ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN"), in accordance with the ICANN Rules for the Policy ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of eResolution.
1. Parties and Contested Domain Name
The complainant is Global Print Exchange Pte. Ltd. of 78 Shenton Way, #10-03, Singapore 079120. The respondent is Mr Robert Paul Soden of 03-06 Far Horizons Gardens, Ang Mo Kio, Singapore.
The disputed domain name is globalprintexchange.com and the registrar is Network Solutions Inc., of Herndon, Virginia, USA.
2. Procedural History
The complaint was filed on-line through eResolution's Website on July 4, 2000 and in hard copy on July 12, 2000. Payment was received on July 10, 2000. Upon receiving all the required information, eResolution's clerk proceeded to confirm the identity of the registrar for the contested domain name; verify the registrar's Whois database and confirm all the required contact information for the respondent; ascertain whether the contested domain name resolved to an active web page and whether the complaint was administratively compliant.
The inquiry led the clerk's office of eResolution to conclude: the registrar is Network Solutions Inc.; the Whois database contains all the required contact information; the contested domain name resolves to an active web page and the complaint is administratively compliant.
An email was sent to the registrar by the eResolution clerk's office to confirm the name of the billing contact and to obtain a copy of the registration agreement on July 4, 2000. The requested information was received on July 6, 2000.
The clerk's office then sent a copy of the complaint and the required cover sheet in accordance with paragraph 2 (a) of the Rules. The clerk's office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the complaint to the respondent on July 13, 2000. That date is the commencement date of the administrative proceeding and on that date, the clerk's office notified the complainant, the respondent, the registrar and ICANN of the date of commencement of the administrative proceeding.
On July 25, 2000, the response was filed on line and the hard copy was received on August 3, 2000.
On August 9, 2000, the clerk's office contacted Mr. Alan Lawrence Limbury, and requested that he act as panelist in this case. On August 10, 2000, Mr. Limbury agreed and filed the necessary declaration of independence and impartiality. That day the clerk's office forwarded a user name and a password to Mr. Limbury, allowing him to access the complaint, the response and the evidence through eResolution's automated docket management system. Also on that day the parties were notified that Mr. Limbury had been appointed and that, save exceptional circumstances, a decision was to be handed down on August 23, 2000.
On August 11, 2000, the complainant sought permission to place further information before the panel. The panel acceded to this request even though the complainant had not explained why it did not put forward the additional information as part of its original complaint, because the respondent would have a right of reply and the process would still be more efficient than if the parties went to court. The additional information was submitted to the clerk's office by fax on August 17, 2000.
The respondent replied by email on August 21, 2000.
On August 22, 2000 the Clerk's office communicated to the parties a request from the panelist that the complainant provide additional evidence within 3 working days. The complainant requested and was granted an extension of time and the additional material was supplied by the complainant within the extended time on August 29, 2000.
The respondent was given 3 working days to comment on this additional material. He submitted a response by email 3 working days late, on September 4, 2000, saying due to international travel and access to communication and technological difficulties, he had not recceived the complainant's additional material until September 1, 2000.
The panel decided to have regard to the respondent's late material in the interests of fairness to both parties, under Rule 10 (b).
On September 6, 2000, under Supplemental Rule 3(a), the panel extended the time for the making of its decision until September 10, 2000.
3. Factual Background (undisputed facts)
The complainant was incorporated as a private company limited by shares in Singapore on April 17, 2000. The business name Global Print Exchange had been registered in Singapore on February 22, 2000. The complainant is engaged in the business of Internet e-commerce business to business print exchange. Its principal business is the operation of a "B2B" site named printexasia.com and its intention is to use the disputed domain name for all its international print exchange business. The complainant's holding company is called EC Works Pte. Ltd., having the same address as the complainant.
The respondent, after recent business experience as Managing Director (Asia) of a UK company described as "a leading international financial printer", followed by some weeks in Europe, returned to Singapore in late April 2000 and began evaluating opportunities with companies in Asia, ideally in the sectors of telecommunications, technology and e commerce.
At the initiation of the respondent, in early May 2000 a meeting took place between the respondent and persons, some of whom were officers of the complainant and at least one of whom was an officer of its parent, with a view to a possible business arrangement.
There is disagreement as to whether the proposed arrangement was to be with the complainant or with its parent. However, the respondent has not denied that, at that meeting, he was handed business cards bearing the corporate name Global Print Exchange Pte. Ltd.
On May 11, 2000 the respondent was informed by telephone that a business arrangement was not possible. Next day, the respondent registered the disputed domain name globalprintexchange.com .
On May 22, 2000 the respondent commenced employment with Xponet.com Pte. Ltd. as Business Development Director. That company operates a "B2B" web site. Its services include "XpoPrint, an online print management service offered by Xpoprintasia.com, XpoMatrix, a complete e-business suite of services for the trade events industry in Asia, and XpoTech, our technology enabling division".
4. Parties' Contentions (in summary)
The complainant completed the Complaint Form's invitation to specify the trademark(s) or service mark(s) on which the complaint is based as follows:-
"Global Print Exchange Pte Ltd is incorporated under the Companies Act, CAP.50, on and from 17th April 2000 and the company is a private company limited by shares in Singapore"
It says the domain name globalprintexchange.com is "the exact same name of our company Global Print Exchange Pte Ltd, registered in Singapore".
In response to the panel's request for evidence of use of the name Global Print Exchange as a trade mark prior to the respondent's registration of the disputed domain name, the complainant provided further material which is discussed below.
As to illegitimacy, the complainant says that in light of the events that happened, the registration of the disputed domain name on May 12, 2000 was with a malicious intent and a view to damage the reputation of the complainant.
On bad faith, it says the registration details contained an address that is untraceable in Singapore and a fax number that is false, in breach of the respondent's warranty under paragraph 2(a) of the Policy. Since the respondent knew of the complainant's use of Global Print Exchange as a legitimate business entity with commercial activity, his registration breached the warranty in paragraph 2(b) of the Policy.
Further, it says the respondent joined with others to set up an e-commerce venture called Xpoprintasia (a name deceptively similar to the print e-commerce site printexasia.com being built and operated by the complainant) in the same area of print related operations, and Xpoprintasia.com was registered as a domain name on 2nd June 2000, proving the respondent had malicious intentions when the name was registered so as to cause business loss to the complainant by the fraudulent use of the domain name.
Apart from Pte Ltd the names are similar. The term "global print exchange" is a common phrase in widespread third party use. It is a generic term. The complainant has not registered a trade mark.
The meeting was with EC Works and Printexasia.com, not with Global Print Exchange Pte Ltd. The complainant did not reveal they were trading under this name or indicate they wanted to launch a second Internet site some time in the future. The respondent had no knowledge of the complainant's future plans.
The respondent intends to establish a non-commercial focal point for numerous worldwide Internet print sites launched within the last year. The domain name www.globalprint.com was already taken so the respondent's best option was to add the generic word exchange. The complainant bears the onus of proof on the illegitimacy issue.
As to bad faith, the complainant bears the onus of proof and cannot establish any of the circumstances within paragraph 4(b) of the UDRP. The registration contained the respondent's full family name, the residential address is a well known landmark in Singapore and the correct telephone number was stated. The respondent had no fax number at the time but had to complete the form in order to be able to proceed further with the registration and the "false" fax numbers were put in inadvertently.
The complainant is guilty of reverse domain name hijacking: it assumes as owner of a recently registered company it has earned the exclusive right to use the generic phrase in a domain name; no contact was made before the complaint was filed; it raises unfounded and irrelevant allegations about the respondent's employer and its domain name Xpoprintasia.com; its lawyers wrote to the respondent's employer even though the disputed domain name had been registered by the respondent before he was employed by that company; it states its principal business is printasia.com yet staking a claim to own and run a second Internet site because the domain name is akin to reverse domain name hijacking and bad faith.
5. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:-
(i) the disputed 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 interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Does the complainant have rights in a trade mark?
The Policy protects common law trade mark owners as well as owners of registered trade marks: Cedar Trade Associates, Inc., v. Gregg Ricks, NAF 93633; Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood, WIPO D2000-0131 and Passion Group Inc. v. Usearch, Inc., AF-0250.
Where trade mark rights are claimed in a corporate or business name, it is important to distinguish between use of that name as a trade mark (to distinguish goods or services as those of the company or business) and use to identify the company or business whose name it is. Mere registration and use of a corporate or business name does not amount to trade mark use.
Further, use by others of the name in referring to the goods or services of the company is not trade mark use by the company, although it may be evidence of the reputation in that name enjoyed by the company.
The complainant, in response to the panel's request, provided evidence of use of the name Global Print Exchange prior to the respondent's registration of the disputed domain name. Some of this evidence failed to meet the requirements of trade mark use just set out, as the respondent noted in its final submission.
However, there is photographic evidence, not denied by the respondent, that the complainant used the name Global Print Exchange, as well as its corporate name, prominently displayed, on its booth at the Asia International Book Fair held in Singapore from April 26th to 28th 2000. It appears the complainant launched its B2B internet print exchange services at that trade fair on 26th April 2000. Accordingly, provided that the name is capable of being distinctive, such use was use as a trade mark in connection with the complainant's services.
The respondent contends the name global print exchange is a generic term in widespread third party use. The panel accepts that: "where the domain name and trademark in question are generic…the rights/interests inquiry is more likely to favor the domain name owner" (Shirmax Retail Ltd./D˘etaillants Shirmax Lt˘ee v. CES Marketing Group Inc., eResolution case AF-0104). See also General Machine Products Co. v. Prime Domains (NAF case FA1000092531), Car Toys, Inc. v. Informa Unlimited Inc. (NAF case FA2000093682) and CRS Technology Corp. v. Condenet, Inc. (NAF case FA 000200009347).
Here, the only evidence provided (registration of the globalprint.com domain name by a German company and registration at an unknown date - which may have been after April 2000 - of the domain name globalprintexchange.net) does not support the assertion. Although each of the three words individually is descriptive, the combination of all three is unusual. Just as the expressions "Australian" and "Stock Exchange", taken separately, are descriptive, taken together they have become, through use, distinctive of the stock exchange services of a particular supplier. Likewise, "Global Print Exchange" is capable of being distinctive. The choice of a combination of descriptive words means that only slight differences will suffice to distinguish the similar services of others, as in "Asian Print Exchange", for example. But this does not mean there cannot be common law trade mark rights in the combination chosen by the complainant.
On the evidence, until the respondent registered the disputed domain name, the only use of the name Global Print Exchange in Singapore was by the complainant as a trade mark or as a business or company name and use by others to refer to the complainant or its services.
The respondent argues that the short time the complainant has been trading is insufficient to give rise to common law trade mark rights. In considering this issue, the panel is conscious that although Rule 15(a) does not require the application of the principles of law of any particular jurisdiction, where the parties are from the same country the laws of that country are generally applied in determining cases under the Policy.
This panelist is not familiar with the laws of Singapore but in this case what is sought to be demonstrated are common law trade mark rights. Some of the highest courts of the common law world have held that, provided the plaintiff can establish goodwill or reputation in the name, the plaintiff may prevent passing off at common law - see Erven Warnink BV v. J Townend (Hull) Ltd,  AC 731 (House of Lords); Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 (High Court of Australia); Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd  2 NSWLR 851(Privy Council).
In Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd and others  1 NSWLR 196, two individuals reserved the company name "Fletcher Challenge Pty Ltd" on the same day as it was announced to the Stock Exchange and throughout the world that, as a result of a forthcoming merger of existing companies, a new company (the plaintiff) with the name "Fletcher Challenge" was about to be launched. Even though the plaintiff was not in existence at the time the defendants reserved the name, it was held (on an interlocutory basis) that the plaintiff had sufficient reputation at the time of the defendant's registration of the name to found an action in passing off. The judgement referred to leading English authority. This case is helpful in considering the brief trading period of the complainant under the name Global Print Exchange before the respondent registered the disputed domain name.
Having regard to the undisputed use by the complainant of the name Global Print Exchange at the trade fair in April 2000, the panel infers that participants at that trade fair would have come to associate the name Global Print Exchange with the goods and services offered by the complainant and finds on the evidence that, before the respondent registered the disputed domain name, the complainant had established sufficient reputation in Singapore in the printing trade in the name Global Print Exchange to have acquired, through use, common law trade mark rights in Singapore in that name in connection with printing services.
Identity or confusing similarity
The disputed domain name and the complainant's mark are virtually identical. Many cases under the Policy and under US trade mark law have established that this is sufficient to satisfy this element. See Brookfield Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999), citing Public Serv. Co. v. Nexus Energy Software, Inc., 36 F. Supp. 2d 436 (D. Mass 1999), 1999 U.S. Dist. LEXIS 1994, No. 98-12589 (D. Mass. Feb. 24, 1999)(finding "energy-place.com" and "Energy Place" to be virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, ['epix.com'] is the same mark as ['EPIX']"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), aff'd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
This element is made out.
The respondent correctly points out that the complainant bears the onus of proof on this issue and says: (1) he intends to establish a non-commercial focal point for numerous worldwide Internet print sites launched within the last year, and (2) the domain name www.globalprint.com was already taken so the respondent's best option was to add the generic word exchange.
As to (1), there is no evidence that, before notice of this dispute, the respondent had made use of or demonstrable preparations to use the name in connection with a bona fide offering of goods or services or at all.
As to (2), having regard to the timing and the circumstances of the respondent's registration of the name, the panel does not accept that the word "exchange" came to the respondent's mind unprompted by the knowledge he had of the name Global Print Exchange. That name was printed on the business cards he was given at the meeting. On the day before he registered the disputed domain name, he was informed that a business arrangement was not possible and he emailed his acknowledgement of this, using an email address printed on one of those business cards. It is inconceivable that, in choosing the name he registered as a domain name, the respondent was not conscious of the name of the complainant. The disingenuousness of the respondent's explanation of his choice of name is a factor to be taken into account when considering the issue of illegitimacy.
The respondent has not been commonly known by the domain name and has made no active use of the name at all.
In the absence of any evidence falling within paragraphs 4(c)(i) to (iii) of the Policy it remains for the panel to consider whether the complainant has established that the respondent has no rights or legitimate interests in respect of the domain name.
The timing of the respondent's return to Singapore, the holding of the Trade Fair, and the approach the respondent made to the complainant, indicate that the respondent might have attended the trade fair and there become aware of the complainant's use of the name Global Print Exchange. However, there is no evidence of this.
The evidence does show, however, that when he registered the domain name, the respondent knew the complainant's corporate name, had been informed of the complainant's new e commerce project printexasia.com and of its launch and schedule, had examined the printexasia.com web site and had concluded that the complainant's business model was likely to be very effective and should have great potential. (See Bragg v. Condon, FA 0092528, where the complainant had similarly advised the respondent about its strategies a short time before the respondent registered the disputed domain name.)
Having regard to the disingenuous explanation offered by the respondent for his choice of domain name, the panel finds that, in registering the domain name the day after having been told there was no opportunity for him in the complainant's business, the respondent was motivated by a desire to thwart any attempt the complainant might make to secure that domain name for itself.
The panel finds these circumstances demonstrate that the respondent has no rights or legitimate interests in respect of the domain name.
The circumstances listed in paragraph 4(b) of the Policy are not exhaustive.
Upon his return to Singapore in late April 2000, the respondent was seeking to find a position "ideally in the sectors of telecommunications, technology and e commerce". He had print experience. He found the complainant's aspirations "interesting and exciting". The panel finds that, in registering the domain name the day after having been excluded from participation in the complainant's business, the respondent had decided to seek a position with a competitor of the complainant and that, should he be successful, he would thus himself be a competitor of the complainant. As it transpired, by the end of May 2000 he had indeed secured for himself a position as an officer of a competitor of the complainant.
Under these circumstances, the panel finds that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy. Such conduct is evidence of both bad faith registration and use, pursuant to paragraph 4(b) of the Policy.
The complainant has established that the respondent registered and has used the disputed domain name in bad faith.
As to reverse domain name hijacking, this colourful expression is defined in paragraph 1 of the Rules as "using the policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Rule 15(e) provides: -
"…If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".
The complainant's assertion that the domain name Xpoprintasia.com is deceptively similar to the complainant's site printexasia.com, is irrelevant as against the respondent in these proceedings and oppressive to him in raising an issue to which only the respondent's employer could be expected properly to respond. The complainant was aware before bringing this complaint (Annex 6 to the complaint) that the domain name Xpoprintasia.com belongs to the complainant's employer, Xponet.com.Pte. Ltd., and is part of a family of names with the prefix Xpo-, being part of its corporate name.
This is insufficient to outweigh the strong evidence in this case that the complainant brought this proceeding in good faith in an attempt to stop the respondent from improperly damaging its business. The claim of reverse domain name hijacking is rejected
Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel is satisfied that all elements necessary to entitle the complainant to relief have been established, and accordingly requires the transfer of the domain name globalprintexchange.com to the complainant.
Dated: September 7, 2000 at Sydney, Australia.
(s) Alan Lawrence Limbury