WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teledesic LLC v. McDougal Design
Case No. D2000-0620
1. The Parties
1.1 The Complainant is Teledesic LLC, an entity having its principal place of business at Broadband Center, 1445 - 120th Avenue N.E., Bellevue, Washington, United States of America.
1.2 The Respondent is McDougal Design, an entity having an address at 243 Oak Street NW, Cleveland, Tennessee, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "internet-in-the-sky.org", which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 16, 2000, and the signed original together with four copies was received on June 19, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 27, 2000.
3.2 On June 21, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue 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 registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On June 25, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). 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 Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on June 27, 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 July 16, 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 addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, emails contained in the file from Respondent to the WIPO Center indicated that Respondent received actual notice.
3.6 On July 17, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On August 24, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 On September 8, 1998, Complainant registered with the United States Patent Office ("USPTO") the service mark INTERNET-IN-THE-SKY in connection with telecommunication services.
4.2 Complainant has used the INTERNET-IN THE-SKY mark in connection with "fiber-like" telecommunications services since at least September 30, 1996.
4.3 Complainant has expended substantial sums in marketing, advertising, and policing in connection with its INTERNET-IN-THE-SKY mark. The service mark is recognized by the appropriate consumers throughout North America and Europe as identifying Complainant's telecommunications services.
4.4 On February 1, 2000, Respondent registered the domain name "internet-in-the-sky.org".
4.5 Respondent has utilized the domain name to develop a web site, which features Complainant's service mark along with the email address, email@example.com .
4.6 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. When Respondent did not respond to the request, Complainant telephoned Respondent. Respondent indicated an intent to continue using the domain name at issue unless Complainant agreed to purchase the domain name from Respondent.
5. Parties’ Contentions
5.1 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.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, 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 shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 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) the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue "internet-in-the-sky.org" is identical to the service mark in which the Complainant has rights.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy. Complainant's allegations concerning an offer to sell the domain name by Respondent fail to include an allegation that Respondent offered to sell the name at issue for an amount in excess of the amount of out of pocket costs incurred in association with the registration and use of the domain name. See Policy, ¶ 4(b)(i).
6.7 However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.8 In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
6.9 Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
6.10 In this case, the Panel finds that where (1) the mark is one that is fanciful and uses three hyphens between the four words, and the domain name at issue is identical to the mark, including the three hyphens; (2) Respondent failed to respond to a letter from Complainant; and (3) Respondent failed to Respond to the Complaint at issue or to deny any of its allegations; and, (4) Respondent's business operates under a completely different name, that Respondent's inaction constitutes bad faith registration and use of the domain name at issue.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, 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 "internet-in-the-sky.org" be transferred to the Complainant.
M. Scott Donahey
Dated: September 1,2000