WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert Ellenbogen v. Mike Pearson

Case No. D00-0001

 

The Parties

The complainant is Robert Ellenbogen, an individual resident of Latham, New York, United States of America. The respondent is Mike Pearson, an individual resident of the United States of America, with addresses listed in Pennsylvania and Florida.

 

The Domain Name and Registrar

The domain name at issue is <musicweb.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.

 

Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 3, 2000, and the signed original together with four copies were forwarded by express courier and received by WIPO on January 5, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the complainant, dated January 4, 2000 (email) and January 5, 2000 (email and courier).

On January 4, 2000 a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain name <musicweb.com> is registered with NSI; (2) confirm that the person identified as the respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) provide a copy of the registration agreement that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the agreement; (5) provide a copy of the domain name dispute policy (if different from ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy")) that was in effect at the time of the original registration of the domain name, as well as any subsequent amendments to the policy.

On January 6, 2000, Network Solutions, Inc. confirmed by reply e-mail that the domain name <musicweb.com> is registered with NSI and that the respondent, Mike Pearson, is the current registrant of that domain name. The registrar also forwarded the requested Who is details, as well as copies of the registration agreement and applicable dispute resolution policy.

The policy in effect at the time of the original registration of the domain name at issue provided that:

NETWORK SOLUTIONS, INC.

DOMAIN NAME REGISTRATION AGREEMENT

A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSIís domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSIís Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.

* * * * *

C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be found by NSIís current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."

D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrantís maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrantís continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.

E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.

* * * * *

Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.

Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant.

No formal deficiencies having been recorded, on January 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, NSI and ICANN), setting a deadline of January 29, 2000, by which the respondent could make a Response to the Complaint. The Commencement Notification was transmitted to the respondent by e-mail to the e-mail address indicated in the Complaint and specified in NSIís Whois confirmation. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the addresses listed in the Complaint and confirmed by NSI. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In addition, confirmation of actual notice is provided by the evidence in the record of the respondentís email communications to the WIPO Center in response to the Commencement Notification.

On February 1, 2000, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default. No Response or other document has been received by the WIPO Center or the Administrative Panel from the respondent since the Notification of Default.

On February 3, 2000, in view of the complainantís designation of a single panelist the WIPO Center invited Roderick Thompson to serve as a panelist in Case No. D00-0001, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received on February 4, 2000, Roderick Thompsonís Statement of Acceptance and Declaration of Impartiality and Independence, on February 7, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Roderick Thompson was formally appointed as the Sole Panelist. The Projected Decision Date was February 20, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.

Although respondent has not made a formal Response to the Complaint, WIPO has received two email communications from "Mike Pearson" at the email address provided by NSI, mpearson@post-gazette.com. The first email was made in reply to an email message from WIPO transmitting notification of the complaint. In that email, dated January 10, 2000, Mr. Pearson stated, "I have no relation to this domain whatsoever. The listing of me as the administrative contact is in error. Please take whatever steps are necessary to remove my name, Mike Pearson." In response, the WIPO Center advised Mr. Pearson of the requirement of the Rules that he submit a Response no later than January 29, 2000 and that any concerns he had with respect to the registration information on record with the domain name "musicweb.com" should be directed to NSI.

On January 11, 2000 Mr. Pearson responded with a second email, stating "I have been trying for over a year to get my name disassociated from this domain. I have not now nor have I ever had anything to do with the domain. Please take whatever action is necessary to remove my name, Mike Pearson." Complainant, who received copies of Mr. Pearsonís emails, at first requested of WIPO that the domain musicweb.com be transferred to him immediately. After reviewing the applicable procedures with the WIPO Center, however, complainant on January 31, 2000 sent an email requesting that the WIPO Center appoint a panelist as soon as possible to proceed with the administrative proceeding.

Aside from these two emails, quoted in their entirety above, there has been no other communication received from respondent. The Administrative Panel, therefore, finds that respondent received notice of the complaint and failed to submit a response as required by Rule 5. Respondent is, therefore, in default and, under Rule 14(a), the Administrative Panel shall "proceed to a decision on the complaint." Accordingly, the Administrative Panel shall proceed to a decision based on the allegations in the complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO, including the two emails received from the respondent.

 

Factual Background

The complainant has provided evidence of the registration of the following marks:

1. Service Mark Ė MUSICWEB, for computer online retail services in the field of recorded music and music information in Int. Class 42, registered for a term of 10 years from September 15, 1998.

Complaint, Exhibit B.

The Service Mark claims a first use of June 10, 1998. Id. Complainant uses the mark, MUSICWEB, for the sale of recorded music, discs, tapes and other electronic recording devices. Complaint 8.

The respondent is the current registrant of the domain name <musicweb.com>. E-mail dated January 6, 2000, from NSI to the WIPO Center Case Administrator. The Whois database shows that respondent is also the Administrative Contact, Technical Contact and Zone Contact for the domain name <musicweb.com>. Complaint, Exhibit A. The Whois record of the domain MUSICWEB was created on January 10, 1995 and last updated on January 5, 1997. Id. As noted, respondent has stated by email that "the listing of me as the Admin Contact is in error" and has twice asked to have his name removed from this domain name registration.

 

Partiesí Contentions

A. Complainant

Complainant contends that respondent has registered as a domain name a mark which is identical to the service mark registered and used by complainant, that respondent has no rights or legitimate interests in respect to the domain name at issue, and that respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint and is in default.

 

Discussion and Findings

A. Applicable Rules and Principles of Law.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in rendering its decision: "A Panel shall 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." Here, the complainant, the respondent, and the registrar are all domiciled in the United States. United Statesí courts have recent experience with similar disputes. The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panel, stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, the Panel may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden.

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) 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; and,

(ii) that the respondent has no legitimate interests in respect of the domain name; and,

(iii) the domain name has been registered and used in bad faith.

B. Application of Paragraph 4(a)(iii) to the Facts.

The domain name <musicweb.com> is identical to the service mark registered and used by complainant, MUSICWEB. It is uncontested that the respondent has no rights or legitimate interests in respect of the domain name. See Complaint 9.2. Indeed, respondentís email has expressly disavowed "any relationship to this domain whatsoever." Since the domain name was offered for sale on the Internet and respondent has acknowledged "trying for over a year to get my name disassociated from this domain," the Panel concludes that the name was registered or maintained in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The domain name, however, must not only be registered in bad faith, but it must also be used in bad faith. The requirement of both bad faith registration and bad faith use was discussed in the only published decision to date rendered under the applicable Policy and Rules, WorldWrestling Federation Entertainment, Inc. v. Michael Bossman (Case No. 99-0001). There, the panel relied on the legislative history behind the Policy to conclude that bad faith use, in addition to bad faith registration, was essential. Id. p. 7. "It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use." The panel in WorldWrestling cited the Second Staff Report regarding the Policy and its considerations of comments received on the then draft Policy:

4.5. Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:

a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith.

These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO." Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5,a. [http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm]

The issue thus to be determined is whether the respondent used the domain name in bad faith. Here, there is no allegation or evidence that the respondent established a Web site corresponding to the registered domain name. The Complaint, whose allegations are to be accepted as established because of respondentís default, states only that "Respondent, by using the domain name, has the potential to attempt" to attract business from complainant and that "Respondentís use of the domain name misleadingly diverts customers." Complaint 9.3d and f. But elsewhere the Complaint states that "Respondent is not using" the domain name "in connection with a bona fide offering of goods or services." Id. at 9.2e. The Complaint asserts on the one hand that there is a use of the domain name which, at least potentially, will harm complainantís business but elsewhere asserts that respondent is not using the domain name with respect to any bona fide offering of goods or services. Respondentís emails disavow any association with the domain name, and, by implication, any domain name use. The Panel concludes that there is insufficient documentation to support the assumption that respondent is using <musicweb.com> as a website or domain name address. But that does not end the "use" inquiry.

Here the Complaint alleges, in the context of supporting the allegation that the domain name is being used in bad faith, that the domain name is being used to harm complainant. This conclusion finds support in the Complaintís showing that the domain name <musicweb.com.> was listed on the "Great Domains.com" website as a domain name for sale. Complaint Exhibit C. This effort to sell the domain name is consistent with the statement in Respondentís email that he had "been trying for over a year to get my name disassociated from this domain." Although there is no allegation that Respondent registered or acquired the domain name primarily for the purpose of specifically selling it to complainant or a competitor of complainant that would satisfy paragraph 4b(i) of the Policy, the Panel concludes that the domain <musicweb.com> is being offered for sale to anyone interested, including complainant or a competitor. Indeed, complainantís receipt of the offer for sale is confirmed by the fact that a photocopy of the listing is appended to the Complaint.

The allegation of bad faith also finds support in the legislative history of paragraph 4b(i). During the Final comment period, ICANN Staff received and endorsed a comment suggesting that to be indicative of bad faith, a request for payment shall be in an amount above the registrantís out-of-pocket costs.

Consideration of "[w]hether, in seeking payment for transfer of the domain name, the domain name has limited its request for payment to its out-of-pocket costs" is implemented in the policy statement by revising the language of paragraph 4b(i) to focus it on situations where the domain name was ransomed for profit.

Second Staff Report, supra, at 4.4 (emphasis added). Here respondent did not limit its request for payment of out-of-pocket expenses. He sought payment for transfer of the domain name by soliciting offers of any amount through a domain name broker site. Complaint Exhibit C. The Complaint also alleges that listing the domain name on that site is "for the purpose of selling or transferring the domain name for valuable consideration in excess of out-of-pocket costs." Complaint 9.3c. This allegation coupled with the listing documentation support a finding bad faith use akin to the circumstances described in paragraph 4b(i) of the Policy.

This conclusion is consistent with a United States district court decision, finding that an intent by the domain name registrant to sell a domain name constitutes a "commercial use" under United States antidilution law (15 U.S.C. ß 1125(c)).

"Toeppenís intention to arbitrage the Ďintermatic.comí domain name constitutes a commercial use. . . . Toeppenís desire to resell the domain name is sufficient to meet the Ďcommercial useí requirement of the Lanham Act. Id., 1239. Emphasis Added.

Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).

Paragraph 4b of the Policy sets out without limitation three examples of circumstances that if found "shall be evidence of the registration and use of a domain name in bad faith." Subparagraph (i) lists circumstances that the respondent acquired the domain name "primarily for the purpose of selling" it to the complainant or a competitor. Here the evidence in the documentation submitted shows only one purpose -- selling for profit-- for respondentís acquisition or registration of <musicweb.com>. There is no indication of any other actual or intended use of the domain name. The panel therefore concludes that the circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles.

 

Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the service mark in which the complainant has rights, and that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondentís domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4i of the Policy, the Panel requires that the registration of the domain name <musicweb.com> be transferred to the complainant.

 


 

Roderick Thompson
Presiding Panelist

Dated: February 17, 2000