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P.T. Bali Discovery Tours v. Mark Austin/ Worldwide Internet Hotel Reservations, Ltd. [2004] GENDND 734 (17 June 2004)

1. The Parties

The Complainant is P.T. Bali Discovery Tours, Denpasar, Bali, Indonesia, represented by Jack M. Daniels, Indonesia.

The Respondent is Mark Austin, Southwick, Sussex, United Kingdom of Great Britain and Northern Ireland; Worldwide Internet Hotel Reservations, Ltd., North Lincolnshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain name <balidiscovery.org> is registered with Tucows.

The disputed domain name <balidiscoverytours.com> is registered with ABR Products Inc. dba Nitin Networks.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2004. On April 26, 2004, the Center transmitted by email to the Registrars of the respective domain names a request for registrar verification in connection with the domain names at issue. On April 27, 2004, both Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 3, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2004. The Response was filed with the Center on May 14, 2004.

The Center appointed a panel consisting of Sir Ian Barker and Ms. Anne Wallace as panelists and Mr. Andrea Mondini as Presiding Panelist in this matter on June 4, 2004. The Panel finds that it was properly constituted. The Panelists have submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a limited liability company based in Bali, Indonesia. It operates under the name “Bali Discovery Tours” and has sold Bali-based travel products since 1999, including from its website “www.balidiscovery.com”. The disputed domain name <balidiscovery.org> was registered on January 7,2003 in the name of the Respondent as registrant and giving as the name of the registrant organization and of the administration and billing organization “Jack Daniels Fan Club”. Apart from being the brand name of a famous alcoholic beverage, Jack Daniels is the nickname of Mr. John Daniels, President of the Complainant. This disputed domain name has been the object of a previous decision in P.T. Bali Discovery Tours v. Mr. Mark Austin, WIPO Case No. D2003-0949: in that case, the Panel denied the Complaint on the grounds that the Complainant had failed to establish rights, registered or otherwise, in a trademark or service mark.

The second disputed domain name, <balidiscoverytours.com> was registered on December 19, 2003, and has not been the object of a previous WIPO Case.

The websites linked to both disputed domain names bore the headline: “Please do not do business with Bali Discovery Tours”. It contained a photograph of Mr. Daniels and made extensive allegations against him and the Complainant, which it is unnecessary to summarize.

5. Parties’ Contentions

A. Complainant

The Complainant requests to re-litigate the Complaint regarding the domain name <balidiscovery.org> which had previously been denied in WIPO Case No. D2003-0949 by asserting that at that time he was unable to produce a registration certificate because the process of Indonesian law does not allow a certificate to be issued until a period of three months has passed after the announcement by the Director of Trademarks of its intention to register a trademark, which announcement was made on October 16, 2003. He asserts that his trademark attorneys received such trademark certificate on March 10, 2004.

On the merits of the dispute, the Complainant asserts:

- That the domain names are identical or confusingly similar to the Indonesian trademark no. 550327 “BALI DISCOVERY TOURS”;

- That the Respondent has no rights or legitimate interest in respect of the domains because the Respondent had not previously used the mark Bali Discovery Tours and has not made a legitimate use of the domain names but linked the domain names to sites tarnishing the Complainant’s mark and business with statements such as “Please do not do business with Bali Discovery Tours”;

- That the domain name <balidiscoverytours.com> was first registered on December 19, 2003, when the Respondent was aware, because of the previous WIPO Case No. D2003-0949, of the above trademark application;

- That the domain names were registered and used in bad faith because the Respondent offered to sell the domain names for consideration in excess of the out-of-pocket expenses related to the domain names and because the domain name was registered primarily for the purpose of disrupting the business of a competitor and preventing the Complainant from reflecting the mark in a corresponding domain.

B. Respondent

The Respondent contends:

- That the case regarding <balidiscovery.org> shall not be re-litigated because the Complainant received a back dated Indonesian trademark and because he has not shown that the evidence could not be obtained with reasonable diligence in the previous proceedings;

- That the trademark only affords protection to the graphic image but not to the descriptive words “Bali Discovery Tours”; that the Complainant has no “international rights” to such trademark and that it lost protection by failing to use the “TM” or equivalent sign;

- That he has rights or legitimate interests in the domain names because he is in the Bali tourism business and therefore helps people discover Bali and because he is involved in legal proceedings against the Complainant;

- That his requests for payment were not related to the transfer of the domain names but were a request for compensation for other damaging acts;

- That he registered and used the domain names to inform the public of the purported “dangers” of dealing with the Complainant in the public’s best interest;

- That he is not preventing Complainant from adopting a domain reflecting his mark because the Complainant already has <balidiscovery.com>.

6. Discussion and Findings

A. Unsolicited Submissions

After the filing of the Complaint and the Response, no party has the right to insist upon the admission of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. Rule 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. Nevertheless, the clear intention of ICANN in adopting the Policy and Rules in their present form was that supplementary submissions should be requested by a Panel in exceptional cases only: Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596.

This is not a case of discovery of evidence not reasonably available to the parties at the time of their initial submissions nor of arguments by one that the other could not reasonably have anticipated: see Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151. Accordingly the Panel does not admit any of the parties’ unsolicited submissions.

B. Re-Litigation of <balidiscovery.org>

The Complaint having been denied with regard to <balidiscovery.org> in WIPO Case No. D2003-0949, the question arises as to whether this Complaint should also be denied applying the general principle that a case should not be re-litigated except where certain listed conditions apply.

A summary of the leading decisions under the Policy is set out in Maruti Udyog Ltd .v. maruti.com, WIPO Case No. D2003-0073. The guidelines set out in that case, in Grove Broadcasting Co Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 and in Creo Products Inc .v. Website in Development, WIPO Case No. D2000-1490 have subsequently been applied by Panels and are adopted for the purpose of this administrative proceeding. In Grove Broadcasting the Panelist identified the limited grounds justifying reconsideration of a decision rendered as including:

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence being offered to the Court;

- the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time; and

- a breach of natural justice / due process.

As to the admissibility of new evidence:

- first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at trial;

- second, that the new evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; and

- third, the evidence must be apparently credible, although it need not be incontrovertible.

In the Creo Products case, the Panel agreed that where the act complained of in both Complaints is the same, the grounds for permitting re-litigation should be limited. Acts which have occurred subsequent to the decision on the original Complaint must be such as to give rise to “… a truly new action under the Uniform Policy”. The burden is on the Complainant to establish that the re-filed Complaint should be entertained and that burden is high.

The evidence of a trademark registration certainly has a decisive influence on the result of proceedings under the Policy. In the present case, therefore, the issue is whether the Complainant has shown that such evidence could not have been obtained with reasonable diligence at the time the Complaint was filed in the previous case. The Complainant now filed an affidavit stating that at that time he was unable to produce a registration certificate because the process of Indonesian law does not allow a certificate to be issued until a period of three months has passed after the announcement by the Director of Trademarks of its intention to register a trademark, which announcement was made on October 16, 2003. He asserts that his trademark attorneys received such trademark certificate on March 10, 2004. The trademark registration filed in the present case by the Complainant indeed indicates October 16, 2003, as the date of registration. The Respondent’s contention that the Complainant needed only have made a phone call to the trademark office to ascertain whether the trademark had been approved / registered at that time or not is without merit, because the Complainant needed a copy of the registration certificate (and not just an answer over the phone) to prove its trade mark rights. Moreover, the Respondent did not deny the statement in the Complainant’s affidavit that the process of Indonesian law does not allow a certificate to be issued until a period of three months has passed after the announcement by the Director of Trademarks of its intention to register a trademark.

The Panel finds that the Complainant has thus made a case that the trademark at issue was already registered when the first proceedings started, but that due to the process of Indonesian trademark law he could not yet show a copy of the registration certificate at that time. Therefore, under the specific circumstances of the present case, the Panel finds that the Complainant shall be allowed to re-file the Complaint with regard to the <balidiscovery.org> domain name.

C. Identical or Confusingly Similar

The Complainant has shown that it owns the Indonesian trademark registration 550327 for the trademark consisting of the words “Bali Discovery Tours” and logo of a female face. The textual element of this trademark is clearly identical to the domain name <balidiscoverytours.com> and is confusingly similar to <balidiscovery.org>. The Respondent’s assertion that that the Complainant has no “international rights” to such trademark is without merit: The requirement of paragraph 4(a)(i) of the Policy is met if a Complainant shows that it owns a trademark in any country. Moreover, the issue of whether the distinctiveness of a registered trademark is based on the words and/or on the graphic image needs not be addressed under paragraph 4(a)(i) of the Policy. Also Respondent’s allegation that Complainant lost protection by failing to use the “TM” or equivalent sign on its website is clearly without merit.

Therefore, the Panel finds that the Complainant has shown that both domain names at issue are confusingly similar to a trademark in which the Complainant has rights.

D. Rights or Legitimate Interests

The file shows that the parties have some history of conflict between them. Without being in the position to decide who is right and who is wrong, this Panel notes that there is ample evidence in the file that before any notice of the dispute the Respondent made no use or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. It rather appears that the Respondent used the domain name to tarnish the trademark and the services of the Complainant. The Respondent’s statements such as “Do not do Business with Bali Discovery Tours” and the expression of his intentions to “put Bali Discovery Tours out of business” and to have its owner “be jailed or deported” are on their face tarnishing the Complainant and its trademark. The Respondent’s assertion that he is acting in what he perceives to be the public’s best interest does not legitimate such statements within the scope of these proceedings, because this Panel is not and cannot be in a position to determine whether such statements are factually justifiable or not. Therefore, such use does not qualify as legitimate or fair use of the domain names under paragraph 4(c)(iii) of the Policy.

Therefore, the Panel finds that the Respondent has no legitimate rights or interests in the domain names.

E. Registered and Used in Bad Faith

The Panel finds that the e-mail sent by the Respondent to the Complainant on January 30, 2003 (Annex 13 to the Complaint) does not constitute an offer to sell the domain names in the sense of paragraph 4(b)(i) of the Policy because that request for payment was not directly linked to the transfer of the domain names but was in essence a request for damages arising out of another dispute between the parties.

However, as discussed above, the evidence on file shows that the Respondent registered and used the domain names for the purpose of disrupting the business of a competitor by posting statements which denigrate the Complainant and its services. The Complainant must not tolerate that the Respondent register and use domain names reflecting in essence the Complainant’s trademarks to post on the web denigrating statements about the Complainant.

It is also shown that the Respondent registered the domain name <balidiscoverytours.com> on December 19, 2003, when the Respondent was aware, because of the previous WIPO Case No. D2003-0949, of the existence of Complainant’s trademark application.

Therefore, the Panel finds that the domain names have been registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <balidiscovery.org> and <balidiscoverytours.com> be transferred to the Complainant.

Andrea Mondini
Presiding Panelist

Sir Ian Baker
Panelist

Anne Wallace
Panelist

Date: June 17, 2004