WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Infinity Broadcasting Corp. v. News Commentary

Case No. D2000-0371

 

1. The Parties

The Complainant is Infinity Broadcasting Corporation, a Delaware corporation with its principal place of business in New York, New York. Its mailing address is c/o CBS-Litigation, 51 West 52nd Street, New York, New York, 10019.

The Respondent is News Commentary, P.O. Box 342021, Bethesda, Maryland, 20827.

 

2. The Domain Name and Registrar

The domain name at issue is <WJFK.com> (the Domain Name). The registrar with which the Domain Name is registered is Network Solutions, Inc., located in Herndon, Virginia, USA (the Registrar or NSI).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainantís Complaint in hardcopy on May 4, 2000. On May 5, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

On May 4, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On May 10, 2000, NSI transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Name is registered with NSI, that the Respondent is the current registrant of the Domain Name, and that the status of the Domain Name is "active." NSIís Response provided the following contact information for the Respondent:

Registrant:

News Commentary
c/o Internet Services
P.O. Box 342021
Bethesda, MD 20827

Administrative Contact, Billing Contact:

Reg, Dom (DR2151) domreg@aol.com
Email Services
P.O. Box 342021
Bethesda, MD 20827
(888) 894-6732

Technical Contact, Zone Contact:

Hostmaster, WebCom (WH513) hostmaster@webcom.com
Web Communications
2880 Soquel Ave., Suite 8
Santa Cruz, CA 95062
(831) 464-7760
(FAX) (831) 464-1631

The Center completed a Formalities Compliance Review on May 11, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On May 11, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of May 29, 2000, by which the Respondent could file a Response to the Complaint. The Respondent acknowledged receipt of this Notification, contesting the accuracy of the due date for the Response, but stating that it had prepared a response which it intended to file on May 31, 2000. The Administrative Panel has reviewed the file records of communications to Respondent and 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."

No Response having been received from Respondent by May 29, 2000, the Center then sent the Respondent on May 29, 2000, a Notification of Respondent Default, via the e-mail addresses listed above, advising the Respondent that the Administrative Panel would be appointed and advised of the default. A copy was transmitted to the Complainant. On May 29, 2000, the Center received via e-mail a message from the Respondent disputing the deadline, stating that the proper deadline should be May 31, 2000, and stating its intent to file a Response on May 31, 2000.

In lieu of filing a Response, the Respondent submitted to the Center via e-mail on May 31, 2000, a Motion to Dismiss the Complaint. Because neither the Rules nor the Policy allow for pleadings other than a Complaint and a Response, the Panel will consider the Motion to Dismiss as the Response in this case. In this pleading, the Respondent did not rebut the allegations of the Complaint or submit any evidence but merely challenged the sufficiency of the allegations in the Complaint.

On May 31, 2000, the parties also submitted various email communications to the Center concerning their settlement discussions, including a May 31, 2000, response by Complainant to a May 30, 2000, email from Respondent to Complainant acknowledging a prior offer by Respondent to transfer the Domain Name to Complainant for payment of Respondentís legal fees and "a voluntary contribution to charity."

On June 2, 2000, the Center received a hardcopy of Complainantís Opposition to Respondentís Motion to Dismiss the Complaint, That same day, the Respondent sent the Center an email asking the Center to "acknowledge its error in accepting this Complaint" and attaching a further pleading entitled "Response to Complainantís Opposition to Respondentís Motion to Dismiss." On June 2, 2000, the Respondent also sent an email to ICANN requesting "clarification"of the meaning of Rule 4(a)(iii), posing three questions re bad faith use, and making legal arguments in support of its Motion to Dismiss. On June 3, 2000, ICANN counsel responded in an email to the Respondent stating that: "the sufficiency of particular complaints under the Uniform Domain-Name Dispute Resolution Polidy and the Uniform Rules is a matter to be decided by the panel and provider, not for ICANN. Accordingly, you should direct your inquiries to the provider or, if a panel has been appointed, to the panel through the provider."

In view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent), the Center invited Dana Haviland to serve as the panelist. On June 9, 2000, after having received Ms. Havilandís Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dana Haviland was formally appointed as the sole panelist. The Projected Decision Date was June 23, 2000. The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

On June 9, 2000, Complainant sent the Panel an unsolicited e-mail requesting leave to file a "response to Respondentís response," purportedly under Rule 12, and setting forth that "response", including an argument that Respondentís earlier demand for payment for transfer of the Domain Name supported an inference of bad faith use of the Domain Name. On that same date, Respondent sent the Panel an unsolicited response, arguing the Complainantís "response to Respondentís response" was untimely but omitting any rebuttal on the issue of bad faith use or of any other issue. Finally, on June 12, 2000, respondent sent a final unsolicited communication to the Center and Panel via e-mail regarding the timeliness of the parties correspondence and pleadings, again without addressing the merits of the claim.

 

4. Factual Background

Complainant Infinity Broadcasting Corporation (Complainant or Infinity) is a Delaware corporation with its principal place of business in New York, New York (Complaint, p. 2). Infinity owns and operates WJFK-FM, a radio station in the Washington D.C. metropolitan area (Complaint, p. 3). Complainant has submitted a copy of its trademark registration of the service mark WJFK from the United States Patent and Trademark Office (Complaint, Annex C). During the past 12 years, Complainant has devoted significant resources in advertising and promoting its mark, creating both name recognition and goodwill (Complaint, p. 5).

On August 27, 1997, the Respondent registered the Domain Name <WJFK.com> with NSI (Complaint, p. 6). According to the Registrar, the domain name is "active". Upon learning of the Respondentís registration of the Domain Name, counsel for Complainant contacted Respondent via letter, indicating that the Respondentís registration of the Domain Name violated Complainantís rights to the WJFK mark (Complaint, p. 6). Respondent has offered to transfer the domain name to Complainant in exchange for payment of purported legal expenses and a donation to charity. See May 31, 2000, e-mail from Complainant enclosing May 30, 2000, e-mail from Respondent.

 

5. Partiesí Contentions

The Complainant contends that the Domain Name registered by the Respondent is identical to Complainantís incontestable, federally registered trademark WJFK. Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith. As evidence of bad faith, Complainant alleges that Respondent has offered to transfer the domain name in exchange for valuable consideration exceeding Respondentís out of pocket costs with respect to the domain name.

In the pleading it styles as a Motion to Dismiss, Respondent contends that it should not be required to file a response because Complainant has failed to allege bad faith use as required by 4(a)(iii) of the ICAAN Policy. The Panel finds the statement "Respondent has failed to develop a Web site at this domain name and failed to make any other good-faith use of the domain name" sufficient to satisfy the requirements of the Policy. Respondent makes no other contentions with respect to the other essential elements of Complainantís claim in its Motion to Dismiss/Response. In Respondentís subsequent Response to Complainantís Opposition to Motion to Dismiss Complaint, the Respondent contends that "long term vicious attacks" by the Complainant have prevented Respondentís "legitimate non-commercial or fair use of the mark." Respondent does not specify the nature of the "attacks" or the nature of the prevented "legitimate use" it might have otherwise made and does not submit any evidentiary support for these allegations.

 

6. Discussion and Findings

As a preliminary matter, it must be noted that both parties have failed to abide by the Rules and the Policy, which provide for only a Complaint and Response, and do not permit (i) motion practice, (ii) the unsolicited submission of further statements, (iii) the submission of interrogatories or legal arguments to ICANN or (iv) direct communication with the Panel, all procedural violations which have been undertaken by the parties in this case. The Panel does not condone either partyís contravention of the Rules and Policy. Respondent is correct in pointing out that pursuant to Rule 12 the Panel may request further information from the parties and that the parties should not offer it sua sponte. Complainant is correct that Respondentís Motion to Dismiss is not an allowable pleading under the Policy and the Rules. Both parties have engaged in a series of unsolicited direct communications with the Panel.

Nevertheless, it was the Panelís intention to request further information regarding the allegations in the Complaint in order for it to render its decision, which the partiesí subsequent correspondence has now provided. Moreover, neither party has shown any prejudice thereby, and, due to the mutual failure of the parties to abide by the Rules, both parties have now had ample opportunity to present their respective cases.

Rule 10(a) gives the Panel discretion to conduct the administrative proceedings in a manner it finds appropriate, and the Panel will consider all of the statements submitted by the parties in rendering its decision. The Panel finds that the allegations of the Complaint are sufficient under the Policy and the Rules to assert the essential elements of a claim for transfer of a domain name, including bad faith use of the domain name. See Complaint, p.6 ("Respondentís bad faith is further confirmed because Respondent has failed to develop a web site at this domain name and has failed to make any other good-faith use of the domain name"). Moreover, as set forth below, any alleged deficiency in pleading bad faith use has been cured by Complainantís subsequent submissions alleging and submitting evidence of Respondentís bad faith use of the domain name.

Under Rule 5(b), a Response must "(i) respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent...to retain registration and use of the disputed domain name..." and "(ix) annex any documentary or other evidence upon which the Respondent relies...". The Policy and Rule do not provide for the filing of motions, and Respondentís Motion to Dismiss clearly violates both the letter of Rule 5 and the spirit of the Rules and the Policy which are designed to provide a speedy determination of domain name disputes.

The numerous subsequent submissions by the parties are not permitted by Rule 12, which gives the Panel, and not the parties, the discretion to require the submission of further statements or documents. Further, under Rule 8, these communications should have been transmitted to the case administrator and not directly to the Panel.

The Panel wishes, moreover, to emphasize the importance of compliance with the Policy and the Rules and states that its acceptance of the procedural irregularities in this proceeding is for the sole purpose of rendering a timely decision without further delay, and not as an expression of approval of such procedural violations by the parties in this case or by other parties in future cases. The barnacles of litigation practice encrusting the record in this case have no place in an ICANN domain name proceeding.

With respect to the merits of this case, under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on its claim for transfer of the Domain Name. These elements are set forth in Paragraph 4(a) of the Policy:

- 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

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

 

(a) Identity or confusing similarity of domain name and trademark

The evidence shows that the Domain Name <WJFK.com> registered by the Respondent is identical or confusingly similar to Complainantís WJFK trademark, differing only in the addition of the .com suffix. "The top level domain designator ".com" simply functions to indicate that the domain name owner purports to be a business." Barneyís Inc. v. BNY Bulletin Board, ICANN Case No. D2000-0059.

(b) No legitimate interest in domain name

Complainant alleges that Respondent has no legitimate rights or interests in the domain name. By failing to submit a Response or subsequent submission responding specifically to the allegations of the Complaint or including any evidence showing any basis for a right to retain the Domain Name, Respondent has both violated Rule 5 and failed to invoke any evidence which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any right or legitimate interest in the Domain Name. Pursuant to Rule 14(b), the Panel therefore draws the inference that Respondent has no such right or legitimate interest in the Domain Name. See Rule 14(b) allowing the Panel to draw such inferences as it deems appropriate from a partyís failure to comply with any provision of the Rules.

(c) Bad faith registration and use of the domain name

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of 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 Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."

The Panel finds that the Complainant has presented evidence sufficient to establish bad faith pursuant to Paragraph 4(b)(i) of the Policy by showing Respondentís offer to transfer the domain name to the Complainant for valuable consideration in excess of out-of-pocket expenses. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, ICANN Case No. D99-0001 (offer to sell domain name for valuable consideration in excess of any out-of-pocket costs directly related to the domain name constitutes bad faith use of the name.). Respondent has failed to submit any evidence to refute Claimantís evidence with respect to bad faith registration and use of the domain name. Further, Respondentís continuing refusal to respond specifically to Complainantís allegations or to submit any evidence on any aspect of the Claim, despite Respondentís numerous submissions to the Panel, and Respondentís insistence on the interposition of various unauthorized procedural tactics rather than making a good faith response on the merits, also support an inference of bad faith use of the domain name.

 

7. Decision

For all of the foregoing reasons, it is the decision of the Panel that the Complainant has proved the essential elements of a claim under Paragraph 4(a) of the Policy, that the Domain Name is identical to a trademark in which the Complainant has rights, that the Respondent has no right or legitimate interest in the Domain Name, and that the Respondent has registered and used the Domain Name in bad faith. The Complainantís claim for transfer of the Domain Name <WJFK.com> is therefore granted.

 


 

Dana Haviland
Presiding Panelist

Dated: June 23, 2000