WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lauri Bortz D/B/A Abaton Book Company v. Pierre Gagne and Sean Bartunek
Case No. D2002-0689
1. The Parties
The Complainant in this administrative proceeding is Lauri Bortz D/B/A Abaton Book Company, a company incorporated in New Jersey, United States of Amercia.
The Respondents in this administrative proceedings are Pierre Gagne, an individual, and Sean Bartunek, an individual, both domiciled at 2335 Ontario Est, Montreal, Quebec h2k1w2, Canada.
2. The Domain Name and Registrar
The domain name in dispute is <abatonbookcompany.com> (hereinafter "the Domain Name").
The registrar with which the Domain Name is registered is iHoldings.com, Inc. D/B/A DotRegistrar.com, email: email@example.com (hereinafter the "Registrar").
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on July 22, 2002, and in hard copy on July 25, 2002.
On July 24, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On July 24, 2002, the Center sent a Request for Registrar Verification to the Registrar. On July 24, 2002, the Registrar responded confirming that it is the registrar of the Domain Name, that the First Respondent is the current registrant of the Domain Name, providing details of the Administrative Contact, and Technical Contact for the registration, confirming that the Policy is in effect in respect of the registration, that the language of the service agreement is English, and that the registration was active at that time.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.
On June 25, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondents. The Notification was sent to the Respondents by courier (with enclosures), by facsimile (Complaint without attachment) and by email (Complaint without attachments). A copy of the Notification was sent to the authorised representative of the Complainant by email. Further copies of the Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by email (without enclosures).
The Notification of Complaint and Commencement of Administrative Proceedings advised the Respondents that, inter alia, the Administrative Proceedings had commenced on July 24, 2002, and that the Respondents were required to submit a response to the Center on or before August 14, 2002.
The Respondents did not submit a Response.
On August 15, 2002, the Center sent a Notification of Respondent Default to the Respondent and the Complainant with a copy to the Registrar by email.
On August 23, 2002, after having received a Statement of Acceptance and Declaration of Impartiality from the sole member of the Administrative Panel in accordance with paragraph 7 of the Rules, the Center proceeded to appoint Charters Macdonald-Brown as the sole member of the Administrative Panel.
In the view of the Administrative Panel, proper procedures were followed and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant claims to have been using the service mark ABATON BOOK COMPANY since at least October 10, 1997, and has used the Domain Name <abatonbookcompany.com> in conjunction with its services since at least April 2000.
The Complainant has filed a service mark application for ABATON BOOK COMPANY for publisher of books and sound recordings (CDs and phonograph records) with the US Patent and Trade Mark Office, serial number 78/138,517, filing date, June 25, 2002.
The First Respondent is the current registrant of the Domain Name, <abatonbookcompany.com>. The Second Respondent appears to have been involved in the registration of the Domain Name and has sought to deal with it.
5. Parties' Contentions
The Complainant claims that the Domain Name, <abatonbookcompany.com>, is identical to the service mark ABATON BOOK COMPANY in which the Complainant has rights; that the Respondents have no rights or legitimate interest in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith. The Complainant requests that the Administrative Panel direct that the Domain Name be transferred to the Complainant.
The Complainant submits that the service mark ABATON BOOK COMPANY has been used by the Complainant in connection with publishing books and sound recordings (CDs and phonograph records) continuously since at least October 10, 1997.
The Complainant claims that it has used the Domain Name <abatonbookcompany.com> in connection with its services since at least April 2000.
The Complainant provided a declaration in support of these contentions. Various documents relating to use which date from March 23, 1999, were attached to the declaration.
The Complainant submits that neither of the Respondents are making a legitimate non-commercial or fair use of the Domain Name. Instead, the Domain Name was linked to a pornographic website for several days, up to and including June 28, 2002. The Domain Name now resolves to an inactive website. It is not clear to the Complainant how the Respondents acquired the Domain Name.
The Complainant also submits that the Respondents registered and are using the Domain Name in bad faith by registering the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for an amount in excess of the out-of-pocket costs directly related to the Domain Name.
It appears that on June 21, 2002, the Complainant discovered that its website located at "www.abatonbookcompany.com" was not responding and it notified its website host, NetRocket.com. NetRocket.com technical support stated that the Domain Name, <abatonbookcompany.com>, had been "hijacked" and the Domain Name registration was now owned by Sean Bartunek through DotRegistrar.com.
On June 25, 2002, a pornographic website page appeared at "www.abatonbookcompany.com". When contacted by the Complainant on June 26, 2002, the Complainant alleges that Mr. Bartunek stated that he would have to see what the Domain Name was worth.
The Complainant sets out a summary of the correspondence between its Counsel and Mr. Bartunek between July 1 and July 3, 2002, and provides copies of such correspondence. In essence, Mr. Bartunek requested the Complainant "prove" its rights in ABATON BOOK COMPANY and then subsequently offered to sell the website for either US$500 plus transfer and finder fees or US$3,000. Mr. Bartunek also threatened to sell the Domain Name to someone else who might not be willing to sell the Domain Name to the Complainant.
The Complainant has also submitted that Mr. Bartunek is a "cyber squatter" whose business is acquiring and selling domain names that were previously in use, through his company, Domain Quest, Inc. Mr. Bartunek has apparently engaged in "hijacking" domain names which are currently in use and then placing pornographic websites at the same Internet address. The Complainant has provided a copy of Domain Quest's website "www.domainquest.com" and a copy of an article illustrating similar abuse by Domain Quest and Mr. Bartunek.
The Respondents did not provide a Response.
6. Discussions and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name registered by the Respondents is identical or confusingly similar to a service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
(i) Identical or confusingly similar
The Administrative Panel accepts the Complainant's submission that the domain name <abatonbookcompany.com> is identical to the Complainant's service mark ABATON BOOK COMPANY. The Complainant has provided sufficient evidence of its rights in the service mark. The marks are clearly identical and the removal of spaces between the words and the addition of ".com" does not alter this fact.
(ii) Rights or legitimate interest
The Respondents do not have any rights or legitimate interest in the Domain Name. It appears the Respondents "hijacked" the Domain Name while it was currently in use (either because the registration had recently expired or in some other way). The Respondents did not have any rights or legitimate interest at the time of registration and had no intention to make any legitimate use of the Domain Name, instead linking it to a pornographic website.
(iii) Bad Faith
The Respondents have demonstrated bad faith. Firstly, the Respondents appear to have "hijacked" the Domain Name while it was currently in use. Secondly, the Respondents linked the Domain Name to a pornographic website. Thirdly, the Respondents have sought to sell the website back to the original owner of the Domain Name and the holder of the ABATON BOOK COMPANY service mark for commercial gain. The Respondents had no interest in ownership of the Domain Name beyond obtaining a profit from its sale. The Respondents intended to force the Complainant into such a sale by damaging the Complainant's goodwill and reputation in the service mark and in the "www.abatonbookcompany.com" website by linking the website to a pornographic website.
With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules it is the decision of the Administrative Panel that the Complainant has established that the Domain Name, <abatonbookcompany.com>, is identical to the Complainant's service mark ABATON BOOK COMPANY in which the Complainant has rights, that the Respondents have no rights or legitimate interest in the Domain Name and that the Respondents have registered and are using the domain name in bad faith.
The Administrative Panel therefore directs that the Domain Name, <abatonbookcompany.com>, shall be transferred to the Complainant.
Dated: September 3, 2002