WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EZ Pittsburgh, Inc. v. James M. Van Johns

Case No. D2001-0612

 

1. The Parties

The complainant is EZ Pittsburgh, Inc. ("Complainant"), a Virginia corporation with its principal place of business at 51 West 52nd Street, New York, New York 10019, USA.

The respondent is James M. Van Johns, the registrant of the domain name <b94.com> with a listed mailing address of 900 Highland Avenue, Johnstown, Pennsylvania 15902-2848, USA. The Respondent is also listed as the administrative and billing contact for the registration of this domain name.

 

2. The Domain Name and Registrar

The domain name in issue is <b94.com>.

The registrar of the domain name in issue is Bulkregister.com, Inc., located at East Baltimore Street, Suite 1500, Baltimore, Maryland, USA.

 

3. Procedural History

On April 27, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <b94.com> and paid the required filing fee for appointing a single member Panel. In the Complaint, the Complainant named "Damian Macafee" as the respondent for this proceeding with a mailing address of 69 Charlotte Street, London, W1P 1LA, United Kingdom. The Complainant also listed Network Solutions, Inc. ("NSI"), as the registrar for the domain name in issue. On April 30, 2001, the Center sent an "Acknowledgement of Receipt of Complaint" to the Complainant by e-mail.

On May 1, 2001, a "Request for Verification" concerning the domain name in issue was sent to NSI. On May 2, 2001, the Center received an e-mail message from NSI stating that it was not the registrar for the domain name in issue. On May 3, 2001, the Center sent the Complainant a "Request for Amendment to Registrar" requesting the Complainant to amend its Complaint to identify the correct registrar of the domain name in issue.

On May 3, 2001, a "Request for Registrar Verification" concerning the domain name in issue was sent to Bulkregister.com. On May 8, 2001, Bulkregister.com sent a Verification Response to the Center stating, in pertinent part, that: (i) it had received a copy of the Complaint; (ii) it is the registrar of the domain name <b94.com>; (iii) "James M. Van Johns" is the current registrant of the domain name registration with a listed mailing address of 900 Highland Avenue, Johnstown, PA 15902-2848, USA; and (iv) the domain name in issue is currently under Registrar LOCK pending the outcome of this proceeding.

On May 10, 2001, the Complainant filed an Amended Complaint by e-mail and on May 13, 2001, in hardcopy with the Center naming "Mr. James M. van Johns" as the respondent in this proceeding ("Respondent") and listing Bulkregister.com as the registrar of the domain name in issue ("Registrar").

On May 16, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

On May 17, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding," the Complaint and the Amended Complaint to the Respondent at the e-mail addresses provided for that purpose and to the mailing address listed for the Respondent in the domain name registration. Copies of the Notification, Complaint and Amended Complaint were also sent to ICANN, the Registrar and the Complainant. The Center received an error message and a notice of non-delivery when the Notification, Complaint and Amended Complaint were sent by e-mail and courier, respectively, to the Respondent.

On June 7, 2001, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no responses from the Respondent were received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant. The Center received an error message when the Notification of Respondent Default was sent to the Respondent's e-mail address.

On June 21, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the Panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint or the Amended Complaint. The Panelist shall therefore draw inferences from the Respondent's default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Amended Complaint, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complaint is based on the mark B94 registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on U.S. service mark Registration No. 2,404,380 (first use and first use in commerce 4/1/81; issued November 14, 2000) for radio broadcasting services. A copy of the registration certificate was attached as Annex C to the Complaint and the Amended Complaint. The Complaint is also based on the Complainantís common law rights in the mark B94.

A search result from a query of the Registrarís Whois database shows that the domain name <b94.com> was registered by the Respondent and that the registration for the domain name in issue was created on September 17, 1999. A Web site is currently accessible at the domain name in issue. Printouts of the Whois information for the domain name and the Web site were attached as Annexes A and J, respectively, to the Amended Complaint.

 

5. Partiesí Contentions

Complainant

The Complainant asserts that since at least April 1, 1981, it has used the service mark B94 in interstate commerce in connection with its radio broadcasting services, specifically, the broadcasting services of WBZZ, a radio station owned and operated by the Complainant that broadcasts to the Pittsburgh, Pennsylvania market. The Complainant asserts that it first used the service mark B94 in commerce in the United States on April 1, 1981, and that the mark was registered with the U.S. Patent and Trademark Office on November 14, 2000. (a copy of the registration certificate attached as Annex C) The Complainant also asserts that its registration certificate is prima facie evidence of the validity of its mark and its exclusive right to use the mark in commerce. The Complainant, further asserts that even if this were not the case, it enjoys common law rights in the mark since it uses the mark as a service mark to promote its radio broadcasting services. The Complainant also asserts that it maintains a presence on the Internet through a web site located at <http://www.b94fm.com> that contains numerous references to the Complainantís mark B94. (a printout of the Complainantís home page attached as Annex F)

The Complainant asserts that it is famous for its radio broadcasting and entertainment services and undertakes broadcasting and entertainment services under the mark B94, including use of the mark as its business name. (a copy of stationery attached as Annex D) The Complainant asserts that the B94 mark possesses a great deal of goodwill and popularity as a result of the Complainantís substantial expenditures for advertising and promotion of its radio broadcasting services under this mark. (Advertising and Promotional Material attached as Annex E). As a result of the Complainantís long use of the mark B94, its advertising and promotional efforts in connection with the mark and the wide recognition achieved for the mark, the Complainant asserts that the public associates the B94 mark with services originating with, emanating from, sponsored by or otherwise associated with or approved by the Complainant. The Complainant also asserts that the mark has become an extremely valuable symbol of the Complainant, with substantial commercial magnetism.

The Complainant asserts that the Respondent is an individual that, upon information and belief, resides in Johnstown, Pennsylvania and that, on or about September 17, 1999, registered the domain name in issue. The Complainant asserts that the Respondent was employed by the Complainant as a board operator from March 24, 1998, through March 18, 2000.

The Complainant asserts that the domain name in issue is identical to the Complainantís B94 mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name because the Respondent is not, either as an individual, business or other organization, known by the name B94 or B94.com nor has the Respondent obtained the Complainantís consent or authorization to use the domain name in issue.

The Complainant asserts that the Respondent registered the domain name in bad faith. The Complainant asserts that after discovering the Respondentís registration of the domain name, it promptly notified the Respondent of his infringing use and requested a transfer of the domain name. The Complainant asserts that in exchange for the domain name the Respondent demanded advertising banner inventory on its <b94fm.com> web site, the value of which the Complainant asserts was several hundreds, if not thousands, of dollars, and thus exceeds the Respondentís documented out-of-pocket costs directly related to the domain name in issue. The Complainant further asserts that it agreed to provide the Respondent with advertising banner inventory on its site to settle the matter and recover the domain name in an expeditious manner. However, before the arrangement was completed, the Complainant asserts that the Respondent left the Complainantís employment and indicated that he desired to develop a new "executable" plan with respect to the Complainantís recovery of the domain name. (a copy of the Complainantí e-mail message attached as Annex G)

The Complainant asserts that the Respondent subsequently contacted the Complainant and offered to transfer the domain name in issue to the Complainant in exchange for a piece of radio equipment known as a "board" or in the alternative, the payment of $250.00. In response, the Complainant asserts that it advised the Respondent that it did not have an available board but that it was willing to settle the matter for $250. (a copy of the Complainantís e-mail message attached as Annex H) The Respondent did not respond to this or other e-mail messages from the Complainant. (a copy of the Complainantís e-mail message attached as Annex I)

The Complainant asserts that the Respondentís offer to sell the domain name in issue to the Complainant whether in exchange for advertising banner inventory on the Complainantís site, a piece of radio equipment or $250 all provide evidence of the Respondentís bad faith. The Complainant asserts that the Respondentís bad faith is further confirmed because the Respondent has failed to develop a web site at the domain name in issue despite the fact of having registered the domain name for over one and one half years. Instead, the Complainant asserts that the Respondent is using the domain name in issue to direct traffic to the web site located at <http://www.atomictime.net>, and that on information and belief, is also registered to the Respondent since the phone number for the administrative contact for the domain name <atomictime.net> is the same as that for the domain name <thorofare.com> which is registered to the Respondent. (copies of the Whois information for these domain names attached as Annex J)

Respondent

No response was received from the Respondent with respect to this proceeding.

 

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN-approved dispute provider that:

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

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

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainantís favor after the complainant has proven that the above-listed elements are present.

Element (i) - Domain Name Identical or Confusingly Similar to the Mark

Based upon the uncontested evidence submitted, the Panelist finds that the Complainant is the owner of the registered service mark B94. When comparing the second-level domain <b94> of the domain name in issue with the Complainantís mark B94, the Panelist finds that the domain name in issue is identical to the Complainantís mark. The Panelist accordingly concludes that Element (i) has been satisfied.

Element (ii) - Rights or Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holderís rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holderís 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is 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.

No evidence has been presented that any time, while employed or otherwise, that the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the mark B94 in any manner or that the Respondent has ever been commonly known by the domain name in issue.

Furthermore, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. A review of the evidence submitted also shows that the registration and use of the domain name in issue by the Respondent does not predate the Complainantís much earlier first use and first use in commerce of its mark B94. Indeed, based upon the uncontested assertions and evidence submitted by the Complainant that the Respondent was an employee of the Complainant at the time that the domain name in issue was registered, it is apparent that the Respondent was clearly aware and had knowledge of the Complainant's rights in the mark.

Finally, no evidence has been presented that the Respondent was making any type of legitimate noncommercial or fair use of the domain name. Rather, the printouts of the web site at <http://www.b94.com> provided by the Complainant and the Panelistís own review of the site confirm that the domain name resolves to a web site that consists of multiple advertising/promotional banners and click-through banner advertisements. Such does not support a finding that the Respondent was or has been making a legitimate noncommercial or fair use of the domain name but rather suggests use of the domain name in issue for some type of commercial gain. Accordingly, based upon the findings and evidence and the lack of evidence to show otherwise, the Panelist concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.

Element (iii) - Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online 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 the holderís web site or location.

Based upon the uncontested evidence, the Panelist finds that the Respondent registered the domain name in issue while employed by the Complainant and thus was clearly aware and had knowledge of the Complainantís rights in its mark B94 at the time he registered the domain name.

In further support of its assertions of bad faith by the Respondent, the Complainant has also submitted uncontested evidence of the Respondentís demands at various times to sell the domain name in issue to the Complainant in exchange for advertising banner inventory on the Complainantís web site or for a piece of radio equipment or for $250. The Panelist also notes and the uncontested evidence submitted by the Complainant shows that other than for offering the domain name for sale to the Complainant and providing multiple advertising/promotional banners and click-through banner advertisements on the web site accessible at the domain name in issue, the Respondent has not made any other uses of this domain name. Nor has any evidence been presented of any type of actual or contemplated legitimate noncommercial good faith or fair use of the domain name in issue since the registration thereof by the Respondent.

Accordingly, when considering such findings and uncontested evidence in their entirety, the Panelist finds that the Respondent has no rights or legitimate interests in the domain name in issue and has registered the domain name primarily for the purpose of selling or transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The Panelist therefore concludes that the Respondent has registered and is using the domain name in issue in bad faith and that Element (iii) has been satisfied.

 

8. Decision

The Panelist accordingly requires that the registration of the domain name in issue be transferred to the Complainant.

 


 

Marylee Jenkins
Panelist

Dated: July 27, 2001