DECISION

Gallup, Inc. v. PC+s.p.r.l.

Claim Number: FA0308000190461

PARTIES

Complainant is Gallup, Inc., Washington, DC (“Complainant”) represented by Lisa B. Kiichler, 1001 Gallup Drive, Omaha, NE 68102. Respondent is PC+s.p.r.l., Rixensart, Belgium (“Respondent”) represented by Flip Petillion & Rosine Perier, Chaussee de la Hulpe 187, 1170 Brussels, Blegium.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gallupeurope.com> registered with Gandi.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Diane Cabell, Karl V. Fink, and Dennis A. Foster as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 22, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 25, 2003, the registrar Gandi confirmed by e-mail to the Forum that the domain name <gallupeurope.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 22, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gallupeurope.com by e-mail.

A timely Response was received and determined to be complete on September 19, 2003.

Complainant submitted a timely and complete Additional Submission on September 24, 2003.

On September 29, 2003, Respondent submitted a timely and complete Additional Submission.

On October 3, 2003, the Forum received a joint request from the parties to stay this administrative proceeding for a one-time period of 45 days until November 17, 2003. The Forum granted the parties’ joint request.

Complainant filed with the Forum a request to remove the stay of administrative proceeding on November 12, 2003. The Forum granted Complainant’s request and the stay was lifted.

On November 15, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Diane Cabell, Karl V. Fink and Dennis A. Foster as Panelists.

Contrary to the requirements of paragraph 3(b)(xi) of the Rules, the Complainant initially failed to inform the Panel that there were two ongoing lawsuits in Belgium involving the disputed domain name in this Case.  However, after the Respondent pointed this out, the Complainant acknowledged it was true.  When there is already a lawsuit involving the disputed domain name, Rule 18 gives the Panel the option to suspend or terminate the proceeding or to continue on to a decision.   The Panel believes it can effectively dispose of this proceeding using the Policy and the Rules, and thus elects to issue a decision in this proceeding.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the largest, oldest and best-known opinion polling service in the United States.  Established prior to World War II, Complainant has used  GALLUP and GALLUP POLL (the “GALLUP Marks”)as trademarks for over sixty years.  The name and mark GALLUP is, in fact, one of the best-known trademarks in the country.

Complainant owns a website, <gallup.com>, that gives users worldwide access.  That web site gets extensive traffic and has had visits by as many as 100,000 individuals in a single day.

The utilization of a popular search engine, Google, revealed 99,400 mentions for Gallup Poll.

Complainant registered GALLUP, GALLUP POLL and other GALLUP trademarks well before the July 2002 <gallupeurope.com> disputed domain name registration by Respondent.

The disputed domain name, <gallupeurope.com>, is virtually identical to Complainant’s registered marks, GALLUP and GALLUP POLL, and to its domain names <galluppoll.com>, <gallup-poll.com> and <gallup-poll.org>.

Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use Complainant’s GALLUP Mark or any name including GALLUP, including but not limited to, Respondent’s domain name <gallupeurope.com>.

Given the fact that Respondent is not a licensee of Complainant, Respondent can not use GALLUP or GALLUP POLL to identify its business.  There is no legitimate reason for Respondent to own the <gallupeurope.com> domain name.  It is clear, therefore, that Respondent has acted in bad faith.

 

B. Respondent

PC+s.p.r.l. is a Belgian company.  It is an independent consultant in ICT matters and registered the domain name in dispute for the sole and unique use by the European Omnibus Survey s.c.r.l., a Belgian company known under the commercial name ‘EOS Gallup Europe’ and holding title in the trade mark ‘Gallup Europe’ since 1990 (it is hereafter referred to as “Gallup Europe”).

Gallup Europe prepares international surveys and has been active in opinion and social research for 29 years.  The activity was started in 1974.  In 1986, Gallup Europe was incorporated.  From then on, the survey activities were performed in the framework of a Belgian company.  Gallup Europe’s survey activities have been performed mainly for the European Institutions.

On September 5, 1990, Gallup Europe registered the Benelux trade mark ‘Eos Gallup Europe’ under No. 486.716 (Exhibit 2), and on February 20, 1991, Gallup Europe registered the international trade mark ‘EOS Gallup Europe’ or ‘Gallup Europe’.

The domain name in dispute is not identical to the trade marks ‘gallup’ and ‘gallup-poll’ nor to the word ‘gallup’ in the domain name <gallup.com>, nor to the word ‘gallup-poll’ in the domain names <gallup-poll.com> or <gallup-poll.org> of which Complainant claims ownership.

The question is thus whether or not the domain name in dispute is confusingly similar to said trade marks and words in the domain names of which Complainant claims ownership.

Indeed, the addition of the extension ‘Europe’-which was used by Gallup Europe in its name ‘EOS Gallup’ since 1991 and in its Benelux and international trade marks since 1990 and 1991, respectively—always served as the differentiator vis-ŕ-vis other Gallup companies, associations and organizations.     

Respondent has a legitimate interest in respect of the domain name in dispute.

Gallup Europe has been commonly known by the name Gallup since 1991 and has had trademark rights since 1990.  Reference is made to the above mentioned trade mark registrations in 1990 and 1991.

Complainant is undoubtedly well aware of Gallup Europe’s rights and interests and Gallup Europe’s use of the name and domain name including the words ‘gallup europe’.  Complainant became a member of Gallup Europe via its UK subsidiary which remained a member until May 2003.  This member never objected to this use; nor did it initiate proceedings.  Being a member, it recognized the existence, nature and name of Gallup Europe.

The domain name in dispute has not been registered in bad faith.  Nor has it been used in bad faith since its registration.

Respondent had not registered or acquired the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration or otherwise.  There are no circumstances demonstrating the contrary.  For the sake of clarity, Respondent reiterates its agreement with Gallup Europe containing the terms and conditions of the registration of the domain name for the exclusive use by Gallup Europe.

Respondent has not registered the domain name in dispute in order to prevent an owner of a trademark or service mark from reflecting the mark in a corresponding domain name.  Instead, the domain name in dispute was registered because it reflected the name and trademark of Gallup Europe used since the beginning of the nineties.

Respondent clearly has not registered the domain name for the purpose of disrupting the business of a competitor of Gallup Europe.  The registration was logically in line with the use of the name and trade mark of Gallup Europe since the beginning of the nineties.  As quite a number of companies, organizations and associations have secured the use of their name and trade marks through the registration of domain names, Gallup Europe’s only purpose was to have Respondent secure the same interests and rights through the registration of the domain name in dispute.

Finally, by using the domain name, Respondent has not intended to attempt to attract, for commercial gain, Internet users to Gallup Europe’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Gallup Europe’s web site or location or of a product or service on Gallup Europe’s web site location.  Instead, the domain name registration was the logical continuation of a generally established practice: Long before domain names existed and long before they were accessible to Respondent or Complainant, all references with the words ‘gallup europe’ were references to Gallup Europe.  This reference is well known in the sector and the clientele.  Also, that is why any and all searches on research engines such as, e.g., google.com, under the name ‘gallup europe’ refer to EOS Gallup Europe. 

Considering the Complainant’s strategy, the existing litigations before the Belgian court and the Complainant’s silence about important elements of fact and law, the Panel should make a finding of reverse domain name hijacking.

C. Additional Submissions

Complainant’s Additional Submission:

It is true that Respondent has held a trade mark  “EOS Gallup Europe” since 1991.  However, it is patently untrue that Respondent owns the trademark “Gallup Europe”.  In fact, Respondent only filed for the trademark “Gallup Europe” just five days after Gallup registered its new Belgian company, The Gallup Organisation, S.A. and that registration of “Gallup Europe” by Respondent is the cause of the pending litigation.

Gallup has concentrated its efforts in challenging generic TLDs that would lead to confusion in the global marketplace.  As such, Gallup has successfully challenged the following domain names: <gallupgeorgehorace.com>, <galluppoll.com>, <africagalluppoll.com>, <nigeriagalluppoll.com> etc.

Respondent argues that Gallup’s subsidiary itself was a member of Gallup Europe until May 2003.  Again, Respondent fails to state correctly that Gallup’s subsidiary was a member of EOS Gallup Europe.

Arguably, Respondent only sought to use Gallup Europe after Gallup registered its new company in Belgium.  Until that time, Respondent’s legitimate rights were in the trademark EOS Gallup Europe only.

Respondent’s Additional Submission:

The Respondent registered the disputed domain name on July 8, 2002, i.e., long before the litigations initiated in 2003.

Respondent points out that the question whether the use of ‘EOS’ by Respondent is required is a question that is the cause of pending litigation between the parties and is not the subject of the present procedure initiated by Complainant.  It is Respondent’s view that it is not obliged to use EOS as it was commonly referred to since the beginning of the nineties by a name that did not contain ‘EOS’.

Complainant argues that many companies listed by Respondent and using the word ‘gallup’ in their trade name or trade mark, are either (1) licensed by Complainant to use the name ‘gallup’ or, (2) companies owned by Complainant.  But the Complainant does not produce any evidence of this.

Contrary to Complainant’s contention, ‘gallup’ is not a famous brand.  Complainant fails to indicate the location where such famous brand would exist.

There can be only one reason why so many companies, associations and organizations have been able to use the word ‘gallup’ for so long.  The word ‘gallup’ has ended up to only cover a well known research method, but nothing more than that.  It only becomes efficient in combination with another word as a differentiator.

FINDINGS

The Respondent registered the disputed domain name, <gallupeurope.com>, on July 8, 2002. 

Both the Respondent and the Complainant have registered  trademarks that correspond to  the disputed domain name. 

There has been a prior business relationship between the parties.

The parties were involved in litigation over conflicting trademark rights prior to institution of this proceeding.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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 principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

The Complainant has presented a listing of its United States federal trademark and service mark registrations that include GALLUP: for example The GALLUP POLL, registration no. 1,266,004 registered on January 31, 1984 in international class 42 for public opinion polling; and THE GALLUP SCHOOL, service mark registration no. 2,220,843 in international class  41 for educational services on polling techniques.  The Panel is well familiar with the Complainant’s marks and reputation in this field.

The disputed domain name, <gallupeurope.com>, consists of the Complainant’s trade and service mark plus the geographic name of a continent, i.e., Europe.  It is well-settled under the Policy that adding a geographic indicator, used in its geographic sense, to a trade or service mark leads to a finding of confusing similarity per paragraph 4(a)(i) of the Policy. The Respondent has argued that the name GALLUP has become generic, but the Panel finds this is not true owing to the Complainant’s numerous and subsisting trade and service mark registrations.  See Complaint paragraph 3; see also Net2phone, Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”).     

The Panel finds the Complainant has shown the disputed domain name, <gallupeurope.com>, is confusingly similar to a trademark in which the Complainant has rights, and that the Complainant has carried its burden of proof under the Policy at paragraph 4(a)(i).

Rights or Legitimate Interests

The Complainant states the Respondent is not a licensee of the Complainant and has never been authorized by the Complainant to use the GALLUP trademark contained in the disputed domain name.

For its part, the Respondent has exhibited its Benelux trademark EOS GALLUP no. 486,716 registered on September 5, 1990 in international class 35 for market research services (Response Exhibit 2).  The Respondent also has exhibited its international registration no. 568,130 dated February 20, 1991 for EOS GALLUP EUROPE also in class 35 for the same services and valid in Germany, Austria, Spain, France and Hungary.

The Respondent claims to have used the Gallup Europe name to conduct its market surveys since the 70’s and that there previously was a business relationship with the Complainant.  While the Complainant disputes the exact nature of its business relationship with the Respondent, in its second filing the Complainant does not deny there was one.

Based on the Respondent’s trademark registrations and probable use of the trademarks to conduct polling services, the Panel finds the Respondent does have legitimate rights and interests in the disputed domain name.  Therefore, the Panel finds the Complainant has failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

Since the Policy requires that the Complainant prevail on paragraphs 4(a)(i) – (iii) inclusively, the Panel does not need to reach the issue of  bad faith.

Reverse Domain Name Hijacking

The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking.  Under Rule 15(e), this finding is appropriate when the Complaint has been brought “in bad faith” or “primarily to harass” the domain name holder. However, here the Complainant has prevailed under the first leg of its required proof under paragraphs 4(a)(i) – (iii) of the Policy.  Also, the Panel believes there is a real dispute between the parties.  In this context, the majority of the Panel does not agree with the Respondent that a finding of Reverse Domain Name Hijacking is appropriate.    

DECISION

Having established that the Complainant failed to show the Respondent has no rights or legitimate interests in the disputed domain name, as required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Dennis A. Foster

 Presiding Panelist

Diane Cabell                    Karl V. Fink

Panelist                          Panelist

Dated: December 2, 2003

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