WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ZD, Inc. v. readydomains.com

Case No. D2000-0871

 

1. The Parties

The Complainant is ZD, Inc., with place of business in New York, New York, United States of America (USA).

The Respondent is readydomains.com, with address in Bridgewater, Massachusetts, USA.

 

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

The disputed domain name is "z-d.net".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on July 25, 2000, and by courier mail received by WIPO on July 28, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On August 2, 2000, WIPO notified Complainant of a technical deficiency in its complaint, and on August 4, 2000, WIPO received via e-mail an amended complaint (with hardcopy received on August 7, 2000). On August 2, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrarís Response received by WIPO on August 9, 2000). On August 16, 2000, WIPO completed its formal filing compliance requirements checklist.

b) On August 8, 2000, Respondent transmitted an e-mail message to WIPO requesting information concerning the administrative procedure. On August 9, WIPO advised Respondent by e-mail that an official notification of the complaint, including information concerning the procedure for filing a response, would be transmitted shortly.

c) On August 16, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

d) On September 22, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and courier mail. On September 22, 2000, in response to the notification of default, Respondent transmitted an e-mail to WIPO indicating his lack of awareness that he "needed to make" a response. On September 25, 2000, WIPO transmitted a reply to Respondent referring to the instructions provided in the notification of complaint, including specifically those portions that describe the appropriate procedure for filing a response, and indicating that a panel has discretion to consider a late-filed response. No further communications were received from Respondent.

e) On September 25, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On September 25, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

f) On September 26, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by October 10, 2000. On September 26, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the word service mark "ZDNET" on the Principal Register at the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,333,430, dated March 21, 2000 (Complaint, Exhibit C). The application for this registration was filed on February 9, 1995. The registration covers "computer services, namely, providing databases in the fields of computers, computing, technology and general information in the fields of entertainment, news and computer games." (Id.) The "ZDNET" mark has been used in commerce in connection with an Internet website since at least 1998, based on evidence of awards received by Complainant for its "ZDNET" website based on activities in 1998 (id., Exhibit D). Complainantís "ZDNET" website, identified by the Internet address "www.zdnet.com", is very heavily visited by users of the Internet (in each of February, April and September of 1999 ranking among the twenty most heavily visited websites by Media Metrix (id., Exhibits E-G).

Complainant has registered and uses the domain name "zdnet.com" (id., para. 12.A.ii). According to a Network Solutionsí WHOIS database query printout, this domain name was registered on April 27, 1995. Complainant is the named registrant (Panelís Network Solutionsí WHOIS database search of October 9, 2000).

According to the registrarís verification response to WIPO, dated August 9, 2000, "readydomains.com" is the listed registrant of the domain name "Z-D.NET". The Administrative Contact is "Thomson, Erik". As part of the Administrative Contact information provided by Respondent, on the line following the name "Thomson, Erik", is the statement "THIS DOMAIN IS FOR SALE" (id.). A Network Solutionsí WHOIS database search indicates that the record of registration was created on November 10, 1999, and that the record was last updated on November 10, 1999 (Complaint, Exhibit A).

On December 12, 1999, Respondent sent an e-mail message with the following text to "ZDNet Forum", with request for a response to "readydomains@earthlink.net":

"Hi my name is Erik Thomson for readydomains.com and we currently own the domain z-d.net and are selling the name. If you are interested please let me know. If you are not I apoligize [sic] for the email.

Thak [sic] you for your time.

Erik Thomson" (Complaint, Exhibit H)

On June 16, 2000, Complainant sent a cease and desist and transfer demand to Respondent via express mail and e-mail (letter from Barbara Solomon to Erik Thomson of June 16, 2000, Complaint, Exhibit J). In response to this demand, Respondent sent an e-mail message of June 16, 2000, stating:

"Z-D.net can be used for thousands and thousands of different company names not just your clients. I have no intent of using the domain in any copyright infringement acts. I simply registered the domain as I have with many other with the intent to develope [sic] a site and profit from it or possibly sell the site, as I am in the computer industry. I like short names as well as many others. I sent your client an email for purchase of the name because if I can sell a name before I develope [sic] a site you can see how this would save me lots of time and effort. I did not get any responses so therefore I am keeping the name to develope [sic].

If you do not believe that I develope [sic] sites you can check out www.barebonespcs.com, barebonespcs.net, barepcs.com, barebonespc.com, barebonespc.net, customcomputer.org and/or customcomputersolution.com and you will see that I own these domains and I have put sites on them as I plan to do with all my sites as domains with sites I know are worth more than domains without sites.

If your client feels that derogatory information is going to be put at this site in regards to their company they can rest assure [sic] that this will not happen. The sites I plan to develope [sic] are going to be for product and services.

Ö

Sincerely,

Erik Thomson" (Complaint, Exhibit I)

WIPO printed out the web page appearing at "www.z-d.net" as of August 16, 2000 (WIPO Case File, item 7). It states: WELCOME to the future site Ö zippity-doda.n [limit of page]Ö. This site will be a future ISP dedicated to the Internet for KIDS!!!!" (id.)

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant states in its own words:

12. "This Complaint is based on the following facts:

A. "Complainant's Rights in ZDNET

i. "Complainant is a well-known provider of a wide array of information and services concerning technology, computers and the Internet. Among its divisions is ZDNet, which has been using the trade name ZDNET continuously since March, 1995.

ii. "ZDNet's business consists primarily of the creation and distribution of a series of interconnected websites that offers a broad range of original content and services on the subject of computer technology and the Internet. Complainant has been using the mark ZDNET for such website services throughout the U.S. since March, 1995. A printout of the home page from the ZDNET website is attached as [an] Exhibit [hereto].

iii. The websites under the ZDNET mark have been hugely successful. In 1999, the sites generated revenue in excess of $100 million, putting ZDNET among the top 10 websites based on advertising and sales

iv. "Complainant has expended large sums of money and considerable effort in advertising, promoting and publicizing the content and services offered under the ZDNET mark. This includes a $25 million advertising campaign to bring the ZDNET brand to an even wider audience through online and off-line promotion, including broadcast and cable tv on both a national and regional level, national print ads, and online bulletin boards.

v. "On February 9, 1995 Complainant filed an intent-to-use application in the United States Patent and Trademark Office to register ZDNET. That registration, No. 2,333,430, issued on March 21, 2000. The registration covers Ďcomputer services, namely providing databases in the fields of computers, computing, technology and general information in the fields of entertainment, news and computer games.í A printout of that registration is attached as [an] Exhibit [hereto], and can be verified online at www.uspto.gov. Pursuant to the U.S. Lanham Act, the issuance of the registration gives Complainant a constructive use date of February 9, 1995. See 15 U.S.C. ß1057(c).

vi. "ZD Netís reputation has been firmly established with the ZDNET website, www.zdnet.com, being the leading source for computing and Internet content and commerce.

vii. "The ZDNET website has received numerous awards including a 1998 Tenagra Award for Internet marketing excellence and a 1998 Computer Press Award for the best overall online site. See [an] Exhibit [hereto].

viii. "MC (Marketing Computers) Magazineís annual media issue recognized the ZDNET site as having more top ranking web editors and columnists than any other business and trade content providers in 1999.

ix. "Internet users have flocked to ZDNET. For example, as of February, 1999, the ZDNET AnchorDesk email alert, a daily news source for technology intelligence, had over 2 million subscribers.

x. "In addition, the ZDNET website is consistently in the top 50 Digital Media/Web properties and website rankings for combined at home and at work usage as measured by Media Metrix, Inc. the leader in Internet digital media measurement. For the month of February, 1999, the ZDNET website was ranked 17th with more than 8 million users. See Exhibit [hereto]. For the month of April, 1999, ZDNET ranked 16th with 7.9 million users. See Exhibit [hereto]. And for the month of September, 1999, ZDNET ranked 15th with 8.6 million users. See Exhibit [hereto]. As of May 2000, the Media Metrix Report found that there were 10.1 million unique visitors to the ZDNET website.

xi. "Given the above, it is evident that Complainant has strong rights in the mark ZDNET which is entitled to protection from Respondent's registration of the Domain Name z-d.net.

B. "Respondent's Activities

i. "On November 10, 1999, Respondent registered the Domain Name z-d.net. The registration was obtained after Complainant had applied to register the mark ZDNET and after Complainant had been using the mark ZDNET nationwide and internationally. Respondent cannot claim or show any rights to z-d.net that are superior to Complainant's rights in the ZDNET mark.

ii. "It is evident that at the time Respondent registered the Domain Name z-d.net it did so with knowledge of Complainant's rights and also did so for purposes of selling the Domain Name. First, as can be seen in the WHOIS printout attached as [an] Exhibit [hereto] under the listing for the administrative, technical, zone and billing contacts, it states with respect to the z-d.net domain name that Ďthis domain is for sale.í Such a statement speaks volumes as to Respondent's intentions in registering the name. Second, Respondent recognized the fact that Complainant had rights in the mark ZDNET as shown by an email message dated December 12, 1999, from Erik Thomson, on behalf of the Respondent, to Complainant. In that communication, the Respondent advised that it owns the Domain Name z-d.net, that it is selling the name and inquired of Complainant if it was interested in the purchase of the name. See Exhibit [hereto].

iii. "Turning to the first element of the Policy, as shown above it is evident that Complainant has rights in the mark ZDNET. These rights are based both on Complainant's use of ZDNET since 1995, long prior to any date on which Respondent can rely, as well as on the existence of an intent-to-use application which was filed almost 5 years before Respondent obtained a domain name registration. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, WIPO D2000-0040; Quixtar Investments, Inc. v. Hoffman, WIPO D2000-0253.

iv. "The Domain Name z-d.net and Complainant's mark ZDNET are identical or sufficiently similar to satisfy the first element of the Policy. ĎThe majority of prior Panel decisions, which are consistent with United States court decisions dealing with trademarks, have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.í Chernow Communications, Inc. v. Kimball, WIPO D2000-0119 (C-COM and CCOM.COM deemed identical). See also cases cited therein. Accord, Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO D2000-0008 (holding mark SIXNET confusingly similar to the domain name SIX.NET). Given the evidence contained herein, it is precisely because Complainant's ZDNET mark is so well-known that Respondent likely registered z-d.net in the first place. By using Complainant's very mark as its domain name, Respondent is attempting to derive value from the association that is created between the Domain Name and Complainant. Accordingly, Complainant has satisfied the first element of the Policy.

v. "As to the second element of the Policy, Respondent can show no legitimate interest in or rights to use the Domain Name. First, the registration was obtained only after Complainant had been extensively using the mark ZDNET for its website and to advertise and promote the same. Second, Respondent does not have any authorization to promote Complainant's goods or services and is not licensed by Complainant to use the mark ZDNET. Third, Respondent has made no legitimate fair use or commercial use of the Domain Name. Fourth, Respondent has not been known by the Domain Name z-d.net. Under these circumstances, Respondent cannot show legitimate rights or interest in its domain name. See, e.g., Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO D2000-0277.

vi. "Further evidence that Respondent has no legitimate rights or interest in the Domain Name can be found by Respondent's failure to develop a website. World Wrestling Federation Entertainment, Inc. v. Bosman, WIPO D99-0001; Mary-Lynne Mondich v. Shane Brown, WIPO D2000-00004. Respondent cannot cure this defect by stating that it has some amorphous plans in the future to use the Domain Name. Indeed, this has already been found to be insufficient to show legitimate use. See Tourism & Corporate Automation Ltd. v. TSI Ltd., AF-0096.

vii. "Additional evidence that Respondent has no legitimate rights or interest in the Domain Name comes from the fact that at the time it registered the Domain Name Respondent intended to sell it as evidenced by the fact that on its registration form Respondent stated that the Domain Name was for sale (see WHOIS printout attached as [an] Exhibit [hereto]. Respondent later approached Complainant with an offer to sell the name. This evidence by itself shows absolutely no legitimate rights or interest in a domain name. See e.g., Nabisco Brands Company v. The Patron Group, Inc., WIPO D2000-0032; Alaska Airlines, Inc. v. Alf Temme, WIPO D2000-0080.

viii. "In an attempt to justify its registration of the Domain Name z-d.net, Erik Thomson, acting on behalf of Respondent, advised counsel for Complainant that he registered z-d.net Ďto develope [sic] a site and profit from it or possibly sell the site, as I am in the computer industry.í See Exhibit [hereto]. What this letter conclusively demonstrates is that the Respondent has made no use of the Domain Name and has made no plans to use the Domain Name. See e.g., J.P. Morgan v. Resource Marketing, WIPO D2000-0035 (mere allegation by Respondent that it intends to use domain name is insufficient to show a legitimate interest in a domain name). Rather, the Respondent has simply parked the Domain Name with an intent to ultimately profit from it commercially by selling it to a third party. Moreover, given that Respondent is admittedly in the computer industry, there is little doubt that he was aware of the fame of the ZDNET mark prior to registering it as a domain name.

ix. "Respondent also justifies his conduct by stating that z-d.net Ďcan be used for thousands and thousands of different company names . . ..í See Exhibit [hereto]. Yet, not surprisingly, Respondent points to not a single company that has rights in the mark ZDNET which are superior to Complainant's rights. These factors also demonstrate that Complainant has no legitimate rights in the Domain Name and that therefore the second element of the Policy has been satisfied.

x. "Complaint also has satisfied the third element of the Policy, namely that the registration and use of the Domain Name are in bad faith. It is telling to note that at the time of registration, Respondent advised that the name was for sale. Then, less than one month after registering the Domain Name, Respondent notified Complainant to ask if Complainant wanted to buy the Domain Name. Panel after panel has held that an offer to sell a domain name, even where that offer is embedded in the registration form, in and of itself constitutes bad faith use and registration sufficient to satisfy the third element of the Policy. See e.g., Microsoft Corporation v. Amit Mehrotra, WIPO D2000-0053; Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO D2000-0115; The Board of Regents of the University of Nebraska v. Bill Saedlo, WIPO D2000-0154.

xi. "Other evidence of Respondent's bad faith includes the fact that when Respondent first contacted Complainant in December, 1999, Respondent never suggested that it might use the Domain Name for its own purposes. This decision was made only after Complainant sent a demand letter. See correspondence attached as Exhibits [hereto]. Respondent's sudden decision to use the Domain Name only after receipt of a cease and desist letter suggests nothing less than bad faith.

xii. "Bad faith can also be found from the fact that by sending a letter to Complainant offering to sell the Domain Name, Respondent has acknowledged being on actual notice of Complainant's rights in the mark ZDNET. That Respondent registered the Domain Name z-d.net with actual knowledge of Complainant's prior rights is further evidence of bad faith. See Chernow Communications, Inc. v. Kimball, WIPO D2000-0019. Such bad faith is only exacerbated by the fact that, according to Respondent's own communications, Erik Thomson who controls the registration works in the very industry as Applicant. See Cortefiel, S.A. v. Quintas, WIPO D2000-0141.

xiii. "Yet, additional evidence of bad faith can be inferred from the use of the hyphen in the Domain Name z-d.net. Clearly, this was done in order to avoid taking a domain name wholly identical to Complainant's recognized mark but which nevertheless essentially copies Complainant's mark and allows Respondent to trade on the value and goodwill in that mark. See SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO D2000-0131; Chernow Communications Inc. v. Jonathan D. Kimball, WIPO D2000-0119.

xiv. "There is little doubt that Respondent chose the Domain Name in order to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant. It is a recognized violation of the U.S. federal law of trademark infringement and unfair competition, 15 U.S.C. ß1052 et. seq., to misrepresent one's business or to cause confusion as to the relationship between oneself and another entity. Although Respondent has no current website, any activation of the domain name in the future will create confusion as Internet users would be attracted to Respondent's website as a result of its use of a name identical to Complainant's registered mark. Because the ultimate effect of any use of the Domain Name will be to cause confusion, the use and registration of the Domain Name must be considered to be in bad faith. See Embratel v. McCarthy, WIPO D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO D2000-0283.[footnote omitted]

xv. "Finally, where, as here, the Respondent has not used the Domain Name, is not known by the Domain Name, and has taken as a domain name a well-known mark such as ZDNET with constructive, if not actual knowledge of Complainant's mark, one can conclude that the name was taken because it is well-known and that the continued holding of the Domain Name is in bad faith. See Embratel v. McCarthy, WIPO D2000-0164; see also Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO D2000-0277. Clearly by taking a domain name that copies Complainantís well-known ZDNET mark the Panel can, and should, infer that Respondent took the name in a deliberate attempt to attract users to its planned website, or to attract people interested in purchasing the name, all for commercial gain and all caused by confusion with Complainantís mark. Infospace.com, Inc. v. Tenenbaum Ofer, WIPO D2000-0075.

xvi. "Based on all of the above, it is evident that Complainant has met the requirements of the Policy by demonstrating not only its own valid rights in the ZDNET mark but also by showing that the Domain Name z-d.net is confusingly similar to the ZDNET mark, that Respondent has no legitimate rights or interest in the z-d.net Domain Name and that the Domain Name was registered and used in bad faith. Accordingly, Complainant is entitled to the remedy requested below." (Complaint, para. 12)

Complainant requests that the Panel ask the registrar to transfer the domain name

"z-d.net" from Respondent to it (id., para. 13).

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of confirmations of the sending of e-mail and courier mail that Respondent was notified of the complaint and commencement of the proceedings. In addition, Respondent contacted WIPO regarding the proceedings following initial receipt of the complaint (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 15(a)).

Complainant is the holder of a valid service mark registration for the term "ZDNET" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the "ZDNET" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law 2. The Panel determines that Complainant has rights in the service mark "ZDNET". Based on evidence of usage of the mark in commerce at least as early as 1998 (see Factual Background, supra), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the "ZDNET" service mark arose prior to Respondentís registration, on November 10, 1999, of the disputed domain name "z-d.net". As evidenced by trade publication data (id.), Complainantís "ZDNET" service mark is well known among users of the Internet to identify Complainant and its website as providing computer and information services.

Respondent has registered the domain name "z-d.net". This name is identical to Complainantís service mark "ZDNET", except that (1) the domain name places a "period" or "dot" between "ZD" and NET", (2) the domain name employs lower case letters, while the trademark is generally used with capital letters "ZDN" (i.e., "ZDNet") (see, e.g., Complaint, Exhibits B and D), and (3) the domain name adds a hyphen between "z" and "d".

The Panel finds that "z-d.net" and "ZDNET" are sufficiently similar in overall visual impression that they are confusingly similar within the meaning of paragraph 4(a)(i) of the Policy. The addition of a hyphen between "z" and "d" and the addition of a "period" or "dot" between "z-d" and "net" does not materially alter the overall visual impression created by Complainantís "ZDNET" service mark. Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "z-d.net" is without legal significance from the standpoint of comparing "z-d.net" to "ZDNET"3.

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c)).

Although Respondent has not provided a response in this proceeding, Respondent in prior correspondence with Complainant suggested that it had plans to develop a web site relating to "product and services". Beyond this assertion, Respondent offered no indication as to the potential nature of its proposed web site. Respondentís general assertion is not sufficient to constitute "demonstrable preparations" to use the domain name in connection with a bona fide offering of goods or services (before notice of the dispute) 4. Respondent did not suggest that it had been commonly known by the domain name, or that it was making legitimate noncommercial or fair use of the name.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

At the time it registered the disputed domain name with the registrar, Respondent included in its Administrative Contact information the statement "THIS DOMAIN IS FOR SALE". Any person conducting a WHOIS database search seeking to identify the registrant of the disputed domain name would encounter this information. Approximately one month following registration of the disputed domain name, Respondent made an unsolicited offer to sell it to Complainant for a price in excess of its expenses connected with registration 5.

The Panel determines that Respondent registered the disputed domain name with the primary purpose of offering it for sale to Complainant or its competitor for valuable consideration in excess of Respondentís out-of-pocket expenses directly related to the domain name. Respondent is determined to have registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "z-d.net" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, readydomains.com, has engaged in abusive registration of the domain name "z-d.net" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "z-d.net" be transferred to the Complainant, ZD, Inc.

 


Frederick M. Abbott
Sole Panelist

Dated: October 10, 2000


Footnotes:

1 See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton (9th Cir. 1999), 189 F.3d 868.

3 See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

4 Respondentís posting of a web page regarding future plans relating to "kids" followed notice of this dispute from Complainant, and is not germane to establishing rights under paragraph 4(c)(i).

5 Respondent advised Complainant by e-mail that, as part of its business strategy, it regarded selling domain names as a time and effort saving alternative to developing profitable websites.