WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Motorola, Inc. vs NewGate Internet, Inc.

Case No. D2000-0079

 

1. The Parties

The complainant is Motorola, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at Schaumberg, Illinois, United States of America. The respondent is NewGate Internet, Inc, a corporation organized under the laws of the State of California, United States of America, having its principal place of business at Sausalito, California, United States of America.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <talkabout.com >, which domain name is registered with Network Solutions, Inc.

 

3. Procedural History

On February 17, 2000, an ICANN Domain Name Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (WIPO), and the signed original with four copies was forwarded by express courier on the same date. On February 22, 2000, WIPO sent to the complainant an Acknowledgement of Receipt, electronically and by post.

On February 22, 2000, a Formal Requirements Compliance Checklist was completed by WIPO.

On February 22, 2000, a Request for Registrar Verification was sent to the Registrar, Network Solutions, Inc. requesting it to (1) confirm that the complaint was sent to the Resistrar by the complainant, (2) confirm that the domain name in issue is registered with the Registrar; (3) confirm that the respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar's Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact, (5) confirm that the Uniform Domain Name Dispute Resolution Policy (Policy) applies to the disputed domain name, and (6) indicate the current status of the disputed domain name.

On February 22, 2000, the Registrar confirmed that (1) it was in receipt of the Complaint, (2) it was the Registrar for the domain name in dispute, and (3) the respondent was the current registrant of the domain name. The Registrar also (4) provided the contact details for the respondent, (5) confirmed that the Policy applied to the disputed domain name, and (6) stated that the domain name was on HOLD status.

On February 22, 2000, WIPO sent to respondent the Notification of Complaint and Commencement of Action electronically and by courier.

On March 14, 2000, the respondent requested by fax an extension of 10 days.

On March 16, 2000, the complainant objected to the respondentís request.

On March 17, 2000, WIPO granted the request for the extension of the deadline for the filing of the response. The new deadline was 23 March 2000.

On March 22, 2000, the respondent sent to WIPO its response by e-mail and courier.

On March 24, 2000, WIPO sent to respondent an Acknowledgment of Receipt of Response by e-mail.

On April 5, 2000, the respondent requested permission to submit additional documentary evidence in the form of invoices from Connor Ryan and Company.

On April 5, 2000, WIPO informed the respondent that the request for permission to submit additional documentary evidence would be submitted to the Panel for decision.

On April 6, 2000, the complainant filed an objection to respondentís request for permission to submit additional evidence.

On April 7, 2000, WIPO confirmed receipt of complainantís objections and informed complainant that these objections would be forwarded to the Panel.

On April 7, 2000, WIPO informed the parties that a Panel had been named and transmitted the case file to the Panel, informing it that the decision should be forwarded to WIPO by April 20, 2000.

 

4. Factual Background

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

Trademark -TALKABOUT, with the United States Patent and Trademark Office, used by Motorolaís predecessor in title since 1981 and by Motorola itself since May 2, 1997. (Complaint, Annexes C and D.)

A predecessor of the respondent, Conner F. Ryan Company (CFR) registered the domain name <talkabout.com> on November 21, 1997 (Complaint, Annex H).

On March 13, 1998, Motorola wrote to CFR to request, among other things, a transfer of the domain name <talkabout.com> (Complaint, Annex I). On June 11, 1998, Motorola wrote to CFR to offer to acquire the domain name in exchange for reimbursement of registration fees and costs. This offer was rejected by CFR on June 18, 1998 (Complaint, Annexes L, J).

On August 11, 1998, CFR transferred the domain name to the respondent (Complaint, Annex A). Respondent had been informed by CFR of the issues raised by Motorola (Complaint, Annex J).

Neither the respondent nor CFR are licensees of complainant, nor are they otherwise authorized to use complainant's marks. (Complaint, Annexes I, L, P).

On August 27, 1998, respondent informed Motorola that it intended to use the domain name for an adult sex site (Complaint, Annex G).

On September 2, 1998, respondent informed Motorola that it expected payments in excess of the costs of registration in exchange for a transfer of the domain name and stated: "... we are simply not in a position to donate our domain name to you. We cannot afford to sacrifice our investments. ... if you offer us no other means of recouping our investment, we will be forced to use this URL ..." (Complaint, Annex M).

 

5. Parties' Contentions

A. Complainant

As a procedural matter, complainant requests the panel to deny respondentís request to submit additional documents after the expiration of the filing deadline.

As to the subject matter, complainant contends that respondent has registered as a domain name a mark which is identical to the trademark 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

As a procedural matter, respondent requests the right to submit, after the expiration of the filing deadline, copies of invoices proving that CFR sold a substantial amount of Motorolaís products through its web site.

As to the subject matter, respondent contends that CFR was authorized by one of Motorolaís distributors to resell Motorolaís TalkAbout products, that CFR and NewGate had a joint venture agreement to create a web site and to sell TalkAbout products through that web site, that no consumer confusion was created by the CFRís use of the domain name <talkabout.com> because the string TalkAbout is found in many web sites, and that the respondent did not act in bad faith.

 

6. Discussion and Findings

On the procedural issue of whether or not to accept after the expiration of the filing deadline the additional documents, the panel rules that it will not accept such documents, because they are irrelevant. It is not disputed that CFR sold Motorola products through its web site, but this fact has no bearing on the issue at hand, which is respondentís use of the disputed domain name.

The remainder of the discussion relates to the subject matter.

Paragraph 15(a) of the Rules instructs the panel as to the principles the panel is to use in determining the dispute: "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

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

1. 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,
2. that the respondent has no legitimate interests in respect of the domain name; and,
3. that the domain name has been registered and used in bad faith.

It is clear that the domain name <talkabout.com> is identical or confusingly similar to the trademark registered and used by complainant, TALKABOUT. Respondent disputes this similarity by arguing that there is no actual confusion because the string TalkAbout can be found in many sites on the Net. This may be true, but is irrelevant, since paragraph 4(a)(1) of the Policy requires only that the domain name be identical or confusingly similar to a mark, which is the case here, quite independently from whether or not any actual confusion or likelihood of confusion is present.

Respondent and its predecessor CFR have claimed that they were acting "with Motorolaís sanction and blessing", but they have presented no evidence to this effect. Nor have they presented any evidence that they had a trademark or common law use of the mark prior to Motorolaís adoption and use of the TALKABOUT trademark. Their actions were in violation of Motorolaís intellectual property rights and caused actual confusion among customers (Complaint, Annexes I, L, P, Q). Thus it cannot be said that the respondent or its predecessor CFR had or have a legitimate interest in respect of the domain name. Respondent argues that CFR had the right to resell Motorolaís products. This assertion is not disputed by Motorola, but is irrelevant, since the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.

We now turn to the key questions: was the domain name registered in bad faith and was it also used in bad faith?

Paragraph 4(b)(i) of the Policy provides that "the following circumstances ... shall be evidence of the registration and use of a domain name in bad faith: ... circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark ... for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name."

Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy.

The fact that the respondent acquired the domain name from CFR in full knowledge of the dispute with Motorola (Complaint, Annex J), that it informed Motorola that it intended to use the domain name for an adult sex site (Complaint, Annex G), and that it clearly indicated to Motorola that it did not intend to relinquish the domain name in exchange for reimbursement of costs (Complaint, Annex M), show that the respondent acquired the domain name primarily for the purpose of selling it to Motorola, which is bad faith use and registration according to the Policy. Respondent denies that it acquired the site in order to sell it to Motorola, but admits that it subsequently demanded compensation when Motorola requested transfer of the domain name (Response, p. 10, VI(d)). But respondent knew when it acquired, for consideration, the domain name from CFR that Motorola was requesting its transfer (Complaint, Annex J). This fact, together with the respondentís subsequent conduct, lead the panel to infer that respondent already at that time had the intention of obtaining payments from Motorola in exchange for the transfer of the domain name.

It does not matter whether or not CFR acted in bad faith, because the present action is directed against the respondent, not CFR. In any case, respondent knew of the issues raised by Motorola in its correspondence with CFR, so the respondent must bear the consequences of its decision to accept the disputed domain name under those circumstances; that is, it must accept the consequences of Motorolaís announced intention to take steps to obtain the transfer of the domain name.

Nor can the respondent claim as a defense that its original acquisition of the disputed domain name from an individual under eighteen years of age was not in bad faith. This may or may not be the case, but this panel need not consider that matter, since the determining factor that this panel must consider is the subsequent acquisition by the respondent of the domain name from CFR on August 11, 1998. Indeed, the language of paragraph 4(b)(i) of the Policy, is clear: "the following circumstances ... shall be evidence of the registration and use of a domain name in bad faith: ... circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name ..." (emphasis added). That is, the mere fact that the respondent subsequently acquired the domain name for the purpose of selling it to Motorola for a sum in excess of costs incurred suffices to establish the bad faith registration and use referred to in paragraph 4(a) of the Policy.

Furthermore, the respondent has not presented evidence sufficient to convince the panel that it has a legitimate interest in the domain name, for example by providing evidence in favor of the conditions mentioned in paragraph 4(c) of the Policy:

1. use or preparations to use the domain name in connection with bona fide offering of goods and services prior to the dispute arising;
2. being commonly known by the domain name; or
3. noncommercial or fair use of the domain name.

This panel need not consider whether or not CFRís use of the disputed domain name was "bona fide", because it suffices to consider the respondentís subsequent use. The respondent stated that it wished to use the domain name for an adult sex site (Complaint, Annex G). While (as the respondent correctly points out) many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a "bona fide" offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be "bona fide".

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the trademark 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 respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <talkabout.com> be transferred to the complainant.

 


 

Richard Hill
Presiding Panelist

Clark W. Lackert
Panelist

Dated: April 14, 2000


Dissent by Panelist

Panelist Paul Michael DeCicco, respectfully dissents from the panelís majority decision in the above captioned proceeding.

1. Abridged Factual Background

Complainant Motorola holds U.S. Trademark Registration 1,210,368 for "telephones" and U.S. Trademark Registration 2,214,198 for "radio communications equipment, namely, two-ray [SIC] radios, batteries, and related accessories for the foregoing goods, namely, headsets, microphones, speakers, carrying cases, and belt clips" for the word mark TALKABOUT. The TALKABOUT mark has been used in commerce by Motorola since May 2, 1997. Complaint pg. 5.

Complainant does not assert that its TALKABOUT mark is famous or that it is distinctive. Complainant has not set out in its complaint or through the documents annexed thereto, any theory or legal basis for extending its trademark rights in TALKABOUT beyond those goods for which it maintains registrations.

Respondent Netgame, Inc. acquired the at-issue domain name, talkabout.com, via a transfer from prior registrant the Connor F. Ryan Company (CFR). Since on or after August 11, 1998, Respondent has been the sole registrant of talkabout.com. Subsequent to the registration date, Respondent did not use the domain name to reference any Internet object (web site or other IP addressed device). On or about August 27, 1998, Respondent indicated by letter to Complainant herein referenced as Annex G, that it intended to use the domain for an "adult web site."

In Respondentís letter of September 2, 1998, to Complainant, Respondent appears to reject an offer by Complainant to settle their dispute by Respondentís agreement to transfer the domain name to Complainant. Annex M. The August 28, 1998, letter from Complainant to Respondent referred to in Respondentís September 2, 1998, letter does not appear in the record. The September 2nd letter goes on to suggest that the dispute might be settled by a new offer from Complainant.

Complainant alleges that the domain name talkabout.com is identical to its trademark TALKABOUT.

Complainant alleges that Respondent has no rights or legitimate interests in the talkabout.com domain name because "Respondent does not own a trademark registration covering the mark, and had no common law use of the mark prior to Motorola's adoption and use of the TALKABOUT trademark." Complaint pg. 6.

Complainant considers that Respondentís announcement to use the domain name for an "adult sex site" constitutes bad faith under the Policy and further that Respondent acquired the at-issue domain name with the intent that it be transferred to Complainant for consideration in excess of its "out of pocket" costs. Complainant argues that Respondent offered the domain name "for sale" and that its offering of the domain name for sale constitutes a "bad faith" use under the holding in Panavision Intíl, L.P. v. Toeppen, 141 F.3.d 1316 (9th Cir. 1998). Complaint pg. 8.

Complainant further alleges that the domain name had previously been used in a manner likely to cause confusion. The allegation relates to activities occurring prior to Respondentís holding registration through an association with CFR. As additional evidence of "bad faith" Complainant points to statements made on Respondentís web site, which Complainant reads to convey that "Motorola was a NewGate client with respect to its TALKABOUT products" when in fact it was not.

 

2. Scope

Much of the data presented to the panel and information in the panel's majority decision, concerns a dispute between the at-issue domain nameís prior registrant --CFR and Complainant. The dispute centered on CFRís use of a talkabout.com web site which advertised and sold products manufactured by the Complainant. CFR is not a party to this proceeding. Moreover, CFR's voluntarily removal of its web site prior to the Respondent acquiring registration moots all issues concerning the current propriety or impropriety of that web site. Likewise, inferences concerning whether or not CFR's talkabout web site did, or did not infringe on the rights of Complainant, whether or not Complainant acquiesced to or objected to the use of the site, whether CFR and/or Complainant were enriched via the web site, as well as other issues concerning that former web site are, irrelevant to the issue for decision before this panel. The UDRPís focus is prospective.

The UDRPís singularly remedy --transferring an at-issue domain name away from a registrant respondent, is designed to inhibit current and future harm to the mark holder caused by an unauthorized use of the domain name. The remedy should thus not be invoked to penalize past misuses of the domain name by previous registrants which have subsequently been cured prior to the Respondentís registration.

 

3. Analysis

The Policy at section 4(a), sets out the three prong test for determining whether or not a Respondentís registration may be forfeited. First, the domain name must be identical or confusing similar with Complainantís trademark. Second, the Respondent must have no right or legitimate interest in the domain name. Third, Respondent must have registered and used the domain name in bad faith. The Complainant must prove that all three prongs are satisfied, if relief is to be granted. Policy 4(a) et seq.

Complainant has failed to meet its burden of proof. Although the second level domain talkabout is symbolically identical with Complainantís TALKABOUT trademark, Complainant has not proven that the Respondent lacks "rights or legitimate interest in respect of the domain name" as mandated by paragraph 4(a)2 of the Policy. Furthermore, the Complainant fails to prove that the Respondent registered and is using the domain name in "bad faith." Since the Complainant does not prove the presence of each of the paragraph 4(a) requirements, the domain name registration should not be disturbed.

A. Identical or Confusingly Similar

There is no dispute that the second level domain name talkabout.com maintains the same lexical form as the Complainant's registered mark. The "identity" and "confusion" examined pursuant to paragraph 4(a)(1) is at the symbolic level. That is, the second level domain name sounds like when spoken (ident sonum), appears graphically identical when written, or is otherwise confusingly similar to the Complainant's trademark [1]. The requirement is seen objectively, and is not read as "confusion" in the trademark sense i.e. confusion in the mind of a consumer as to the source of particular goods or services tagged by particular mark. The at-issue domain name is identical to Complainantís trademark TALKABOUT.

B. Legitimate Interest

Paragraph 4ís second prong mandates that to prevail Complainant must prove that the Respondent lacks "rights or legitimate interests in respect of the domain name." Policy ∂4(a)(2). Neither the Policy, nor the Rules, nor the WIPO Supplemental Rules indicate that such "rights or legitimate interests" must be trademark rights. Therefore, while the presence of a trademark registration for talkabout, or a common law trademark use of that mark by Respondent may indicate a "legitimate use" for the domain name, the absence of such factors is not dispositive of Respondentís having rights or legitimate interests in such domain name. Domain name rights can, and often do, legally (and peacefully) co-exist with trademark rights held by an entity other than the domain name registrant. Trademark rights in a domain name are not a prerequisite for domain name registration; and there are numerous uses for domain names that are outside the reach of our trademark law.

Respondent has certain rights in the at-issue domain name pursuant the Domain Name Registration Agreement with registrant NSI. The Registration Agreement, found at Annex B to the Complaint, is a bilateral executory contract that confers certain rights and obligations upon the registrant in exchange for the payment of a registration fee and the registrantís promise to abide by its terms and conditions. Importantly, in assenting to the Agreement the registrant warrants that to the best of its knowledge and belief neither the registration of the domain name nor the manner in which it intends to use such domain name will directly or indirectly infringe the legal rights of a third party. Emphasis added. Annex B, ß17(ii). The registrant also agrees, inter alia, to be bound by the dispute resolution policy in effect at the time of a dispute. Id. ß8. If Respondent has not breached its agreement with the Registrant, then it is undeniable that Respondent retains rights or interest in the domain name.

Complainantís concern that Respondent has announced its intentions to create an "adult sex site" linked to the talkabout.com domain name is certainly understandable. Nevertheless, referencing an "adult sex site" is a non-infringing use of the at-issue domain name. Indeed, the majority panel admits that "many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services. . ." Decision at pg. ____. It is without question that the type of goods that presumably will be offered at such a site are far a field from the goods in which the Respondent asserts it has trademark rights. Although, the Complainant might ultimately be harmed by Respondentís "legitimate" use of the domain name, the use is nevertheless permissible under the Registration Agreement.

Complainant asserts trademark rights for talkabout only as to certain particular goods. Theses "goods" do not include "adult sex (entertainment)." Complainantís TALKABOUT mark is suggestive; it is neither famous nor distinctive. By way of analogy, the mere existence of an entry in a telephone directory referencing an adult bookstore named talkabout, would not, in and of itself, give rise to Complainantís having a cause action sounding in trademark law or otherwise. Similarly, with regard to the instant dispute, the purposed creation of a web site referenced by a domain name called talkabout.com offering goods or services not covered by the Complainantís mark is a permissible use of the domain name.

The Majority, in finding Respondent has no rights or interest in the talkabout.com domain name, implies that the Complainantís trademark rights in the non-famous mark TALKABOUT for telephones and radio (etc.) reach other categories of goods and services. Consistent with the Majority decision, these penumbral rights magically attenuate the Respondentís rights and interests in its registered domain name. Such implications are baseless. Unlike patents, trademark rights are not rights in gross. Use of a non-famous trademark in one class of goods or services, does not preclude the use of an identical mark by a different entity for a different class of goods or services. Since Respondentís forecasted use of the talkabout.com domain name is not wrongful in itself, any harm to the Complainant which might result from such use, while potentially unfortunate for Complainant, is permissibly incidental.

Whether or not a registrant has a "legitimate interest" in its domain name does not turn solely on whether or not harm may result to the complainant from a legitimate use of such domain name. If it did then the UDRP will not square with our trademark law; the resolution of domain name disputes under the UDRP will rest on subjective inquiries into the Respondentís state of mind; and the resulting body of decisions will be a patchwork of ad-hoc determinations incapable of rendering guidance to either registrants or mark holders [2].

Finally, the Majorityís discussion of the "legitimate interest" factor mistakenly centers on evidence presented by the Respondent in support of its having a legitimate use for the domain name. Respondent failure to show a "legitimate interest" by way evidencing the "good faith" factors set out in paragraph 4(C) of the Policy, does not show that the Respondent lacks legitimate interest in the domain name. The UDRP makes clear that it is the Complainantís burden to prove "no rights or legitimate interest." Policy ∂4(a). Absent proof that the "respondent has no right or legitimate interests in respect of the domain name," Respondent need not show any evidence in mitigation. Policy ∂4(a)(2), 4(c). The majority is in error when it wrongly presumes Respondent has no legitimate interests in the domain name. Therefore, the majority conclusion with regard thereto is ill founded.

Since, Complainant fails to prove that Respondent lacks rights or legitimate interest in the domain name; and since Respondent has not been shown to have no legitimate interests in the domain name, the registration should not be transferred.

C. Bad Faith Use

While failure to prove any one of the three test criteria under paragraph 4(a) of the Policy is sufficient to support a decision in favor of the Respondent, the Complainant additionally has not proven that the domain name has been registered and used in bad faith as required by paragraph 4(a)3. No indicia of "bad faith" have been presented though admissible evidence and the domain name is not being "used."

The Policy provides at paragraph 4(b) et seq. several conditions evidencing "bad faith." Only the first is applicable. At paragraph 4(b)(i) the Policy provides that evidence of bad faith manifests by a showing of:

. . . circumstances indicating that [you] the respondent [have] has registered or [you] the respondent [have] has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

Complainant alleges that Respondent acquired the domain name primarily for the purpose of selling it to Complainant. It supports its proposition by pointing to dealings with concerning the transfer of the domain name. The record indicates that Complainant apparently offered Respondent its costs of registration in exchange for transfer of the domain name. Respondent rejected "donating" the domain name to Complainant and alluded to the fact that it was willing to transfer the domain name for some undetermined consideration. Annex M. Complainant and the Majority see this as an indicative of bad faith under paragraph 4(b)1. Additionally, the fact that Respondent announced that it was going to use the domain to host an "adult sex site" (discussed above) further indicates to Complainant (and the Majority) that Respondentís primary agenda was to transfer the domain to the Complainant for valuable consideration. Annex G.

Although Complainant has a strong business interest in maintaining a domain name registration its trademark TALKABOUT,it has not demonstrated an entitlement to do so. Complainantís unqualified belief that "it has the right to demand ownership of the domain name "talkabout.com" by virtue of its ownership of a Federal Trademark Registration for the TALKABOUT trademark" finds no basis in law. Annex L, pg. 2 [3]. Where a domain name registrant may rightfully use its domain name in a manner which does not violate the rights or interest of a demanding party, and there is no indication that registrant is using, or will use, the domain name in a manner which will violate the rights of the complaining party, (as here), the domain name registrantís refusal to turn over its domain name to a complaining party can not be indicative of "bad faith." The Respondent should not be prejudiced in this proceeding when acting within its rights. To hold otherwise requires an arbitrarily presumption that Complainantís ultimate claim of right to the at-issue domain name was valid at the time of its demand. Notably, whether or not Complainant has any a claim of right to at-issue domain name is an ultimate issue for decision. In this context, the Majorityís conclusion that refusing to accept Complainantís demand indicates "bad faith" is not well taken.

Under paragraph 10(d) of the Rule, the panel "shall determine the admissibility of evidence." Rules paragraph 10(d). Evidence derived from Complainantís demand, Respondentís rejection of that demand and Respondentís implied offer to further negotiate the transfer of the domain name should be excluded from the panelís consideration pursuant to Fed. Rule Evid. 408 [4]. This United States Federal Rule of Evidence rule excludes from admissibility offers of compromise as evidence of either liability or invalidity of a claim. The rule is based on two policy considerations. First, that there may be many reasons why one would offer to settle a claim, so such evidence is irrelevant. Second, public policy favors settlements. This second policy objective would be thwarted if parties feared their offers to end a dispute might later be used to show their liability. Both reasons are equally valid within the perspective of these proceedings.

It should go without saying that a trademark holder in a domain name dispute should not be able to evidence prior negotiations which it initiated pertaining to the transfer of the at-issue domain name, to prove that the domain name was acquired for the primary purpose of selling it to the Complainant and thus evidence bad faith [5]. Applying F.R.E. 408, demands or offers regarding the transfer of a domain name between the Claimant and the Respondent, such as those offered as evidenced by Complainant should be excluded from the panelís consideration when they appear well within the framework of settling the dispute between the parties. Since no other evidence has been presented showing that the primary purpose of Respondentís acquiring the domain name was to offer it for sale to the mark holder, and since the other paragraph 4(b) factors are lacking. Complainant has not proven that the domain name was registered or used in bad faith.

Finally, under paragraph 4(a)3 of the Policy Complainant must prove that the domain name was both "registered" in bad faith and being "used" in bad faith. But here, there has been no conclusive showing by Complainant that the domain name was "used" at all in "bad faith" or otherwise. Subsequent to its registration Respondent neither created nor maintained a web site linked to the domain name. Complainantís suggestion that the 9th Circuitís holding in Panavision Intíl, L.P. v. Toeppen, 141 F.3.d 1316 (9th Cir. 1998) supports "use" of the talkabout domain name is unpersuasive. In Panavision, Toeppen was in the business of registering trademarks as domain names and then attempting to sell the domain names back to the trademark holder. Id at 1325. There were multiple instances cited by the Court where Toeppen unabashedly offered panavision.com as well as other domain names "for sale" to mark holders. Id. In the instant dispute however, the record is devoid of any evidence showing a pattern of the Respondent registering trademarked domain names for sale back to the mark holder or others. The absence of a "use" of the domain name, foils the paragraph 4(a)(3) requirement that there must be a "bad faith use." Complainant fails in its proof.

 

4. Mitigating Factors

Since the Complainant failed to meet its burden of proof, there is no need to examine the mitigating factors found at Policy 4(c) et seq.

 

5. Conclusion

While the second level of the talkabout.com domain name is identical with Complainantís trademark, Complainant has not shown that the Respondent has no legitimate interest in the domain name, nor has Complainant shown that the Respondent registered and used the mark in bad faith. Based to the submissions of the parties and the policy and rules governing this proceeding, I strongly dissent; the domain should be not stripped from the Respondent.

 


 

Paul Michael DeCicco, Esq.
Dissenting Panelist

Dated: April 20, 2000


Footnotes

1. Examples of "symbolic confusion" with regard to talkabout.com are: talkiebout.com and talkab0ut.com.

2. On the other hand, where there is a demonstrated wrongful use or imminent wrongful use of an at-issue domain name, we need not speculate whether or not some injury might result to the mark holder. A finding that the registrant lacks a "legitimate interest" in an at-issue domain name then flows from the fact that, under such circumstances, the registrant Respondent would be in breach of Section 17(E) its Registration Agreement, and thus no longer entitled to the rights the Agreement previously conferred.

3. Although this letter is directed to CRF, it evidences Motorolaís basis for demanding transfer consistent with the a its complaint.

4. Rule 408. Compromise and Offers to Compromise Evidence of (1) furnishing or offering or promising to furnish, or (2) accepting or offering or promising to accept, a valuable consideration in compromising or attempting to compromise a claim which was disputed as to either validity or amount, is not admissible to prove liability for or invalidity of the claim or its amount. Evidence of conduct or statements made in compromise negotiations is likewise not admissible. This rule does not require the exclusion of any evidence otherwise discoverable merely because it is presented in the course of compromise negotiations. This rule also does not require exclusion when the evidence is offered for another purpose, such as proving bias or prejudice of a witness, negativing a contention of undue delay, or proving an effort to obstruct a criminal investigation or prosecution. see also Uniform Rules 52 and 53; California Evidence Code ß 1152, 1154; Kansas Code of Civil Procedure ßß 60-452, 60-453; New Jersey Evidence Rules 52 and 53.

5. The propriety of applying this significant evidentiary rule to a UDRP dispute is derived from Rule 15(a) which permits the panel to apply applicable principles of law in rendering a decision, and Rule 10(d) which provides that "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence."