Reuters Limited v. Stealth Commerce (aka Telmex Management Services)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Reuters Limited v. Stealth Commerce (a/k/a Telmex Management Services)

Case No: D2002-0223

1. The Parties

The Complainant is Reuters Limited, a corporation registered under the laws of England and Wales, with a registered office at 85 Fleet Street, London, United Kingdom.

According to the SAEGIS database, the Respondent is Stealth Commerce of Pasae Estate, Road Town, Tortola, Virgin Islands, BV1, which has been the registrant of the domain name in dispute since February 15, 2002. Prior to this date, the registrant was Telmex Management Services of the same address (Complaint, Exhibit A). It may be assumed that the two registrants are linked, or that they are even the same entity; for the purposes of the present proceeding, it is sufficient to note that the Respondent is Stealth Commerce.

2. The Domain Name and Registrar

The domain name in dispute is <reutersnewsagency.com> and is registered with DirectNIC, Intercosmos Media Group, Inc., 650 Poydras Street, New Orleans, Louisiana, United States of America.

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution

Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on August 26, 1999, ("the Policy"), in accordance with the

Rules for Uniform Domain Name Dispute Resolution Policy, also adopted by ICANN

on October 24, 1999, ("the Rules"), and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center

(the "Center") on March 6, 2002, (by email) and on March 11, 2002,

(in hardcopy). Following verification of the registration of the domain name

and other details with the Registrar (DirectNIC) on March 19, 2002,

the Center completed its compliance checklist on March 21, 2002, and

then notified the Respondent of the Complaint and the commencement of administrative

proceedings, together with a copy of the Complaint, on the same day. An amended

Notification of Complaint was then sent to the Respondent on March 25, 2002.

These steps were in accordance with paragraph 2(a) of the Rules. In accordance

with the Rules and Supplemental Rules, the Respondent was given until April 10, 2002,

in which to file a Response.

3.3 On April 15, 2002, the Center issued a Notification of Respondent Default

to the Respondent, stating that it had received no Response within the specified

time, and that it would now proceed to the appointment of an Administrative

Panel.

3.4 On April 24, 2002, the parties were notified of the appointment of the

Administrative Panel to be composed of Staniforth Ricketson (as sole member)

and the projected decision date of May 8, 2002.

3.5 In light of the above, the Panel finds that:

- The Complaint was filed in accordance with the requirements of the Rules

and the WIPO Supplemental Rules.

- The Respondent was properly notified of the Complaint, in accordance with

paragraph 2 of the Rules.

- The Panel was correctly constituted.

3.6 No communication has been received from the Respondent at any time during

these proceedings, although the Panel would have been prepared to receive and

consider such a communication up to the date of finalization of the decision.

In the absence of any Response by the Respondent, the Panel now proceeds to

determine the dispute on the basis of the Complaint under paragraph 5(e) of

the Rules.

4. Factual Background

4.1 The Complainant is a leading international news and financial information

services group and is also the "largest international news and television

agency in the world, serving both traditional and new media" (Complaint,

par 9). It is the owner of a large number of marks comprising the name "Reuters"

on its own and in combination with other words or symbols, and has registrations

for these marks in a large number of countries, including the USA, the UK, Canada,

the European Union and Australia (a full list is provided in Complaint, Exhibit

C). These are registered in a number of classes of goods and services, but principally

in classes 16, 35, 36, 38 and 42. It is stated further in the Complaint (pars

11 and 12) that the "Reuters" trade mark has been extensively used

by the Complainant on television and the Internet, in newspapers and in various

other media, and that the Complainant has an "active presence on the Internet"

based on the domain name "reuters.com" and a number of domain names

incorporating the name "Reuters" (Complaint, part 13).

4.2 The Complainant states that, on October 15, 2002, Telmex Management

Services, registered the domain name <reutersnewsagency.com> (Complaint,

Exhibit A) and that the registration information in relation to this was changed

on February 15, 2002, by changing the registration to Stealth Commerce.

However, the mailing address provided by both Telmex and Stealth to the registrar

of the domain name was identical (although the name of the administrative, technical

and billing contact was changed), and the website associated with the domain

name remained the same (Complaint, par 16). This domain name, in turn, directs

traffic to a website at http://www.girlhire of which Telmex and Stealth have

successively been registrants, this change having occurred on February 15, 2002,

the date on which the registrant details for <reutersnewsagency.com> were

changed (Complaint, exhibit F). Upon entering < reutersnewsagency.com>

and then http://www.girlhire visitors view an image of a woman with the caption

"it’s simple…we provide women". There is a list that indicates that

the women advertised provide a variety of escort and temp services, ranging

from those of an "executive lover", "escort", "fantasy

maid", "secretary" and "wife". Various pictures and

biographies are provided, which indicate that the services provided are not

just conventional secretarial and office services: see generally, Complaint,

par 19, and Exhibit G. There is evidence that the Respondent has also registered

a number of other domain names incorporating well known trade marks, such as

<theholidayinn.com> and <thequalityinn.com> which direct Internet

users to other websites controlled by the Respondents that offer escort services

and the like, similar to those offered at http://www.girlhire (se further Complaint,

par 20 and Exhibit H).

4.3 On learning of the registration of <reutersnewsagency.com> by Telmex,

the Complainant sent Telmex a letter and email on November 30, 2001,

requiring the latter to transfer the domain name to it (Complaint, par 21, Exhibit

I). There was no response to this letter and the domain name continued to be

used to promote the escort service at http://www.girlhire. A further communication

was sent by the Complainant on January 2, 2002, addressed to Mr. Antoinne Rousseau,

the administrative contact, of Telmex (Exhhibit J). There was no response to

this second communication, and the unopened letter was returned by Federal Express

with the notation "Return to Shipper. Company say they do not take …document

from this company anymore" (Complaint, Exhibit K). Subsequently, after

the change of registration details from Telmex to Stealth, on February 20, 2002,

the Complainant sent a further letter and email to Mr. Robert Thorp,

the new administrative contact of Stealth Commerce, repeating the Complainant’s

demand that the domain name be transferred to it (Complaint, Exhibit L). No

reply to this communication was received, and the Complainant then initiated

the present proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant seeks transfer to it of the disputed domain name <reutersnewsagency.com>. In support of such a contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. In substance, the Complainant’s submissions on these points are as follows.

- With respect to the elements described in paragraph 4(a)(i), the Complainant

has provided evidence of the wide number of registrations of the mark "Reuters"

and various combinations including "Reuters" that it owns in many

jurisdictions. These, then, are the marks in which it has "rights"

for the purposes of paragraph 4(a)(i). As to whether the domain name <reutersnewsagency.com>

is confusingly similar to the mark "Reuters", the Complainant points

to the fact that the additional word "newsagency" in the domain name

is directly descriptive of the Complainant’s business, and notes that there

are a number of Panel decisions in which the addition of descriptive words of

this kind to trade marks has been held to be confusingly identical: PRIMEDIA

Magazine Finance Inc v Yelena M Wright, WIPO

Case No. D2001-1007; National Hockey League and Lemieux Group Lp v Domain

For Sale, WIPO Case No. D 2001-1185. The Complainant points also to the

fame and distinctiveness of the "Reuters" mark, referring here to

earlier Panel decisions involving Reuters: WIPO

Cases Nos. D2000-1110; D2000-0471;

and D2000-0441.

With respect to the element described in paragraph 4(a)(ii), the Complainant

argues that the Respondent has no rights or legitimate interests with respect

to the domain name <reutersnewsagency.com>, noting here that the latter

bears no relationship to the business operated by the Respondent, ie. the

escort service at http://www.girlhire.

- With respect to paragraph 4(a)(iii), the Complainant alleges that the Respondent

has shown bad faith in registering and using the domain name, falling within

the circumstances referred to in both paragraphs 4(c)(ii) and (iv) of the Policy.

In relation to paragraph 4(c)(ii), the Complainant alleges that the Respondent

has demonstrated a pattern of cybersquatting behaviour because it has registered

the domain name <reutersnewsagency.com> in order to prevent the Complainant

from reflecting the mark in a corresponding domain name and that this has caused

damage to the goodwill and reputation of the Complainant. In relation to paragraph

4(c)(iv), the Complainant alleges that the Respondent has caused confusion for

the purposes of commercial gain by diverting Internet users to http://www.girlhire.

Moreover, it appears to have engaged in a pattern of such conduct in relation

to other domain names that incorporate well known trade marks through its registration

and use of such domain names as <ahiltonhotel.com>, <themarriotthotel.com>,

<planethollywoods.com>, <britishbroadcastingchannel.com>, <msnmessages.com>,

<theholidayinn.com> and <thequalityinn.com> (Complaint, Exhibits

D and H).

B. Respondent

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panel’s attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements. Each of these must be shown in turn.

6.1 That the Complainant has rights in a trade or service mark with which the

Respondent’s domain name is identical or confusingly similar

On the face of the Complaint as filed, the Complainant has satisfied the various requirements of this paragraph. It has adduced evidence of an extensive list of national trade mark registrations comprising the name "Reuters" and various combinations containing that name. This is more than sufficient to show that it has "rights" in a trade or service mark, namely "Reuters", for the purposes of the inquiry under paragraph 4(a)(i).

As to whether the domain name <reutersnewsagency.com> is confusingly

similar or identical to "Reuters", it is important to have regard

to the dominant prefix of the domain name, which is "Reuters". It

is also relevant to have regard to the descriptive words that follow that describe

precisely the nature of the Complainant’s business, namely that of providing

news agency services. This conjunction of purely descriptive words with the

same name as the registered mark is sufficient to make the domain name confusingly

similar to the mark, ie. people will wonder whether the domain name is linked

to or controlled by the Complainant, rather than an unrelated third party. In

this regard, the Complainant has referred to two earlier Panel decisions that

involved similar kinds of usages, which the present Panel finds persuasive.

Thus, in PRIMEDIA Magazine Finance Inc v Yelena M Wright, WIPO

Case No. D2001-1007, where the Panel found that <teenbeatmagazine.com>

and <tigerbeatmagazine.com> were confusingly similar to the marks "Teen

Beat" and "Tiger Beat" because the word "magazine"

served to "describe [ ] the product covered by the Complainant’s registrations".

To similar effect is National Hockey League and Lemieux Group Lp v Domain

For Sale, WIPO Case No. D2001-1185,

where the addition of another word ("penguins") to the "NHL"

trade mark was insufficient to avoid a finding that the domain name was confusingly

similar. See also General Electric Company v. FORDDIRECT.COM, INC., WIPO

Case No. D2000-0394.

In the present case, a finding of confusing similarity is also assisted by

the fame attaching to the "Reuter’s" mark in relation to news agency

services. The Complainant has not adduced specific evidence of the fame of its

mark, apart from general assertions that this is so. On the other hand, it does

refer to previous Panel decisions involving the Complainant where Panels have

commented on the fame attaching to the "Reuters" mark in relation

to news services: WIPO Cases Nos. D2000-1110;

D2000-0471; and D2000-0441.

Accordingly, the present Panel is prepared to accept that the "Reuters"

mark is so well known in relation to news agency services that the conjunction

of the words "reuters’" and "newsagency" in the disputed

domain name leads inexorably to the conclusion that it is confusingly similar

to the Complainant’s mark.

6.2 That the Respondents must be shown to have no rights or legitimate interests

in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] 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 or services;

or

(ii) you (as an individual, business, or other organisation) 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 noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <reutersnewsagency.com> in connection with any bona fide offering of goods and services under that name (subpara (i)). In this regard, if the Respondent were to have any basis to claim rights or legitimate interests in the domain name, it could be expected that it would offer services or goods that match the services referred to in the domain name, namely newsagency services. As noted above, however, the opposite is the case here: Internet users are diverted to a website that has nothing whatsoever to do with newsagency services. It can therefore be said that there is no bona fide offering of services under the domain name. Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "Reuters" in the way that has actually occurred.

Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "Reuters" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)). Indeed, it seems clear that the domain name is used simply as a means of diverting Internet users to view other sites that appear to be controlled by, or associated with, the Respondent.

Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] 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 will be noted that, under paragraph 4(a)(iii) of the Policy, both registration

and use of the domain name in bad faith are required. Of the factors

listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration

(and acquisition) of the name, while (iv) relates to use following registration.

However, in view of the fact that these factors are stated to be inclusive,

it follows that there can be other factors that can be relied upon to point

to bad faith, both in registration and in use. In this regard, it is worth noting

an early decision of an Administrative Panel to the effect that registration

in bad faith followed by a passive holding of a domain name when there is no

way in which it could be used legitimately can amount to use in bad faith: Telstra

Corporation Ltd v Nuclear Marshmallows WIPO Case No. D 2000-0003. In addition,

it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely

to the time of registration: presumably, it would also be a use of a disputed

domain name in bad faith to do so, after registration, with one of the purposes

outlined in those paragraphs. Support for this view is to be found in several

Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net

and Jeff Hanna, WIPO Case No. D2000-0869

and E & J Gallo Winery v Hanna Law Firm, WIPO

Case No. D2000-0615.

In the present proceeding, the Complainant raises a number of matters that go to the questions of registration and use in bad faith under paragraph 4(a) (iii) of the Policy, namely the factors referred to in paragraph 4(b)(ii) and (iv). These matters can be dealt with briefly:

Pattern of conduct: paragraph 4(b)(ii)

The Complainant has produced evidence of multiple registrations by the Respondent

of domain names that are based on other well known marks: see Complaint, Exhibits

D and H. Accordingly, it is open to the Panel to conclude that the requirements

of this sub-paragraph are met, namely that the Respondent has registered the

domain name <reutersnewsagency> in order to prevent the Complainant, as

the owner of the "Reuters" mark from reflecting the mark in a corresponding

domain name. In the absence of any submissions from the Respondent, it is open

to the Panel to conclude that there is sufficient evidence presented here to

establish a pattern of conduct of the kind described in paragraph 4(b)(ii) of

the Policy. See further WIPO Case No.

D2000-0370.

Likelihood of confusion: paragraph 4(b)(iv)

In the absence of any submissions by the Respondent, the Panel also accepts the contention of the Complainant that the Respondent’s registration and use of the domain name <reutersnewsagency.com> was done intentionally for the purposes of attracting, for commercial gain, Internet users to another website controlled by the Respondent by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that web site or location. In this regard, the Panel notes that the http://www.girlhire website is clearly conducted for profit, and it seems difficult to escape the inference that the registration and use of the domain name <reutersnewsagency> was intended to represent that there was a link or connection between the Complainant and the website to which Internet users were directed. Obviously, by the time that Internet users arrived at http://www.girlhire, it would be clear that there was no such connection, but it is equally clear that such persons would be brought to that website in the first place because they would be under the impression that the domain name was linked to or associated with the Complainant.

Conclusions on bad faith

In the light of the above, the Panel concludes that the domain name was registered and used by the Respondent in bad faith.

6.4 Conclusions

The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy in relation to the domain name that is the subject of this Complaint.

7. Decision

The Administrative Panel accordingly directs that the registration of the domain name <reutersnewsagency.com> should be transferred to the Complainant.

Staniforth Ricketson

Sole Panelist

Dated: May 8, 2002

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