Thomson Canada Limited,
Thomson Finance S.A. and Reuters Limited v. Ian Alter
Claim Number: FA0712001124307
PARTIES
Complainant is Thomson
Canada Limited, Thomson Finance S.A. and Reuters Limited (“Complainant”), represented by Alexandre
A. Montagu, 1060 Park Avenue, Suite 10C, New York, NY 10128. Respondent is Ian Alter (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
R. Glen Ayers, Jr. served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 21, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi> domain
names are registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the names. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On January 8, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 28, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts, and
to postmaster@thomsonreuters.net,
postmaster@thomsonreuters.org, postmaster@thomsonreuters.info and
postmaster@thomsonreuters.mobi by e-mail.
A timely Response was received and determined to be complete on January 28, 2008.
An additional submission was timely received from Complainant and has
been considered.
On February 6, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed R. Glen Ayers, Jr. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that the domain names, <thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi>, infringe
upon trademarks owned by the Thomson entities and Reuters Ltd. A significant number of registered trademarks
have been registered to protect the Thomson name as a trademark. Thomson also alleges that it is in the
process of mergin with Reuters. Thomson
alleges that the REUTERS mark has been registered across the globe in order to
protect that entity’s interest in the trademark REUTERS.
The
THOMSON trademark and the REUTERS trademark are obviously very well known marks
conveying significant secondary meaning and having significant value, says the
Complaint.
As
to the nexus between the parties, Thomson and Reuters submit that Thomson and Reuters
are in the process of merging. Thomson
and Reuters assert that information has been public knowledge since 2007 and
that the only delay thus far to the merger has been regulatory approval.
Complainant
asserts that the domain names were registered by Respondent within days of the date
that Reuters announced that it received a take-over bid which, Complainant
asserts, was widely known to be Thomson.
Complainant also asserts that no use is being made of these domain
names.
Complainant
asserts that the names are confusingly similar; that the Respondent has no
rights or legitimate interest; and, that the registration is clearly in bad
faith as evidenced by the fact that the domain names were registered
immediately upon the public becoming aware of the possible merger of Thomas and
Reuters.
The
Complainant alleges that bad faith is also evidenced because no use has been
made of the domain names. Other factors
include the registration of multiple domain names. Finally, the Complainant suggests, given the
well-known nature of the marks in question, that any attempted use,
particularly in combination, is bad faith.
B. Respondent
Respondent claims that, being a simple person with no legal training,
he is certainly not engaged in cyber squatting.
He asserts that he is a fan of Kenneth Thomson and met him at an art
exhibit. He intends, perhaps, to use the
domains in question as a possible memorial to Mr. Thomson, with who he was
tremendously impressed.
Respondent also has disclosed that he has registered a large number of
domain names, including such domain names as “billionaire philanthropists” and
“millionaire philanthropists.”
Respondent states that he is an admitted eccentric, but he has not
behaved in bad faith. He says that he
registered multiple domain names only because they were offered to him
automatically by “GoDaddy.”
Finally, he observes that the “Thomson Reuters” trademark was
registered on December 7, 2007, some seven months after his domain
registrations. He asserts that the
“negligence,” of the Complainant, not his actions, have been the cause of any
possible harm to Complainant.
C. Additional Submissions
Complainant’s additional submission was timely filed, and in that
document, the Complainant’s note that the Respondent does not deny that the
domain names are confusingly similar.
They also note that Respondent has not rebutted the Complainant’s prima facie case. Respondent has not responded to show that it
any rights in the infringing domain names.
Respondent has not provided any evidence that he has made any use or
preparation to use the domain names, that he is commonly known by any of the
domain names, or that he is making any legitimate non-commercial use of the
domain names.
As to bad faith, the Complainant reiterates the evidence presented in the
original pleadings and goes on to argue that the allegations concerning a
tribute to Mr. Thomson are unsupported and that the failure to use for any
purpose is evidence of bad faith.
Complainant’s additional submission also points out that, even though
there has been no offer to sell, the lack of an offer to sale is not
dispositive.
FINDINGS
I.
Nexus
Between the Parties filing Jointly as Complainant
In the instant proceeding, “Complainant” is several entities, Thomson Canada Limited, Thomson Finance S.A. and Reuters Limited. The first two allege to be subsidiaries of the same parent corporation, Thomson Corporation. Complainant alleges that the third entity, Reuters Limited, is in the process of merging with Thomson Corporation. Under the National Arbitration Forum’s Supplemental Rule 1(e), the definition for “complainant” is described as, “‘The Party Initiating a Complaint Concerning a Domain Name Registration,’ as used in The Rules (Rule 1), means the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Accordingly, the Panel finds that the entities involved have established a sufficient nexus to allow them to proceed as a single entity in this Complaint. The disputed domain names will be transferred simply to “Complainant.”
II.
Identical or Confusing Similar: Policy ¶ 4(a)(i)
Complainant has rights in the THOMSON mark through its various trademark registrations with multiple governmental authorities, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,463,249 issued June 26, 2001). Additionally, Complainant asserts rights in the REUTERS mark through multiple trademark registrations, including Registration Number 2,222,475 issued February 9, 1999, by the USPTO. The Panel may find that these trademark registrations sufficiently establish Complainant’s rights in the THOMSON and REUTERS marks, respectively, and thus Complainant has satisfied this portion of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The <thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi> domain
names are confusingly similar to the THOMSON and REUTERS marks under Policy ¶
4(a)(i). The disputed domain names
combine Complainant’s two marks, and add a generic top-level domain name to the
combination of these marks. These
additions are insufficient to render the disputed domain names distinct from
Complainant’s marks under Policy ¶ 4(a)(i).
See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23,
2000) (finding confusing similarity where respondent combined the complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v.
Further, Respondent had not confirmed nor denied Complainant’s
allegations concerning its ownership of the marks or the fact that the marks
and domain names are identical.
III.
Rights and Legitimate
Interests: Policy ¶ 4(a)(ii)
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s WHOIS
information lists Respondent as “Ian Alter,” and Complainant asserts that Respondent is not
authorized to use either of its marks.
There is no evidence suggesting that Respondent is commonly known by the
<thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi> domain
names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Complainant contends that Respondent has failed to make an active use of the websites that resolve from the <thomsonreuters.net>, <thomsonreuters.org>, <thomsonreuters.info> and <thomsonreuters.mobi> domain names. Failure to actively use the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent failed to make an active use of the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
Respondent’s contention that he
registered the <thomsonreuters.net>, <thomsonreuters.org>, <thomsonreuters.info> and <thomsonreuters.mobi> domain
names because of his affinity for the late Kenneth Thomson, is not enough. Respondent contends that he has not yet
developed the websites that resolve from the disputed domain names due to
health concerns, and states that he “… truly admire[s] Mr. Thomson, and hope[s]
to put the website to use in a way that will honor him, and not trade on his
legacy for profit.” The Panel cannot
find on these bare allegations that Respondent has demonstrated preparations to
use the disputed domain names in connection with a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Casual Corner Group, Inc. v. Young,
FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that the respondent has rights
and legitimate interests in the domain name even though he has made no use of
the website at the time of the complaint); see
also IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding
that the respondent has rights in the domain name because the respondent’s
claimed use of the domain name is a “plausible explanation” to which the panel
must give weight).
IV.
Registration and Use in Bad Faith: Policy
¶ 4(a)(iii)
Respondent’s registration of multiple domain names incorporating its THOMSON and REUTERS marks indicates a pattern of bad faith registration and use. This is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Respondent
registered the <thomsonreuters.net>, <thomsonreuters.org>, <thomsonreuters.info> and <thomsonreuters.mobi> domain
names the day after merger talks between the Thomson Corporation and Reuters
Limited became public. This is
additional evidence of registration in an opportunistic manner, and thus
constitutes evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Sota v. Waldron,
D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of
the <seveballesterostrophy.com> domain name at the time of the
announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates
an opportunistic registration”); see also
Thermo Electron Corp.
v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If
there had been any doubt as to bad faith, the fact that registration was on the
same day the news leaked about the merger, which was put in evidence, is a
compelling indication of bad faith that Respondent has to refute and which he
has failed to do. The Panel finds a
negative inference from this.”).
Respondent’s failure to develop the websites that resolve from the <thomsonreuters.net>, <thomsonreuters.org>, <thomsonreuters.info> and <thomsonreuters.mobi> domain names since Respondent purchased the disputed domain names indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
The marks and domain names are identical
and/or confusingly similar.
The Respondent has no rights or legitimate
interests in the names.
The Complainant has shown that the
Respondent’s actions constitute bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thomsonreuters.net>, <thomsonreuters.org>,
<thomsonreuters.info> and <thomsonreuters.mobi>
domain names be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR.
Dated: February 22, 2008
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