WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Primus Telecommunications Group, Inc., Primus Telecommunications (Australia) Pty Ltd v. SullivanFamilyTrust
Case No. D2006-1165
1. The Parties
The Complainants are Primus Telecommunications Group, Inc., and Primus Telecommunications (Australia) Pty Ltd, Melbourne, Australia, represented by Middletons Lawyers, Australia.
The Respondent is SullivanFamilyTrust, John Sullivan, Perth, Australia, represented by Malcolm Farr, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�11,�2006. On September�13,�2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 13, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�27,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�17,�2006. The Response was filed with the Center on October�17,�2006.
The Center appointed Alistair Payne as the sole panelist in this matter on November�9,�2006 . The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, Primus Telecommunications Group, Inc is the registered owner of the trade mark GLOBE TALK and the Complainant Primus Telecommunications (Australia) Pty Ltd is the registered owner of GLOBE TALK PRO. The Complainants use the GLOBE TALK and GLOBE TALK PRO marks in the operation of a telecommunications business.
The Respondent is the registered owner of the Disputed Domain Name . The Disputed Domain Name was registered on March 18, 2006. The Respondent runs a website at “/globetalk/”. The domain name links directly to this website.
5. Parties’ Contentions
A. Complainant
The Complainants contend that the domain name is identical or confusingly similar to their trade marks in GLOBE TALK and GLOBE TALK PRO. The Complainants allege that they have a significant record of using these two trade marks since around 1997 in offering telecommunication goods and services. They note that they have built up a substantial reputation in both those marks and the use of the “www.” domain name is such that it is identical or confusingly similar and could cause customers to search for their services on the web using the words in their trade mark, only to be directed to the Respondent’s website at “/globetalk”. Primus Telecommunications Group also intends to launch a new product using the GLOBE TALK trade mark and it has registered the domain name in furtherance of this agenda. Primus Telecommunications Group contends that customers will be confused when they try to access details of this new product on the web and instead access the Respondent’s website.
Secondly, the Complainants suggest that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. They contend that the Respondent is not commonly known by the Disputed Domain Name in connection with the bona fide offering of goods or services, or, commonly known by the name globe talk.
Finally, the Complainants allege that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainants note that the Respondent does not have a website in operation at the Disputed Domain Name and subsequent to the initiation of these proceedings the Respondent applied for a trade mark in the words GLOBETALK and GLOBETALK.COM among others. The Complainants contend that it was the Respondent’s intention to attract, for commercial gain, interested users to their “/globetalk/” website by creating a likelihood of confusion between the Disputed Domain Name and the Complainant’s trade marks and that this is also evidence of the Respondent’s bad faith.
B. Respondent
The Respondent alleges that the Disputed Domain Name is not identical to the GLOBE TALK trade mark and that there is no likelihood of confusion between the two trade marks and the Respondent’s domain name. They point out that the Complainants have not provided any support for their claim that they have built up a substantial reputation in the two trade marks GLOBE TALK and GLOBE TALK PRO. The Respondents provide evidence at Annexure D and E that suggests that there is no use of the trade marks GLOBE TALK and GLOBE TALK PRO on the Complainant Primus Telecommunications’ website “/PrimusWeb”. The Respondent notes that there are some hits on a Google search for the words “primus” and “globe talk”, however, they contend that this is limited and that the web page results mostly contain no indication of the two trade marks. The Respondent also notes that the web pages that were found to include a mention of the trade mark GLOBE TALK are now between 8 and 9 years old and contain no up-to-date details of a services under these names. The Respondent contends that the Complainants have abandoned any reputation they may have had in the two trade marks and there is a low likelihood that any Internet customers will be aware of the Complainant’s trade marks.
The Respondent also submits that it is making a legitimate use of the Disputed Domain Name and that it has rights in the domain name for the purpose of offering services on a not-for-profit basis. The Respondent contends that this is a legitimate non-commercial use of the domain name. The Respondent contends that hyper linking is not an indication of registration and use of a domain name in bad faith and they point to similar uses of domain names by other legitimate organisations. They contend that the use of the generic words “globe” and “talk” in such a combined fashion was considered, without any knowledge of the Complainants’ trade marks, for the purpose of encouraging people around the world to discuss topics of importance to them.
Finally, the Respondent contends that the Complainant has made this application in an attempt to reverse hijack the Disputed Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) the Disputed Domain Name is identical or confusingly similar to the trade mark; and
(ii) the Respondent has no right or legitimate interest in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have registered trade marks for GLOBE TALK and GLOBE TALK PRO. In spite of the Respondent’s assertions, the Panel considers that the Respondent’s domain name is identical to the first Complainant’s trade mark for GLOBE TALK. The Panel notes the well established principle that the inclusion of “.com” in a domain name is not taken into account in evaluating identity (A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172) and the Disputed Domain Name is otherwise identical to the trade mark.
The Disputed Domain Name is also confusingly similar to the second Complainant’s trade mark for GLOBE TALK PRO: (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698). The addition of another word (“pro”) in the second trade mark does not detract from its similarity to the domain name (PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456.)
B. Rights or Legitimate Interests
The Complainants’ have established a prima facie case that the Respondent has no right or legitimate interest by demonstrating prior rights to the GLOBE TALK trade marks which were registered on January 15, 1997. This is in spite of the fact that the Complainants have provided no substantive evidence for their assertion that the GLOBE TALK trade marks ever had or have a significant reputation. In fact it appears based on the evidence that the Complainants made some limited use of their trade marks following application but there is no evidence of substantial use at that time nor to suggest that they have subsequently used their marks during the last 7 years. However recently, it appears that they have decided to launch a new campaign using the GLOBETALK marks.
The Respondent maintains that it has used the Disputed Domain Name for many years (since 1999) and did not learn of the Complainants’ trade marks until the Complainants’ representative contacted it in August 2006. In that the Complainants have failed to provide any substantive evidence of the use and renown of the GLOBE TALK and GLOBE TALK PRO trade marks in Australia, the Panel accepts that it is possible that the Respondent was indeed not aware of the Complainants’ interest until recently. Furthermore, it seems quite possible as asserted by the Respondent that it chose the Disputed Domain Name independently with a view to encouraging and furthering its programme of seminar activities. Had the Complainants been able to point to substantial use and renown of the GLOBETALK trade marks in 1999 then it may have been more difficult to draw this inference.
The Respondent alleges that its services are “not for profit” and are merely for the purpose of promoting life discussion seminars and that it had and has no intention of misleading consumers, or of tarnishing the Complainants’ trade marks. Although the Disputed Domain Name does not resolve to a website but rather hyperlinks to the “/globetalk” website, the services advertised at the “/globetalk” website are in no way similar to the services that the Complainants assert that they provide, or intend to provide using their GLOBE TALK trade marks.
If one of the provisions of Paragraph 4(c) of the Policy is satisfied then the Respondent is taken to have demonstrated rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c)(iii) permits the making of a legitimate, non commercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue. The Respondent asserts that its conduct falls within this section of the Policy.
The Complainants have provided no evidence to suggest that the Respondent’s use is other than non-commercial and for purposes unrelated to the Complainants’ business. The Respondent has used the Disputed Domain Name in this manner for approximately seven years without any complaint. Further the Complainants have failed to point to any substantial evidence of renown or use over that period which might indicate that the Respondent had sought to misleadingly divert the Complainants’ web traffic or to tarnish the GLOBETALK marks.
The Panel notes that the Complainants could have filed a Complaint at a much earlier point in time. Had the Complainants used their marks during that period they could have pointed to substantive evidence of reputation which would allow the Panel to infer the necessary element of intent. Having now failed to take issue for 7 years, in the Panel’s view, the Complainants cannot expect that just because they decide to launch a new campaign using their GLOBETALK marks, that the Respondent should be found to have no legitimate interest in the Disputed Domain Name even though it has been using that domain name for non-commercial purposes in a different field of activity throughout that period.
Accordingly, in the Panel’s view, the Complainants have not succeeded in demonstrating that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
As the Panel has found that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Name, it is not necessary for the Panel to consider this element of the Policy.
D. Reverse Domain Name Hijacking
In the circumstances of the Complainants’ ownership and demonstration of some limited initial use of the GLOBE TALK marks and the Respondent’s use of the Disputed Domain Name to link to its main website, the Panel is not prepared to go so far as to find that this is an attempt at reverse domain name hijacking.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Alistair Payne
Sole Panelist
Dated: December 5, 2006
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