HM Publishers Holdings Limited; Macmillan Magazines Limited; Macmillan Publishers Limited v. Telepathy, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Macmillan Publishers Limited, Macmillan Magazines Limited

and HM Publishers Holdings Limited v. Telepathy, Inc

Case No. D2002-0658

1. The Parties

The Complainants are Macmillan Publishers Limited, Macmillan Magazines Limited

and HM Publishers Holdings Limited of Houndmills, companies incorporated under

the laws of England & Wales, with a principal place of business at Basingstoke,

Hampshire, United Kingdom.

The Respondent is Telepathy, Inc of PO Box 53344, Washington DC, United States of America.

2. The Domain Name and Registrar

The contested domain name is <nature.biz>.

The registrar is Bookmyname.com.

3. Procedural History

The electronic version of the Complaint was filed on July 16, 2002.

The hardcopy of the Complaint form was received on July 18, 2002.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute

Resolution Policy ("ICANN Rules") and Paragraph 5 of the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental

Rules"), the Center verified that the Complaint satisfies the formal requirements

of the ICANN Policy, ICANN Rules and Supplemental Rules.

Payment in the required amount was received by the Center.

On August 7, 2002, the Center formally notified the Respondent by

post/courier and email of the Complaint and of the commencement of this administrative

proceedings and sent copies to the Complainant, the Registrar and ICANN.

The electronic version of the Response was filed on August 22, 2002.

The hardcopy of the Response was received on August 30, 2002.

The Center contacted John Swinson and requested that he act as Panelist in

this case. Mr. Swinson accepted to act as Panelist and submitted a Statement

of Acceptance and Declaration of Impartiality and Independence.

On September 9, 2002, the parties were notified that Mr. Swinson

had been appointed as Panelist.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the

requirements of the ICANN Rules and Supplemental Rules; payment was properly

made; the panel agrees with the Center’s assessment concerning the Complaint’s

compliance with the formal requirements; the Complaint was properly notified

to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the

Response was filed in accordance with the requirements of the ICANN Rules and

Supplemental Rules; the administrative panel was properly constituted.

4. Factual Background

HM Publishers Holding Limited is the parent company of Macmillan Magazines

Limited and Macmillan Publishers Limited.

The Complainants produce a magazine called NATURE. It is a respected weekly

international science journal, well-known in the science community. The NATURE

magazine has been in existence under this name since 1869.

The Complainants are the owners of numerous trademark registrations for the

word "NATURE" (including in Australia, China, Europe, Great Britain,

Japan and the United States of America) in classes of goods and services relating

to publications and magazines.

The Respondent is a web developer and is experienced in developing online publications,

database development and creating an interactive online environment.

The disputed domain name was registered by the Respondent on March 27, 2002,

and has not been used.

The Respondent has been involved as a Respondent in a number of ICANN cases

decided by respected Panelists, three of which the Respondent has won. These

cases include:

(a) J. Crew International, Inc. v. crew.com, WIPO

Case No. D2000-0054

(b) Koninklijke KPN N.V. v. Telepathy Inc., WIPO

Case No. D2001-0217

(c) Philippe Tenenhaus v. Telepathy Inc., NAF FA0003000094355

(d) General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy,

Inc.), NAF FA0001000092531.

5. Parties’ Contentions

A. Complainants

The Complainants contend, in relation to its business, that:

(a) they themselves, or companies within their Group, have substantially and

continuously used the name and mark NATURE throughout the world since 1869,

in respect of a magazine produced in paper and on-line version covering the

topics of science, medicine, the environment and technology;

(b) the turnover of the Complainants in 2001, was £53 million;

(c) they own numerous Trade Mark Registrations for the mark NATURE worldwide

in classes that apply to magazines, books and publications; and

(d) they and their affiliated companies own numerous domain names containing

the NATURE marks, including <nature.us>.

The Complainants contend that:

(a) the disputed domain name is identical and confusingly similar to the Complainants’

"nature" mark;

(b) the disputed domain name leads Complainants’ customers to believe that

the disputed domain name is somehow associated with, endorsed by or sponsored

by Complainants;

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

disputed domain name as the Respondent is not an authorized sponsor or distributor

of NATURE journals;

(d) the Respondent is not licensed to use the "nature" mark;

(e) the Respondent has not made any demonstrable preparations to use the disputed

domain name;

(f) the Respondent is not commonly known by the domain name <nature.biz>

and has no basis to claim that it is making a fair use of the domain name;

(g) the Respondent has registered over 2,500 domain names therefore it is doubtful

whether these could all or even mostly relate to the Respondent’s activities;

(h) the Respondent has registered and is using the domain name in bad faith

by preventing the Complainants from using their "famous and well-known"

"nature" mark in the ".biz" domain name space;

(i) the Complainants’ filed an IP claim for the disputed domain name however

the registrar (Verisign) lost the submission and the Complainants’ were unsuccessful

in the random lottery allocation of ".biz" domain names. Therefore,

because the Complainants have "maintained constant interest in [the

disputed domain name] and absent any valid claim to the name by the Respondent

… the name should be awarded to the [Complainants]";

(j) the Respondent must have known of the significant goodwill and value of

the "nature" mark and "is undoubtedly what prompted its registration

of the domain name. Given the fame of the mark NATURE, it is difficult to imagine

that the Respondent’s motive in registering the domain name was anything other

than to sell or otherwise transfer the domain name for valuable consideration

in excess of the Respondent’s out-of-pocket costs"; and

(k) the Respondent’s motive was to intentionally trade off the significant

goodwill and value in the "nature" mark to divert traffic intended

for the Complainants. Use of the disputed domain name creates a likelihood of

confusion with the Complainants’ mark.

B. Respondent

The Respondent contends, in relation to its business, that:

(a) it is a Washington D.C. based web development company. Its primary focus

is the development of Internet businesses, most importantly a network of local

content sites at <maryland.com>, <northcarolina.com>, <pennsylvania.com>

and <missouri.com>, which provide free services, including feature articles,

travel guides, classified postings, community forums, business directories,

maps and directions, and email. It employs a staff of six and outside contractors

to support the development of these sites;

(b) each month over 300,000 unique visitors make use of the services and information

provided by sites developed and maintained by the Respondent;

(c) the Respondent has invested over half a million dollars in its network

of local content sites, including the hiring of full-time staff, professional

services, acquisition of domain names, software development programming, design,

hosting, and marketing;

(d) the Respondent uses other generic domain names, such as <savor.com>

(a site used to direct traffic to a third party travel agency site) and <republic.com>

(to advertise the Respondent’s web development skills);

(e) the Respondent makes use of generic domains for web sites it develops.

It has exchanged generic domain names for equity stakes in start-up businesses

with multi-million dollar capitalizations. It has also used generic domains

as partial compensation for the acquisition of a domain name important for the

development of its network of state and local websites, allowing it to reduce

the cash purchase price. In short, as an active web site development company,

a supply of readily available generic domains is a business necessity and a

core feature of its business plan; and

(f) as an active web developer, the Respondent relies on names it has previously

registered when launching a new product or forming a new company.

The Respondent claims that:

(a) the Complainant’s "nature" mark is not distinctive and the Complainant

does not have exclusive rights to the disputed domain name;

(b) the word "nature" is a generic word and the Complainant cannot

claim exclusive rights in it;

(c) it has a legitimate interest in using the disputed domain name for its

web development business;

(d) the disputed domain name was not registered in bad faith. The Respondent

was successful in the ".biz" domain name allocation and did not know

of the Complainant or its business at the time of application or registration

of the disputed domain name;

(e) the Respondent has only recently registered the disputed domain name, "so

recently in fact that notice of the Complaint arrived before the letter from

[the] Registrar confirming the successful registration of the disputed domain

name … The fact that a fully developed web site accessible to the public … is

not yet available shortly after the domain registration demonstrates nothing";

(f) there is no prohibition against maintaining the registration of multiple

domain names for future use;

(g) the Complainants are guilty of reverse domain name hijacking as there is

no evidence to support their claim.

The Respondent’s President, Nat Cohen, provided a sworn statement attesting

to a number of statements listed above.

6. Discussion and Findings

This is a difficult case. The Panel thanks both parties for their well argued

submissions.

In order to qualify for a remedy, the Complainant must prove each of the three

elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute

Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN

Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or

service mark in which the complainant has rights; and

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

domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trade mark or service mark

The panel finds that the Complainants own registered trademarks for "NATURE",

including in the United States.

The addition of the suffix ".biz" is an irrelevant distinction which

does not change the likelihood for confusion: Microsoft Corporation v. Amit

Mehrotra WIPO Case No. D2000-0053

and InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO

Case No. D2000-0075.

Therefore the disputed domain name is identical to the Complainants’ "NATURE"

mark. The classification of goods and services to which the mark relates is

irrelevant for the purpose of determining whether or not the mark is identical

to the disputed domain name.

It does not appear that the Respondent contests this element.

6.2 Illegitimacy

The Complainants assert, in effect, that the Respondent does not meet any of

the elements set out in Paragraph 4(c) of the Policy. The Panel agrees that

this is correct, but that is not necessarily conclusive of the issue.

It appears to be common ground between the parties that the Respondent is not

using the disputed domain name, is not known by the disputed domain name, and

has no specific plans to use the disputed domain name.

The Respondent is a legitimate Internet business, and has demonstrated a legitimate

interest in a number of other generic domain names. This, of itself, does not

demonstrate a legitimate interest in the disputed domain name.

The Respondent asserts an active web development company needs a supply of

domain names. In effect, the Respondent claims that it registered the disputed

domain name because it may be useful for a future business opportunity. The

Respondent admits to selling other domain names for equity stakes in other enterprises

and to trading in domain names. This, of itself, does not show that the Respondent

has a legitimate interest in the disputed domain name.

The difficult issue present here is what could a Respondent show as evidence

of legitimacy where the dispute involves a newly registered, unused, generic

domain name?

Or to ask the same question in a different way, does a Complainant prove "no

legitimate interest" simply by showing that a generic domain name has been

registered but not used, where there is no plan for any specific future use

of the disputed domain name by the Respondent?

Is it a legitimate interest to register a generic domain name just for the

purpose of owning it?

In a previous decision (J. Crew International, Inc. v. crew.com, WIPO

Case No. D2000-0054) involving this Respondent, a majority Panel stated:

"Respondent is a speculator who registers domain names in the hopes that

others will seek to buy or license the domain names from it. Speculation means

the practice of registering or acquiring domain names without any demonstrable

plan for a specific use of that domain name. The speculator hopes to license

or sell the domain name in the future for profit, but has no specific use in

mind at the time of registration or acquisition. Such conduct does not fall

within any of the circumstances listed under Paragraph 4 of the Policy as evidence

of rights or legitimate interest in the domain name. Such conduct precludes

others who have a legitimate desire to use the name from doing so. Persons precluded

by such conduct may be those who have no prior right or interest in the name,

as well as those who have a demonstrable prior interest in the name. Speculation

is not recognized by the Policy as a legitimate interest in a name, and the

Policy should not be interpreted to hold that mere speculation in domain names

is a legitimate interest. To hold otherwise would be contrary to well-established

principles that preclude mere speculation in names and trademarks and would

encourage speculators to appropriate domain names that others desire to put

to legitimate use. Ultimately, speculation in domain names increases costs to

the operators of websites and limits the availability of domain names."

On the other hand, the dissent in that same case stated:

"Where the domain name and trademark in question are generic, and in particular

where they comprise no more than a single, short, common word, the rights and

interests inquiry is more likely to favor the domain name owner. As the court

held in Hasbro, Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, (D. Mass., 1999),

holders of a famous mark are not automatically entitled to use that mark as

their domain name; trademark law does not support such a monopoly. If another

Internet user has an innocent and legitimate reason for using the famous mark

as a domain name and is the first to register it, that user should be able to

use the domain name, provided that it has not otherwise infringed upon or diluted

the trademark. …

"The majority decision spends substantial effort attempting to demonstrate

that what it terms "speculation in domain names" is sufficient per se to

be an ‘abusive registration.’ However, carefully reviewing the tests provided

in the ICANN policy indicates otherwise."

With respect, this Panel prefers the dissent in the Crew case. The primary

rule in relation to domain name registrations is "first come, first served."

The UDRP provides a narrow exception. It is not a per se breach of the

UDRP to register the trademark of another as a domain name where the trademark

is a generic word. This is even more so with biz domain name registrations.

One purpose of creating new TLDs was to allow new entrants to acquire a generic

top level domain name, even if another business owned a domain name for the

corresponding dot com domain name. The majority’s concern in the

Crew case (that a speculator may tie up a limited resource that a legitimate

business requires) is less persuasive now that new TLDs have been created.

One must also keep in mind that under the UDRP, the burden of proof is on the

Complainants for all three elements.

The Panel finds that the Complainants have not met its burden of showing that

the Respondent has no legitimate interest in the disputed domain name.

This result is consistent with the decision in John Fairfax Publications

Pty Ltd v. Domain Names 4U and Fred Gray, WIPO

Case No. D2000-1403, even though this Panelist does not necessarily agree

with all the statements made in that decision.

Accordingly, the Complainants fail on this element.

6.3 Bad Faith

In view of the conclusions above, the Panel does not have to decide this element,

and does not do so.

However, the Panel notes that the Complainants’ case is not strong on this

point, particularly in light of the prior decisions involving generic dot

biz domain names, such as <coast.biz>, <dial.biz>, <brother.biz>,

<bicycling.biz>, <whirlpool.biz>, <pilot.biz> and <farmers.biz>.

The Panel believes that the Complainants’ NATURE trademark is well known in

scientific circles, but, based on the evidence presented, may not be well known

to the general public.

The background for the Respondent’s President, as stated on one of its websites,

is as follows:

"Nat left the security of his position as a financial analyst at FannieMae

for the life of a self-employed Internet entrepreneur. Nat is the president

of StateVentures, Inc., the corporation that owns Maryland.com, Maryland.com,

NorthCarolina.com. Nat holds a M.B.A. from the University of Maryland College

Park and a B.A. in Liberal Arts from St. John's College. He enjoys volunteering

as a tutor at a local junior high school, playing soccer, and traveling with

his wife Lynn."

Based on the evidence before the Panel, the Panel would find it difficult to

conclude that Nat Cohen would have known of the Complainants’ trademark

rights when registering the disputed domain name, or that he registered the

disputed domain name with the Complainants in mind. Nat Cohen’s sworn statement

is to this effect, and the Panel finds no reason not to believe Mr. Cohen.

The Respondent is not a competitor of the Complainant, has not tried to sell

the disputed domain name to the Complainant or to anyone else, has not used

the disputed domain name at all (let alone in a bad faith way), and there is

no evidence of a pattern of bad conduct by the Respondent.

6.4 Reverse domain name hijacking

The Respondent has requested that the Panel make a finding of reverse domain

name hijacking by the Complainant.

Reverse domain name hijacking is 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 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, e.g. Sydney Opera House v Trilynx Pty. Ltd., WIPO

Case No. D2000-1224.

In Goldline International Inc v Gold Line, WIPO

Case No. D2000-1151, Smart Design LLC v Carolyn Hughes, WIPO

Case No. D2000-0993 and in Deutsche Welle v Diamond Ware Limited,

WIPO Case No. D2000-1202 (by a majority),

differently-constituted panels found that lack of any evidence by a complainant

that the Respondent had registered the name in bad faith was a powerful factor

in favor of a finding of reverse domain name hijacking.

No evidence was presented by the Complainant of attempts to contact the Respondent

to inquire as to any legitimate rights or use of the site that may be intended.

Furthermore, the results of the Complainants’ search inquiries of other domain

names registered by the Respondent demonstrate that the Respondent has registered

numerous generic domain names, as opposed to domain names incorporating famous

trademarks of other entities.

However, on balance, the Panel believes that the Complainants did not act in

bad faith in filing the Complaint. The prior cases, as discussed above, do not

reach consistent conclusions, and this is a difficult area of application of

the UDRP.

In the circumstances, the Panel finds that the Respondent’s claim of reverse

domain name hijacking has not been made out.

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel finds that the Complaint fails.

John Swinson

Sole Panelist

Dated: September 27, 2002