1st Mar 2006
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Post AG v. NJDomains
Case No. D2006-0001
1. The Parties
The Complainant is Deutsche Post AG, Bonn, Germany, represented by Linklaters Oppenhoff & Rädler, Germany.
The Respondent is NJDomains, Gerald Gorman, Piscataway, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <post.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2006. On January 3, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 4, 2006, 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 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 January 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response January 25, 2006. The Response was filed with the Center January 26, 2006.
The Center appointed the honourable Neil Anthony Brown QC, Nathalie Dreyfus and David E. Sorkin as panelists in this matter on February 15, 2006. 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
The Complainant is a prominent German company incorporated on December 20, 1994, by the Amtsgerich (county court) Bonn, Germany. It is the privately owned successor to the former publicly owned Deutsche Bundespost Postdienst. It operates within Germany and overseas and provides an extensive range of postal services and other logistics and transportation services through subsidiaries such as DHL and Deutschepost World Net.
The Complainant has a series of registered trademarks in various jurisdictions and classes. Details of the trademarks as provided by the Complainant and as set out in Annex 7 to the Complaint, are as follows:
2.1 German Trademark Registration
Paragraph- Number Trademark Classes
2.1.1 30012966 POST in classes 35, 39
2.1.2 39540404 POST in classes 16, 25, 28, 35, 36, 38, 39, 41, 42
2.1.3 39979255 www.post.de in classes 35,39
2.1.4 30314185 DIE POST in class 39
2.1.5 30088080 Deutsche Post in classes 16, 38, 42
2.1.6 30363529 World Post in classes 35, 39
2.2 European Community Trademark Registration
2.2.1 1798701 Deutsche Post in classes 9, 12, 14, 16, 25, 28, 35, 36, 38,
2.2.2 1982255 Deutsche Post in classes 16, 35, 38
2.2.3 1563246 Deutsche Post World Net in classes 9, 12, 14, 16, 25, 28, 35, 36, 38, 39, 42
2.2.4 1582568 Deutsche Post worlds Net in classes 9, 12, 14, 16, 25, 28, 35, 36, 38, 39, 42
2.3 US Trademark Registration
79017874 Deutsche Post Mailstation in classes
6, 7, 9, 35, 39
2.4 International Trademark Registration
2.4.1 765160 Deutsche Post claimed in 50 countries in classes 16, 25, 28, 5, 36, 38, 39, 41, 42
2.4.2 736227 Deutsche Post claimed in 50 countries in classes 6, 8, 9,16, 20, 25, 28, 35, 36, 38, 39, 41, 42
2.4.3 762047 Deutsche Post World Net claimed in 50 countries in classes 6, 9, 12, 14, 16, 25, 28, 35, 36, 38, 39, 41, 42
With one exception, the trademarks were all registered after the date on which the domain name was registered. The domain name <post.com> was registered by the Respondent’s former employer, Mail.com Inc. on November 4, 1998.
The exception is the trademark described in paragraph 2.1.2, No.39540404 for POST which was filed on May 10, 1995, and therefore prior to the domain name being registered.
The Complainant is also the registered owner of a series of domain names, details of which are contained in Annex 7 to the Complaint and the most notable of which are <post.de>, <deutschepost.de>, <deutsche-post.de>, <postag.de>, <post-ag.de>, <deutschepost.com>, <postag.com>, <deutschepost.net> and <deutschepost.org>.
The Respondent is the founder and former Chief Executive Officer of Mail.com.Inc. He is no longer in that position but retains ‘the web pages rights to’ a portfolio of domain names including <post.com> and as such he owns the rights to “www.post.com”.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <post.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 the Policy, the domain name is identical or confusingly similar to the Complainant’s registered and common law trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant maintains that the domain name <post.com> is identical to or confusingly similar to the series of trademarks set out above. The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because ‘he makes no sensible use of the domain but uses it for committing internet fraud’ and has no interest in the domain other than ‘ to harm other people and steal their money.’
Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because when the Respondent registered it, he had no legitimate interest in it, that he knew of the Complainant’s famous name, that registering the domain name was consequently an act of bad faith and that he is now using the web site to which the domain name resolves to cover his tracks and to send fraudulent emails.
The Respondent denies each and every of the Complainant’s contentions. He says that with one exception, the trademarks relied on by the Complainant were all registered after the domain name and that they therefore cannot confer rights on the Complainant to bring these proceedings. In any event, he adds, the trademarks are generic names, as is the domain name which is neither identical to nor confusingly similar to the trademarks.
Secondly, the Respondent maintains that since the domain name was registered, he has had legitimate rights and interests in it, as he has made it available commercially as an email address for subscribers and such a use is a bona fide offering of goods and services. In particular he denies that the domain name has been used by him for a fraud and says that in fact he has been involved in trying to stop the fraud and find the perpetrators and that the Complainant knew that he was not involved in the fraud before it issued the Complaint.
Thirdly, he contends that all but one of the trademarks relied on by the Complainant are incapable of supporting a finding of bad faith as they were filed after the domain name was registered. The remaining trademark cannot be relied on, as it is not identical to or confusingly similar to the domain name. In any event, there is no evidence of bad faith registration and use and the facts are to the contrary effect.
The Respondent maintains therefore that the Complaint should be dismissed and that there has been such an abuse of the process that the Panel should make a finding of Reverse Domain Name Hijacking against the Complainant.
By a Petition dated March 6, 2006, the Respondent submitted that the Panel should consider both the Petition and several documents exhibited to it.
The Panel regards the Petition and the exhibits to it as a Supplemental Filing and will apply the principles taken into account by panels in deciding pursuant to paragraph 12 of the Rules whether to consider such Supplemental Filings.
A number of UDRP panels have held that additional submissions are inappropriate except in exceptional circumstances, such as the existence of new, pertinent facts that did not arise until after the submission of the Complaint or Response or arguments by the Respondent that the other party could not reasonably have anticipated, see e.g. Top Driver, Inc. v. Benefits Benifits, WIPO Case No. D2002-0972, Radan Corp. v. Rabazzini Winery, WIPO Case No. D2003-0353. As a rule, additional evidence or submissions should only be admitted in exceptional circumstances, such as when additional submissions are necessary to reply to the finding of newly discovered evidence not reasonably available to the submitting party at the time of its initial submission or to rebut arguments by the Respondent that the Complainant could not reasonably have anticipated.
The reason for a restrictive application of paragraph 12 of the Rules is that additional submissions may delay the administrative proceeding and thereby undermine the Policy’s intention of providing a rapid and cost effective domain name dispute resolution.
Having considered the principles referred to above, the Panel has decided not to consider the Petition and the exhibits to it. In reaching this decision the Panel has been particularly influenced by the fact that the additional material arrived after the Panel had considered the proceedings and formulated and written its decision and after the decision had been formatted by the Centre. In addition, although there may be some point served by considering such material in appropriate cases even at such a late stage, the Panel believes in the circumstances of the present case that the interests of publishing its decision promptly and keeping within the time and costs restraints of the UDRP process should be given particular importance.
The Panel will therefore not take the additional material into account.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
Those three elements, all of which must be proved, are that:
A. the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Complaint contends that the contentious domain name is confusingly similar to the Complainant’s trademarks set out in detail above. Presumably this means that it is confusingly similar to all of them. The Complainant also contends that the domain name is identical to its trademarks ‘POST‘. The Complainant’s submission is, therefore, that the domain name is identical to some of the trademarks and, if not, then it is confusingly similar to all of them.
The Complainant has collected its trademarks under several groups which are set out above and for ease of reference the Panel will deal with each group in turn, using the same headings as the Complainant has used.
1. German Trademark Registrations.
The Complainant relies here on six registered German trademarks. The first thing that should be said about them is that, with one exception, they were all registered after the domain name was registered. The domain name was registered on November 4, 1998.
The exception is a trademark for ‘POST’, registered number 39540404 and the Panel will shortly return to that trademark.
But with respect to all of the other German trademarks, they were registered up to five years after the domain name.
Indeed, not only were they registered after the domain name, but they were registered well after the dates set out by the Complainant in the Complainant. Thus, it is literally correct, as the Complainant says, that trademark number 30012966 was filed on February 22, 2000. But a search by the Panel of the Deutsches Patent- und Markenamt (the German Patent and Trade Mark Office (DPMA), shows that the trademark was registered on November 3, 2003, and that the ‘Date of publication of the registration’ was December 19, 2003. Likewise, trademark number 39979255, although filed on December 14, 1999, was not registered until February 9, 2004, and published on March 12, 2004. Trademark number 30314185, although filed on March 17, 2003, was not registered until May 14, 2004 and published on June 18, 2004.
These registration dates were, of course, years after the date on which the domain name was registered.
That point by itself is not fatal to the Complainant’s case under paragraph 4(a)(i) of the Policy, as that provision does not require the trademark to have been registered prior to the domain name. It does, however, diminish the Complainant’s overall prospects of succeeding in this case, as it makes it very difficult to argue successfully that when the Respondent registered the domain name, several years before the Complainant registered its own trademarks, it did so without any legitimate right or interest in the domain name and that it did so as an act of bad faith against the Complainant.
That view, which is the prevailing view on this issue, was expressed recently in Brasserie Almaza S.A.L v. Orbyt, WIPO Case No. D2004-0799 in the following way:
“The Respondent also says that it is a sine qua non to satisfying the requirements of paragraph 4(1)(a) of the Policy that Complainant’s registered trademark(s) must be in existence before the date of creation of the domain name in issue. The current approach is that this question is probably more relevant to the issues of good faith arising under paragraphs 4(1)(b) and (c) of the Policy: see Execujet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 (October 7, 2002). In other words, although paragraph 4(1)(a) 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.”
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.
In any event, even if the Complainant could rely on these trademarks, the question still remains whether the Panel is satisfied on the balance of probabilities that the domain name is identical to or confusingly similar to any of the German trademarks relied on by the Complainant. The test to be applied in each case is to consider how an objective bystander would interpret the domain name in the light of the trademarks and it is therefore necessary to look at each of them in turn.
Trademark number 30012966
With respect to registered trademark number 30012966 for POST, this is the only trademark relied on by the Complainant that consists solely of the single word ‘POST’, for the other trademarks combine the word ‘POST’ with other words or graphic depictions.
The Panel finds that there is some doubt as to whether the domain name is identical to or confusingly similar to the trademark under discussion. Accordingly, the Panel will not find against the Complainant on this issue alone, but will accept for present purposes that it has made out a case under paragraph 4(a)(i) with respect to this trademark.
On the one hand, the appearance of the word ‘POST’ in the domain name is of course the same as the appearance of the same word in the trademark. To that extent, the word ‘POST’ in the domain name is identical to the word ‘Post’ in the trademark, simply because its appearance, spelling and pronunciation is the same in each case.
On the other hand, the word is generic: see Postecom spa v. smartphone sa: File No.FA0204000110805 (NAF July 22, 2002).
The word ‘POST’ in the trademark is clearly a generic name, invoking principally the notion of postal services. The Panel is of course able to reach its own conclusion on this issue, having regard to its own understanding of what the word is taken in the general community to mean. But even if the question were left to a matter of evidence, the Panel finds that the material submitted by the Respondent, namely the dictionary definitions of ‘Post’ and the fact that the Respondent’s Google search yielded 972 million web pages containing the word ‘Post’ without ‘Deutsch or ‘DHL’ show conclusively as a matter of evidence that ‘Post’ is a generic word.
The Complainant is therefore relying on trademark rights in a generic word. It has often been said that a generic word will be given little if any protection under the UDRP, whether it is sought to use it as a common law trademark (Postcom spa v. smartphone sa (supra)) or even if it has actually been registered as a trademark (Rollerblade Inc. v. CBNO, WIPO Case No. D2000-0427).
Moreover, the Respondent has also used the same generic word and registered it as his domain name. Accordingly, he has a very wide protection under the UDRP by virtue if that fact alone. It would be quite contrary to the Policy and entirely inconsistent with practice under it to restrict the use of generic words in domain names, unless they have also taken on the stamp of a particular business name to the extent that they are identified with a particular trademark owner.
Thus, in Hewlett-Packard Company v. Full System S.a.S., File No FA94637 (NAF, May 22, 2000), although the domain name adopted the same generic words as the registered trademark OPENMAIL, the name had come to be equated with Hewlett-Packard through its promotional efforts and
“… (t) hese efforts have caused consumers throughout the United States and the rest of the world to recognize OPENMAIL marks as computer software products, which originate with Hewlett-Packard.”
The domain name was therefore confusingly similar to the trademark.
In the present case, there is no evidence that the Complainant has made any effort to cause consumers in Germany or the rest of the world to recognize the word ‘Post’ as meaning postal services that originate with the Complainant. Indeed, the Complainant promotes its own name and those of its subsidiaries and associates it as being the origin of those services.
The Panel is therefore faced with the situation that the appearance of the word is the same in the domain name and in the trademark, making it identical, but that because the word is generic, members of the public may give the word such different meanings in each case, that it is not confusingly similar. This quandary is reflected in the UDRP cases on this issue. . Thus, in United States Postal Service v Consumer Information Organization: File No. FA00100095757 (NAF November 27, 2000) the panel found that the United States Postal Service had registered trademark rights in ‘priority mail’ and common law rights in ‘Post Office’ and that the two domain names <prioritymail.com> and <postoffice.net> were identical or confusingly similar to the respective trademarks.
Likewise, in United States Postal Service v. Postoffice.com, Inc., File No. FA 96313 (NAF, March 19, 2001), it was found that the domain name <postoffice.com> was identical to the USPS’s common law trademark POST OFFICE and confusingly similar to its registered trademark UNITED STATES POST OFFICE. The USPO was again able to establish in United States Postal Service v. Reflex Publishing, Inc File No. FAO 102000096761 (NAF April 23, 2001), that it had common law trademark rights in POST OFFICE sufficient to defeat the domain name <post-office.com>.
In contrast, in Australian Postal Corporation v. Aly Ramzan: File No. FA0208000123884 (NAF December 20, 2002) the Australian Postal Commission was unable to establish that it had common law rights to the term ‘Post Office’ and it therefore failed on the first leg of paragraph 4 (a) the Policy.
Likewise, it was held in Postecom spa v. smartphone sa (supra) that:
“…the word POSTE is a generic term used in several languages with different meanings. Therefore, POSTE is incapable of acting as a common law trademark without a showing of significant secondary meaning.”
As the matter is not free from doubt, the Panel will not reject the Complainant on this issue alone, but will accept on the balance of probabilities that its German trademark 30012966 for ‘Post’ is sufficient to enable the case to proceed to a consideration of the other issues, even although it was registered after the domain name.
Trademark number 39979255
With respect to trademark registered number 39979255 for “WWW.POST.DE”, the trademark is clearly intended to convey to the consumer a German web site on the internet or an internet site devoted to the postal service in Germany. The domain name, in contrast, is generic and gives no such indication. Indeed, the well-established principle is that when making such comparisons, suffixes like ‘. com’ are ignored and the true comparison to be made in this case is therefore between the ‘post’ of the domain name and the entire trademark “WWW.POST.DE”
When that comparison is made it is seen that the domain name is not identical to the trademark and that the reasonable bystander could hardly be confused into thinking that the domain name referred to the particular German web site.
Trademarks numbered 30314185, 30088080 and 30363527
The three remaining trademarks, for DIE POST, DEUTSCHE POST and WORLD POST do not consist solely of the word ‘Post’ and contain in their respective ways different words from the single word in the domain name. Moreover, the substance and thrust of the domain name is one that is confined to the generic notion of the post, whereas the substance and thrust of the three trademarks are of the German postal service, the company that runs it and a specific world postal service. Each of these notions is sufficiently different from the concept of the generic post to enable the Panel to say that the domain name is neither identical to or confusingly similar to any of them.
Accordingly, at this stage of its examination, the Panel has concluded that only one of the Complainant’s trademarks, namely Trademark number 30012966 for the single word ‘Post’ is sufficient to enable consideration of the other issues in this proceeding to proceed.
There remains, however, the sole trademark that was registered before the domain name.
Trademark number 39540404
Turning to this, the remaining trademark in the group of German Trademark Registrations, registered number 39540404, in the name ‘Post’, the trademark was applied for on October 5, 1995 and registered on April 11, 1996, both of which dates were before the domain name was registered on November 4, 1998, and it is therefore clearly of more significance than the other trademarks that were registered after it.
But, as the Respondent points out, it is important to see exactly what it is that has been registered. The Complainant asserts that the domain name is ‘identical to the Complainant’s trademarks ‘Post’ trademark 39540404, however, is not solely for a word, but for a device which is set out in the Response. The device consists of a horn and two arrows as well as the word ‘Post’.
Thus, the trademark is not for the word ‘Post’ at all, but for a logo or, as it is called on the register, a word/figurative mark.’
The question then is whether the domain name is identical or confusingly similar to this word/figurative mark.
That type of question is not always easy to resolve, for the figurative or graphic part of a trademark cannot be translated into a domain name and a true comparison is therefore difficult to make.
There are some obvious similarities between the two expressions, for they both contain the words ‘Post’. However, that is where the similarities end. Thereafter, it is necessary to make the comparison having regard to how a reasonable bystander would view the domain name and the trademark. The Panel is of the opinion that a reasonable bystander would not regard the domain name as confusingly similar to the trademark because the trademark is figurative and is an entirely different representation from the domain name.
That is so because the trademark is dominated by the very prominent illustration of a horn. It is true that some UDRP panelists have taken the view that in making the comparison presently under discussion, devices and similar figurative depictions should be ignored so that a straight comparison can be made between the words. Thus, the panelist in Sweeps Vacuums & Repair Ctr. v. Nett Corp., WIPO Case No. D2001-0031 said that “graphic elements . . . not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.” On the other hand, the panelist in Curvon Corp. v. Lauren Kallareou, WIPO Case No. D2001- 0565, said that “The Mark . . . is the whole of the composite of design matter and word matter [that] is shown in the registration document,” which is the same view taken by other panelists.
The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying that test, the overall impression of the trademark in the present case is entirely different from that conveyed by the domain name. The pictorial representation of the horn is such a prominent and dominating part of the trademark that the result is a logo of the horn as well as the word ‘Post’. It is highly artificial to contend that this is a trademark for the word ‘Post’ when it clearly is far more than that.
The German trademark authorities seem to have intended such a conclusion, as the present mark is specifically described as a ‘word/figurative mark’ to distinguish it from other marks which are ‘word marks’. When seen it that light, it is clear that there is a substantial difference between the domain name and the trademark.
Nor in the opinion of the Panel could a reasonable bystander looking at the domain name, which evokes the common generic word ‘Post’, be confused into thinking that it was really referring to a coloured logo of a horn with the word Post added to it and the company whose logo it was.
Accordingly, the Panel finds that the domain name is neither identical to nor confusingly similar to the German trademark registered number 39540404.
2. European Community Trademarks, US Trademarks and International Trademarks.
These trademarks are all in the name of one or the other of ‘Deutsche Post’, ‘Deutsche Post World Net’ or ‘Deutsche Post Mailstation’. The Complainant’s argument is that the domain name is ‘almost identical’ to each of these trademarks. That is not so. The word ‘identical’ means ‘the very same’ or ‘agreeing in every particular’ and the domain name in the present case is not ‘the very same’ as any of the trademarks just referred. The presence in each case of the word ‘Deutsche’ and in other cases of the words ‘World Net’ and ‘Mailstation’ means simply that they are not the same as the single word ‘Post’ and are not referring to the same things. Accordingly, they cannot be identical or ‘almost identical’ to the domain name.
Moreover, the European trademark 001982255 for ‘Deutsche Post’ is solely figurative, the horn being an essential part of that mark. The European trademark 001582568 for ‘Deutsche Post World Net’ is also a figurative mark, again with the horn. The sole United States mark, 79017874 consists of the design with the horn and words. Likewise, the International trademarks736227 for ‘Deutsche Post’ and 762047 for ‘Deutsche Post World Net’ are figurative with the same design. In each of these cases, the trademark is dominated by ‘Deutsche’ and the picture of the horn and the domain name is therefore so far divorced from the trademarks that it is not possible to regard it as identical to them.
An example of the correct application of the test of identicality is Posten AB v. ControlAltDelete, WIPO Case No. D2003-0950, where the panel was able to decide that the domain name <posten.com> was identical to the trademark of the Swedish postal service, namely Posten AB, for the words in that case are the same.
Likewise, in Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128, where the present Complainant was arguing on that occasion that it was the domain name <deutschepost.net> that was identical to the trademark ‘Deutsche Post’, it was correctly held that this was so, as the words in the domain name were clearly the same as those in the trademark.
The domain name <post.com> is therefore not identical to any of the European, US or International trademarks set out above.
The domain name, however, may yet be similar to one or more of those trademarks, to the extent that they each contain the word ‘post’, but that is where the similarity ends, for it is not confusingly similar to any of the trademarks in question. The test of whether it is confusingly similar is if an objective bystander making the comparison would conclude that they might lead to confusion between the one and the other.
The objective bystander in the present would have to note that the word ‘Deutsche’ so characterizes and dominates the trademarks that it is describing something completely different from the notion sought to be encapsulated by the single word ‘post’ in the domain name. The domain name invokes the notion of the post in general, whereas the trademarks clearly invoke the notion of the specific German postal service, which leaves no room for confusion. Accordingly, no reasonable bystander could be confused between the domain name and any of the trademarks consisting of the expression Deutsche Post.
The same must be said a fortiori for the trademark DEUTSCHE WORLD POST NET which invokes the notion of the German worldwide postal service linked with the ‘Net’ and also DEUTSCHE POST MAILSTATION which invokes the concept of another worldwide, but essentially German, postal service, whereas the domain name invokes a concept of the post in the generic sense and entirely divorced from the German or any other national service.
Accordingly, when faced with the domain name <post.com>, no reasonable bystander could be confused into thinking that it meant not postal services in general, but specifically and solely the German postal service.
The scientific survey
As one of its supporting arguments, the Complainant contends that on seeing the domain name <post.com> the ‘public’ will automatically assume that it belongs to the Complainant. In support of this contention, the Complainant tenders its Annex11 which is a scientific survey which it claims shows that 84.6 % of the public identifies the Complainant under the designation ‘'Post’.
Assuming that the survey is correct, it shows a commendably high brand recognition in favour of the Complainant in Germany. But the survey was conducted exclusively in Germany and involved German speaking respondents.
It is therefore not surprising that German respondents to the survey should identify ‘Post’ with their own national postal service. Respondents to surveys conducted in any other country would be just as likely to identify ‘Post’ with their own national carrier.
Thus, when the Italian Postal authority was faced with a similar problem in 2002, it did not limit the ambit of its claim to the proposition that 84.6% of the population identified the generic word ‘poste’ with the complainant, the Italian national postal carrier; rather, it asserted that “[e] verybody in Italy” refers to it as POSTE”. Despite that, the Panel found that the domain name <poste.biz> was not confusingly similar to any trademark in which the complainant had rights: Postecom spa v. smartphone sa (supra). The word was generic and no party could claim it as its own.
Conversely, the Complainant’s survey tells us little if anything of how the public in general, meaning the potential internet market throughout the world who are likely to be faced with the contentious domain name, would construe a reference to ‘Post’. It certainly does not tell us that the public at large, either in the United States where the Respondent is located or generally, would construe it to mean ‘Deutsche Post’, ‘Deutsche Post World Net’ or ‘Deutsche Post Mailstation’.
To paraphrase the test conveniently given in Hewlett-Packard Company v. Full Systems S.a.S. (supra), it is whether the efforts of the Complainant have caused consumers ‘throughout the world’ or generally, to associate Post with the Complainant. To answer that question, the Panel has to put itself in the shoes of an objective bystander and, having done so, concludes that objective bystanders, confronted with the domain name < post.com> would not think that this ‘belonged to’ the Complainant or more importantly that it would lead to the website of the German ‘Post’ group.
Accordingly, the survey does not negate the conclusion that the Panel has reached, which is to the effect that the domain name is not confusingly similar to any of the trademarks presently under consideration.
In fact, there is evidence from the Respondent that at least 30,000 people, namely his customers, have apparently not been confused, but have taken the domain name to mean what it plainly means, a generic site dealing with communications by post in general and probably by means of the internet.
In any event, even if the domain name were confusingly similar to any of the European, US and international trademarks presently under consideration, which it is not, the trademarks would not assist the Complainant. That is so because the domain name was registered on November 4, 1998, and, like the trademarks previously considered, all of the trademarks in the present groups were registered after that date. In the case of the sole trademark registered in the United States, which has a particular significance, as that is where the Respondent is located, the trademark was registered six years after that date.
As has already been said, that point by itself is not fatal to the Complainant’s case under paragraph 4(a)(i) of the Policy, as that provision does not require the trademark to have been registered prior to the domain name. It does however make it difficult for the Complainant to argue successfully that when the Respondent registered the domain name, years before the Complainant registered this group of trademarks, it did so without any legitimate right or interest and as an act of bad faith against the Complainant.
Accordingly, the Panel concludes, for the reasons given, that the Complainant cannot rely on any of the trademarks set out in these three groupings to found its case.
3. Does the Complainant have an unregistered trademark?
The Complainant may also be arguing that in addition to the registered trademarks on which it relies, it also has and presumably had before the domain name was registered an unregistered trademark in the word ‘Post’. The UDRP admits of the legitimacy of unregistered or common law trademarks, provided that they can be proved to have been established.
The Complainant however has two obstacles in its way in establishing that it has or at any time has had an unregistered trademark in the name ‘Post’.
The first obstacle is that set out in one of the postal cases already referred to, namely: Postecom spa v. smartphone sa (supra) where the issue was whether the complainant had established an unregistered trademark in <poste.biz>. The panel said:
“Complainant …has not established that POSTE is a distinctive mark. The Panel finds the word POSTE is a generic term used in several languages with different meanings. Therefore, POSTE is incapable of acting as a common law trademark without a showing of significant secondary meaning.” See SOCCERPLEX, INC. v. NBA Inc., File No. FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <Soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business); Rollerblade, Inc v. CBNO, WIPO Case No. D2000-0427 (August 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).
Other cases supporting the Panel’s finding include Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum March 7, 2001) (finding that ‘seminar’ and ‘success’ are generic terms to which Complainant cannot maintain exclusive rights); Tough Traveler, Ltd. v. Kelty Pack, Inc., WIPO Case No. D2000-0783 (September 28, 2000) (finding that the Complainant could not establish a secondary meaning with the domain name, <kidcarrier.com>, because of the generic nature of the terms); CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum March 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); PetWarehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000) (finding that ‘pet’ and ‘warehouse’ are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning); and Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20, 2000) (Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).
Likewise, in Australian Postal Corporation v. Aly Ramzan (supra) it was held that the complainant had failed to show any common law trademark rights in the expression ‘POST OFFICE.’
The remarks of the panel in these two cases are equally applicable to the present case, as ‘Post’ is clearly a generic word.
Secondly, there is no evidence showing that the word ‘Post’ has come to be identified with the Complainant and its business. The Complainant says that it is “generally known as Post”, which no doubt it is in Germany and its survey establishes this. Equally the national postal service in other countries are more likely than not to be equated with the word “Post” in those countries. But to establish a common law trademark which will in effect deny all other users the use of a generic word on the internet, a complainant must establish far more than that, especially in an industry that is international and where the use is to be by a medium that is itself international, namely the internet.
Clearly it cannot be expected to show that it has appropriated the generic name in every country in the world, but when it is seeking to appropriate to itself a generic word for its use internationally, it must show at least some international equation of its own name with the generic name. In this case, there is no evidence to that effect and the evidence falls far short of those requirements, even to the extent that the Complainant does not describe itself as ‘Post’ on its website. The Complainant has given itself the name Deutsche Post AG, which it uses and not Post AG and so far as the evidence goes it has always promoted itself not as Post but as Deutsche Post.
Accordingly, the Complainant has not established that it has an unregistered trademark in the term ‘Post’ that it can rely on in these proceedings.
The Panel has concluded that there is one trademark of the Complainant, namely Trademark number 30012966 in the single word ‘Post’ that justifies continuing with an examination of the other issues that arise under the Policy. The Panel will therefore now consider whether the Respondent has rights or legitimate interests in respect of the domain name.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
In the opinion of the Panel, the Respondent is clearly within paragraph 4(c)(i) of the Policy. The Respondent’s evidence, which has not been challenged by the Complainant by way of a reply, is contained in a Declaration by the Respondent and is to the effect that he was the founder and former CEO of Mail.com, Inc., a company that acquired a number of domain names to be offered to users as personalized email addresses. Among these addresses was <post.com> and others drew upon the professions, so that the subscriber’s email address might be for example @ <lawyer.com>. A further Declaration by David Kim who is the current CEO of Mail.com, Inc., states that the company presently has 3 million users of whom 30,000 are active users with the ‘@post.com’ email address. The necessary implication from this evidence is that the service has been offered since the domain name <post.com> was acquired and certainly prior to the dispute being notified by the Complainant to the Respondent.
The Respondent has therefore been using the contentious domain name in his business and its use has been in connection with a bona fide offering of services, namely a personalised email address service.
That brings the Respondent’s situation squarely within the provisions of paragraph 4(c)(i) of the Policy.
The case is therefore similar to another of the UDRP postal cases, Louie Orbeta v. GENIUS Technologies Inc. c/o Raj Baronia, File No. FA0310000201467 (NAF November 29, 2003). In that case, as the panel explained:
“Respondent has been actively using the disputed domain name to host and manage client email since 1997, prior to any of Complainant’s rights in the PUREMAIL mark. This constitutes evidence that it has been making a bona fide offering of goods or services at the disputed domain name and is evidence of its rights and legitimate interests in the disputed domain name pursuant to the Policy, paragraph 4(c)(i).”
Likewise, in United States Postal Service v. Postoffice.com, Inc. File No. FA0012000096313 (NAF March 19, 2001), a panel refused to transfer to the United States Postal Service the domain name <postoffice.com> on the grounds that the respondent was providing an email service to customers and that this was a legitimate use of the domain name.
The Complainant’s reply to this is to say that the Respondent is using the domain name for “committing internet frauds”.
It also goes further than that by alleging that there is no ‘interest’ that the Respondent has in the domain name other than ‘to harm people and steal their money.’ The fraud referred to is the process adopted by some unauthorized person of sending misleading emails to people to induce them to part with money for non-existent goods. The impression is given that the emails come from DHL, a subsidiary of the Complainant as by some means the perpetrators have been able to use the reply address of Post.com, thus implicating the Respondent.
From this the Complainant draws the conclusion that the Respondent concocted the fraud himself. The Respondent has denied this and has given evidence that both Mail.com, Inc., and the Respondent himself terminated the email accounts in question when the fraud was brought to their notice. The Panel is concerned that although there is evidence to the effect that the Complainant knew of the Respondent’s denials before the Complaint was lodged, the Complainant nevertheless went ahead and made the serious accusations set out above. The Panel believes that allegations of this gravity involving fraud should be made only when there is plausible evidence, not only that a fraud has been committed, but that it has been committed by the person accused.
The Panel concludes that the use of the domain name by the Respondent for the email address business referred to above shows that he had and has a legitimate interest in the domain name.
The only concern the Panel has had as to whether the Respondent himself has rights or legitimate interest in the domain name is that he is no longer employed by or the CEO of the company that acquired the name in the first place. It is the company Mail.com. Inc., which owns ‘the email component’ of the domain name and apparently provides the email service, rather than the Respondent. The Respondent, however, has the rights to the web site to which the domain name resolves and that website has links to various commercial operations and an advertising banner to a political and news website “www.mypartytoo.com”. The provision in paragraph 4(a)(ii) is widely drawn and the Respondent would be within the provision if he had a right or legitimate interest in the domain name, no matter of what sort. Likewise, the provision in paragraph 4(c) is widely drawn and the Respondent would be within it if he can show ‘a’ bona fide offering of goods or services, not necessarily one of any particular sort.
Bearing all this in mind, the Panel decides that the Respondent’s initial involvement in the email service and his subsequent involvement in using his web site for links to what appear to be legitimate businesses, together may constitute rights and interests in the domain name.
The Complainant has thus failed to show that the Respondent has no rights or legitimate interests in respect of the domain name and accordingly has not made out the ground in paragraph 4 (a) (ii) of the Policy which it must do to succeed in these proceedings.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Complainant’s argument is first that when the Respondent registered the domain name he had no legitimate interest in registering it. The Panel rejects this argument, as it has already been shown that the Respondent had at the time of registration and since, a very real and legitimate interest in the domain name, namely using it as a personalized email address for subscribers.
Secondly, the Complainant says that the Respondent must have known of the Complainant’s name and those of its subsidiaries and cites the decision in DHL Operations B.V. v. AlI Kazempour, WIPO Case No. D2004-1094, in which it was decided that the registration of a domain name in the name of a famous mark, of which the respondent had knowledge, is evidence of bad faith. The Complainant’s use of this decision is misconceived, for the Respondent has not registered DHL or any other of the Complainant’s names as his domain name; he has registered a generic name which the Panel has decided is neither identical or confusingly similar to most of the Complainant’s trademarks. Moreover, the panelist in The DHL Operations Case expressly found that the respondent “…was familiar with the commercial potential of Complainant’s personal name.” In the present case, the Respondent did not use any of the Complainant’s names and has not traded on their potential, but rather on the widely accepted meaning of a generic word.
In addition to that, it must be noted that the domain name registered was <dhlmail.com>. The decision therefore militates against the Complainant’s position, for it was the registration by the respondent of what the panel described as the “coined or fanciful term (which is the case for DHL)…”, not the generic term ‘mail’, that was pivotal in the finding of bad faith. By contrast, in the present case, the Respondent has registered the sole and generic word ‘post’.
Thirdly, the Complainant says that the domain name is not linked with a website of the Respondent but with the domain name <mypartytoo.com>, which shows that the Respondent is “covering (his) tracks”. The Respondent says that the reference to that site is as an advertising banner which resolves to the site, which is a political news website. In any event, none of this shows bad faith in any of the forms specified under paragraph 4 (b) of the Policy or generally and certainly not in the registration of the domain name eight years ago.
Finally, the Complainant contends that the only obvious use of the domain name is to perpetrate the fraud and that it is obvious that the domain name was registered “for the sole purpose of misleadingly divert and defraud consumers” and to tarnish the Complainant’s marks. The Panel rejects this contention, as it is not based on any evidence.
Accordingly, the Panel rejects the arguments of the Complainant to the effect that the Respondent registered and used the domain name in bad faith. There is no evidence to support such assertions and they are unlikely.
In any event, as virtually all of the Complainant’s trademarks were registered several years after the domain name, it cannot be contended that he registered the domain name for an improper purpose when the trademarks themselves had not been registered at that time. Another of the UDRP postal cases illustrates this point; in Louie Orbeta v. GENIUS Technologies Inc. c/o Raj Baronia, (supra), the Complainant had a registered trademark in PUREMAIL and the respondent had registered the domain name <puremail.com>. On the issue of bad faith, the panelist 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. See Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 (October 5, 2001) (finding that it is impossible for Respondent to register disputed domain name in bad faith if Complainant’s company did not exist at the time of registration); see also Open Sys. Computing AS v. degli Alessandri, WIPO Case No. D2000-1393 (December 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant).”
Likewise in netBridge Limited v. RosBusinessConsulting, File No.FA0306000161282 (NAF August 12, 2003), where the domain name <mailru.com> was at issue, a three member panel ruled:
“The Respondent supplied copies of documents indicating that it leased the domain name from the previous holder beginning in September, 1999 and acquired outright title to the domain in December 2002. Given this evidence that Respondent’s domain name registration predates Complainant’s enforceable rights in the MAIL.RU mark, we find that Complainant lacks standing to bring this claim under the UDRP. See Phoenix Mortgage Corp. v. Tom Toggas, WIPO Case No. D2001-0101 (March 30, 2001) (finding that Policy paragraph 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Ezcommerce Global Solutions, Inc. v. Alphabase Interactive, WIPO Case No. D2002-0943 (November 21, 2002) (allowing a junior trademark user to challenge a domain name registration, which predates Complainant’s trademark rights, is “obviously contrary to the intent of the Policy and to trademark law generally”). Although the Respondent may have registered the domain in its own name after the Complainant’s mark was registered, that registration was not made in bad faith, but merely to continue the services that it had been offering for several years. On this basis, the Complaint is denied.”
Accordingly, the Complainant has not made out the third element required under paragraph 4 (a) of the Policy and has thus failed on two of the three elements that it must establish.
7. Reverse Domain Name Hijacking
The Respondent has asked for a finding of Reverse Domain Name Hijacking under paragraph 15(e) of the Rules.
A finding of Reverse Domain Name Hijacking may be made if ‘the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith.’ Futureworld Consultancy OPty Ltd v. Online Advice, WIPO Case No. D2003-0297.
A further useful statement of the principles involved is set out in the most recent WIPO decision on the subject appearing on WIPO’s Legal Index, Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309:
The views of the majority of the Panel are as follows. Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking. ?
Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant’s relevant trademark registrations.
The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, noted that “whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration”.
One member of the Panel would find Reverse Domain Name Hijacking, on the grounds that Complainant could not reasonably have believed, at that time that it filed the Complaint, that it could prove that the domain name was registered in bad faith.
The majority is of the view that the Panel should not find Reverse Domain Name Hijacking on this occasion, but only because the Complainant may have misunderstood the scope of its rights under the various trademarks and may have believed that they gave it greater scope to bring the proceedings than they did.
However, the Panel is firmly of the view that parties should take great care before making allegations of the type made in this case by the Complainant. The very serious allegations against the Respondent were not justified, particularly at the time the Complaint was lodged, for by that time the Complainant should have known that there was no evidence linking the Respondent with the fraud and that he had co-operated in trying to stop it.
Moreover, whatever issue the Complainant had had with the Respondent must have been known to it for some seven years and yet the Complainant on the evidence did nothing, leading to the conclusion that the Complainant had no real dispute with him during those years.
Accordingly, although the Panel will not make a finding of Reverse Domain Name Hijacking on this occasion, it wishes to place on record its firm view that a complainant should not commence UDRP proceedings unless believing on reasonable grounds that the Complaint is justified and that the allegations made against the respondent are legitimate and based on fact.
For all the foregoing reasons, the Complaint is denied.
The Honourable Neil Anthony Brown QC
David E. Sorkin
Dated: March 1, 2006