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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Soka Gakkai International-USA v. East West Services, Inc.

Case No. D2006-0117

 

1. The Parties

The Complainant is Soka Gakkai International-USA, Santa Monica, California, United States of America, represented by Crowell & Moring, LLP United States of America.

The Respondent is East West Services, Inc., Springfield, Virginia United States of America, represented by Satterlee Stephens Burke & Burke LLP, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <worldtribune.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2006. On January 27, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. Later that day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2006. The Response was filed with the Center on March 13, 2006.

The Center appointed Mr. David H. Bernstein as the Sole Panelist in this matter on March 27, 2006. The Panel finds that it was properly constituted. 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

Complainant is the owner of inter alia three U.S. Trademark Registrations: WORLD TRIBUNE (Reg. No. 2,688,308) in International Class 16 for “newspapers in the field of Buddhism”; WORLD TRIBUNE PRESS (Reg. No. 2,389,763) in International Class 41 for “publication of books, magazines, newspapers, pamphlets in print and electronic CD-ROM media featuring the Buddhist teachings of Nichiren Diashonin”; and WORLD TRIBUNE PRESS (Reg. No. 2,686,514) in International Class 41 for “publication of books, magazines, newspapers, pamphlets in print and electronic CD-ROM media featuring the Buddhist teachings of Nichiren Diashonin”.

Respondent is the owner of a U.S. Trademark application (Serial No. 78/310,344) for “WORLD TRIBUNE.COM” in International Class 41 for “providing an on-line news site featuring international news”. Complainant has opposed the registration of the mark and the two parties are currently involved in proceedings before the Trademark Trial and Appeals Board.

Both parties concede that there was communication between the parties in the Summer of 1998, and again in 2005. Respondent references a third-exchange in 2003.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that the domain name <worldtribune.com>, is identical to its family of WORLD TRIBUNE marks, which it defines to include WORLD TRIBUNE, WORLD TRIBUNE PRESS, WORLD TRIBUNE FAX, and WORLD TRIBUNE EXPRESS. The World Tribune Marks have, according to Complainant, been in use since as early as 1964 in connection with newspapers and other goods and services.

Complainant asserts that Respondent does not have any rights or legitimate interests in the domain name <worldtribune.com> because it registered the site without the consent of Complainant. In response to a letter sent by Complainant in 1998, Respondent stated it would cease publication of the site. This termination of publication is, Complainant argues, evidence that Respondent possesses no rights in the domain name.

In the original 1998 exchange, Complainant notes that Respondent stated that it conducted an Internet search and did not find “World Tribune”. Complainant argues that this could not be true, given the group’s use of the mark for nearly 40 years. In support of this belief, Complainant references a Google search, conducted in 2005.

Complainant argues that Respondent acted in bad faith by registering the domain name despite actual or constructive knowledge of Complainant’s rights, and cites the following decisions in support of that proposition: Eastman Kodak Co. v. Dionne Lamb, FA 97644 (Nat. Arb. Forum July 17, 2001); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum August 30, 2000), Rollerblade Inc. v. Chris McReady, WIPO Case No. D2000-0429 (June 25, 2000), Playboy Enterprises International Inc. v. Federico Concas, WIPO Case No. D2001-0745 (August 5, 2001).

Complainant also points to the course of dealing between the parties as proof of Respondent’s bad faith. In particular, Complainant asserts that Respondent’s “flagrant disingenuous statements” that it had terminated the prototype for the site, only to notify Complainant shortly thereafter that it had resumed publication was “an intentional attempt to attract for commercial gain Internet users to the Respondent’s website”.

Complainant also references a 2005 exchange, which it characterizes as “attempts to extort monies from Complainant far in excess of the relative value of the domain name…” In response to an offer of “fair payment” of $3,000, Respondent countered with a final offer of $200,000.

B. Respondent

Respondent states that it has used the domain name <worldtribune.com> “in connection with a daily Internet newspaper focusing on international news and commentary” since 1998.

Respondent contends that Complainant does not have exclusive rights to trademark WORLD TRIBUNE. Respondent points to a now defunct registration for KIDS WORLD TRIBUNE, which was registered prior to Complainant’s marks and co-existed in the marketplace, as well as the prevalence of the phrase “World Tribune” for businesses unrelated to the Complainant. Respondent suggests that “World Tribune” is suggestive of Internet news services, noting that “world” and “tribune” are common terms, and recognizing 37 registered marks for newspapers that include the word “Tribune”.

Respondent takes issue with Complainant’s characterization that it uses the mark for “newspapers”. According to Respondent, Complainant’s actual use appears to be much narrower. The federal registration for WORLD TRIBUNE is limited to “newspapers in the field of Buddhism”; Complainant’s other registrations are “also limited in their scope to publications related to Buddhist teachings, more specifically the teachings of Nichiren Diashonin”. Respondent notes that no affidavits or examples of the newspapers are attached to the Complaint and that the “international” and “national” sections of the website maintained by Complainant at <sgi-usa.org> contain information only about Soka Gakkai. Thus, Respondent argues, there is no overlap in the services between the two parties, as Complainant’s use is narrowly limited to those interested in Buddhism, while Respondent targets a general audience.

Respondent asserts that it has made bona fide use of the mark since 1998. Respondent certifies that it was unaware of Complainant’s marks when it registered the domain to create an Internet newspaper.

By the time Respondent was notified by Complainant of the potential conflict in August of 1998, a prototype of the news site had already been created. Although Respondent initially ceased publication of the site, after consulting with an attorney, Respondent notified Complainant that it would resume publication. Respondent states that it had a good faith belief that its mark could co-exist with Complainant’s mark when it made this decision.

Respondent claims that its site is well-known among “newshounds”; receives attention from other bloggers; and has been the subject of an article in The New Yorker magazine. The site averages 3 million page views monthly and, in September 2001, received over 10 million page views.

Respondent disputes any allegations of bad faith, questioning the validity of the constructive notice claim. Respondent notes that some panels have rejected that theory, citing Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757 (October 7, 2002), and others. Arguing that all of the cases cited by Complainant involve evidence of fame, if not actual knowledge, Respondent notes that, in this case, familiarity cannot be presumed. Among other things, Complainant’s mark had not yet been registered with the USPTO at the time that Respondent registered the domain name.

Respondent also claims that previous contacts with Complainant do not establish bad faith. The 1998 letter, it argues, does not state that Respondent conducted a broad search, but rather that it searched with domain name registration services to determine the availability of the Domain Name. Furthermore, Respondent asserts that the 2005 negotiation was not part of a pattern of conduct. The Respondent also states that it has invested substantial investment in the development of the site.

As a result, Respondent claims that the action should be barred by laches because the Complaint was filed more than six years after Complainant’s first threat. After the parties’ first round of correspondence, Respondent continued to use this Domain Name for its website and the Complainant did not contact Respondent again until 2003. At that time, Complainant threatened legal action, but it did not act upon that threat until January 2006. In the interim, Respondent claims, it acted in detrimental reliance and invested time and money in building substantial good will in the <worldtribune.com> Domain Name and website.

 

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

To prevail under the first factor Complainant has to prove that it has rights in a relevant mark and that the Domain Name is identical or confusingly similar to that mark. The Panel concludes that Complainant has satisfied its burden on both parts of this factor.

Complainant has established that it owns a trademark registration for the mark WORLD TRIBUNE. But for the addition of the gTLD “.com”, the domain name is identical to this mark. See Champagne Lanson v. Development Services, WIPO Case No. D2006-0006 (March 20, 2006). Accordingly, Complainant prevails under the first factor.

B. Rights or Legitimate Interests

Under paragraph 4(c)(i) of the Policy, a respondent can demonstrate rights or a legitimate interest in a domain name if it can show that, “before any notice to [respondent] of the dispute, [respondent made] 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”.

Respondent has provided evidence that it had developed a prototype of an international news site prior to receiving Complainant’s first letter. There is no evidence in the record to suggest that Respondent had any knowledge of a potential dispute, or even of Complainant’s existence, before then. Thus, the only question is whether the offering of international news on a website using the domain name <worldtribune.com> constitutes a bona fide offering of services.

For this website to constitute a bona fide offering of services, the domain name used for the website cannot constitute infringement of Complainant’s trademark. See Universal City Studios, Inc. v G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000). That is a difficult issue for a Panel to resolve given the limited factual record submitted in a UDRP proceeding and the absence of discovery and live testimony. Thus, although the Panel is charged to make the best decision it can on the evidence available, Bootie Brewing Co. v. Deanna D. Ward and Grabebootie, Inc., WIPO Case No. D2003-0185 (May 28, 2002), the Panel also acknowledges that its decision is based on an incomplete record.¹

Although Complainant appears to have owned trademark rights in the mark WORLD TRIBUNE in 1998 (with rights dating back to 1964), it did not apply for its first trademark registration until 1999, and its rights in any event seem to have been limited to the field of Buddhism and the teachings of Nichiren Diashonin. Moreover, the Panel is aware of many other co-existing uses of the designation TRIBUNE for a newspaper, including the International Herald Tribune, The Chicago Tribune, and The Tampa Tribune. Indeed, Respondent cites 37 trademark registrations for the term “Tribune” that are related to newspapers. Considering the common use of the designation TRIBUNE for a newspaper, the descriptive nature of the word WORLD for a newspaper or news website on world news, and the more limited field of Complainant’s services, the Panel concludes, solely for purposes of this proceeding, that Respondent’s use of the Domain Name for a world news website was a bona fide offering of services in 1998.

Supporting that conclusion is the fact that, in response to Respondent’s application to register WORLD TRIBUNE.COM as a trademark, the U.S. Patent & Trademark Office’s Trademark Examiner approved Respondent’s mark for publication, notwithstanding Complainant’s prior, registered trademark for WORLD TRIBUNE for “newspapers in the field of Buddhism”. That is not a final determination, as the parties are now engaged in an inter parties proceeding before the Trademark Trial and Appeals Board, but it is relevant for purposes of showing that at least one independent observer has reached the same conclusion.

Because the Panel concludes that Respondent has demonstrated rights or a legitimate interest in the Domain Name, for purposes of this proceeding, the Panel rules that Complainant has failed to satisfy the requirements of the second factor.

C. Registered and Used in Bad Faith

In order to prevail on the third factor, Complainant must prove that Respondent both registered and used the domain name in bad faith. DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 (November 24, 2003). Complainant has failed to satisfy that burden.

There is no evidence in the record to indicate that Respondent was aware of Complainant or its trademark rights at the time it registered the domain name in 1998. Complainant did not even have a trademark registration at that time, and it has not established that it was so famous or well known that Respondent must have been aware of Complainant and its mark. Thus, there is no evidence that can support a finding that Respondent registered the domain name in bad faith.

Complainant nevertheless claims that, given its “40 years” of use, Respondent should have been aware of its existence. The only support provided for this contention is a Google search, conducted more than seven years after Respondent registered the Domain Name. There is no evidence that a search conducted at the time of registration, in a different marketplace with different technology, would have yielded the same results. Even if it did, mere knowledge of the group’s existence does not establish that the mark is exclusively associated with the Complainant.

Because the Panel has found that Respondent did not register the Domain Name in bad faith, the Panel need not consider Complainant’s allegations of bad faith use.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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David H. Bernstein
Sole Panelist

Dated: April 17, 2006

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¹ The parties are free, of course, to develop a more complete factual record in any court or other proceedings that they may pursue against each other. Indeed, the Panel notes that the parties already appear to be engaged in a trademark opposition proceeding in the United States Patent & Trademark Office. In those proceedings, the parties will be able to pursue discovery, cross-examine witnesses, and submit credibility determinations to the trier of fact, all of which will allow a more definitive resolution of any factual disputes. See Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001). In the event of any such proceedings, this decision (which is intended to resolve only this dispute under the Policy) would be of no effect as such proceedings would be conducted under different procedural rules and substantive laws. Visual Gis Engineering S.L. v. Nitin Tripathi, WIPO Case No. D2006-0079 at n.1 (March 23, 2006).