WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Richards Group, Inc. v. Click Here!, Inc.

Case No. D2000-0171

 

1. The Parties

Complainant is The Richards Group, Inc., a corporation organized and existing under the laws of the State of Texas, with its principal place of business at 8750 N. Central Expressway, Dallas, Texas, that operates Click Here, a division of Complainant with offices at 7007 Twin Hills, Suite 310, Dallas, Texas 75231. According to Network Solutions, Inc.ís WHOIS database, the Respondent is Click Here! which has a U.S. mail address 2212 Via Granada Place, NW, Albuquerque, New Mexico, an email addresses at (and/or eric@netscape.net), an administrative contact named Eric Jarvies, at (and/or ) who is located at Investments and Holdings Group, L.L.C., with an address of 1112 San Pedro, NE, #247, Albuquerque, New Mexico 87110 and has a telephone number (800) 822-3742 and a fax number (888) 234-1004. .

 

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

The domain name at issue is {clickhere.net} (the "Domain Name"), which Domain Name is registered with Network Solutions, Inc. (the "Registrar").

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 17, 2000. On March 20, 2000, a Request for Registrar Verification was transmitted to the Registrar. On March 20, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered with the Registrar that the Respondent was the current registrant of the name and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the Policy is applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on March 17, 2000 which shows that the Complaint is in material 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 "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").

No formal deficiencies having been recorded, on March 21, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of April 9, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address specified in the Registrarí Whois confirmation, as well as to {postmaster@ clickhere.net}; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by facsimile to the listed fax numbers and express courier to all available postal 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

On March 21, 2000, Respondent, by Eric Jarves, emailed a set of questions to the WIPO Center. In the questions the following statement appeared.

"Oh, one other thing. I have offered a number of months back to sell the domain name to these folks for the amount I had spent over a 2 year period to programmers. Ö I spent around $5kusd for sch services and would expect to be compensated if I was not to have the name any longer."

Other than that email the Respondent did not formally reply to the Complaint and on April 12, 2000, the WIPO Center notified Respondent that it had defaulted. Notwithstanding such default, the Panel has reviewed the email and given it appropriate weight in its findings.

Having received this Panelís Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel on April 14, 2000. The Projected Decision Date set forth in such Notification was April 27, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by that the Respondent.

Complainant is in the business of providing interactive communications product development. Complainant offers these goods and services to companies and individuals by a variety of means, including without limitation via a web site on the global computer network, which web site is located at clickhere.com. Complainant has been in this business since at least as early as 1995. Complainant is the owner of U.S. Trademark Registration No. 2,044,749 for the mark "CLICK HERE", registered on March 11, 1997 and first used at least as early as October 1, 1995, in International Class 42 for interactive communications product development for others. Complainant also obtained a registration for the domain name clickhere.com on March 30, 1995, and has had an active website at that domain name since on or about that time.

On or about August 1997, Complainant became aware that Respondent registered the Domain Name. Complainant and Respondent began oral negotiations regarding the Domain Name. On or about August 25, 1997, Complainant requested in writing that Respondent cease and desist from using the Domain Name on the basis that it was confusingly similar to Complainantís marks and domain name. When the parties were unable to resolve the dispute, an additional cease and desist letter was sent to the Respondent on or about September 17, 1997. On or about November 20, 1998, another correspondence was forwarded to the Respondent, requesting written assurances from the Respondent that Respondent would cease all uses of the Complainantís marks by close of business on December 5, 1998, where after Complainant would take "whatever action it deems necessary to protect its rights, which may include contacting Network Solutions regarding suspension of the domain name and/or filing suit against Click Here!." Respondent contacted Complainantís law firm upon receipt of such electronic communication and invited Complainant to come forward with an offer to purchase the Domain Name. Complainant rejected Respondentís settlement offer, and forwarded correspondence to Respondent dated December 3, 1998, again requesting written assurances that Respondent would cease and desist all uses of the Complainantís mark by close of business on December 5, 1998.

On or about December 7, 1998, Complainant instituted a domain name dispute proceeding pursuant to Section 5 of the then-current InterNIC Dispute Resolution Policy. On or about March 26, 1999, the Domain Name was placed on "hold" pursuant to Section 9 of the then-current InterNIC Domain Name Dispute Policy. On or about December 24, 1999, Complainantís attorneys received an electronic correspondence from Respondent offering to transfer the domain name to Complainant for $5,000 U.S., which was rejected by the Complainant. On or about February 4, 2000, correspondence from NSI was forwarded to Complainant and Respondent, notifying the parties to the domain name dispute proceeding that under the Uniform Domain Name Dispute Resolution Policy, domain name registrations would no longer remain, or be placed, on "Hold" status. NSI indicated that it would terminate the dispute involving the subject domain name registration, and reactivate the name on March 17, 2000, unless NSI received evidence of either (i) a copy of a complaint filed after January 1, 2000 against the Respondent under the terms and conditions of the new Policy, or (ii) a copy of a file-stamped complaint filed in a court of competent jurisdiction involving the subject domain name registration and specifically naming the Respondent as a party. These proceedings then apparently ensued.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and are using the Domain Name in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

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."

The Panel finds that the Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to trademarks marks in which the Complainant has prior rights. The Domain Name is identical to Complainantís mark. While the exact date of registration of the Domain Name does not appear in the record, the evidence does suggest that the registration of the Domain Name is subsequent to the date for the United States registration of Complainantís trademark. Since Respondent has not refuted it, the Panel has no alternative but to hold that such is the case.

The Domain Name also violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark; (ii)Complainant has prior rights in that trademark which precede Respondentís registration of the Domain Name; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name Clickhere. Indeed, in this latter respect it is to be noted that the Respondent has made no use of the Domain Name for over two years and that no Web Site exists for it.

Finally, the Domain Name violates Paragraph 4(a)(iii) of the Policy. To violate Paragraph 4(a)(iii) of the Policy that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D1999-0001 (January 14, 2000). Paragraph 4(b) of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy. It provides:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Arguably either subparagraph (i) and/or subparagraph (ii) is applicable. With respect to (i), there is no question that an offer to sell the Domain Name to the Complainant was made for $5000, a price which the Panel finds is substantially in excess of the documented out-of-pocket costs directly related to the Domain Name, no such costs being alleged by Respondent. The only question is whether circumstances exist that indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant. Respondent claims that he registered the Domain Name for his own use for a company to provide a singles dating service. The Panel notes, however, that he registered the Domain Name after Complainant registered its domain name, that the only difference between the two is the top level domain name and that Respondent has made no use of the Domain Name and there does not appear to be any connection between the Respondent (or any of his businesses) and the Domain Name. Under these circumstances, the Panel feels that on balance the circumstances support the conclusion that subparagraph (i) is applicable.

The evidence also supports a conclusion that subparagraph (ii) may also have been violated. Again it is to be noted that Respondent registered the Domain Name after Complainant registered its domain name and that the only difference between the two is the top level domain name. Respondent also has admitted registering over 250 domain names. It is not unreasonable to draw an inference from such registration activity that Respondent has engaged in pattern of such conduct.

With respect to both subparagraph (i) and subparagraph (ii), the Panel notes that Respondent has failed to in any way provide an explanation of his conduct or a response to any of the charges in the Complaint.

Accordingly, the Panel finds that the Domain Name violates paragraph 4(a)(iii) of the Policy.

 

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 and service marks in which the Complainant has rights, that the Respondent have 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 4(i) of the Policy, the Panel requires that the registration of the Domain Name {clickhere.net} be transferred to the Complainant.

 


 

Thomas D. Halket
Presiding Panelist

Dated: April 25, 2000