v.
Steven Hertzberg
[Indexed as: TABCORP v. Hertzberg]
[Indexed as: TABCORP.com; TABCORP.org]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No: WIPO D2000-0566
Commenced: 15 June, 2000
Judgement: 20 September, 2000
Presiding Panelist: Hon Sir Ian Baker QC
Domain name - Domain name dispute resolution policy - Trademark - Common Law Mark - Bad faith registration - Bad faith use - right or legitimate interest - cybersquatter - Conflicting evidence - Registration after knowledge of complaint.
Complainant, TABCORP Holdings is a wholly owned subsidiary of TABCORP Assets Ltd. It is a state- owned entity that conducts a variety of wagering and gaming activities. TABCORP Assets Ltd has applied for an Australian trademark for the name Tabcorp and alleges a common law trademark in the name. Complainant is the registered owner of the Domain Name tabcorp.com.au.
Respondent is the registered owner of the Domain Names tabcorp.com and tabcorp.org. It was alleged that Respondent registered several domain names to be held in trust for a 3rd party client or the Respondent's. Respondent maintains a website under the name tabcorp.com and alleges it is used as a storage facility. The name for this domain was actually chosen because it was already in the Respondents possession and was already listed on a free web-hosting service. The website under the Domain Name tabcorp.org is inactive.
Held, TABCORP.com Name Not Transferred. TABCORP.org Name transferred.
The Panel determines that the domain names tabcopr.com and tabcorp.org are identical to Complainants mark tabcorp.
The Panel determines that Respondent has no right or legitimate interest in respect of the domain names because Respondent has failed to submit any evidence that he has such a right or interest, there is no developed website in connection with the domain names in question and Respondent is not known by the name tabcorp.
The Panel finds bad faith registration of the domain name tabcorp.com not proved. The Panel has difficulty in deciding whether the name "tabcorp.com" was registered in bad faith due to conflicting evidence. Normally, one would not expect that a U.S. resident would know of the Complainant or of an Australian mark relating to a gambling organization which, whilst of interest in one country, is unlikely to be widely known in another (if at all)
The Panel finds bad faith registration of tabcorp.org. Respondent
registered the name after he knew full well Complainants concerns about
tabcorp.com
The Panel considers there is bad faith use of tabcorp.com. Respondents
was willing to entertain an offer for the domain names, the websites were
not developed or promoted and Respondent registered tabcorp.org after
Complainants concerns about tabcorp.com were known to him.
The Panel finds bad faith use of tabcopr.org. Bad faith use is shown by Respondents failure to develop the website and Respondents course of dealings in relation to tabcorp.com.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy, adopted October
24, 1999
WIPO Supplemental Rules for Uniform Dispute Resolution Policy
Panel decisions referred to
Frank Wagner & Son v Mahan, ICANN D2000-0261 (WIPO).
VZ VermögensZentrum AG v Anything.com, ICANN D2000-0527 (WIPO).
1. The Parties
The Complainants are TABCORP Holdings Limited and its wholly owned
subsidiary TABCORP Assets Pty Limited. They are companies organized under
the laws of Australia with the address of 5 Bowen Crescent, Melbourne,
Victoria, Australia. The Complainants are represented by Mr. Marcus Hoyne
of Corrs Chambers Westgarth, Solicitors of Melbourne, Victoria, Australia.
The Respondent is Mr. Steven Hertzberg of 18 Arch Lane, San Carlos,
California, USA. The Respondent is represented by Mr. Ian K. Boyd of Harvey
Siskind Jacobs, LLP, Attorneys, of San Francisco, CA, USA.
2. The Domain Names and Registrar
The domain names at issue are "tabcorp.com" and "tabcorp.org". The
domain name "tabcorp.com" is registered with Network Solutions Inc., 505
Huntmar Park Drive, Herndon, Virginia, USA ("NSI"). The domain name "tabcorp.org"
is registered with Register.com, Inc. 575 Eighth Avenue, New York, NY,
USA ("Register.com").
3. Procedural History
A Complaint was submitted by the Complainant to the World Intellectual
Property Organization Arbitration and Mediation Center ("WIPO Center")
on June 7, 2000, (electronically) and June 13, 2000 (hard copy).
On June 6, 2000 (for NSI) and on June 9, 2000 (for Register.com) requests
for Registrar verification were transmitted by WIPO Center to NSI and to
Register.com asking them to:
Confirm that a copy of the Complaint had been sent to them by the Complainant
as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy,
paragraph 4(b).
Confirm that the domain names at issue are registered with NSI or Register.com.
Confirm that the person identified as the Respondent is the current
registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s),
facsimile number(s), email address(es), available in the Registrars WHOIS
database for the registrant of the disputed domain names, the technical
contact, the administrative contact and the building contact for the domain
names.
Confirm that the Uniform Domain Dispute Resolution Policy is applicable
to the domain names at issue.
Indicate the current status of the domain names.
By email dated June 6, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration "tabcorp.com".
The Respondent, Steve Hertzberg, is the current registrant of the said
domain name "tabcorp.com". He is also its technical and billing contact.
The technical and zone contact is SuperBusinessNet, Inc, 150 Almaden, BL
#500 San Jose, CA, USA.
NSIs 5.0 Service Agreement is in effect.
The domain name registration "tabcorp.com" is in "Active" status.
By fax dated June 13, 2000, Register.com advised WIPO Center as follows:
Register.com had received a copy of the Complaint from the Complainant.
Steven Hertzberg is the current registrant of the domain name "tabcorp.org".
He is also the administrative contact. Register.com is the technical and
zone contact.
The Uniform Dispute Resolution Policy is applicable to the domain name.
The domain name is on "registry lock".
With effect from January 1, 2000, NSI and Register.com adopted the
policy for Uniform Domain Name Dispute Resolution adopted by the Internet
Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced
from the advice of NSI and Register.com that the domain names are either
"active" or on "registry lock", the Respondent has never requested that
the domain names be deleted from the relevant domain name database. The
Respondent has not sought to terminate his agreement with NSI or Register.com.
Accordingly, the Respondent is bound by the provisions of NSIs Domain
Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements
of the Uniform Policy and the Uniform Rules, WIPO Center on June 15, 2000,
transmitted by courier, email and facsimile a Notification of Complaint
and Commencement of Administrative Proceedings to the Respondent. A copy
of the Complaint was also emailed to NSI, ICANN and Register.com.
The Respondent was advised that a Response to the Complaint was required
within 20 calendar days (i.e., by July 4, 2000,). He was also advised that
any Response should be communicated, in accordance with the Rules, by four
sets of hard copy and by email.
On July 11, 2000, the Respondent filed a hard copy of his Response
to WIPO Center, which had agreed to an extension of the time for the filing
of a Response.
On September 1, 2000, WIPO Center invited the Honourable Sir Ian Barker
QC of Auckland, New Zealand, to be Sole Panelist in this case. It transmitted
to him a statement of acceptance and requested a declaration of impartiality
and independence. The Complainant has paid the required amount to the WIPO
Centre.
Sir Ian Barker duly advised his acceptance and forwarded to WIPO Center
his statements of impartiality and independence. On September 6, 2000,
the Complainant and the Respondent were notified of the appointment of
the Panel. The Panel finds that the Administrative Panel was properly constituted
in accordance with the Rules and the Supplementary Rules.
On September 6, 2000, WIPO Center forwarded the record to the Panelist
by courier. This was duly received by him on September 11, 2000. In terms
of Rule 5(b), in the absence of exceptional circumstances, the Panel is
required to forward its decision by September 20, 2000.
The Panel has independently determined and agrees with the assessment
of WIPO Center that the complaint meets the formal requirements of the
Rules for Uniform Domain Name Dispute Resolution Policy as approved by
ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the
language of the registration agreement.
4. Factual Background
The principal Complainant, TABCORP Holdings Limited, is an Australian
public company with a market capitalization of some $A3.5 billion, and
over 6000 employees. It was formed in 1994 as the result of the privatization
by the then government of the State of Victoria of the Victorian Totalizator
Agency Board (TAB). This state-owned entity had been formed in the 1950s
to provide legalized off-course betting in Victoria for horse and greyhound
racing. This Panelist takes judicial notice that the expression "TAB" for
Totalizator Agency Board originated in New Zealand where there is still
an entity of that name operating off-course betting services nation-wide.
It is commonly referred to as the "Tee-Ay-Bee" rather than "TAB".
The principal complainant conducts a variety of wagering and gaming
activities through networks throughout the State of Victoria and in parts
of the states of New South Wales and Queensland. It has merged with a casino
in Sydney, New South Wales. Its wagering division has 543 retail agencies
and telephone betting accounts throughout Australia. It also operates 13,500
gaming machines in Victoria and conducts gaming activities through subsidiaries
in the states of New South Wales and Queensland.
The secondary Complainant, Tabcorp Assets Pty Ltd, applied on September
17, 1997, for an Australian trademark for the tradename "Tabcorp" (including
an image ellipse incomplete breaks star). Registration of the mark has
not yet been granted. The Complainant alleges a common law trademark enuring
before the date of application. The mark awaiting registration is displayed
in advertising and signage throughout Victoria on television, press advertisements
and promotional material and in conjunction with corporate sponsorships.
No copy of the trademark application was annexed - an unusual omission
in the experience of this Panelist.
The Principal Complainant has account holders in various parts of the
world, including the United States and Hong Kong. Its shares, listed on
the Australian Stock Exchange, are traded in American Depository Receipt
form in the United States.
On January 1, 1993, the Complainant registered the domain name "tabcorp.com.au".
The Respondent registered the domain name "tabcorp.com" in early 1997,
allegedly at the request of a client, Carolyn Baker.
The Complainant alleges that the Respondent was in 1997 to have provided
Internet business consulting and advisory services for other accountancy
clients of Ms. Baker in satisfaction of a debt to her accountancy practice.
Thus, says the Complainant, Ms. Baker had the Respondent organize the registration
of several domain names, including "tabcorp.com", to be held on trust for
Ms. Bakers clients. A letter from Ms. Baker annexed to the Complaint asserts
that the C. J. Baker Discretionary Trust has always owned the domain name,
although NSI regards the Respondent as the owner since the registration
is in his name.
The parties and/or their lawyers have had many communications between
January 20 ,1999, and March 22, 2000. Respondent was willing to entertain
an offer to sell the name, although always maintaining his entitlement
to the name. He claims that the Complainant "went behind his back" to NSI
to effect a transfer - an event which he said caused him to "harden his
attitude". He turned down an offer of $3,000 made in December 24, 1999.
He remains open to consider a higher offer.
A Mr. McPhail, an employee of the Complainant, spoke to Ms. Baker on
January 20, 1999. According to his note, he asked her why she had registered
"tabcorp.com". Her reply was "so when somebody wanted it we could sell
it" and that the Respondent had told her this would be a good idea. No
affidavit or statutory declaration from Mr. McPhail or Ms. Baker was filed.
The Respondent denies this hearsay version of Ms. Bakers account of
the reason for the registration. In a statutory declaration, he claims
that their business relationship had terminated unhappily. He denied any
suggestion that he had advised her to obtain the domain name with a view
to a later sale at a profit. He admits that Ms. Baker suggested the name
be registered. He denies that he is a "cybersquatter" who registers domain
names of well-known trademarks. He says he is a consultant who works closely
with internet companies at executive levels to assess, develop and complement
on-line opportunities for new market development of existing services,
new profit centres and cost savings through greater operating efficiencies.
He has no connection with the gambling business.
His statutory declaration in support of his contentions is better evidence
than the Complainants presentation of a file note of an employees conversation
with Ms. Baker or of a letter from Ms. Baker. However, even if the Complainant
had provided a higher standard of evidence, the Panel would not be in a
position to adjudicate on credibility issues.
The Complainant alleges that the Respondent has changed his contact
details, making it hard for the Complainant to communicate with him. The
Respondent says that he "commuted" between Australia and the USA for business
but was unfamiliar with the Complainant when he had dealings with Ms. Baker.
He has placed a traffic counter on the website "tabcorp.com".
Respondent claims to use the name "tabcorp.com" as a "storage facility"
which clients or associates may visit to retrieve frequently used documents.
The name for this domain was actually chosen because it was already in
the Respondents possession and was already listed on a free web-hosting
service. According to the Complainant, the website has only a user name,
a traffic counter and a password facility for members. The outside of the
website is said to contain links to, inter alia, casino and gambling-related
websites. The Respondent denies that the website has ever been used "in
any way competitive to the Complainant, any off-shore casino or the gambling
business in general".
The Respondent registered "tabcorp.org" on February 19, 2000, with
a different Registrar from the Registrar for "tabcorp.com". He claims this
registration was a "prophylactic" measure to stop third party use of the
mark in the United States for business consulting services similar to his.
He acknowledges that this site is inactive.
5. Parties Contentions
(i) Identical or Confusingly Similar
The Complainant submits the disputed domain names are confusingly similar
to the mark for which it has applied for registration and to its alleged
common law mark. The Respondent submits that the Complainant has submitted
no evidence of its trademark application or of sufficient use to justify
a common law mark. He cites Frank Wagner & Son v Mahan (WIPO D2000-0261)
as authority for rejecting a complaint where no trademark registrations
or applications were presented to the Panel. Paragraph 4(a)(1) applies
only to trademarks or service marks. Also, a global trademark search by
the Complainant found no applications or registrations for the mark outside
Australia.
(ii) No rights or Legitimate Interests
The Complainant submits that it has not authorized or licensed the
Respondent to use the word "Tabcorp" which is an invented word associated
with its business. The "tabcorp.com" site is devoid of content other than
a traffic counter, user name and password facility. The outside of the
website contains links to casinos and gambling related websites. The "tabcorp.org"
site shows no sign of being established. Nor is the Respondent known by
the name "tabcorp".
The Respondent says that there is no evidence of the lack of his rights
to use the names. He registered the name "tabcorp.com" at a clients request
and, when she did not want it, he began to use it as a service for his
own clients. The name has no fame in the United States and the Respondent
does not compete with the Complainant.
(iii) Bad Faith Registration and Use
The Complainant alleges that registration of the name was in bad faith.
There was no legitimate purpose for its registration which was effected
in order to sell or rent the name to the Complainant for a profit. The
reported conversation by an employee of the Complainant with Ms. Baker
verifies this contention.
The Complainant alleges bad faith use from the following facts:
(a) The domain name "tabcorp.com" is devoid of web content and the
name "tabcorp.org" does not resolve into a website.
(b) There is no evidence of advertising or promotion or display to
the public of the disputed domain names.
(c) Respondent has changed his contact details and become hard to contact.
All these three factors indicate bad faith use through inaction.
(d) Respondents agreement to consider offers for sale.
(iv) The Respondent Alleges
(a) There was no registration in bad faith. The name was obtained at
a clients request at a time when he was unfamiliar with the Complainant.
He did not imply to Ms. Baker that he was registering the name in the hope
of selling it.
(b) The Complainant did not take any step to stop his use of the name
for 2 years after registration.
(c) Respondent did not approach the Complainant to sell the name.
(d) Respondent uses the name for different reasons in a country where
the Complainant and its mark have no notoriety or fame. There is no confusion
of consumers. The parties are not competitors.
(e) Respondent has never concealed his true identity or provided false
information.
(f) This proceeding is inappropriate for determining the Complainants
rights in the mark.
(g) He denies that he has been difficult to contact or that he has
attempted to conceal his location or identity.
(h) He denies that his website has any connection to gambling in any
form.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint
on the basis of the statements and documents submitted in accordance with
the policy, these rules and any rules and principals of law that it deems
applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy,
is to show:
- That the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights.
- That the Respondent has no legitimate interests in respect of the
domain name.
- The domain name has been registered and used in bad faith.
The Panel determines that the domain names "tabcorp.com" and "tabcorp.org"
are identical to the Complainants mark "tabcorp" which is awaiting registration.
The addition of "com" or "org" does not affect the decision.
The Panel considers that the Complainant should have exhibited a copy
of its trademark application to its Complaint. A Complainant bears the
onus of proof and should "get it right" first time. However, because the
Panel finds against the Complainant on other grounds, it does not rest
its finding on this technicality. The fact that since early 1999 the Complainant
has consistently maintained its right to the mark in its many iterations
with the Respondent is sufficient to excuse the Complainants omission.
The Respondent never questioned the Complainants mark in his many contacts
with the Complainant.
The Panel determines that the Respondent has no right or legitimate
interest in respect of the domain names for the following reasons:
(a) The Respondent has failed to submit any evidence that he has any
right or legitimate interest in respect of the domain names at issue.
(b) According to the Complainants search, there is no developed website
in connection with the domain name "tabcorp.com", and "tabcorp.org" shows
no sign of being established.
(c) The Respondent is not known by the name "tabcorp".
The Panel has difficulty in deciding whether the name "tabcorp.com"
was registered in bad faith by the Respondent in January 1997. Normally,
one would not expect that a U.S. resident would know of the Complainant
or of an Australian mark relating to a gambling organization which, whilst
of interest in one country, is unlikely to be widely known in another (if
at all). The situation is similar to that in VZ VermögensZentrum AG
v Anything.com (WIPO Case D2000-0527). There, a 3-member Panel found bad
faith registration (as distinct from bad faith use) unproven. The Complainant
was a financial services company, well known in Switzerland. Its mark was
unlikely to have been known in the country of the Respondent, the Cayman
Islands. Subsequent bad faith use does not necessarily prove bad faith
registration. In this case, the presence of the Respondent in Australia
at the time of registration excites suspicion. But, given his statutory
declaration that he did not know of the Complainant at the date he registered
the domain name, compared with the Complainants hearsay suggestion that
he did, it will be for a Court to determine where the truth lies. The Panel
finds bad faith registration not proved.
The Panel considers there is bad faith use of "tabcorp.com" shown by:
(a) The Respondents course of dealings with the Complainant culminating
with his willingness to consider an offer for the domain names.
(b) Inaction by the lack of development of the websites and any promotion
of the websites.
(c) The Respondents registration of "tabcorp.org" in February 2000.
The situation with regard to "tabcorp.org" is different. Bad faith
registration in February 2000, can be inferred easily. By then, Respondent
knew full well the Complainants concern about "tabcorp.com". His excuse
of a "prophylactic measure" is unconvincing and meaningless.
The bad faith use of "tabcorp.org" is shown by the failure to develop
the website and the Respondents course of dealings in relation to "tabcorp.com".
In relation to the Respondents dealings with Ms. Baker, it is not
possible for a Panelist in this expedited proceeding to make any credibility
findings. There is a clear conflict of evidence between the suggested evidence
of Ms. Baker (produced only by a note of a conversation) that the Respondents
motive in registering the domain name "tabcorp.com" was later to sell it
at a profit. In evidence produced in a more satisfactory form, the Respondent
denies this. There is also a conflict whether or not that domain name was
held on trust by the Respondent for Ms. Bakers Trust. This has an impact
on the Complainants approach to NSI to transfer the name which the Respondent
characterizes as evidence of "unclean hands" by the Complainant. Such matters
can only be determined in a Court of competent jurisdiction and not by
a WIPO Panelist operating under the ICANN Dispute Resolution Policy.
The situation is different in respect of "tabcorp.org". It was registered
after the Respondent had ample notice of the Complainants concerns and
it must be transferred to the Complainant.
7. Decision
The Panel decides that the Complainant has not made out a sufficient
case for the transfer of the domain name "tabcorp.com". At best for the
Complainant, there is only a suspicion that this domain name was registered
in bad faith. The Complainant will have to take Court proceedings if it
wishes. The Panel declines to order the transfer of the domain name "tabcorp.com".
However, the Panel decides that the necessary grounds have been made
out in respect of the domain name "tabcorp.org". The Panel therefore orders
that the domain name be transferred to the Complainant.
Hon Sir Ian Baker QC
Presiding Panelist
Dated: September 20, 2000
Domain Name Tabcorp.com Not Transferred.
Domain Name Tabcorp.org Transferred.