WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vlaamse Media Maatschappij v. Barry van der Auwera
Case No. DTV2001-0022
1. The Parties
Complainant is Vlaamse Media Maatschappij, with its principal place of business in Vilvoorde (Medialaan 1, 1800), Belgium ("Complainant"). Complainant's authorised representatives are Tom Heremans and Karen Ongena of Allen & Overy, with offices in Brussels, Belgium.
Respondent is Barry Van Der Auwera , with his business address in Schilde (Eugeen van de Vellaan 30 A, 2970), Belgium ("Respondent"). Respondent�s authorised representative is Mr. Zak Muscovitch, with offices in Toronto, Canada.
2. The Domain Name and Registrar
The domain name at issue is ("the Domain Name").
The Registrar is The .tv Corporation International, 1100 Glendon Avenue, 8th Floor, Los Angeles, CA 90024, USA ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Complaint"), was filed electronically with the World Intellectual Property Organisation Arbitration and Mediation Center ("the WIPO Center") on August 31, 2001. The hard copy version of the Complaint was received on September 4, 2001. An Acknowledgement of Receipt was sent by e-mail by the Center to Complainant�s legal representatives and to Respondent�s email address on September 4, 2001.
On September 11, 2001, a Request for Registrar Verification was transmitted to the Registrar. On September 13, 2001, Complainant�s authorised representatives sent an e-mail to the Registrar, in which they stated that according to the information the Registrar had provided them the day before, the domain name had been transferred on September 5, 2001. Complainant�s representatives stated that, pursuant to article 8 (a) of the UDRP, the Registrar should cancel the transfer of the Domain Name which had occurred on September 5, 2001, as on that date these administrative proceedings were already pending. On September 19, 2001, the Registrar sent an e-mail to Mr. Jim Smith, to whom the Domain Name had been transferred on September 5, 2001, informing him that the transfer was void pursuant to paragraph 8(a) of the UDRP.
Later that same day, September 19, 2001, the Registrar informed the WIPO Center by e-mail that the Domain Name is registered with it and that Respondent is the current registrant of the Domain Name.
On September 20, 2001, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on October 10, 2001, by which Respondent could make a Response to the Complaint.
On September 21, 2001, Respondent sent an e-mail to the Registrar in which he argued that the cancellation of the transfer was unfounded. Summarising, the Respondent argued that on September 5, 2001, the date of the transfer, he was not yet aware of the fact that Complainant had filed a Complaint and that administrative proceedings were pending, and that he had not expected that Complainant would start proceedings, as it had filed the Complaint only days after indicating its willingness to settle. As far as the Panel can deduce from the file, the Registrar did not respond.
On October 9, 2001, Respondent sent an e-mail to the Center requesting an extension of the time given for the filing of the Reply. On the same day, the Center answered Respondent, giving Respondent a 10 day extension, setting the new deadline at October 20, 2001.
The Response was filed electronically with the Center on October 19, 2001. An Acknowledgement of Receipt of Response was sent by the Center on October 22, 2001. The hard copy of the Response was received on October 30, 2001.
On November 19, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
The following facts were either stated in the Complaint and were not contradicted (or not contradicted sufficiently) in the Response, or appear from the exhibits, that are attached to the Complaint and the Response.
Complainant was established in 1987, and has become one of Belgium�s most popular broadcasting companies. It operates two television channels that are family-oriented. In 2001 (the Complaint gives no indication of the exact date), Complainant set up a third television channel titled "JIM-TV"."JIM-TV" is part of a multi-media project, also being distributed through the internet. "JIM-TV" has become extremely popular among youngsters in the Dutch-speaking part of Belgium.
Complainant has applied for three Benelux trademarks, namely a word-mark "JIM-TV", filed on August 24, 2000, and the device marks "JIM.be" and "JIMtv", filed on March 2, 2001.
Respondent registered the Domain Name on July 19, 2001. The Registrar sent an invoice for USD 1,100 for the initial one year registration period. Shortly after, the Respondent started running a website under the Domain Name ("the Website") providing links to pornographic sites. In the period between July 24, 2001 and August 8, 2001 the Website attracted 2,339 visitors, the majority of which were from Belgium or the Netherlands (69,1 % from Belgium, 21 % from the Netherlands).
Early August 2001 (neither the Complaint nor the Response state when exactly), webmaster of "JIM-TV", acting on behalf of Complainant ("the Webmaster"), sent an e-mail to Respondent stating that the use of the Domain Name infringed Complainant�s trademark rights and requested that the pornographic links be removed from the Website. On the same day, Respondent replied and informed Complainant that if it had any interest to rent or buy the Domain Name, all interesting proposals would be taken into consideration. The Webmaster replied, and asked how much Respondent had paid (for registration costs) and what price Respondent had in mind. Respondent replied that the domain name was for rent for EUR 9,995 (excl. of taxes) per year. In his reply the Webmaster suggested the price was too high, and once again asked Respondent to remove the pornographic links as soon as possible, while he informed Respondent that he would submit the proposal to the Manager of the New Media Department of Complainant.
On August 7, 2001, the email correspondence intensified. The Webmaster once again requested Respondent to remove the pornographic links. Respondent replied on the same day that if Complainant wanted to decide what was shown on the Website, it should rent or buy the domain, and stating that the links were paid for by a company to which Respondent had to fulfil obligations. The Webmaster immediately replied that "JIM-TV" is a registered trademark and that Respondent was making money by using that tradmark, thus breaching applicable laws. By return email Respondent answered that he was not using the registered trademark JIM-TV, stating that he would not remove the links from the Website, unless a Court ordered him to do so. He stated that he too could play hard and could offer the Domain Name for sale or rent to anyone, that some people would be interested, and urged Complainant to decide quickly. Later that day, after a telephone conversation between Respondent and the Manager of the New Media Department of Complainant, Respondent informed Complainant that the porno-links had been removed and asked Complainant, for the last time, to make a proposal (to rent or buy the Domain Name). The next day, the Manager of the New Media Department of the Complainant sent a reply, in which apparently Respondent�s request was dismissed.
On August 8, 2001, Complainant�s authorised representatives sent a formal Cease and Desist Letter to Respondent. Respondent replied to this letter by e-mail of August 15, 2001, stating that the matter was being handled by its legal representative, who would look into the matter. No (recount of) further correspondence has been provided by the parties.
On September 5, 2001, after these proceedings had commenced, Respondent transferred the Domain Name to Mr. Jim Smith. The Registrar cancelled this transfer on September 19, 2001.
Currrently, the Website offers the public free web-based e-mail services (�.@). The word JIM is depicted as a logo in capital letters, and beneath the logo the meaning of this acronym is explained : "Jungle Internet Manager".
5. Parties� Contentions
a. Complainant
Complainant states that the domain name is identical to its word-mark JIM-TV and that it is confusingly similar to the device marks "JIM.be" and "JIMtv".
Complainant states that Respondent has no right to or legitimate interest in the domain name, given that Complainant has not licensed or otherwise permitted Respondent to use its trademarks in the domain name, that Respondent has never been commonly known under the Domain Name or has acquired any trademark of other rights to the Domain Name, and that the Respondent�s activities connected to the Domain Name were of an infringing nature.
Complainant states that Respondent has registered and used the Domain Name in bad faith, as the Belgian Respondent at the time of registration clearly knew of Complainant and Complainant�s activities and television channel, which were launched a few months before Respondent registered the domain name. From the statistics of the Website, it is clear that it was almost entirely visited by internet users from the Benelux region (who were looking for Complainant�s website). Complainant states that the internet users have been, and will continue to be misled into believing that the Domain Name is operated and registered by the Complainant or with its consent, and that the public, given the television channel�s fame, will reasonably expect to find an official JIM-TV website under the Domain Name. Complainant furthermore states that the registration and use of the domain name interferes with its business and activities, as it is unable to effectively and fully promote its trademarks and the television channel on the internet. Furthermore, Complainant states that Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion for commercial gain (which consists of attracting websurfers to paying pornographic websites). Finally, Complainant states that it is clear from the e-mail correspondence between Respondent and Complainant, that Respondent wanted to sell or rent the domain name to Complainant at the highest possible price.
b. Respondent
Respondent states that this is a case of attempted reverse domain hijacking. Respondent contends that Complainant decided not to acquire the Domain Name as it was too expensive, and waited until somebody else registered it, in order to commence an ICANN proceeding and attempt to seize the Domain Name in bad faith.
Respondent states that the Domain Name, which consists of three letters, is extremely generic and that he has never heard of Complainant and implies that the Domain Name was registered without any connection to the Complainant�s television channel and trademarks.
Respondent states the Domain Name is not confusingly similar or identical to Complainant�s trademarks. Respondent states that in assessing this question, only the element "jim"of the Domain Name should be compared to the trademarks, and that the suffix ".tv" should not be considered. As Complainant does not have a trademark "JIM" the Domain Name is not identical.
Respondent furthermore states that there can be no credible allegation of confusing similarity between Respondent�s trademark JIM-TV and the acronym "jim". The fact that Complainant has demonstrated that its trademark and the Domain Name share a single generic word in common is insufficient to create a confusing commercial impression.
Respondent contends that he has a legitimate interest in the Domain Name. If a domain name is generic, the first person to register it in good faith is entitled to the domain name, and generic and descriptive domain names should not be transferred to a Complainant just because a Complainant has a registered generic or descriptive trademark. Three letter domain names that have been the subject of ICANN complaints, have usually not been transferred, despite a prima facie similarity.
Respondent explains that he acquired the Domain Name as it was short, easy to remember and generic. Due to the price of the domain name (USD 1,100 for a single year of registration) Respondent hoped to recoup some of this registration fee through the provision of temporary advertising on the website (i.e., through placing the links to paying pornographic sites). It was the intention of Respondent to create his own personal website, and Respondent is a very experienced website developer.
On or about September 1, 2001, Mr. Jim Smith of Lewes, Delaware, USA, contacted Respondent and offered to purchase the Domain Name from Respondent for USD 1,500. Respondent agreed and the domain name was transferred on September 5, 2001. Mr. Smith then began using the domain in connection with the provision of e-mail services by his company, Jungle Internet Manager (JIM). Respondent states that despite the Registrar�s September 19, 2001, cancellation of the transfer, Mr. Smith continues to be the legal owner pursuant to the sales contract between Respondent and Mr. Smith. The current use of the Domain Name by Jim Smith must, according to Respondent, be considered in these proceedings as well.
Respondent states that he registered the domain name in good faith as it was short, easy to remember and generic. It was obtained in connection with Respondent�s computer and consulting business, as well as for non-commercial personal use and provision of e-mail services to friends and family. The initial use in connection with advertising was made because the registration of the domain name was expensive, and the advertising provided interim financing. Respondent submits that there can be no bad faith registration of a generic domain name. Respondent contends that Complainant has provided no evidence of his bad faith. Respondent offered to sell the domain name to Complainant as he had paid a considerable amount to acquire the domain name, and he therefore would not simply give it to Complainant. There is no evidence that Respondent intended to attract Complainant�s customers. Finally, Jim Smith is currently using the domain name in good faith.
Finally, Respondent states that the Complaint is unfounded and has been filed in bad faith. He invites the Panel to make a finding of reverse domain name hijacking in accordance with paragraph 15 (a) of the UDRP (Respondent probably means: paragraph 15 (a) of the Rules).
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant, to obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly similar to a trademark in which Complainant holds rights, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
a. Trademark Rights
Complainant has, in Annex 6 to the Complaint, provided sufficient evidence of its rights to the above mentioned trademarks. Although Complainant has only provided evidence of its application of these trademarks and no evidence of their registration has been provided, the panel finds that Complainant can rely on the trademark applications. As both Complainant and Respondent reside in Belgium, Benelux trademark law is relevant. Article 12A of the Benelux Trademark Act acknowledges that trademark rights may be invoked from the date the application was made. Furthermore, the trademarks are not generic or descriptive, so that it is not likely that the Benelux Trademark Office would refuse to register the trademarks, which would invalidate the trademarks.
As Respondent has not contested Complainant�s contentions that its trademarks are well known, the Panel will assume that the television channel and multi-media platform JIM-TV, and thus Complainant�s trademarks, are well known in the Benelux, or in any case in the Dutch-speaking part of Belgium, where both Complainant and Respondent reside.
b. Identical or confusingly similar
The Domain Name consists of a combination of the element "jim" and the element (suffix) ".tv", which indicates that the domain name has been registered in the .tv ccTLD.
The Panel finds that the Domain Name is confusingly similar to Complainant�s wordmark JIM-TV.
The Panel rejects Respondent�s argumentation that in relation to its domain name the suffix ".tv" should not be considered. Although technically speaking .tv is the country code top level domain for Tuvalu, it is primarily marketed to and used by companies which aim at the television watching public. Likewise, the relevant public in the Benelux will most likely read the suffix as the abbreviation of the word "television" and consider the domain name to refer to a broadcasting station or tv programme. Given the reputation of the television channel and multimedia platform JIM-TV, the public will no doubt believe that the Domain Name refers to Complainant�s television channel. The (Dutch speaking) Belgian public confronted with the Domain Name will expect the Domain Name to belong to, or be operated by Complainant.
The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant holds rights.
c. Rights or Legitimate Interests
Respondent has stated that he registered the Domain Name because it was short, generic and easy to remember, and that he intended to use it both for his computer and consulting business and non-commercially to provide friends and family with e-mail addresses. These statements however have not been substantiated by Respondent.
Firstly, there are thousands of short, generic and easy to remember domain names available (e.g. only in the .tv TLD, 26 x 26 x 26 = 17,576 three letter domains are possible, the majority of which have not been registered yet), and Respondent fails to explain why exactly this three-letter domain name was the name of his choice. This question is particularly relevant since the registration of the Domain Name was � as Respondent points out several times � considerably more expensive (USD 1,100) than the registration of many other three-letter, easy to remember domain names within or outside of the .tv TLD. He does not state that he conducts his computer and consulting business under the name JIM, that he intends to do so, or that his friends and family have any specific interest in e-mail addresses @.
Secondly, Respondent has provided no proof at all of use of or preparations to use the Domain Name either for his computer and consulting business, or to provide his friends and family with e-mail addresses.
Respondent has (actually) made a commercial use of the Domain Name by placing paid links to pornographic sites on the Website. In view of the facts that
(a) Respondent has not shown evidence of any own right (such as a trademark or tradename right, or being commonly known by a name) to the name "JIM"or to a corresponding name;
(b) Respondent at the time he started this use must have been aware of Complainant�s television channel JIM-TV (see further below under 6(d), second paragraph);
(c) the Website has attracted visitors almost exclusively from Belgium and the Netherlands, where Complainant�s television channel JIM-TVcan be received; and
(d) the Domain Name is confusingly similar to Complainant�s trademark.
Respondent�s (commercial) use of the Domain Name was not made in a bona fide offering of goods or services , but merely aimed to attract traffic by profiting from confusion among the public (paragraph 4(c)(iii) of the UDRP).
The Panel finds that it is not relevant whether or not Mr. Jim Smith has a right or legitimate interest in the Domain Name, since the Registrar has cancelled the transfer of the Domain Name to Mr. Smith as it violated paragraph 8(a) of the UDRP. The Panel remarks that Respondent�s contention in his e-mail to the Registrar of September 21, 2001, that on the day of the transfer (September 5, 2001) he was not aware of the Complaint, is contradicted by the fact that on September 4, 2001, the WIPO Center sent a copy of its e-mail acknowledging the receipt of the Complaint to Respondent at , the address Respondent repeatedly used in the correspondence with Complainant which preceded these proceedings.
The sale of the Domain Name to Mr. Jim Smith does not constitute a legitimate interest for Respondent, as Respondent was aware of the Complaint at the time of the transfer, and had been aware of Complainant�s rights to the Domain Name well before the time of transfer.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
d. Bad Faith
Paragraph 4(b)(i) of the UDRP states that circumstances indicating that a respondent has registered a domain name primarily for the purpose of selling or renting it to a complainant for valuable consideration in excess of respondent�s out-of-pocket costs directly related to the domain name shall be evidence of registration and use of a domain name in bad faith.
The Panel finds that these circumstances are present here. The television channel JIM-TV started broadcasting in 2001, before Respondent filed its domain name. Respondent has not denied that the channel quickly became very popular, that Respondent is also from the Dutch speaking part of Belgium and that Complainant is one of the most popular broadcasters in Belgium. Given these facts the Panel does not give credence to Respondent�s submission that it was unaware of (the existence of) Complainant�s tv channel JIM-TV when it filed the domain name. In view of this, Respondent�s alleged reason for linking its website to pornographic sites � i.e. to recoup its investment � apparently was based on its � as the website statistics show : correct � assumption that Belgian (and possibly Dutch) television viewers would be looking for the website in search of information on (programmes on) the JIM-TV channel. Furthermore, Respondent offered the Domain Name for rent at a price of EUR 9,995 (exclusive of taxes) per year, which is clearly in excess of Complainant�s documented out-of-pocket costs for registration of the Domain Name (USD 1,100 for the first year of registration). Moreover, the Panel has taken note of the fact that providing links to pornographic sites in some other cases under the UDRP has turned out to be part of a tactic of domain name squatters to put pressure on a trademark owner to buy a domain name.
The question, whether or not the purchase of and current use of the Domain Name by Mr. Jim Smith has been, respectively is being made in bad faith is not relevant here for the reasons explained above, under 6(c).
The Panel, therefore, concludes that there is sufficient evidence that Respondent's registration and use of the Domain Name have been made in bad faith.
7. Decision
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of theUDRP, the Panel orders the registration of the Domain Name be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: December 3, 2001
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