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-à-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.
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).
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.
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.
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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