WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GM Communications Limited v. com, fma, Future Media Architects, Inc. Case No. D2009-0267 1. The Parties
The Complainant is GM Communications Limited of Channel Islands, United Kingdom of Great Britain and Northern Ireland represented by Page White & Farrer, United Kingdom of Great Britain and Northern Ireland.
The Respondent is com, fma, Future Media Architects, Inc. of Tortola British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland represented by Kenyon & Kenyon, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2009. On February 27, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 27, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 10, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2009. The Response was filed with the Center on March 31, 2009.
The Center appointed David Perkins as the sole panelist in this matter on April 8, 2009. 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 4.A. The Complainant
4.A.1 The Complainant, formerly known as Miki Tourist Company Limited, commenced doing business as a provider of travel services in the United Kingdom under the MIKI name and trademark in 1967 through an associated company, Miki Travel Agency.
4.A.2 From February 1, 1973 to March 31, 1988, the Complainant carried on that business also under the MIKI name and mark. The Complaint exhibits evidence of such use through a brochure (1984) and correspondence in 1980, 1982 and 1987 with The Association of British Travel Agents Ltd [ABTA] and the International Air Transport Association [IATA].
4.A.3 The Complainant changed to its current name on March 28, 1991 since when the MIKI name and mark has been continuously used by its exclusive licensee, Miki Travel Limited.
4.A.4 The Complainant is the proprietor of the following registered trademarks.
Country
Trademark No.
Trademark
Class(es)
Date of Application / Registration
European Union
CTM 2,212,066
MIKI
39
Registered August 5, 2002
European Union
CTM 2,211,811
MIKI and device
39
Registered January 20, 2003
Switzerland
488,116
MIKI
39
Registered August 17, 2001
Switzerland
488,127
Miki and device
39
Registered August 17, 2001
Hong Kong
12920/2001
MIKI
39
Registered May 8, 2001
Hong Kong
14037/2001
MIKI and device
39
Registered May 8, 2001
Japan
4,794,717
MIKI and device
39
Registered August, 13, 2004
Japan
3,042,586
MIKI WORLD
39
Registered May 31, 1995
Japan
3,042,585
MIKI
39
Registered May 31, 1995
Japan
3,106,340
MIKI World
42
Registered December 26, 1995
4.A.5 The domain name was registered by the Complainant's exclusive licensee, Miki Travel Limited, on November 4, 1997. That company was previously known as Travel Time London Limited but changed its name to Miki Travel Limited in March 1988 and has traded as such since then using the MIKI name and mark.
4.A.6 The Complaint exhibits extracts from the Miki Travel Limited website, which refer to it as “one of the largest and most experienced wholesale tour operators in Europe”, which has been in business for more than 30 years and which has a network of affiliated offices in Japan, China, Hong Kong, Malaysia, Thailand, Indonesia, the United Kingdom, France, Portugal, Switzerland, Germany, Ireland, Belgium, the Netherlands, Austria, Italy, Spain, Norway, Finland, Denmark, Hungary and the Czech Republic. 4.B. The Respondent
4.B.1 The disputed domain name was registered on October 2, 1998.
4.B.2 The Respondent, Future Media Architects, Inc (“FMA”), states that it is an Internet development company specializing in the development of its own Internet properties and technology, including numerous domains already being developed or presently being developed and FMA's new vanity email services. The Respondent is incorporated in Tortola in the British Virgin Islands.
4.B.3 Its founder and CEO, Thunauyan Khalid Al-Ghanim, states in a Declaration that the Respondent maintains over 100,000 domain names. He also states that the Respondent is not in the business of selling domain names and has never sold any of its domain names. He then describes the Respondent's business and this is best set out in the paragraphs from that Declaration set out below.
“4. Instead, FMA has been gradually developing its domain names into content-based websites and developing other business uses for the domain name extensions.
5. For example, FMA has developed such websites as: , , , , , , , , , , , and . FMA is currently developing a number of other sites, including , , , , and .
6. FMA also advertises some of its domain name properties through sponsorships and placements. For example, was a proud sponsor of the DR Groupe Sportequipe 360 Ferrari Challenge in 2002.
7. Many of FMA's domain names, including , previously resolved to FMA's Oxide search engine. However, FMA has since decided to refocus its development and continually reassesses and redevelops its web properties based on the ever-changing landscape of the Internet. For example, , one of FMA's first properties to be developed, is currently undergoing redesign.
8. Additionally, FMA is in the process of launching its next big development project, which will consist of providing “vanity” email address to people who want fun and creative novelty email addresses to supplement their current email addresses.
9. For example, through FMA's forthcoming service, a person could purchase such vanity email addresses as: “joe@”, “andrew@” or “jane@”.
10. FMA is working with its web developer to create the interface and logistical Infrastructure (e.g., billing and sign up) for its vanity email address project.
11. These development projects take a significant amount of time. Therefore, FMA cannot develop all of its domain names at once. Prior to active use of the domain names, a parked page holds the place of a website.
12. The links that appear on this parked page are not chosen by FMA. Rather a hosting service creates this content with a computer program.
13. I registered the domain name because based on my experience, four-letter domain names have a great deal of inherent value regardless of any potential association with any particular party. Four-letter domain names enjoy this significant value in large part because they are short and easy to remember.
14. Accordingly, FMA has regularly acquired as many unclaimed random four-letter domain names as possible. In doing so, FMA has been motivated solely by the desire to acquire and use available random four-letter domain names to market its websites and in furtherance of its business goals.”
4.B.4 Mr. Al-Ghanim then explains his plans for use of the disputed domain name in paragraphs 18 and 19 of that Declaration.
“18. In particular, FMA's plans for are two-fold. First, FMA is developing a site on MiKi toy dogs. Second, FMA intends to use the domain name as part of its vanity email program. This second use is particularly promising because the term “miki” is a very popular name, nickname, geographic location, and is the name of a popular breed of dog. This can be seen at . Therefore, “” should be very valuable as a vanity email address and appeals to at least these categories of people.
19. The present parked page is temporary and will be removed when the website has been finalized and ready to launch.”
4.B.5 There is then a Declaration from Andrew Tupper, the founder and Principal Creative Director of Kern & Lead Design Studio in New York. He states that Kern & Lead has since 2004 operated as a full-service agency providing its clients with project management starting at concept development and continuing through design and production. He goes on to say that Kern & Lead have been working with the Respondent for nearly a year to assist with web development and online business strategy. During that time it has developed and continues to develop numerous websites for the Respondent.
4.B.6 Mr. Tupper then explains that Kern & Lead are in the process of developing a website using the disputed domain name, which will feature the Miki toy dogs referred to by Mr. Al-Ghanim in paragraph 4.B.4 above. Exhibited to his Declaration are development sketches for that website, which he says is ready to launch. That exhibit pictures Miki dogs and provides information about the breed, including its origin, dietary requirements and training. The Mi-Ki is a breed which first appeared in the United States in the 1980's and is a cross between various Asian breeds, for example the Papillion, the Maltese and the Shih Tsu.
4.B.7 As to the vanity email program referred to by Mr. Al-Ghanim, Mr. Tupper says:
“Kern & lead is also involved in developing Future Media Architect's vanity email enterprise”. 5. Parties' Contentions 5.A. The Complainant
5.A.1 The Complainant says that the MIKI name and mark has been in use for over 40 years, commencing in 1967 in the United Kingdom and in Japan in relation to the provision of travel services. In the context of the level and breadth of its operations as to which, see paragraph 4.A.6 above the Complainant maintains that its MIKI trademark enjoys a significant reputation in connection with travel services and has developed goodwill in the MIKI trademark in relation to such services. Put shortly, the Complainant says that the name and mark MIKI has come to be associated with it in connection with travel services and that the Complainant enjoys a significant reputation in the MIKI mark.
5.A.2 Additionally, the Complainant is the proprietor of registered trademarks for MIKI in a number of countries, the earliest registrations dating back to those in Japan registered on May 31, 1995 see, paragraph 4.A.4.
5.A.3 The Complainant's case is that the operative part of the disputed name is identical with its MIKI registered trademark listed in paragraph 4.A.4 above and its unregistered trademark rights in MIKI asserted in paragraph 5.A.1 above. Complainant further says that the disputed domain name is confusingly similar to its MIKI and device registrations also listed in paragraph 4.A.4.
5.A.4 As to rights or legitimate interests, the Complainant says that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply. Indeed, the Complainant points to use of the disputed domain name in a parking website. That website in turn links to websites which provide hotel accommodation, air travel and car rental worldwide. This, the Complainant says, is neither a legitimate noncommercial or fair use of the disputed domain name, those being precisely the services which the Complainant has provided for over 40 years under the MIKI name and mark. It evidences, says the Complainant, the Respondent's intent to misleadingly divert consumers and to trade off the Complainant's reputation in the MIKI mark and thereby to tarnish that mark.
5.A.5 As to registration and use in bad faith, the Complainant says that given the extensive use, reputation and distinctive character of its MIKI trademark in relation to the provision of travel services, it can be assumed that the Respondent had actual or, at least, constructive notice of its rights in the MIKI trademark when the disputed domain name was registered in October 1998. That registration also post dates registration of MIKI as a trademark in Japan (1995) and registration by the Complainant's exclusive licensee of in November 1997. Hence, the Complainant asserts that the disputed domain name was registered in bad faith.
5.A.6 As to use in bad faith, the Complainant refers to the fact that it resolves to a parking website which offers, inter alia, competing travel services to its own business which has been operating under the MIKI name for over 40 years. The Complainant says that this demonstrates circumstances under paragraphs 4(b)(ii) and (iv) of the Policy.
5.A.7 The Complainant also points to the fact that the parking website also links to services with which it (the Complainant) does not wish to be associated, for example “Russian Women”, “Russian Wife” and “Make Love” and which will tarnish its MIKI trademarks and damage its goodwill and reputation in that mark.
5.A.8 Finally, the Complainant refers to the Respondent being a Respondent in a number of administrative actions brought under the Policy, including QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,WIPO Case No. D2003-0921, and concludes from that that the Respondent appears to be engaged in a pattern of conduct of the type characterized in paragraph 4(b)(ii) of the Policy.
5.A.9 The QNX Case, supra, was brought by QNX Software Systems Ltd against FMA and Mr. Al-Ghanim. The disputed domain name was and the Complainant was the proprietor of registered trademarks for QNX for its computer operating system, software and related goods and services. The disputed domain name resolved to a website entitled , which invited visitors to search for mp3 files through that site and the Respondents stated that they were committed to creating an online community for individuals with varied musical interests. The Respondents also said that the disputed domain name was also used as a simple 3 letter combination for the purpose of promoting FMA's Oxide Search website. The Respondents also explained that the disputed domain name was one of a batch of 500 .info domains, all of which were acquired to promote the website. The Panel, with one panelist dissenting, transferred the disputed domain name to the Complainant, QNX Software Systems. 5.B. The Respondent 5.B.1 The MIKI trademark
5.B.1.1 The Respondent's case is that the Complainant is not the only entity using the name and mark MIKI and, hence, does not have exclusive rights to that mark. In that respect, the Response exhibits extracts from three websites. First, Miki Tours “” and “” advertising safari holidays in Kenya, the domain name being created in May 2006 and the domain name being created in June 2007, the registrant of the former being Miki Tours Ltd of Nairobi, Kenya. Second, Miki Travel Agency “” created in September 1998 advertising holidays in Costa Rica, the registrant being located in Costa Rica and claiming to have been offering the services of a tour operator and travel agency since 1975. Third, Miki's New York Travelers, Inc, a travel agency specializing in meeting the needs of Japanese visitors to New York which appears to have been established in 1988 but which is currently inactive.
5.B.1.2 The Respondent then exhibits evidence of some 374 applications and trademarks registered internationally, including in Japan, the European Community, the United Kingdom and the United States which incorporate the term “miki”. The Respondent points in particular to MIKI PULLEY registered in the United States since 1959 and MIKI LIGHT registered in Japan since 1957. The Panel notes in this respect that neither registration is for Class 39 but that there are two registrations in Class 39 in the list of exhibits, namely M MIKI CORPORATION KABUSHIKI GAISHA MIKI registered to Miki Corporation in Japan and MIKI AGENCY INC also registered to Miki Corporation in Japan.
5.B.1.3 The Respondent also points to other entities, unrelated to the Complainant, which use the name Miki. For example, Miki Corporation (jewelry), Paris Miki, Inc (optical goods) and Miki Shoko Co Ltd trading as MIKI HOUSE (children's clothes)
5.B.1.4 Finally, the Respondent exhibits evidence from Wikipedia that “Miki” is a common name in Japan and for people of Japanese descent. It is also a term used for geographic areas, for example Miki in Hyogo Prefecture and Miki in Kagawa Prefecture, Japan.
5.B.1.5 The Respondent also points to the fact that all but three of the Complainant's MIKI registered trademarks post date creation of the disputed domain name in 1998. Those are the three Japanese registrations listed in paragraph 4.A.4 above. The Respondent asserts that the 1995 registrations for MIKI in Class 39 is for use in connection with “transportation and storage not for the travel industry services in respect of which the Complainant says it has a reputation in the MIKI mark services”. However, the Panel notes that the services for which Japanese trademark 3,042,585 MIKI is registered in Class 39 appear to be for “Tour conducting; Tour conducting or escorting; Travel agencies or liaison services (excluding those for lodging)”. 5.B.2 Identical or Confusing Similar
5.B.2.1 As to identical, the Respondent's case is that none of the Complainant's 10 registered MIKI trademarks are an exact match to the disputed domain name.
5.B.2.2 As to confusing similarity, the Respondent says that in the light of the very many MIKI names and marks owned and used by other entities – see, Section 5.B.1 above - the Complainant cannot claim common law / unregistered rights in MIKI. Further, because “Miki” is generic and commonly used, there can be no confusing similarity between the disputed domain name and the Complainant's MIKI trademark (registered or unregistered).
5.B.2.3 This, the Respondent says, is even more the case when it is appreciated that other parties not connected to the Complainant use the name Miki in relation to the provision of travel services. For example, the Miki Tours, Miki Tours Agency and Miki's New York Travelers businesses identified in paragraph 5.B.1.1 above. To that the Respondent says should be added the 374 trademark applications and registrations and the generic meaning of “Miki” in the Japanese language, respectively paragraphs 5.B.1.2 and 5.B.1.4 above. The Respondent then goes on to suggest that the Complainant's choice of the MIKI mark must have been influenced by its Japanese connotations. In that respect, it exhibits an extract from the website of the Complainant's affiliated office in Japan, where the Managing Director of Miki Tourist states:
“In 1967, three years after overseas travel by Japanese citizens was liberalized, our company was established in London, with the aim of providing ‘travel services by Japanese people for Japanese people'”.
5.B.2.4 In addition to generic nature of “Miki” identified in paragraph 5.B.1.4 above, the Respondent also refers to Miki meaning “small” in the Inuit language and being a popular name in Greenland for both sexes. According to Wikipedia, Toy Miki is also a nickname for a particular type of mixed-breed dog. In that context, the Respondent refers to the intended use of the disputed domain name see, paragraphs 4.B.4 and 4.B.6 above.
5.B.2.5 Still further, the Respondent exhibits the result of a Google Search of the term “miki". This lists a string of users unconnected to the Complainant, whose websites do not even appear in the first ten pages of the Google Search results. The search produces numerous references to the dog breed and also a reference to the Japanese City of Hyogo Prefecture (referred to in paragraph 5.B.1.4 above).
5.B.2.6 The Respondent also exhibits a search under “miki” in the United States business telephone directory, which identifies 113 businesses using that name. In that respect, the Panel notes that none of those businesses are listed as providing travel services, except for MIKI New York Travelers which appears to be no longer trading (see, paragraph 5.B.1.1 above).
5.B.2.7 In sum, the Respondent's case is that since all these “miki” businesses co-exist with the Complainant without confusion, there can be no confusing similarity between the disputed domain name and the Complainant's MIKI trademark. 5.B.3 Rights or Legitimate Interests
5.B.3.1 As to paragraph 4(c)(ii) of the Policy, the Respondent concedes that it is not commonly known by the domain name. Nor, however, the Respondent says can the Complainant demonstrate that it is commonly known by the MIKI name and mark, given the generic nature of that mark and its use by a multitude of totally unconnected businesses.
5.B.3.2 As to paragraph 4(c)(i) of the Policy, the Respondent points to the Declarations from Messrs Al-Ghanim and Tupper in relation to its planned website for Miki toy dogs see paragraphs 4.B.4 and 4.B.6 above.
5.B.3.3 In that respect, the Respondent also points to similar fact evidence. Namely, its developed web properties which include ; ; ; ; ; ; ; ; ; ; ; and as well as sites currently under development which include ; ; ; ; ; and a redesign for .
5.B.3.4 The Respondent further relies on its bona fide intention to use the disputed domain name as part of a vanity email programme, currently being advertised on its “” and “” websites. Such use, the Respondent says, could be attractive to owners or fans of the Miki dog, those with a connection to the Miki locations in Japan and those named Miki. The Respondent contends that such use of a domain name is a legitimate use for the purposes of the Policy and cites two decisions, Empresa Municipal Promocion Madrid S.A. v. Easylink Services Corporation,WIPO Case No. D2002-1110 and Sallie Mae, Inc v. Michele Dinoia,WIPO Case No. D2004-0648.
5.B.3.5 In the circumstances, the Respondent's case is that before receiving any notice of this dispute, it had undertaken demonstrable preparations to use the disputed domain name in connection with bona fide offering of services through both the planned Miki dog website and use in its upcoming vanity email programme.
5.B.3.6 As to paragraph 4(c)(iii) of the Policy, the Respondent explains that when the disputed domain name is “parked” as it currently is the Respondent has no control over the websites to which it links. Those links are chosen by the hosting service, not the Respondent. However, once the Miki dog website is ready to launch, the disputed domain name will be removed from its present parked site for use for that new website.
5.B.3.7 Furthermore, the disputed domain name has also in the past been directed to the Respondent's “” website, which did not link to travel services competing with those provided by the Complainant.
5.B.3.8 The fact that the owner of a domain name operated by a hosting service does not have control over the content of the websites to which it links has, the Respondent says, been recognized. The Respondent cites in that connection Experimental Aircraft Association (EAA) v. EAA.COM, NAF Claim No. 206309.
In that case, the Panel held
“It is the finding of this Panel that the brief appearance of aviation links on Respondent's websites was automatically provided by a pay-per-click search engine provider and was not intended by Respondent.”
5.B.3.9 Furthermore, use of a domain name to redirect traffic is not an illegitimate use under the Policy. The Respondent cites four decisions under the Policy which endorse that position. First, Ace Cash Express, Inc v. R9 DomainGuardProxy Service, NAF Claim No. 1095275. The Complainant was the proprietor of a US trademark for ACE for financial services. The disputed domain name resolved to a website offering advertising, a generic directory and email hosting, none of which activities competed with the Complainant's business. Rejecting the Complaint, the Panel said in relation to “Rights or Legitimate Interests”
“Because the disputed domain name uses a common term, the fact that it redirects Internet users to other third-party websites is not a per se illegitimate use by [the] Respondent.”
5.B.3.10 Second, Target brands Inc v. Eastwind Group, NAF Claim No. 267475. The Complainant's licensee operated a chain of discount department stores under the Complainant's registered TARGET trademark. The disputed domain name resolved to a website offering links to shopping sites selling products one might expect to be sold at the Complainant's TARGET stores. The Complaint was dismissed for failure to meet the requirements of both paragraph 4(a)(ii) and (iii) of the Policy.
5.B.3.11 Third, Mess Enterprises v. Scott Enterprises Ltd.,WIPO Case No. D2004-0964. The Complainant owned a US registered service mark for in Class 41 for providing information in the field of entertainment services and in Class 42 for certain computer services. The disputed domain name was identical and was used to post third party pay-per-click advertising links under an affiliate agreement with a division of Yahoo. The Complaint was rejected under paragraph 4(a)(iii) of the Policy and no findings was made in relation to “Rights or Legitimate Interests” under paragraph 4(a)(ii) of the Policy.
5.B.3.12 Fourth, The Knot Inc v. Ali Aziz,WIPO Case No. D2007-1006. The Complainant operated a well-known wedding information website trading under the name “The Knot” for which it had a US trademark. The disputed domain name provided click-through links to competing websites providing information on wedding preparations. The Complaint was denied on a split Panel decision, the majority finding no bad faith registration and use. However, the Panel unanimously held lack of rights or legitimate interests on the basis that the Respondent had not provided any evidence of a demonstrable preparation to use the disputed domain name for a bona fide offering of goods or services.
5.B.3.13 In sum, the Respondent's case on this requirement of the Policy is threefold. First, the existing use of the disputed domain name as a parked domain name is a bona fide use of that domain name. Second and third, before notice of this Complaint, the Respondent had made demonstrable preparations to use the disputed domain name for a Miki dog website and also for its vanity email programme. Hence, the Respondent asserts that on the facts presented in the Response it has demonstrated circumstances under paragraphs 4(c)(i) and (iii) of the Policy. 5.C. Registered and Used in bad Faith
5.C.1 The Respondent points to the fact that the disputed domain name was registered in October 1998, over 10 years before this Complaint was brought. The Respondent's business is explained in Mr. Al-Ghanim's Declaration [see, paragraph 4.B above]. The Respondent submits that its business is entirely legitimate. It is not in the business of selling domain names and it has never offered to sell the disputed domain name to the Complainant or to any other party. The Respondent says that registration of MIKI as the disputed domain name, which it has demonstrated to be a generic term, was in good faith and without any prior knowledge of the Complainant. Accordingly, the Respondent submits that its activities are neither those of a typosquatter nor a cybersquatter at whom the Policy is directed.
5.C.2 As to the Complainant's reference to the Respondent's involvement in other cases under the Policy, the Respondent explains that the Decision in the QNX Case, supra, referred to in paragraph 4.A above was appealed to the US Court for the Eastern District of Virginia (Civ. Act No. 04-264) as a result of which the Respondent continues to own the domain name.
5.C.3 The Respondent then cites 5 decisions under the Policy where it succeeded in having each Complaint against it dismissed by the Panel. They are:
- YIT Corporation v. Future Media Associations Inc.,WIPO Case No. D2007-0588, involving the Complainant's YIT registered trademark versus the disputed domain names and . The Complaint was denied for the Complainant's failure to satisfy the registration in bad faith requirement of paragraph 4(a)(iii) of the Policy.
- BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse A.G. v. Future Media Architects, Inc.,WIPO Case No. D2006-0534, involving the Complainant's registered P.S.K. trademark versus the disputed domain name . Having found that the Respondent lacked rights or legitimate interests in the disputed domain name, by a majority decision the Complaint was denied for the Complainant's failure to satisfy the bad faith requirements of paragraph 4(a)(iii) of the Policy.
- Kiwi European Holdings B.V. v. Future Media Architects, Inc,WIPO Case No. D2004-0848, involving the Complainant's registered KIWI trademark used for shoe care and household products versus the disputed domain name , which the Respondent used to promote its search engine. The Complaint was denied for the Complainant's failure to meet the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
- Equifax, Inc v. Future Media Architects, Inc., NAF Claim No. 1195133, involving the registered service mark EFX used in relation to the Complainant's business of providing credit information to both individuals and businesses versus the disputed domain name , which the Respondent used to promote its website. That website provided links to six companies (including the Complainant) providing credit reports of the type produced by the Complainant. The Respondent stated that, with assistance from Kern & Lead, it was developing the disputed domain name into a website to be devoted to sound and visual effects in children's toys. No finding was made on “Rights or Legitimate Interests” which the Panel described as “a complex question” but the Complaint was denied for failure to satisfy the bad faith registration requirement of paragraph 4(a)(iii) of the Policy.
- Viacom International Inc v. Future Media Architects, Inc.,WIPO Case No. D2008-1833], involving the Complainant's registered JACKASS trademark in Classes 41 (entertainment services) and 22 & 39 (clothing), which was used in connection with its television show JACKASS and later in connection with two movies “Jackass: the movie” and “Jackass: Number Two”. The Respondent owned a US registered trademark for JACKASS in Class 42 (computer services) and was using the disputed domain name directed to a website containing third party pay-per-click advertisements. However, the Respondent asserted that it intended to use the disputed domain name for a website dealing with donkeys, their uses and their contribution to society.
Because in this case the Respondent had the US JACKASS registered trademark covering search engines, this was in the Panelist's view “enough to tip the finely balanced scales in the Respondent's favour” on Rights or Legitimate Interests. Accordingly, the Complaint was denied for failure to meet the requirement of paragraph 4(a)(ii) of the Policy. No finding was made in relation to bad faith registration or use.
5.C.4 The Respondent explains that four letter domain names are short and easy to remember and for those reasons are valuable. The Respondent says that in acquiring the disputed domain name and similar domain names it has been motivated solely by the desire to acquire and use available four letter names to market its online business. In this case, the Respondent says that it had never heard of the Complainant or its use of the MIKI mark at the date when it acquired the disputed domain name (date not given) or prior to the date when this Complaint was filed. In the circumstances, the Respondent says there is no evidence of bad faith registration. The Panel observes that somewhat confusingly Mr. Al-Ghanim refers to having “registered”, not “acquired”, the disputed domain name (paragraph 13 of his Declaration) but the Response refers to the domain name being “acquired”.
5.C.5 As to bad faith use, the Respondent repeats that the linkage to websites from the parked page to which the disputed domain name resolves is not controlled by it [see, paragraph 5.B.3.6 above] and says that, had the Complainant notified the Respondent of its disapproval with objectionable links, the Respondent would have instructed the hosting service to remove such links and thereby purge any suggestion of bad faith use: see, General Media Communications, Inc v. Crazy Troll c/o Crazy T, NAF Claim No. 651676.
5.C.6 The Respondent contends that the Complainant's assertion that circumstances under paragraph 4(b)(ii) exist on the facts of this case is unsustainable. There is simply, the Respondent says, no evidence to support the proposition that it acquired the disputed domain name to prevent the Complainant from reflecting its MIKI trademark in a corresponding domain name. As to the Complainant's suggestion that a “pattern of conduct” should be found based on the QNX Case, supra [See, paragraphs 5.A.9 and 5.C.2 above] the Respondent says that it is utterly without merit. The Respondent says that the decision under the Policy [WIPO Case No. D2003-0921] was “ultimately overturned in a United States District Court proceeding”. In that respect, the Panel notes that the Response does not exhibit any such judgment, merely an Order for Dismissal dated September 15, 2004 whereunder, by consent of the parties, “the complaint, counterclaim and first amended counterclaim” were “dismissed with prejudice”.
5.C.7 Further, the Complainant's decade long delay in asserting its claim is, the Respondent says, a factor which militates against any inference of bad faith registration or use. 6. Reverse Domain Name Hijacking
The Respondent's case is that, based on the evidence, a holding of reverse domain name hijacking should be made against the Complainant. Specifically, the Respondent relies upon (1) the non-exclusive rights to the MIKI mark owned by the Complainant and the consequent lack of any confusing similarity of the disputed domain name with that mark; (2) the decade long delay in the filing of the Complaint; (3) the Complainant's attempt to mislead the Panel into believing it has trade mark rights in MIKI which predate registration in October 1998 of the disputed domain name, whereas all but one were registered after that date; and (4) the Complainant's false suggestion that the Respondent is a serial cybersquatter based on the QNX Case. In this respect, the Respondent cites Golding International, Inc v. Gold Line,WIPO Case No. D2000-1151 and SMART DESIGN LLC v. CAROLYN HUGHES,WIPO Case No. D2000-0993. 7. Discussion and Findings
7.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
7.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
7.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
7.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. 7.5 Identical or Confusingly Similar
7.5.1 The Complainant has established that it has registered trademark rights in the word “miki”, the earliest dating from 1995 in Japan.
7.5.2 The Complainant has also established that it, through its predecessor companies, has been in the business of providing travel services since 1967 under and by reference to the name MIKI. While, doubtless in the field of travel services, the Complainant and its affiliated offices has established reputation and goodwill in the MIKI name and mark, the Panel does not find that on the evidence provided in the Complaint the mark can be said to qualify as a well-known mark. This is particularly the case having regard to numerous third party trademark applications and registrations for marks incorporating MIKI [paragraphs 5.B.1.2], the fact that for some years three other entities have been operating in the same field using the MIKI name [paragraph 5.B.1.1 above] and to the various generic meaning of the word [paragraph 5.B.1.4 above].
7.5.3 Nevertheless, the fact remains that the Complainant has demonstrated rights in MIKI as a trademark for the purposes of paragraph 4(a)(i) of the Policy.
7.5.4 Further, the relevant portion of the disputed domain name namely, “miki” is identical to the Complainant's MIKI trademark.
7.5.5 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. 7.6 Rights or Legitimate Interests
7.6.1 The issues to be addressed are whether the Respondent can bring itself within paragraphs 4(c)(i) and (iii) of the Policy, but primarily within 4(c)(i). That, in turn, involves consideration of three issues of fact.
7.6.2 The first is whether use of the disputed domain name parked with a hosting service to provide links to third party websites, which include links to the same field of activity as the Complainant, can be said to be a bona fide offering of goods or services.
7.6.3 In that respect, there is no issue that a business of the type which Mr. Al-Ghanim describes is not per se objectionable under the Policy. However, where an entity registers and acquires multiple domain names – Mr. Al-Ghanim explains that the Respondent has over 100,000 domain names –and it focuses on valuable four letter domain names, the onus is clearly on that business to satisfy itself that such domain names are available, in the sense that they will not be identical or confusingly similar to existing third party trademarks. Where registered trademarks are concerned, it is not a matter of great difficulty or expense to search the Registers in major jurisdictions, such as the United States, the European Union's Community Trade Mark and Japan.
7.6.4 Clearly, use of a domain name will be neither bona fide nor fair for the purposes of the Policy if it conflicts with established third party trademark rights and the user of the domain name has taken no, or no adequate, steps to check availability of the domain name in advance.
7.6.5 What then is the position in this case? The Respondent says that it desires to acquire and use “available random four-letter domain names” but gives no indication of the steps it takes to ensure “availability”.
7.6.6 The fact that the owner of the domain name parked with a hosting service has no control over the choice of the website links for which his domain name is used has the consequence that it puts the owner on risk that such use may include a field of use where there are third party trademark rights. Put shortly, in such a situation the domain name owner cannot assert bona fide of the disputed domain name on the basis that “I don't have any control over the use”. See, Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093.
7.6.7 The Respondent does not say how long the disputed domain name has been parked with the present hosting service but we are told that, previously, it resolved to the Respondent's own OXIDE search engine in 2004. Also, relevant to the bona fides of these existing uses is the fact that for very many years, no issue was raised by Complainant in relation to the existence and/or use of the disputed domain name.
7.6.8 Yet another factor going to the bona fides of the present use of the disputed domain name is the fact amply demonstrated by the Respondent's evidence that the Complainant does not by any means enjoy exclusive rights in the MIKI name or mark, even in its own field of business: see, paragraph 5.B.1.1 above. Furthermore, the word “Miki” has generic uses, for example, as a name, a nickname, a geographical name, a breed of toy dog, and it is also used by a variety of different businesses; see, paragraphs 5.B.1.2, 5.B.1.3, 5.B.2.5 and 5.B.2.6.
7.6.9 This case is not in the category one often sees in Complaints under the Policy, where the disputed domain is linked to sites which clearly compete with the Complainant trademark owner in such a way as obviously to trade on the reputation of that trademark and, consequently, not to qualify as bona fide or fair use. Here, the links on the hosting service website are not in that category. The links to websites providing hotel accommodation, air travel and car rental are only some among others totally unconnected with the Complainant's business, such as games, photos, chat, Russian Women, SMS Gratuit etc. It is, certainly, borderline but not, in the Panel's opinion, necessarily use of a type such as would clearly disqualify the Respondent from asserting that it is bona fide and/or fair.
7.6.10 The second fact issue revolves around the intended use of the disputed domain name for a website devoted to Miki Toy dogs, see paragraphs 4.B.4 and 4.B.6 above. In essence, this is in the same category of intended use proposed by the Respondent in the Viacom Case, supra see, paragraph 5.C.3 above. The Policy provides no means for testing the credibility of the “demonstrable preparations to use” the disputed domain name but the Respondent has provided signed Declarations from Mr. Al-Ghanim and Mr. Tupper and those Declarations stand unchallenged.
7.6.11 The third fact issue revolves around the intended use of the disputed domain name in the Respondent's planned vanity email programme. Again, there is Mr. Al-Ghanim's Declaration of this intention (see, paragraph 4.B.3 above) and the statement from Mr. Tupper quoted in paragraph 4.B.7 above, neither of which have been challenged.
7.6.12 In the circumstances, the Complainant fails on the provided record to show that the Respondent has no rights or legitimate interests in the disputed domain name. On balance, the prior and existing uses of that domain name, first as a link to the Respondent's Oxide Search engine and currently to the parking website qualify as bona fide uses, as with the intended use for a Miki toy dog website and as part of the Respondent's planned vanity email programme are sufficient to tip the finely balanced scale in Respondent's favour. 7.7 Registered and Used in Bad Faith
7.7.1 It is unnecessary in the light of the Panel's finding in relation to paragraph 4(a)(ii) of the Policy to go into the bad faith issue.
However, Mr. Al-Ghanim does say in paragraph 16 of his Declaration:
“Up until the moment FMA received the Complaint in this matter, neither I, nor anyone associated with FMA, had ever heard of GM Communications. Neither I nor anyone associated with FMA had ever heard of its Miki Travel companies either.”
7.7.2 As against that, there is no evidence of what, if any, steps were taken by the Respondent to conduct a trademark clearance check on MIKI before it was either registered or acquired (whatever the case may be in that respect see, paragraph 5.C.4 above). When registering or using a domain name a Respondent cannot simply escape potential culpability for bad faith registration and use based on closing his eyes to whether there may, or may not, be conflicting trademark rights. However, the position here is that the Complainant apparently has quite limited exclusivity for its MIKI trademark and the other uses of that name and mark (see, paragraph 5.B.1 above) are so widespread and numerous as to negate a finding of bad faith registration on the facts of this particular case.
7.7.3 However, this Panelist comes away from the Response and the Declarations filed with it with the same sentiment as the Panelist in the Viacom Case, supra (see, paragraph 5.C.3 above) where, having found that Viacom's Complaint failed under paragraph 4(a)(ii) of the Policy, the panelist concluded:
“That is not to say that the Panel has been satisfied by all aspects of the Respondent's case, or that the Panel believes it has necessarily been told the whole of the story, or indeed that if the current apparent steps taken towards providing search-related services were to be replaced with a clearly abusive use, the matter would be precluded from future examination. But at the end of the day, the onus of proof in these proceedings is on the Complainant.” 8. Reverse Domain Name Hijacking
8.1 This case is nowhere near the threshold for a finding of reverse domain name hijacking. Although the Panel has rejected the case under paragraphs 4(a)(ii) and (iii) of the Policy, the case is in the Panel's view somewhat finely balanced. The bluster and indignation expressed in the Response does not change that view.
8.2 Finally, the Panel cautions against parties citing decisions under the Policy for propositions which they do not entirely establish or in a loose way. It is burdensome to the Panel and does not assist the party concerned. 9. Decision
For all the foregoing reasons, the Complaint is denied.
David Perkins
Sole Panelist
Dated: April 28, 2009
Full & Egal Universal Law Academy