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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Corbis Corporation v. CORBIS Internet-MY, c/o John Pickworth

Case No. D2006-1631

 

1. The Parties

The Complainant is Corbis Corporation, Seattle, Washington, United States of America, represented by Preston Gates & Ellis, LLP.

The Respondent is CORBIS Internet-MY, Kuala Lumpur, Malaysia, c/o John Pickworth, Lancashire, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <corbis.net> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On December 22, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 22, 2006, Tucows 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 December 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2007. The Response was filed with the Center on January 17, 2007.

On January 6, 2007, the Complainant filed a request for an additional submission. On January 6, 2007, the Respondent requested the Panel to deny the request. On February 12, 2007, the Panel rendered an Administrative Panel Procedural Order in which the Complainant was permitted to file a supplemental submission. On February 20, 2007, the Complainant filed a supplemental submission. On February 28, 2007, the Respondent filed a response to the Complainant’s supplemental filing.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 29, 2007. 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

The Complainant is in the digital media business, providing digital image licensing, artist representation and media management.

The Complainant is the holder of the word mark CORBIS, registered with the United States Patent and Trademark Office on July 30, 1996, and on December 17, 1996, and registered with the Patent Office of the United Kingdom on February 12, 1999, and on December 19, 2004.

The Complainant is the holder of the domain names <corbis.com> and <corbis.co.uk>.

The Respondent registered the domain name <corbis.net> on December 23, 1999.

 

5. Parties’ Contentions

A. The Complaint

The Complainant claims that its CORBIS trademark is entitled to broad protection since it is an arbitrary (or fanciful) word, inherently distinctive and has acquired secondary meaning through widespread customer recognition.

The Complainant submits that it is the second largest global provider of imagery and related services to business users, and that it has invested extensively in marketing and advertising to promote the CORBIS trademark worldwide. According to the Complainant, the CORBIS mark has achieved widespread recognition and secondary meaning over the past ten years.

Identical or Confusingly Similar

The Complainant contends that the domain name <corbis.net> is identical to the Complainant’s trademark, since the generic top-level addition “.net” is irrelevant when determining whether a domain name is confusingly similar to an established trademark.

Rights or Legitimate Interests

The Complainant contends that the Respondent has neither used nor made demonstrable preparations to use the domain name in connection with a bona fide offering of goods. For some time the domain name featured links to additional sites, such as a resume writing service, a copy write assistance service and a link for home theater products. The Complainant states that the use of a domain name for redirecting internet users to commercial websites, unrelated to the Complainant and apparently with the purpose of earning a commission or referral fee, does not generate rights or a legitimate interest in a domain name.

Registered and Used in Bad Faith

The Respondent’s registration of the disputed domain name was, according to the Complainant, merely an attempt to take unfair advantage of the goodwill of the word “Corbis”, resulting from the Complainant’s substantial use of the mark CORBIS in the United Kingdom and internationally.

According to the Complainant, the Respondent’s bad faith in registering <corbis.net> is apparent by examining the Respondent’s past and present use of the domain name. The Complainant hereby refers to paragraph 4 (b)(iv) of the Policy, which provides that the respondent should have intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

The Complainant contends that the Respondent has in the past used the domain name in bad faith by including links on the “www.corbis.net” website that redirect to business ventures unrelated to the Respondent. By linking to a website that provides information on home theater and cinema systems and to a resume writing site, the Respondent traded on the Complainant’s goodwill by creating a likelihood of confusion with the Complainant’s trademark CORBIS as to the source, sponsorship, affiliation or endorsement of the website “www.corbis.net” and related websites.

The Complainant furthermore contends that the Respondent currently uses the domain name in bad faith by “passive holding” since the website links the user to an erroneous webpage.

B. The Response

Identical or Confusingly Similar

The Respondent recognizes that his trade name Corbis Internet is (somewhat) similar to the Complainant’s trademark, but states that the similarity is accidental.

The Respondent contends that the disputed domain name does not create a likelihood of confusion with the Complainant’s trademark since he has never offered anything remotely similar to the services or products offered by the Complainant. According to the Respondent, the fact that the Complainant has shown no interest in the domain name for the past twelve years weakens the Complainant’s trademark infringement claim.

Rights or Legitimate Interests

The Respondent contends that he has been known by the name “Corbis” since his teenage years when he used the name as a nickname. The Respondent substantiates this by providing a print-out of his school website and photocopies of technical drawings signed by “Corbis” in 1979.

The Respondent further contends that from 1988 he has used the name “Corbis” for a small business and from 1996, for a small catering business. The Respondent substantiates this with a photocopy of the accounts of “Corbis catering”.

The Respondent states that he has been engaged in small-scale web design services under the name “Corbis Internet” since 1995. In December 1999, he registered the domain name <corbis.net> for the purpose of showcasing his work and to host email services for family and friends.

During 2006, the Respondent ceased his business activities, but maintained his non-professional use of the domain name. In October and December 2006 the Respondent renewed the domain name and made preparations to restart his web design services.

Registered and Used in Bad Faith

The Respondent denies that he was aware of an existing <corbis.com> website at the time of the registration of the disputed domain name. The Respondent furthermore states that it was impractical and not inexpensive to check for existing trademarks at the time.

The Respondent states that since his registration, the domain name has been used for private projects or for concept ideas or sample sites for clients. He has been continuously online professionally and personally as either “Corbis Internet” or “Corbis”. Furthermore, the Respondent states that his primary personal email address has been “john@corbis.net” since 1999.

Regarding the alleged bad faith use of the disputed domain name, the Respondent states that any websites linked with <corbis.net> have either been his personal websites or a website of a client. The Respondent further states that he has never engaged in online promotions or advertising activities, nor has he used or joined an affiliate or click-thru scheme under the disputed domain name.

Regarding the passive holding, the Respondent states that he has briefly, from time to time, not hosted a website under the domain name <corbis.net> due to server configuration problems, a new unfinished project or because he did not wish to host a website at that particular time. The Respondent states however, that at all times a front page was operative which identified the website as “Corbis Internet” and a continuous unbroken email service has also been maintained. Furthermore, the domain name <corbis.net> has periodically been used for private web services.

The Respondent contends that the Complaint is a case of reverse domain name hi-jacking, since the Complainant has no need to relief against the Respondent and nothing to gain except the disputed domain name.

C. Supplemental Filing of Complainant

The Complainant contends that, for a considerable length of time, it has had an affiliate in the United Kingdom (Corbis Images UK Ltd) and a website “www.corbis.co.uk” specifically aimed at the United Kingdom.

The Complainant asserts that the Respondent is not commonly known by the name “Corbis”. The Complainant is of the opinion that the Respondent has not provided adequate evidence of the use of the (nick)name “Corbis” and states that there are no UDRP decisions, United Kingdom or United States legal decisions that support the Respondent’s argument that his alleged nickname “Corbis” confers any rights or legitimate interest to the domain name in question.

The Complainant contends that the Respondent had or should have had full knowledge of the Complainant’s trademark rights when he registered the <corbis.net> domain name on December 23, 1999, since the CORBIS trademark had been registered in the United Kingdom on February 12, 1999. Furthermore, the Complainant contends that it is unlikely that the Respondent was unaware of the existence of the extensive business of Corbis and its use of the domain name <corbis.com>.

The Respondent’s statement that it was not practical or inexpensive to check existing trademarks at the time of registration is also an act of bad faith, since he misled the Panel regarding online trademark searches. The Complainant provides evidence that the “www.patent.gov.uk” website, on which the Respondent registered the domain name, did provide the means to search for registered trademarks in December 1999.

The Complainant furthermore contends that the failure of the Respondent to reply to the Complainant’s cease and desist letter sent to “info@corbis.net” and “corbis@corbis.net” is evidence of bad faith, now that the Respondent claims that the domain name <corbis.net> has maintained a continuous unbroken email service.

Regarding the passive holding the Respondent’s argument that he has not passively used the domain name fails, since the Respondent provides only one example of an email used under the disputed domain name.

Finally, the Complainant contends that the Respondent’s claim for reverse domain name hi-jacking is unfounded and not supported by any evidence.

D. Response to Supplemental Filing

The Respondent provides evidence that the Complainant’s affiliate Corbis Images UK Ltd was only incorporated in 2001, and did therefore not exist at the time of the registration of the domain name.

The Respondent furthermore contends that he has not acted in bad faith by ignoring the cease and desist letters sent by email. The email address “corbis@corbis.net” has not been used by the Respondent since 2000. The email address “john@corbis.net” is still used by the Respondent. The Respondent suspects that the Complainant incorrectly addressed this email. According to the Respondent, the Complainant should have provided evidence that it correctly addressed the cease and desist letter.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence that it has trademark rights to the name “CORBIS”.

The disputed domain name <corbis.net> is identical to the Complainant’s trademark CORBIS, since the “.net” suffix only indicates that the disputed domain name is registered on the “.net” gTLD.

B. Rights or Legitimate Interests

Since the Complainant has failed to establish one of the three cumulative requirements of the Policy (see below), it is not necessary to discuss whether the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under the Policy, the burden of proof rests on the Complainant to prove bad faith registration and use. In this context, the Complainant has asserted that the Respondent had or should have been aware of its trademark rights in the UK, its website and its business when registering the domain name in 1999. However, the evidence submitted by the Complainant that its trademark is well-known – which might constitute proof of such knowledge –consists of an affidavit from Corbis’ General Counsel who has been with Corbis since 2000. Neither this affidavit, nor any other documents submitted by the Complainant, relate to the trademark’s reputation in 1999, when the domain name was registered.

The fact that the trademark could have been found by the Respondent if it had conducted a trademark search at the time of registration of the disputed domain name is not decisive in this case. Taken on its own, the Respondent’s failure to conduct an online trademark search which could have revealed the existence of the Complainant’s trademark, is not in the circumstances sufficient to prove registration was in bad faith (See Fitter International Inc. v. Eenable Inc., WIPO Case No. D2001-0979; Alberto Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757; The Zoological Society of San Diego, Inc. v Addinity One, LLC, WIPO Case No. D2006-1458).

Nor is there a consensus view under the UDRP that a trademark registration such as that in the present case constitutes “constructive knowledge” of that registration, as the Complainant apparently submits. This may be different where both parties are from the US, as evidenced by several WIPO decisions, but since the Respondent is apparently not from the US, this cannot readily be relied upon in this case.

The Complainant also relies on paragraph 4(b) (iv) of the Policy, which states that bad faith exists if the Respondent used the domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her/its website or location or of a product or service on that website or location.

The circumstance in this case that the website under <corbis.net> in the past contained links to websites of third parties is not as such evidence that the Respondent sought to intentionally profit from a likelihood of confusion with the Complainant to direct internet traffic to his website under the disputed domain name. As the Respondent has explained, the relevant websites are those of some of its customers. This is confirmed by the evidence, submitted by the Complainant, of correspondence with one of these customers.

Regarding the passive holding of a website, the Complainant has correctly submitted that this may constitute bad faith use in certain cases (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). However, in the circumstances of this case, although the evidence provided confirms that the website “www.corbis.net” was not always used intensively, there is no compelling evidence that the disputed domain name was merely passively held. The fact that the website has been offline for short periods of time due to apparent technical problems does not constitute compelling evidence of passive holding.

Finally, from the evidence provided it can not be concluded whether the Respondent did or did not receive the Complainant’s cease and desist letter. Regardless thereof, the failure to respond to a cease a desist letter, on its own, does not demonstrate registration or use in bad faith (See also AFMA, Inc., v. Globemedia, WIPO Case No. D2001-0558).

The Complainant has therefore failed to show that the Respondent has registered and used the disputed domain name in bad faith.

D. Reverse domain name hijacking

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”. To prevail on such a claim, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith (See Sydney Opera House Trust v Trilynx Pty. Limited, WIPO Case No. D2000-1224).

The Panel is of the opinion that, since (i) the Complainant has provided sufficient evidence that it has trademark rights to the name “CORBIS” which existed before the registration of the domain name, and (ii) the Complainant did not receive a response to its cease and desist letter, the Complainant cannot be said to have used the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. The reverse domain name hijacking claim is therefore denied.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Wolter Wefers Bettink
Sole Panelist

Dated: March 12, 2007