WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Feature Syndicate, Inc. v. Takeshi Komaba
Case No: D2002-0901
1. The Parties
The Complainant in this administrative proceeding is United Feature Syndicate, Inc., a corporation formed under the laws of the State of New York and having its principal place of business at 200 Madison Avenue, 4th Floor, New Yorkin, New York 10016, United States of America.SA.
The Complainantís authorized representatives are Gerald J. Ferguson and Rosanne T.Yang of Baker & Hostetler LLP, of 666 Fifth Avenue, New York, New York 10103, United States of America .
The Respondent is Takeshi Komaba , of 3-27-20 Minowachou, Yokohamashi, Kanagawa 2230051, Japan.
2. The Domain Name and Registrar
The domain name in issue is <snoopy.biz> ("the Domain Name").
The Registrar of the Domain Name is Tucows Inc. of 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada ("Tucows").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on September 28, 2002, an e-mail version of the Complaint and on October 1, 2002, hard copies of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of:-
(i)the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules");
(ii)the Restrictions Dispute Resolution Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the RDRP") and the Supplemental Rules for Restrictions Dispute Resolution Policy for ".BIZ" ("the Supplemental RDRP Rules").
The Complainant made the required payment to the Center. On October 2, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On October 1, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On October 2, 2002, Tucows transmitted via e-mail to the Center its Verification Response, stating that the Registrant, and the Administrative, Billing and Technical Contacts are Takeshi Komaba, the Respondent, of the above-stated address.
No Response has been filed by the Respondent. The Center sent notification of the Complaint to the Respondent by e-mail at his e-mail address.
The notification to the Respondent appears to have been received. Notification of Respondent Default was sent on October 23, 2002, and also appears to have been successfully transmitted to the Respondent.
On October 31, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by November 14, 2002.
4. Factual Background
(a) The Complainant owns over 450 trade/service mark registrations and applications for the mark SNOOPY ("theTrademark") alone, in combination with other words and/or with images and in foreign languages, in at least 75 countries around the world for a wide range of goods and services. By way of example it owns United United States Registration No. 653,359 issued October 22, 1957, for stuffed toys.
(b) The Complainant owns the domain name <snoopy.com>.
(c) The Domain Name was registered on November 7, 2001.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The Complainant initially contacted the Respondent through the Complainantís local Japanese counsel in an attempt to seek amicable resolution of this matter. In response to the Complainantís communications, the Respondent stated that he was using the Domain Name for approximately fifteen (15) e-mail addresses for himself, his family and his friends. He stated expressly that he was not using it for commercial purposes or for any website, and had no intention of such uses. [The latter sentence does not accurately reflect the Respondentís express statement, at least in the English translation exhibited to the Complaint. He stated only that he had no intention of using the Domain Name for commercial purposes or to set up a website Ė that he had not at the time been so using the Domain Name is, however, to be inferred from the e-mail Ė Panelist].
(ii) The URL "http://snoopy.biz" currently forwards to the URL "http://21company.com", which appears to be the Respondentís service provider, and the forwarding mechanism appears to be instituted by the service provider. There are no goods or services offered in connection with the Domain Name.
(iii) The Respondent was well aware of the value of the Trademark and its use within a domain name, and has used the value as part of his negotiating strategy. The Respondent made it clear to the Complainant that he required compensation in excess of his registration costs in consideration for his transfer of the Domain Name but at first did not specify an amount. In the light of the costs of proceeding with an RDRP/UDRP action, the Complainant made the business decision to offer US$1,000 to obtain the Domain Name. The Respondent replied almost immediately expressing his anger at the low amount of the offer, stating that the Domain Name was very valuable to SNOOPY fans, and refusing said offer. The Respondent later communicated to counsel that he would transfer the Domain Name to the Complainant for US$50,000, a sum far in excess of his registration costs.
As noted above, no Response has been filed.
6. Discussion and Findings
This Complaint is brought both under the Policy and under the RDRP.
Under the Policy, the onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(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.
As to element (i), the Domain Name is plainly identical to the Trademark.
As to element (ii) of paragraph 4(a) of the Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. However, paragraph 4c.(iii) of the Policy indicates one circumstance in which a respondent can demonstrate his rights or legitimate interests in a domain name, i.e. that he is "making legitimate noncommercial or fair use of the domain name" (the Panelistís emphasis). Here, while the Respondentís use has been non-commercial, he has chosen to register for a ".BIZ" domain name a world-famous trademark, of such renown that its use by a party unconnected with the Complainant cannot be regarded as either "legitimate" or "fair". The Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies.
Paragraph 4(b)(i) of the Policy states as follows:
"circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name."
There is, however, no clear evidence that at the time of registration the Respondent had the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of his documented out-of-pocket expenses. Nevertheless, the list of four circumstances listed in paragraph 4(b) of the Policy is not an exhaustive list, and the Panelist finds that the circumstances of the present case, i.e.
(i)registration of the Domain Name in bad faith;
(ii) followed by refusal of the sum of US$1,000 and an offer to sell for US$50,000; and
(iii) no attempt by the Respondent to justify his actions,
are such that he concludes that the Respondent registered and has been using the Domain Name in bad faith.
Under paragraph 4(a) of the RDRP, a respondent is required to submit to an administrative proceeding if a complainant asserts that a ".BIZ" domain name "is not being or will not be used primarily for a bona fide business or commercial purpose". The RDRP then (in paragraph 4(b)) goes on to define what is meant by "Bona fide business or commercial use". Finally, paragraph 4(c), provides as follows:-
"Not a Bona Fide Business or Commercial Use. Registering a domain name solely for the purposes identified below shall not constitute a "bona fide business or commercial use" of that domain name:
(i)Selling, trading or leasing the domain name for compensation, or
(ii)The unsolicited offering to sell, trade or lease the domain name for compensation.
(iii)For illustration purposes, the following shall not constitute a "bona fide business or commercial use" of a domain name:
(a)Using or intending to use the domain name exclusively for personal, noncommercial purposes; or
(b)Using or intending to use the domain name exclusively for the expression of noncommercial ideas (e.g. registering exclusively to criticize or otherwise express an opinion on the products or services of ABC company, with no other intended business or commercial purpose).
In the present case, although the Respondent has not lodged a Response, he has been at pains in correspondence with the Complainant to emphasiseemphasize his non-commercial intentions with regard to the Domain Name (see paragraph 5.A(i) above). Accordingly, as a result of the Respondentís own admission, the Complainant has established that the present is an instance of non-commercial use within the terms of paragraph 4c.(iii)(a) of the RDRP
In the light of the findings in paragraph 7 6 above, the Panelist concludes that:-
-the domain name <snoopy.biz> is identical to the trademark SNOOPY of the Complainant;
-the Respondent has no rights or legitimate interests in the domain name;
-the domain name has been registered and is being used in bad faith;
and that accordingly the Complainant has made out its case under the Policy.
Further, the Panelist concludes that the Complainant has established that the domain name <snoopy.biz> is not being and will not be used for a bona fide business or commercial purpose, and that therefore the Complainant has made out its case under the RDRP.
Accordingly, the Panelist orders that the Domain Name <snoopy.biz> be transferred to the Complainant, United Features Syndicate, Inc.
Dated: November 14, 2002