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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent)
Case No. D2000-0704
1. The Parties
The Complainants are: Dow Jones & Company, Inc., and Dow Jones LP of New York, New York , and Chicopee, Massachusetts, United States of America respectively.
Represented by Nancy L Gillespie, Assistant General Counsel, of Dow Jones & Company, Inc., 200 Liberty Street, New York, New York, United States of America.
The Respondent is: The Hephzibah Intro-Net Project Limited, 3 Spurstowe Terrace, London 9LR E8, Great Britain.
Respondent’s Administrative Contact is J. George Hargreaves.
2. The Domain Name and Registrar
2.1. The domain names with which this dispute is concerned are:
"wallstreetjournaleurope.com" ("the first domain name")
"thewallstreetjournalinteractive.com" ("the further domain names")
2.2. The Registrar with which the domain names are registered is: Internet Names Worldwide, a division of Melbourne IT, of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
2.3. The Registrant’s dispute resolution policy is the Policy and is applicable to the domain names.
2.4. The domain names were each registered in November 1999.
3. Procedural History
3.1. The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 29 and July 3, 2000, respectively.
3.2. On July 12, 2000, the Registrar verified that the current registrant of each of the domain names is the Respondent, the Policy applies to the domain names, the domain names are "licensed" and that the administrative contact name and address for each of the domain names is:
J. George Hargreaves
3 Spurstowe Terrace
London 9LR E8
Phone: 44 171 923 1118
Fax: 44 171 690 0673
3.3. On July 14, 2000, all formal requirements for the establishment of the Complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Center’s finding of proper compliance with the Rules and establishment of the Complaint.
3.4. Notification of Complainant and Commencement of Administrative Proceeding was sent to Respondent electronically on July 14, 2000, and by facsimile and by courier on July 17, 2000.
3.5. The Administrative Proceeding commenced on July 14, 2000.
3.6. The last day for filing a Response by Respondent was August 2, 2000. No response was filed and Notification of Respondent’s Default was sent to Respondent and Complainant electronically and to Respondent by courier and by facsimile, on August 5, 2000.
3.7. The single panelist having filed a Statement of Acceptance and Declaration of Impartiality, the Panel was duly appointed on August 22, 2000.
3.8. The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint.
4. Factual Background
4.1. First Complainant is the publisher in the United States, Europe, Asia and on line of the well known financial journals "The Wall Street Journal", "The Wall Street Journal Europe", "The Asian Wall Street Journal" and "The Wall Street Journal Interactive Edition". It is a matter of public knowledge that Complainants’ "The Wall Street Journal" is one of the world’s best-known and widely circulated financial journals.
4.2. First Complainant is the registered proprietor of a large number of trade marks in the United States and elsewhere, including trade marks consisting of the words "Wall Street Journal". These registrations include the following:
United States Registrations:
408379 "The Wall Street Journal" dated February 20, 1944,
1,368.347 "The Wall Street Journal" dated October 29, 1985,
1,498,049 "The Wall Street Journal" dated July 26, 1988,
1,960,159 "The Wall Street Journal" dated March 5, 1996.
United Kingdom Registrations:
B930,333 "The Wall Street Journal" dated September 4, 1968
4.3. First Complainant also claims to have registered the trade mark "The Asian Wall Street Journal" in 57 countries throughout the world and registration in several countries of "The Wall Street Journal Europe", "The Asian Wall Street Journal" and other trade marks including the words "The Wall Street Journal".
4.4. First Complainant is the registrant of the domain names"wsj.com" and "wsje.com"
4.5. First Complainant became aware of the first domain name registration in January 2000 and on January 20, 2000, First Complainant’s in house counsel wrote to Respondent calling on it to refrain from further use of the domain name and cancel the registration.
4.6. There followed a chain of correspondence between First Complainant and Respondent in which:
(a) Respondent through Mr. Hargreaves asserted it was a non-profit organization providing training to unemployed persons in East London. One of its projects was to train such persons in the creation of long name web-sites and to offer its services to companies for registration of their names as part of a fund-raising scheme for its "voluntary sector project". It chose the name "wallstreetjournal.com" as an example and had pointed that domain name to Complainant’s "wsje.com" web-site. The Panel notes that "wallstreetjournal.com" is not one of the names in dispute and that it is not otherwise referred to in the file. It is not clear from the record what is the significance of the reference to this domain name. It may have been a mistake but in any event all further correspondence appears to have been concerned with the first domain name and the further domain names. With respect to the first domain name Respondent asserts that the site had been disabled and that having received Complainant’s complaint it was prepared to point the domain name to Complainant’s site at "wsje.com". Respondent contends that until it received the complaint it was not aware that the first domain name was pointed to Respondent’s "cleanchat.com" web-site.
(b) First Complainant replied that it required cancellation of the domain name or transfer of the name to it and offering to pay the transfer fee of $60 once the transfer is recorded. Complainant’s reply included the expression "Even if your assertion is true ….."
(c) In reply Respondent stated that the suggestion that its assertion might not be true was offensive and asserting that the fact that it had pointed the domain name to Complainant’s web-sites was evidence of its good faith. Respondent offered its long name registration services to Complainant for $165 per registration. Respondent made no mention of its registrations of the further domain names.
(d) On March 24, 2000, Complainant replied through external counsel asserting that Respondent’s conduct amounted to bad faith within the meaning of the Policy and characterizing Respondent’s offer to provide registration services for $165 per registration as an offer to sell the domain name for that amount.
(e) On the same day, March 24, Respondent replied objecting to the characterizing of its offer as an offer to sell the domain name and demanding immediate withdrawal of the allegation. Respondent offered to transfer the domain name to Complainant on receipt of a retraction and an undertaking that the transfer would "close the matter entirely".
(f) By e-mail on March 27, 2000, Complainant, through external counsel, declined to retract its statements and asserted that they contained true and accurate statements of law and fact.
(g) Respondent replied stating that it believed the statements to be a slander (sic.) and that it would be taking advice.
(h) Complainant replied on April 6, 2000 affirming its refusal to retract, repeating its assertion that Respondent’s actions amounted to bad faith within the meaning of the Policy and demanding transfer of the domain name by April 17, 2000.
(i) On June 15, 2000, Complainant, through its Counsel, wrote again to Respondent stating that it had now become aware of the registration, in November 1999, of the further domain names, stating its understanding of the meaning of the expression "bad faith" as used in the Policy and demanding transfer of each of the domain names. Complainant offered reimbursement to Respondent of the estimated cost of registration of the domain names.
4.7. None of the domain names now resolves to a web-site.
4.8. There does not appear to have been any reply by Respondent to Complainant’s letters of April 6 or June 15, 2000.
5. Applicable Dispute
To succeed in their complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties Contentions
6.1. Complainant contends that:
(a) each of the domain names is identical or confusingly similar to Complainant’s trade marks;
(b) Respondent has no rights or legitimate interest in the domain names. Respondent has not demonstrated actual or intended use of the domain names in connection with the bona fide offering of goods or services. Complainant asserts exclusive rights in its "Wall Street Journal" names and marks and has not given Respondent permission to use them. Complainant contends that Respondent’s use of the domain names is commercial in that they are used as part of a commercial venture in training and in the offer of a lengthy-domain-name registration service;
(c) Respondent registered and is using the domain names in bad faith. Complainant contends that due to its worldwide reputation Respondent must have known of Complainant’s rights and has refused to cancel the registrations without payment in excess of its registration fees. Respondent is using the domain names as part of its training program and such use is in bad faith. Complainant cites as evidence of bad faith the alleged offer by Respondent to sell the first domain name for an amount in excess of the registration fees. Complainant cites Respondent’s silence in relation to the further domain names as further evidence of bad faith.
6.2. Respondent has not filed a response. Its failure to do so renders the task of the Panel difficult in so far as:
(a) the only evidence of Respondent’s claim to rights and legitimate interest and absence of bad faith in its registration and use of the domain name is that supplied by Complainant in copies of correspondence annexed to the Complaint.
(b) to the extent that the correspondence is relevant and stands in the place of a Response it lacks the certification required by 5(viii) of the Rules and is therefore entitled to less weight.
6.3. The Panel must nevertheless have regard to such facts as emerge from the correspondence cited by Complainants and not contested by them.
7. Discussion and Findings
7.1. Identical or Confusingly Similar Trade Marks
Each of the domain names has as its essential characteristic the name "Wall Street Journal". The inclusion or omission of the word "The" does not materially affect the identity of the name.
The Panel therefore finds that each of the domain names is identical or confusingly similar to a trade mark in which Complainant has rights.
7.2. Respondent’s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, certain circumstances which, if proven, are deemed to demonstrate Respondent’s rights or legitimate interests. Whilst the onus of proof in these proceedings rests with Complainant the evidentiary burden in relation to the Respondent’s rights and interests must shift to Respondent once a prima facie case has been raised by Complainant since the establishment of such rights lies primarily within the knowledge of Respondent. In this case, absent a formal Response the Panel can only have regard to the correspondence cited by Complainant.
7.2.1. There is no suggestion that Respondent has been commonly known by the domain name. Respondent asserts in correspondence that it is a non-profit organization but nevertheless Complainant contends, and the Panel accepts, that the activities carried out by Respondent in providing training and operating, for a fee, a domain name registration service, constitutes a commercial activity and Respondent is not making a legitimate non-commercial or fair use of the domain name. The record does not therefore establish that Respondent is entitled to the presumption of right or interest specified in paragraph 4(c)(ii) or 4(c)(iii) of the Policy.
A more difficult question arises with respect to the circumstance set out in paragraph 4(c)(i). Is the Panel entitled to find, on the evidence, that before any notice to it of the dispute, Respondent used the domain names in connection with a bona fide offering of goods or services? The correspondence indicates, and Complainant does not contest, that Respondent "used" the domain names as examples in the training of its students in the registration of long domain names. Is this use a use of the kind contemplated by this sub-paragraph of the Policy? In the context of the sub-paragraph the Panel is of the opinion that such use is intended to refer to use as an identifier of the goods or services or of the Internet address at which the goods or services may be found. What Respondent is doing is to use the domain name as an artefact of its services, not as an identifier of them. The Panel therefore decides that the circumstance identified in paragraph 4(c)(i) of the Policy is not established.
The circumstances set out in paragraph 4(c) are not exhaustive but the Respondent does not assert and the correspondence does not establish any other basis upon which Respondent can claim a legitimate right or interest in respect of the domain name. The names might provide interesting examples of long names which might be registered but that does not make it legitimate for Respondent to claim rights or interests in them or in their registration.
7.2.2. The Panel therefore finds that Respondent has not demonstrated that it has rights or legitimate interests in any of the domain names.
7.3. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of use and registration in bad faith. In the opinion of the Panel, Complainant has failed to establish that Respondent’s conduct falls within any of these circumstances. The record does not show, nor does Complainant contend, that Respondent registered the names in order to prevent Complainant from reflecting the mark in a corresponding domain name or that Respondent has engaged in a pattern of such conduct (para 4(b)(ii)). Nor is there any showing that Respondent is a competitor of Complainant, or that Respondent registered the domain names primarily for the purpose of disrupting Complainant’s business (para 4(b)(iii)). There is also no evidence that Respondent’s use of the domain name intentionally attempted to attract for commercial gain, Internet users to the web site, by creating a likelihood of confusion with Complainant’s mark (para. 4(b)(iv)).
Complainant appears to contend that Respondent’s conduct falls within paragraph 4(b)(i) of the Policy, i.e. that Respondent registered the name primarily for the purpose of selling the registration to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Complainant cites in support of this, Respondent’s offer of February 23, 2000, to provide domain name registration services for a fee of Ј99 per registration. The Panel does not accept Complainant’s characterization of this offer as an offer to sell the domain name. Respondent may have taken advantage of its communication with Complainant, initiated by Complainant, to promote its services but this did not amount to evidence of an offer to sell the domain name let alone evidence that sale was the primary purpose for which the name was registered.
As noted above, the circumstances enumerated in paragraph 4(b) are not exhaustive of the categories of bad faith encompassed by the Policy. Nevertheless, the circumstances there enumerated do indicate the types of conduct envisaged. The Policy was established principally to deal with blatant cases of "cyber squatting" and that must be taken into account. Respondent asserts in its correspondence with Complainant that it registered the domain name in good faith as part of a teaching exercise. Whilst this assertion does not carry the same weight as a properly certified assertion in a formal Response, and Complainant treats it with some reserve, it is not an assertion which beggars belief. It does not stretch credulity that Respondent should choose an actual long name which has come to its attention for the purpose of its teaching. No question has been raised by Complainant as to the bone fides of Respondent’s business and its claim to operate a long domain name service. The Panel is unable to find, in the record, evidence to discredit Respondent’s assertion as to its reasons for registering the first domain name and such reasons would appear to apply equally to the further domain names. The fact that Respondent remained silent with respect to the further domain names throughout its correspondence with Complainant may suggest a lack of candour on the part of Respondent but falls short of establishing bad faith.
The Panel is therefore unable to find that Respondent registered the domain names in bad faith.
The present position is that the domain names are registered but are not in use. They remain registered in the name of Respondent but it does not use them. Were it to do so it may well be exposed to legal proceedings by Complainant (see British Telecommunications plc v. One in a Million Ltd  RPC1). Such passive holding has been held in a number of cases to constitute use of the domain name in bad faith, (see Telstra v. Nuclear Marshmellows Case D2000-003; Jupiters Ltd v. Aaron Hall Case D2000-0574), and in the opinion of the Panel Respondent’s continued holding of the domain names in the absence of any legitimate rights or interests does amount to use of the domain names in bad faith.
That however, is not enough. The Policy requires that there be both use and registration in bad faith. As the Panel is unable to find that the domain names were registered in bad faith the Complaint fails to satisfy the requirement of paragraph 4(a)(iii) of the Policy.
It may be that the Policy needs to be reviewed, particularly in relation to the requirement for showing use and registration in bad faith. It may seem inappropriate that a person with no legitimate right or interest in a name should be able to register it as a domain name adversely to one who has demonstrated such rights and interests, but the Panel is bound to apply the Policy as it is.
The Complaint is denied and cancellation or transfer of the domain names is refused.
Dated: September 4, 2000