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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ha’aretz Daily Newspaper Ltd. v. United Websites, Ltd.
Case No. D2002-0272
1. The Parties
1.1 The Complainant is Ha’aretz Daily Newspaper Ltd., a Corporation incorporated under the laws of the State of Israel with its principal office in Tel Aviv, Israel. The Complainant is represented by Sagy Law Associates.
1.2 Respondent is United Websites, Ltd., doing business as Haaretz Internet. Neither the Complaint nor the Response, nor the registration for the domain name <haaretz.com> identifies Respondent in any manner other than Haaretz Internet. However, by an email to World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (the "Center") dated April 19, 2002, Respondent confirmed that Haaretz Internet is a business name used by United Websites Ltd. Respondent’s principal address is in Gaithersburg, Maryland, United States of America. Respondent is represented by its managing director, Mr. Ari Rose.
2. The Domain Name and Registrar
2.1 The domain name at issue is <haaretz.com> (the "Domain Name"). The Domain Name was registered August 20, 1997.
2.2 The Domain Name is registered with Dotster, com (the "Registrar").
3. Procedural History
3.1 This proceeding was initiated under and is being conducted pursuant to:
(a) the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, and approved by ICANN on October 24, 1999;
(b) the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") adopted by ICANN on August 26, 1999, and approved by ICANN on October 24, 1999; and
(c) the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 Complainant filed the Complaint with the Center by e-mail on March 21, 2002, and by hard copy on March 25, 2002, in accordance with the Rules and the Supplemental Rules. Complainant paid the required filing fees on March 25, 2002.
3.3 On March 27, 2002, the Center forwarded an e-mail to the Registrar requesting verification of key information regarding the registration of the Domain Name (the "Registration"). The Registrar did not respond to that e-mail. On April 12, 2002, the Center forwarded a second e-mail to the Registrar repeating the request of March 27, 2002. The Registrar did not respond to that e-mail. On April 16, 2002, the Center forwarded a third e-mail to the Registrar repeating the requests made March 27, 2002, and April 12, 2002. On April 17, 2002, the Registrar forwarded an e-mail to the Center confirming the information requested by the Center, including the fact that the Domain Name is registered in the name of Respondent. That information, including information on Respondent’s administrative and technical contacts, was different from the Registration information revealed by the Whois search conducted by Complainant on March 18, 2002, a copy of which was provided together with the Complaint as Annex 1.
3.4 On April 17, 2002, the Center verified that the Complaint complied with the formal requirements of the Policy, the Rules and the Supplemental Rules.
3.5 On April 18, 2002, the Center forwarded to Respondent a Notification of Commencement of Proceeding, including a copy of the Complaint. That material was forwarded:
(a) by e-mail to the e-mail addresses specified in the Registration for Respondent, for Respondent’s administrative contact, and for Respondent’s technical contact;
(b) by e-mail to the following additional e-mail addresses, namely, ‘email@example.com’, ‘firstname.lastname@example.org’, ‘email@example.com’, and ‘firstname.lastname@example.org’;
(c) by registered mail (with enclosures) to the addresses specified in the Registration for the Respondent, for Respondent’s administrative contact, and for Respondent’s technical contact.
3.6 Due to the inordinate delay by the Registrar in responding to the Center’s requests for verification of Registration information, the Complaint was not forwarded to Respondent within the time prescribed by Paragraph 4(a) of the Rules.
3.7 On April 19, 2002, Respondent sent an e-mail to the Center in response to the Notification of Complaint and Commencement of Administrative Proceeding. Respondent’s e-mail to the Center forwarded a copy of an opposition filed by Respondent in the United States Patent and Trademark Office ("USPTO") before the Trademark Trial and Appeal Board against an application filed by Complainant to register the trademark Haaretz.com. Respondent asserted that this UDRP proceeding should not go forward as a consequence of the opposition proceeding in the USPTO.
3.8 On April 23, 2002, the Center sent an e-mail to Respondent acknowledging receipt of Respondent’s e-mail of April 19, 2002, and reminding Respondent that the deadline for filing a Response was May 8, 2002.
3.9 Respondent did not file a Response on or before May 8, 2002. On May 13, 2002, the Center forwarded to Respondent by e-mail, a Notification of Respondent Default.
3.10 On May 14, 2002, Respondent sent the Center an e-mail responding to the Notification of Respondent Default. In that e-mail, Respondent stated that it had only just received the full, hard copy version of the Complaint. Respondent advised that before that date, it had not received the annexes forming part of the Complaint. Respondent asserted that it could not have provided a proper Response by the due date for the Response because Respondent had not received the annexes. The e-mail requested an extension of the time for filing the Response.
3.11 On May 15, 2002, Complainant’s legal counsel sent an e-mail to the Center responding to Respondent’s e-mail to the Center of May 14, 2002. Complainant’s counsel asserted that he had forwarded a complete copy of the Complaint with all annexes on March 20, 2002, to Respondent’s address set out in the Registration as it appeared at that time, namely, Haaretz Internet, P.O. Box 342021, Bethesda, MD, 20827. Complainant stated that the package containing the Complaint was returned to Complainant on April 18, 2002, with the notation that it had been unclaimed after two notices had been given to Respondent. Complainant asserted that Respondent chose not to accept delivery of the complete Complaint.
3.12 On May 16, 2002, Respondent forwarded another e-mail to the Center reconfirming that it never received the full Complaint with all the annexes until May 13, 2002. The e-mail also provided reasons why Respondent was not at fault for failing to receive the copy of the Complaint that was sent directly to Respondent by Complainant.
3.13 Also on May 16, 2002, Respondent forwarded a Response to the Center and to Complainant’s counsel by e-mail.
3.14 On May 29, 2002, Respondent sent an e-mail to the Center, to Complainant’s counsel and to Complainant giving notice that Respondent had filed an additional opposition proceeding in the Trademark Trial and Appeal Board of the USPTO against an application brought by Complainant to Register the trademark HA’ARETZ. That e-mail enclosed copies of Respondent’s opposition materials and repeated Respondent’s request that this proceeding be stayed.
3.15 Complainant elected to have the dispute decided by a three-member Administrative Panel. On June 6, 2002, the Center appointed Mayer Gabay and Milton L. Mueller as Panelists. On June 18, 2002, the Center appointed Robert A. Fashler as the Presiding Panelist and issued a Notification of the Appointment of Administrative Panel and Projected Decision Date to Complainant and Respondent.
3.16 On June 29, 2002, Complainant filed a document with the Center titled "Reply". On July 1, 2002, Respondent sent an email to the Center making submissions on why the Reply filed by Complainant should not be considered by the Panel. Complainant submitted an additional email on July 1, 2002, in response to Respondent’s email of that date.
4. Preliminary Procedural Issues
4.1 Four procedural issues have arisen in connection with this Proceeding, namely:
(a) non-compliance with paragraph 4(a) of the Rules, which provides:
"The Provider shall review the Complaint for administrative compliance with the Policy and these Rules and, if in compliance shall forward the Complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19."
(b) Respondent’s failure to file the Response in accordance with Paragraph 5(a) of the Rules, which reads:
"Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider."
(c) Respondent’s request that this Proceeding be stayed pending completion of the opposition proceedings that Respondent has initiated in respect of Complainant’s trademark applications.
(d) Whether documents filed in addition to the Complaint and the Response should be considered in this proceeding.
Delay in Forwarding Complaint to Respondent
4.2 The delay in forwarding the Complaint to Respondent was caused by the Registrar’s failure to respond to the Center’s request for verification of Registration information. Neither of the parties is responsible for this technical deficiency. Neither is the Center.
4.3 The Panel is of the view that the time period set out in Paragraph 4(a) of the Rules is directed primarily to administrative efficiency and a minor failure to comply with the time period will rarely result in prejudice to the parties. However, in this particular case, the delay actually increased the fairness and equity of the proceeding. When the Registrar finally responded to the Center’s request for Registration particulars, the Registrar provided new contact information for Respondent that did not appear in the Whois search report generated by Complainant on March 13, 2002. As a consequence of the updated information received from the Registrar, the Center was able to ensure that Respondent received notice of the Complaint and subsequent communications.
4.4 The Panel is of the view that the failure to comply with the time period specified in Paragraph 4(a) of the Rules is a minor administrative deficiency that has not caused prejudice to either of the parties. The Panel, on its own motion, hereby exercises its discretion under Paragraph 10(c) of the Rules to retroactively extend the period of time fixed by Paragraph 4(a) of the Rules to April 18, 2002.
Delay in Filing Response
4.5 Respondent represents that it never received the complete Complaint with all annexes until May 13, 2002, which is the same date that the Center issued the Notification of Respondent Default.
4.6 The hard copy of the complete Complaint was forwarded by the Center by registered mail. It is the Center’s practice to forward hard copies by courier, but that cannot be done for post office boxes because courier companies refuse to make deliveries to post office boxes. The only contact addresses specified in the Registration were post office boxes. There is no evidence to suggest that Respondent intentionally chose not to receive the complete Complaint until May 13, 2002. Given the heightened state of security currently prevalent in the United States, it is not surprising that packages delivered via the postal service might be delayed.
4.7 The Panel has an obligation to ensure that the parties to this proceeding are treated with equality and that each Party is given a fair opportunity to present its case. In the circumstances, the Panel hereby exercises its discretion under Paragraph 10(c) of the Rules to retroactively extend the period of time fixed by Paragraph 5(a) of the Rules for filing Respondent’s Response to May 16, 2002.
Request for Stay of Proceeding
4.8 Respondent has asserted that this Proceeding should not be conducted in light of the opposition proceedings initiated by Respondent in respect of certain applications filed by Complainant in the USPTO to register the trademarks Haaretz. com and Ha’aretz.
4.9 Paragraph 18(a) of the Rules reads:
"In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."
4.10 The Panel is of the view that the oppositions initiated by Respondent in the USPTO are not legal proceedings in respect of the domain-name dispute that is the subject of the Complaint. The opposition relates to Complainant’s right to register certain trademarks in the United States. This Proceeding relates to whether or not Respondent’s registration and use of the Domain Name is contrary to Paragraph 4(a) of the Policy. While both proceedings may share some common issues or facts, their substance and nature are completely different. As well, it is not at all clear that an opposition is the kind of legal proceeding contemplated by Paragraph 18(a). Whether or not the oppositions succeed will not have any bearing on the outcome of this Proceeding.
4.11 The Panel hereby exercises its discretion under Paragraph 18(a) of the Rules by refusing Respondent’s request to stay this proceeding and by continuing with this Proceeding.
Submission of Additional Material
4.12 The Panel has considered the material filed by Respondent in support of its assertions that it has filed oppositions against certain trademark applications of Complainant and for no other reason.
4.13 The Panel refuses to consider any additional material filed by either party in this proceeding. In particular, the Complainant’s Reply was filed far too late and on the eve of the Panel issuing its decision. In particular, the Rules do not provide for filing a Complainant’s Reply. That is because this is a summary process intended to be completed in an expeditious manner. The Panel sees no compelling reason to allow for the filing of any additional material.
5. Factual Background
5.1 Complainant is a publishing house incorporated in 1943. Complainant publishes an Israeli newspaper in association with the trademark HA’ARETZ (the "Newspaper"). HA’ARETZ is the Roman alphabet transliteration of the Hebrew characters that make up the Hebrew name and trademark for the Newspaper. Hereinafter, the transliteration of the Hebrew trademark is called the "English Mark" and the Hebrew version of the trademark is called the "Hebrew Mark".
5.2 Complainant claims to have published and circulated the Newspaper in Israel in association with the Hebrew Mark since 1920. Presumably, that was done through a predecessor in title since Complainant did not exist until 1943. In any event, the Newspaper has been generating goodwill since 1920.
5.3 At some point in time, which is not specified by Complainant, Complainant began publishing the Newspaper in English.
5.4 Complainant has used the Hebrew Mark continuously since 1943, in association with the Newspaper. Complainant claims continuous use of the Hebrew Mark over the past 82 years, presumably through predecessors in title before 1943. It is not clear from the Complaint how long Complainant has been using the English Mark, but it has been for a significant period of time.
5.5 The Hebrew characters of the Hebrew Mark translate as "the land". Respondent contends that the Hebrew word "Ha’Aretz" is commonly understood by Israelis to mean Israel.
5.6 The Newspaper is one of the leading Hebrew language newspapers in the world. It is circulated and read widely within Israel and throughout the world. For the past five decades, Complainant has circulated the Newspaper throughout the world by subscription.
5.7 Since 1995, Complainant has been printing the Newspaper’s Hebrew weekend edition in New York and has sold that edition on newsstands in various cities throughout the United States in association with the Hebrew Mark.
5.8 In 1999, Complainant began printing the English weekend edition of the Newspaper in New York and selling that edition on newsstands in various cities throughout the United States in association with the English Mark.
5.9 In 1995, Complainant began digitally publishing news in Hebrew in association with the Hebrew Mark and sold subscriptions to that news in the United States and other countries through a bulletin board service.
5.10 In March of 1997, Complainant launched a Hebrew Internet edition at <haaretz.co.il>. Later that year (the precise date is not specified by Complainant), Complainant launched an English Internet edition at <haaretzdaily.com>. Complainant publishes the content of the Newspaper at those websites in association with the Hebrew Mark and the English Mark. The websites are frequently visited by users from all over the world.
5.11 The Newspaper is internationally recognized by numerous English language news providers and educational institutions, who make reference to the Newspaper in their publicly available material. Some provide links from their websites to the Complainant’s websites.
5.12 Complainant registered the Hebrew Mark with the Israeli Register of Trademarks on July 15, 1979, in association with newspapers. Complainant has registered 12 additional trademarks that comprise or feature the Hebrew Mark or the English Mark in the Israeli Register of Trademarks, all in the Fall or Winter of 2001. Three of those are for the English Mark in association with, respectively:
(b) printing, publishing, system development, software development;
(c) advertising, business management, business administration, office functions, on-line shops, direct mailing, electronic commerce and digital marketing.
5.13 Three of Complainant’s Israeli registrations are for the Hebrew Mark in association with, respectively:
(a) printing, publishing system development, software development;
(b) advertising, business management, business administration, office functions, on-line shops, direct mailing, electronic commerce, digital marketing;
5.14 Complainant has registered the Hebrew Mark in the USPTO on April 17, 2001, in association with newspapers for general circulation. The registration claims first use in commerce in 1920. Complainant has also filed applications to register the English Mark and Ha’aretz.com in the USPTO. The application for the English Mark was filed December 1, 1998, and claims first use in commerce in the United States since March 1, 1997.
5.15 Respondent registered the Domain Name on August 20, 1997. In the registration, Respondent identified itself as Haaretz Internet.
5.16 Respondent asserts that it registered the Domain Name after conducting searches for any business entity named "Haaretz Internet" and any trademark registrations for the mark Haaretz. The searches did not detect any conflicts. The Respondent also says that it consulted with trademark counsel regarding the Domain Name and was assured that use was proper and no party could claim exclusive rights to a common geographic term.
5.17 Respondent says that it selected the business name Haaretz Internet and the Domain Name based on the meaning of the word "ha’aretz" in the Jewish community. Respondent says that "ha’aretz" in Hebrew literally means "the land" and figuratively refers to "the homeland", that is, the country of Israel. Respondent says that it is a commonly known fact that Israelis use this term colloquially to refer to Israel. Respondent says that it is a business entity with an interest in the Jewish population.
5.18 Respondent says that shortly after registering the Domain Name, Respondent used it for e-mail communications with its clients as well as for a commercial website promoting its web-design services, and it has done so continuously for more than four years.
5.19 In 2001, Respondent says that it learned that Complainant had filed three applications to register trademarks comprising or featuring the word Haaretz in the USPTO, namely, Haaretz Internet, Haaretz.com and Haaretz.
5.20 Respondent took exception to those trademark applications and has intervened in their prosecution. It has initiated opposition proceedings in respect of two of the applications. The third has been rejected by the USPTO.
5.21 In response to Complainant’s U.S. trademark applications, Respondent began a legal and public relations campaign against Complainant because it believed that Respondent had superior rights in the words Haaretz.com and haaretz by virtue of its registration of the Domain Name and its use of the Domain Name and Haaretz Internet. The campaign included posting a link on the website accessed via the URL "www.haaretz.com" (the "Website"). Respondent refers to the commentary that it posted on the Website dealing with its dispute with Complainant as the "Dispute" pages. Respondent says that the Dispute pages were merely sub-pages of an otherwise strictly commercial website offering goods and services.
5.22 Complainant asserts that up until late January 2002, the Website was dedicated exclusively to the subject matter of the Newspaper. Complainant provides as Annex 10 to the Complaint a copy of what Complainant says constituted the entire content of the Website before late January 2002 (the "First Appearance"). The First Appearance of the Website, as shown in Annex 10 of the Complaint, had very little content. The content comprised the following statements:
"Haaretz Newspaper – Love it? … Hate it?
Share your comments and opinions with the world.
If you are looking for Haaretz Newspaper Website Go Here!!
This page is dedicated to your comments about Haaretz.
By clicking below you acknowledge that this site is not related to Haaretz
and that you only intended to exchange your comments regarding Haaretz with others.
Join the Blue Ribbon Online Free Speech Campaign!
This site and its operators are not affiliated with nor endorsed by Ha’aretz Newspaper.
Haaretz means "the land" in Hebrew and is not a registered trademark.
Registration of this domain name predates Ha’aretz’s first use in commerce."
5.23 The First Appearance of the Website also included a button connected with the Blue Ribbon Online Free Speech Campaign, presumably providing a link to that organization’s website.
5.24 The First Appearance of the website provided a link to a website operated by Complainant. The link was embedded in the statement "If you are looking for Haaretz Newspaper website go here!!".
5.25 Complainant strongly implies but does not categorically assert that the First Appearance of the website is the only content that has ever been displayed at the website until late January 2002.
5.26 Respondent altered the website at least two times following late January of 2002. The first alteration (the "Second Appearance") is shown at Annex 11 of the Complaint. It begins with four separate screens which appear to have been displayed in an animated mode. Each screen displayed a single word in large, bold, capital letters together with a small message "Skip Flash Intro". The first word on the first page was "SHAME". The next word on the second page was "0N". The next word on the third page was "HA’ARETZ". The next word on the fourth page was "DAILY". The complete message was "SHAME ON HA’ARETZ DAILY". The main content provided in the Second Appearance of the website was a commentary about Complainant and Respondent’s view of the fact that Complainant applied to register trademarks in the USPTO that consisted of or featured the Hebrew Mark and the English Mark, including Haaretz.com. The Second Appearance of the Website also included the notice "Active use of this domain name has been suspended pending resolution of this matter."
5.27 The website was changed a third time (the "Third Appearance") in a manner that modified but continued Respondent’s commentary on the trademark applications filed by Complainant and Respondent’s dispute with the Complainant about those trademarks and the Domain Name. (Annex 12 of the Complaint)
5.28 Respondent asserts that the Second Appearance of the website and the Third Appearance of the website, which contain the commentary on the dispute between Respondent and Complainant, were merely sub-pages of an otherwise purely commercial website.
5.29 In the First Appearance of the website, Internet users were invited to make comments about the Newspaper by clicking on a link designated by the word COMMENTS. By clicking on that link, the Internet user was taken to a different website operated by a third party operating under the name <complaints.com>.
5.30 Complainant copied some of the comments that were posted at "Complaints.com" by Internet users who linked to the "complaints.com" website from Respondent’s Website. The comments, shown in Annex 21 of the Complaint, indicate that those who made those specific comments believed that they were dealing with Complainant. Specific comments indicating that belief were:
(a) email from Safa’Abdel Rahman:
"It was my first time to notice the map of Israel on your website, and it shocked me not finding any notes to explain the map, and what shocked me most is considering the whole West Bank and Gaza Strip as parts of the map while you should have pointed out that those are occupied Palestinian territories and you should have pointed out that the settlements in those areas are built on confiscated Palestinian land and they are illegal. You blind yourself and your readers when you neglect mentioning the truth, the truth that is supported by the UN resolutions and are the bases for all of the peace agreements and negotiations.
Please amend your map unless you explain to the readers that you are writing on behalf of the settlers or you oppose the UN resolutions that consider the West Bank and Gaza as occupied Palestinian land.
I hope my complaint does not go to the garbage because I am a Palestinian and not a settler.
(b) email from Jeffrey R. Ravis:
"The former format of your online paper was MUCH better laid out than your newer version. Also . . . what happened to the daily caricature??????
Jeffrey R. Ravis
(c) email from Ruben Farachi:
"To Manager of Ha’Aretz Journal
First of all y [sic] want to congratulate you for the free service you are givinf [sic] to the Judaism in the Diaspora.
When we received in case o[sic] Venezuela True Isrel [sic] news one day before due difference in time.
My stecial [sic] case an the claim is that we are not receiving for a week your mail journal which make something empty in our information of Israel.
We request you to revise and we hope receiving your news as we are use[sic] to SHALOM.
ExPres, Of B’nai Brith Venezuela"
5.31 Certain independent businesses, educational institutions and other organizations have published references to the Newspaper that incorrectly designate the URL for the Complainant’s website using the Domain Name, namely <haeretz.com> rather than the domain names actually used by Complainant for its website. Such errors have been made by a company named @hoc, Troy State University, the University of Texas at Austin Liberal Arts Computer Program, a Danish web address created after September 11, 2001, the Spanish Institute of International Foreign Relations and on certain Italian and Uruguayan web addresses.
5.32 Respondent has not filed any evidence in support of the Response. It has separately provided copies of materials it has filed in opposition proceedings in the USPTO. The Panel elects to allow that material but only as evidence of the fact that Respondent has filed those opposition proceedings.
6. Parties’ Contentions
6.1 Complainant asserts that the Domain Name is identical or confusingly similar to the Hebrew Mark and the English Mark in which Complainant has rights for the following reasons:
(a) Complainant has rights in the Hebrew Mark and the English Mark by virtue of:
< P>(i) registrations for the Hebrew Mark in Israel and the United States;
(ii) registrations for the English Mark and other marks that feature the English Mark in Israel; and
(iii) common law rights derived from use and goodwill generated through use;
(b) The Domain Name is identical to Complainant’s trademarks because:
(i) any differences between Complainant’s trademarks, such as the apostrophe in HA’ARETZ or the Domain Name and <.com> are inconsequential;
(c) The Domain Name is confusingly similar to Complainants trademarks because:
(i) the manner in which Respondent actually used the Domain Name and Complainant’s trademarks at the Website caused confusion and was likely to cause confusion;
(ii) it is inevitable that members of the public have been confused and will continue to assume that the Domain Name is owned, endorsed, or otherwise authorized by Complainant;
(iii) Respondent’s use of a notice to the public that the Website was not affiliated with nor endorsed by Complainant expressly acknowledged the existence of confusion;
(iv) third parties seeking to identify Complainant’s website have mistakenly referenced a URL with the Domain Name rather than the correct URL.
6.2 Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name because:
(a) Respondent has no license or right to use Haaretz as part of a Domain Name or at all;
(b) All iterations of the website have had no independent significant or use other than exploiting Complainant’s trademarks and luring readers of the Newspapers to the website;
(c) The website never had any independent content or usefulness apart from references to Complainant and Complainant’s trademarks;
(d) Complainant’s trademarks have strong international recognition and Respondent’s unauthorized use of the Domain Name has been causing confusion and diluting Complainant’s trademarks.
6.3 Complainant asserts that Respondent has registered and is using the Domain Name in bad faith because:
(a) The Domain Name was registered approximately 77 years after the first use of the Complainant’s trademarks and five months after the launch of the Newspaper’s Hebrew language online edition;
(b) Respondent falsely represented and warranted in its registration agreement with the Registrar that the Domain Name did not infringe the rights of any party;
(c) Respondent’s disclaimers on the First Appearance of the Website indicated its awareness of the confusion the Domain Name was causing;
(d) The Domain Name registration deprives Complainant of its right to register the Domain Name under its own name;
(e) Respondent’s conduct constitutes bad faith pursuant to Paragraph 4(b)(ii) of the Policy;
(f) Respondent chose the Domain Name because of its strong recognition among readers of the Newspaper and the desire to cause confusion with Complainant’s trademarks;
(g) Registration of the Domain Name was intended to create a false impression that Respondent and its Website are affiliated with Complainant;
(h) Respondent provided a false address to the Registrar when registering the Domain Name;
(i) Respondent has no trademark registrations or applications for registration of the English Mark in any country;
(j) Respondent could not have had any reason for acquiring the Domain Name except to force Complainant to buy the Domain Name from Respondent;
(k) The website is being used for the purpose of making libelous statements about the Complainant and its counsel;
(l) Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services;
(m) Respondent’s use of the Domain Name for a website expressing opinions regarding Complainant was not necessary as it could have used many other domain names for that purpose;
(n) Respondent’s conduct constitutes bad faith pursuant to Paragraph 4(b)(iv) of the Policy;
(o) Respondent has not demonstrated a legitimate non-commercial or fair use of the Domain Name;
(p) Respondent is not commonly known by the Domain Name.
6.4 Respondent asserts that Complainant is attempting to usurp the Domain Name through harassment, intimidation and misstatement of facts.
6.5 Respondent denies all allegations made in the Complaint.
6.6 Respondent asserts that the Annexes attached to the Complaint project only a partial and incomplete picture along with false and misleading interpretations in the Complaint.
6.7 Respondent contends that Complainant has no rights in the trademark Haaretz.com.
6.8 Respondent asserts that the primary significance of the word "Ha’Aretz" is "the land" and that "the land" is understood by Israelis as referring to Israel. Respondent contends that Complainant cannot lay claim to the word "Ha’Aretz" in all commercial fields.
6.9 Respondent asserts that it has rights or legitimate interests in respect of the Domain Name because the word "Haaretz" is a generic term meaning Israel and Respondent, being a business entity with an interest in the Jewish population, has every right to use the name Haaretz Internet and Domain Name in exactly the same manner as if its name was "Israel Internet" and used the domain name <israel.com>.
6.10 Respondent asserts that the website has always been commercial in nature, offering Respondent’s products and services, and that shortly after registration of the Domain Name, Respondent began using the Domain Name for e-mail communication with clients and for a commercial website promoting its web-design services, and has continued to do so for over four years.
6.11 Respondent says that it did not register and is not using the Domain Name in bad faith because:
(a) It has exercised it First Amendment Rights by posting content about Complainant and the Newspaper at the website;
(b) The comments on the website about Complainant and Respondent’s dispute with Complainant were only sub-pages and never comprised the whole site;
(c) After the Complaint was filed, Respondent made two attempts to resolve the subject matter of this proceeding, inviting any reasonable compromise but the Complainant ignored those attempts and did not respond;
(d) Respondent has operated under the trade name "Haaretz Internet" for over four years and used the Domain Name as its web address as well as for e-mail correspondence;
(e) As an entity with interest in the Jewish community, Respondent had every right to register the Domain Name;
(f) Respondent is entitled to register and use the Domain Name in a field unrelated to Complainant’s news activities;
(g) Respondent’s actual use of the Domain Name as indicated by its interest web design activities is a bona fide commercial use;
(h) Respondent is not a competitor of Complainant and has not gained any improper financial gain from use of the Domain Name;
(i) Any visitor to the website will immediately know it is not the Newspaper;
(j) Respondent did not acquire the Domain Name for the purpose of selling it;
(k) Respondent did not register the Domain Name to prevent Complainant from reflecting its marks in a domain name;
(l) Respondent did not register the Domain Name primarily for the purpose of disrupting the business of a competitor.
6.12 Respondent asserts that Complainant is acting in bad faith and requests a finding of reverse domain name highjacking.
7. Discussion And Findings
Complainant’s Burden of Proof
7.1 Under Paragraph 4(a) of the Policy, Complainant bears the burden of proving all the following three elements:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the Domain Name;
(c) the Domain Name has been registered and is being used by Respondent in bad faith.
7.2 As a preliminary matter, it should be noted that Complainant has submitted extensive evidence in support of the Complaint. Although Respondent asserts that the Complaint and Complainant’s evidence project only a partial and incomplete picture along with false and misleading interpretations, Respondent has not provided any evidence in support of those assertions or any other assertion made in the Response, other than to provide copies of oppositions it has filed in the USPTO.
The First Element
7.3 The first element of the test established by Paragraph 4(a)(i) of the Policy has two components, namely:
(a) Complainant has rights in a particular trademark or service mark; and
(b) the Domain Name is identical or confusingly similar to that trademark or service mark.
7.4 Complainant has established rights in the Hebrew Mark and the English Mark by virtue of:
(a) registration of the Hebrew Mark in Israel and in the United States;
(b) registration of the English Mark in Israel; and
(c) usage of the Hebrew Mark and the English Mark in the United States.
7.5 Respondent has asserted that Complainant’s US registration and Israeli registrations are of no significant value due to the fact that the trademarks covered by those registrations have never been used by Complainant, and under trademark laws no rights are conferred until such use has been made. The Panel is of the view that the US registration and the Israeli registrations are sufficient to satisfy the requirements of the Policy. As well, Complainant has demonstrated significant use in Israel, the United States, and other parts of the world before the Domain Name was registered. There is a basis for concluding that Complainant has established common law rights in the Hebrew Mark and the English Mark in the United States.
7.6 The second level of the Domain Name is, to all intents and purposes, identical to the English Mark.
7.7 The second level of the Domain Name is not identical to the Hebrew Mark. The English Mark is a phonetic rendering of the Hebrew Mark. Nonetheless, Complainant and Respondent both treat the English Mark as if it was identical to the Hebrew Mark. Complainant’s evidence demonstrates that third parties also refer to the English Mark as if it was identical to the Hebrew Mark. Respondent has not made any assertions or provided any evidence contradicting Complainant’s assertions that the Domain Name is confusingly similar with Complainant’s marks. The Panel finds that the Domain Name is confusingly similar with the Hebrew Mark.
7.8 The Panel finds that Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
The Second Element
7.9 The second element of the test set out in Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
7.10 It is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. The burden on a complainant in respect of this element must be relatively light. Nonetheless, Complainant must provide some information tending to show that Respondent has no rights or legitimate interests.
7.11 Complainant says that it is not aware of any trademark registrations or applications for the trademark HA’ARETZ in any country in the name of Respondent. Complainant does not indicate whether or not it conducted any searches that would support such a conclusion and it does not provide copies of such searches. This assertion, in and of itself, is not sufficient to meet Complainant’s burden.
7.12 Complainant says that the Website has no significance or content independent of the Newspaper. The only available evidence shows that the First Appearance of the Website was concerned exclusively with the Newspaper, having only two functions, namely:
(a) to attract Internet users looking for the Newspaper’s website; and
(b) to solicit comments about the Newspaper, but those comments were to be made by linking to and posting on an independent website.
7.13 None of the available evidence about the contents of the First Appearance of the Website, the Second Appearance of the Website, and the Third Appearance of the Website demonstrates any commercial activity carried on by Respondent at or in connection with the Website. Respondent has asserted that for over four years it has been carrying on an active business under the trading style Haaretz Internet, offering goods and services through the Website using the URL "www.haaretz.com" and that it has been using the Domain Name in email addresses connected with the business. However, Respondent has not produced any evidence that calls into question the correctness or completeness of Complainant’s evidence. It ought to have been a very simple matter to produce such evidence if there was any.
7.14 The Panel can only conclude that there is no such evidence and that the only content of the Website has been as asserted by Complainant and illustrated by annexes 10, 11 and 12 of the Complaint.
7.15 Complainant has not licensed or authorized Respondent’s use of Haaretz in the Domain Name or otherwise.
7.16 Respondent has not expressly relied on Paragraph 4(c) of the Policy or provided any evidence that might be used to demonstrate rights or legitimate interests under that Paragraph. However, Respondent has asserted that it was exercising its First Amendment rights by publishing the "Dispute" pages "…only after Complainant’s bad faith trademark applications for the Domain Name <haaretz.com>…" (Response, par. 15). Respondent does not assert that it used the Domain Name or the Website to exercise free speech rights before that particular time. The only available evidence shows that the Website incorporated the "Dispute" pages after late January of 2002.
7.17 The First Appearance of the Website was used before Respondent began publishing the "Dispute" pages and did not include commentary on the dispute between Complainant and Respondent. While the Website had the First Appearance, there is no evidence that Respondent itself engaged in any criticism or exercised any free speech other than to invite third parties to post comments about the Newspaper on a website operated by another independent party. Once comments about the Newspaper had been posted, they were archived and displayed at the independent website "Complaints.com" and not at the Website.
7.18 The Panel finds that:
(a) the First Appearance of the Website did not demonstrate the exercise of any free speech rights by Respondent;
(b) the content displayed in the First Appearance of the Website, and Respondent’s use of the Domain Name and the trading style Haaretz Internet in connection with the First Appearance of the Website, were intended to function exclusively for the purpose of attracting Internet users looking for Complainant’s Website.
7.19 This caused more than "initial interest" confusion. While the Website had the First Appearance, the evidence shows that at least three Internet users visited the site believing that they were visiting Complainant’s site, they linked through "Complaints.com", and posted comments about the Newspaper at "Complaints.com", all the while believing that they had been dealing only with Complainant or a representative of Complainant. This evidence is particularly compelling. The postings read like "letters to the editor" of the Newspaper.
7.20 Hence, the only time period during which Respondent might conceivably have engaged in free speech activity would be between approximately February 1, 2002 and March 21, 2002, the latter of which was the date on which the Complaint was filed. That was when Respondent posted the "Dispute" pages, which deal exclusively with Respondent’s concern that Complainant "… intended to unrightfully acquire the domain name <haaretz.com> …" by filing a trademark application to register <Haaretz.com>. While that might constitute the valid exercise of free speech in other contexts, it would be rather strange if that particular form of free speech could provide the basis to establish that Respondent has rights and legitimate interest in the Domain Name. If that was the case, a cybersquatter would always be able to avoid the Policy by launching a website criticizing the trademark rights of the party whose trademark the cybersquatter has appropriated.
7.21 The Domain Name consists of nothing more than the English Mark (minus the apostrophe) plus the gTLD<.com>. A legitimate criticism site can achieve its purpose easily without cloaking itself in symbols identified with the party being criticized. A party desiring to operate a legitimate criticism website can select a domain name for the site that furthers the purpose of criticism but also signals that the domain name could not possibly be owned by the party being criticized, such as <trademarkcritics.com>. This principle was discussed in the New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072 as follows:
"Even if the site at "newyorktimes.com" were purely a commentary or opinion site, NYIS would not be entitled to use THE NEW YORK TIMES mark in the domain name. As the Panel discussed in E. & J. Gallo Winery v. Hanna Firm, WIPO Case No. D2000-0615, even though NYIS may have the right (1) to establish a commentary or opinion site re The New York Times and (2) to mention The New York Times at the site and to reproduce the mark there, NYIS is not necessarily entitled to use The New York Times name or mark as part, of NYIS’s address for such a website. A domain name is not only an address, it is also a personal identifier. Many addresses have been available to NYIS, which would not in any way impinge on the trademark rights of The New York Times. NYIS consciously chose the domain name in issue to lead internet users to the NYIS site. NYIS is consciously counting on initial confusion to direct internet users to the NYIS site. It is highly likely that such users intend to find an authorized site of The New York Times. Disclaimers and links directly to the authorized site do not mitigate matters."
7.22 As the respected ICANN Panelist, Scott Donahey, has noted in Divergence In The UDRP and the Need for Appellate Review (www.udrplaw.net/DonaheyPaper.htm):
"It works no hardship on a domain name registrant to require that he register more than <trademark.com> as a domain name for use with a protest site, but that he be required to indicate in the domain name the nature of the website envisioned (i.e., <trademarkcritics.com> or <trademarkisunfair.com>). Such a requirement would not preclude the offering of critical commentary online."
7.23 The dramatic and rapid changes made by Respondent in the content of the website from the First Appearance to the Second Appearance and then to the Third Appearance of the website further demonstrate the Respondent’s lack of rights or a legitimate interest in the Domain Name. If the website was intended to be more than a mere appearance, Respondent would not have dropped the First Appearance and made the additional changes that dramatically or that quickly.
7.24 The Panel is satisfied that Respondent has not proven any of the factors set out Paragraph 4(c) of the Policy and that Complainant has met its burden under Paragraph 4(a)(ii) of the Policy.
The Third Element
7.25 Complainant has established that the Hebrew Mark and the English Mark have been used extensively in Israel and internationally over a significant period of time spanning decades. Complainant has also established that the Newspaper, the Hebrew Mark and the English Mark are well respected and enjoy considerable reputation and goodwill in Israel, the United States and elsewhere throughout the world.
7.26 As the Newspaper deals primarily with events in Israel and the Middle East and has been published in the Hebrew language for decades, it stands to reason that the Newspaper, the Hebrew Mark and the English Mark enjoy even higher recognition, reputation and goodwill among members of the international Jewish community.
7.27 The Panel is satisfied that the Hebrew Mark and the English Mark are extremely well known, if not famous, in Israel and the United States. In the United States, the Hebrew Mark and the English Mark are particularly well known or famous among members of the Jewish Community. Respondent makes no submissions on this point other than that the word "ha’aretz" has a generic meaning and refers colloquially to the State of Israel.
7.28 In the Response, Respondent demonstrates considerable knowledge of Israel, the Jewish community and the Hebrew language. For example, in paragraph 14 of the Response, Respondent states:
"Central to this issue the meaning [sic] and use of the word "Ha Aretz", which as agreed by Complainant means "the Land" in Hebrew. The word "the" in this translation signifies the uniqueness of the term, as does the capital letter "L" in "Land." This term, as it is understood by all Israelis refers to a specific Land – a land which is presently called the country of Israel. …The term "Ha Aretz" has existed long before the newspaper appeared and will long be used after the newspaper’s demise. It is a term that has been with the Jewish population independent of the newspaper as a geographic locator of a homeland."
7.29 Respondent asserts that Respondent is a business entity with an interest in the Jewish population.
7.30 As Respondent is clearly very familiar with Israel, the Jewish community and the Hebrew language, the Panel has concluded that Respondent must have been familiar with the Newspaper and its trademarks for a long time. That is certainly reflected in the First Appearance of the website, the content of which deals exclusively with the Newspaper. Respondent was sufficiently aware of the Newspaper, Complainant’s website, and Complainant’s trademarks that it considered it necessary to provide at the website a link to the Newspaper’s website, a notice that the site is not affiliated with or endorsed by the Newspaper, and a mechanism for clicking to acknowledge that the site is not related to the Newspaper.
7.31 All of that information at the First Appearance of the website clearly demonstrates that Respondent believed that the word HA’ARETZ was not merely a generic term meaning the Land of Israel, but was an extremely well known trademark. As well, Respondent was sufficiently familiar with Complainant that it was able to identify its owners, the Schocken Family, in the "Dispute" pages displayed at the Second Appearance and the Third Appearance of the website. Respondent’s own conduct demonstrates that Haaretz is a very strong trademark and that Respondent was fully aware of the strength and significance of the trademark.
7.32 The obvious gap between the assertions made by Respondent about the generic nature of the term HA’ARETZ and Respondent’s use of HA’ARETZ as the trademark for the Newspaper at the website reflect poorly on the credibility of Respondent’s assertions, which, in turn, raises a general aura of bad faith.
7.33 As Respondent was obviously familiar with Israel, the Jewish community, the Hebrew language, the Newspaper, the trademarks associated with the Newspaper, Complainant’s website, and the domain name then used by Complainant for its website, and as Respondent is involved in the Internet business, it stands to reason that, at the time that Respondent registered the Domain Name, Respondent would have expected Complainant to begin or increase its usage of the Internet. Of course, that is exactly what happened. It was very likely that at the time it registered the Domain Name, Respondent was aware that Complainant had launched an Internet Service but had failed to register the most desirable domain name for its business, namely the Domain Name. That knowledge is demonstrated by the fact that shortly after effecting the registration, Respondent launched the website and provided a link to Complainant’s website.
7.34 If Respondent genuinely believed that "ha’aretz" had no meaning other than "Israel", why did it conduct trademark and business name searches and consult with trademark counsel before registering the Domain Name? Having conducted those searches and received the advice of trademark counsel, why did Respondent not apply to register its own trademark for Haaretz Internet or Haaretz.com? Why would Respondent go to all that trouble and expense to register a mere generic domain name? Respondent appears to have been pursuing a calculated strategy that reflected knowledge of Complainant's trademarks and a desire to exploit them while attempting to avoid liability.
7.35 Respondent registered the Domain Name under the trading style Haaretz Internet and soon launched the website using the URL "www.haaretz.com". The website expressly targeted the Jewish population as indicated in the last sentence of paragraph 14 of the Response:
"As a business entity with an interest in the Jewish population, Respondent has every right to use the mark Haaretz Internet and the domain name <haaretz.com> as it also would if it had operated as "Israel Internet" and used Israel.com."
7.36 The most likely reaction of a person familiar with the Newspaper who sees the name Haaretz Internet is that Haaretz Internet is a manifestation of the Newspaper dedicated to distributing content on the Internet. Neither the website nor the Registration made any mention of the Respondent’s real legal identity, United Websites, Ltd.
7.37 Hence, by using the name Haaretz Internet, Respondent increased the likelihood that the public, particularly those belonging to the Jewish community, would believe that the website was operated by Complainant.
7.38 If any member of the public wanted to determine who owned the Domain Name, they would conduct a Whois search and find that the owner was Haaretz Internet. The Registration serves as an active misrepresentation likely to cause confusion among everyone other than Complainant, which is the only party who would know conclusively that there is no relationship between Haaretz Internet and Complainant.
7.39 In the Panel’s view, the background facts and Respondent’s own words and conduct are consistent only with Respondent having registered and used the Domain Name in bad faith. With Respondent’s background knowledge, an active Internet business, and the stated goal of targeting the Jewish community, what possible good faith usage could Respondent have intended at the time it registered the Domain Name? Having registered the Domain Name, what possible good faith intention could Respondent have had in designing and operating the website, which so unequivocally used the word HA’ARETZ to designate the Newspaper, and in identifying itself as Haaretz Internet at the website? The various notices disclaiming any connection with the Newspaper only served to demonstrate that Respondent thought about the obvious conflict and was attempting to create an appearance of avoiding confusion. But confusion was not avoided. Complainant would not have adopted the name Haaretz Internet, or designed the website, or registered the Domain Name, in the manner that it did if it truly intended to avoid confusion.
7.40 Initial interest confusion was obviously expected by Respondent. Otherwise it would not have included disclaimers on the website. But confusion went well beyond the initial interest variety. At least three readers of the Newspaper went to the website, linked through to <Comments.com>, and posted messages for the Newspaper in exactly the same manner as letters to the editor of the Newspaper. Intentional misrepresentation and confusion were intended and were happening at every level.
7.41 These circumstances unequivocally demonstrate bad faith on the part of the Respondent. Some panels have labeled this as "opportunistic bad faith". See Deutsche Bank AG v. Diego Arturo Bruckner, WIPO Case No. D2000-0277; Parfums Christian Dior v. Javier Garcia Quintas and christiandior.net, WIPO Case No. D2000-0226.
7.42 The bad faith intention in such circumstances is very similar to that found in passing-off cases involving the opportunistic registration of domain names that incorporate the trademarks of others. An excellent analysis of how bad faith can be inferred from the mere registration of such a domain name without any commercial use can be found in the decision of the English Court of Appeal in British Telecommunications Plc et al. v. One in a Million Ltd., et al  1 W.L.R. 903, at pages 924 and 925.
"It is accepted that the name Marks & Spencer denotes Marks & Spencer Plc and nobody else. Thus anybody seeing or hearing the name realizes that what is being referred to is the business of Marks & Spencer Plc. It follows that registration by the Appellants of a domain name including the name Marks & Spencer makes a false representation that they are associated or connected with Marks & Spencer Plc. This can be demonstrated by considering the reaction of a person who taps into his computer the domain name marks&spencer.co.uk and presses a button to execute a "whois" search. He will be told that the registrant is One In A Million Limited. A substantial number of persons will conclude that One In A Million Limited must be connected or associated Marks & Spencer Plc. That amounts to a false representation which constitutes passing off.
. . . .
I also believe that domain names comprising the name Marks & Spencer are instruments of fraud. Any realistic use of them as domain names would result in passing off and there was ample evidence to justify the injunctive relief granted by the judge to prevent them being used for a fraudulent purpose and to prevent them from being transferred to others."
7.43 The Panel is not suggesting that this case is one of passing off or that an intentional act of passing off will necessarily also constitute cybersquatting contrary to the Policy. Rather, the foregoing analysis quoted from the One in a Million case merely demonstrates how a bad faith intention can be inferred unmistakably from the circumstantial evidence surrounding registration of a domain name.
7.44 The Panel is also of the opinion that the circumstances both before and after the time that Respondent registered the Domain Name indicate that Respondent did so in a manner that falls within Paragraph 4(b)(i) of the Policy. That is, the circumstances indicate that Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name. What possible good faith purpose could Respondent have had for incurring the cost of registering the Domain Name under the name Haaretz Internet and operating a website whose only function was to invite users to post comments about the Newspaper at someone else’s website? Such a domain name and website have no commercial value. Respondent has been diligent in reminding the Panel that it is a commercial operation. There is only one manner in which Respondent could profit from a website having the First Appearance. That would be to dispose of the domain name in the manner contemplated in Paragraph 4(b)(i) of the Policy.
7.45 But Respondent is adamant that there was more to the website than is revealed in the First Appearance. It says, in the last sentence of Paragraph 10 of the Response, that ". . . these ‘Dispute’ pages were only sub-pages on the site and never comprised the whole site which has always been commercial in nature, offering Respondent’s products and services." If that statement is not true, it serves as a further demonstration of Respondent’s lack of credibility and bad faith.
7.46 On the other hand, although there is no supporting evidence, if Respondent’s assertion of commercial use is taken as true, then, the Panel is of the view that Respondent’s conduct falls within the scope of Paragraph 4(b)(iv) of the Policy. Using the Domain Name to operate the website in a commercial manner offering Respondent’s products and services under the name Haaretz Internet would unquestionably constitute an intentional attempt to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the English Mark and the Hebrew Mark as to the source, sponsorship, affiliation or endorsement of the website. For several reasons already discussed, it is obvious that the Domain Name used in connection with the website and the trading style Haaretz Internet would very likely cause confusion and thereby attract Internet users to the website. The website did more than merely attract Internet users to the website. Customers of Complainant interacted with the website without ever realizing that they were not dealing with Complainant.
7.47 For the reasons stated above, the Panel finds that Complainant has satisfied its burden regarding Paragraph 4(a)(iii) of the Policy.
8.1 The majority of the Panelists find that Complainant has proven the presence of all three elements required by Paragraph 4(a) of the Policy. This decision is accompanied by a dissenting opinion by the third Panelist.
8.2 For the reasons given above, the Panel orders that the domain name <haaretz.com> be transferred to Complainant.
Robert A. Fashler
Dated: July 3, 2002
I am dissenting because the majority decision strays too far from the intent, letter and spirit of the Uniform Domain Name Dispute Resolution Policy ("UDRP"). It is a decision that sets a bad precedent; as such, it raises important issues about the purpose and scope of the Policy.
The UDRP was not intended to be a generalized, global trademark law. ICANN documents make it clear that it was intended to apply to a narrow class of abusive registrations, leaving to national courts the resolution of routine trademark infringement issues. The Policy deliberately set out three distinct and independent tests of abusive registration, and required that all three of them must be met to transfer a name.
In the majority decision, one finds this carefully constructed three-part test collapsed into one: the Complainant has a well-known trademark (sort of – see below), Respondent’s domain name is similar to it, and some people are confused by that – therefore the Complainant wins.
Instead of dispassionately applying the policy as written to this case, the other panelists have given short shrift to the second element of the policy and have overridden the third element altogether. Motivated by their feelings that the Complainant "deserves" the name, and by their own peculiarly expansive notions of mark exclusivity, they have decided to treat the UDRP as a kind of eminent domain which gives important trademark holders the right to take others’ property regardless of whether registrants have actually contravened the Policy. In short, the majority has decided that it will throw in findings of "no rights or legitimate interest" and "bad faith" in a special three-for-the-price-of-one deal. And by their own admission, they have done this relying entirely on "circumstantial evidence," the intuitive detection of a "general aura," and other undocumented "inferences."
Trademark Rights Involved
Let us begin with a basic fact that the majority decision deliberately soft-pedals. Complainant does not have registered trademarks on the English terms Haaretz or Haaretz.com in the United States, where the Respondent resides. Complainant did not even apply for U.S. trademarks on those terms until February 2001, three and a half years after Respondent registered the domain name. It did not even have trademarks on those terms in Israel when the domain name registration took place – those also came three years later. The only marks relevant at the time of registration were Hebrew characters.
Moreover, whether in Hebrew or English, Ha’aretz is not a coined or unique name. It is a Hebrew word that means "the Land," meaning Israel. It is perfectly plausible that a Jewish resident of the US might legitimately choose to name his company "Ha’aretz Internet", just as the Complainant chose to appropriate the term for their newspaper. It should be noted that Complainant’s commonly used English-language trade name is "Ha’aretz Daily Newspaper," not "Ha’aretz." Complainant claims that it is linked or listed by many English-language search engines, but fails to note that it is often listed as "Ha’aretz Daily Newspaper" or "Ha’aretz Daily" in these links.
It is well-established precedent within the UDRP that trademark holders in one country who failed to get the simplest and shortest ".com" version of their name do not necessarily have a right to take away the name from a registrant in another country when that name is generic or has multiple other legitimate uses. This has been found even when the Complainant was very famous (WIPO Case No. D2000-0596 Gordon Sumner, p/k/a Sting v Michael Urvan, involving the name <sting.com>) and even when Respondent in the case was not making any use of the name (see eRes AF-0104, involving the name <thyme.com>). This is as it should be. As noted above, UDRP is not a globalized trademark law. The hierarchical domain name space makes it possible for different holders of the same name to co-exist in different top-level domains. Not all domain names are used as identifiers of the source or origin of commercial products.
It is only the strong desire of some complainants to profit from the extra traffic and "guessability" associated with a short ".com" name that gives rise to challenges such as this one. But Complainants have no right to such benefits unless they can also prove that the Respondent has no rights or legitimate interests in the name and is also guilty of bad faith registration and use. Unfortunately, too many UDRP panelists are short-circuiting these critical additional tests. This case is just the latest sorry example.
Missing Bad Faith Factors
One could debate many elements of the majority opinion, but the key point of disagreement concerns proof of bad faith. Where is the bad faith in this case?
4(b)(i). There is no evidence that the Respondent is interested in selling this name to the complainant. Most cases of real cybersquatting involve some documented negotiation over the sale of the name. That is absent in this case. There is no real circumstantial evidence regarding 4(b)(i), either. Respondent has not engaged in a pattern or practice of selling domain names. It has not registered many domain names, or at least no evidence to that effect was submitted. Respondent has maintained the trade name "Haaretz Internet" consistently throughout its registration and really is engaged in a web design business under that name.
Most 4(b)(i) and 4(b)(ii) cases involve respondents who register multiple names with the intent to block a trademark holder or pressure them into a sale. This Respondent had registered only one domain name at the time the dispute was filed. There is no pattern of conduct. Complainant on the other hand has numerous domain names that reflect its trademark, notably the major country code one would expect, <haaretz.co.il>. Complainant is only famous among Israeli people and is located in Israel. But it also has the domain <haaretzdaily.com> and <haaretz> under several other TLDs.
4(b)(iii) is eliminated because the Respondent is not a competitor of the Complainant.
How about 4(b)(iv)? For those of us who pay attention to the language of the UDRP, 4(b)(iv) requires that a Respondent must have "intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [its] web site or location or of a product or service on your web site or location." It is clearly true that some users mistake the Respondent’s address for the Complainant’s address. But that is not enough - a bad faith finding requires that Respondent must do this intentionally, must profit from it commercially, and must actively participate in the "creation" of a likelihood of confusion. That is not the case with <haaretz.com>. Respondent is not capitalizing on Complainant’s fame by advertising porn sites, selling banner ads, or mousetrapping users who stumble into the site. There is no visual similarity between Respondent’s web site and the Complainant’s. There is no attempt to "create" confusion; rather the site contained a prominent disclaimer and encouraged criticism of Complainant. Indeed, one can only be surprised at how little Respondent has done with the name; a real bad faith registrant with commercial intent could have done much more.
"Passive holding" is not an issue in this case – that doctrine was intended to target cybersquatters who silently hold a name without any use hoping that the Complainant will eventually come to them to strike a deal. In this case, the opposite seems true - the Respondent has used the name and has been actively trying to reach the Complainant but has been ignored.
As for "opportunistic bad faith," I must make it clear that I reject the validity of that poorly-conceived bad faith precedent. The so-called opportunistic bad faith factor collapses all three prongs of the Policy into one, by asserting that knowing registration of a term that happens to be trademarked simultaneously breaches 4(a)i, 4(a)ii, and 4(a)iii. That kind of reasoning is a symptom of the disease of overreaching that currently afflicts the UDRP. If the Policy had intended for there only to be one prong there would have been one prong. Instead, the policy clearly calls upon Complainants to prove three distinct elements.
However, even if one accepts the "opportunistic bad faith" doctrine it cannot be applied here. Even the majority decision recognizes as a fact that the Respondent checked to see whether the domain name was trademarked prior to registration. Any good faith check on the trademark status of the term "Haaretz" in August of 1997 would have yielded negative results. I fail to understand, under these circumstances, how opportunistic bad faith (or indeed any form of bad faith) could be found. I also do not believe that it is the purpose of the UDRP to compensate companies for the inadequacies of their trademark protection decisions.
It is not possible to find bad faith on the grounds of mistaken contact information, either, because whatever incorrect information existed was clearly unintentional, was rapidly corrected when discovered, and was not part of any attempt at concealment. Indeed, Respondent has openly surfaced to challenge Complainant's rather aggressive attempt to register Respondent’s own domain name as a trademark, and Complainant has made no attempt to contact Respondent and thus is in no position to complain about shortcomings in its contact information.
Complainant’s case for bad faith boils down to nothing more than this: it is well known and it really, really wants the name, and it sure wishes that it had registered it back in 1997. It is unfortunate that the UDRP can be consistently abused to indulge such demands. For the sake of justice as well as efficiency, trademark holders who find themselves in this situation should be encouraged to privately negotiate for the transfer of the name rather than wasting society’s (and their own) resources on disputes.
Manufacturing Bad Faith
The impossibility of proving bad faith has forced the majority to craft a decision full of Catch-22 reasoning, the only purpose of which seems to be to rationalize the expropriation of the defendant. This is best exemplified by paragraph 7.34 of the majority decision, the awfulness of which must be made a matter of public record:
"If Respondent genuinely believed that ha’aretz had no meaning other than ‘Israel’ why did it conduct trademark and business name searches and consult with trademark counsel before registering the Domain Name? Having conducted those searches and received the advice of trademark counsel, why did Respondent not apply to register its own trademark for Haaretz Internet or Haaretz.com? Why would Respondent go to all that trouble and expense to register a mere generic domain name? Respondent appears to have been pursuing a calculated strategy that reflected knowledge of Complainant's trademarks and a desire to exploit them while attempting to avoid liability."
Regarding the first sentence, the domain name registration agreement imposed on all registrars by ICANN contains a representation by the applicant that, to the best of its knowledge and belief, the registration of the domain name does not interfere with or infringe the intellectual property rights of another party. Is it not fascinating that a pair of intellectual property lawyers are reduced to characterizing an attempt to consult their own profession to find out whether a contemplated registration conflicted with the rights of another as evidence of bad faith? Suppose that Respondent had not performed this check – could not this also have been used against him as evidence of bad faith? What kind of perversion of the Policy is this? Moreover, the majority’s contention that the Respondent asserted that Haaretz "had no meaning other than Israel" is an unfair distortion. Contrast it with the Respondent’s actual statement:
"The selection of this business name and the corresponding domain name was based on the appropriate meaning of the word in the Jewish community. "Ha-aretz" in Hebrew literally means "the Land" and figuratively refers to "the homeland" i.e. the country of Israel.." After consulting with trademark counsel….we were assured that such use was proper and that no party can claim exclusive rights to a common geographic term". (Response, p. 3 para. 7).
There is no assertion here that the term has "no other meaning" or that it is not associated with anything else. Rather, there is a simple, common sense appreciation that such terms can be used by multiple parties. The New York Times cannot trademark "New York" or "The Times," regardless of how famous it is. Asking why the Respondent did not go on to trademark the term seems particularly tendentious and illogical. If the respondent had been advised that no one could trademark geographic terms he acted consistently with that advice. The rhetorical question "why would respondent go to all that trouble to register a generic term" is just silly. Anyone with knowledge of domain name economics knows that common, generic, terms under the <.com> TLD are the best domains to have because they generate the most traffic.
The majority’s layers of indirect inference and reading of "auras" lead them to conclude that Respondent was engaged in a calculated strategy to exploit Complainant’s trademarks. But the facts are more consistent with the view that Respondent found a valuable generic term, performed due diligence to make sure that he was not violating any prior rights, and upon finding that he was not, happily registered the name for his own, legitimate business. The facts also support the inference that the Complainant just wants the domain name because of its traffic generation value, and not because of any malfeasance on the part of the registrant.
Dr. Milton Mueller
Dated: July 3, 2002
1. Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. ICANN, "Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy," October 24, 1999. http://www.icann.org/udrp/udrp-second-staff-report-24oct99.
2. Even when it is listed as only "Haaretz," the context of the web page makes it clear that it is a listing of newspapers, and these listings are buried deeply within websites, and can only be located by someone intent on finding Middle Eastern news sources.
3. See my dissent in the case (NAF 93763, April 13, 2000). There are many similarities between these cases. Certainly many of Esquire Magazine's readers "expected" it to be at Esquire.com, but there are many other trademarks on the term and many other legitimate uses. Nevertheless, the panel assumed, without any evidence, that the registrant "must have been" targeting Esquire magazine with the registration and transferred the name. Subsequent commentary among the trademark bar and followers of the UDRP made it pretty clear that this decision was considered an aberration.
ADDENDUM TO ADMINISTRATIVE PANEL DECISION
Ha’aretz Daily Newspaper Ltd. v. United Websites, Ltd.Case No. D2002-0272
1.1 The Panel issued its decision in this case (the "Decision") on July 3, 2002, finding in favour of Complainant. The Decision was communicated to Complainant and Respondent on July 19, 2002. Respondent then raised an objection to the Decision. Respondent asserted that the Decision did not take into account evidence that Respondent says it forwarded to the WIPO Arbitration and Mediation Center (the "Center") but was never received by the Center. Respondent is seeking to reopen the case, have the Panel review the allegedly missing evidence, and reconsider the Decision in the light of that evidence. The Panel agreed to investigate the allegations raised by Respondent. This Ruling is the result of that investigation.
1.2 On May 31, 2002, which was well before the Panel was appointed, the Center sent an e-mail to Respondent confirming that the Response had been received by e-mail on May 16, 2002 and requesting confirmation that hard copies of the Response had been sent to the Center "as is required by Rules, Paragraph 5(b) and Supplemental Rules, Paragraph 3."
1.3 Later on May 31, 2002, Respondent sent an e-mail to the Center confirming that a hard copy of the Response (the "Hard Copy") had been mailed to the Center as required. Respondent has more recently asserted that a Hard Copy was also sent to Complainant’s legal counsel at the same time that a Hard Copy was sent to the Center.
1.4 To the date of this Ruling, no Hard Copy has been received by the Center or by Complainant.
1.5 The Response as received by e-mail did not make any reference to any annexes or accompanying evidence. The electronic copy of the Response did not include a schedule indexing evidence annexed to the Response in accordance with Paragraph 5(b)(ix) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
1.6 On July 19, 2002, after receiving the Decision, Respondent sent an e-mail to the Center and the Panel asserting that Respondent had, in fact, forwarded a Hard Copy to the Center on May 16, 2002, and that the Hard Copy included crucial evidence in support of the Response.
1.7 On July 26, 2002, the Presiding Panelist issued an e-mail communication to Respondent (the "Affidavit Request") that included the following statements:
"The Panel is prepared to investigate the circumstances asserted by Respondent. However, as a preliminary matter, the Panel notes that Respondent has the exclusive responsibility to ensure that its submissions and evidence are delivered to the Center within the deadlines and otherwise in compliance the requirements established by the UDRP Rules (the "Rules") and the Center's Supplemental Rules (the "Supplemental Rules").
Pursuant to Paragraph 12 of the Rules, the Panel hereby requests Respondent to deliver to the Center an affidavit or other form of sworn evidence used in Respondent's jurisdiction that includes the following sworn statements and exhibits:
(a) a complete and accurate description of:
- the contents of the Hard Copy and how it differed from the electronic copy of the Response;
- how and when the Hard Copy was forwarded to the Center, providing details of the date of dispatch, the delivery service selected by Respondent, the delivery priority selected by Respondent, the instructions given by Respondent to the delivery service, the address written by Respondent on the package, the method by which the delivery service was given custody of the package, whether Respondent paid the required fees or postage for the package, and any other relevant information;
(b) Documentary exhibits consisting of all available records Respondent is required to retain under Paragraph 2(i) of the Rules, namely, "...records of the fact and circumstances of sending...", including receipts, invoices, proof of payment, photocopies, and anything else that relates to the assertions being made by Respondent or might be relevant to this investigation, properly referenced and explained by narrative in the main body of the affidavit;
(c) confirmation of whether or not Respondent has ever received notification of non-delivery of the Hard Copy, and if so, when and from whom, together with copies of all such notifications attached as exhibits;
(d) details of all communications between Respondent and the delivery service about the missing Hard Copy, and what was learned from such communications, together with copies of such communications attached as exhibits;
(e) an explanation of why the electronic copy of the Response made no references to any evidence annexed to the Response and did not include the index of annexed documents required by Paragraph 5(ix) of the Rules."
1.8 In response to the Affidavit Request, Respondent’s representative, Mr. Rose, forwarded to the Center:
(a) a letter from Mr. Rose dated August 2, 2002 (the "Letter");
(b) an unsworn statement of Mr. Rose headed "Affidavit" (the "Statement");
(c) a schedule indexing evidence entitled "Annexes" (the "Schedule of Evidence");
(d) a photocopy of a U.S. Postal Service Global Priority Mail envelope (the "Sample Envelope"); and
(e) various pieces of evidence relating to Respondent’s alleged use of <haaretz.com> and generic use of "ha’aretz" by third parties, including a computer disc, original samples, and copies of Internet web pages (the "Documents").
1.9 In his Statement, Mr. Rose makes an ambiguous reference to the Sample Envelope. The reference is ambiguous because it could be interpreted as being a photocopy of the envelope in which the missing Hard Copy was sent. The Panel believes that this ambiguity was intentional and considers the Sample Envelope to be newly created. In his Statement, Mr. Rose makes additional ambiguous references to the evidence that he says was annexed to the Hard Copy. The information is presented in a manner that is clearly intended to lead one to believe that the Documents are the same as the evidence that Respondent says it annexed to the missing Hard Copy.
1.10 In the Letter, Mr. Rose made the following statements:
"The Filing Guidelines for the Response are specified on WIPO’s site at http://www.wipo.int/amc/en/domains/respondent/index.html. As indicated the Response is to be filed with the Center without the Annexes via e-mail and with Annexes (original and four copies) via "express mail or courier service" to WIPO’s Geneva office. Respondent has fully abided by this.
On May 16, 2002, Respondent sent its Response, without the Annexes, via e-mail and mailed the Hard Copy on the same day via US Postal Service "Expres" or "GPM" service. According to the USPS this package was expected to reach Geneva in three to five days, subject to security and customs regulations of the two countries."
1.11 In the Letter, Mr. Rose also wrote:
"Respondent respectfully requests the Panel consider [sic] the full Hard Copy in rendering its decision. Respondent has fully abided by the Guidelines and the untimely receipt of the Hard Copy by the Panel has not been caused by the Respondent’s neglect or its improper actions. Moreover the inclusion of the Annexes in the Decision does not provide any new substance or arguments, it merely provides samples of specific subjects already indicated in the Response filed electronically."
That is the only statement in the material provided by Respondent that makes any reference to the Documents provided by the Respondent in response to the Affidavit Request.
1.12 In the Statement, Mr. Rose asserts, inter alia, that:
(a) the missing Hard Copy included several samples of use by Respondent of <haaretz.com> in commerce, as well as common uses of the term "ha’aretz"; and
(b) "the Response material was sent to the Center on Thursday, May 16, 2002 at approximately 5 PM Eastern Standard Time via ‘Expres’ U.S. Postal Service", and that "No receipt is provided for this class of mailing".
1.13 The Documents include copies of web pages, all of which bear a date imprint of 5/10/02, indicating that they were printed May 10, 2002. However, the body of three of those web pages show that the pages were actually printed after May 10, 2002. In fact, they were printed after the date of the Affidavit Request (July 26, 2002). Specifically:
(a) two TESS searches conducted in the United States Patent and Trade-marks Office both include the statement "TESS was last updated on Thu Aug 1 04:35:11 EDT 2002"; and
(b) a printout from eBay refers to an auction that had commenced July 29, 2002 and was scheduled to end August 5, 2002.
1.14 The Sample Envelope is clearly marked Global Priority Mail, but also has marked on it a trade-mark that includes the French word "Exprès".
1.15 On August 12, the Presiding Panelist sent an e-mail to Mr. Rose posing the following additional question:
"Did you send a hard copy of the Response and the annexes to the Complainant? If so, please provide full particulars and evidence of the same type that the Panel requested in relation to the delivery you were required to make to WIPO."
1.16 In response to that request, also on August 12, 2002, Mr. Rose provided an e-mail that included another statement headed "Affidavit". In that communication, Mr. Rose stated:
"The Response material consisted of a copy of the Response along with the Annexes, identical in nature to the package sent to the Center on the same day. It was sent to the Complainant on Thursday, May 16, 2002 at approximately 5:00 P.M. Eastern Standard Time via US Postal Service to the following address:
Rony Sagy, Esq.,
Sagy Law Associates,
3 Embarcadero Cenre
San Francisco, CA 94111
The package consisted of "priority flat rate" envelope weighting [sic] less than 16 oz. with postage of $3.95 affixed. It was delivered to a postal clerk at 16501 Shady Grove Rd., Gaithersburg, MD 20898, who accepted it for same day processing. No receipt is provided for this class of mailing.
The package is believed to have been delivered to its destination on Monday, May 20, 2002.
Respondent has not received any confirmation of whether or not the Hard Copy has been delivered to the Complainant. Respondent has not received any communication from Complainant indicating the Hard Copy was not delivered as required by the Rules."
1.17 On August 12, 2002, the lawyer representing Complainant, Mr. Rony Sagy, sent an e-mail to the Center advising that "Complainant has never received any hard copy documents from the Respondent in this case, although our address never changed throughout the handling of this dispute is [sic] prominently placed on any e-mail communication we transmit."
1.18 The Schedule of Evidence provides an index that identifies the Documents. Although Mr. Rose never expressly represents that the Documents and the Schedule are copies of what were supposed to have been sent with the missing Hard Copy, that is clearly the impression Mr. Rose was trying to make.
2. Applicable Rules and Procedures
2.1 The following Rules apply directly to these circumstances:
"2.(c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including number of copies) stated in the Provider’s Supplemental Rules."
"2.(f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made:
(i) If delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or
(ii) If by postal or courier service, on the date marked on the receipt;"
"2.(h) Any communication by
(ii) A Party shall be copied to the other Party, the Panel and the Provider, as the case may be;"
"2.(i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes;"
"5.(b) The Response shall be submitted in hard copy and (to the extent not available for annexes) in electronic form and shall:
..(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents."
2.2 The applicable provision from the WIPO Supplemental Rules is:
"3(a) Modalities. Subject to paragraphs 3(b) and 5(b) of the Rules, except where otherwise agreed beforehand with the Center, any submission that may or is required to be made to the Center or to an Administrative Panel pursuant to these Rules, may be made:
(i) by telecopy or facsimile transmission, with a confirmation of transmission;"
2.3 The WIPO Response Filing Guidelines (the "WIPO Guidelines") stipulate that hard copies of responses should be sent by express mail or courier service to the Center and to the Complainant.
3.1 The Uniform Domain Name Dispute Resolution Policy ("UDRP") is a summary procedure intended to deal with particular types of domain name disputes in a quick and effective manner. The Rules and the Supplemental Rules provide the framework for that to happen. The provisions of the Rules and the Supplemental Rules that govern communication are particularly important given the international nature of this type of dispute and the frequent requirement to conduct UDRP cases over significant distances.
3.2 The Rules, the Supplemental Rules and the WIPO Guidelines are all available on the Internet for inspection by the parties to a UDRP dispute. As well, the parties to a UDRP dispute are free to retain legal counsel expert in such matters. It is the responsibility of complainants and respondents to ascertain the applicable rules and procedures and to comply with them. The rules and procedures that govern communication require complainants and respondents to transmit hard copies using a delivery service that creates a documentary record of compliance (Rules, Paragraph 5(b)) and a reference date (Rules, Paragraph 2(f)).
3.3 The general thrust of the Rules is that complainants and respondents must comply with all Rules and Supplemental Rules unless there are exceptional circumstances that justify an administrative panel ordering otherwise. That approach is demonstrated by Paragraphs 10(c) and 15(a) of the Rules, among others:
"10(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
"15(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
3.4 The Respondent is seeking to reopen the Decision and is asking the Panel to consider evidence that Respondent asserts was previously forwarded to the Center together with the missing Hard Copy. As noted earlier, although Respondent says that it forwarded the missing Hard Copy to the Center and Complainant on May 16, 2002, neither the Center nor Complainant has received the Hard Copy.
3.5 The Panel agreed to investigate the circumstances alleged by Respondent to ensure that Respondent was treated with equality and was given a fair opportunity to present its case. However, because of the highly unusual and improbable circumstances alleged by Respondent, the Panel requested, in plain, unequivocal language that Respondent provide necessary information to assist the investigation "by way of Affidavit or other form of sworn evidence". Respondent did not provide the information in a sworn form. Instead, it provided the unsworn Statement and labelled it "Affidavit". Whether intentionally or unintentionally, Respondent avoided the legal consequences of making its submissions in a sworn format.
3.6 Although Subparagraphs 2(f) and (i) of the Rules clearly contemplate that complainants and respondents will effect communication of hard copies in a manner that generates a receipt (Paragraph 2(f)(ii) and 2(i)), Respondent is unable to provide any physical proof that it has, in fact, forwarded the missing Hard Copy in the manner it has asserted. The only evidence submitted by Respondent in support of its assertion that Hard Copies were forwarded to the Center and Complainant on May 16, 2002, are the assertions of Mr. Rose in the Letter and the unsworn Statement.
3.7 Paragraph 2(c) of the Rules requires the Parties to communicate in the manner stated in the Supplemental Rules. Supplemental Rule 3(a) provides that the submission to the Center may be made by telecopy or facsimile transmission. Respondent did not dispatch a Hard Copy in that manner.
3.8 Respondent asserts that it has fully complied with the provisions of the WIPO Guidelines for delivering a response. In the Letter, Mr. Rose says that delivery was initiated via "U.S. Postal Service ‘Expres’ " or ‘GPM Service’ ". In the Statement, Mr. Rose says that a Hard Copy was sent via "Expres" U.S. Postal Service. He also said that no receipt is provided for this class of mailing. However, the Sample Envelope provided by Mr. Rose to demonstrate the type of service he says he selected is for the US Postal Service’s Global Priority Mail service. It is clear that Mr. Rose did not want to be forthright in describing the service he says he used. Instead, he chose to denote Global Priority Mail by reference only to the French language trade-mark that appeared on the envelope "Exprès" and the cryptic acronym "GPM".
3.9 In the Statement and Letter, Mr. Rose endeavours to show that he complied with the WIPO Guidelines recommending the use of "express" mail or courier service. However, it appears that Mr. Rose was concerned by the fact that the U.S. Postal Service actually does have a form of delivery called "Express Mail" that provides a purchase or mailing receipt at the time of mailing, a tracking and tracing service, and a return receipt service. If Mr. Rose had asserted that he had used that service, he would have been called upon to provide copies of the applicable mailing receipt and tracking information.
3.10 Mr. Rose asserted in the Statement that no receipt is provided for the form of delivery service that he says he selected, Global Priority Mail Service. Although standard Global Priority Mail Service does not include a receipt, for a relatively small additional charge the U.S. Postal Service can add to that standard service a variety of additional products and services including, certification of mailing, confirmation of delivery, return receipt service, and the provision of other records and documents that could substantiate the facts of the type that Respondent is now asserting.
3.11 Although the Affidavit Request did not ask Respondent to provide copies of the evidence it says it provided together with the Hard Copy, Respondent chose to provide the Documents. It did so in a manner that, for all intents and purposes, represented to the Panel that the Documents were identical to what was allegedly dispatched to the Center and Complainant as part of the Hard Copy. As noted earlier, the Documents have inconsistent date entries. Documents that were clearly generated in July, after Respondent received the Affidavit Request, have a date stamp of May 5, 2002. It is a relatively simple matter to reset the clock on a computer and thereby cause it to generate an inaccurate date stamp. The Panel has concluded that Respondent has attempted to falsify evidence in this manner.
3.12 As well, the Schedule of Annexes provided by Respondent in response to the Affidavit Request includes the three falsified Documents. The Schedule of Annexes was clearly presented to the Panel to demonstrate the evidence that was allegedly included with the missing Hard Copy. However, because the Schedule of Annexes includes the falsified Documents that were generated well after May 16, 2002, the Schedule of Annexes itself could not have been prepared or submitted to the Center on May 16, 2002. Hence, the Schedule of Annexes is obviously a further falsified document intended to mislead the Panel.
3.13 Mr. Rose has asserted that he forwarded an extra Hard Copy to Complainant’s counsel in the same manner and on the same day that he forwarded a Hard Copy to the Center. As noted earlier, Complainant’s counsel asserts that no such Hard Copy was ever received. Panel notes that the probability of two such deliveries going missing without a trace is exceedingly remote.
3.14 In order to persuade this Panel that it should reopen the Decision, Respondent would have had to prove to the Panel that exceptional circumstances existed and that Respondent has conducted itself in a manner that warrants the Panel granting such an indulgence. The submissions and materials provided by Respondent in response to the Affidavit Request have caused the Panel to conclude the opposite on both points. Specifically, the Panel finds that:
(a) Standard Global Priority Mail Service would not have been a sufficient method of communicating Hard Copies to the Center in this case as it would not have created an adequate record of mailing;
(b) Respondent has attempted to mislead the Panel by mischaracterizing Global Priority Mail service;
(c) Respondent has attempted to mislead the Panel by giving the impression that mailing and delivery receipts cannot be procured at all for Global Priority Mail Service, even though standard Global Priority Mail can be upgraded to provide for mailing and delivery receipts;
(d) Respondent has falsified evidence and presented that false evidence to the Panel in an attempt to mislead the Panel into believing that evidence generated in July was actually created and submitted with the missing Hard Copy in May, 2002;
(e) Respondent did not forward any Hard Copy to the Center or Complainant on the date asserted by Respondent, namely, May 16, 2002, and it is doubtful that any such Hard Copy existed in the form represented by Respondent until after the Decision was communicated to Respondent.
3.15 Finally, even if Respondent had convinced the Panel that it had dispatched relevant evidence to the Center by "express mail" together with the missing Hard Copy on May 16, 2002, and that the Hard Copy had been lost by the postal service through no fault of Respondent, and that Respondent’s conduct was exemplary in all respects, it still highly doubtful that the missing evidence would be admissible or carry any weight. That is because the Response makes no reference to, and provides no explanation of, any evidence whatsoever. Evidence without explanation and without the certification of accuracy and completeness set out in the Response is just paper having no particular meaning or probative value. Hence, unless the missing evidence was an Affidavit or other from of sworn statement that explained the evidence, reopening the case to consider that evidence would have no value and that evidence would not be taken into consideration.
4.1 For the reasons given above, the Panel rules that the Decision should not be reopened or reconsidered.
Robert A. Fashler
Dated: August 21, 2002