WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edgar Rice Burroughs, Inc. v. Adtel Communications
Case No. D2000 - 0115
1. The Parties
The Complainant is Edgar Rice Burroughs, Inc., 18345 Ventura Boulevard, Tarzana, CA ("Complainant"). The Respondent is Adtel Communications, 2625 Park Avenue, Suite 2J, Bridgeport, CT 06604 ("Respondent").
Complainant identified Jay Schwartz as an additional Respondent, alleging that Mr. Schwartz is "respondent/domain name holderís principal and the administrative contact for the domain names." The Panel determines that Adtel Communications is the sole Respondent in this proceeding pursuant to Rule 1 of the Rules for Uniform Domain Name Dispute Resolution Policy.
2. The Domain Names and Registrar
The domain names at issue are <tarzanonline.com>, <tarzanonline.net>, and <tarzanonline.org> (the "Domain Names"). The domain names are registered with Register.com, Inc., 575 Eighth Avenue, 11th Floor, New York, NY, 10018.
3. Procedural History
The Complainant electronically submitted a Complaint to the World Intellectual Property Organization and Mediation Center (the "WIPO Center") on March 1, 2000. The WIPO Center received a hard copy of the Complaint on March 3, 2000. The WIPO Center sent an Acknowledgement of Receipt to the Complainant dated March 6, 2000. On March 7, 2000, a Request for Registrar Verification was transmitted to Register.com. Register.com confirmed by reply fax that the Domain Names were registered with Register.com, that the Respondent, Adtel Communications, was the current registrant of the Domain Names and that the "Uniform Dispute Resolution Policy" was applicable to the Domain Names. The reply also contained contact information for the Respondent. The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on March 1, 2000. 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 Name Dispute Resolution Policy (the "Supplemental Rules"), in effect as of December 1, 1999.
On March 9, 2000, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") to the Respondent, setting a deadline of March 28, 2000, by which the Respondent must file a Response to Complaint to avoid default. The Commencement Notification was transmitted to the Respondent by post/courier and by e-mail to the postal and e-mail addresses specified in Register.comís WHOIS confirmation, as well as to email@example.com, firstname.lastname@example.org, and email@example.com. On March 9, the WIPO Center received e-mail undeliverable messages for each of the emails sent to the postmaster addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonable available means calculated to achieve actual notice to Respondent."
On March 29, 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. On March 29, the WIPO Center received e-mail undeliverable messages for each of the emails sent to the postmaster addresses.
On April 4, 2000, the WIPO Center appointed Andrew P. Bridges of Wilson Sonsini Goodrich & Rosati as the Panelist in this matter.
On April 4, 2000, seven days after the deadline and on the same day that the Panel was appointed, the WIPO Center received two informal e-mail messages from Respondentís administrative contact criticizing Complainantís counsel and imposing conditions upon a transfer of the Domain Names. One communication expressed willingness to transfer the Domain Names at the Respondentís cost.
4. Factual Allegations from the Complaint
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by the Respondent.
Complainant owns rights in U.S. Federal Trademark Registration Nos. 799,908; 1,110,458; 1,882,406; 1,909,062; and 2,009,152 for TARZAN. Complainant also owns Reg. No. 1,883,774 for TARZANíS. See Complaint ∂ 20. Complainant has used and licensed the TARZAN mark in connection with a wide variety of goods and services for over fifty years. See Complaint ∂∂ 12-19.
Although Complainant also claims rights in Registration Nos. 1,117,368; 1,117,450; and 1,118,226, Complainant did not furnish copies of current certificates of renewal and the Panel does not take those registrations into account. The Panel will not undertake on its own to determine renewal status of registrations after the term shown on registrations furnished by parties. In cases of default, a Complainantís papers will be held to an exacting standard.
Respondent can demonstrate no rights or legitimate interests in the Domain Names. See Complaint ∂ 21. Using the Internet auction site eBay, Respondent offered <tarzanonline.com> for sale with an initial bid request of $500,000. See Complaint ∂ 23. On or about February 23, 2000, Respondentís principal, Jay Schwartz, contacted Georges Nahitchevansky, attorney for Complainant, by phone. In that telephone conversation, Mr. Schwartz offered to sell the Domain Names for $50,000 and made clear that he would not return the Domain Names without receiving a "semi-substantial" sum of money. Mr. Schwartz also said that he was "eager to relinquish" the Domain Names for $50,000, saying "the domain names do not belong to me, itís not right for me to keep them; they should go to [Complainant] their rightful owners." See Complaint ∂ 23.
The Domain Names are confusingly similar to Complainantís mark. See Complaint ∂ 10.
5. Partiesí Contentions
Complainant contends that Respondent has registered Domain Names that are confusingly similar to the trademarks registered and used by Complainant, that Respondent has no rights or legitimate interest in the domain names at issue, and that Respondent has registered the domain names in bad faith.
Respondent has not contested the allegations of the Complaint and is in default in this proceeding. The only communication received from Respondent were two informal e-mails sent to WIPO on April 4, 2000, seven days after the deadline and on the same day that the Panel was appointed.
6. Discussion and Findings
For the reasons stated below, the Domain Names should be transferred to Complainant.
A. Respondentís Failure to Answer
According to the Rules, Respondent is required to submit a response to the Complaint within twenty days of commencement of the administrative proceeding. See Rule 5. In the event that a Party does not respond in a timely fashion, absent exceptional circumstances, "the Panel shall proceed to a decision on the complaint." Rule 14(a). The Rules also state that "the Panel shall draw such inferences" from a Partyís failure to comply with the Rules "as it considers appropriate." Rule 14(b). Moreover, paragraph 15(a) of the Rules states: "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."
Respondentís only communication in response to the Complaint were the two e-mail messages received seven days after the deadline for responding. The Panel finds no "exceptional circumstances" to justify consideration of Respondentís tardy communications. Moreover, the substance of these communications does not meet the substantive requirements for Response set forth under Rule 5(b) and should also therefore not be considered.
Although the parties are free to communicate with each other on matters of settlement, the Panel declines the invitation to involve itself in settlement negotiations at the unilateral request of one Party.
Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint except those involving the disregarded registrations referred to above.
B. Applicable Rules and Principles of Law
Paragraph 4(a) of the Policy states 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.
Uncontested allegations of the Complaint meet, prima facie, the requirements set forth in paragraph 4(a). The Domain Names registered by Respondent are confusingly similar to the trademark registered and used by Complainant. It is uncontested that the Respondent has no rights or legitimate interests in respect of the Domain Names. See Complaint ∂ 21.
For purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets forth a non-exhaustive list of circumstances which shall be considered as evidence of "use in bad faith." The first on this list states:
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 or to a competitor of that complainant, for valuable consideration in excess of our documented out-of-pocket costs directly related to the domain name;
Policy ∂4(b)(i). The Complainant has alleged, and Respondent has not contested, that the domain name <tarzanonline.com> was offered for sale on the Internet for $500,000. Respondent offered to sell the Domain Names to Complainantís attorney for $50,000. On this basis, the Panel concludes that the Domain Names were registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
The Respondentís apparent offer, communicated to the WIPO Center during these proceedings, to transfer the Domain Names to Complainant in return for payment of Respondentís actual cost, does not alter the finding of bad faith based upon the Respondentís earlier attempts to sell the Domain Names at a much higher price.
The Panel FINDS that Respondent owns Domain Names that are confusingly similar to Complainantís registered trademarks; the Respondent has no rights or legitimate interests in the Domain Names; and the Respondent has registered the Domain Names in bad faith. These three factors entitle Complainant to an order transferring the Domain Names from Respondent to Complainant. See Policy ∂4(a).
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel now ORDERS that the registration of the Domain Names be transferred to Complainant.
Andrew P. Bridges
Dated: April 21, 2000