National Children's and Youth Law Centre v. LanLA Communications

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

National

Children’s and Youth Law Centre v. LanLA Communications

Case No.

D2001-0676

1. The Parties

Complainant: National

Children’s and Youth Law Centre

University of New

South Wales

Sydney NSW 2052

Australia

Respondent: LanLA Communications

269 South Beverly

Drive #425

Beverly Hills, California

90212

United States of

America

2. The Domain Name and

Registrar

Domain Name: <lawstuff.org>

Registrar: BulkRegister.com

3. Procedural History

The Complaint was received

by WIPO by email on May 21, 2001, and in hardcopy form on May 28, 2001. WIPO

has verified that the Complaint satisfies the formal requirements of the Policy,

the Rules and the Supplemental Rules and that payment was properly made. The

Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly

notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed

that <lawsuff.org> ("the Domain Name") was registered through

BulkRegister.com and that LanLA Communications ("the Respondent")

is the current registrant. The Registrar has further confirmed that the Policy

is applicable to the Domain Name.

On May 29, 2001, WIPO notified

the Respondent of the Complaint in the usual manner and informed the Respondent

inter alia that the last day for sending its Response to the Complainant

and to WIPO was June 17, 2001. No Response was received.

On June 17, 2001, WIPO

issued a Notification of Respondent Default.

The Panel was properly

constituted. The undersigned Panelist submitted a Statement of Acceptance and

a Declaration of Impartiality and Independence.

No further submissions

having been received by WIPO, the date scheduled for the issuance of the Panel’s

Decision is July 11, 2001.

4. Factual Background

The Complaint says very

little about the Complainant. It appears to be an organization housed at the

University of South Wales which, since 1997, has administered a well-known (in

Australia) website at "www.lawstuff.org.au" providing a simple guide for young

people about aspects of the law which might affect them.

The Complainant is the

registered proprietor of an Australian service mark for a words and device mark

of which the most prominent element is the word "Lawstuff". Other

text forming part of the mark reads "Know your rights …. Lawstuff – the

website with a whole bunch of stuff about legal rights for people under 18".

The mark is a service mark registered in classes 38, 41 and 42 for inter

alia telecommunications services, education services and legal services.

Quite apart from the registered

service mark referred to above, it is manifest from what the Complainant has

exhibited to the Complaint that its web service to young people is very well-known

in Australia under and by reference to the name "Lawstuff".

In January the Complainant

was short-listed for a Cable and Wireless Childnet Award and the award and the

shortlist were publicized at "www.childnet-int.org" and by a worldwide press

release.

According to the Complainant

(and this has not been contradicted by the Respondent) the Respondent registered

the Domain Name on February 22, 2001. The Respondent has connected the Domain

Name to various pornographic websites such as "www.allpetite.com" and "www.medcrit.com".

Between March and May 2001,

the parties have been in correspondence. The Complainant wrote to the Respondent

demanding that the Respondent cease using the Domain Name for pornographic material.

The Respondent claimed that it had withdrawn the site and demanded $295 compensation.

The Complainant refused to pay and further correspondence ensued with the Respondent

continuing from time to time to link the Domain Name to pornographic sites.

Ultimately the parties agreed terms for transfer of the Domain Name at $150,

but the Respondent declined to execute the Deed of transfer sent to it by the

Complainant’s lawyers.

5. Parties’ Contentions

A. Complainant

The Complainant contends

that the Complaint should succeed for the following reasons:

· The Domain Name is

identical or confusingly similar to the Complainant’s name and registered service

mark, the principal element of which is the name "Lawstuff".

· The Respondent has

no rights or legitimate interests in respect of the Domain Name. It is not the

Respondent’s name. The Respondent has never used it other than to link it to

other sites using other domain names. The name has no obvious connection with

any of the sites to which it is connected.

· The Domain Name was

registered in bad faith and is being used in bad faith. The Complainant points

to the pornographic nature of the sites to which the Domain Name is linked.

The Complainant asks the Panel to infer that the timing of the announcement

of the shortlist of the Cable and Wireless Award and the registration the following

month of the Domain Name was not accidental. The Complainant states that because

the Domain Name links to sites wholly unsuited to the Complainant’s audience,

the Complainant has cut back on its promotion of its award nomination. The Complainant

contends that the Respondent is deliberately seeking to cause damage to the

Complainant and the children seeking access to the Complainant’s site. Finally,

the Complainant points to the inter-partes correspondence in which the Respondent

seeks compensation in excess of its out-of-pocket expenses and in which, according

to the Complainant, the Respondent reneges on its promises.

B. Respondent

The Respondent has not

responded.

6. Discussion and Findings

General

According to paragraph

4(a) of the Policy, the Complainant must prove that

(i) The Domain Name

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and

(ii) The Respondent

has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name

has been registered and is being used in bad faith.

Identical or confusing

similarity

The Complainant’s trade/service

mark rights in the mark Lawstuff are clear. It is the name and common law trademark

by which the Complainant’s service is known and recognized in Australia and

it is the principal element of the registered mark. The Domain Name comprises

the name "lawstuff" and the generic <.org> suffix.

The Panel holds that the

Domain Name is identical or confusingly similar to a service mark in which the

Complainant has rights.

Rights or legitimate interest

of the Respondent

The Respondent has not

disputed the Complainant’s claim that the Domain Name is the Complainant’s name.

The Respondent has made no attempt to demonstrate whether by reference to paragraph

4(c) of the Policy or otherwise that it has rights or legitimate interests in

respect of the Domain Name. There is nothing before the Panel to indicate why

the Respondent might claim to have rights or legitimate interests in respect

of the Domain Name.

The Panel finds that the

Respondent has no rights or legitimate interest in respect of the Domain Name.

Bad Faith

While the Panel notes the

Complainant’s concerns and understands the Complainant’s anger at the way the

Respondent appears to have behaved in the course of the negotiations, there

is no basis for a bad faith finding under paragraph 4(a)(iii) of the Policy

in this case.

A Complaint under the Policy

cannot get off the ground unless at the very least the Respondent had the Complainant

or its trade/service mark in mind when effecting the registration of the Domain

Name and/or commencing the offending use. The Complainant relies upon the fact

that the Domain name was registered a few weeks after the announcement that

the Complainant’s service had been shortlisted for an award in a press release

and on "www.childnet-int.org". The Panel can see no obvious reason why a pornographer

in Los Angeles should have come across the announcement via those media. The

Panel is not prepared to make that assumption without some other evidence.

The fact that the Respondent

has sought sums for the transfer of the Domain Name in excess of the Respondent’s

out-of-pocket expenses is proof of nothing in a case such as this where (a)

the Respondent made no approach to the Complainant, (b) there is nothing apart

from the Domain name itself to show that the Respondent might have been aware

of the Complainant’s service when registering it, and (c) the name is not so

famous outside Australia as to make the inference an obvious one that a Los

Angeles pornographer would have come across it.

Had the Complainant proved

to the satisfaction of the Panel that the Domain Name had been registered with

the Complainant in mind, the Panel would have had no difficulty in finding bad

faith registration and use of the Domain Name.

As it is, the Panel finds

that the Complainant has failed to prove that the Domain Name was registered

in bad faith.

7. Decision

The Complaint is dismissed.

Tony Willoughby

Sole Panelist

Dated: July

2, 2001