23rd May 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc.
Case No. D2001-0085
1. The Parties
The Complainant is Newstoday Printers and Publishers (P) Ltd., of No. 15 Vellala Street, Kodambakkam, Chennai – 600 024, India.
Represented by T.R. Jawahar, Editor and Publisher of News Today.
The Respondent is InetU, Inc., of 744 Roble Road, Suite 70, Allentown, PA 18103, United States of America.
Represented by: Ari Goldberger, Esq., of 160 Lucerne Boulevard, Cherry Hill, NJ 08003, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <newstoday.com>.
The Registrar with which the domain name is currently registered is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
3.1 The Complaint was filed electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the “WIPO Center”) on January 17, 2001, and January 22, 2001, respectively.
3.2 On January 24, 2001, the Registrar verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that the Registrar’s 5.0 Service Agreement is in effect.
(iv) that the domain name is currently in “Active” status;
(v) Respondent’s Administrative Contact Billing Contact and Technical Contact is INetU, Inc. of 744 Roble Road, Suite 70, Allentown, PA 18103, United States of America.
3.3 On February 5, 2001, and February 12, 2001, in response to notification of deficiencies from WIPO Center, Complainant filed an Amended Complaint by e-mail and in hard copy respectively.
3.4 On February 12, 2001, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Amended Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules (“the Rules”) for Uniform Domain Name Dispute Resolution Policy (“the Policy”), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center’s finding of proper compliance with the Rules and establishment of the Complaint.
3.5 On February 14, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier, by facsimile and by e-mail to Respondent, the Administrative Contact, Billing Contact and Technical Contact;
(ii) by e-mail to the postmaster at the domain name.
3.6 The Administrative Proceeding commenced on February 14, 2001, and the Response was due on March 5, 2001.
3.7 The Response was filed on March 6, 2001, and March 7, 2001, by e-mail and in hard copy.
3.8 Panelists Mary Padbury and Milton L. Mueller, and Presiding Panelist Desmond J. Ryan, having filed the Statement of Acceptance and Declarations of Impartiality and Independence, the Panel was appointed on May 9, 2001.
4. Factual Background
4.1 The domain name was registered on September 24, 1998.
4.2 Complainant is incorporated in India and has, for the past eighteen years, published an English language evening daily newspaper from Chennai in Tamilnadu, India under the name and title “News Today”.
4.3 The title “News Today” is registered with the Registrar of Newspapers of India which Complainant asserts is the sole competent authority to register names and trade marks pertaining to newspapers in India.
4.4 Complainant is the registered owner, in the Indian country code domain, of the domain name <newstoday.co.in>.
4.5 On September 25, 1998 Complainant registered, presumably with the Registrar of Newspapers of India, an on-line version of the newspaper, and launched that on-line version on October 8, 1998. Complainant sought to register, as the domain name for the on-line site, <newstoday.com>. That name was unavailable, having been registered one day earlier by Respondent. Complainant therefore registered its second choice <newstodaynet.com> which is the domain name which resolves to its on-line version of the paper (Complaint Annexures 5 and 8).
4.6 Complainant exhibits (Complaint Annexures 9A and 9B) an unidentified web site listing <newstoday.com>, and a number of other domain names as being for sale.
4.7 On January 1 and 2, 2001, there was a chain of e-mail correspondence between Srikanthan Jagannathan apparently acting as agent for Complainant, to <email@example.com> stating:
“From visiting the webpage www.newstoday.com I understand that this domain name is available for sale. I may have an interest in procuring this domain name. Can you give me an indicative/expected price figure for this sale?”
To this a reply was received from “Jason Kristofer – <firstname.lastname@example.org> stating:
“We are looking in the 6 figures for the name <newstoday.com>. Let us know if there is anything else we can do.”
4.8 Respondent is a U.S. Corporation founded in 1996 and describes itself as an e-Business application service provider that provides e-Business outsourcing services including web hosting, dedicated servers, server management, web development and e-Business solutions. Respondent operates from physical premises at Allentown, Pennsylvania, and claims to have 1,000 current clients including several well-known multi-national corporations.
4.9 Respondent asserts that at the time of registration of the domain name, it had no knowledge of Complainant’s newspaper or trade mark, and did not register the domain name for the purpose of selling it to Complainant or to any other party.
4.10 Respondent asserts that it registered the domain name for use in respect of a service to be developed by Respondent together with a customer Jason Kristofer, which would deliver daily news information to Respondent’s clients. Respondent asserts that it chose the name News Today for that service as a generic name meaning “new of today” or “today’s news”.
4.11 Respondent asserts that pending development of the site, Respondent directed the domain name to Mr. Kristofer’s web site.
4.12 Respondent asserts that:
“Mr. Kristofer, unilaterally, without the authorisation, or knowledge, of Respondent, listed <NEWSTODSAY.COM> for sale on his web site together with 10 other domain names, only one other of which was owned by Respondent (rated – X.com)
4.13 Respondent further asserts that it has never offered the domain name for sale to any party and that Mr. Kristofer did not forward to, or otherwise inform Respondent of the enquiry by Srikanthan Jagannathan, nor did he inform Respondent of his reply. Respondent asserts that Mr Kristofer is not an employee or agent of Respondent, and has no rights to the domain name and was never authorised by Respondent to offer the domain name for sale.
4.14 Respondent has registered approximately 29 domain names, all of which, Respondent asserts, are generic names.
4.15 Each of the above assertions by Respondent is supported by sworn affidavits from Jason Kristofer and Dev Chanchani, President of Respondent (Respondent Annexures 2 and 4).
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar’s current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties’ Contentions
6.1 Complainant asserts that the domain name is identical to its trade mark “Newstoday” registered by the Registrar of Newspapers.
6.2 Complainant contends that Respondent does not have any business or trade that warrants the use of the domain name and does not seem to have anything to do with the trade, business or profession of news publishing or information service, and that the site to which the domain name resolves does not carry any activity or information pertaining to the news business. Respondent has never been referred to or commonly known by the domain name, and accordingly, Respondent does not have any legitimate right or interest in the name.
6.3 Complainant contends that since the domain name is now for sale and the site has been inactive, that is evidence of registration in bad faith. Respondent refers to the e-mail exchange with Mr. Kristofer as evidence beyond all reasonable doubt that Respondent had acquired the domain name with the sole idea of selling it to Complainant or to one of its competitors. Complainant therefore contends that Respondent has registered and is using the domain name in bad faith.
6.4 Respondent does not contest that Complainant’s alleged trade mark and the domain name are identical.
6.5 Respondent contends that it has a legitimate interest in the domain name because it registered it with the intent of using it for a site offering current news to its clients and for “promoting marketing” including sending advertising supported news to users via e-mail. Respondent cites the decision inCase D2000-0967, Asphalt Technology Inc, v. Anything.com, and contends that delay in launching does not diminish its rights. Respondent points to the generic nature of the domain name and cites a number of prior panel decisions favouring the domain name registrant where the name concerned comprises a common generic word or name – e.g. CRS Technology Corp. v. Condenet, Inc. Case No. FA-009 347, EAuto, L.L.C. v. Net Me Up, WIPO Case D2000-0104, and Shirmax Retail Ltd, v. C.E.S. Marketing, Inc., Case AF-0104.
6.6 Respondent contends that Complainant has failed to show bad faith use and registration by Respondent. Respondent contends that as it had no knowledge and no basis for knowledge of Complainant’s trade mark, there cannot have been bad faith in its registration.
6.7 Respondent contests Complainant’s allegation of bad faith use based on the attempted sale by Jason Kristofer and refers to Mr. Kristofer’s unknown and unauthorised offering of the domain name for sale.
6.8 Respondent contends in the alternative that in any event an offer to sell a generic domain name after being contacted by a trade mark holder does not constitute bad faith. Respondent cites in support a number of panel decisions including Piper Aircraft, Inc. v. Piper.com, Case No. FA 009 4367.
7. Discussion and Findings
Identical or Confusingly Similar Trade Mark
7.1 The operative part of the domain name consists of Complainant’s trade mark with the words “News” and “Today” run together. Respondent does not contest that the domain name and the trade mark are confusingly similar. The Panel therefore finds that the domain name is confusingly similar to a trade mark in which Complainant has rights and paragraph 4(a)(i) of the Policy is satisfied.
Rights and Legitimate Interests
7.2 Complainant’s contention that Respondent does not have any business or trade that warrants the use of the domain name is rebutted by Respondent who contends that it registered the domain name, along with a number of other generic domain names in the course of its business which includes a number of e-Business activities including web hosting and web development. Respondent further alleges that it had the intention, and took initial steps, to develop a web site in conjunction with Jason Kristofer to provide a news service to its clients.
7.3 It appears clear that Respondent conducts a bona fide business and that it has an established web site and an established physical presence for its business. Even if that business, in the relevant context here, were to comprise the registration, for sale, of generic domain names either generally or to its customers, that would not be an illegitimate use of the domain name. This has been accepted in a number of prior panel decisions including those cited by Respondent. Furthermore, in the present case, Respondent’s contention that it planned a joint development with Jason Kristofer in connection with the domain name, is supported by the sworn evidence of Mr Kristofer himself. In the face of this sworn testimony and the sworn testimony of Respondent’s President and absent any opportunity to test the credibility of the witnesses, the Panel feels bound to accept Respondent’s assertion. On the face of the record, Respondent has successfully rebutted Complainant’s assertion that Respondent has no rights or legitimate interests in the domain name.
7.4 The Panel therefore finds that Complainant has failed to satisfy the condition required by paragraph 4(a)(ii) of the Policy.
Bad Faith Use and Registration
7.5 In the light of the Panel’s finding that Complainant has failed to prove absence of Respondent’s right or legitimate interest in the domain name, it is unnecessary to consider whether bad faith registration and use has been shown. However, for the record, the Panel notes that in its opinion, having regard to the generic nature of the domain name and the sworn testimony of Respondent that it had no knowledge of Complainant or its trade mark at the time of registration, Complainant’s allegation of bad faith use and registration is successfully rebutted and the condition required by paragraph 4(a)(iii) of the Policy is not satisfied.
8.1 The Panel decides and orders:
(i) The domain name is identical or confusingly similar to a trade mark in which Complainant has rights;
(ii) Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name.
(iii) Complainant has failed to establish that the domain name has been registered and is being used in bad faith.
(iv) The Complaint is dismissed.
Dated: May 23, 2001