A V Communications Pty. Ltd. v. PS Consultants

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AV Communications Pty Ltd v. PS Consultants / William Poel

Case No. D2001-0358

1. The Parties

The Complainant is AV Communications Pty Ltd, an Australian corporation with

its principal place of business in Perth, Western Australia. The Complainant

is represented by a Director, Mr. John Gouteff.

In an amendment supplied to WIPO on April 26, 2001, the Complainant named

PS Consultants / Mr. William Poel as the Respondent. According to

the Response, Mr. William Poel, personally, is not the owner of the

domain names. They are owned either by PS Consultants – a partnership in

which William Poel is a partner – or by USP Networks Limited, which

is a company in which Mr. Poel is a director. The Respondent’s legal representative,

Mr. Alistair Kelman, has not precisely determined which company or partnership

is currently the actual owner of these domains. The Respondent’s legal representative

is prepared to undertake that any order made by the Panel concerning the said

domains and requiring any action (e.g. transfer etc) will be complied with by

all the said parties – Mr. William Poel, PS Consultants and USP Networks

Limited. For the purposes of this decision it will be convenient to refer merely

to "the Respondent" as applying to the correct owner of the disputed

names.

2. The Domain Name and Registrar

The domain names at issue are <tieline.com> and <tieline.net>.

The domain names were registered with Network Solutions Inc. of Mountain View,

CA, U.S.A.

3. Procedural History

The original Complaint, submitted by AV Communications Pty Ltd was received

on March 3, 2001, (electronic version) and April 2, 2001, (hard copy)

by the World Intellectual Property Organization Arbitration and Mediation Center

("WIPO Center").

On March 20, 2001, a request for Registrar verification was transmitted

by WIPO Center to NSI, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant

as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain names at issue are registered with NSI.

- Confirm that the person identified as the Respondent is the current registrant

of the domain names.

- 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, the technical contact, the administrative contact and the

billing contact for the disputed domain names.

- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP")

was in effect.

- Indicate the current status of the domain name.

By email dated March 22, 2001, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the domain name registration <tieline.com>

and <tieline.net>.

- PS Consultants is shown as the "current registrant" of the domain

names at the above address.

- The administrative and billing contact is USP Networks Ltd. Richard Poel

is the technical contact. He, PS Consultants and USP Networks Ltd

are all shown as having the same address in Chelmsford, Essex, U.K.

- NSI’s 5.0 Service Agreement is in effect.

- The domain name registrations <tieline.com> and <tieline.net>

are currently in "Active" status.

NSI has currently incorporated in its agreements the policy for Uniform Domain

Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned

Names and Numbers ("ICANN").

The advice from NSI that the domain names in question are still "active"

indicates that the Respondent has not requested that the domain names at issue

be deleted from the domain name database. The Respondent has not sought to terminate

the agreement with NSI. Accordingly, the Respondent is bound by the provisions

of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The

Respondent has not challenged the jurisdiction of the Panel.

The Complainant filed various amendments to its Complaint before the commencement

of the administrative proceeding.

Having verified that the Complaint satisfied the formal requirements of the

Uniform Domain Name Dispute Resolution Policy and the Rules for Uniform Domain

Name Dispute Resolution Policy as approved by ICANN on October 24, 1999,

("the Rules"), the WIPO Center on May 3, 2001, transmitted by

post-courier and by email a Notification of Complaint and Commencement of Administrative

Proceedings to the Respondent. A copy of the said Notification was also emailed

to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member:

it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within

20 calendar days. The Respondent was also advised that any Response should

be communicated, in accordance with the Rules, by four sets of hard copy and

by email. A Response was filed by the Respondent on May 15, 2001 (electronic

version only).

On May 19, 2001, the WIPO Center invited the Honorable Sir Ian Barker

QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted

to him a statement of acceptance and requested a declaration of impartiality

and independence.

On May 19, 2001, the Honorable Sir Ian Barker QC advised his

acceptance and forwarded to the WIPO Center his statement of impartiality and

independence. The Panelist finds that the Administrative Panel was properly

constituted in accordance with the Rules and the Supplemental Rules. Barring

exceptional circumstances, a decision from the Panel is due on June 4,

2001.

The Panel has independently determined and agrees with the assessment of WIPO

Center that the Complaint meets the formal requirements of the Rules and the

Supplemental Rules.

The language of the administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

Complainant

The Complainant owns the Australian registered mark TieLine (Australia) No.

782871 registered January 14, 1999. The trademark is registered for the

goods and/or services:

- Digital audio codes being goods in class 9;

- Telecommunications services using digital audio codes being services in class 38.

The Complainant designs and manufactures broadcast technologies. In May 1997,

it commenced specialized audio research into transmitting broadcast quality

audio over standard telephone connections. This form of technology is formally

known as Digital Audio Codec Compression.

Complainant exports this technology globally, and services the requirements

of radio broadcasters, television broadcasters, educational organizations, Government

bodies, covert surveillance authorities, and general industry. As part of its

marketing strategy, the name "TieLine" was trademarked to descriptively

depict a link between being tied between two points by means of a telephone

line. The trademarked name "TieLine" is a major brand name for AV Communications,

under which various models of TieLine products are positioned. "TieLine

Commander", "TieLine Express", "TieLine Pursuit", and

future "TieLine" products are to be launched later this year at trade

shows all over the world.

The trademark "TieLine" is used in successfully marketing the brand

name in Australia and internationally. "TieLine" the brand is sold

in the U.S.A, U.K., Italy, Holland, Sweden, South Africa, China, India, Korea,

New Zealand and Canada.

Complainant plans to introduce its product into more countries, particularly

South America and Asia. The brand name "TieLine" and its registered

trademark has been advertised globally in major trade magazines, journals and

displayed at major international trade shows.

The Complainant has promoted wide recognition of the "TieLine" trademark

to Australian, U.S., U.K., Europe and Asia radio broadcast organizations. "TieLine"

is recognized as a manufacturer and supplier of POTS (Plain Old Telephone Service)

audio codecs in these markets whilst AV Communications pursues other avenues

of audio and video technology.

The website for the disputed domain name states that the owner has intentions

of developing the site, but may wish to sell the domain name if someone is interested.

The site states that the domain name has been registered by USP Networks

on behalf of a customer. The domain names were registered on May 8, 1998.

The parties have conducted correspondence beginning on January 12, 1999,

when the Respondent indicated a willingness to sell but no agreement over price

was reached.

5. Parties’ Contentions

Complainant

The disputed domain names are identical to the Complainant’s registered trademark

"TieLine". The Respondent has no rights or legitimate interests in

respect of the domain names in question, and the Respondent has registered and

is using the domain names at issue in bad faith.

There has not been any bona fide offering of goods or services on the host

website since the registration of the domain names on May 8, 1998, three

years ago with no development of the site. The Respondent’s brand "TieLine"

is widely sold throughout the United Kingdom and Europe.

The Respondent has no legitimate right or interest in the domain names in question

and has been granted none by the Complainant.

Respondent has not traded, nor is his business commonly known by any of the

domain names in question (<tieline.com> or <tieline.net>). Nor have

there been any preparations to use the domain names or a name corresponding

to the domain names in connection with a bona fide offering of goods and

services.

Correspondence has been forwarded on numerous occasions over this aforementioned

period requesting Mr. William Poel to advise the asking price to transfer

the domain to AV Communications. Mr. Poel has openly invited offers

for the purchase of the domain name <tieline.com>, as is evidenced in

the email correspondence.

From the very first approach made to Mr. Poel on January 12, 1999,

he has made it clear that the domain names in question are for sale. This includes

<tieline.com> and <tieline.net>. The USP Networks website,

in which Mr. Poel holds himself out to be a director of the company, acts

as a stopping point for many of Mr. Poel’s domain name acquisitions. A

search conducted under the WHOIS look-up registry found that PS Consultants

owned over 50 top-level domain names.

William Poel admits that he is a trader in domain names, as is evidenced in

his email dated March 26, 2000, when he states:

"The more we get involved with domain name trades the less inclined I

am to sell this one. I’m sorry. Having just paid $6,000 for something we consider

to be a lot less attractive, this is an investment we will be holding for a

while longer".

Mr. William Poel has since publicly listed on USP Networks’ website, that

less attractive domain names using "TieLine", are now selling from

as low as £40 Sterling ranging to £85. The following was taken from USP Networks’

website:

"DOMAIN AVAILIABILITY

for the names you requested

<tieline.co.uk>

Already Assigned

£ N/A

<tieline.com>

Already Assigned

£ N/A

<tieline.ltd.uk>

Available to buy!

£ 40

<tieline.net>

Already Assigned

£ N/A

<tieline.org>

Already Assigned

£ N/A

<tieline.org.uk>

Available to buy!

£ 40

<tieline.plc.uk>

Available to buy!

£ 40

tieline.uk.com>

Available to buy!

£ 85"

The figures Mr. Poel is asking for to sell the domain names listed on

USP Networks’ website is considerably less than what Mr. Poel’s correspondence

has indicated he is willing to sell <tieline.com> to Complainant. The

price he is asking for clearly exceeds any expenses involved in the registration

of the domain names.

The Respondent advised that he was considering placing a redirector to monitor

the statistics of visitors to the <tieline.com> website, to ascertain

whether or not the domain name in question had commercial value to PS Consultants.

This tactic has since been deployed on the website in question. The Respondent’s

actions to measure web statistics for commercial benefit with the intention

to sell it, is obviously in bad faith. As the Respondent clearly shows, he has

no legitimate interest in developing the website with the intentions of any

bona fide offering of goods or services.

Respondent

"TieLine" trademark is not particularly distinctive. The word refers

to a telephone line that directly connects two or more private branch exchanges.

The word "tieline" is a generic (ie non-distinctive) term to describe

connecting communications systems together. "TieLine" was registered

in this context as a potentially useful domain to describe services which would

link together narrowband and/or broadband communications systems to serve the

domestic and commercial marketplace in Europe.

The domains remain potentially useful ones for the names for the kind of service

in the field of activity undertaken by Enformatica and its associated companies.

The mere fact that Respondent has not yet commenced to use these names does

not affect matters - Domain names are sold on a "first come, first

served" basis and, in preparation for long-term developments the "TieLine"

domains were purchased and are held. Consequently, the registration and ownership

of the "TieLine" names is not to considered as cyber-squatting. Cyber-squatting

is evidenced by:

- Failure of registrant to provide accurate registration details

- Failure to use domain without reason

- Registration of a famous mark coupled with an offer for sale

- Used to cyber-block or disrupt competitor

When enquiry was made to Mr. Poel asking whether the "TieLine"

domains could be purchased, the simple answer was "yes". The domains

were not registered to obtain squatter rights against anyone: they were bought

as part of a long-term development plan – no bad faith registration. But

business plans can be revised in the light of commercial circumstances – so

an offer for sale does not taint a good faith registration and make the continued

holding of a domain a bad faith usage.

Consideration was given in 1998 during the "dot.com" boom period

to developing these domains as a web trading site for the sale of mens’ ties

– an entirely unconnected activity to the normal meaning of "tieline"

in communications circles. Mr. Poel had meetings with a Mr. Charles

Adams, who was in the business of selling mens’ ties to Marks and Spencer. Accordingly

work was begun in 1998 on creating a mens’ tie website. A mock-up was created

on one of the USP servers by Mr. William Poel’s son, Mr. Christopher

Poel at USP Networks Limited. When the "dot.com" bubble burst

and speculative internet investment went out of favor, this idea was shelved.

However the mock-up of the "Tieline" site still exists at: http:/local.usp.net/www.tieline.com/.

The last time any work was done on this site was in March 1999.

The above evidence together with the URL of the mock-up site was communicated

to the Complainant on March 13, 2001, by Mr. Poel – the same day that

the Complainant filed his Complaint by email. Nevertheless the Complainant,

in the face of this evidence, has continued with this Administrative Proceeding.

The above evidence confirms the fact that the Complainant is in error in his

statement in these proceedings that "During the period since William Poel

registered the domain names <tieline.com>, and <tieline.net>, he

has not endeavoured to establish any web site …". On the contrary,

serious confidential preparatory work was undertaken in 1998 and 1999 ready

for the website to be linked to the "tieline" domain.

In the light of the above evidence, the Respondent’s explanation of the history

of this matter and a proper construction of the WIPO rules should show the Panel

that the Respondent has satisfied the Panel that this Complaint should be dismissed.

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 Complainant, 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 Complainant has rights;

and

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

name; and

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

In the view of the Panel, the domain names are identical to the Complainant’s

registered marks.

The Panel is not required to decide whether a trademark is one that could not

achieve registration on the ground that it is a generic name or a surname. This

mark has been registered in Australia. Such a registration is sufficient for

the purposes of a dispute under the Policy.

The Complainant gave the Respondent no rights or legitimate interests in the

disputed domain names. That finding can sometimes be sufficient for the Complainant

to discharge the initial evidential burden. Paragraph 4(a)(ii) of the Policy

indicates that a Respondent can demonstrate rights or legitimate interests in

the domain name. Thus:

(i) before any notice to you 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 and services; or

(ii) you (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 are making a legitimate non-commercial or fair use of the domain

name, without intent for commercial gain to misleadingly direct customers or

to tarnish the trademark or service mark at issue.

The Panel finds this second criterion proved. The Respondent, on its own admission,

speculates in domain names. There is no evidence of demonstrable preparations,

apart from a self-serving assertion of Respondent to use the names on the websites

for selling neck-ties on the internet. No supporting documentary evidence was

produced. It has not used the names since obtaining registration. Vague statements

such as that the names remain potentially useful names for services in communications

systems are unconvincing. Especially when the correspondence shows a desire

to gain a high price for the names and Mr. Poel referred to himself in

an his email of February 26, 2001 as a "name broker".

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances,

in particular but without limitation, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your web site 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 your web site or location

or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the

above.

The Panel considers that the Respondent registered and used the domain names

in "bad faith" for the following reasons:

(a) Respondent was prepared to contemplate a sale of the names to the Complainant

for far more than the cost of registration. The Respondent offered to sell <tieline.com>

for US$5,000. This conduct gives rise to the inference that Respondent registered

the name primarily for the purposes of selling it for valuable consideration.

(b) The Respondent made no claim that it had no knowledge of the Complainant

before registration of the names. In other WIPO cases where some credence has

been given to a Respondent’s ignorance of a trademark registered in another

country, where the domain name registrant is in another - usually distant –

country. This is especially so where the trademark owner’s business did not

extend to the country where the registrant lived. See for example WIPO D2000-0527

VZ VermögensZentrum AG v. Anything.com. However, given the Complainant’s

business in the U.K. where the Respondent lives and the absence of any claim

of ignorance, the Panel is prepared to infer bad faith registration.

(c) The failure by the Respondent to develop the website. Such a failure has

been held in many WIPO decisions as being indicative of bad faith use.

(d) There is the comment in the Respondent’s email of February 24, 2001,

"Cheap for a world-wide trademark if you ask me". This comment shows

that Respondent was alive to the value of the mark to the Complainant.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names registered by the Respondent are identical or confusingly

similar to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of

the domain names; and

(c) That the Respondent’s domain names have been registered and are being used

in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain name <tieline.com> and <tieline.net>

be transferred to the Complainant.

Hon. Sir Ian Barker QC

Sole Panelist

Dated: June 4, 2001