WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AV Communications Pty Ltd v. PS Consultants / William Poel
Case No. D2001-0358
1. The Parties
The Complainant is AV Communications Pty Ltd, an Australian corporation with its principal place of business in Perth, Western Australia. The Complainant is represented by a Director, Mr. John Gouteff.
In an amendment supplied to WIPO on April 26, 2001, the Complainant named PS Consultants / Mr. William Poel as the Respondent. According to the Response, Mr. William Poel, personally, is not the owner of the domain names. They are owned either by PS Consultants � a partnership in which William Poel is a partner � or by USP Networks Limited, which is a company in which Mr. Poel is a director. The Respondent�s legal representative, Mr. Alistair Kelman, has not precisely determined which company or partnership is currently the actual owner of these domains. The Respondent�s legal representative is prepared to undertake that any order made by the Panel concerning the said domains and requiring any action (e.g. transfer etc) will be complied with by all the said parties � Mr. William Poel, PS Consultants and USP Networks Limited. For the purposes of this decision it will be convenient to refer merely to "the Respondent" as applying to the correct owner of the disputed names.
2. The Domain Name and Registrar
The domain names at issue are and . The domain names were registered with Network Solutions Inc. of Mountain View, CA, U.S.A.
3. Procedural History
The original Complaint, submitted by AV Communications Pty Ltd was received on March 3, 2001, (electronic version) and April 2, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On March 20, 2001, a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain names at issue are registered with NSI.
- Confirm that the person identified as the Respondent is the current registrant of the domain names.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant, the technical contact, the administrative contact and the billing contact for the disputed domain names.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name.
By email dated March 22, 2001, NSI advised WIPO Center as follows:
- NSI had received a copy of the Complaint from the Complainant.
- NSI is the Registrar of the domain name registration and .
- PS Consultants is shown as the "current registrant" of the domain names at the above address.
- The administrative and billing contact is USP Networks Ltd. Richard Poel is the technical contact. He, PS Consultants and USP Networks Ltd are all shown as having the same address in Chelmsford, Essex, U.K.
- NSI�s 5.0 Service Agreement is in effect.
- The domain name registrations and are currently in "Active" status.
NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain names in question are still "active" indicates that the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI�s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
The Complainant filed various amendments to its Complaint before the commencement of the administrative proceeding.
Having verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules"), the WIPO Center on May 3, 2001, transmitted by post-courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the said Notification was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on May 15, 2001 (electronic version only).
On May 19, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On May 19, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Barring exceptional circumstances, a decision from the Panel is due on June 4, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Complainant
The Complainant owns the Australian registered mark TieLine (Australia) No. 782871 registered January 14, 1999. The trademark is registered for the goods and/or services:
- Digital audio codes being goods in class 9;
- Telecommunications services using digital audio codes being services in class 38.
The Complainant designs and manufactures broadcast technologies. In May 1997, it commenced specialized audio research into transmitting broadcast quality audio over standard telephone connections. This form of technology is formally known as Digital Audio Codec Compression.
Complainant exports this technology globally, and services the requirements of radio broadcasters, television broadcasters, educational organizations, Government bodies, covert surveillance authorities, and general industry. As part of its marketing strategy, the name "TieLine" was trademarked to descriptively depict a link between being tied between two points by means of a telephone line. The trademarked name "TieLine" is a major brand name for AV Communications, under which various models of TieLine products are positioned. "TieLine Commander", "TieLine Express", "TieLine Pursuit", and future "TieLine" products are to be launched later this year at trade shows all over the world.
The trademark "TieLine" is used in successfully marketing the brand name in Australia and internationally. "TieLine" the brand is sold in the U.S.A, U.K., Italy, Holland, Sweden, South Africa, China, India, Korea, New Zealand and Canada.
Complainant plans to introduce its product into more countries, particularly South America and Asia. The brand name "TieLine" and its registered trademark has been advertised globally in major trade magazines, journals and displayed at major international trade shows.
The Complainant has promoted wide recognition of the "TieLine" trademark to Australian, U.S., U.K., Europe and Asia radio broadcast organizations. "TieLine" is recognized as a manufacturer and supplier of POTS (Plain Old Telephone Service) audio codecs in these markets whilst AV Communications pursues other avenues of audio and video technology.
The website for the disputed domain name states that the owner has intentions of developing the site, but may wish to sell the domain name if someone is interested. The site states that the domain name has been registered by USP Networks on behalf of a customer. The domain names were registered on May 8, 1998. The parties have conducted correspondence beginning on January 12, 1999, when the Respondent indicated a willingness to sell but no agreement over price was reached.
5. Parties� Contentions
Complainant
The disputed domain names are identical to the Complainant�s registered trademark "TieLine". The Respondent has no rights or legitimate interests in respect of the domain names in question, and the Respondent has registered and is using the domain names at issue in bad faith.
There has not been any bona fide offering of goods or services on the host website since the registration of the domain names on May 8, 1998, three years ago with no development of the site. The Respondent�s brand "TieLine" is widely sold throughout the United Kingdom and Europe.
The Respondent has no legitimate right or interest in the domain names in question and has been granted none by the Complainant.
Respondent has not traded, nor is his business commonly known by any of the domain names in question ( or ). Nor have there been any preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services.
Correspondence has been forwarded on numerous occasions over this aforementioned period requesting Mr. William Poel to advise the asking price to transfer the domain to AV Communications. Mr. Poel has openly invited offers for the purchase of the domain name , as is evidenced in the email correspondence.
From the very first approach made to Mr. Poel on January 12, 1999, he has made it clear that the domain names in question are for sale. This includes and . The USP Networks website, in which Mr. Poel holds himself out to be a director of the company, acts as a stopping point for many of Mr. Poel�s domain name acquisitions. A search conducted under the WHOIS look-up registry found that PS Consultants owned over 50 top-level domain names.
William Poel admits that he is a trader in domain names, as is evidenced in his email dated March 26, 2000, when he states:
"The more we get involved with domain name trades the less inclined I am to sell this one. I�m sorry. Having just paid $6,000 for something we consider to be a lot less attractive, this is an investment we will be holding for a while longer".
Mr. William Poel has since publicly listed on USP Networks� website, that less attractive domain names using "TieLine", are now selling from as low as �40 Sterling ranging to �85. The following was taken from USP Networks� website:
"DOMAIN AVAILIABILITY for the names you requested
Already Assigned
� N/A
Already Assigned
� N/A
Available to buy!
� 40
Already Assigned
� N/A
Already Assigned
� N/A
Available to buy!
� 40
Available to buy!
� 40
>
Available to buy!
� 85"
The figures Mr. Poel is asking for to sell the domain names listed on USP Networks� website is considerably less than what Mr. Poel�s correspondence has indicated he is willing to sell to Complainant. The price he is asking for clearly exceeds any expenses involved in the registration of the domain names.
The Respondent advised that he was considering placing a redirector to monitor the statistics of visitors to the website, to ascertain whether or not the domain name in question had commercial value to PS Consultants. This tactic has since been deployed on the website in question. The Respondent�s actions to measure web statistics for commercial benefit with the intention to sell it, is obviously in bad faith. As the Respondent clearly shows, he has no legitimate interest in developing the website with the intentions of any bona fide offering of goods or services.
Respondent
"TieLine" trademark is not particularly distinctive. The word refers to a telephone line that directly connects two or more private branch exchanges. The word "tieline" is a generic (ie non-distinctive) term to describe connecting communications systems together. "TieLine" was registered in this context as a potentially useful domain to describe services which would link together narrowband and/or broadband communications systems to serve the domestic and commercial marketplace in Europe.
The domains remain potentially useful ones for the names for the kind of service in the field of activity undertaken by Enformatica and its associated companies. The mere fact that Respondent has not yet commenced to use these names does not affect matters - Domain names are sold on a "first come, first served" basis and, in preparation for long-term developments the "TieLine" domains were purchased and are held. Consequently, the registration and ownership of the "TieLine" names is not to considered as cyber-squatting. Cyber-squatting is evidenced by:
- Failure of registrant to provide accurate registration details
- Failure to use domain without reason
- Registration of a famous mark coupled with an offer for sale
- Used to cyber-block or disrupt competitor
When enquiry was made to Mr. Poel asking whether the "TieLine" domains could be purchased, the simple answer was "yes". The domains were not registered to obtain squatter rights against anyone: they were bought as part of a long-term development plan � no bad faith registration. But business plans can be revised in the light of commercial circumstances � so an offer for sale does not taint a good faith registration and make the continued holding of a domain a bad faith usage.
Consideration was given in 1998 during the "" boom period to developing these domains as a web trading site for the sale of mens� ties � an entirely unconnected activity to the normal meaning of "tieline" in communications circles. Mr. Poel had meetings with a Mr. Charles Adams, who was in the business of selling mens� ties to Marks and Spencer. Accordingly work was begun in 1998 on creating a mens� tie website. A mock-up was created on one of the USP servers by Mr. William Poel�s son, Mr. Christopher Poel at USP Networks Limited. When the "" bubble burst and speculative internet investment went out of favor, this idea was shelved. However the mock-up of the "Tieline" site still exists at: http://www./. The last time any work was done on this site was in March 1999.
The above evidence together with the URL of the mock-up site was communicated to the Complainant on March 13, 2001, by Mr. Poel � the same day that the Complainant filed his Complaint by email. Nevertheless the Complainant, in the face of this evidence, has continued with this Administrative Proceeding.
The above evidence confirms the fact that the Complainant is in error in his statement in these proceedings that "During the period since William Poel registered the domain names , and , he has not endeavoured to establish any web site �". On the contrary, serious confidential preparatory work was undertaken in 1998 and 1999 ready for the website to be linked to the "tieline" domain.
In the light of the above evidence, the Respondent�s explanation of the history of this matter and a proper construction of the WIPO rules should show the Panel that the Respondent has satisfied the Panel that this Complaint should be dismissed.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- 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
- That the Respondent has no legitimate interests in respect of the domain name; and
- That the domain name has been registered and used in bad faith.
In the view of the Panel, the domain names are identical to the Complainant�s registered marks.
The Panel is not required to decide whether a trademark is one that could not achieve registration on the ground that it is a generic name or a surname. This mark has been registered in Australia. Such a registration is sufficient for the purposes of a dispute under the Policy.
The Complainant gave the Respondent no rights or legitimate interests in the disputed domain names. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(a)(ii) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:
(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.
The Panel finds this second criterion proved. The Respondent, on its own admission, speculates in domain names. There is no evidence of demonstrable preparations, apart from a self-serving assertion of Respondent to use the names on the websites for selling neck-ties on the internet. No supporting documentary evidence was produced. It has not used the names since obtaining registration. Vague statements such as that the names remain potentially useful names for services in communications systems are unconvincing. Especially when the correspondence shows a desire to gain a high price for the names and Mr. Poel referred to himself in an his email of February 26, 2001 as a "name broker".
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent registered and used the domain names in "bad faith" for the following reasons:
(a) Respondent was prepared to contemplate a sale of the names to the Complainant for far more than the cost of registration. The Respondent offered to sell for US$5,000. This conduct gives rise to the inference that Respondent registered the name primarily for the purposes of selling it for valuable consideration.
(b) The Respondent made no claim that it had no knowledge of the Complainant before registration of the names. In other WIPO cases where some credence has been given to a Respondent�s ignorance of a trademark registered in another country, where the domain name registrant is in another - usually distant � country. This is especially so where the trademark owner�s business did not extend to the country where the registrant lived. See for example WIPO D2000-0527 VZ VermögensZentrum AG v. A. However, given the Complainant�s business in the U.K. where the Respondent lives and the absence of any claim of ignorance, the Panel is prepared to infer bad faith registration.
(c) The failure by the Respondent to develop the website. Such a failure has been held in many WIPO decisions as being indicative of bad faith use.
(d) There is the comment in the Respondent�s email of February 24, 2001, "Cheap for a world-wide trademark if you ask me". This comment shows that Respondent was alive to the value of the mark to the Complainant.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain names registered by the Respondent are identical or confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(c) 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 name and be transferred to the Complainant.
Hon. Sir Ian Barker QC
Sole Panelist
Dated: June 4, 2001
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