WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reading is Fundamental, Inc v. Mark Watkins

Case No. D2001-0832

 

1. The Parties

The Complainant is Reading is Fundamental, Inc (RIF) of 1825 Connecticut Avenue, NW, Suite 400, Washington, DC 20009-5726, United States of America.

The Respondent is Mark Watkins of 2 Harrington Road, Leystone London E11 4QW, United Kingdom.

 

2. The Domain Name and Registrar

The domain name in dispute is <rif.net>. The Registrar of the domain name as at the date of the complaint is Network Solutions, Inc.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on June 26, 2001, and in hard copy on June 29, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 The Center sent the Complainantís representative (the "Complainant") an Acknowledgement of Receipt of Complaint by email on June 28, 2001. The Center sent a request for verification to Network Solutions, Inc (NSI) on July 2, 2001 by email. NSI responded to the Centerís request on July 3, 2001, stating:

(a) NSI had received the complaint;

(b) NSI is the registrar for the domain name in dispute;

(c) the Respondent was the current registrant of the domain name in dispute;

(d) Respondentís contact details;

(e) that the NSI Service Agreement was in effect (this applies the Policy); and

(f) that the domain name in dispute was active.

3.4 The Center sent an email communication to the Complainant on July 4, 2001 and on July 16, 2001, the Complainant replied.

3.5 The Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent on July 17, 2001, (both at its Registrant address and at the address of its administrative and technical contacts) by courier, and by email to hostmaster@INTERMG.NET.

3.6 The Center received an email from the Complainant on July 17, 2001. The Respondentís administrative contact had furnished the Complainant with the Respondentís physical and email address. The Complainant then served the Respondent with the complaint by email on July 17, 2001.

3.7 The Center received the Response from the Respondentís representative by email on August 6, 2001 and in hard copy on August 9, 2001.

3.8 The Center sent an acknowledgement of Receipt of Response to the Respondentís representative and the Complainant on August 13, 2001.

3.9 There were email communications between the Respondentís representative and the Center from August 13, 2001 to August 14, 2001. There was some confusion over the number of panelists.

3.11 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision date to the Complainant and Respondent by email on August 28, 2001. A Transmission of Case File was received by the Administrative Panel by email on August 28, 2001 and in hard copy on or about August 31, 2000 in Sydney, Australia.

3.12 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 The following activities of the Complainant are asserted in the Complaint and remain unchallenged.

4.2 The Complainant is a non-profit childrenís and family literacy organization. Founded in 1966, RIF is the oldest and largest organization of its type, serving children and families in every state, the District of Columbia and offshore territories. The programs are supported by public and private partnerships with the U.S. Department of Education and more than 150 national foundations, corporations and local organizations. RIF operates through schools, libraries, community Centers, child-care Centers, hospitals, migrant workers camps, Head Start and Even Start programs, homeless shelters and detention Centers. In 2000, more than 310,000 community volunteers at 18,000 sites distributed more than 14 million books and literacy resources to more than 4 million children.

4.3 The RIFNet program, which is a multimedia distance learning/training initiative for RIF volunteers, funded through the U.S. Department of Education, was launched in March 2000.

4.4 The Complainantís trade marks

The Complainant is the owner of numerous USA trademarks, including ĎRIFí (Reg. No. 1.075,006) and "Reading is Fundamentalí (Reg. Nos 1,003,628 and 1,003,627). There is a pending application for "RIF NET A SERVICE OF READING IS FUNDAMENTAL" (Serial No. 76-168,073). It has substantial goodwill in the marks in the field of childrenís reading education and entertainment and related fields through longstanding, extensive use.

4.5 Activities of the Respondent

The Respondent is a professional computer and Internet consultant.

 

5. The Complainantís Contentions

5.1 Paragraph 4(a) of the Policy requires the Complainant to prove that:

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

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

5.2 Although not always with explicit reference, the Complainant makes the following submissions in respect of each of the elements specified in paragraph 4(a) of the Policy.

5.3 In reference to paragraph 4(a)(i) of the Policy,

"First, Respondentís "rif.net" domain name is both identical to and confusingly similar to Complainantís RIF and RIFNET marks."

5.4 In reference to paragraph 4(a)(ii) of the Policy, the Complainant asserts:

"Unquestionably, Respondent has no rights or legitimate interests in the "rif.net" domain name. Respondent has never sought or obtained any trademark registrations. Neither is the respondent a licensee."

5.5 In reference to paragraph 4(a)(iii) of the Policy, the Complainant alleges that the site solicited subscribers to a site depicting "young women engaged in lewd, incestuous and pornographic acts". The site allegedly became inactive on June 18, 2001.

5.6 Complainant then submits: "Respondentís use and registration of "rif.net" is thus highly likely to cause confusion as to the source or sponsorship of any site that Respondent posts, and to mislead the public, particularly children, into thinking that the Respondentís domain name is linked to the Complainantís well-known literacy programs offered under Complainantís RIF mark."

"By registering and using the "rif.net" domain name, Respondent 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 Reading is Fundamentalís mark as to the source, sponsorship, affiliation or endorsement of Respondentís web site location or products or services."

"Respondentís misappropriation of "rif.net" was no accident. The services offered by Reading is Fundamental are directed at children and families, and Respondent seeks to take advantage of that association with children to sell access to a purported child pornography site."

5.7 The South Dakota, USA address provided to the Whois database by the Respondent appears to have been incorrect. Although the Respondentís current address is given as London, he appears to have retained Canadian counsel.

 

6. Respondentís Contentions

6.1 In reference to paragraph 4(a)(i) of the policy, the Respondent concedes.

6.2 In reference to paragraph 4(a)(ii) of the policy, Respondent contends that the name, RIF is generic. A list is given of the many uses to which it has been put. Respondent contends that of 15 different applications made to the United States Patent and Trademark Office, only 2 of 15 of them were connected with the Complainant.

6.3 "Respondent registered the subject domain name on or about January 10, 1998."

6.4 "Respondent acquired the domain name because it was short, easy to remember and generic. Subsequent to registering the domain name, Respondent decided that RIF stood for "Reliable, Intelligent, Fast. Respondent is a professional computer and internet Consultant and require a unique email address and corresponding web page. Respondent has numerous clients throughout the United Kingdom who all know Respondent by "RIF"".

"Respondent, has to date (and prior to any notification of this dispute) used the domain name, RIF.NET for the provision of email services for customers, colleagues and friends.". The Panel has been furnished with a list of approximately 35 such people.

"If the subject domain is transferred, all of the aforementioned individuals will lose their email services. These persons have also become known in connection with their RIF.NET domain name."

6.5 "In addition, prior to April 2000, Respondent had an active web site in connection with RIF.NET. He has since closed his web hosting account and is in the process of redesigning his web presence."

6.6 In reference to paragraph 4(a)(iii) of the policy, the Respondent submits:

6.7 "The fact is that Respondent has never heard of the Complainant. The Fact is that RIF.NET was registered even before RIF.ORG was registered by Complainant. The Fact is that "RIF", being a three-letter domain name, is perhaps the most GENERIC of domain names possibleÖThe fact is that the Respondent HAS NEVER operated a child pornography site or a pornography site of any kind. Respondent is greatly offended by this allegation in particular".

6.8 "The fact is that the Respondent was living and working in Eastern Europe, he asked a friend in the United States for his contact information. Apparently there was an error in the mailing address that was recorded."

6.9 The Respondent has evidence that it never ran a pornographic site in the form of an email from Intermedia Enterprises Inc., the Respondentís web hosting company and Administrative Contact in the "Whois" database. It is addressed to the Complainantís attorney and dated July 2, 2001:

"..our administrator made a mistake when setting up a new adult hosting account for another customer. He has mistakenly assigned the same IP address for this new account as the one initially assigned to Mr. Watkinsí web accountÖOnce weíve discovered this error, we have immediately taken the domain in question offlineÖWe understand that we are fully responsible for this issue. We apologise for any and all inconvenience this may cause Complainant and its customers and associates. We can certify that Mr. Watkins is not (and never was) associated with or otherwise related to any adult website hosted by usÖ"

6.10 "..At no time did Respondent ever attempt to divert Complainantís web traffic or otherwise attempt to confuse its customers. At no time did Respondent ever receive a single misdirected email from any person."

6.11 Additionally, Reverse Domain Name Hijacking is alleged by the Respondent.

 

7. Discussion and Panel Findings

This section is structured by reference to the elements required by paragraph 4(a) of the Policy.

7.1 Domain Name is identical or confusingly similar to Complainantís Mark

The Complainant alleges that the domain name in dispute, <rif.net>, is identical to the mark ĎRIFí. The Respondent concedes this. The Panel is satisfied that the gTLD suffix is incapable of performing any distinguishing function. All the more is this so in this case when the Complainant appears to also have a common law trademark right in RIFNET.

7.2 The Respondent has no rights or legitimate interests in the domain name.

The Respondent has advanced evidence of a legitimate interest in the domain name. The Respondent uses it for a computer and Internet business and for the provision of email services for customers, colleagues and friends. The evidence advanced in support of this is not very cogent. However, it prevails over the Complainantís bald assertions that the Respondent has no such interest.

7.3 The Panelís own searches in <google.com> suggests that RIF is a very common "word" and that the Complainant is not alone in using it. This makes it hard for the Panel to draw the inferences that the Complainant seeks.

7.4 The Panel therefore finds that the Complainant has failed to prove that the Respondent has no legitimate right or interest in the domain name.

7.5 The domain name has been registered and is being used in bad faith:

The domain name was registered in January 1998, before Reading is Fundamental started its RIFNet program and even before <rif.com> was registered. Reading is Fundamental is likely to be far better known in America than elsewhere. There is no reason to doubt the Respondentís assertion that he had never heard of it although his original South Dakota address could suggest a lack of total innocence.

7.6 The Respondent has adduced evidence that it did not run a pornographic site. The pornographic site existed temporarily supposedly due to a mistake made by Intermedia Enterprises Inc. The "admission" is poorly worded and not at all compelling. In fact, read literally, it would have the effect of Intermediaís later pornography client having its site pointed to the Respondentís innocuous site.

7.7 Despite the Panelís misgivings, it must nevertheless find that the Complainant has not made out the factual basis of paragraph 4(a)(iii) of the Policy.

7.8 Respondent also alleges Reverse Domain Hijacking by the Complainant. The Panel is satisfied that the Complaint was brought in good faith and was not an attempt to harass the Respondent.

 

8. Decision

8.1 The Complainant having not proved all of the requirements of paragraph 4(a) of the Policy, the Complaint is dismissed and the domain name <rif.net> is to remain registered to the Respondent.

 


 

Philip N. Argy
Sole Panelist

Dated: September 10, 2001