WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reuters Limited v "Domain for Sale"
Case No. D2000-1110
1. The Parties
Complainant is Reuters Limited, a corporation incorporated under the laws of England and Wales (No. 145516), with a registered office at 85 Fleet Street, London, EC4P 4AJ, England.
The Respondent is "Domain for Sale", whose address is "Make an Offer", Washington, VA 20000, United States of America.
2. The Domain Name and Registrar
The domain name in issue is "" . The Registrar with which the disputed domain name is registered is R, Inc. ("R), 575 Eighth Avenue, New York, New York, 10018, United States of America.
3. Procedural History
The Complaint was filed on August 23, 2000, with the WIPO Arbitration and Mediation Center by e-mail and hard copy. The Center acknowledged receipt of the Complaint on August 25, 2000.
On August 27, 2000, the Center received an e-mail from the Respondent advising that the Respondent will not contest the dispute and will release ownership of all rights to the domain name.
A request for Registrar verification was forwarded to the Registrar on August 30, 2000. On August 31, 2000, R, Inc confirmed by e-mail that "Domain for Sale, Syndi Cate" whose address is "Make an Offer", Washington, VA 20000 is the current registrant of the domain names in issue.
On September 13, 2000, the Center forwarded notification of the Complaint and commencement of Administrative Proceedings to "Syndi_cate1@" by e-mail. The Center advised the Respondent that a response was due by October 2, 2000. Later on September 13, 2000, the Center sent an e-mail to the Respondent advising that the e-mail with attached Complaint and Exhibits to the Complaint was returned to the Center with a message that it exceeded storage allocation. The Center re-sent the Notification of Complaint and attached the Complaint without the Exhibits and advised the Respondent that Respondent had already received the full copy on the Complaint which was sent by the Complainant on August 23, 2000.
Respondent did not submit any response by the October 2, 2000, deadline. Accordingly, on October 8, 2000, the Center notified the Respondent that it was in default.
On October 25, 2000, the Center appointed Ross Carson as the sole panelist in this matter and forwarded a copy of the electronic version of the Complaint to Ross Carson by e-mail, advising that a hard copy containing all the attachments was to be sent by courier.
On October 25, 2000, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties.
On November 1, 2000, the Center forwarded the hard copy of the Complaint to Ross Carson by courier.
The parties have not filed any further submissions.
4. Factual Background
Because the Respondent has not answered the Complaint, the following facts submitted by the Complainant are undisputed.
a. The Trademarks
The Complaint is based on the ownership of over one hundred and ninety registered Trademarks for REUTERS registered in relation to wares and services in International Classes 9, 16, 35, 36, 37, 38 and 42 in many countries, including the United States, the United Kingdom, Canada, Spain, France, Benelux, Denmark, Switzerland, Austria, Germany, Italy and the European Union.
The Complainant has attached a list of its trademark registrations, together with copies of its United States and United Kingdom registrations, as Exhibit C to the Complaint.
United States Trademark Registration No. 1008206 for the trademark REUTERS was registered in the United States Patent and Trademark Office on April 1, 1975, in association with the services "gathering of news and the dissemination of news and news analysis, commentary and interpretation including, international, national, state and local news and news of developments in the areas of government and politics, economics, finance, business securities, commodities, law, science, medicine, sociology, religion, sports, entertainment, education and art" in Class 100 (Int. Cl. 42), based on use in commerce since at least as early as 1942.
United States Trademark Registration No. 2222475 for the trademark REUTERS was registered in the United States Patent and Trademarks Office on February 9, 1999, in association with numerous wares and services including pre-recorded audio and video compact discs, computer operating programs, software, blank magnetic data media, telecommunications apparatus based on use in commerce since 1964; in association with wares including non-fiction books, periodicals and publications based on use in commerce since 1865; in association with services including advertising services and business information services based on use in commerce since 1865; and in association with services including financial analysis, computer-aided transmission of data, messages and documents based on use in commerce since 1967.
b. The Domain Names
The Complainant owns the domain name "" which was registered with Network Solutions Inc. on June 3, 1993. Complainant also owns the domain names "", "" and many other domain names incorporating the REUTERS trademark.
5. Parties� Contentions
A. Complainant
(i) The Complainant submits that the domain name "" is confusingly similar to the Complainant�s registered trademark REUTERS. The Complainant further submits that the use of the numerical prefix "1800" suggests that the domain name "" identifies with the Complainant�s toll-free number, 1-800-Reuters. (Paragraph 4.a.(i) of the Policy).
(ii) The Complainant submits that the Respondent has no rights or legitimate interest in respect of the domain name "" (Paragraph 4.a. (ii) of the Policy). The Complainant states that to the best of Complainant�s knowledge the Respondent has not prepared or used the domain name "" in connection with any bona fide offering of goods or services, has not commonly been known by the domain name, and has not made any non-commercial or fair use of the domain name, (Paragraph 4.c. of the Policy) facts which if proved by a Respondent demonstrate a Respondent�s Right to and Legitimate interest in the domain name in dispute.
(iii) The Complainant further submits that the Respondent being aware that REUTERS is a registered trademark of the Complainant has registered the domain name "" in bad faith. (Paragraphs 4.b.(i) and (ii) and Paragraph 4.a.(iii) of the Policy).
(i) Confusingly similar.
With respect to the first element of confusion between the domain names and the registered trademarks for REUTERS the Complainant attaches as Exhibit C a schedule of the Complainants registered trademarks for REUTERS.
Complainant submits that the REUTERS trademark has become one of the most famous in the financial information and news services industries worldwide. The mark REUTERS has been used extensively on television and the Internet, in newspapers and various other media. Complainant has spent many millions of dollars annually on various types of advertising involving the REUTERS trademark.
The Complainant also owns and has registered domain names that include REUTERS, such as "", "" and "". The principal domain name currently registered and used by Complainant is "".
The Complainant also uses the toll-free number 1-800-Reuters.
The Complainant submits that the REUTERS trademark was both famous and distinctive before the time that Respondent registered the domain name "". The Complainant also submits that the domain name "" corresponds exactly to Reuters� toll-free "1-800-Reuters" telephone number.
The Respondent did not file a Reply.
(ii) Respondent�s rights and legitimate interest in the domain name
The second element is whether the Respondent has rights and a legitimate interest to the disputed domain name. The Complainant submits that Respondent has not prepared or used the domain name "" in connection with any bona fide offering of goods or services, was not commonly known by the domain name and has not made any non-commercial or fair use of the domain name. The Complainant�s evidence is that the Respondent is not known by the REUTERS name and is not making non-commercial or fair use of the REUTERS name. The evidence is that entry of the domain name "" takes the visitor to a page at which only a marker for R appears. Complainant advises that Respondent has admitted that there has never been a website associated with the domain name "".
The Respondent did not file a Reply or any evidence to demonstrate Respondent�s rights to and legitimate interest in the domain name, examples of which are set out in Paragraph 4.c of the Policy.
(iii) With respect to the third element as to whether the Respondent has registered and is using the disputed domain names in bad faith the Complainant submits the fact that Respondent�s registration lists a fictitious name and address "Domain for Sale"..... "Make an Offer". Complainant submits that the Respondent registered the domain name primarily for the purpose of selling the domain name in excess of out-of-pocket costs directly related to the domain name. Complainant�s attorneys e-mailed a letter to Respondent on April 14, 2000, stating that Respondent�s registration of the domain name "" violated Complainant�s rights and demanded that Respondent immediately transfer the domain name to Complainant. (Exhibit E to Complaint). In response to Complainant�s e-mailed letter of April 14, 2000, Respondent sent an e-mail on April 15, 2000, to the Complainant offering to sell the domain name to Complainant for $10,000. (Exhibit F to Complaint). In an e-mailed letter dated April 25, 2000, the attorneys for the Complainant rejected the Respondent�s offer to sell the domain name "". (Exhibit G to Complaint). The domain name "" is currently being offered for sale at "" for $500, along with other domain names registered by the Respondent incorporating famous trademarks such as "" (Exhibit H to Complaint). Respondent is also offering for sale "" which corresponds exactly to the toll-free number of Avis rental car service (Exhibits H and I).
Complainant submits that Respondent is a cybersquatter who seeks to take advantage of the owner of a famous mark and to prevent the owner from reflecting the mark in a corresponding domain name (see paragraph 23-24 of Complaint).
The Complainant also submits that Respondent�s use of fictitious contact information is further evidence of bad faith. The listed administrative contact is "Syndi Cate", which has also been typed as "Syndicate" in the April 15 e-mail of the Respondent. Respondent�s address is false, being shown as "Make an Offer" in Washington, VA 20000, a non-existent zip code. The zip code for the city of Washington, Virginia is 22747. The listed phone number 1 703 000 0000 is clearly false.
c. The Response
No response with respect to the Complaint was received by the Center or by the Panel.
However, by an e-mail dated August 27, 2000, the Respondent advised, without offering further particulars such as Respondent's name and further contact details, that it will not contest the dispute and will release ownership of all rights to the domain name.
6. Findings
The first element which the Complainant must prove is that the domain name is identical or confusingly similar to the Complainant�s trademark or service mark. REUTERS.
The domain name "" contains the trademark REUTERS with the addition of numbers.
The domain name "" also corresponds to the Complainant�s domain name "" with the addition of numbers.
The domain name "" corresponds to the Complainant�s toll-free number 1-800-reuters.
The domain name "" is confusingly similar to the Complainant�s trademark REUTERS.
The second element which the Complainant is required to prove is that the Respondent has no right or legitimate interest in respect of the domain names in dispute. The domain name in dispute suggests some affiliation or connection of the Respondent with the Complainant when there is no such affiliation or connection. The evidence filed by the Complaint shows that entry of the domain name in dispute directs the visitor to a web site offering the domain name "" for sale.
In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint. Accepting those allegations, including the fact that the Respondent registered the domain name "" under a fictitious name, address and telephone number, the Respondent has not shown any right or legitimate interest in respect of the disputed domain name.
The third element which the Complainant is required to prove is that the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent offered to sell the domain name to Complainant for $10,000 and that the domain name "" is currently being offered for sale at "" for $500, along with other domain names registered by the Respondent incorporating famous trademarks, is evidence that the domain name was registered and is being used in bad faith.
The fact that the Respondent registered the domain name "" under a fictitious name, address and telephone number is further evidence of bad faith.
7. Summary of Findings
a. The domain name in dispute is confusingly similar to the Complainants registered trademark for REUTERS. The domain name in dispute is also confusingly similar to the Complainant�s toll-free number 1-800-reuters which incorporates Complainant�s registered trademark REUTERS as a principal component.
b. The Respondent has no right or legitimate interest in respect of the disputed domain name. The disputed domain name promotes and suggests a connection or relationship of the Respondent with the Complainant which does not exist. In addition the Respondent registered the domain name "" under a fictitious name, address and telephone number.
c. The domain name has been registered and is being used in bad faith by the Respondent to attract some customers to a web site at which the domain name is offered for sale. In addition the Respondent registered the domain name "" under a fictitious name, address and telephone number.
8. Decision
In the Complaint, the Complainant requested that in accordance with Paragraph 4.i. "Remedies" of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain name be transferred to Complainant. The Complainant having proved each of the three elements set out in paragraph 4.a.(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy is entitled to the decision requested. The Panel requires that the domain name "" be transferred to Reuters Limited.
Ross Carson
Panelist
Dated: November 8, 2000
Full & Egal Universal Law Academy