WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Argento v. Futureconsulting
Case No. D2001-1030
1. The Parties
The Complainant is John Argento of 121 Madison Avenue, Apt. 6F, New York, N.Y. 10016, USA.
The Respondent is Futureconsulting of 450-1 Hyundai Sosa-Gu Songnae-Dong, Bucheon, Kyunggi 422-040, Republic of Korea.
2. The Domain Name and Registrar
The contested domain name is <danceteria.com>.
The Registrar is Network Solutions, Inc. of 505 Huntmar Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
The electronic version of the Complaint was filed on August 15, 2001. The hardcopy of the Complaint was received on August 21, 2001.
On August 21, 2001, the Center transmitted via email to Network Solutions, Inc. a Request for Registrar Verification in connection with this case and on August 22, 2001, the Center received a verification response confirming that the domain names are registered with Network Solutions, Inc. and that the Registrant for the domain names is the Respondent.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On August 24, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this Administrative Proceeding and sent copies to the Complainant, the Registrar and ICANN.
The Respondent failed to file a Response. On September 14, 2001, the Center sent a Notification of Respondent Default to the Respondent and the Complainant.
On September 14, 2001, the Center received an email from the email address of the Administrative and Billing Contact for the contested domain name which stated "i want to korean language". On September 17, 2001, the Center responded that "the Rules for Uniform Domain Name Dispute Resolution Policy state that unless otherwise agreed by the Parties, the language for the administrative proceeding shall be the language of the Registration Agreement (para. 11(a)). The Registrar has confirmed that the language of the Registration Agreement is English. Therefore, the language of this administrative proceeding is English".
On September 28, 2001, the parties were notified that Mr. Swinson had been appointed as the Sole Panelist and that a decision was to be handed down by October 12, 2001 (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and the WIPO Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Administrative Panel was properly constituted.
4. Factual Background
J.A. Hampton Corp., a New York corporation was the registered owner of U.S. Service Mark Registration No, 1,528,986, DANCETERIA in class 42 (filing date May 31, 1988). The Complainant asserts that he was the sole shareholder of this corporation. The address of J.A. Hampton Corp. on the trademark certificate is the same address as the Complainant. The date of first use for U.S. Service Mark Registration No. 1,528,986 as stated in the trademark registration certificate is February 1982. This service mark registration was cancelled on September 11, 1995.
The Complainant is the registered owner of U.S. Service Mark Registration No. 2,055,072, for DANCETERIA, in class 42 (filing date May 13, 1996). The date of first use for U.S. Service Mark Registration No. 2,055,072 as stated in the trademark registration certificate is also February 1982.
In June 1998, a Michael Yelvington filed a U.S. trademark application for "DANCETERIA." Mr.Yelvington, or a corporation called Danceteria Music, Inc. (of which Mr.Yelvington is the President) apparently owned a music store in Florida, called "Danceteria Music". Mr.Yelvington also owned a domain name "that uses the name ĎDanceteria.í" It appears that a legal dispute resulted between Mr.Yelvington and the Complainant, and Mr.Yelvington filed trademark cancellation proceedings in relation to the Complainantís trademark registration. This dispute was settled in October 1998, and Mr.Yelvington signed a settlement agreement in which he agreed to change the name of the music store. In the settlement agreement, the Complainant released Mr.Yelvington from any claim resulting from his use of "Danceteria" on the Internet, and it appears that Mr.Yelvington agreed to stop using "Danceteria" in any form. However, the settlement agreement did not include a transfer of the domain name to the Complainant.
On May 7, 2001, the Complainant apparently paid $35 to Network Solutions to renew the disputed domain name registration, which appeared to be still in Mr.Yelvingtonís name. However, this was unsuccessful, because the Respondent became the Registrant of the contested domain name on May 6, 2001.
Sometime thereafter, the Complainant wrote to the Respondent asking the Respondent to transfer the disputed domain name to the Complainant. The Complainantís letter stated that the Complainant had had "a three-year legal battle with a cyber-squatter by the name of Yelvington who had appropriated my trademark and registered the Danceteria domain name as his own. Under the terms of the settlement Yelvington agreed to transfer the domain name to me. Before he could transfer the domain name, it slipped out of the Network Solutions database."
The Respondent replied in May 2001, by email offering to sell the disputed domain name to the Complainant for $1,200. After some correspondence in May 2001, the Respondent agreed to sell the domain name to the Complainant for $375. The Complainant wired an agreed $150 deposit. The Respondent did not carry out its end of the bargain, and in July 2001 emailed the Complainant stating that it had received a better offer of $3,100, but would be willing to accept $3,500 from the Complainant.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
The Complainant has used the service mark DANCETERIA in commerce since 1982. The Complainant first registered the mark in 1987 with the United States Patent and Trademark Office in the name of J.A. Hampton Corp. The Complainant states that he was the sole shareholder of that corporation. The Complainant currently uses the service mark in relation to bar, restaurant and nightclub services. The Complainant states that, in the future, he plans to develop a record company using the mark.
The contested domain name is identical to the Complainantís service mark.
The Respondent has no rights to the contested domain name. The Respondent does not conduct business under that name nor does he intend to. The Respondent has registered the domain name solely to sell it to the Complainant for a large profit.
The Complainant has been trying to recover the contested domain name for four years. In 1997, the Complainant sued a Michael Yelvington, who had registered the DANCETERIA service mark as a domain name with Network Solutions, Inc. Mr. Yelvington lost the case, and in the settlement agreement he relinquished all claims on the DANCETERIA service mark and the contested domain name.
Michael Yelvington is a resident of Australia and the Complainant was unable to reach him to have him sign the registrant change agreement. In an effort to prevent the contested domain name from becoming un-registered while attempting to contact Mr. Yelvington, the Complainant paid the registration fee for the last two years. Despite paying the renewal fee and receiving an e-mail receipt from Network Solutions, Inc. on May 7, 2001, the contested domain name somehow went unregistered, escaped the Network Solutions database and was registered a few hours earlier by the Respondent on May 6, 2001.
The Complainant then contacted Mr. Geonill Cha, the Administrative Contact for the contested domain name, and explained the situation regarding the service mark agreement with Mr. Yelvington and asked Mr. Cha to transfer the domain name to him for incurred expenses.
Mr. Cha said he would transfer the domain name, but would require US$1,200. The Complainant countered with an offer of $375 and an explanation of the ICANN Rules. Mr. Cha agreed to this $375 payment and sent along his bank information to the Complainant, who wired him a deposit of US$150 via the New York City branch of the Industrial Bank of Korea. After receiving the payment, Mr. Cha wrote back and demanded US$3,500. At this point, the Complainant decided to file a Complaint with WIPO.
The Respondent failed to file a Response within the time limit set by the Center.
In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complainantís submission alone.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in paragraph 4(a) of the ICANN Policy, namely:
(i) the domain name 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.
The onus of proving these elements is on the Complainant.
6.1 Identical or Confusingly Similar to a Trademark or Service Mark
The Complainant is the registered owner of the service mark DANCETERIA. The Panel does not need to decide whether the Complainantís service mark registration is incontestable under the U.S. Trademark Act. The fact that the Complainantís service mark registration is current is adequate to satisfy the requirement that the Complainant has trademark or service mark rights.
The Panel finds that the contested domain name is identical to the Complainantís registered service mark DANCETERIA. The only difference between the Complainantís service mark and the contested domain name is the addition of the generic top level domain name suffix ".com", which is an irrelevant distinction for the purpose of determining whether the domain name and service mark are identical.
The Respondent had the opportunity to respond and present evidence, for example, that it is a legitimate business that registered the domain name without knowledge of the Complainantsí rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).
Paragraph 14 of the ICANN Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The word DANCETERIA does not form any part of the Respondentís name and the Respondent has not provided the Panel with any evidence that it is using or making preparations to use the contested domain name in connection with a bona fide offering of goods or services.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondentsí legitimate rights in the contested domain name. The Respondent does not meet any of the three elements set out in paragraph 4(c).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the contested domain name.
6.3 Bad Faith
The Complainant contends that the Respondent has registered and is using the domain name in bad faith as the Respondent:
(a) is attempting to take advantage of the Complainantís inadvertent loss of the registration of the contested domain name; and
(b) has attempted to sell the contested domain name to the Complainant for a large amount of money, which is well above the nominal fee the Respondent paid to acquire the domain name.
The Panel has carefully considered the Complainantís evidence. Most of the Complainantís evidence relates to the Complainantís negotiations with the former Registrant of the contested domain name, Mr. Yelvington. As the Complainant did not present any evidence of any link between the former Registrant of the contested domain name and the Respondent, the Panel considers this evidence to be largely irrelevant for the purpose of this proceeding.
Some evidence presented by the Complainant could be interpreted to be evidence of registration and use of the contested domain name by the Respondent in bad faith, that is, the evidence that the Respondent offered to sell the contested domain name to the Complainant.
Paragraph 4(b)(i) of the ICANN Policy states that circumstances indicating that the Respondent has registered or 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 Respondentís documented out-of-pocket costs directly related to the domain name, shall be evidence of the registration and use of a domain name in bad faith.
The Respondent is located in Korea. The Complainantís business is in the New York area. The Complainant provided one example of his use of the trademark DANCETERIA, in a magazine titled "Steppiní Out". This does not appear to be a magazine in wide circulation and it is unlikely that the magazine would be available in Korea.
The Complainant has not presented any evidence of the Respondentís knowledge of the Complainantís service mark rights, or even the existence of the Complainant, prior to registering the contested domain name. Based upon the evidence presented by the Complainant, the Panel cannot infer that the Respondent ought to have known of the Complainantís service mark rights. The first approach in relation to the transfer of the contested domain name to the Complainant was not made by the Respondent, but by the Complainant. (However, the Panel notes that the Complainant was extremely quick in writing to the Respondent after the domain name was registered by the Respondent.)
The Panel is aware of the finding in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, that "the concept of a domain name Ďbeing used in bad faithí is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith". The Panel distinguishes the facts of the cited decision from this decision as the Complainant in the cited decision had a strong reputation in its trademark and the Respondent ought to have known of the existence of the Complainantís trademark prior to registering the domain name.
A number of previous decisions based upon the ICANN Policy have held that an offer to sell a domain name in itself is not sufficient evidence to prove that the Respondent registered and is using the domain name in bad faith. See, for example, Centennial Communications Corporation and Centennial de Puerto Rico v. Centennial WIPO Case No. D2000-1385.
However, in this case, the Respondent agreed to transfer the disputed domain name to the Complainant, and accepted money for doing so. The Respondent did not transfer the disputed domain name, in effect, in breach of contract. The UDRP is not the correct forum to bring a breach of contract claim. As stated in Tableland Economic Development Corporation v. Tablelands Online, Fast Internet and Sean Mullen, WIPO Case No. D2000-0744:
"The complainant submits that a trademark alone cannot define ownership to a name. Beyond the scope of the Policy, this is true: contractual, fiduciary or confidential relationships between parties may define or determine rights to a name as between those parties. However, the Policy and the Rules provide a strictly limited procedure designed solely to resolve certain specific disputes between the owners of trademark rights and the registrants of domain names, subject to any independent resolution by court decision Ė Policy paragraphs 4(a) and 4(k). Disputes raising issues falling outside the Policy (such as breach of contract, trust or confidence) may be resolved in any available court, arbitration or other proceeding Ė Policy paragraph 5."
To be fair, the Complainant has not framed his Complaint as one for breach of contract. But in certain instances, where there is a breach of contract to sell a domain name to the Complainant, this may be evidence of bad faith. See e.g., ITH GmbH v. First American, claim number: FA0008000095346 ("The Respondentís failure to transfer the domain name after receiving the money is further evidence of bad faith registration and use of a domain name.") Although this Panelist does not agree with all statements made in that decision, the ITH decision does show that a breach of contract may, in certain cases, be evidence of other bad faith.
The Respondent, in correspondence with the Complainant and in these proceedings, had the opportunity to present a reason why it registered the disputed domain name. It did not do so, and appropriate inferences can be drawn. The correspondence suggests that the Respondentís only interest was in selling the domain name at a profit.
Accordingly, based on all the evidence presented by the Complainant, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
Additionally, the Panel notes the case of Bloomberg L.P. v. Geonill Cha, Claim Number: FA0101000096482. The Respondent in that UDRP case appears to be the same as the Administrative Contact for the disputed domain name, and the contact address appears to be the same in there as in this case. In that case, the Panelist stated:
"The Respondent seems to be engaged in a pattern of registering famous trade and service marks as domain names. Policy ∂ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (August 17, 2000) (finding that the Respondent violated Policy ∂ 4.b.(ii) by registering multiple domain names which infringe upon othersí famous and registered trademarks); Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (September 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others). Therefore, the Panel concludes that the domain name was registered and used in bad faith."
The Panel in this case does not need to rely upon the Bloomberg decision to reach the conclusion in this case.
As a result, the Panel finds that the Complainant has satisfied this element.
The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the ICANN Policy in relation to the domain name the subject of the Complaint.
For the reasons set forth above and pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain name be transferred to the Complainant.
Dated: October 12, 2001