WIPO Arbitration and Mediation
ADMINISTRATIVE PANEL DECISION
Reuters Limited v Global Net 2000, Inc
Case No. D2000-0441
1. The Parties
1.1. The Complainant is Reuters Limited a corporation duly
organized and existing under the laws of England and Wales (No.
145516) with a registered office at 85 Fleet Street, London,
EC4P 4AJ, England. The Respondent is Global Net 2000, Inc.,
a business located at Record Building, Tehran, 15577, Iran.
2. The Domain Names and Registrar
2.1. The domain names the subject of this Complaint are:
For ease of reference, at various points throughout this
Decision identification of each of these domain names is made
by way of the number associated with it in the above list.
2.2. The Registrar of this domain name is Network Solutions,
Inc of Herndon, Virginia, USA ("Registrar").
3. Procedural History
Issuance of Complaint
3.1. The Complainant by email and by courier submitted to
the World Intellectual Property Organization Arbitration and
Mediation Center ("WIPO Center") a Complaint made
pursuant to the Uniform Domain Name Dispute Resolution Policy
implemented by the Internet Corporation for Assigned Names and
Numbers (ICANN) on October 24, 1999 ("Uniform Policy"),
and under the Rules for Uniform Domain Name Dispute Resolution
Policy implemented by ICANN on the same date ("Uniform
Rules"). The email copy of the Complaint was received by
the WIPO Center on May 16, 2000, and the hard copy of the Complaint
was received by the WIPO Center on May 18, 2000. An Acknowledgment
of Receipt was sent by the WIPO Center to the Complainant, by
email dated May 18, 2000. A copy of the Acknowledgement of Complaint
was sent to the Administrative Contact of the Respondent by
courier and by email on the same day.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched
by the WIPO Center to the Registrar by email on May 17, 2000.
By email to the WIPO Center on May 19, 2000, the Registrar confirmed
that it had received a copy of the Complaint from the Complainant;
confirmed that it was the Registrar of the domain names the
subject of the Complaint; confirmed that the current registrant
of domain names (1) to (4) is the Respondent, and that the current
registrant of domain name (5) is Reutersnews.com; informed that
the administrative, technical, zone and billing Contact for
each of the domain names is Siavash Behain, and provided postal,
telephone, facsimile and email contact details for the Contact;
and informed that the status of each of the domain names in
issue is "active". The Registrar also confirmed that
its 5.0 Service Agreement is in effect. Amongst other things,
that agreement provides that the Respondent as registrant of
the domain names agrees to be bound by the domain name dispute
policy incorporated therein. The policy incorporated into the
agreement is the Uniform Policy.
Notification to Respondent
3.3. Having verified that the Complaint satisfied the formal
requirements of the Uniform Policy and the Uniform Rules, and
that payment of the filing fee had been properly made, the WIPO
Center issued to the Respondent a Notification of Complaint
and Commencement of Administrative Proceeding, by courier to
the postal contact details of the Respondent and the Contact
on May 22, 2000, and by email to the email addresses of the
Respondent and the Contact on May 29, 2000. Copies of this Notification
of Complaint were sent to the Complainant, the Registrar and
ICANN on those dates.
3.4. This Administrative Panel finds that the WIPO Center
has discharged its responsibility under Paragraph 2(a) of the
Uniform Rules "to employ reasonably available means calculated
to achieve actual notice to Respondent".
Filing of Response
3.5. No Response was filed by the Respondent within the
time specified in the Notification of Complaint. As of the date
of this decision, no Response had been filed by the Respondent.
3.6. A communication from the Contact for the Respondent
was received by the WIPO Center by email on May 18, 2000. This
communication was, presumably, in response to the copy of the
Acknowledgement of Complaint that was sent to the Contact of
the Respondent on that same day. The Contactís email communication
stated as follows:
I have been waiting for the domain name transfer agreements
to arrive from Kenneth Parks and Beatriz Roth. I have not received
them. Our original agreement was once the domain names are transferred
the following fees would be reimbursed:
1. $100 per domain name (for initial registration cost)
2. $10 per domain name transferred (notarization fee)
Please sent (sic) the domain name transfer agreements to:
11288 VENTURA BLVD.
STUDIO CITY, CA 91604
Constitution of Administrative Panel
3.7. Having received no Response from the Respondent within
the specified time in the second-sent Notification of Complaint,
on June 21, 2000, the WIPO Center issued to both parties a Notification
of Respondent Default. In accordance with the request in the
Complaint, the WIPO Center proceeded to appoint a single Panelist,
and invited Dr. Andrew F. Christie to so act. On June 26, 2000,
Dr. Christie submitted to the WIPO Center a Statement of Acceptance
and Declaration of Impartiality and Independence. On June 28,
2000 the WIPO Center issued to both parties a Notification of
Appointment of Administrative Panel and Projected Decision Date,
informing of Dr. Christieís appointment and that absent exceptional
circumstances a decision would be provided by this Administrative
Panel by July 12, 2000. The case before this Administrative
Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and
the Uniform Rules
3.8. This Administrative Panel notes that pursuant to rule
1 of the Uniform Rules, the "Respondent" means "the
holder of a domain-name registration against which a complaint
is initiated", and that pursuant to rule 3(c) of the Uniform
Rules, "the complaint may relate to more than one domain
name, provided that the domain names are registered by the same
domain-name holder". This Administrative Panel also notes
that the registrant of domain name (5) is Reutersnews.com, not
the Respondent Global Net 2000, Inc.
3.9. Nevertheless, it is the case that the administrative,
technical, zone and billing Contact for domain names (1)-(4),
Siavash Behain, is also the administrative, technical, zone
and billing Contact for domain name (5). In addition, the precise
legal status (including whether it in fact exists) of the registrant
for domain name (5) is not clear. Further, in his email communication
to the Center of May 18, 2000 Siavash Behain did not distinguish
between domain names (1)-(4) on the one hand and domain name
(5) on the other hand, and accordingly asserted an authority
in relation to all of the domain names in issue in this Complaint.
Finally, the Respondent did not challenge the validity of any
aspect of the formalities of the Complaint. In light of these
facts, it appears to this Administrative Panel that in substance
the one entity, the Respondent acting through Siavash Behain,
is the legal person responsible for and beneficially entitled
to the registration of each of the domain names in issue, and
so may be said to be the "domain-name holder" for
the purposes of rule 3(c) of the Uniform Rules. Accordingly,
and taking into account the general principles underlying the
Uniform Policy and the Uniform Rules, this Administrative Panel
finds that the Complaint properly relates to each of the domain
names in issue.
3.10. This Administrative Panel therefore concurs with the
assessment by the WIPO Center that the Complaint complies with
the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complaint asserted, and generally provided evidence
in support of, the following facts. Unless otherwise specified,
this Administrative Panel finds these facts established.
Complainantís Activities and Trademarks
4.2. The Complainant is a leading international news and
financial information services group. It is also the largest
international news and television agency in the world, serving
both traditional and new media.
4.3. The Complainant is the sole and exclusive owner of
a number of trademark registrations for the REUTERS mark throughout
the world, including, but not limited to, the United States,
the United Kingdom, Canada, Spain, France, Benelux, Denmark,
Switzerland, Austria, Germany, Italy and the European Union.
A schedule of the Complainantís trademark registrations of,
and copies of the United States and United Kingdom registration
certificates for, the REUTERS mark are attached as Exhibit C
to the Complaint.
4.4. The REUTERS mark has been used extensively on television
and the Internet, in newspapers and in various other media by
the Complainant. The Complainant also has spent many millions
of dollars annually on various types of advertising involving
the REUTERS mark.
4.5. The Complainant has an active presence on the Internet.
The principal domain name currently registered and used by Complainant
is "reuters.com". The Complainant registered "reuters.com"
with NSI on June 3, 1993. The Complainant also owns the domain
names "reuters.net" and "reuters.org".
4.6. Domain name (1) was registered by the Respondent on
April 14, 1998. Domain names (2)-(4) were registered by the
Respondent on June 8, 1998. Domain name (5) was registered by
the Respondent on September 5, 1999.
4.7. In relation to domain name (1), the Complainant asserts
that in the Spring of 1998, "the Respondent linked the
domain name Ö to its Web site at www.global2000.com, which advertises
Web hosting services, and to www.netbouncers.com, which displayed
pornographic material". The Complainant further asserts
that "the way this domain name was used varied over time
but it was always linked to pornographic material". The
Complainant provided no evidence in support of these assertions.
This Administrative Panel does not find that these assertions
are established as facts.
4.8. In relation to domain name (5), the Complainant asserts
that "Respondent linked this domain name to its Web site
at www.letssearch.com, a Web site that advertised links to pornographic
Web sites". Again, the Complainant provided no evidence
in support of these assertions. This Administrative Panel does
not find that these assertions are established as facts.
4.9. The Complainant sent two letters of demand, one in
November 1999 to the Respondentís Contact in relation to domain
name (5), and the other in December 1999 to the Respondent in
relation to domain name (1), both stating that the Respondentís
registration and use of these domain names violated the Complainantís
legal rights. Copies of these letters are attached as Exhibits
F and G to the Complaint. The Complainant asserts that the Respondentís
Contact, Mr. Behain, responded to the first letter by offering
to sell the domain name to the Complainant. The Complainant
provided no evidence in support of this assertion. This Administrative
Panel does not find that this assertion is established as a
4.10. The Complainant asserts that, as of April 28, 2000,
when an Internet user typed "www.ruters.com" into
a Web browser, the first Web page that appeared identified the
Web site as the "Future Home of Ruters.com." The Internet
user was then immediately transferred to Respondentís Web site
at global2000.com. Copies of these Web pages as they appeared
on April 28, 2000 are attached as Exhibit I.
4.11. The Complainant asserts that the Respondent has registered
numerous domain names incorporating famous trademarks (including,
but not limited to, "audidealers.com", "saabdealers.com"
and "porschedealers.com") or incorporating common
misspellings of famous trademarks (including, but not limited
to, "acceshollywood.com", "washingtonpos.com"
and "midspring.com"). Copies of the printouts of database
searches conducted through WHOIS on April 28, 2000, listing
Respondent as the registrant of these domain names, are attached
as Exhibit D to the Complaint.
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements
specified in paragraph 4(a) of the Uniform Policy are applicable
to each of the domain names the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the
Uniform Policy, the Complainant contends that each of the domain
names are confusingly similar to the Complainantís registered
5.3. In relation to element (ii) of paragraph 4(a) of the
Uniform Policy, the Complaint contends that the domain names
bear no relationship to the business of the Respondent. Accordingly,
the Complainant contends that the Respondent has no rights or
legitimate interests in respect of the domain names in issue.
5.4. In relation to element (iii) of paragraph 4(a) of the
Uniform Policy, the Complainant contends that evidence of bad
faith registration and use is established by the following circumstances.
First, the Respondent seeks to take advantage of the owner of
a famous mark and to attract traffic to its own sites by improper
use of a famous mark. In particular, the Respondent has registered
other domain names that have no legitimate connection to its
business and that contain other prominent marks (including "audidealers.com"
and "acceshollywood.com"). Secondly, the Respondent
has used the REUTERS mark to drive visitors to its Web site
by forwarding visitors entering the domain names in issue to
its site, www.global2000.com, used in connection with Respondentís
Web hosting services. The Respondent thus attempts to generate
commercial gain by creating confusion as to the affiliation
of its Web hosting and pornographic services with the REUTERS
mark, and as such, its activities correspond to those listed
in paragraph 4(b)(iv) of the Policy as evidence of bad faith
registration and use of a domain name. Thirdly, the Respondent
has exhibited a pattern of cybersquatting behavior because it
registered domain name (5) in order to prevent Complainant from
having access to and reflecting the mark in a corresponding
domain name. As such, the Respondentís activities correspond
to those listed in paragraph 4(b)(ii) of the Policy as evidence
of bad faith registration and use of a domain name. Fourthly,
the Respondent has not used the domain names in connection with
any bona fide offering of goods or services, has not been commonly
known by the domain names, and has not made any noncommercial
or fair use of the domain names.
5.5. The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
6.1. In relation to domain name (1), the relevant part of
this domain name is "wwwreuters". Part of this name,
"reuters", is identical to the Complainantís trademark
REUTERS. The other part of this name, "www", is the
well know acronym for "world wide wide", and is an
extremely common, although not universal, prefix (when succeeded
by a period) to the domain name in a URL for a web page on the
Internet. The letters "www" thus have no distinguishing
capacity in the context of domain names. In fact, in the context
of domain names, the letters "www" have the effect
of focusing particular attention on the word succeeding them,
in this case the word "reuters". This is because a
casual reader of the domain name may wrongly think that there
is a period between the "www" and the succeeding word,
and so wrongly assume that the domain name is in fact comprised
only of the succeeding word. In addition, this Administrative
Panel acknowledges that the practical effect of preceding a
trademark with the letters "www" in a domain name
is so-called "typo-piracy" (see WIPO case D2000-0256
World Wrestling Federation Entertainment, Inc. v. Matthew Bessette)
- that is, attracting to a different web site the Internet user
who mistakenly fails to insert a period after the letters "www"
when typing the URL of the intended web site. Because of both
the visual similarity and the potential for typo-piracy, this
Administrative Panel finds that the domain name "wwwreuters.com"
is confusingly similar to the Complainantís trademark REUTERS.
6.2. In relation to domain names (2)-(4), the relevant parts
of these domain names are, respectively, "reters",
"ruters" and "reuers". In each case, the
relevant part of the domain name differs from the Complainantís
trademark REUTERS by one letter. It is clear that none of domain
names (2)-(4) are identical to the Complainantís trademark.
Are any them, however, confusingly similar to it? Answering
this question is not without some difficulty. In seeking the
answer, it is helpful to consider the context in which the domain
names are being used, as well as the aural and visual similarity
between the domain names and the Complainantís trade mark.
6.3. The context in which these domain names are being used
provides only limited assistance in deciding the issue of confusing
similarity. Domain names (2) and (4) have not been used at all.
Domain name (3), "ruters.com", was used by the Respondent
to attract Internet users to its web hosting web site at htpp://global2000.com.
There is nothing about the context of this use which strongly
supports an argument that the word "ruters" is confusingly
similar to the Complainantís trademark.
6.4. An aural comparison of the domain names with the Complainantís
trademark is not conclusive on the issue of confusing similarity.
The likely pronunciation of "reters" and "ruters"
is not particularly similar to the pronunciation of REUTERS.
This Administrative Panel is not certain how a member of the
Internet using public would pronounce "reuers". In
any event, whilst some of the plausible pronunciations of this
word are similar to the pronunciation of the Complainantís trademark,
others are not.
6.5. A visual comparison of these domain names with the
Complainantís trademark provides the strongest support for the
assertion that they are confusingly similar to it. The trademark
REUTERS derives from the surname of Baron Paul Julius von Reuter,
who opened a telegraph office near the London Stock Exchange
in 1851, a business which subsequently transformed into the
worldís first news agency (see Encyclopedia Britannica CD 98).
The trademark REUTERS is not descriptive of anything, and is
thus highly distinctive of the Complainantís business. A domain
name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive. In the absence of
any argument to the contrary from the Respondent, this Administrative
Panel concludes that, on balance, domain names (2)-(4) are confusingly
similar to the Complainantís trademark.
6.6. In relation to domain name (5), the relevant part of
the domain name is "reutersnews". This part of the
domain name differs from the Complainantís trademark by the
succeeding word "news". Given that the Complainantís
trademark is distinctive of the Complainantís business of providing
news services, the inclusion of the word "news" with
the word "reuters" in domain name (5) makes the compound
phrase "reutersnews" confusingly similar to the Complainantís
Respondentís Rights or Legitimate Interests in the Domain
6.7. The Respondent has not provided evidence of circumstances
of the type specified in paragraph 4(c) of the Uniform Policy,
or of any other circumstances, giving rise to a right to or
legitimate interest in the domain names. In light of this fact,
the fact that the domain names bear no relationship to the business
of the Respondent, and the fact that the mark REUTERS is not
one that the Respondent would legitimately choose in the context
of provision of goods or services via a web site unless seeking
to create an impression of an association with the Complainant,
this Administrative Panel finds that the Respondent has no rights
or legitimate interests in any of the domain names the subject
of the Complaint.
Domain Name Registered and Used in Bad Faith
6.8. The fact that the Respondent has chosen not to submit
a Response is particularly relevant to the issue of whether
the Respondent has registered and is using the domain names
in bad faith. Rule 14(b) of the Uniform Rules provides that,
in the absence of exceptional circumstances, a Panel shall draw
such inferences as it considers appropriate from the failure
of a party to comply with a provision or requirement of the
Uniform Rules. This Administrative Panel finds there are no
exceptional circumstances for the failure of the Respondent
to submit a Response. This Administrative Panel draws from this
failure the following two inferences: (i) the Respondent does
not deny the facts which the Complainant asserts, and (ii) the
Respondent does not deny the conclusions which the Complainant
asserts can be drawn from these facts. Nevertheless, this Administrative
Panel still has the responsibility of determining which of the
Complainantís assertions are established as facts, and whether
the conclusions asserted by the Complainant can be drawn from
the established facts.
6.9. The Complainant made a number of assertions about the
Respondentís activities which it claimed were relevant to the
issue of whether the Respondent registered and is using the
domain names in bad faith. Some of these assertions - namely
the assertions of the linking domain names (1) and (5) to web
sites either containing or advertising links to pornographic
material, and the assertion of the Respondentís offer to sell
domain name (5) - were found by this Administrative Panel not
to be established as a matter of fact. Of the assertions found
to be established as a matter of fact, the following are considered
to be particularly relevant to the issue of bad faith registration
and use. First, the Respondent used domain name (3), "ruters.com",
to attract Internet users to its web site at htpp://global2000.com,
and did so for commercial gain, by creating confusion with the
Complainantís trademark as to the source, sponsorship, affiliation
or endorsement of that web site and/or a product or service
on that web site. Such use is use of type contemplated by paragraph
4(b)(iv) of the Uniform Policy, and accordingly is evidence
of the registration and use of domain name (3) in bad faith.
Secondly, the Respondent registered domain name (5), "reutersnews.com",
in order to prevent the Complainant from reflecting its trademark
REUTERS in a corresponding domain name, (namely "reutersnews.com"),
and did so in circumstances where there is evidence of the Respondent
engaging in a pattern of such conduct (namely in relation to
the domain name registrations referred to in paragraph 4.11
above). This use is use of the type contemplated by paragraph
4(b)(ii) of the Uniform Policy, and accordingly is evidence
of the registration and use of domain name (5) in bad faith.
Accordingly, this Administrative Panel finds that domain names
(3) and (5) were registered and are being used by the Respondent
in bad faith.
6.10. Whilst there is no evidence of circumstances of the
type contemplated in paragraphs 4(b)(i)-(iv) of the Uniform
Policy in relation to domain names (1), (2) and (4), this Administrative
Panel nevertheless considers that the circumstances proved by
the Complainant do establish that these domain names also were
registered and are being used by the Respondent in bad faith.
The Complainantís registered trademark is long established and
widely known and so, in the absence of evidence or even an assertion
by the Respondent to the contrary, knowledge of the Complainantís
rights in the trademark can be imputed to the Respondent at
the time of its registration of the domain name. When this imputed
knowledge is combined with the fact that the Respondent has
no right or legitimate interest in the domain names, the fact
that the Respondent has used the very similar domain names (3)
and (5) in bad faith, and the fact that the Respondent provided
no evidence or even an assertion of a good faith use which it
could make of the domain names, there is sufficient grounds
to persuade this Administrative Panel that domain names (1),
(2) and (4) were registered and are being used by the Respondent
in bad faith.
7.1. This Administrative Panel decides that the Complainant
has proven each of the three elements in paragraph 4(a) of the
Uniform Policy in relation to the domain names the subject of
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and
paragraph 15 of the Uniform Rules, this Administrative Panel
requires that the Registrar, Network Solutions, Inc, transfer
to the Complainant, Reuters Limited, the following domain names: