WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hola S.A. and Hello Limited v. Idealab
Case No. D2002-0089
1. The Parties
The Complainants are Hola S.A., a Spanish corporation with its principal place of business at Madrid, Spain ("the First Complainant") and Hello Limited, a U.K. corporation with its principal place of business in London, U.K. ("the Second Complainant"). The Complainants are represented by Charles Russell, Solicitors, of London, U.K. The Second Complainant is a subsidiary of the First Complainant.
The Respondent is Idealab of Pasadena, CA, U.S.A. The Respondent is represented by Mr. Dennis L. Wilson of Keates McFarland & Wilson LLP, attorneys of Beverley Hills, CA, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Network Solutions Inc. of Virginia, U.S.A. ("the Registrar").
3. Procedural History
The Complaint submitted by the above Complainants was received on January 29, 2002, (electronic version) and February 1, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On February 4, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, 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 Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- 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 of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated February 6, 2002, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration .
- Idealab is shown as the "current registrant" of the domain name. It is also the administrative, technical and billing contact.
- The UDRP applies to the registration.
- The domain name registration is currently in �active� status.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain name in question is in �active� status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on February 7, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to the Registrar and ICANN.
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 received by the WIPO Center from the Respondent on February 22, 2002 (electronic), and March 14, 2002 (hard copy). The Complainant had requested a three-member Panel.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Professor Frederick M. Abbott of Tallahassee, Florida, U.S.A., and Mr. Christopher Tootal of London, U.K., to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Both parties have paid the appropriate fees to WIPO Center.
On March 19, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 55(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by April 3, 2002.
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.
4. Factual Background
The First Complainant is the owner of 6 U.K. trademarks (the earliest registered in respect of magazines and the like dating from 1987, and it also owns 1 Community trademark and 1 U.S. trademark. All registrations are for the mark �Hello�. One of the UK trademarks (registered in 1996), is for inter alia, computer software.
Both Complainants publish in the United Kingdom an entertainment magazine called �Hello� with a circulation of 500,000 copies per week and sales in some 100 countries. The magazine considers itself a market leader in the celebrity and entertainment markets in the U.K.
The Respondent develops and/or invests in Internet businesses and claims to have registered domain names incorporating generic words which describe the activities of such businesses. Respondent purchased the disputed domain name in 1996, in anticipation of using the name in connection with a business.
Through H. Inc, Respondent launched a business selling greeting cards on the Internet from February-June 2000. For the next year, Respondent and an associated entity, H. Inc, used the disputed domain name for an Internet voice-based and video business. Since July 2001, Respondent has used the name to direct traffic to its other businesses. It has not used the name in connection with the Complainants� business of magazine publishing.
5. Parties� Contentions
Complainants:
The disputed domain name is identical to the First Complainant�s registered marks. The Complainants have substantial goodwill in the mark �Hello�, which is firmly associated in the minds of the public with the Complainants� publication.
In July 2000, the Complainants became aware that the disputed domain name had been registered to the Respondent which then operated an active website offering Internet video and voice services. The Complainants, concerned about the use of the name, suggested to Respondent that it provide on its website a link to Complainant�s website at . Respondent did not agree and its then website became inactive in May 2001. After the Respondent in July 2001, began to use the website as a search engine facility, Complainants offered to discuss with Respondent terms on which the domain name could be transferred. They specifically acknowledged that there had been a legitimate business use by Respondent, which did not reply to the suggestion of a discussion.
Complainants now assert that Respondent�s continued ownership of the disputed domain name is primarily for the purpose of preventing the First Complainant from reflecting its mark in a registered domain name. Respondent has no reason to continue to own the name other than significantly to increase traffic to its websites from browsers seeking websites about the Complainants.
Complainants are concerned about the potential for fraud because of the popular status of such a generic name. It is likely that there will be third party attempts to purchase the domain name from the Respondent which could erode Complainants� goodwill in the name and cause damage to Complainants.
Respondent:
The scope of the Policy is to address bad faith cyber-squatting. There are serious questions about the Complainants� right to registration of a mark for such a generic word as �hello�. A search on Google results in over 8 million website listings for the word �hello�.
The term �hello� is generic and cannot operate as a trademark, certainly not for the purposes of the Policy. At best, the �Hello� mark is a weak descriptive mark entitled to protection only upon a secondary meaning being shown in a market for certain goods - such as magazine publication.
No possibility of confusion exists because Respondent will only develop its website, currently under development, for a legitimate non-infringing purpose. Respondent has a right to the name. It has used in the past and intends in the future to use the name in connection with a legitimate business.
Complainants have no right to prevent the use of the generic word �hello� by legitimate businesses of which there are thousands using the word. There is no improper diversion of trade by the Respondent from the Complainant. Respondent operates a respectable business and is not a cyber-squatter.
There is no evidence of bad faith by Respondent or that Respondent registered the name in order to offer it for sale to Complainants or to a third party. There is no evidence that it knew of Complainants at the time of registration.
The Complainants are guilty of Reverse Domain Name Hijacking because they have known all along about the Respondent�s legitimate business. An appropriate declaration is sought from the Panel.
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;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
In the view of the majority of the Panel, the disputed domain name is identical to the registered trademarks in which the Complainants have rights. That fact is sufficient to enable the Complainants to satisfy the first criterion under Paragraph 4(a). It is not for the Panel to decide whether registration of the marks should or should not have been granted. The holding of a registered mark is sufficient for the purposes of the Policy. Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country.
One of Panel is inclined to determine that that the Respondent is using the mark outside the Complainant's channels of commerce and therefore there is no confusing similarity with the Complainant's mark. However, in light of the Panel's unanimous determination regarding Respondent's legitimate interests, this Panelist does not consider it necessary to reach a conclusion on that point.
The Complainant gave the Respondent no rights or legitimate interests in the disputed domain name. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden in the second criterion. Paragraph 4(c) 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.
In the Panel�s view, the Respondent has satisfied the criteria under Paragraph 4(c)(i) above. Before notice of the dispute (in July 2000), Respondent in association with H. Inc was operating an active website which offered Internet voice and video services. This was a demonstrable use of the disputed domain name in connection with a bona fide offering of services. Indeed, the Complainants do not allege otherwise. Instead, their claim articulates fears about what might happen if the Respondent were ever to sell the name. The Panel cannot speculate on future events or operate in a quia timet jurisdiction.
Complainants have failed to prove the second criterion. It therefore becomes unnecessary to consider the third criterion. However, the Panel notes that its finding about Respondent�s legitimate business would operate against a finding of bad faith. The Complaint must be dismissed.
7. Reverse Domain Name Hijacking
Such a claim under Rule 15(e) is frequently made by Respondents but a declaration of Reverse Domain Name Hijacking is rarely granted. To prevail in such a claim, Respondent must show that Complainant knew of Respondent�s unassailable right or legitimate interest or of the clear lack of Respondent�s bad faith registration and use but nevertheless brought the Complaint in bad faith (See Sydney Opera House v. Trilynx Pty. Ltd. (WIPO Case No. D2000-1224) and Koninklije KPNNV v. Telepathy, Inc. (WIPO Case No. D2001-0217) and Supremo n.v./s.a v. Rao Tella (WIPO Case No. D2001-1357).
In the Panel�s view, it should have been apparent to the Complainants that they could not prove the second element required by the Policy because of the Respondent�s legitimate business conducted before it had notice of the dispute. Indeed, the Complainants acknowledged the legitimacy of this business. However, the Complainants did offer to come to an accommodation with the Respondent which made no reply to this suggestion.
The Panel is not prepared to make the declaration sought against the Complainants.
8. Decision
The Panel decides:
(a) The Complaint is dismissed;
(b) No declaration is made against the Complainants of reverse domain name hijacking.
Hon. Sir Ian Barker QC
Presiding Panelist
Professor Frederick M. Abbott
Panelist
Christopher Tootal
Panelist
Dated: March 27, 2002
Full & Egal Universal Law Academy