19th Aug 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Inc. v. Anutarapun Pugdechat
Case No. DBIZ2002-00217
- The Parties
1.1 The Complainant is TIME INC., of 1271 Avenue of the Americas, New York, NY 10020, United States of America.
1.2 The Respondent is Anutarapun Pugdechat of 89/159 Prachanivate 1 Chatujak Bangkok 10900, Thailand. The Respondents address as it appears in the complaint is 703 Cooper Square Cir 207, Arlington, TX 76013, United States of America.
- The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <fortune.biz> ("Disputed Domain"). The Registrar of the Disputed Domain at the date of the Complaint is Gal Communications Ltd of POB 4602, Lezion, 75103, Israel.
- Procedural History
3.1 The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by Neulevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by Neulevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") via e-mail on April 28, 2002 and in hardcopy on May 2, 2002. The Center acknowledged receipt of the complaint by e-mail on May 10, 2002.
3.3 The Respondent on May 7, 2002, sent an e-mail (resent on May 13, 2002, and on June 4, 2002) advising the Center that the Respondent’s new address was 89/159 Prachanivate 1 Chatujak Bangkok 10900 Thailand. The Center acknowledged the Respondent’s change of address by e-mail on June 7, 2002.
3.4 The Center advised the Complainant on May 29, 2002, that the mutual jurisdiction as set out in the original complaint was incorrect. The Center advised that an amended complaint needed to be filed to reflect that the registrar was Gal Communications Ltd., an Israeli based Internet Service and not Global Media Online as referred to in the Complaint.
3.5 An amendment to the complaint was received by e-mail on June 17, 2002, and in hardcopy on July 1, 2002.
3.6 The Center sent the Notification of STOP Complaint (including amendment to the complaint) and Commencement of Administrative Proceeding on July 4, 2002, to the Respondent via e-mail (without attachments) and on July 4, 2002, by courier (with enclosures), and to the Complainant via e-mail without attachments. The Center sent a copy of the Complaint (without attachments) on July 4, 2002, via email, to the ICANN and the Registrar.
3.7 In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of STOP, the STOP Rules and the WIPO Supplemental STOP Rules. Payment in the required amount to the Center has been made by the Complainant.
3.8 The language of the agreement between the Respondent and the Registrar for the registration of the Disputed Domain ("Registration Agreement") is English. On July 24, 2002 (e-mail version), and July 30, 2002 (hard-copy), the Center received a response from the Respondent.
3.9 On July 25, 2002, the Center acknowledged receipt of the Response by e-mail.
3.10 Pursuant to 6(c) of the STOP Rules, the Center notified the Complainant and the Respondent on August 5, 2002, via email of the appointment of the Administrative Panel and that, pursuant to paragraph 7 of the STOP Rules, the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
3.11 The Center sent a Transmission of Case File to the Panel by email on August 5, 2002. The documentation was received in hard copy by the Panel in Sydney, Australia on August 9, 2002.
3.12 All other procedural requirements appear to have been satisfied.
- Factual Background
Activities of the Complainant
4.1 The following is asserted as fact in the Complaint:
4.2 The Complainant is part of AOL Time Warner Group, an internationally renowned company specializing in, inter alia, the media, entertainment and communications. The AOL Time Warner Brands include Time magazine which was founded in 1923. Time Inc publishes over 64 magazines with a total of 268 readers. The company is seeking opportunities to build its brands in an online environment.
4.3 TIME Inc publishes over 64 magazines with a total of 268 readers. Among the publications of TIME Inc., is the financial magazine and online system ‘Fortune’. ‘Fortune’ magazine was launched in 1930. In 2000, ‘Fortune’ launched ‘Fortune E50’ Index and ‘ecompany Now’ magazine which gives definite guides to the Internet economy. ‘Fortune’ magazines list the 500 largest companies in America providing information on Wall Street, Brokers, Investment, Technology and Careers within the Finance Industry. In the last 6 years ‘Fortune’ has held the top magazine spot on <adweek.com.au> Hot List.
The Complainant’s trademarks
4.4 The following is also asserted as fact in the Complaint:
4.5 On November 23, 1954, the Complainant filed its first trademark application using the ‘Fortune’ mark.
4.6 The Complainant currently has 23 United States trademark registrations and two United Kingdom trademark registrations in the name of ‘Fortune’, both alone and in combination form.
4.7 The ‘Fortune’ mark is used by the Complainant in connection with business magazines, books, booklets, library information providing business with information on economic subjects, entertainment services in the nature of television programmes featuring finance related content, computer software in relation to the financial sector and financial services, namely, credit and debit card services.
The Complainant’s domain names
4.8 The Complainant has six generic top-level domain name registrations incorporating the word "fortune". These include <fortune.com> and <fortune.info>.
4.9 The Following is asserted as fact in the Response:
4.10 The Respondent is the registrant of the Disputed Domain. The Respondent has a web site design, development and hosting business. The Respondent, on April 25, 2002, filed for a US. trademark for "Fortune.biz" for "computer services, namely creating and maintaining the web sites for others." The Respondent has a preliminary website at "http://188.8.131.52/dev/fortune/index.html".
- Parties’ Contentions
5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the STOP have been satisfied.
5.2 In reference to paragraph 4(a)(i) of STOP, the Complainant asserts that it has rights to the mark "Fortune", including being the registered proprietor in the United States of America of the registered trademark number 0973437 for "Fortune". In addition the complainant asserts that it is also the registered proprietor of the ‘Fortune" trademark in the United Kingdom and other trademarks in the United States of America incorporating the word "fortune". The Panel has not seen a copy of those registrations, although ownership of these trade marks is not challenged by the Respondent.
5.3 The Complainant asserts that the domain name <fortune.biz> is identical to the Complainant’s United Kingdom and United States of America registrations issued in the name ‘Fortune’.
5.4 In reference to the element in paragraph 4(a)(ii) of STOP, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain. The Complainant asserts that the Respondent has no business or other connection or affiliation, express or implied with the Complainant. The Complainant’s evidence is that its own investigations have failed to reveal any facts or elements to justify prior rights or a legitimate connection with the ‘Fortune’ brand.
5.5 In reference to the requirements of Paragraph 4(a)(iii) of STOP, the Complainant asserts that the Respondent tried to register the domain name in bad faith. As a result of the Complainant’s IP claim the Disputed Domain has been frozen for a 30-day period. The Complainant asserts that the Respondent, in looking to register the Disputed Domain, despite being aware of the Complainant’s trademark, constitutes bad faith. The Complainant alleges that Neulevel "warned the Respondent, via e-mail, that [he was] infringing another’s intellectual property rights in this domain." In support, the Complainant annexes to the complaint an e-mail from the registrar notifying the Complainant that <fortune.biz> was registered by the Respondent but was on hold pending the IP Claim.
5.6 The Complainant submits that the Respondent, knowing the Complainant’s global identity and obvious interests and rights in the "Fortune" name, confirmed his bad faith registration by his subsequent conduct in proceeding to register <fortune.biz> despite a lack of legitimate rights or interests in the name.
5.7 In reference to the element contained in paragraph 4(a)(i) of STOP, the Respondent does not dispute that the Complainant’s trademark and Disputed Domain are identical.
5.8 In reference to the element contained in paragraph 4(a)(ii) of STOP, the Respondent asserts that the Complainant has failed to prove that the Respondent has no legitimate interests or rights in the Disputed Domain. In summary the Respondent asserts:
(a) Ownership of a trademark by the Respondent is not a prerequisite for having rights or a legitimate interest. [Woodworker’s Supply Inc. v Roloff Marketing Inc, NAF Case No FA00103055 (Jan 30, 2002)]
(b) The Respondent made demonstrable preparations to use the domain name in connection with a bona fide offering of services prior to being notified of the dispute (paragraph 4(c)(i) of STOP). The Respondent provides evidence by way of:
(i) a preliminary site at "http://64.246.35/dev/fortune/index.html". The Respondent submits that any legitimate interest is not diminished because the <fortune.biz> web site is not yet activated at the <fortune.biz> URL [Hunter Engineering Co. v Ross Le Bel, NAF Case No FA00112546 (June 20, 2002)] and this is a result of the domain name being on hold at the registry under the STOP regime.
(ii) The Respondent filed an application for a U.S. trademark for "Fortune.biz" before the Complaint was filed.
(c) "Fortune" is a common word and that the Complainant cannot claim exclusive rights to a common word.
5.9 In reference to the element contained in paragraph 4(a)(iii) of STOP, the Respondent asserts that there is no evidence that the Disputed Domain was registered with the intent to sell it to the Complainant, to disrupt its business, to prevent it from registering its trademark in a domain name or to confuse customers.
5.10 The Respondent rejects the Complainant’s contention that the decision to register the Disputed Domain in the face of the Complainant’s IP claim constituted bad faith registration since the Respondent knew of the Complainant’s brand. The Respondent relies on the assertion that fortune is a common word and therefore there is no bad faith despite the Complainant’s IP claim.
- Discussion and Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
Domain name is identical to a trademark or service mark in which the Complainant has rights
6.2 The panel finds, and it is not disputed by the Respondent, that the Disputed Domain is identical to a trademark or service mark in which the Complainant has rights and, accordingly, that the Complainant has proven paragraph 4(a)(i) of STOP.
No rights or legitimate interests in respect of the domain name
6.3 The Complainant asserts that the Respondent has no legitimate interests in the Disputed Domain. The Complainant does not produce any evidence, other than to say that its investigations have not revealed any facts or elements to justify prior rights or a legitimate connection with the ‘Fortune’ brand. The Complainant relies heavily on the fact that the Respondent has no registered trademark in the "fortune" name and has no association or license to use the Complainant’s trademark.
6.4 The panel finds this evidence insufficient to discharge the Complainant’s onus to establish, on the balance of probabilities, the element contained in paragraph 4(a)(ii). The panel accepts just for the sake of the argument that the Respondent is not the owner or beneficiary of a trade mark or service mark that is identical to the Disputed Domain. However, the panel agrees with the decision in Woodworker’s Supply Inc. v Roloff Marketing, Inc, NAF Case No 00103055 (January 30, 2002) and notes that this does not by itself preclude the Respondent from having a legitimate right or interest.
6.5 In addition, paragraph 4(c) of STOP lists three circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in the Disputed Domain. The Respondent relies on 4(c)(ii) and produces some evidence in the form of a preliminary website at "http://184.108.40.206/dev/fortune/index.html". to establish that he has made demonstrable preparations to use the domain for a legitimate purpose. The Panel notes the decision in American Greetings Corporation & Those Characters From Cleveland, Inc. v Richard Mackessy, NAF Case No. FA00109374 (May 22, 2002) and acknowledges that even perfunctory preparations can suffice to establish a legitimate interest. The Respondent submits that the domain name is to be used for a web site design, development and hosting business and that the word "fortune" was chosen as a "common" word associated with success. There is certainly evidence at the above website that the Respondent has made preparations towards using the domain name for a bona fide purpose. A preliminary visit to the website indicates that it is functioning and appears to be offering a bona fide service. The panel, however, is unable to draw any conclusion on the face of the evidence as to whether the website was created before the Respondent had notice of the complaint and therefore is unable to adequately assess the value of this evidence.
6.6 The Respondent also submits that he applied for the trademark "fortune.biz" prior to the complaint. Although an application was made on April 25, 2002, it is unclear whether the Respondent had prior knowledge of the complaint at the time of making the application. The Complainant suggests on page 12 of the complaint that the Respondent may have known prior to this time of the Complainant’s claim. This, however, is left unsubstantiated on the evidence provided.
6.7 The panel accepts the Respondent’s evidence that a "www.google.com" search of the word ‘fortune’ yields multiple third-party results incorporating the word fortune. The panel accepts that the word ‘fortune’ is a common word over which the Complainant cannot claim exclusive use. However, the Respondent still must have a legitimate interest in the domain name even though the Complainant is unable to rely on its brand name alone to "prove" that the Respondent has no legitimate interest.
6.8 The panel does not give much weight to the evidence provided by the Respondent, but the existence of the ‘preliminary’ web site and the generic nature of the word "fortune", combined with the lack of supporting evidence produced by the Complainant, leaves the panel unable to find that the element under paragraph 4(a)(ii) of STOP has been proven.
The Respondent has registered the domain name or is using it in bad faith
6.9 The Panel notes that Paragraph 4(c)(iii) of STOP requires the Complainant to demonstrate that the Disputed Domain was either registered or used in bad faith.
6.10 The Complainant looks only to establish bad faith registration on the basis that the Disputed Domain has been frozen and therefore the Respondent has been unable to use the domain name. The Complainant relies on the assertion that the "Fortune" brands are known globally and knowing the Complainant’s obvious interest in the Fortune Name, the Respondent confirmed his bad faith in proceeding to register <fortune.biz>. The Complainant relies on an e-mail, which it alleges was sent to the Respondent notifying it of the Complainant’s interest.
6.11 The Panel is of the view that the Respondent’s decision to proceed with the registration, despite being aware of the Complainant’s ownership of numerous ‘fortune’ trademarks, does not of itself constitute bad faith. The Complainant has adduced no other evidence to establish bad faith registration under 4(a)(iii). There is nothing on the face of the Respondent’s preliminary web-site to suggest that the Respondent intended to create any confusion with the Complainant’s trade mark. The Respondent has created a preliminary web-site for a web design, development and hosting business and this can be easily differentiated from the Complainant’s magazine or on-line publications. On this basis it is unlikely to be confused with the Complainant’s use of ‘fortune’ trade mark. There is also no evidence that the Respondent is seeking to sell or transfer the Disputed Domain.
6.12 The panel accepts the evidence of the Respondent to the effect that "fortune" is a common word not exclusively associated with the Complainant. The Complainant has certainly not shown that any use of the word fortune by any other person in relation to any goods or services would automatically be associated with the Complainant, and it has not even attempted to support any such contention. Unless that could be established, this Panel cannot find bad faith established solely from the fact of identicality between a domain name and a complainant’s mark which is an ordinary English word. Even more so is this the case when the word chosen, in this case ‘fortune’, has a notorious ‘lucky’ connotation for many peoples
6.13 The Complainant has failed to prove on the balance of probabilities bad faith registration under paragraph 4(a)(iii) of STOP.
7.1 The Complainant has failed to prove the requirements of paragraph 4(a)(ii) and 4(a)(iii) of STOP. In accordance with paragraph 4(l) and Rule 15(e)(iii), the Panel dismisses the complaint and rules that subsequent challenges under STOP against the Disputed Domain are permitted. However, such challenges under STOP may not be brought by the Complainant.
Philip N. Argy
Dated: August 19, 2002