WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Inc. v. Chip Cooper
Case No. D2000-1342
1. The Parties
The Complainant is Time Inc. a Delaware corporation having its principal place of business at 1271 Avenue of the Americas, New York, New York 10020, USA, and its authorized representatives are Marylee Jenkins, Esq. and Roberta Kraus, Esq., attorneys with the firm of Robin Blecker & Daley located at 330 Madison Avenue, New York, New York 10017, USA.
The Respondent is Chip Cooper, an individual having a postal address of 500 Longfellow Lane, Columbia, Missouri 65201, USA.
2. The Domain Names and Registrar
The domain names upon which this Complaint is based are , and .
The Registrar of the domain name as at the date of the Complaint is Network Solutions, Inc. located at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. Procedural History
On October 5, 2000 a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email pursuant to the Uniform Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules"). A hard copy of the Complaint was received by the Center via courier on October 11, 2000.
The Complainant stated that a copy of the Complaint was sent to the Respondent by registered post and by email, and later confirmed that a copy had also been sent to NSI by fax and by e-mail.
Upon receipt of the email copy of the Complaint, the Center sent to the Complainant an "Acknowledgement of Receipt of Complaint" on October 11, 2000 by email, with a copy being sent to the Respondent by post/courier, facsimile and email.
An amendment to the Compliant was received by the Center on October 25, 2000 by e-mail and a hard copy of this was received on October 27, 2000.
The Center sent a Request for Registrar Verification to NSI on October 11, 2000 by email. NSI responded to the Center�s request by email on October 13 and 19, 2000 verifying: (1) that it was in receipt of the Complaint, (2) that it was the Registrar for the domain name in dispute, (3) that the Respondent Chip Cooper was the current registrant of all three of the domain names in dispute, (4) that the Respondent�s contact details were correct, (5) that NSI�s 5.0 Service Agreement was in effect for the domain name and that NSI�s 4.0 Service Agreement was in effect for the domain names and , and (6) that the current status of all three domain names was �Active�.
The Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent and to the Complainant on October 31, 2000.
A Response to the Complaint was received by the Center by e-mail on November 19, 2000 and a hard copy of this was received on November 27, 2000. The Center acknowledged receipt of the Response on November 24, 2000.
The Center sent a Notification of Appointment of Administrative Panel and a Projected Decision Date of February 6, 2001 to the Respondent and to the Complainant on January 23, 2001 via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel on January 23, 2000.
On February 6, 2001 the Panel requested an extension of the Decision Date until February 23, 2001 under Rule 10 (c) of the Policy.
All procedural requirements appear to have been satisfied.
4. Factual Background
Activities of the Complainant
The Complainant states in its own words as follows:
"The Complainant is one of the leading magazine publishers in the world, and is in the business of marketing and distributing books, magazines, CD-ROMs, and other media products under various brands and trademarks, including under the trademark LIFE. LIFE magazine is one of the Complainant�s flagship brands and is one of the most recognised magazines in the world."
"The Complainant has continuously used the LIFE mark since 1936 in connection with the marketing and distribution of LIFE Magazine, America�s first and most famous picture magazine. While LIFE Magazine recently announced that it had ceased regular publication it continues to be published periodically as a special issue or commemorative. In addition the Complainant continues to use the LIFE mark to market and distribute an array of other products and services, including books, television programming, photo albums, computer screen savers, CD-ROMs and an Internet Web site."
"The Complainant distributes and advertises magazines and other products and services sold under the LIFE mark through various channels, including retail stores and over the Internet, and has expended considerable resources advertising and promoting products sold and/or distributed with the distinctive LIFE mark. Indeed, from 1936 through 1988, the Complainant spent in excess of $700 million to promote products sold under the LIFE mark. During that time period the Complainant earned over US $3.3 billion dollars in revenue from the sale of LIFE magazine alone."
"As a result of the Complainant�s nearly sixty five years of extensive use, advertising and promotion, the LIFE mark for magazines has acquired tremendous commercial strength and goodwill, and has come to immediately identify the Complainant�s magazine, and is famous."
The Complainants� trade marks
The Complainant owns four US Federal registrations of the trademark LIFE, copies of which were produced. It claimed to own trademark registrations of LIFE in over 140 other countries, and a printout of some of these was produced in evidence.
Activities of the Respondent
The Respondent, who earned a B.A. in History from the University of Missouri, is an avid collector of old LIFE magazines and has built a large but incomplete collection of these during the past 20 years. Early in 1998, while searching for LIFE magazine�s online location in order to determine if LIFE offered ways to locate or purchase old issues of the magazine, he discovered that LIFE magazine had a long established Web site (since 1994) at rather than at as he had anticipated. Puzzled that was not registered so many years after LIFE magazine had established its Web presence he assumed that LIFE Magazine had no interest in the domain and, on April 23, 1998, he registered the domain name . In this he was assisted by Mr. Justin Lyon, owner of Arachnet Web Design and Hosting who, as was his custom, posted a text and graphic on the site which stated that "www. has been reserved" and a link for emailing the Respondent.
The Respondent states that he registered in order to create a Web site that would help collectors find and trade old issues of LIFE magazine. When he was subsequently required to change hosting services, the new administrative contact p osted, as is their apparent custom, text entitled "Welcome to www." but without any email link to the Respondent.
In 1999, the Respondent was again puzzled that LIFE magazine had not registered or either, despite the fact that LIFE magazine had established its Web presence at in 1994 and, assuming that LIFE Magazine had no interest in the domains, the Respondent registered these domain names and with NSI on April 7, 1999. NSI, as is their apparent custom, posted text on them entitled, "Under Construction," and without any associated email link to the Respondent. The Respondent states that he registered these two domain names as part of his intent to create a Web site that would help collectors find and trade old issues of LIFE magazine.
For about a year, as a result of the email link included on the original website, and before this was dropped, the Respondent states that whenever he received emails from people who, like him, had trouble finding LIFE magazine�s Web site at , or from people who knew that did not offer access to old issues of LIFE magazine, in every single instance he promptly replied to the inquiry and directed each and every individual to the LIFE magazine Web site at while making it explicitly clear that he was not affiliated with LIFE magazine.
Respondent has also registered two other domain names: , which Respondent registered on December 9, 1997, and , which respondent registered on May 16, 1999. The latter resolves to a web site on which a bicycle path network in the city of Columbia, Missouri is promoted. With regard to , Respondent stated that he has been "slowly working to create a local non-commercial political humor site that is totally unrelated to shoe polish, phonograph records, cassette tapes, compact discs featuring music or clothing, namely shirts. It will be dedicated to 'knowing the difference between sh-t and shinola in Columbia Missouri'."
Upon discovering that Respondent had registered , in January 2000, Complainant sent Respondent a letter requesting that Respondent cease and desist from its use of Complainant's trademark and that it transfer the domain name to Complainant. In response, Respondent sent Complainant a letter, informing Complainant that Respondent was a collector of old Life magazines and that Respondent had been considering setting up a web site at to serve collectors. Respondent asserted that he believed that Complainant must have had no interest in the domain name , because it left it available for registration by the general public. "This belief was further reinforced when I discovered very recently that neither '' nor '' had been registered. I registered those domain names as well assuming that they might someday help advance my concept." Stating that Respondent had been "slowly working on the concept for a web site serving the needs of Life Magazine collectors," Respondent stated that he had to date refused offers to purchase the web site. Respondent inquired whether "Life Magazine would be interested to work with me in some way to create a web site that would meet the needs of Life Magazine collectors and others who seek old issues. I would assume that this could entail voluntarily giving up my ownership of '', '', and ''." [SIC]
There followed an exchange of correspondence in which Complainant alternately demanded that Respondent turn over the domain names at issue or offered to purchase them and in which Respondent declined the offers made and insisted that he was within his rights to retain the domain names at issue. The filing of the complaint in this matter ultimately ensued.
5. Parties Contentions
Complainant contends that the domain names at issue are identical or confusingly similar to trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the domain names at issue were registered and are being used, to the extent they are used at all, in bad faith.
Respondent effectively concedes that the domain names at issue are identical or confusingly similar to trademarks in which Complainant has rights. However, Respondent contends that, as a collector of Life Magazine back issues, he has a legitimate interest in establishing a web site concerning the collecting of Life Magazine, and that the domain names were not registered in nor are they being used, to the extent they are used at all, in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Respondent has effectively conceded that the domain names at issue are at least confusingly similar to trademarks in which Complainant has rights. "[Respondent] agrees that people have been confused by LIFE magazine's [SIC] choice in 1994 to establish their Web site at a non-intuitive location, LIFEMAG.COM, and that they come to LIFEMAGAZINE.COM with the expectation that it would be the natural location of LIFE magazine's [SIC] online location." Response, � 13b.i), bottom of tenth unnumbered page to top of eleventh unnumbered page.
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain names at issue. This shifts the burden of production to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in respect of the domain name(s) at issue. Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, ICANN Case No. D2000-0252. "Concrete evidence" is more than mere assertions. "Concrete evidence" is documents or sworn declarations or affidavits. Do The Hustle, LLC v. Tropic Web, ICANN Case No. D2000-0264. Respondent offers neither. Respondent's mere assertions that he is a Life Magazine collector who wishes to establish an informational web site regarding Life Magazine back issues, does not rise to the level of a right or legitimate interest in respect of the domain name.
Paragraph 4(c) of the Policy sets out four ways in which a Respondent can establish rights or legitimate interests in the domain name(s) at issue. First, Respondent can show, before Respondent received any notice of a dispute, demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Policy, � (c)(i). Respondent has made no "demonstrable preparations" beyond the mere registration of the domain names at issue. This is insufficient. The Hamlet Group, Inc. v. James Lansford, ICANN Case No. D2000-0073. Neither is the knowing adoption of the well-known trademark of another. Guerlain, Inc. v. Peikang, ICANN Case No. D2000-0055.
Respondent produced no evidence that he has been commonly known as "Life Magazine" or as "." Policy, � 4(c)(ii).
Respondent is not making a legitimate noncommercial or fair use of the domain names. Respondent has made no use of the domain names since he registered the first of the three in the .com gTLD in April 1998.
Accordingly, the majority is of the opinion that Respondent has no rights or legitimate interests in respect of the domain names at issue.
Paragraph 4(b) sets out four specific, but not exclusive, circumstances of bad faith registration and use. The first of these is an offer to sell the domain name at issue to the trademark owner or a competitor for an amount in excess of the offeror's out of pocket costs. Policy, � 4(b)(i). In the present case, Respondent has been careful not even to consider or to discuss a sale of the name. Respondent has only offered to work with Life Magazine to develop a site, which would meet the needs of Life Magazine collectors and to "possibly voluntarily give up the domain names at issue" as a result. This phraseology, while interestingly suggestive, cannot be considered an offer to sell.
While Respondent registered the domain names at issue in the only generally available generic Top Level domains then in existence, it cannot be said that Respondent registered the domain names at issue to prevent the trademark owner from reflecting the mark in a corresponding domain name, because Respondent knew prior to his registration of the domain names at issue that Complainant had registered the domain name . Therefore, Respondent's conduct does not come within the specifics of Paragraph 4(b)(ii) of the Policy. Moreover, even if it could be said that Respondent by registering Complainant's complete trademark and name in the only available gTLDs was sufficient to constitute such deprivation, the Panel does not believe that the four domain names registered by Respondent which are confusingly similar or identical to registered trademarks (the three domain names at issue and ) are sufficient to constitute a pattern of conduct. The Kittinger Company, Inc. v. The Kittinger Collector, ICANN Case No. AF-107. The Kittinger Company, Inc v. James Fisgus, ICANN Case No. AF-108.
Respondent is not a competitor of Complainant, so that paragraph 4(b)(iii) does not apply.
Respondent has not used the domain name to attract users for commercial gain. Therefore, paragraph 4(b)(iv) does not apply.
However, the examples given in Paragraph 4(b) are not exclusive, and it has long been established that in given factual situations, non-use and inaction can constitute bad faith registration and use. One of the earliest Panel decisions, Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, established that "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." Telstra, � 7.9. Perhaps the most cited of all UDRP decisions to be handed down to date, the Telstra decision and its rationale have been followed by numerous subsequent panel decisions. By now the rule is well established that in performing the Telstra analysis a Panel must "give close attention to all the circumstances of the Respondent's behaviour." [SIC]. Id., � 7.11. It is important to note that the focus is to be placed on the Respondent's behavior, rather than on his words.
The following sequence of events is taken entirely either from the representations of Respondent or from the facts set out in third-party documents:
1. On December 9, 1997, Respondent registered the domain name . Complaint, Annex 17.
2. Prior to April 23, 1998, Respondent sought the online location of Life Magazine by entering into his search engine. Respondent discovered that the domain name was unregistered, and that Complainant's web site was located at www.. Complaint, Annex 3, February 8, 2000, letter from Respondent to Complainant's counsel.
3. Respondent called Complainant's offices to confirm that Complainant offered no assistance in locating back issues. In this telephone call, there is no indication that Respondent communicated his intent to register . Id.
4. On April 23, 1998, Respondent registered the domain name . Complaint, Annex 1. The domain name was registered with the help of Respondent's administrative contact, the owner of Arachnet Web Design and Hosting. Response, � 12h).
5. On April 7, 1999, Respondent registered the domain names and . Complaint, Annex 1.
6. On May 16, 1999, Respondent registered the domain name . Response, � 13cii); Whois lookup. The domain name resolves to an active web site. Response, � 13cii). A visit to the web site reveals that it is quite sophisticated in construction. (Footnote 1)
7. Sometime after January 11, 2000, Respondent received a cease and desist letter from Complainant's counsel.
Respondent registered as a domain name the famous trademark of Complainant as a domain name in one of the three generally available generic Top Level Domains (gTLDs). Respondent did nothing with it for a year. Respondent then registered Complainant's famous trademark in the other two generally available gTLDs. Respondent then did nothing further for eight months, at which time Respondent was contacted by Complainant.
Given these actions (and inaction), a paraphrase of the Telstra decision seems especially appropriate."[T]he trademark [LIFE MAGAZINE] is one of the best known trademarks in [America], and it is inconceivable that the person or persons behind the Respondent would not be aware of this fact. . . .[B]y virtue of the wide spread use and reputation of the trademark [LIFE MAGAZINE], members of the public in [America] would believe that the entity owning the domain name[s] [, , and ] was the Complainant or in some way associated with the Complainant. . . . [A]ny realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off, breaches of [American] consumer protection legislation, and trademark infringements." Telstra, � 6.3. Granted, in this case, unlike Telstra, Respondent made no attempt to hide his identity. However, in this case, unlike Telstra, after a year of sitting on the registration in the .com gTLD, Respondent went back and registered Complainant's famous trademark in the .net and .org gTLDs, as well. Then Respondent sat back for eight additional months, when Complainant contacted him.
The dissent notes that certain non-commercial uses of a famous mark, such as for parody and for product criticism, are legally sanctioned under the laws of the United States. The majority agrees. However, Respondent has made no such uses.
The dissent spends much time in an attempt to explain Respondent's inaction, but none explaining his actions. The dissent believes that the panel should refrain from evaluating the credibility of the parties. The majority disagrees. As panelists, we are not obliged to put away our common sense before we open a file. Why was it necessary to register the Complainant's mark in all three generally available gTLDs in order to accomplish any of the aims Respondent professed to have? The majority believes that it was not necessary.
The majority believes that the UDRP procedure should be governed by the rule of law, rather than by the individual consciences of the panelists. If a principle enunciated in a decision is well-reasoned and repeatedly adopted by other panels, the majority believes that absent compelling reasons which require a determination otherwise, the rule established should be respected. The majority believes that potential users of the UDRP are entitled to some degree of predictability. Counseling one who is considering filing a Complaint should consist of more than, "It depends what panelist you draw."
In looking at prior Panel decisions and at what Respondent did and did not do, rather than at what Respondent professed, the majority believes that the Telstra analysis establishes that Respondent registered and is using the domain names at issue in bad faith.
7. Decision
For all of the foregoing reasons, the majority of the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the marks in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names , , and be transferred to the Complainant.
M. Scott Donahey
Presiding Panelist
David H. Tatham
Panelist
Dissent
I respectfully dissent from the majority opinion.
The majority finds that bad faith has been established by the Complainant and therefore considers the burden shifted to the Respondent to prove the affirmative defense of rights or legitimate interest. I find that the Complainant has failed to prove all the necessary elements of bad faith, notably bad faith use, and therefore the Respondent has no need to establish a defense.
Section 4(a) of the Policy clearly states that both registration and use must occur to sustain a UDRP claim. The majority cites Telstra as grounds for finding that mere registration can, in and of itself, constitute bad faith use as well.
In my humble opinion (IMHO) Telstra, a decision involving Australian parties, is not applicable here, even if it had the authority of stare decisis, which it does not. Another panelist�s opinion in no way binds me in mine, simply because s/he considered the matter first.
Furthermore, Telstra is based on a conviction that the fame of the mark owner obliterates any possible legitimate use of the domain. This is simply not the law in the US, the jurisdiction where both parties reside. The rights of famous mark owners do not extend to non-commercial uses of which there are many, including parody and product criticism. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987). In brief, the mere fact that a mark may be famous does not prevent its use by other parties. Indeed, 15 USC 1125 provides:
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce [emphasis supplied] of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.
Telstra overlooks the clear instructions in UDRP Section 4(a), which require proof of both registration and use. It reasons that because some of the examples of bad faith presented in 4(b) refer only to registration, therefore only registration need occur. The language of 4(b) is indeed confusing in this regard. The introduction says that the examples cited therein "shall be evidence of the registration and use of a domain name in bad faith�" [Emphasis supplied]. Some of these examples, however, refer only to acts of registration. Telstra reads this literally and concludes that bad faith registration alone can sustain a UDRP claim. However, in light of the total clarity on this point in 4(a), I cannot subscribe to an interpretation of 4(b) that dispenses with proof of independent use. I read 4(b) as if it said, "Here are some examples of bad faith acts. Some are examples of bad faith registration and some are examples of bad faith use, but Section (a) still requires that you prove both."
However, I agree with the majority that there are many ways to use a registration. One can use it by offering it for sale. One can use it to solicit business by e-mail. Unfortunately, in this case, none of these acts was alleged.
Complainant argues that 4(b)(i) use for personal gain occurred when the Respondent suggested a partnership enterprise. However, no commercial or financial reward was ever solicited, so his interest in gain is mere surmise. The domain was used for e-mail but no evidence of commercial email was presented, only that all confused consumers were forwarded to the Complainant�s actual site. The panel agrees that the "Under Construction" and "Welcome" texts that were posted by the access provider do not constitute bad faith use by the Respondent.
The majority acknowledges that the Complaint has failed to prove any of the enumerated grounds for bad faith in Section 4(b). Nevertheless, while it is quite willing to look beyond these grounds to determine bad faith, it is disinclined do so when examining the Respondent�s right or legitimate interest.
As to the latter, I do not believe that the Respondent need prove any right or legitimate interest if the Complainant cannot sustain the burden of establishing bad faith. I am convinced that the UDRP does not intend to make mere registration actionable and therefore does not intend the affirmative defenses to come into play where no independent use has occurred.
It appears to me that the majority simply does not believe the Respondent�s allegations as to his intentions. They suggest that if he really intended to use the domain as he claims, he would have been more aggressive about it. Given the absence of any commercial motivation, however, I am not surprised that he hasn�t rushed to engage costly web designers. Where is it written that he must hurry? My colleagues point to another non-commercial site that the Respondent has posted as evidence that he could have engaged in rightful behavior by now if he had really intended such a purpose, but I see nothing in either the law or the UDRP that insists that he march to a particular schedule and give priority to one project over the other. As a person who holds domains for which she has still not found the time to design or code content, I am in sympathy with his tardiness. I have yet to teach myself how to code registration scripts and am still clueless on listserv commands. Website development can be a hobby, just as home carpentry. Like the Respondent, I have a day job that leaves me less time than I wish to play with such delightful toys. And, as mentioned earlier, with no commercial incentive to hurry the project along, Respondent�s delay seems perfectly natural to me.
While there is no UDRP policy or rule on this point, my preference in reviewing the pleadings is to use the standard of review for summary judgment. I make no determination of credibility or weigh any evidence. I disregard all evidence favorable to the Complainant that I am not required to believe, and give credence to the evidence favoring the Respondent as well as to the evidence supporting the Complainant that is uncontradicted and unimpeached. As such, I find the Respondent�s explanations consistent with those of a genuine fan of Life Magazine who only hoped to provide other collectors with a useful method for the enjoyment of their hobby but who was not particularly quick about getting it done.
On general grounds of fairness, where no concrete evidence of bad faith has been established, I would generally err in favor of the Respondent. In this case, there has been no significant use of the domain, nor evidence of any particular harm suffered by the mark owner. The Complainant has the option of bringing another UDRP action should the Respondent engage in more aggressive behavior or may seek protection from the courts at any time. It is nowhere certain that the domain holder will have any such remedy should the majority�s interpretation of the UDRP be inaccurate.
IMHO, this complaint was brought prematurely and should be dismissed.
Diane Cabell
Panelist
February 13, 2001
Footnote:
1. Visits to web sites have long been an accepted panel practice. Draw-Tite, Inc. v. Plattsburgh Spring Inc., ICANN Case No. D2000-0117; High-Class Distributions, S.r.l v. Online Entertainment Services, ICANN Case No. D2000-0100. The same is true of Whois lookups. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Col, a/k/a , ICANN Case No. D2000-0118; Cortefiel, S.A. v. Miguel Garcia Quintas, ICANN Case No. D2000-0140.
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