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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weatherall Green & Smith v. Everymedia.com
Case No. D2000-1528
1. The Parties
The Complainant is Weatherall Green & Smith, a partnership with a principal place of business in London, United Kingdom. It has three offices in London together with offices in Bristol, Birmingham, Leeds, Manchester and Edinburgh. It is represented by Joe Cohen of Collyer-Bristow, London.
The Respondent is Everymedia.com whose address is given as PO Box 40, Roberts Creek, British Columbia, VON 2W0, Canada and also as c/- Paul Foody, Box 1952 Sechelt, Vancouver, British Columbia, VON 3 AO, Canada. It is self represented through its contact Paul Foody.
2. The Domain Name and Registrar
The domain name that is the subject of the dispute is <weatheralls.com>. It was first registered in October 1997.
The Registrar with which the domain name is registered is Network Solutions, Inc. of Herndon, Virginia, United States.
3. Procedural History
On November 7, 2000 a Complaint by Weatherall Green & Smith was received by WIPO by email.
On November 10, 2000 the Complaint was received by WIPO in hard copy.
On November 21, 2000 the Registrar responded to a request for Registrar Verification of November 17, 2000.
On November 22, 2000 a Complaint Deficiency Notification was issued by email.
On November 23, 2000 an amended Complaint was received by email.
On November 24, 2000 the Notification of Complaint and Commencement of Administrative Proceeding together with a copy of the Complaint was sent to the Complainant. The Notification was properly made according to Rules, paragraph 2(a).
On December 15, 2000 a Response was filed.
On January 9, 2001 a Notification of Appointment of Administrative Panel and projected decision date was sent to the Complainant and Respondent together with transmission of case file letters.
On January 20, 2001 the Respondent forwarded a further email message attaching certain earlier emails which had been omitted from the Annexures to the Response.
The Panel has proceeded to consider the Complaint and the submissions and all the evidence received in accordance with the Rules for the Uniform Domain Name Dispute Resolution Policy and now proceeds to deliver this decision.
4. Factual Background
A. The Complainant
The Complainant is Weatherall Green & Smith, a partnership of Chartered Surveyors and International Property Consultants and carries on business from its principal place of business at 22 Chancery Lane, London. It has over 500 partners and staff at its three offices in London and in Bristol, Birmingham, Leeds, Manchester and Edinburgh.
It has offices in Jersey and New York and associated offices operating under the style Weatheralls International in a number of EU countries, Russia, South East Asia, China and the United States.
The Complainant services a large number of clients from its team of advisers in conveyancing, commercial, real estate, property and valuation.
The Complainant has registered trade marks "WEATHERALL GREEN & SMITH"; "WEATHERALLS"; "WEATHERALL" registered in England and "WEATHERALL INTERNATIONAL" registered as a community trade mark. There are pending registration applications for "WEATHERALL GREEN & SMITH" plus logo (UK); "WEATHERALL INTERNATIONAL" plus logo; "WEATHERALL" (both community); and "WEATHERALL GREEN & SMITH"; "WEATHERALL" and device (Australia).
The Complainant owns websites at various identifiers, all of which incorporate the name "WEATHERALL" or the full style or the abbreviation "wgands" or "w-g-s". These sites are used for publicity and information regarding the Complainant and its business.
B. The Respondent
The Respondent is Everymedia.com whose address is given as PO Box 40, Roberts Creek, British Columbia, VON 2W0, Canada and also as c/- Paul Foody, Box 1952 Sechelt, Vancouver, British Columbia, VON 3 AO, Canada. It is self represented through its contact Paul Foody. Mr Foody is an erstwhile employee of the Complainant. He is a son of Mr Brendan Foody, a partner in the Leeds office of Weatherall Green & Smith. Paul Foody left the Complainant in 1994 to join a competing firm Richard Ellis before leaving the commercial property business entirely in 1996. He moved to British Columbia, Canada, to pursue his interests in the internet.
Paul Foody enrolled in an 8 month internet course at Vancouver Film School during which he registered his first domain name. A very short time later Paul Foody registered <Weatheralls.com>. During various communications with his father, Brendan Foody, Paul Foody advised of his registration and offered the domain name to his father for the firm's use. He offered the domain name as a gift. When the father expressed no interest, Paul Foody offered to transfer the domain name at cost. The father again rejected this and repeated that the firm had no interest in nor any need for the domain name.
5. The Parties' Contentions
The Complainant contends that it is commonly known by and by reference to the diminutive form "Weatheralls". It has a trade mark registration in England "WEATHERALLS" as well as pending applications for the similar mark "WEATHERALL" as a community mark and in Australia. Its websites include as addresses or identifiers "Weatheralls". Its various trade mark registrations and common law trade marks and its websites include various combinations all of which are some form or corruption of the firm name.
So far as the Respondent's domain name is concerned, the Complainant alleges that it is identical to the Complainant's registered trade mark "Weatheralls" and similar to the Complainant's other registered trade marks, pending applications and common law rights.
The Complainant also says that the Respondent's domain name would be put to similar use by the Complainant as an entry to a Weatheralls site if it was acquired by the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. It is not used in connection with any goods or services. There is no use at all of it. A website page for the respondent which is referred to in the Complainant's annexures defaults via clicking on "JackSquat" to another website <SickPerv.com>. It is contended that the Respondent has established the website for the purposes of disrupting the Complainant's business.
It is then alleged that the Respondent registered and is using the domain name in bad faith, to deny its use by the Complainant. Reference is made to the former employment of the Respondent's principal Paul Foody by the Complainant.
B. The Respondent
The Respondent's response appears to be to the original Complaint (and which the Panel reads also as a response to the amended Complaint). It is a discursive document. It appears as if the deficiency in the original Complaint was with respect to the identity of the Respondent and the Panel proceeds on the assumption that everything applicable in the Respondent's response is equally applicable to the amended Complaint.
The response details a number of matters of unclear relevance or import. In essence the Respondent places its defence on the basis squarely that it registered the domain name in October 1997 for the benefit of the Complainant. Indeed it offered the registration for transfer to the Complainant through the father of Paul Foody, Brendan Foody, then a partner with the Complainant. That was rejected in 1997. The correspondence resumed in early 2000 and ended in May 2000. Thereafter this Complaint ensued some six months later. It is not indicated what prompted the Complaint.
The Respondent also attaches a number of emails in the first half of 2000 that are relied upon including those recently forwarded. The Complainant, having seen the response and the emails, has not suggested that they are other than genuine and accurate.
The Respondent contends that the Complainant is unjustified and alleges a case of reverse domain name hi-jacking.
Although the response is a lengthy document the above would appear to be the salient points relied upon by the Respondent.
6. Discussion and Findings
The Respondent lives in British Columbia, Canada. It is from there that it registered the disputed domain name. It appeared to be an inactive site. It did not resolve to a website although access to a website or websites can apparently be gained by clicking on a contact detail. It did not appear as if any person accessing the domain name would likely get any further than the name alone or alternatively would not be able to access any other data or information whether of the Complainant or Respondent or any other person.
There did not appear to be any attempt with respect to the disputed domain name to utilise it to access any active website which seeks to trade on the goodwill or reputation of the Complainant. The Panel discusses below the active or inactive status of the disputed domain name and the links associated with it, particularly as a result of more recent events.
The Complainant has a number of registered trade marks in England together with community marks. They are territorial. There are applications pending for further registrations in England, the European Union and Australia. There are no registrations extant nor applications pending in Canada or the United States or at least no evidence of such has been provided.
The Complainant operates a number of websites and accordingly has ready access for its clients via those websites which include the name "Weatheralls" and "Weatherall". Clearly legitimate and proper use of the websites and client or third party access to or attempts to find the Complainant firm at a web address would not be frustrated.
The Panel when attempting to access the Complainant's website merely by entering "Weatherall" and "Weatheralls" immediately located the genuine websites of the Complainant.
The Complainant has associated offices in a number of countries, including the United States, but not in Canada. Some of these operate under the style "Weatheralls International". Others appear to be members of the Weatherall International Group but to operate under individual firm names in some EU countries and in Asia (see Annexure 2 to Complaint).
The Complainant has put before the Panel no evidence as to its exposure in Canada, its promotion, advertising and public awareness of its style "Weatheralls" or similar in that jurisdiction. One is left to assume that by dint of websites and its associated offices under the "Weatheralls International" banner that it has a spillover reputation in Canada. Erring on the side of caution and giving the Complainant the benefit of reasonable knowledge by the relevant sector of the public in Canada interested in business or services such as that provided by Weatheralls or Weatheralls International, the Panel is prepared to assume that the Complainant has some goodwill and reputation in Canada although the extent of it is impossible to assess.
It is important in this regard always to bear in mind the warning in the common law cases of the dangers of assuming substantial goodwill in foreign jurisdictions where all that is relied upon is a common law trade mark. Reference here may usefully be made to the decision of the English Court of Appeal in Dawnay Day & Co Ltd v Cantor Fitzgerald International  RPC 669 at 701. If the name is that of a famous mark known worldwide, the position is different.
The Respondent registered the disputed domain name in October 1997. That was before the Rules and Policy came into force. At the time Paul Foody appears to have offered it to the Complainant via his father but no interest was expressed in it. Indeed it appears that no interest was expressed in domain names and websites generally. Apparently Brendan Foody did not discuss the offer with his partners although an email from Brendan Foody states that at that time he was not a partner in the Complainant firm. More importantly, in January 2000 Mr Stephen Richardson (shown in the Complaint as the partner responsible for this Complaint on behalf of the Complainant) emailed Paul Foody and advised, "I understand that you registered "Weatheralls.com" as a domain address some years ago, which has, of course, denied its use to us. I am now the partner in charge of our IT, and I wonder if you and I could agree that this address is repatriated to us? Whilst is it not pivotal to our continuing IT presence, it would give us the full set!(sic)....".
To this email, Paul Foody responded indicating the domain name was not up for repatriation and reminded Mr Richardson of Mr Brendan Foody's earlier rejection of the offer of the domain name. Mr Richardson then replied that he was unaware of the earlier offer and rejection and asked for details of the project in which Mr Paul Foody was involved in apparent connection with the disputed domain name. Mr Paul Foody did not provide the answer nor did he go into any detail regarding the earlier offer.
Thereafter email traffic continued with the Complainant seeking to purchase the domain name but to no avail.
Most tellingly, on January 21, 2000 Mr Richardson emailed Mr Paul Foody after being told the domain name was not for sale "I get the message, but I am disappointed. However, as long as it's dormant, as it would appear to be, I'm sure we can live with the situation. I will monitor the web from time to time to see if you resurrect it!". (See annex 7 to complaint).
This statement can only be construed as an acknowledgement at the time that the Complainant had (a) not pursued the offer of the transfer of the registration in 1997, and (b) was as at January 2000 not concerned about an inactive domain name registration and related website with which the Complainant "can live".
Subsequent email traffic through the first half of 2000 effectively avoids the issue of the disputed domain name. But it does indicate mild cooperation between Mr Paul Foody and the Complainant in relation to achieving registrations of other domain names. There is no hint in this email traffic of abuse of the disputed name nor any wrongful use of it by the Respondent seeking to trade on the goodwill of the Complainant, or using it as a link to other sites to the prejudice of the Complainant. Nor is there evidence of any other abusive use in relation to any other domain names or websites by the Respondent.
At best for the Complainant it can only be said that the registration of the disputed domain name by the Respondent blocks the Complainant from registering the same domain name. That notwithstanding, the Complainant has achieved registration for a number of similar domain names.
There is some suggestion in the material that the Respondent may be using an unrelated website <SickPerv.com> or a default site <Paul@JackSquat.com> and that either or both of these may be used for improper or inappropriate purposes. It is also claimed by the Complainant that in connection with the disputed domain name and by reference to these other websites that the Respondent has no legitimate rights to or interest in the disputed domain name. It is alleged that the disputed domain name has not been used by the Respondent and there is no direct evidence from the Respondent to gainsay this.
The Panel finds many of the explanations put forward by the Respondent in relation to the possibly active but unrelated websites surprising. It would appear from the other websites established by the Respondent and from his response generally that a certain element of amusement is generated for him by his registration of various domain names and establishment of provocative websites. It is however going a good deal further to say that such use is abusive and to the prejudice of the Complainant. The use of "JackSquat" may be tendentious but the Panel declines to draw any adverse inference against the Respondent from the choice of name.
The above Recital is necessary for a proper consideration of the issues that present themselves when considering the present Complaint.
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name: and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
The Panel observes that there is clearly a divergence on factual matters between the Complainant and the Respondent. Some of the material put forward by the Respondent was not alluded to in the Complainant's complaint. Nevertheless, the decision of the Panel turns largely on the material contained in or annexed to the Complaint itself.
It is also relevant to note that whilst there may be some who would disapprove of the action taken by the Respondent in now refusing to transfer the disputed domain name after it had originally been offered to the Complainant, the Panel is not concerned with the morals or ethics of the dispute. Rather the Panel must focus on whether or not all of the grounds under Rule 4(a) of the Policy have been made out. It is important to note that all grounds must be made out. The Panel therefore proceeds to consider each of these grounds.
As to ground (i), there can be no doubt but that the disputed domain name is confusingly similar to one or more of the Complainant's registered marks and also to one or more of its common law marks, including its common law rights in Canada based on such reputation as it has in that jurisdiction consequent upon the rights that it clearly has in other closely connected jurisdictions. Further, it would be quite wrong in an electronic age to overlook the significance of borderless transactions involving electronic communications via the Internet. Ground 4(a)(i) is accordingly made out.
As to ground (ii) it seems clear that when the Respondent registered the disputed domain name he did so, by his own admission on more than one occasion, for the benefit of the Complainant. There is no or insufficient evidence to establish that he did so for the purposes of blocking registration of the domain name by the Complainant. Nor does the Respondent appear to trade in domain names. The Respondent offered the disputed domain name to the Complainant. The offer was rejected. Whether the Complainant knew of Mr Brendan Foody's rejection in 1997 is perhaps not critical. As recently as January 2000 Mr Richardson on behalf of the Complainant stated that so long as the domain name and any associated website was dormant the Complainant could live with that situation. There was no or insufficient evidence to show that the disputed domain name was active at least to the prejudice of the Complainant. The Panel therefore finds that by its own actions or inactions the Complainant disavowed any rights to the domain name, based on its knowledge at that time that it was a dormant site.
It is also relevant to note that as at the date of each renewal of registration the Respondent agrees to abide and be bound by the Rules of the Policy (see Rule 2). Renewal would have been in October 2000 and the Complaint followed a short time thereafter. The importance of this point will be returned to later.
The Complainant also refers to some of the Respondent's linked websites and apparent or alleged misuse of names such as Aussiebushhats and garments called a Weatherall. The Weatherall is an old product of a company trading as Aussie Bush Hats. It presumably has no connection with the Respondent. Whilst the Panel views the actions of the Respondent as inappropriate and even morally reprehensible, the Panel must consider whether any legal breach has been made out. The evidence only just goes far enough to establish ground (ii). At all times it must be remembered that it is for the Complainant to make out its case. It clearly has available to it abundant assistance from its advisors and the ability to place before the Panel such relevant and persuasive evidence as it can. It has presumably done so.
At the beginning of 2000 the Complainant accepted it could live with the Respondent's registration "as long as it's dormant". In full knowledge of that the Respondent then renewed its registration towards the end of the year. In doing so at that time, did it have any right or legitimate interest in the domain name?
It cannot be said that the Complainant was abandoning its attempts to secure the name. Its email of January 21, 2000 was perhaps unfortunate but at least it did make its position clear. In the face of that the Respondent renewed its registration, but for what legitimate purpose? None has been identified in a manner which the Panel finds convincing. It is also noted that whilst the examples given in the Policy under clause 4(b) do not seem to arise on the facts, they are not exclusive.
In renewing the registration the Panel accordingly finds that the Respondent has acted in breach of Rule 4(a)(ii). That ground is therefore made out.
The Panel turns now to consider ground 4(a)(iii). As it reads, this requires that the Respondent's domain name has been registered and is being used in bad faith. (emphasis added)
The meaning of this requirement has been considered in detail in the Nuclear Marshmallows case D 2000-003. In that decision the Panelist went to some lengths to explain the history of the subclause to the Rule. The decision has been referred to and applied on a number of subsequent occasions. In Nuclear Marshmallows the Panel there makes it clear that the Complainant is required under 4(a)(iii) to establish registration in bad faith and use in bad faith. Accordingly, establishing one only is not sufficient. See also Case D 2000-0203.
The Panel in Nuclear Marshmallows then went on to consider the temporal aspect of the subclause. In particular in para 7.6 the Panel noted "the use of both tenses draws attention to the fact that, in determining whether there is bad faith on the part of the respondent, consideration must be given to the circumstances applying both at the time of registration and thereafter. So understood, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name "has been registered and is being used in bad faith" will be satisfied only if the complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith." With respect to the Panel in Nuclear Marshmallows, I agree. It may well be, as some have said, that the requirement to establish both heads under the subclause can create problems and is an unsatisfactory feature of the subclause. Be that as it may, the history of the subclause as traced by the Panel in Nuclear Marshmellows shows a deliberate intention that the subclause be interpreted so as to require both heads of the subclause to be made out by the Complainant.
The Panel in Nuclear Marshmallows went on however to note that what may amount to use in the context of the subclause is not necessarily restricted to active use and that passive use may suffice. Clearly, when the domain name resolves to a website or some other on-line presence there is likely to be a finding of active use. However where this does not occur and there is mere squatting or blocking by registration of the name then this may also amount to use in the sense of inactive use for the purposes of the subclause. The Panel in Nuclear Marshmallows noted specifically (para 7.10) that the circumstances identified in paragraph 4(b)(i),(ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. This Panel notes that the matters identified in para 4(b) are not exclusive. However, adopting that approach and taking what was said by the Panel in Nuclear Marshmallows it is clear that paragraph 4(b) recognises that inactivity or passive holding in relation to a domain name can in certain circumstances constitute use in bad faith of that domain name.
The Panel in Nuclear Marshmallows also made it plain that what circumstances of inactivity or passive holding beyond those identified in paragraph 4(b) is very much a factual issue dependent upon the circumstances of any given case.
The point of difficulty in the instant case is this. If the requirements of Rule 4(a)(iii) are required to be examined as at the date of registration then it is clear that in the present case they are not made out. See for example case D 2000-0026 and case D 2000-0203. If however registration is also to be equated with renewal then the position may again be looked at at each anniversary. Renewal in this case was in October 2000 and on that approach to the Rule (if it is appropriate) it is proper to look at the question of registration (or more accurately renewal) and use in bad faith as at October 2000. This in the opinion of this Panel is an important point and an important distinction. The question that then arises is whether or not it has been established that the Respondent, when it renewed the registration in October 2000, was renewing the registration in bad faith and at that time using the domain name in bad faith.
This point will be reverted to shortly. It is necessary first to explain the circumstances in which this point has become important on the facts of this particular case.
As to the first limb of ground (iii), the Panel does not find that the domain name was registered by the Respondent in bad faith. That it was registered and offered to the Complainant tells against such a finding. Nor is the Panel persuaded that it was being used (to the limited extent it was being used) down to the date of renewal in October 2000 in bad faith. There is no evidence whatever that the domain name was being used for the purposes of blocking registration by the Complainant nor to trade on any goodwill of the Complainant. Indeed such evidence as there is would appear to be to the contrary. Nor did the Respondent offer to transfer the domain name for a sum in excess of its documented out of pocket expenses directly related to the domain name. An email in January 2000 wherein Mr Richardson sought details as to what, including an amount of money, would be required to acquire the disputed domain name simply drew the response that the domain name was not for sale. Of course these findings are on the basis of the evidence provided to the Panel in the initial Complaint and response.
The Panel observes that of the matters identified in Rule 4(b) of the Policy they are purely by way of example and are not exclusive. It remains nevertheless at all times for the Complainant to make out its case under ground (iii) of registration and use in bad faith. Moreover, bad faith is a relatively high test to have to make out.
The Panel has found grounds 4(a)(i) and (ii) made out. It might be assumed that if there has been a finding of no rights or legitimate interest that there would then automatically be a finding of registration and/or use in bad faith. Often that may follow. But clearly ground (iii) requires something more over and above ground (ii).
In the view of the Panel "bad faith" connotes a wrong or improper motive as the dominant factor in the actions of the respondent. Usually in most common law jurisdictions full particulars of such an allegation would be required - see for example in England Order 18 Rule 12(1)(b) RSC, under the former procedure.
The allegations of the Complainant under this head are brief. Reference is made to the email traffic in Annex 7 which includes the email of January 21, 2000 from the Complainant. Following the Complaint being transmitted the Complainant then in November 2000 put forward further material relating to the Respondent's website and the links it enabled to other websites unconnected with the Respondent. The Respondent replied to this in its response. The material deals with the links to websites of the "Weatherall" pages of Aussie Bush Hats and Drizabone.
The Respondent in its response openly refers to the link to the Weatherall pages of Aussie Bush Hats and Drizabone. It acknowledges a failure to obtain consent to the link to Drizabone. It appears to claim authority to link to the site of Aussie Bush Hats although no independent evidence of that authority is provided. Apparently the home page copied is an old one and it is accepted by the Respondent that it has no connection with that site or any business of Aussie Bush Hats.
The explanation given by the Respondent is as follows:
"The purpose of this new page was not to claim any connection with either Aussie Bush Hats or Driza-Bone, but merely to reaffirm that the WeatherAlls.com site is still under construction and to illustrate that Weatherall Green & Smith do not have exclusive world-wide rights to the term weatherall or weatheralls."
The Panel sought to access the <weatheralls.com> site recently. It is still stated to be under construction but does contain a link to the Aussie Bush Hats site <Aussiebushhats.com.au>. That site carries a 2001 copyright proclamation and details of products called "Weatheralls".
That reference and useage is descriptive. It relates in any event to an oilskin product of a type well known in the Antipodes. It is unlikely in the extreme to be associated or confused with a service provided by a firm or company such as the Complainant (which the Panel notes in any event has a pending trade mark application in Australia for WEATHERALL and device. The Complainant also has an Australian website <weatheralls.au.com> and <weatheralls.au.com>).
The current link to the Aussie Bush Hats website (which did not exist at the date of renewal) cannot be explained on any proper commercial basis. It appears to be solely for the purposes of seeking to demonstrate that the name "Weatherall(s)" is generic or at least not distinctive of the Complainant. For the reasons just set out the Panel rejects this explanation. "Weatherall(s)" for the Complainant's services and "Weatherall(s)" as a description of an Australian sourced oilskin product can quite happily co-exist and the one would not infringe any trade mark rights of the other.
As has already been pointed out, when the Respondent renewed its registration in October 2000 it was well aware of the Complainant's interest in the domain name. It was also well aware that the Complainant was prepared to live with the registration so long as the site remained inactive. The Complainant also warned the Respondent that it would monitor the web from time to time to see if the Respondent resurrected the name and any site associated with it.
Within a very short time after renewal the Respondent then established a link to the AussieBushHats website. What happened thereafter is unclear but it appears that sometime early in 2001 the link was re-established. Earlier in this decision the Panel has set out the access that was achieved to the AussieBushHats website through the disputed domain name.
Having regard to the history and all the other matters earlier set out in this decision, the Panel finds as a fact that the Respondent in all probability had the intention at the time of renewal of the registration in October 2000 to link the domain name to the AussieBushHats website. Whether or not at the time of renewal of registration the domain name resolved to that website is unclear but the inference may reasonably be drawn that that was in the mind of the Respondent. It does not seem likely that the link to the AussieBushHats website and the material regarding a Weatheralls was only as a result of this Complaint. The Complaint was lodged electronically with WIPO on November 7, 2000. It was not in correct form and it was not until November 23, 2000 that an amended Complaint was received electronically at WIPO. Commencement of administrative proceedings did not take place until November 24, 2000.
The evidence from the Complainant in an email of November 16, 2000 shows that an attempt on November 15, 2000 to access the disputed domain name resolved to a website "Aussiebushhats.com.au". The first page accessed showed the Weatheralls oilskin. Accordingly, it cannot be said that the Respondent constructed this link after receiving notification of the Complaint and in an endeavour solely to make the point that he did in his response, namely that the name Weatheralls is either descriptive or generic. The Panel has earlier indicated why this argument cannot avail the Respondent in any event.
The Panel accordingly finds on the facts in this case and drawing all proper and reasonable inferences from those facts that as at the date of renewal of registration in October 2000 the Respondent renewed the registration in bad faith and was at that time using the domain name in bad faith.
The sole question then remaining is whether on these facts a breach of Rule 4(a)(iii) has been made out as that subclause has been interpreted and applied in previous decisions. This is a matter dealt with in case D2000-0026 where the Panelist said of the Report of the WIPO Internet Domain Name Process that "it was not the intent of paragraph 197 [of the Report] to extend the definition of "abusive registration" to include domain names originally registered in good faith." And later: "The question whether domain names registered in good faith become infringing is outside the scope of this inquiry." As the Panelist there noted, extension of the Policy to cover such cases as are outside the Policy is a task for ICANN or the Courts.
It is important that the Complainant in this case understands the limits of the Policy and Rules and therefore the basis for this decision. The panel is bound to apply the Rules as they are and as they have consistently been interpreted. On the facts it has been found that the original registration was not in bad faith. Nor was subsequent use in bad faith at least down to renewal of registration in October 2000. But a registration of a domain name that at inception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii). See especially the concluding sentence in paragraph 7.6 of the Nuclear Marshmallows decision case D2000-003.
Thus, although one may have considerable sympathy for the Complainant, the two limbs of Rule 4(a)(iii) have not both been made out. For the benefit of the Complainant, reference could usefully be made to the Second Staff Report on Implementation Documents for the UDRP (at http://www.icann.org/udrp-second-staff-report-24oct99.htm).
For the reasons set out above the Panel finds:
(a) That the domain name registered by the Respondent is identical or confusingly similar to trade marks to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name;
(c) That the Respondent's domain name, while now being used in bad faith, has not been registered in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel dismisses the Complaint.
John Katz QC
Dated: February 19, 2001