Gruner + Jahr Printing & Publishing
Co. v. 2 Ergo Ltd.
Claim Number: FA0311000214463
PARTIES
Complainant
is Gruner + Jahr Printing &
Publishing Co., New York, NY (“Complainant”) represented by Lisa Rosenburgh, Esq., of Salans, 620 Fifth Avenue,
New York, New York 10017.
Respondent is 2 Ergo Ltd.,
(formerly Lammtara Multiserve Limited) Rawtenstall, UK (“Respondent”)
represented by Kirsten Wood, of Messrs. Wacks Caller Solicitors, Steam Packet House, 76 Cross Street, Manchester M2 4JU, UK 0161 957889.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ymchat.com>
and <ymgossip.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 25, 2003; the Forum received a hard copy of the
Complaint on November 26, 2003.
On
November 26, 2003, Melbourne IT, Ltd. d/b/a
Internet Names Worldwide confirmed by e-mail to the Forum that the domain names
<ymchat.com> and <ymgossip.com> are registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and
that the Respondent is the current registrant of the names. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is
bound by the Melbourne IT, Ltd. d/b/a
Internet Names Worldwide 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
December 2, 2003 the Forum drew certain formal deficiencies to the attention of
the Complainant and an Amended Complaint was filed by e-mail that day and in
hard copy on December 5, 2003.
On
December 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 23, 2003 by which Respondent could file a Response to the Amended
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@ymchat.com and
postmaster@ymgossip.com by e-mail.
On
December 22, 2003, Respondent requested additional time to respond to the
Amended Complaint and submitted information in support of this request. Complainant
consented to Respondent’s request. The
Forum granted Respondent an extension until January 7, 2004 to submit the
Response.
A
timely Response was received and determined to be complete on January 7, 2004.
On January 13, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
publishes in the United States of America a magazine directed to teenage girls,
entitled “YM Magazine”. It is the
registered proprietor of the following U.S. trademarks in relation to magazines
of various kinds: YM YOUNG MISS MAGAZINE (No. 1373764, registered December 3,
1985), YM YOUNG & MODERN (No. 1876591, registered January 31, 1995), YM
(No. 2343150, registered April 18, 2000) and YM.COM (No. 2416469, registered
December 26, 2000).
Since
November 14, 1997, Complainant’s parent company, Gruner + Jahr AG & Co.,
has been the registered proprietor of United Kingdom registered trademark G+Y
YM (No. 2132628) for periodicals including magazines.
Complainant
has used its domain name <ym.com> to point to its website, which features
live chat rooms. Both the web site and
the YM magazine feature teen and celebrity gossip.
Since
at least September 15, 2002 Complainant has used the YM mark in relation to
mobile telephone goods and services. On April 22, 2003 it applied in the United
States of America to register the marks YMOBILE and YMMOBILE for “mobile
telephone services, namely, providing ring tones and graphic icons in
downloadable digital format for mobile telephones.”
Complainant
has additional United States registrations for the YM mark in relation to a
variety of other goods. It licenses others to use those marks.
YM
magazine is among the most famous teen magazines in the U.S. Through use, the
YM mark has become distinctive of the Complainant and its goods and services.
Respondent,
without Complainant’s consent, registered the disputed domain names on
September 6, 2003. Neither name points to an active web site. By letter, dated
September 23, 2003, Complainant’s attorneys demanded their transfer to
Complainant. Respondent replied on September 29, 2003 denying any intention to
use the domain names in bad faith, trading off [sic], or violating any of
Complainant’s rights, stating:
“The
websites in question have been registered to provide web sites for mobile phone
services. They are being branded
‘YourMobileChat’ and ‘YourMobileGossip’.
For the purposes of the domain address they have been shortened to
‘YMChat’ and ‘YMGossip’”.
Complainant’s
attorneys replied on October 1, 2003 saying Complainant did not object to the
names ‘YourMobileChat’ and ‘YourMobileGossip’; drawing attention to
Complainant’s competitive activities in the mobile telephone field; stating
that Respondent’s use of the disputed domain names would be likely to divert
customers from Complainant’s website, mobile telephone services and/or online
magazines; reiterating the demand for transfer and offering to pay Respondent’s
out of pocket registration expenses. Respondent did not respond.
The
disputed domain names are confusingly similar to Complainant’s YM marks, which were
famous and distinctive at the time the domain names were registered. Respondent
was familiar with this famous mark. Moreover, Federal registration of the U.S.
marks and registration in the U.K. by Complainant’s parent conferred
constructive notice thereof.
Respondent
has no rights or legitimate interest in the disputed domain names. Complainant
has not licensed or otherwise authorized Respondent’s use of its
trademarks. Respondent is not known by
the disputed domain names; has not made any legitimate noncommercial or fair
use of them; has not offered the bona fide sale of any goods or services under
them nor made demonstrable preparations to use them in connection with a bona
fide offering of goods or services.
Passive holding has been held to demonstrate absence of rights or
legitimate interests as well as bad faith.
The
disputed domain names were registered and are being used in bad faith.
Respondent seeks to take advantage of the owner of a famous trademark and
intentionally attempts to attract, for commercial gain, Internet users to its
website or other on-line location, by creating a likelihood of confusion with
Complainant’s marks as to the source, sponsorship, affiliation or endorsement
of its goods or services.
Respondent’s
admission of its intention to provide mobile telephone services in connection
with the disputed domain names indicates a bad faith motive in registering them
for the purpose of disrupting the business of a competitor. Respondent’s
passive holding also constitutes bad faith use and registration.
B.
Respondent
Respondent
is a small, well-established UK company specializing in mobile
communications. It builds and provides
mobile chat/gossip services. The world’s first mobile chat service was built by
Respondent in May 2002 and provided to Virgin and the fan base for the pop
group Atomic Kitten.
On
September 2, 2003 and October 17, 2003 Respondent received approvals from the
telecom governing body in the UK, ICSTIS, to operate chat services. In
anticipation of launching in spring 2004 the two mobile phone portal services
Your Mobile Chat and Your Mobile Gossip, using technology that Respondent has
been building for its clients for over three years, Respondent registered the
disputed domain names in September 2003.
Those
names were selected as they represent the most natural and logical way of
abbreviating Your Mobile Chat and Your Mobile Gossip. Respondent had never
heard of Complainant and knew nothing of its trademarks in the USA or the UK
prior to receiving Complainant’s letter of September 23, 2003. Therefore
Respondent did not intend to gain or divert customers from Complainant to
Respondent.
The
disputed domain names are not identical or confusingly similar to a mark in
which Complainant has rights. Complainant’s parent’s UK mark G+J YM is so
dissimilar as to be irrelevant. Respondent should be considered as having
rights or legitimate interests in the disputed domain names, which it did not
register and is not using in bad faith.
FINDINGS
Complainant has not established all the
elements necessary to entitle it to relief.
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.
Complainant
has established that it has rights in the registered trademark YM and in other
marks incorporating that mark. The addition of the generic words ‘chat’ and
‘gossip’ to Complainant’s YM mark do not detract from its distinctiveness. See Advance Magazine Publishers Inc. v.
Whaley,
D2001-0248 (WIPO May 7, 2001).
The disputed domain names are confusingly
similar to Complainant’s YM mark.
Complainant has established this element
of its case.
Complainant has provided no evidence that
its YM mark is generally known outside the U.S., nor that it was known to
Respondent prior to the registration of the disputed domain names.
As to constructive knowledge, the Panel respectfully agrees
with the learned panelist in Way Int’l, Inc. v. Diamond Peters, D2003-0264
(WIPO May 29, 2003), who stated that there is no place for such a concept under
the Policy:
“The essence of the complaint is an allegation
of bad faith, bad faith targeted at the complainant. For that bad faith to be
present, the cybersquatter must have actual knowledge of the existence of the
complainant, the trade mark owner. If the registrant is unaware of the
existence of the trade mark owner, how can he sensibly be regarded as having
any bad faith intentions directed at the complainant? If the existence of a
trade mark registration was sufficient to give the Respondent knowledge,
thousands of innocent domain name registrants would, in the view of the Panel,
be brought into the frame quite wrongly”.
Even if the concept were applicable to
cases under the Policy, Complainant cannot rely, in relation to activities of
non-U.S. persons outside the U.S., on constructive notice under U.S. trademark
law arising out of registration of its U.S. marks.
Further, even if registration of a mark
in the U.K. were to give rise to constructive notice in that country (which the
Panel believes not to be the case), Complainant has not established that it has
any rights in its parent’s U.K. mark (see Danfoss A/S v. Coldwell Banker Burnet, DBIZ2001-00020 (WIPO Mar. 27, 2002)), to which, in any event, the
disputed domain names are neither identical nor confusingly similar.
In the absence of evidence of reputation
in Complainant’s YM mark in the U.K. and in the face of Respondent’s assertion
that it was unaware of Complainant and its marks prior to Respondent’s
registration of the disputed domain names, the Panel is not disposed to accept
Complainant’s bare assertion that Respondent was so aware.
Respondent has established that it is a
legitimate business which gained business awards in 2002 and 2003; that it
provided a mobile chat service to a telecommunications client in May 2002 and
that, only days before it registered the disputed domain names, it was itself
authorized to operate mobile chat services.
Respondent’s explanation for the
selection of the disputed domain names as logical contractions of the names of
its proposed services is plausible. Its failure to use the disputed domain
names in the short time between registration and the commencement of this
administrative proceeding is explicable by the timing of Respondent’s intended
introduction of its services. Respondent has not produced evidence to support
these explanations. However, in all
the circumstances, Complainant has failed to discharge its burden of showing prima
facie absence of rights or legitimate interests on the part of Respondent,
such as to shift to Respondent the onus of proving by concrete evidence that it
has rights or legitimate interests. See
Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) and the cases there cited.
Complainant has failed to establish this
element of its case.
Of the three bases on which Complainant
contends there should be a finding of bad faith registration and use, two
depend on Respondent being aware of Complainant’s mark before registering the
disputed domain names. As already
stated, the Panel is not satisfied Respondent was so aware and accordingly
makes no finding of bad faith registration.
The third ground is alleged passive use
between the date of registration, September 6, 2003, and the filing of the Complaint,
November 25, 2003. Complainant contends
that passive holding of a domain name has been held to constitute both bad
faith registration and use, citing Pharmacia & Upjohn AB v. Romero, D2000-1273
(WIPO Nov. 16, 2000) and Telstra Corporation Limited v. Nuclear
Marshmallows, D2000-0003 (WIPO Feb. 20, 2000). Neither of these cases supports that contention. In both cases
there was found prior knowledge of the mark on the part of the domain name
registrant and a finding of bad faith registration was made before the question
was considered whether passive use amounted, in the particular circumstances of
that case, to bad faith use.
In Telstra, the leading and most
often cited case on this topic, the learned panelist found that passive
holding can, in certain circumstances, constitute use in bad faith but that
such circumstances cannot be identified in the abstract:
"in considering whether a passive holding of a domain
name, following a bad faith registration of it, satisfies the
requirements of paragraph 4(a)(iii), the Panel must give close attention to all
the circumstances of the Respondent’s behavior" [emphasis added].
In Pharmacia the learned panelist
stated:
“A simple passive holding of the domain
name by the Respondent should not, in absence of any particular circumstances
of the case, such as those listed under 4b(i-iii) of the Policy, amount to a
finding of use in bad faith”.
In the absence of evidence of prior
knowledge of Complainant’s marks on the part of Respondent, and in the absence
of any finding of bad faith registration or other circumstances which could
raise suspicions as to Respondent’s failure to use the disputed domain names in
the short time between their registration and the commencement of this
administrative proceeding, and by the timing of Respondent’s intended
introduction of its services, does not constitute bad faith use.
Complainant has failed to establish this
element of its case.
DECISION
Complainant
having failed to establish all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Panelist
Dated: January 27, 2004
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