word "group" in this case would not avoid likelihood of confusion and confusingly similarity respectively since the word "group" as a designation for a commercial origin is generic or at least descriptive like Inc., AB, AG, AS, GmbH, N.V. and the like.

It is also very well established in trademark practice and case-law that such additions would not cause the opposite marks to be non-confusing provided the main elements are sufficiently distinctive. In the Panel’s opinion the element RTL is sufficiently distinctive to be considered as the dominating and the most relevant part of the domain name "rtlgroup.com".

The Respondent's allegation that the acronym RTL would have the connotation "Right to Life" in the US is not in any way evidenced by the Respondent. In the written material there is no evidence which shows that the Respondent has any business or any other reason for using the RTL mark and furthermore the Respondent does not seem to be commonly known by the name RTL.

It can also be concluded, since the Respondent has not provided any evidence to this effect that he has not any rights or legitimate interests in the domain name.

The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.

Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.

Paragraph 4 (b) regulates which kind of evidence that is required.

It is probably not only coincidental that the Respondent filed his application within two days from the press conference in London. The fact that two other parties in the US also registered versions of the RTL trademark within three days does seem to indicate that the merger had become known in the US.

However, the allegation by the Complainant that the Respondent has shown a pattern of registering trademarks belonging to third parties does not seem to be supported by the evidence. None of the domain names listed in Annex 19 to the Complaint seem to be owned by the Respondent.

The facts that the Respondent is using "This domain is for sale" on the WHOIS and has offered to sell the domain name to the Complainant just 12 days after registration of the domain name contradicts the Respondent's statement that he originally had the intention to conduct fair use and not to commercially exploit it.

In view of the above, the Administrative Panel finds that the Respondent has registered and used "rtlgroup.com" in bad faith.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain name registered by the Respondent is identical or confusingly similar to the trademarks 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. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requests that the registration of the domain name "rtlgroup.com" be transferred to the Complainant.

 


Jonas Gulliksson
Presiding Panelist

Nelson A. Diaz Geert Glas
Panelists

Dated: October 11, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0801.html

 

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