29th Mar 2008

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Geopost v. NJ Domains

Case No. D2007-1725

 

1. The Parties

The Complainant is Geopost, Paris, France, represented by Inlex Conseil, France.

The Respondent is NJ Domains, Piscataway, New Jersey, United States of America, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <geopost.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2007. On November 22, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On November 26, 2007, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 which stated a commencement date of November 30, 2007 and a last date for filing a Response of December 20, 2007. The Respondent did not submit any response by that date, and the Center issued a notice of Respondent default on December 24, 2007.

The Center appointed James A. Barker as the sole panelist in this matter on January 3, 2008. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Following his appointment the Respondent’s counsel communicated to the Center, on January 7, 2008, indicating that the Respondent had not properly received a copy of the Complaint and the Center’s notification documents and requesting that these documents be forwarded to the Respondent’s counsel immediately and the Panel consider the Respondent’s intention to submit a late Response.

On January 10, 2008, the Center sent an email communication to the parties stating that “[F]or the notification of the Complaint in this case, the Center under the applicable Rules made an effort to use a number of email addresses as well as a physical address communicated by the Registrar on the basis of data provided by the registrant. Courier delivery to the physical address proved impossible. As indicated by an email message from an address the provenance of which was not fully clear, one of the email addresses provided by the Registrar (also included in the Complaint, but in incorrect form) was inadvertently not used for the notification, although it was later properly used for other communication, in particular, the notification of Respondent default […] In the circumstances, to avoid any possible perception of procedural doubt, following discussion between the Center and the Panelist Mr. James Barker, it has been decided that this Panel shall not proceed on the case, which the Center shall re-notify to the Respondent, via its counsel, with copy to the Complainant. In due course, the Center will proceed anew to panel appointment.”

The Center then formally re-notified the Respondent of the Complaint and the due date for Response was re-set to January 30, 2008. The Response was filed with the Center on January 30, 2008. The Respondent elected to have the matter decided by a three-member Panel.

The Center appointed Dr. Clive N.A. Trotman, Christiane Féral-Schuhl and Diane Cabell as panelists in this matter on March 15, 2008. 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.

 

4. Factual Background

According to the Complainant, Geopost, it is wholly owned by French parent company La Poste, which provides an extensive range of postal services within France and overseas.

La Poste owns a number of trademarks comprising or incorporating the word GEOPOST, including:

(France)

GEOPOST

00 3009531

filed on February 22, 2000

GEOPOST

00 3064641

filed on November 15, 2000

GEOPOST and device

01 3099012

filed on May 7, 2001

GEOPOST.COM

00 3034559

filed on June 15, 2000

GEOPOST.FR

00 3034557

filed on June 15, 2000

GEOPOST.NET

00 3034555

filed on June 15, 2000

(International trademarks)

GEOPOST, 745663, filed on September 15, 2000

Austria, Benelux, Switzerland, Germany, Spain, Italy, Monaco, Portugal, Denmark, Finland, United Kingdom, Greece, Sweden, Turkey

GEOPOST, 767399, filed on June 14, 2001

Austria, Benelux, Switzerland, Germany, Spain, Italy, Monaco, Portugal, Denmark, Finland, United Kingdom, Greece, Sweden, Turkey

GEOPOST, 771831, filed on November 6, 2001

Austria, Benelux, Switzerland, Germany, Spain, Italy, Monaco, Portugal, Denmark, Finland, United Kingdom, Greece, Sweden, Turkey, Ireland and Norway

The Complainant lists more than 40 domain names held by itself or associated companies embodying the word “Geopost” or adaptations.

According to the Respondent, the disputed domain name has been in the same ownership since 1998 through a succession of companies all controlled by the same person. All have been concerned with the provision of legitimate Internet services.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the trademark GEOPOST and that the disputed domain name is confusingly similar and in fact identical to that trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name. This is because in neither the United States of America where the Respondent is located, nor any country where the Complainant operates, does the Respondent have any registered rights in the trademark, and the Respondent is not known as or associated with GEOPOST.

The Complainant says that it has not authorized the Respondent to use the trademark. The domain name is parked and not being used for a bona fide offering of goods or services, depreciating the Complainant’s trademark.

The word “Geopost” is a distinctive word, not a dictionary, generic or descriptive word.

The Complainant contends that the disputed domain name was registered between September 14, 2000 and June 11, 2001 and used in bad faith. The domain name is unused and the Complainant is blocked from acquiring it. The Complainant’s business is obstructed because the domain name is not available as an umbrella over its other domain names.

The Complainant contends that the website of the domain name exploits the Complainant’s business by providing advertisements and links to its competitors, for example in parcels distribution. The Respondent does this in bad faith to generate click-through (pay-per-click) revenue.

The Complainant contends that the Respondent has committed internet fraud concerned with spam. As discussed below, the evidence which was not admitted is not reproduced here.

The Complainant requests transfer to it of the disputed domain name.

B. Respondent

The Respondent denies the Complaint and accuses the Complainant of attempted Reverse Domain Name Highjacking.

The Respondent contends that Mr. Gerald Gorman has been the effective owner of the disputed domain name since its first registration in June 11, 1998, by virtue of the fact that he has controlled or owned each of the three companies to have owned the domain name, and that it has changed registered ownership through internal changes and related party transactions.

The Respondent contends that the domain name was registered with about 200 others for an authentic Internet mail business that has flourished and has changed hands. In various company ownership transactions set out in evidence, Mr. Gorman’s companies retained ownership of the domain name.

At the time of registration, the Complainant’s trademark had not been applied for and could not have been known about.

The Respondent says that the pay-per-click advertising on the site at present is provided by an automated service of Yahoo that places advertisements and links according to keywords. According to precedent the Respondent is not responsible for their choice and Yahoo is able to remove any that are inappropriate. The domain name is parked and the incidental revenue from click-through is trivial.

The Respondent strenuously denies ever having been associated with spam, fraud or illegal activity.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant must prove that it has rights in a mark and that the disputed domain name is confusingly similar to that mark.

The Complainant submits in evidence copies of a number of trademark registration documents, establishing satisfactorily that it is at present the owner of the trademark GEOPOST. It is noted that the trademark registration date is later than the domain name registration date. Paragraph 4(a)(i) of the Policy does not require that the trademark was registered prior to the domain name, but is focused on the narrow question of whether the disputed domain name is identical or confusingly similar to the trademark.

The disputed domain name is <geopost.com>. It is well established that the gTLD discriminator “.com” is normally of no consequence in the determination of confusing similarity. What remains is “geopost”, which clearly is identical to at least those of the Complainant’s trademarks comprising solely or principally the word “Geopost”, and the Panel so finds in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name. This is inherently difficult to do comprehensively because it requires the proving of negatives. Usually it is approached by the Complainant making out a prima facie case to that effect, which the Respondent has the opportunity to disprove under paragraph 4(c) of the Policy, which reads in part as follows:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In stating its prima facie case, the Complainant has checked the USPTO Registry and says the Respondent does not own any trademark registration and has no common law right in GEOPOST. Furthermore the Respondent does not hold any such right in any country where the Complainant has trademark rights in GEOPOST. The Respondent is not known as GEOPOST, the Complainant has not licensed or authorized the Respondent to use its trademark and there is no relationship between the Complainant and the Respondent. The Respondent is not using the domain name in connection with a bona fide offering goods or services, but has parked it.

The Respondent sets out to show that it does have rights in the disputed domain name. The Respondent says the domain name was first registered on June 11, 1998, and it was not until more than 20 months later that the Complainant applied to register the GEOPOST mark (on February 23, 2000, according to the record supplied by the Complainant).

The Complainant argues, on the basis of Whois documents submitted, that the domain name was not registered or acquired in the name of the Respondent on June 11, 1998 as claimed, but later, between September 14, 2000 and June 11, 2001, which would be after registration of the trademark had been applied for. The Respondent refutes this and refers the Panel to a Whois document in respect of the domain name that states “record created on 11-Jun-1998”. That document, however, lists the registrant as “Mail.com Inc. 11 Broadway Suite 660 New York NY10004”, whereas the present registrant and Respondent is NJ Domains.

The Respondent posits that it has owned the domain name since June 11, 1998, and that ownership has not effectively changed since then, by the following reasoning. In April 2001, Mail.com changed its name to Easylink Services Corp., (EasyLink), but remained under the control of the same Gerald Gorman as chairman and owner of 100 % of the Class B super-voting shares. On December 23, 2004, Gerald Gorman resigned as chairman of EasyLink, but retained by agreement the company’s domain name portfolio including <geopost.com>, and modified the domain name registration to NJ Domains LLC, a company he controlled.

As evidence for these assertions the Respondent submits (1) a copy of a Declaration “proffered under penalty of law for making false statements” signed by Gerald Gorman and dated January 30, 2008; and (2) a copy of an article obtained from the Internet, copyright Business Wire and copyright Gale Group, datelined April 2, 2001, titled “Mail.com Changes Corporate Name and Identity to EasyLink Services Corporation; Common Stock to Trade Under Ticker ‘EASY’ Effective April 3rd”. The article appears to be a factual and responsible business report and there is no evidence to the contrary.

Having regard to all the evidence, the Panel is satisfied that in this particular case the disputed domain name has remained under the effective control and beneficial ownership of the same guiding mind since its first registration on June 11, 1998.

The issue of the relative registration dates of domain names and trademarks has been well canvassed in Deutsche Post AG v. NJ Domains, WIPO Case No. D2006-0001 (involving the present Respondent), where the panel said: “Accordingly, with the possible exception referred to, the Complainant will find it very difficult to succeed in this case by relying on trademarks that were registered after the domain name” [and did not succeed]; and in Brasserie Almaza S.A.L v. Orbyt, WIPO Case No. D2004-0799, where the panel said: “[…] although paragraph [4(a)(i)] of the Policy does not specifically require Complainant’s trademark rights to be in existence before creation of the domain name, it may be difficult to see how – if it is not – a Complainant can establish that the Respondent does not have rights or legitimate interests in the prior registered domain name or how the Respondent can be shown to have registered the domain name in bad faith”.

Registration of a domain name prior to the registration of a trademark might not necessarily grant the registrant rights exceeding those of the trademark holder. For example, a registrant may have anticipated the formation of a new trademark through a possible merger of businesses, or may have heard of a business plan and registered the probable new trademark as a domain name (MedTel Outcomes, LLC v. IT HealthTrack, Inc., WIPO Case No. D2004-0282). In the present case there is no evidence to suggest such activity or any other nefarious scenario. The scale of the interval of 20 months between registration of the disputed domain name and the later registration of the GEOPOST trademark by the Complainant argues against any attempt to target or preempt the Complainant.

The Respondent has set out a reasonable explanation to the effect that its business is entirely respectable and that, for genuine reasons of offering mailbox names to its substantial customer base, its portfolio at the time included the word “geopost”. The Respondent’s description of its business is supported by evidence in the form of independent business news articles. On the facts, the word “geopost” is not out of keeping with other of the Respondent’s “.com” registrations at the time such as planetmail, asia, post, europe, and words in non-geographical spheres such as the professions.

In the terms of paragraph 4(c)(i) of the Policy the Respondent is found to have made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, well before any notice of the dispute. Furthermore the Respondent is found to have registered the domain name in circumstances and at a time when it did not appear to infringe any trademark of the Complainant. The Complainant’s subsequent desire to have the domain name cannot retrospectively convert an innocuous registration into bad faith. Inevitably the Complainant has failed to establish its grounds under paragraph 4(a)(ii) of the Policy and must fail in proving its case overall.

C. Registered and Used in Bad Faith

It is not strictly necessary to proceed to matters of bad faith but the Panel will briefly consider the matter, partly because it has a bearing on the Respondent’s assertion of Reverse Domain Name Highjacking on the part of the Complainant.

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out non-exclusive examples of bad faith as follows:

(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Examples (i), (ii) and (iii) refer primarily to the circumstances of registration or acquisition of the domain name. The effective date of registration has been found to be June 11, 1998, some 20 months before the Complainant applied to register its trademark GEOPOST. The view of the relevant panel on timing and bad faith in Brasserie Almaza (above) has been noted, to which may be added Louie Orbeta v. GENIUS Technologies Inc. c/o Raj Baronia, NAF Case No. 201467, in which that panel said: “Respondent registered the disputed domain name two years before Complainant allegedly began using the PUREMAIL mark, therefore it could not have registered the disputed domain name in bad faith”.

Having regard to the present Panel’s findings under paragraph 4(a)(ii) of the Policy, there is no evidence that the domain name was registered or acquired principally for sale as defined, or that the Respondent has engaged in a pattern of blocking registrations, or that its primary purpose was to disrupt the Complainant’s business.

Example (iv) refers primarily to the past and current use of the domain name, and it is well established that in certain circumstances non-use for website or email purposes can fall within the concept of use if it is coupled with some other factors suggesting bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

There has been no evidence submitted to the effect that the disputed domain name has ever been used for the Respondent’s stated original purpose. At present it appears to act partly as a website from which users are directed by hyperlinks to the websites of sellers of goods and services, for which the proprietor of <geopost.com> can receive monetary commission. This business is known as click-through or pay-per-click. The Complainant’s contention is that some of the links are to competitors of the Complainant, and that users led to these competitors had been seeking the Complainant’s authentic website in the first place. Thus, the Respondent generates revenue by exploiting the Complainant’s good name and goodwill, and the Complainant suffers loss of business.

The Respondent denies this and says that the system is automated, such that the advertisements and links are placed from time to time by the SmartName service of Yahoo using sophisticated technology to target users. The Respondent says it has no control over these placements but that, in any case, “Respondent believed no trademark related links would be posted on the web site, particularly based on SmartName and Yahoo’s policy of avoiding trademark conflicts”. Furthermore, Yahoo’s policy is to remove inappropriate links on request. The Respondent states for perspective that this particular website generated 22 clicks earning a total of $6.78 in January 2008.

Both Parties have cited precedent in support of their positions in respect of example (iv). The matter is arguable and since it is moot, the Panel makes no finding on this point.

D. Reverse Domain Name Hijacking

The Respondent has asked the Panel to find that the Complaint constitutes attempted Reverse Domain Name Hijacking, which is defined in the Rules as follows:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

Paragraphs 15(e) of the Rules states:

If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

The Respondent bases its claim of Reverse Domain Name Hijacking mainly on the assertion that the Complainant has made a false accusation of the Respondent’s involvement in email scam activities, the nature of which could in certain jurisdictions, if proven, be illegal. The relevant section of the Complaint is headed: “3/ Use for “committing internet fraud””.

The nature of the alleged fraud, well recognized by Internet users, is best described in the Complainant’s words: “The scam usually begins with a letter-form e-mail sent to many target recipients making an offer that will purportedly result in a large payoff for the intended victim.” The Complaint goes on to assert that [Mr. Gorman] “… is using the reserved domain names in bad faith to swindle people.”

The Respondent denies the accusation of fraud in tones of unconcealed outrage.

The Panel finds the Complainant’s purported evidence of fraud to be irrelevant, hearsay, unsubstantiated and prejudicial, having no relevance to the domain name <geopost.com>. The evidence of fraud was not admitted and need not be discussed.

The bar for a finding of Reverse Domain Name Hijacking is high and does not equate with the Respondent winning the case. The submission of inadmissible evidence (even if it were found to be defamatory) would not in itself mean a case was brought in bad faith. The Panel is not convinced that the Complainant knew or ought to have known that its case was hopeless, partly because the issue of the effective date of registration of the domain name was at least arguable, as was the current use of the domain name. There are not sufficient grounds for the Panel to find Reverse Domain Name Hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dr Clive N.A. Trotman
Presiding Panelist

Christiane Féral-Schuhl
Panelist

Diane Cabell
Panelist

Date: March 29, 2008