18th Jul 2003
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Futureworld Consultancy (Pty) Limited v. Online advice
Case No. D2003-0297
- The Parties
The Complainant is Futureworld Consultancy (Pty) Limited, Johannesburg, Gauteng Province, South Africa, represented by Clifford Chance, LLP of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Online Advice, San Francisco, California, represented by Ari Goldberger, ESQwire.com Law Firm, of New Jersey, United States of America.
- The Domain Name and Registrar
The disputed domain name <futureworld.com> is registered with Network Solutions, Inc. Registrar.
- Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2003. On April 17, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On April 18, 2003, Network Solutions, Inc. Registrar 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 April 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response May 20, 2003. The Response was filed with the Center on May 20, 2003, by email and May 23, 2003, by hard copy.
The Center appointed Pravin Anand, Jeffrey M. Samuels and David E. Sorkin as panelists in this matter on June 24, 2003. The Panel finds that it was properly constituted. Each member of 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.
On July 7, 2003, due to exceptional circumstances the Panel extended the date of decision by 5 days, i.e. till July 13, 2003.
- Factual Background
The Complainant was incorporated and began trading in 1987. Since then it has been providing strategic consultancy services including presentations, workshops, strategic models and custom-designed business counseling services via a global network of business leaders. The Complainant provides services to clients in multi national corporations in various countries such as Anglo American, Astra Zeneca, Bayer, British Airways and Cisco to name a few.
Futureworld has a registered trademark in the Republic of South Africa with registration number 1996/00868. The mark is registered in Class 35 in respect of the following services: advertising and publicity services of all kinds; business management, professional advisory, consultation, research, assistance, agencies, appraisals, information, efficiency, forecasting, personnel and related services; marketing services of all kinds; administration; office functions and related services; services ancillary to all the foregoing.
The Complainant licensed the trademark FUTUREWORLD to Futureworld (International) Limited based in Gibraltar for use in connection with the business. Futureworld International Limited manages intellectual property associated with the Futureworld business and arranges international engagements for Futureworld Gurus for use in connection with the business.
Futureworld operates the websites "www.futureworld.org" and "www.futureworld.co.za".
Prior to January 1999, the <futureworld.com> domain name was registered to a Fred Potter trading as Digital Design. Late in 1998, Mr. Potter agreed to transfer the domain name to Futureworld International Limited and a transfer form was duly executed and sent to Network Solutions on January 27, 1999. No payment was made by Futureworld to Network Solutions in respect of the transfer because, by an administrative error, Network Solutions failed to request any payment (request was sent by email to a misspelled address). Without notice to Futureworld International Limited in course of February 1999, Network Solutions deleted the registration. On February 24, 1999, Hummer Winblad Venture Partners of San Francisco, USA, registered the <futureworld.com> domain name.
On March 16, 1999, Futureworld International Limited’s Internet Service Provider, the Internet Solution wrote to Hummer Winblad to put them on notice of Futureworld’s dispute with Network Solutions. The Internet Solution requested that Hummer Winblad desist from using the disputed domain name pending resolution of the matter and indicated that they would meet Hummer Winblad’s reasonable requirements for transferring the domain name.
The Respondent is the IT Director of the venture capital firm of Hummer Winblad Venture Partners. During a firm dinner the mention of a website for future oriented dotcom start ups was discussed and after that the Respondent conducted a WHOIS search for the words "future" and "world" and found the domain name <futureworld.com> available and promptly registered the same in February 1999, in the name of her employer Hummer Winblad Venture Partners. After she was informed by them that they were not interested in the domain name she assigned the same to Online Advice, a business name she had been using. The registration of the disputed domain name was updated on April 9, 1999.
- Parties’ Contentions
Identical Confusingly Similar
The domain name is identical to the trademark FUTUREWORLD that is registered in the name of the Complainant in South Africa and is used globally by the Complainant and its licensee as is evidenced from the website located at "www.futureworld.org" and "www.futureworld.co.za".
No rights or legitimate interest
The Respondent has offered no evidence that it has a legitimate interest in the domain name. A website is currently accessible via the URL "www.futureworld.com" but the Complainant believes that this website does not amount to legitimate non-commercial or fair use of the domain name. There is no evidence that the Respondent has otherwise used or is known by the name "Futureworld".
The Complainant has not licensed or otherwise permitted the Respondent to use its FUTUREWORLD trademark nor has it licensed or otherwise permitted the Respondent to apply for or use the domain name incorporating their trademark.
Registered and used in Bad Faith
The Respondent offered to sell the domain name to the Complainant immediately upon the Complainant’s first approach to resolve the matter. The Respondent indicated that she expected an offer of at least US$10,000. This sum is clearly far in excess of the out of pocket costs the registrant of a domain name can be expected to incur.
In an attempt to resolve the dispute, the Complainant made a counter offer to purchase the domain name from the Respondent at US$2,000. This figure in itself is far greater than the out of pocket expenses that the Respondent would have incurred.
Furthermore, as late as January 7, 2003, the domain name was being offered for sale on the "www.greatdomains.com" website with an asking price of US$15,000.
Despite such evidence the Respondent claims that it has never been her intention to sell the domain name but rather she had from the outset a "vision" for the domain name. The first indication by the Respondent of any intention to use the domain name was in her letter dated December 13, 2002. The Complainant acknowledges that the website is now accessible though there was no evidence that this website existed before December 13, 2002. The domain name did not resolve to a website prior to November 25, 2002.
The time period from the date of registration to the activation of the website was three and half years and there is no evidence to justify this delay. Further, the current website is only a handful of links to various websites and this would not have taken more than a couple of hours to create. This use amounts to an "artificial use" of the domain name.
On March 16, 1999, Internet Solution on behalf of the Complainant wrote to Hummer Winblad Venture Partners, the letter being marked to the attention of Ms. Hickox, the Respondent on notice of the Complainant’s interest in the domain name. Even after receipt of the said letter on April 9, 1999, the Respondent acquired the registration of the domain name.
Identical Confusingly Similar
Complainant’s South African registered trademark for FUTUREWORLD was not approved for registration until May 3, 1999, which is subsequent to the initial date of February 24, 1999, when the Respondent registered the disputed domain name and subsequent to the April 9, 1999, when the registrar completed the registration of the disputed domain into Respondent’s name.
The Complainant does not have any common law trademark rights and it is the contention of the Respondent that unless the Complainant has a valid registration it has to show common law trademark rights in the mark. Further, because "Futureworld" is a common descriptive term, to demonstrate common law trademark rights, Complainant would have to provide evidence that the term acquired secondary meaning.
No rights or legitimate interest
Respondent registered the disputed domain name without Complainant in mind, simply because it incorporates a common descriptive term. The domain name was first registered in the name of the employer but her employer declined any need for the same and thus got transferred to the Respondent.
The Respondent registered the disputed domain name because she believed the term "futureworld" carried a favorable meaning which she could use for a website that dealt with her vision of the future. The Policy does not require actual use to satisfy a Respondent’s legitimate interest. It is the Respondent’s intent at the time of registration that matters. Respondent ultimately launched a website in December 2002, prior to the initiation of this Complaint which provided links to various non-profit websites focused on improving the world. The website carries the theme "Activism for a Better Future". The Complainant’s criticism about the website "consisting of no more than handful of links to third party sites" is not relevant.
Respondent’s legitimate interest in the disputed domain name is further established simply because "futureworld" is an extremely descriptively term. In addition, the term "futureworld" is incorporated in 81 domain names and a google search yielded 653,000 third party uses of this descriptive term. Because it is composed of a common descriptive term, Respondent was vested with irrevocable rights and legitimate interest in the disputed domain at the point of registration.
Registered and used in Bad faith.
When Respondent initially registered the disputed domain name, she did so because she thought it was a great domain name to use for a web site dealing with the future. When her employer advised that they were not interested in the disputed domain name, Respondent transferred it into her own name to use for a future web site dealing with the same subject. Late last year, Respondent launched an initial web site consistent with her view of protecting the world of the future. This evidence supports a finding that the disputed domain name was registered in good faith, not bad faith.
In an email dated November 13, 2000, Wolfgang Grulke, Complainant’s CEO expressly admitted that Respondent registered the disputed domain name in good faith. He said; "I’m sure you acted in good faith when you acquired the Domain Name". This admission, in and of itself, requires dismissal of the Complaint.
Although Complainant suggests that Respondent "acquired the registration of the domain name from Hummer Winblad on April 9, 1999, it is undisputed that Respondent registered the disputed domain name on February 24, 1999. It is this date that is relevant for determining Respondent’s mindset, since it was Respondent who registered the domain name on that date and was listed as the administrative contact. When Ms. Hickox realized that Hummer Winblad did not want to retain the disputed domain name, she transferred it into her own name – signing the registrant name change agreement for both the current registrant and the new registrant. Accordingly, it is clear that February 24, 1999, was the date Respondent made the decision to register the disputed domain name, and it is this date that is key in determining Respondent’s mental state at the time of registration.
There is no evidence, whatsoever, that Respondent registered the domain name with Complainant in mind or that she even had heard, or should have heard, of Complainant. There is no evidence that Complainant’s mark was famous so that Respondent would not have heard of it. Further, Respondent had no knowledge of the existence of Complainant or its alleged South African trademark.
Complainant suggests that the letter of March 16, 1999, from its Internet service provider, the Internet Solution, should have put Respondent on notice of its trademark rights. However, nothing in that letter refers to a trademark registered to Complainant. The letter simply focuses on the failure of the transfer from the prior registrant, Digital Design, to Complainant, and claims the "domain was deleted in error." The letter simply refers to a company called "Futureworld (Int) Limited," which is merely a trade name that happens to incorporate the common descriptive term Futureworld. That letter certainly did not expressly, or impliedly, put Respondent on notice of any trademark claim. Accordingly, Respondent was not on actual notice that Complainant had trademark rights to Futureworld at this time.
It is well established, the Respondent contends, that anyone is entitled to register domain names that are deleted and become available for registration. Moreover, the Respondent contends that the fact that a domain name is deleted should give the registrant even more comfort in registering it, as it appears that the prior registrant has relinquished any right to it.
Respondent did not contact Complainant to sell it the disputed domain name. Nor is there any evidence that Respondent registered the disputed domain namewith the intent to sell it to Complainant or to any party. Respondent merely replied to Complainant’s June 4, 2003, email requesting her to transfer the domain name in light of its purported "undertaking of legal action with Network Solutions." This, of course, was an invitation to engage in settlement negotiations since the implication was that the result of such legal action would result in her forfeiting the domain name. Respondent replied on June 4, 2003, informing Mr. Grulke that she had spoken to Network Solutions, Inc. who advised that there was no error at all. Respondent suggested that Mr. Grulke make an offer, merely advising him that she had received other offers in the $10,000 range. Several months later, on November 13, 2000, Mr. Grulke made an offer of $2,000. Mr. Grulke certainly did not at the time consider Respondent to have acted in bad faith. To the contrary, his email stated: "I’m sure you acted in good faith." Surely, this positive remark, and the lack of any negative remark concerning the alleged $10,000 offer carries more weight than Complainant’s ex post facto made for UDRP characterization of Respondent’s actions as bad faith.
Reverse Domain Name Hijacking
Respondent registered the disputed domain name more than 4 years ago without any knowledge, or any reason to have knowledge, of Complainant, or its South African trademark. Moreover, at the time Respondent registered the disputed domain name, Complainant’s trademark had yet to be approved. In an attempt to convince Respondent to transfer the disputed domain name to it, Complainant fabricated a story that Network Solutions, Inc. ("NSI") had erroneously deleted the disputed domain name which was supposed to be transferred to Complainant, and that Complainant had instituted legal action against NSI to rectify the problem. In fact, NSI confirmed that no error had occurred – the disputed domain name was simply deleted because the prior registrant failed to pay the renewal fee – and Complainant did not institute any legal action.
At no time until Complainant’s attorneys contacted Respondent on November 29, 2002, did Complainant ever raise the issue of its South African trademark, or claim that Respondent had violated its trademark rights. In fact, Complainant’s president admitted in 2000, that he was sure Respondent "acted in good faith when [she] acquired the domain name." It was only after Complainant realized that its NSI erroneous deletion story would not work that it transformed its theory to one of bad faith registration in order that it satisfy the requirements of the Policy.
Respondent has a legitimate interest in the disputed domain name because it incorporates a common descriptive term, which is subject to substantial third party use, and Respondent registered it with the intent to use it for a web site, which is now in operation. There is absolutely no evidence the disputed domain name was registered and used in bad faith. Respondent never heard of Complainant or its mark when she registered the disputed domain name, and Complainant did not even have a registered mark at the time. Nor was there a basis for Respondent to have heard of Complainant, a South African company unknown in the U.S.A. where Respondent resides. Nor does the fact that Respondent suggested a monetary settlement establish bad faith. It is well established that i) anyone may offer to sell a common word domain in good faith; and ii) an offer to sell any domain after being contacted by a Complainant does not constitute bad faith. Therefore, the Complaint had been brought in bad faith.
- Discussion and Findings
- Identical or Confusingly Similar
The Complainant is the owner of the South African trademark No. 1996/00868. The Complainant is also the owner of the domain names <futureworld.org> and <futureworld.co.za>. The disputed domain name is the same as the trademark in which the Complainant has rights. Thus, the disputed domain name is identical and confusingly similar to the mark in which the Complainant has rights as mentioned under Paragraph 4 (a)(i) of the Policy.
- Rights or Legitimate Interests
Respondent registered the disputed domain name without Complainant in mind, simply because it incorporates a common descriptive term. The domain name was first registered in the name of the employer but her employer declined any need for the same and the domain name got transferred to the Respondent.
The Respondent registered the disputed domain name because she believed the term "futureworld" carried a favorable meaning which she could use for a website that dealt with her vision of the future. The Complainant contends that a website is currently accessible via the URL "www.futureworld.com" but the Complainant believes that this website does not amount to legitimate non-commercial or fair use of the domain name. Respondent launched this website in December 2002, prior to the initiation of this Complaint, which provided links to various non-profit websites focused on improving the world. The website carries the theme "Activism for a Better Future". The Complainant’s criticism about the website "consisting of no more than handful of links to third party sites" is not accepted.
Therefore, based on the above, the panel holds that the Respondent has a legitimate interest in the disputed domain name as mentioned in Para 4 (c) of the Policy.
- Registered and Used in Bad Faith
The first issue that needs to be dealt with is whether there is any circumstance indicating that the Respondent had registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The Respondent offered to sell the domain name after being contacted by the Complainant who in their correspondence sought a transfer of the domain name. The intent with which the Respondent registered the domain name is important. As stated by the Respondent there is no evidence to show that the disputed domain name was registered with the Complainant in mind nor is there any evidence to show that the Respondent had an intention to sell the domain name to the Complainant’s competitors. Further, the mention of the disputed domain name on the website of <greatdomains.com> asking for a price of US$15,000 apparently was because the Respondent only wanted to know what the market value of the domain name was as she was approached by the Complainant to transfer the domain name.
In FreedomCard, Inc. v Mr. Taeho Kim WIPO Case No. D2001-1320, the Panelist held that "...having regard principally to the generic nature of the domain name, to the absence of evidence that Respondent was aware of Complainant or its mark at the time of registration and to the fact that Respondent did not approach Complainant or a competitor to solicit the sale of the domain name, the panel is not satisfied that sale at a profit to Complainant or to a competitor of Complainant was the Respondent’s primary purpose in registering the domain name". Therefore, applying this, it is clear that the Respondent did not register the disputed domain name with the intention to sell the same to the Complainant or to its competitor.
The second issue to be dealt with is whether the Respondent had registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent had engaged in a pattern of such conduct. In the instant case, there is no evidence to show that the Respondent had engaged in registering the domain name to prevent the Complainant from registering the said domain name. The Respondent registered the domain name initially because she thought it was a great domain name to use for a web site dealing with the future. When her employer advised that they were not interested in the Disputed Domain name, the Respondent transferred it into her own name to use it for a future web site dealing with the same subject and in conjunction to her thoughts she launched a website with the theme "Activism for a Better Future". Further, there is no evidence to show that the Respondent engages in a pattern of such conduct.
The third issue that is to be dealt with is whether the Respondent had registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent and the Complainant are in different fields of business and such registration of the domain name would not disrupt the business of a competitor.
Lastly, the issue that needs to be dealt with is whether by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to her web site, by creating a likelihood of confusion with the Complainant's mark. The Complainant has presented no evidence to this extent nor of any instance that there was confusion or a likelihood of confusion that was caused by the Respondent.
Therefore, based on the above, the Panel holds that the disputed domain name was not registered or used in bad faith as mentioned in Paragraph 4(b) of the Policy.
Reverse Domain Name Hijacking
Reverse Domain name hijacking is defined in Paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name".
In the instant case the Respondent has raised the contention that the Complainant has engaged in reverse domain name hijacking. To prevail on such a claim, the Respondent must show either that the Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.
In the view of a majority of the Panel, the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith. The majority therefore finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking.
The Presiding Panelist dissents from this finding, on the grounds that there is no evidence that the Complainant has harassed the Respondent, or engaged in similar conduct in the past; nor is there evidence that the Policy was used in bad faith.
For all the foregoing reasons, the Complaint is denied, and a majority of the Panel finds that the Complainant has engaged in reverse domain name hijacking.
Jeffrey M. Samuels
David E. Sorkin
Dated: July 18, 2003