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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing

Case No. D2005-0309

 

1. The Parties

The Complainant is Jazeera Space Channel TV Station, Doha, Qatar, represented by Al Tamimi & Company, Dubai, United Arab Emirates.

The Respondent is AJ Publishing aka Aljazeera Publishing, Dubai, United Arab Emirates.

 

2. The Domain Name and Registrar

The disputed domain name <aljazeera.com> (the “Domain Name”) is registered with Tucows (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2005. On March 24, 2005, the Center transmitted by email to the registrar a request for registrar verification in connection with the domain name. On March 24, 2005, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2005. At the request of the Respondent, the due date to file the Response was extended until May 15, 2005. The Response was filed with the Center on May 15, 2005.

The Center appointed Warwick Smith, Mohamed-Hossam Loutfi and John Lambert as panelists in this matter on June 15, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

By Procedural Order No. 1 dated June 20, 2005, the Panel requested a supplementary statement from the Complainant, addressing the allegations of reverse domain name hijacking made by the Respondent in its Response. The time for the Panel to give its decision in the case was extended to July 6, 2005.

A supplementary statement was duly filed by the Complainant, and by Procedural Order No. 2 dated July 1, 2005, the Panel requested a reply from the Respondent, and extended the time for the Panel’s decision to July 15, 2005. That reply has since been received, and it and the Complainant’s supplementary statement have been considered by the Panel.

Subsequently, the time for the Panel’s decision was further extended to July 20, 2005.

 

4. Factual Background

The Complainant describes itself as the largest and most controversial Arabic news channel in the Middle East. According to the Complaint, the Complainant was established in 1996, and it now offers news coverage 24 hours a day from around the world. It is based in Qatar, but says that it has 30 bureaus and dozens of correspondents around the world. Its programming is focused primarily on news coverage and analysis, and it is not in dispute that the Complainant has developed a large audience among Arabic-speaking people.

The Complainant has produced evidence of numerous awards and achievements. It is not necessary to refer to them in detail – it is enough to say that it is clear that, over the last few years, the Complainant has achieved worldwide recognition of its television news services.

The Complainant’s Domain Name and Websites

The Complainant owns the domain name <aljazeera.net>. The <aljazeera.net> domain name was registered on August 30, 1996, and the Complainant operates an Arabic language website at that domain name. It later started operating an English-language news service at <english.aljazeera.net>.

The Complainant’s Other Publications

In April 2004, the Complainant began producing a monthly newsletter called “Al Multqa”. A copy of this newsletter has been produced, and, although it is in the Arabic language and no translation has been provided, it shows on the front cover a device which the Complainant says forms part of a number of trademarks owned by it. The same device appears on the cover of another publication called “Agency & Client”. This magazine is published by OMD Dubai, in association with the Complainant. The device earlier referred to appears on the front cover, immediately above the words “ALJAZEERA CHANNEL”.

The Complainant’s Trademarks

The Complainant has produced evidence that it is the registered proprietor of an AL JAZEERA mark in a number of countries, predominantly for goods and services in International classes 9, 16, 38, 35, and 41. The Complainant has produced copies of certificates of registration of the AL JAZEERA mark in New Zealand, Bahrain, Norway, China, Russian Federation, United Arab Emirates, Morocco, Switzerland, United States of America, Jordan, Kuwait, Lebanon, Tajikistan, the European Community, and Saudi Arabia.

In none of these jurisdictions does it appear that the English-language expression “Al Jazeera” has been registered. Rather, what has been registered is the device referred to above. To those with knowledge of the Arabic language, the “device” is in fact a representation of the words “Al Jazeera” in distinctive Arabic letters. Because translations of the registration certificates have not been provided in all cases, it is not possible for the Panel to say when the earliest registration of the mark was effected by the Complainant. However, in its supplementary statement, the Complainant states that its marks have been registered from June 30, 2001. The Panel notes that the application to register the mark in the United States of America, filed on September 14, 2001, referred to a first use date of November 30, 1996.

The Respondent and the Domain Name

Although the Respondent is known as “AJ Publishing”, it says in its response that it is incorporated in England and Wales as “The Island Limited”. It has operated in London since 1992, but has a regional office in Dubai, which is the address for the administrative and technical contact for the domain name. It says that it operates a publishing business in which it employs 32 members of staff globally, with offices in the United Kingdom and in Dubai, and editorial teams in the United Kingdom, Egypt, and Malaysia.

The domain name was registered on April 12, 1996. The Respondent says that it uses the domain name to operate an online version of a magazine it first produced in 1992, called “Aljazeera”. The Respondent annexed to its response a copy of the cover of the first edition of its magazine, dated May 1992. The cover features the single word “Aljazeera” in bold type at the top left, with the words “The new voice of Aljazeera al Arabia in the UK” immediately below.

The Respondent says that the website it operates at the domain name reviews events about and from the geographical region known as “Aljazeera”. That region is the Arabian Peninsula. (An attachment to the Response refers to a website operated by a Dr. Hassan El-Naijar, which informs the web browser that the word “Al-Jazeerah” in Arabic, may be translated in English as “The Island”. The website explains that “Al Jazeerah” is used as an abbreviation for the Arabian Peninsula, referred to by many Arabs as “The Island” because it is surrounded by sea from three directions, and by the desert on the fourth side.)

The Respondent says further that its Aljazeera print magazine originally targeted the large expatriate Middle Eastern community in England, in particular those from the Arabian Peninsula. The publication is now only produced as an “E-edition” on the website at the domain name. It reports, with magazine-style articles, information from and about the geographical region of “Aljazeera”. The majority of visitors to the website are United Kingdom-based, and they represent the continued readership of the Respondent’s original print-based publication.

The Respondent says that its website at the domain name ranks amongst the top 7,000 websites globally, and that the E-edition has a circulation of over 8,000 subscribers.

The Respondent also publishes other information sources for the Islamic world, including a website at “www.islamonline.com” and an online sales and auctions site at “www.muslims.net”.

Pre-commencement Communications between the Complainant and the Respondent

The Complainant says that it only became aware of the registration of the domain name “recently”. It says that on December 14, 2004, it contacted the Respondent at the listed contact email address taken from the website at the domain name, namely “editor@aljazeera.com”.

The Complainant has produced a copy of the letter from its representatives dated December 14, 2004. In the letter, the Complainant’s representative referred to the Respondent publishing a website at the domain name, dedicated to news and information, called “Al Jazeera International English Edition”. The letter expressed the Complainant’s concern at the prospect of confusion in the marketplace (having regard to the Complainant’s reputation in the name “Al Jazeera”), and asserted that the Respondent’s use of the domain name “may misrepresent a trade connection between your company and our client “Al Jazeera TV Channel”. The letter asserted that the Complainant had already received complaints from “spectator” visiting the Respondent’s website at the domain name in the mistaken belief that it was the Complainant’s site.

The letter from the Complainant’s representative went on to refer to the Policy, and sought the Respondent’s undertaking to cease any use of the domain name or any domain name substantially identical with, or deceptively similar, thereto. The letter sought the transfer of the domain name to the Complainant within seven days, and reserved the Complainant’s rights in the eventuality of the Respondent not providing the undertakings requested.

The Respondent denies receiving this letter.

 

5. Parties’ Contentions

A. Complainant

Domain Name identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(i) The Complainant submits that the relevant part of the domain name, “aljazeera”, is confusingly identical to the Complainant’s trademarks referred to in the Complaint. The addition of the expression “.com” is irrelevant on this issue.

Respondent has no rights or legitimate interests in respect of the Domain Name.

(i) The Respondent has no connection with the Complainant, and the Complainant has not licensed or authorized the Respondent to use a domain name which is confusingly identical to the Complainant’s trademarks, as part of the domain name or in any other way.

(ii) The Respondent does not have any trademark rights in the name “Al Jazeera”.

(iii) The Respondent has not been using the domain name for a bona fide purpose, as it is operating a site portraying itself to be the same entity as the Complainant.

(iv) The fact that the Respondent’s website at the domain name provides a link to the Amazon.com website, and hosts “pop up” advertisements, demonstrates that the Respondent has been operating the website at the domain name for commercial purposes and pecuniary gain.

(v) The existence of the domain name confuses Internet users who wish to access and review the website of the Complainant’s television channel. In support of this submission, the Complainant has produced copies of numerous written communications from third parties, all dated between June 2004, and November 2004, questioning whether there is some connection between the Complainant’s website and the website at the domain name. The large number of these communications evidences substantial confusion amongst Internet users as to who is the true operator of the website at the domain name.

(vi) On November 3, 2001, the BBC published a news article on their website which stated that the BBC believed that the website at the domain name, was the Complainant’s English-language website.

(vii) The “www.brandchannel.com” website has also published information stating that Al Jazeera is offering news in English at “www.aljazeera.net” and “www.aljazeera.com”. This is another example of confusion, where people are led to believe that the website at the domain name belongs to the Complainant.

(viii) The Respondent is intentionally seeking to exploit user confusion by diverting Internet users away from the Complainant’s site to its own website for its own pecuniary gain (the gain being in the form of “click through” or similar revenue measured by the number of user visits) – citing Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410.

(ix) The Respondent’s conduct in using the domain name to divert Internet users to the “www.amazon.com” and “www.alclick.com” websites, and in the hosting of “pop up” advertisements, does not amount to the offering of goods or services under the domain name, nor could such offering be regarded as bona fide having regard to the lack of bona fides in the Respondent’s unauthorized adoption and misleading use of the domain name. For a use to be bona fide, the use must be one in good faith under paragraph 4(a)(iii) of the Policy (citing First American Funds, Inc v. Ult.Search, Inc, WIPO Case No. D2000-1840, and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

Domain Name registered and being used in bad faith

(i) The Respondent’s bad faith in registering the domain name, is evidenced by the following:

(a) The absence of any authorization by, or connection with, the Complainant, and the Respondent’s subsequent use of the domain name, lead to the inevitable conclusion that the Respondent registered the domain name with the intent that it would be used to attract, for commercial gain, Internet users to the Respondent’s website and to cause confusion in the eyes of Internet users. The domain name was therefore registered in bad faith under paragraph 4(b)(iv) of the Policy.

(b) The Respondent’s use of the website at the domain name is disrupting the business of the Complainant under paragraph 4(b)(iii) of the Policy.

(ii) The Respondent has been using the domain name in bad faith, as evidenced by the following:

(a) The domain name is being used to attract Internet users to the Respondent’s website in the mistaken belief that they are visiting the website of the famous news channel, Al Jazeera, or related websites of the Complainant.

(b) The Respondent’s website provides the same services as are provided on the Complainant’s websites, in the same format, thereby confusing Internet users as to the true source of the news and information.

(c) The Complainant has a wide international reputation for the Al Jazeera name. Therefore, any users visiting the website at the domain name will do so in the mistaken belief that they are visiting the Complainant’s website. That confusion is proved by the numerous emails produced at Annexure 13 to the Complaint, and the BBC news article and brandchannel.com publication referred to above.

(d) The Respondent’s website at the domain name is providing a link to another website, namely the website at “www.amazon.com”, which is selling documentaries about the Complainant’s coverage of the Iraq war. This link gives users the perception that the website is one of the Complainant’s websites (which they trust as an Arabic news channel, and will encourage users to buy books from Amazon.com through the link from the website at the domain name).

(e) The Respondent provides a facility on the website at the domain name, whereby browsers can be linked to the advertising website “www.alclick.com”, again for pecuniary gain. The presence of “pop-up” advertisements on the Respondent’s website, is also indicative of the Respondent’s intention of deriving pecuniary gain.

(iii) The Complainant’s trademark has been extensively used and promoted throughout the world. AL JAZEERA now is the most reputed Arabic news satellite channel in the world.

(iv) The Complainant refers to Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, where the Panelist said:

“The fact that the Complainant’s name and trademark is so well and widely known, coupled with the fact that the Respondent’s mailing address is in the same district as the Complainant’s business, makes it inevitable that the Respondent registered the domain name in full knowledge of the Complainant’s rights and interests. Certainly there could be no doubt as to the Respondent’s knowledge at the time of registration of the second domain name. The Respondent has offered no explanation as to why the domain names were chosen and no legitimate reason is apparent. The inference may be drawn therefore that in some way the Respondent hoped to capitalize on the reputation of the Complainant.”

(v) The Respondent’s registration and use of the domain name in this case amounts to use and registration in bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. That is because the Complainant’s AL JAZEERA trademark is well-known and has a strong reputation worldwide, and the domain name is confusingly similar to the name and registered trademark AL JAZEERA and is not a domain name any user would choose unless it knew of the AL JAZEERA trademark. The domain name has been registered solely for the purpose of attracting users who type in <aljazeera.com> on the presumption that they will reach a website operated by the Complainant. The Respondent has therefore acted in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, as the Respondent is seeking to profit from the likelihood of confusion created by the domain name, and is consciously and purposefully disrupting the business of the Complainant.

(vi) The Respondent could not possibly make any plausible, actual, or contemplated active use of the domain name <aljazeera.com>, that would not violate or infringe the Complainant’s trademark rights in the “Al Jazeera” name or otherwise be legitimate.

B. Respondent

Domain Name identical or confusingly similar to a trademark or service mark in which complainant has rights

(i) The filing and registration of the Complainant’s trademarks are dated after 2000, long after the registration of the domain name on April 12, 1996. The Complainant’s organization did not even exist at the time the domain name was registered (a web page from the Complainant’s website at “www.english.aljazeera.net”, downloaded by the Respondent on April 15, 2005, states: “Aljazeera has come a long way since it was launched in November 1996”). A complainant must have rights in a trademark which antedate the date on which the at-issue domain name was registered.

(ii) The Complainant’s trademarks consist only of a logo formed from a stylized Arabic-language script. The Complainant has no registration of the expression “Aljazeera” written in the English language. The Complainant therefore only has rights to a graphical logo, not to any English-language word mark. The Complainant’s trademark is therefore not identical to the domain name. Further, the logo is formed from complex, non-standard Arabic characters, moving the Complainant’s mark further away from any possibility of being identical to an (English-language) domain name.

(iii) The English translation of the mark is “The Island”, which is clearly not identical (or similar) to the domain name.

(iv) The Complainant’s registered mark is written in highly stylized non-standard Arabic characters, which the average reader is not able to decode as “Aljazeera”. There is little similarity between the text used in the Complainant’s logo and how “Aljazeera” is actually written in non-stylized Arabic.

(v) “Aljazeera” is a geographical location, and as such is a generic, non-coined and non-unique word over which no person or entity can claim proprietary rights. The word is often used in commerce with an additional word, typically descriptive – e.g. Al Jazeera Press, Al Jazeera Paints, and Al Jazeera Publishing. The Complainant itself always uses the expression “Aljazeera Channel” when referring to itself, and “Aljazeera.Net” when referring to its website. The word “Aljazeera” on its own is not distinctive of the Complainant.

(vi) There is no visual similarity between the domain name and the Complainant’s marks.

Respondent has rights or legitimate interests in respect of the Domain Name

(i) The Respondent has a trademark application pending in the United Kingdom for the word mark ALJAZEERA.COM. It maintains common law rights in ALJAZEERA MAGAZINE.

(ii) People who visit the website at the domain name do so because of the website’s reputation established over many years. The mark ALJAZEERA.COM has become distinctive of the Respondent’s website, and that distinctiveness has been acknowledged by the United Kingdom Patent Office.

(iii) The Respondent has legitimate interests in the Domain Name under paragraphs 4(c)(i) and 4(c)(ii) of the Policy. First, the Respondent has been offering a bona fide service through the website at the Domain Name. That service offers content which predates the Complainant by years, and is distinctive of the Respondent.

(iv) The Respondent’s service does not compete with the Complainant – it is a different service presented in a different format, different style, and to a large degree in different language (English) from the Complainant (primarily an Arabic language only satellite provider). The Respondent is a legitimate and bona fide publisher, and the domain name has been used as part of that bona fide business.

(v) The Respondent has a legitimate interest in reporting about the geographical region known as “Aljazeera”.

(vi) “Aljazeera” is an Arabic word, for which there is no exact character substitution in English. Various phonetic equivalents are used e.g. Aljazeerah, Aljazera, Aljiizera, Algezira, and Aljazirah, are common spellings. There are also other “Aljazeera” geographical regions, including an official administrative region in Sudan, and a region comprising parts of north-eastern modern Syria and north-western modern Iraq. No-one is entitled to exclusivity in relation to a domain name which is a geographical location (citing Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069, Port of Helsinki v. Paragon International Projects Ltd, WIPO Case No. D2001-0002 and Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769).

(vii) There are hundreds of organizations using “Aljazeera” and its phonetic equivalents.

Whether the Domain Name was registered and is being used in bad faith

(i) Because the domain name was registered before the Complainant organization existed, the domain name could not have been registered by the Respondent to disrupt the Complainant’s business, or to prevent the Complainant from reflecting its trademarks in a corresponding domain name (citing John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and PrintForBusiness B.V. v. LBS Horticulture, WIPO Case No. D2001-1182).

(ii) The Respondent has never engaged in any activities to sell, rent, or transfer the Domain Name.

(iii) No misrepresentation is made on “www.aljazeera.com” which would directly or indirectly imply that there is an association with the Complainant. The Respondent’s logo, which appears at the top of all pages on its website, is completely different from that of the Complainant. Further, the Complainant and the Respondent offer their respective services largely in different languages – 80% of the Respondent’s readership is from the United Kingdom, whereas the Complainant’s international recognition is as an Arabic organization. The Complainant’s television channel offers broadcasts in Arabic only. The design and format of the respective websites of the Complainant and the Respondent are totally different. The website at the Domain Name is clearly in magazine form, with advertisements placed on most pages. There is no suggestion that the Respondent is a satellite broadcaster or news agency like the Complainant. The Complainant and the Respondent report on the same events, but from different perspectives and to different audiences.

(iv) In the “About Us” section on the Respondent’s website, there is a statement that the website is not associated with the Complainant, but is owned by Aljazeera Publishing, an independent media organization in existence since 1992. The Respondent’s website does not contain links to the Complainant’s websites, nor use any of its stories. The Respondent has never displayed the Complainant’s name (Aljazeera Channel) or trademark logo, nor indicated to any visitor to the Respondent’s website that the visitor has arrived at the Complainant’s website. The Respondent’s website has never been challenged until the Complainant brought this proceeding. The Respondent’s use of the Domain Name has been unopposed for almost 9 years.

(v) It is not in the interests of the Respondent to create a “likelihood of confusion” with the Complainant. The Complainant has a controversial reputation, and there are international boycotts against it. Many advertisers would be reluctant to deal with the Complainant for those reasons, and the Respondent’s business would be severely disrupted if its advertisers wrongly associated it with the Complainant.

(vi) Advertisers who show their advertisements on the website at the Domain Name are not under any impression that the Respondent’s website is associated with the Complainant.

(vii) The Respondent generates advertising revenue through two sources. One is direct advertising, and the other is advertising through the third party network “Alclick”. Alclick purchases pre-defined advertising space on the website at the Domain Name, and the Respondent has limited control over what advertisements are shown once it sells the space. The advertisement mentioned in paragraph 43 of the Complaint (an advertisement for a DVD called “Control Room” about the Iraq War, which referred to the Complainant) was not shown intentionally by the Respondent. That advertisement was placed by a third party independent advertiser selling products on “www.amazon.com”, and the advertisement pointed to “www.amazon.com” and not to the Complainant’s website.

Reverse Domain Name Hijacking

(i) The Complainant has continuously and systematically used references to the Domain Name on the Complainant’s website, in order to create confusion. On many occasions, the Complainant falsely claims that its reporters’ email addresses are “@aljazeera.com”, thus creating confusion for the Complainant’s website visitors. Despite regular attempts by the Respondent to request the Complainant to stop this practice, it has persisted.

(ii) At Annex 13 of the Complaint, the Complainant has provided copies of numerous comments from allegedly confused readers. The Respondent questions the validity of these “emails”. They are not ‘emails’, but messages submitted on the Complainant’s website. How could these people be “confused” when they were clearly able to send a message from the Complainant’s website?

(iii) Although the page from the BBC website produced by the Complainant dates back to 2001, it appears that the Complainant did not contact the BBC to correct the incorrect reference to the Respondent’s website. That fact demonstrates the Complainant’s willingness to permit any instances of confusion to continue, in order to expand its efforts to conduct reverse domain name hijacking.

(iv) The Complainant’s representative sent its letter dated December 14, 2004, to “editor@aljazeera.com”, and not to the address provided in the WHOIS information for the domain name. When the Complainant instituted this proceeding, it sent an email to the WHOIS address of “admin@aljazeerapublishing.com”, and stated that the dispute was in relation to the domain name <aljazeera.net>. This latter email was not sent to “editor@aljazeera.com”, and the Complainant’s use of a different address demonstrates a systematic attempt to deceive.

(v) The fact that the letter dated December 14, 2004, was not sent by post or fax, also suggests that the Complainant was attempting to legitimize its Complaint by claiming that it had attempted to communicate with a respondent who did not respond.

(vi) It is not true to say (paragraph 38 of the Complaint) that the Complainant only recently found out about the domain name. The domain name has been registered and active for over nine years, and when the Complainant registered <aljazeera.net>, it would surely have observed that the domain name was registered.

(vii) Over many years, the Complainant has referred to the domain name on its own website. In 2002, the Respondent’s organization met with Mr. Salah Al-Seddiqi, to discuss the Complainant’s fraudulent and mischievous use of the Respondent’s intellectual property on the Complainant’s website.

(viii) The Complainant has failed to clarify in its Complaint which classes are associated with each trademark in which it claims rights.

(ix) The Complainant has been using <aljazeera.net> for many years, but now because it wants to enter an international English market, it has decided to attempt to steal the domain name.

(x) The Complainant was well aware when it filed the Complaint that the Respondent had unassailable rights to the domain name, because it knew that the domain name had been registered before the Complainant came into existence.

(xi) Although given an opportunity to respond to the Respondent’s reverse domain name hijacking allegations, the Complainant has filed a Response which fails to address the Respondent’s allegations. The Complainant’s failure to respond in substance should be taken as acceptance of the Respondent’s allegations.

(xii) The Complainant has further demonstrated bad faith in its conduct of the Complaint itself, by misleadingly seeking an extension of time to respond to the Panel’s Procedural Order No. 1, when the Complainant had no proper basis for that request.

Complainant’s supplementary statement on reverse domain name hijacking allegations

In response to the Panel’s first Procedural Order, the Complainant made the following supplementary submissions:

(i) The Complainant was founded in 1996 – “the order to establish Al Jazeera Space Channel was issued in February 1996”.

(ii) The Complainant has trademark registrations dating from June 30, 2001, while the Respondent only applied to register <aljazeera.com> as a trademark in 2004, and no registration was concluded.

(iii) The Respondent’s website is providing links to other websites, giving users the perception that the Respondent’s website is one of the Complainant’s websites.

(iv) The Complainant repeated the allegations in the Complaint referring to Annexures 16, 17, and 18 of the Complaint.

 

6. Discussion and Findings

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] 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) [the respondent has] 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 respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the Panel to:

“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Because the Panel is of the view that the Complainant has not proved that the Respondent registered the domain name in bad faith, the Complaint must fail. In those circumstances, it is not necessary for the Panel to reach any conclusion on the issues under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Again, it is not necessary for the Panel to make any findings under this heading. The Complaint must fail, because of the Complainant’s failure to prove that the domain name was registered by the Respondent in bad faith.

C. Registered and Used in Bad Faith

The domain name was registered on April 12, 1996. According to the Complaint, the Complainant was “founded in 1996” (Complaint, paragraph 14). No further information was provided in the Complaint as to exactly when in 1996, the Complainant was founded, although one of the trademark certificates of registration produced by the Complainant (the certificate for the registration in the United States of America) claimed a first use date of November 30, 1996. It appears also from the Complaint, that the Complainant’s domain name <aljazeera.net> was first registered on August 30, 1996.

In its response, the Respondent produced a page downloaded from the Complainant’s English-language website at “www.english.aljazeera.net”, in which the following statement appears: “Aljazeera has come a long way since it was launched in November 1996”. The Respondent went on to cite a number of WIPO UDRP panel decisions in support of the submission that, when a domain name is registered before a trademark right is established, the registration of the domain name cannot have been in bad faith because the registrant could not then have contemplated the Complainant’s (non-existent) rights (citing John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827 and PrintForBusiness BV v. LBS Horticulture, WIPO Case No. D2001-1182).

The Panel accepts the Respondent’s submission on this point. Numerous UDRP panel decisions have held that to succeed under paragraph 4(a)(iii) of the Policy, a complainant must show that the alleged bad faith existed at the time the domain name was registered. See for example Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, and the cases gathered at page 22 of the decision in that case. See also Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535. In the latter case, the complainant was not incorporated at the time the at-issue domain name was registered, and the complaint was dismissed substantially for that reason.

In this case, it was quickly apparent to the Panel that the Complainant’s evidence was inadequate on the issue of bad faith at the date the domain name was registered. Because the Respondent took the point, and relied on it in support of its reverse domain name hijacking allegations, the Panel invited the Complainant to file a supplementary statement dealing with the issue. In making that request, the Panel specifically requested the Complainant to address the Respondent’s submission that, when a domain name is registered before a trademark right is established, the registration of the domain name is not normally regarded as having been made in bad faith, because the registrant could not have contemplated the complainant’s (then) non-existent right.

The Complainant did file a supplementary statement in response to that request, but all it said on the point presently under consideration was: “The Complainant was founded in 1996, the order to establish Al Jazeera Space Channel was issued on February 1996.” Given the context of the Panel’s request, including the background of allegations of reverse domain name hijacking, that response from the Complainant was clearly inadequate. No copy of the “order” was provided, nor any explanation given as to who issued the “order” or precisely what was ordered. Specifically, the supplementary statement provided no evidence of the Complainant actually being in existence at the date of registration of the domain name in April 1996, nor any evidence of the Complainant having established by that time any trademark or other rights in respect of AL JAZEERA.

The failure to establish that the domain name was registered in bad faith is fatal to the Complainant’s case, which must be dismissed.

 

7. Reverse Domain Name Hijacking

The views of the majority of the Panel are as follows.

Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking. (On those points, refer to the decision of the three-member panel in Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0545.)

Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.

The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.

Turning to the position in this case, the majority is of the view that it should have been clear to the Complainant that its case had no prospect of success. Add to that the matters referred to in subparagraphs (iii) and (iv) below, and the majority reaches the conclusion that the Respondent’s allegation of bad faith use of the Policy must be upheld. The majority has reached those views for the following reasons:

(i) The Complainant is a substantial corporation, which operates in numerous countries and has access to high quality legal advice.

(ii) The structure of the Complaint itself suggests that the Complainant was well aware that it had to prove not only that the Respondent had been using the domain name in bad faith, but also that it had registered the domain name in bad faith (the two aspects of paragraph 4(a)(iii) of the Policy are dealt with as separate and distinct issues at subparagraphs (a) and (b) of paragraph 43 of the Complaint). If the Complainant appreciated that it had to prove bad faith registration as at April of 1996, it must also have appreciated that it could not do so.

(iii) The Complainant has failed to address a number of issues raised by the Respondent in support of its allegations of reverse domain name hijacking. One matter which clearly called for a response, was the apparent use by the Complainant of “@aljazeera.com” email addresses for its journalists, on its website at “www.english.aljazeera.net”. The Respondent alleged that the Complainant had been adopting that practice continuously and systematically, and that it had raised the issue with the Complainant without success (see paragraph 21 and Annexure 1 to the Response). The majority may have been prepared to accept that an occasional reference to <aljazeera.com> could have found its way onto the Complainant’s own website by mistake, but the Respondent’s allegation of a systematic intent to encourage confusion at the very least called for some response from the Complainant. The Complainant did not respond, and that failure inevitably lends some weight to the Respondent’s allegations.

(iv) The majority is also of the view that the Complainant must have been aware of the Respondent’s website at the domain name for some years. That domain name had been registered since April 1996, and the Complainant itself produced evidence of a mistaken reference to <aljazeera.com> on a BBC website going back to 2001. Yet, the Complainant stated at paragraph 38 of the Complaint that it had only become aware of the registration of the domain name “recently”. In the circumstances, the Panel is of the view that the Complainant should have been more forthcoming on precisely when it first learned of the Domain Name’s existence – in any situation where a complainant is challenging a domain name which has been registered for approximately nine years, the question of why the complainant has not moved earlier to assert its rights must be an obvious one.

The majority can readily understand that there may well be some confusion between the respective websites operated by the Complainant and the Respondent, and that the Complainant may be suffering at the very least some inconvenience as a result. However, that is not the point under the Policy – the Policy should not be invoked if a complainant knows or should know that any case it might present could not succeed. In the absence of more substantial explanations from the Complainant, the majority concludes that the Complainant probably did appreciate that its Complaint could not succeed if the Respondent chose to defend it. That conclusion, considered with the matters referred to at subparagraphs (iii) and (iv) above, lead the majority to conclude that the Respondent’s allegations of reverse domain name hijacking must be upheld.

The views of the dissenting panelist, Mr. John Lambert, are as follows.

Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

It is clear from this passage that a declaration under paragraph 15(e) of the Rules requires a finding of both bad faith and an abuse of process.

Neither “bad faith” nor “abuse” is defined in the Rules but both concepts are known to most, if not all, legal systems. Generally, “bad faith” connotes a mental element such as malice or dishonesty. In the context of paragraph 4(b) of the Policy, “bad faith” includes registering a domain name for the purpose of ransoming it back to a trademark proprietor or registering a domain name primarily for the purpose of disrupting the business of a competitor. As for “abuse of process”, using the Policy to harass the domain-name holder is an example that is provided by the Rules. It would appear that paragraph 15(e) was intended to apply to the worst cases.

Mere failure of a complaint clearly falls short of that standard as can be seen from the decision of the three-member panel in Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0545. There have been cases, such as Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151 and Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where persisting in a complaint long after it was or should have been clear to the complainant that the complaint was hopeless, have been held to fall within paragraph 15(e). Those cases do not mean that the very high bar set by the language of paragraph 15(e) has been lowered to include every complaint that is misconceived since each case has to be decided on its own facts.

Turning to the position in this case, the dissenting Panelist accepts the majority’s view that it should have been clear to the Complainant that its case had no prospect of success under the Policy.

The dissenting Panelist also agrees with the majority views with respect to sub-paragraphs (ii), (iii) and (iv) above.

The question for the Panel is whether those matters taken individually or as a whole are sufficiently serious to require a declaration under paragraph 15(e) of the Rules.

The fact that this Complaint should never have been brought under the Policy does not mean that the Complainant is without a cause of action that could succeed elsewhere. The Policy provides a summary procedure for resolving what are popularly known as “cyber-squatting cases” cheaply, quickly and efficiently. It is not intended to provide a forum for resolving trademark infringement or passing off disputes. That does not seem to have been appreciated by whoever took the decision (or advised the Complainant to take the decision) to use this procedure.

The failure of the Complainant to explain the use of the email addresses and the apparent inconsistency between paragraph 38 of the Complaint and the reference to the BBC website are more troubling. However, the question for the Panel is whether the more likely explanation for those discrepancies is malice or mistake or muddle. Anyone who has ever represented a large company in litigation is used to such discrepancies. There are very few in-house legal advisors or even directors who know of everything that goes on in their organizations. Though, again, this may not reflect well on the Complainant if the most likely explanation for the discrepancies is mistake or muddle.

Taken as a whole, the Complainant does not emerge from this process with any credit, but it would be going too far to censure its conduct under paragraph 15(e) of the Rules.

 

8. Decision

For all the foregoing reasons, the Complaint is denied. In accordance with the view of the majority, the Panel declares under paragraph 15(e) of the Rules that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.


Warwick Smith
Presiding Panelist


Mohamed-Hossam Loutfi
Panelist


John Lambert
Panelist

Dated: July 19, 2005

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2005/d2005-0309.html

 

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