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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

News Group Newspapers Limited and News Network Limited v. Momm Amed Ia

Case No. D2000-1623

 

1. The Parties

The Complainants are News Group Newspapers Limited ("First Complainant") and News Network Limited ("Second Complainant"), both companies organized under the laws of the United Kingdom with headquarters in London. The Complainants are represented by Mr. Anthony Misquitta of Farrer & Co, Solicitors of London, UK.

The Respondent is Momm Amed Ia of Kwangsan-qu Myonsoo-dong 13-1, Kwangju, Korea. The Respondent has taken no part in the proceeding and is not represented.

 

2. The Domain Name and Registrar

The domain name at issue is "Pag3.com". The domain name was registered with Bulkregister.com, Inc ("the Registrar")

 

3. Procedural History

A Complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on November 22, 2000, (electronically) and November 27, 2000, (hard copy).

On November 29, 2000, a request for Registrar verification was transmitted by WIPO Center to the Registrar asking it to:

Confirm that a copy of the Complaint had been sent to it by the Complainants as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).

Confirm that the domain name at issue is registered with the Registrar.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is applicable to the domain name at issue.

Indicate the current status of the domain name.

By email dated November 30, 2000, the Registrar advised WIPO Center as follows:

The Registrar had received a copy of the Complaint from the Complainants.

Bulkregister.com Inc. is the Registrar of the domain name Registrar "Pag3.com".

The Respondent, Momm Amed Ia, is the current registrant of the said domain name. The technical contact is Solncev Michail, Personal Dimitrous Str. 22-12, Moscow, RU102114.

The UDRP applies to this domain name.

With effect from January 1, 2000, the Registrar, adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). The Respondent has never requested that the domain name be deleted from the relevant domain name database. The Respondent has not sought to terminate his agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on November 30, 2000, transmitted by courier, email and facsimile a Notification of Complaint and Commencement of Administrative proceedings to the Respondent to the address provided by the Registrar. A copy of the Complaint was also emailed to ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by December 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

On January 2, 2001, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to be Sole Panelist in this case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Complainants have paid the required amount to the WIPO Center.

Sir Ian Barker duly advised his acceptance and forwarded to WIPO Center his statements of impartiality and independence. On January 5, 2001 the Complainants and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On January 15, 2001, WIPO Center forwarded the record to the Panelist by courier. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by January 19, 2001. Because of the delay in the file being received by the Panel, the decision date was extended to February 1, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules ") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The First Complainant is the publisher of The Sun ("the Newspaper") a daily newspaper in the United Kingdom and Eire. The Newspaper is also published in numerous other countries. The Newspaper is the largest selling newspaper in the United Kingdom and Eire. The daily number of readers during October 2000, was 9.8 million.

Since 1969, the First Complainant has published a picture of a topless woman (as well as a selection of current news articles) on page 3 of the Newspaper. By virtue of the considerable readership of the Newspaper, page 3 of the Newspaper has huge international renown and is uniquely associated with the Newspaper. In addition, the First Complainant is the owner of a number of registered trademarks for the name "Page 3" ("the Trade Marks"). A list of these registered TradeMarks and the classes of good for which they are registered are contained in Annexure D to the Complaint.

The Second Complainant operates a website under the domain name "PAGE3.COM" ("the Website"). The domain name "PAGE3.COM" was registered on behalf of the Second Complainant by News International Newspapers Limited on May 18, 1998, and the Website was launched on the Internet in November 1999. The Website is an on-line version of page 3 of the Newspaper. The Website contains pictures of women, which do not involve full frontal nudity or any sexual activity. The Website does not contain any hard-core pornography. The Website offers other attractions such as competitions, a shop (selling a variety of products such as electronic equipment and beer) and a letters page. The Website had 35 million web impressions during the month of October 2000.

The First Complainant first registered its trademark in respect of "PAGE THREE" on February 24, 1976, and in respect of "PAGE3" on October 29, 1997. The Second Complainant launched the Website in November 1999. The disputed domain name was registered on 17 July 2000.

The Respondent is not connected in any way to either of the Complainants and is not operating the domain name under any license, permission or consent by the Complainants.

As far as the Complainants are aware, the only use the Respondent has ever make of the mark PAG3 is the registration of the domain name and the running of a PAG3.COM website.

The Respondent’s PAG3.COM website contains pictures of hard-core pornography. If these pictures are selected, a number of different websites appear, each in a new browser. These websites appear, each in a new browser. These websites contain hard-core pornography or links to hard-core pornography. The website addresses of these other websites are totally different to the PAG3.COM address.

The Respondent failed to respond to "cease and desist" letters sent by the Complainants’ authorized representative on October 20, 2000, and failed to demonstrate any legitimate right to the domain name.

 

5. Parties’ Contentions

The Complainants submit:

(a) That the domain name registered by the Respondent is identical or confusingly similar to its registered TradeMarks and the common law mark established by the domain name "Page3.com";

(b) The Respondent has chosen a domain name, which, with the exception of one letter, is identical to its Website;

(c) The Respondent has therefore made an attempt to attract Internet users who may make a typing error;

(d) The domain name exists as a front page to attract Internet users to seven sites with different URL’s to both "Page3.com" and "Pag3.com". These sites are largely hard-core pornography. Any attempt to close the internet browser containing the "Pag3.com" site automatically leads to the opening of the seven limited sites, again in separate browsers. A similar process occurs when a user tries to close the browser of the linked sites which then re-open on the screen of their own accord;

(e) The Respondent has no legitimate rights or interest in the disputed domain name;

(f) The above facts indicated bad faith registration and use.

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainants, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

- That the Respondent has no legitimate interests in respect of the domain name.

- The domain name has been registered and used in bad faith.

In determining whether the domain name "pag3.com" is confusingly similar to the Complainants marks, the Panel has had regard to various tests in trademark law as to when a mark may not be registered where "the use… would be likely to deceive or cause confusion…". (These words cited, or similar, are to be found in the trademark statutes in several jurisdictions). Out of many cases, the following principles relevant to the present situation emerge:

All surrounding circumstances have to be taken into account, including the circumstances where the Complainants’ mark is likely to be used, the relevant market and the character of those involved in the market. See Polaroid Corporation v. Hannaford and Burton Ltd [1975] 1 NZLR 566 and Hi-Bred Corn Company v. Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.

The word "deceive" implies the creation of an incorrect belief and "causing confusion" may go no further than mixing up or perplexing the minds of the purchasing public: New Zealand Breweries Ltd v. Heineken [1964] NZLR 115. Where deception or confusing is alleged as to the source of the goods, "deceived" is equivalent to being misled into thinking that the goods bearing the Complainants’ mark come from some other source and "confused" indicates being caused to wonder whether that may not be the case (Hi-Bred Corn case).

Although the marks must be compared as a whole in determining confusion, when each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks: re Broadhead’s Application (1950), 67 RPC 209, 215.

Allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech (re Rysta’s Application (1943), 60 RPC 87, 188-9; Polaroid (supra) at 571).

The overall test is one of impression of confusion in the mind of the adjudicator making the decision: General Electric Co. v. General Electric Co. Ltd [1972] 1 WLR 729, 738: [1973] RPC 297.

Where an application is to be rejected on the ground of confusion, the Court (or Panel) must be satisfied that there is a real danger of confusion (Berlei (UK) Ltd v. Bali Brassiere Co Inc. [1969] 1 WLR 1306: [1969] RPC 472).

Applying these tests, the Panel considers that there is a real danger of confusion between both the Complainants’ registered mark "Page 3" and its common law mark "Page3" and the disputed domain name "Pag3.com" for the following reasons:

(a) The Complainants’ high profile would make internet users think that the domain name was connected with or affiliated to the Complainants in some way;

(b) The omission of the letter "e" in the disputed domain name is not such as to eliminate any confusion with the marks;

(c) The potential for confusion on the Internet is very real, given that typing errors by Internet users can be frequent (see WIPO Decision D2000-0587 relating to "typosquatting". See also Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd, (WIPO, D2000-1293). In the latter case, the Respondent registered "bigpons.com" in an attempt to divert callers from the Complainant’s website "bigpond.com".

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) he has made 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 prior to the dispute;

(b) he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel has considered the submissions under this criterion and determines that the Complainants have discharged the onus of proof and that the Respondent has failed to demonstrate a legitimate right or interest for the following reasons:

(a) There is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before the dispute commenced.

(b) The fact that the domain name directs users to pornographic sites is not a fair use of the name.

The Panel further determines that the Respondent has registered and continues to use the domain name in bad faith for the reasons set out above and in particular:

(a) The choice of name is confusingly similar to the Complainants TradeMarks – can be inferred as an opportunistic endeavor to cash in on the Complainants’ goodwill;

(b) The typosquatting factor referred to above; and

(c) The Respondent’s failure to reply to the Complainant’s "cease and desist" letters.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) The domain name registered by the Respondent is confusingly similar to the marks to which the Complainants have rights.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

(c) The Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(1) of the Policy, the Panel requires that the registration of the domain name ""pag3.com"" be transferred to the Complainants.

 

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Hon. Sir Ian Barker QC
Presiding Panelist

Dated: January 18, 2001