WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gold Line Telemanagement Inc. v. SquareBox Entertainment
Case No. D2002-1102
1. The Parties
The Complainant is Gold Line Telemanagement Inc. of Ontario, Canada, a Canadian corporation, represented by W. Brad Hanna of McMillan Binch LLP of Toronto, Canada.
The Respondent is SquareBox Entertainment with a post box address in Nassau, Bahamas.
2. The Domain Name and Registrar
The domain name at issue is <goldlinegroup.com>.
The Registrar is iHoldings.com Inc. d/b/a DotRegistrar.com, of Maimi, Florida, United States of America.
3. Procedural History
The Complaint was received in hard copy on December 2, 2002, (an electronic copy was subsequently received on December 6, 2002), by the WIPO Arbitration and Mediation Center (the "Center"). In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules" as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 (the "Supplemental Rules"), the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 (the "Policy"), the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainants have paid the specified fee to the Center.
The Center transmitted the requisite Registrar Verification request to iHoldings.com Inc. d/b/a DotRegistrar.com on December 4, 2002, and received an email response from iHoldings.com Inc. d/b/a DotRegistrar.com on the same day, confirming that the domain name is registered with it and that the Respondent, SquareBox Entertainment, is the current owner/registrant of the domain name <goldlinegroup.com>.
Proceedings in this case were formally commenced on December 9, 2002, when the Center sent a copy of the Complaint to the Respondent by email and post to the addresses recorded in the Administrative Contact details for the domain name at issue. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than December 29, 2002, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on December 31, 2002, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent by email and post and to the Complainantís representative by email. An email reply was then received from the Respondentís email address on January 1, 2003.
On January 3, 2003, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed Mr. Gymer as Panelist on January 7, 2003, and notified the Respondent and the Complainantís representative of this appointment by email on the same day.
Subsequently, on January 14, 2003, the Complainant made a Supplemental Filing, which was transmitted to the Panel on January 15, 2003. As the Panel had not then commenced writing the Decision, the Panel agreed to consider the "New Information" in the Supplemental Filing and asked the Center to issue an interim Procedural Order allowing the Respondent a further 7 days (to January 22, 2003) to make its own submissions regarding the "New Information". A brief email response was submitted from the Respondentís email address on January 15, 2003, and forwarded to the Panel on January 16, 2003. No further submissions were received. The expected date for the Panel to take a Decision in this case was correspondingly extended to January 29, 2003.
4. Factual Background
According to the Registrar's WHOIS records, the domain name record for <goldlinegroup.com> was created on July 5, 2002, and last updated on November 9, 2002, and is presently nominally registered to the Respondent. It is clear from the evidence, however, that the present nominal Registrant is only the latest in a series and that the domain name was only recorded in its name on or about November 7, 2002.
Otherwise, the Complainant has made a number of further contentions by way of a Statement of Case in the Complaint. These are summarised below.
5. Partiesí Contentions
The Complainant and its counsel have been unable to identify what type of entity SquareBox Entertainment is, other than an addressee at the post office box and email address, as taken from DotRegistrarís WHOIS database as of November 9, 2002.
The Complainant, Gold Line has been in operation since 1991, and is in the business of providing retail telephone calling cards to an international marketplace. Gold Line and its related companies, ARC Phone Canada Inc., Teleresolve Inc. and Card Express Printing Inc. operate collectively as the "Gold Line Group" and the "Group of Gold Line" ("Gold Line Group"). Gold Line Group is the largest provider of prepaid long distance calling cards in Canada. Gold Line Group distributes its products through independent dealers and directly through its own sales force.
Gold Line Group also offers its calling cards to an international audience, and currently advertises and sells its cards in Canada, the United States of America, Germany, Israel, Hong Kong, Iran, Armenia, Italy and the Netherlands.
Gold Line Group has several trade-marks and trade names that it uses, and that it has used for many years, in connection with the advertising, marketing and selling of its products. Gold Line Groupís use of these marks predates the registration of the <goldlinegroup.com> domain name.
"Gold Line" and "Gold Line Group"
Gold Line Group has used the "Gold Line" trade-mark in connection with the marketing and distribution of telephone calling cards and the provision of local and long distance telephone and telecommunication services in Canada since 1994, and in international markets for the past several years. Gold Line Group has also used the trade-mark "Group of Gold Line" in connection with the marketing and distribution of telephone calling cards, as well as with the provision of local and long distance telephone communication services, both in Canada and the identified international markets since at least December, 2000. (Copies of some of Gold Line Groupís calling cards bearing the "Gold Line" and "Group of Gold Line" trade-marks were annexed to the Complaint.)
Gold Line registered the domain name <goldline.net> in 1997, and began operating a website at this address in 1998 (Gold Line also operates <goldlinewebcall.com> and <goldlinedcall.com>). The website has also prominently displayed the "Group of Gold Line" trade-mark. (Copies of pages from the goldline.net website were annexed to the Complaint.)
Using the "GOLD LINE" trade-mark, Gold Line Group has, in particular, advertised its calling cards and telephone services for a number of years through an Iranian newspaper called the Shahrvand, in the Iran Free Press Copy, another publication which is also accessible on the internet. Gold Line Groupís products have also been featured in an advertisement in the Eíttelaat, a daily paper, with a worldwide readership, published and distributed in the United States. (Copies of relevant advertisements were annexed to the Complaint.)
Based on the foregoing, the Complainant asserts that Gold Line Group is the true and rightful owner of the "Gold Line" and "Gold Line Group" trade-marks in connection with the marketing and distribution of telephone calling cards in Canada and the United States and elsewhere.
"iDcaller" and "Dcall"
Although not directly at issue in the present proceedings, Gold Line Group also claims to be the true and rightful owner of the trade-marks "iDcaller" and "Dcall" in connection with the marketing and distribution of certain calling card products in Canada and the United States. The "iDcaller" and "Dcall" trade-marks are alleged to be relevant to this proceeding because the original registrant of <goldlinegroup.com> also registered the domain names <idcaller.us> and <dcall.ca>. This individual (allegedly known as Bijan Kotabi and Bijan Shamsolkotabi) registered the three domain names (personally and through entities that he controls) after having approached the Complainant to become one of its sales representatives. Since registering the domain names, and as described in detail below, this individual is said to have engaged in a bad faith and predatory attempt to demand money from the Complainant for the domain names and to damage the Complainantís business reputation.
The domain names <idcaller.us> and <dcall.ca> are presently registered to Ad Dreamer (a company that Mr. Kotabi is evidently affiliated with, as is described below) and Mr. Kotabi, respectively. (Copies of relevant WHOIS details were provided in the Complaint.) Both "iDcaller" and "Dcall" are calling cards that are intended to provide one long distance account for all of a customerís long distance calling needs. These products are said to be exclusive to the Gold Line Group. Gold Line Group has advertised and made these products available on its website, in various newspapers and magazines and through its dealers for at least the past year and a half. (Copies of website pages advertising the "iDcaller" and "Dcall" products were provided in the Complaint.)
The Complainant consequently claims to have enforceable Common Law Trade-mark Rights in Gold Line and Gold Line Group/Group of Gold Line.
In addition to common law trade-mark rights, Gold Line Group has also applied for registration of its trade-marks "Gold Line", "Group of Gold Line", "Dcall" and "iDcaller" in association with telephone calling cards and local and long distance communication services under the Canadian Trademarks Act, R.S.C. 1985 c. T-13 and the United States Trademarks Act. Particulars of these applications were provided in the Complaint.
The Domain Name is Confusingly Similar to Complainantís Trade-Marks.
The domain name <goldlinegroup.com> is confusingly similar, if not identical, to the Complainantís "Gold Line" trade-mark, the "Gold Line" and "Gold Line Group" and "Group of Gold Line" trade names of the Complainant. The only difference between the Complainantís trade-mark "Gold Line" and the impugned domain name is the addition by the Respondent of the word "Group". The addition of the word "Group", however, is trivial and does not lessen the confusing nature of the domain name.
Moreover, as set out above, Gold Line refers to its group of companies as "Group of Gold Line" and "Gold Line Group". In this sense, the impugned domain name <goldlinegroup.com> is identical to the trade name by which the Gold Line Group refers to itself and is known in the telephone calling card marketplace.
The Respondent Has No Rights or Legitimate Interests in the Domain Name
As noted above, the Complainant has been unable to identify what type of entity the Respondent, SquareBox Entertainment, is - other than an addressee at a post-office box and an email address. SquareBox Entertainment only became the registrant of the <goldlinegroup.com> domain name on or about November 7, 2002. At that time, as evidenced in the Complaint, SquareBox Entertainmentís address as shown in DotRegistrarís WHOIS database was a P.O. Box in St. Johnís, Antigua and Barbuda. SquareBox Entertainmentís address was subsequently changed to its current Nassau address on November 9, 2002.
The Respondent is neither a licensee of the Complainant nor is it in any other way authorized to use the Complainantís "Gold Line" and related trade-marks. As far as the Complainant is aware, the term "Gold Line Group" is not the subject of any trade-mark registration in which the Respondent has rights.
The Respondent has no legitmate connection whatsoever with the domain name <goldlinegroup.com>, or the trade mark "Gold Line". The domain name simply links internet users who access this domain name to a variety of pornographic websites.
Moreover, to the Complainantís knowledge, the <goldlinegroup.com> domain name is not a legitimate name of any business belonging to the Respondent nor is it in any other way identified with the Respondent. The Respondent is not commonly known by the domain name and does not provide goods or services under that name.
For the reasons further detailed below, the Complainant believes that the Respondent is merely the current shell transferee of the impugned domain name.
The domain name <goldlinegroup.com> (along with the domain names <idcaller.us> and <dcall.ca>) was originally registered (or was caused to be registered) by Mr. Kotabi who sought to become an authorized sales representative of Gold Line Group. When Mr. Kotabi was not made an authorized sales representative, it is alleged that he sought to demand excessive payments from Gold Line Group in exchange for the domain names. Mr. Kotabi is also alleged to have engaged in a campaign designed to damage the goodwill associated with Gold Line Groupís trade-marks and its business reputation.
(a) Mr. Kotabi Approaches Gold Line Group in May, 2002
Mr. Kotabi approached Ata Moeini, the Chief Executive Officer of Gold Line Group, in or about May, 2002, with a proposal to become an authorized sales agent for certain of Gold Line Groupís calling card products. Mr. Kotabi advised that he was particularly interested in selling Gold Line Groupís iDcaller and Dcall products, discussed above. In the course of their initial discussions, Gold Line Group requested Mr. Kotabi to execute a Confidentiality Agreement, which he did on May 28, 2002. Gold Line Group asked Mr. Kotabi to sign the Confidentiality Agreement to protect Gold Line Groupís rights to, among other things, its proprietary information relating to the research and development of its products and systems, operations and clients. Gold Line Group had a number of discussions with Mr. Kotabi over the course of the next few weeks. During these discussions, the parties talked about what marketing strategies Mr. Kotabi might employ to sell the iDcaller and Dcall products on Gold Line Groupís behalf. The parties also discussed Gold Line registering the domain name <goldlinegroup.com>, which would be used by Gold Line Group to supplement its use of the <goldline.net> domain name. At all times, it was understood between Mr. Kotabi and Gold Line Group that the registrant of the <goldlinegroup.com> domain name was to be Gold Line.
(b) Mr. Kotabi Registers the <goldlinegroup.com> Domain Name
Unknown to Gold Line Group and contrary to the understanding between the parties, Mr. Kotabi then went out and registered, in his own name or through some entity under his direction and control, the <goldlinegroup.com> domain name using DotRegistrar as the registrar. When Mr. Kotabi advised Gold Line Group that he had registered goldlinegroup.com, Gold Line Group was surprised and reminded Mr. Kotabi that the parties had discussed Gold Line Group registering this domain name. Gold Line Group further explained that, as the owner of the "Gold Line" and other related trade-marks, it could not permit Mr. Kotabi to be the registrant of a domain name incorporating its marks. Additionally, Gold Line Group had planned to change its print advertising to direct its customers to the <goldlinegroup.com> domain name instead of the goldline.net domain name. Accordingly, Gold Line Group asked Mr. Kotabi to comply with their earlier understanding and to transfer the registration of the <goldlinegroup.com> domain name to Gold Line. Mr. Kotabi agreed to do so.
(c) Mr. Kotabi purports to transfer the goldlinegroup.com Domain Name to Gold Line
On or about July 10, 2002, Mr. Kotabi wrote to Gold Line Group to confirm that he had transferred registration of the <goldlinegroup.com> domain name to Gold Line. In his letter, Mr. Kotabi clearly and expressly stated: "This is the confirmation that <goldlinegroup.com> has been transferred to GoldLine Management Inc. Please have as your confirmation." Mr. Kotabi also attached to his letter a WHOIS Search Result from VeriSign apparently confirming that Gold Line was then indeed the registrant of the <goldlinegroup.com> domain name. (Copies of the relevant correspondence were annexed to the Complaint in evidence.) Upon receiving this confirmation from Mr. Kotabi, Gold Line Group conducted its own WHOIS search to confirm that the transfer had indeed been effected. Alexei Treitkov, Gold Line Groupís IT Manager, performed WHOIS searches on July 10, 2003, and over the course of the next few days to confirm the transfer. Each time Mr. Treitkov performed the WHOIS searches, the searches confirmed that Gold Line was the apparent registrant of the <goldlinegroup.com> domain name.
Over the course of the next few weeks, Mr. Treitkov asked Mr. Kotabi for the login and password names pertaining to <goldlinegroup.com> so that he could complete construction of Gold Line Groupís website at the <goldlinegroup.com> domain name. Mr. Kotabi repeatedly promised that he would provide the login and password names as requested, but he failed to do so. At no time prior to Mr. Kotabi transferring the domain name to Gold Line Group did Mr. Kotabi ask Gold Line Group to pay any monies for this transfer.
Following the purported transfer of the domain name to Gold Line Group, Mr. Kotabi and Gold Line Group continued to have further discussions about Mr. Kotabi becoming an authorized sales representative. Unfortunately, Mr. Kotabi was unable to convince Gold Line Group that he met its criteria for becoming an e-commerce agent for the purposes of representing Gold Line Group. Accordingly, Gold Line Group did not feel comfortable with Mr. Kotabi and ultimately did not appoint him as an authorized sales representative.
(d) Gold Line Group Advertises the <goldlinegroup.com> Domain Name
As noted above, Gold Line Group has previously referred potential customers to the "goldline.net" website for further information about its products. Relying on Mr. Kotabiís confirmation that the <goldlinegroup.com> domain name had been transferred to Gold Line, Gold Line Group changed its print advertising to refer customers to the "goldlinegroup.com" website instead of the "goldline.net" website address in or about August, 2002. Accordingly, Gold Line Groupís full-page advertisements in the Fall 2002 Journey magazine (a magazine produced for members of the Canadian Automobile Association) and the November, 2002 issue of Feature magazine were changed to refer to "goldlinegroup.com" instead of "goldline.net".
(e) Mr. Kotabi transfers the Domain Name from Gold Line Group
After it had changed its advertising to reflect the new <goldlinegroup.com> domain name, Mr. Kotabi wrote Gold Line Group on October 17, 2002, to offer the domain names <goldlinegroup.com>, <idcaller.us> and <dcall.ca> for sale. Mr. Kotabiís email came as a complete surprise to Gold Line Group. Prior to receiving Mr. Kotabiís email, Gold Line Group reasonably believed that the goldlinegroup.com domain name had already been transferred to it. Further, Gold Line Group was not previously aware that Mr. Kotabi had also registered the <idcaller.us> and <dcall.ca> domain names. In his email, Mr. Kotabi indicated that the three domain names were being offered for sale as a package, and that the "final and no [sic] negotiable price is USD $23,267.80", plus monthly maintenance fees and support fees. The email also provided that the offer would expire at 12:00 noon on October 18, 2002, and directed Gold Line Group to wire transfer the USD $23,267.80 to an account maintained by an entity known as Ad Dreamer Inc. ("Ad Dreamer"), a company with whom Mr. Kotabi is apparently affiliated. (A copy of the email and evidence of Mr Kotabiís association with Ad Dreamer were annexed to the Complaint.).
Gold Line Group telephoned Mr. Kotabi twice shortly after receiving his October 17, 2002, email. Mr. Kotabi failed or refused to return Gold Line Groupís telephone calls.
(f) Gold Line Group Contacts DotRegistrar Regarding the Unauthorized Transfer of the Domain Name
Upon receiving Mr. Kotabiís email of October 17, 2002, Gold Line Group immediately contacted DotRegistrar to ask for its assistance regarding the unauthorized transfer of the <goldlinegroup.com> domain name. Gold Line Group advised DotRegistrar that the domain name had been transferred to it months previously but that it apparently had since been transferred to another registrant without authorization. In subsequent email correspondence (submitted in evidence with the Complaint), DotRegistrar noted that it would have given the party first registering the domain name a specific account name and password and indicated that this would have changed if the domain name were genuinely to be transferred. After having investigated the Gold Line complaint, significantly, DotRegistrar reported that "the domain has not been moved from the original account".
Gold Line Group performed a WHOIS search on October 17, 2002, which purportedly showed that the registrant of the <goldlinegroup.com> domain name was an individual named Mike Pistol. The WHOIS search result further indicated that the administrative and technical contacts for the registrant were also Mike Pistol, and that he could be contacted at a post-office box in Belize. Finally, the WHOIS search report indicated that the record was last updated on October 16, 2002, Ė being the day before Mr. Kotabi wrote the email to Gold Line Group offering to sell the aforementioned domain names.
(g) Mr. Kotabi Causes Pornography to be Posted at the <goldlinegroup.com> Website
While Gold Line Group was trying to ascertain how and why it was no longer the registrant of the <goldlinegroup.com> domain name, Gold Line Group was further shocked to learn that the goldlinegroup.com domain name was now being used as a link to a pornography website. Internet users who visited the <goldlinegroup.com> domain name were then linked to another website known as <hornyhours.com>, a website offering photographs of lesbian, teen and hardcore pornographic photographs, and other adult content websites. (Evidence of this was annexed to the Complaint.)
(h) Gold Line Group Instructs its Legal Counsel to Investigate
On or about November 6, 2002, Gold Line Group instructed its legal Counsel (Mr. W. Brad Hanna of McMillan Binch LLP)to investigate this issue. Counsel attempted to reach Mr. Kotabi by telephone, but received no response. When he was unable to contact Mr. Kotabi by telephone, Counsel emailed Mr. Kotabi at email@example.com. Counsel also emailed the then current registrant of goldlinegroup.com, Mike Pistol, on November 6, 2002. Counsel asked Mr. Pistol to contact him to discuss the domain name. Both Mike Pistol and Mr. Kotabi responded to these email inquiries. It was apparent from their responses, that Mike Pistol and Mr. Kotabi were connected in some way. Essentially, Mr. Kotabi and Mike Pistol again offered to sell the domain name <goldlinegroup.com> to Gold Line. (Copies of the email correspondence were included in the Complaint.)
(i) Further Efforts to Sell the <goldlinegroup.com> Domain Name
Mike Pistol responded to Counselís email noting that the domain name was for sale. Mike Pistol indicated that the price for the domain name was USD $25,000.00. The "From:" line on the responding email reads "b k <firstname.lastname@example.org>". It is submitted that the reference to the letters "b k" in the email address indicates some connection between Bijan Kotabi and Mike Pistol. Mr. Kotabi also advised in his email response that the domain name "was for sale", and that Counsel should contact the registrant directly and buy the domain name from him, if interested. Mike Pistol subsequently sent a further email indicating that he would be "represented by Ad Dreamer Inc." and asked Counsel to co-operate with Ad Dreamer and its agents in Canada in connection with the sale of the domain name. On November 7, 2002, Mr. Kotabi, on behalf of Ad Dreamer Inc., sent a further email to Counsel confirming that he would be acting as Mike Pistolís representative for the transfer of the <goldlinegroup.com> domain name. In his email, Mr. Kotabi indicated that the price for the <goldlinegroup.com> domain name had now gone up to USD $35,000.00. Mr. Kotabi further indicated that the offer was "non-negotiable" and only available for acceptance until 3:00 p.m. on November 8, 2002. (Copies of the relevant emails were included in the Complaint.)
In the morning of November 7, 2002, Mr. Kotabi telephoned Gold Lineís Counsel to discuss a proposed transfer of the <goldlinegroup.com> domain name. During their conversation, Mr Kotabi reportedly:
- said that Counsel could not speak directly with Mike Pistol, and refused to confirm whether Mike Pistol was a real person;
- confirmed that he had full authority to sell the domain name on behalf of Mike Pistol;
- failed to explain, in response to repeated questions, how it was that after he transferred the domain name to Gold Line Group on or about July 10, 2002, the name was no longer registered to Gold Line Group but was now registered to Mike Pistol.
- also explained during his telephone conversation that he also owned the domain names <dcall.ca> and <idcaller.us>. Mr. Kotabi advised that he was not "interested in" any of the Gold Line domain names anymore and that he was willing to sell all of the domain names to Gold Line Group.
- stated that he wanted to have Gold Line Group pay for his "expenses" in registering the domain names, and that the price for doing so was now $35,000.00US.
- urged Counsel to advise Gold Line Group that this would be the best way to resolve the issue.
- indicated that it could become a lot more "problematic" for Gold Line Group if they did not accept the offer. In that regard, Mr. Kotabi explained that, in the Iranian culture (the principals of Gold Line Group are of Iranian descent), being affiliated with pornographic websites would be viewed as highly negative. He also explained that being affiliated with gay pornographic websites would be even worse. In doing so, Mr. Kotabi mentioned a number of other websites offering adult pornographic content known as the <thehun.com> and <persiankitty.com> and <hustlervip.com>. Mr. Kotabi explained, in a not-so-thinly-veiled threat, that if Gold Line Group did not accept the offer being made, links to other pornographic websites such as these might crop up on the <goldlinegroup.com> website.
Counsel explained the very grave concern that Gold Line Group had about the fact that the <goldlinegroup.com> domain name had been taken from it and that it was being used as a link to pornographic websites. Mr. Kotabi, again in a not-so-thinly-veiled threat, explained that Gold Line Group would probably not want the domain names <idcaller.us> and <dcall.ca> similarly linked to other pornographic websites, which also might happen if his "offer" was not accepted.
Counsel also advised Mr. Kotabi that Gold Line Group had already had print advertisements prepared advertising the <goldlinegroup.com> domain name and that some of these advertisements had been circulated to the general public and this was now causing damage to the reputation of Gold Line Group. Mr. Kotabi did not appear in the least concerned about the damage that was being done. Approximately 1.4 million copies of the aforementioned Leisure Ways and Journey magazines were printed, containing Gold Line Groupís advertisement directing readers to the goldlinegroup.com website which now provides a link to numerous pornographic websites. Unfortunately, Gold Line Group was unable to prevent several thousands of these magazines from being circulated to the general public. Accordingly, readers of the advertisements will be directed to <goldlinegroup.com> and, instead of finding information about Gold Line Groupís products, will be confronted with hardcore pornography.
On November 8, 2002, Mr. Kotabi again telephoned Counsel to ascertain whether Gold Line Group was willing to pay his demands. Counsel advised Mr. Kotabi that Gold Line Group was not interested in doing so. Mr. Kotabi then said that he would no longer be the agent for Mike Pistol, the then purported current registrant of <goldlinegroup.com>.
(j) Changes to the goldlinegroup.com Website on November 8, 2002
On November 8, 2002, Counsel accessed the goldlinegroup.com website and observed that additional linkages to more pornographic websites had been added. In particular, and evidently not coincidentally, links to the "thehun.com", "persiankitty.com", "hustlervip.com". and "gaylovers.com" (being the websites that Mr. Kotabi referred to the day before), among other pornographic websites, had been added as linked websites. It is apparent that Mr. Kotabi was instrumental in updating the "goldlinegroup.com" website to include these further pornographic linkages after being advised him that Gold Line Group would not agree to pay his excessive demands. (A copy of the website page as at November 8, 2002, was provided in the Complaint.)
(k) Further Changes to Ownership of the <goldlinegroup.com> Domain Name
A further WHOIS search conducted on the <goldlinegroup.com> domain name on November 7, 2002, the search indicated that the apparent Registrant of the domain name had been changed from Mike Pistol to the current registrant, being SquareBox Entertainment. The address for SquareBox Entertainment, as of the date of this WHOIS search, was a P.O. Box in St. Johnís, Antigua and Barbuda. A further WHOIS search performed on November 8, 2002, again indicated that the current registrant for the goldlinegroup.com domain name was SquareBox Entertainment, but with a different address from the day before, now recorded in Nassau, Bahamas.
Based on the foregoing, it is asserted that Mr. Kotabi, or someone acting under his direction, originally registered the goldlinegroup.com domain name for the purpose of selling it to the Complainant at a substantial profit. It is also asserted that Mr. Kotabi has arranged for the domain name to be transferred to various shells under his direct or indirect control.
It is alleged that the evidence in this case supports a finding that Mr. Kotabi has had the ability and the authority to modify registration information with respect to the goldlinegroup.com domain name and further that Mr. Kotabi is using shell entities to evade his responsibility for the registration and use of the domain name
Moreover, it is submitted that Mr. Kotabi, and the various subsequent registrants of the goldlinegroup.com domain name, maintain registered ownership of the domain name primarily for the purpose of selling it to Gold Line Group for amounts greatly in excess of the original costs related to the registration of the domain name, and to harm Gold Line Groupís reputation by operating the domain name as a link to hardcore pornographic websites.
The Complainant believes that Mr. Kotabi, through entities acting under his direction or control, registered the domain name in order to prevent the Complainant from enjoying the exclusive right to the domain name (as well as the domain names idcaller.us and dcall.ca.)
Domain Name was Registered and is Being Used in Bad Faith
For the reasons described above, it is asserted that the <goldlinegroup.com> domain name has been registered and is being used in bad faith.
Prior to meeting with Gold Line Group to become a sales representative, Mr. Kotabi had not registered and did not have any legitimate use for the <goldlinegroup.com> domain name. After meeting with Gold Line Group, Mr. Kotabi caused goldlinegroup.com to be registered in his name, or in the name of an entity under his control and direction, instead of Gold Line Group, contrary to the understanding between Mr. Kotabi and Gold Line Group. Mr. Kotabi then agreed to transfer the domain name to Gold Line Group, and, in fact, advised Gold Line Group that he had done so on July 11, 2002. By means known only to Mr. Kotabi, he either never effected the transfer of the domain name as he had advised Gold Line Group, or he subsequently arranged to have the domain name transferred away from Gold Line Group to Mike Pistol, contrary to his agreement. Since doing so, Mr. Kotabi (on behalf of the shell registrantsí of the domain name) has attempted to sell the domain name, along with other domain names containing the trade-marks of Gold Line Group (being the <idcaller.us> and <dcall.ca> domain names), to Gold Line Group several times for profit: first, Mr. Kotabi offered to sell the three domain names to Gold Line Group on October 17, 2002, for $23,267.80US, plus support and maintenance fees; on November 6, 2002, Mr. Kotabi made the goldlinegroup.com domain name available for sale to Gold Line Group for $25,000.00US; and finally, on November 7, 2002, Mr. Kotabi raised the price to $35,000.00US for the <goldlinegroup.com> domain name alone.
By seeking to sell the domain name to the Complainant, Mr. Kotabi, the person who appears to ultimately be in control of the <goldlinegroup.com> domain name, is using the domain name in an intentional attempt to profit, for commercial gain, by the registration of the domain name, and by creating a likelihood of confusion with the Complainantís various trade-marks and its existing goldline.net website. Moreover, Mr. Kotabi, through a series of shell registrants including the Respondent, is using <goldlinegroup.com> to deliberately disrupt the business activities of the Complainant and damage its good will and business reputation by using the domain name simply to provide linkages to various hardcore pornographic websites. Neither the Respondent, nor any other prior shell registrant of the goldlinegroup.com domain name, nor Mr. Kotabi, has at any time had a legitimate offering of goods or services associated with the Gold Line name posted on the "goldlinegroup.com" website. The Respondent is using the Complainantís marks to draw visitors to its domain name, although the domain name bears no relationship to its business, and visitors are initially led to believe that the Complainant is the source of or affiliated with the Respondentís website. There has been, and can be no legitimate non-commercial use or fair use of the domain name <goldlinegroup.com> by the Respondent. It is evident that Mr. Kotabi, through the Respondent, is attempting to extort a substantial amount of money from the Complainant in exchange for the domain name registration.
The Complainant requests that the domain name be transferred to the Complainant.
No Response to the Complaint was received from the Respondent within the initially specified period. However, after receiving the "Notification of Respondent Default", it sent an email saying:
"Thanks for your mail please continue we have look at the dispute. We believe the board can do proper response. There is no trade mark for goldlinegroup.com nor it makes sense what the Complaint has claim." [sic].
C. Supplementary filing by Complainant
In its Supplemental filing, the Complainant submitted the following allegations as "New Information":
After the Complaint was filed and for a period of a few weeks in or about December, 2002, Mr. Kotabi (or the Respondent) disabled the links to pornographic websites from "goldlinegroup.com". Recently, however, the links to pornographic websites reappeared. Most recently, the website has now begun advertising a new website called <goldlinesexclub.com>, which was apparently to become operable on January 15, 2003. A screen shot of the first page of the <goldlinegroup.com >website (as of January 14, 2003), advertising <goldlinesexclub.com>, was attached in evidence.
It is alleged that Mr. Kotabi wishes to continue his bad faith use of Gold Lineís trade-marks. The <goldlinesexclub.com> domain name is registered to his company, Ad Dreamer Inc. A copy of the Whois search report on this domain name confirming that it is registered to Ad Dreamer Inc. dated January 13, 2003, was submitted in evidence. The registration of another pornographic website containing the Complainantís trademark "Gold Line" clearly demonstrates that Mr. Kotabi is continuing his bad faith and predatory attempt to extract money from the Complainant and damage the Complainantís business reputation.
In accordance with paragraph 4(b)(i) of the UDRP, and for the reasons described herein and in the Complaint, the Complainant therefore requests the Panel appointed in this proceeding to issue a decision that the domain name <goldlinesexclub.com> also be transferred to the Complainant.
D. Respondentís Response
The Respondent sent an email stating:
"i have got and email regarding goldlinesexclub.com
please provide this to person in charge."
And went on to list a number of other domains incorporating "goldline", including:
"www.gold-line.com/; www.goldline.co.uk/; www.goldline.on.ca"/"; "www.goldline.fi/; www.goldlinecontrols.com"/; "www.goldlinebrakes.com/"; "www.abacusline.demon.co.uk/UserGrps/Gold.html; www.goldline.co.nz/"; "www.goldlineinternationalinc.com/; www.goldlineproducts.com/"; "www.hytech-goldline.com/";
all of which appeared to be for different businesses in various countries, none being the Complainant, but the email also included the following links which clearly do relate to the Complainant:
Gold Line Phone Card
Web Camera, ©2002 Group of Gold Line.
Gold Line Phone Card
Best Rates, ©2002 Group of Gold Line.
[ More results from www.goldline.net ]
"the complaint has claim that own the trade mark of goldline. we only think
that is funny. we only wonder" [sic].
It subsequently confirmed it had "No further response".
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested 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 fact that the Respondent had not initially provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
In the present case, it is also necessary to consider the Complainantís request in its Supplementary filing for the Panel also to rule on <goldlinesexclub.com> as well as <goldlinegroup.com>.
As stated in its interim Procedural Order, the Panel declined this request (having regard in particular to the provisions of Rule 3(c) of the Policy). Rule 3(c) allows for consolidation of complaints in relation to more than one domain name, "provided that the domain names are registered by the same domain-name holder." Whilst the evidence in this case strongly suggests that the same party is ultimately in control of both domains, the WHOIS records show different nominal registrant details and the original Complaint did not include <goldlinesexclub.com>. The Panel therefore considers that more evidence would be required in relation to this latter domain name and the appropriate course must be for the Complainant to file a new complaint with such detailed evidence to support a claim for transfer of <goldlinesexclub.com> if desired.
This Decision consequently relates only to <goldlinegroup.com>.
Similarity and existence of rights in the specified trademark:
In the present case, the Complainants claim unregistered trade mark rights in Gold Line and Group of Gold Line/Gold Line Group. The domain name at issue is <goldlinegroup.com>. The distinctive element of the domain name is essentially identical to the trade mark claimed by the Complainant.
If the Complainantís mark(s) were registered trade marks, in force and not subject to any opposition or revocation action, then it would also be readily possible to conclude that the Complainant has relevant rights in the mark which would be protectable under the Policy. However, in this case the marks are not yet registered.
The Panelist considers it settled interpretation that the reference to "rights" in Paragraph 4(a)(i) of the Policy includes both registered and unregistered rights (this issue has been previously addressed in various other cases). In the case of an unregistered mark, however, there can be no presumption of entitlement to rights under law and the onus must be on a Complainant to provide convincing evidence that it is entitled to claim such rights.
The evidence which may be required to support a claim to protection for these purposes does not necessarily need to be substantial - for example, it may be sufficient to establish a significant local rather than a national reputation in such a mark. Nonetheless, the Panelist considers that it requires more than mere assertion to justify any claim to proprietary rights in an unregistered mark.
The Panelist also notes that the Respondent did specifically challenge the Complainantís claim to trade mark rights in Gold Line, albeit only by considering the claim as "funny" and by listing other apparently legitimate users of "goldline" in various domain names.
In this case, however, the Complainant has made strong assertions with respect to their ownership of rights in the Gold Line name in particular and to the existence of such rights in relation to telephone calling cards at least in Canada and the US and provided substantial evidence (unchallenged by the Respondent) to support such a claim. Although the Respondent may find it "funny" it is not unreasonable for the Complainant to assert rights in these circumstances. The Panelist is aware that such an entitlement to rights in an unregistered trade-mark may be recognised under the Canadian Trade-Marks Act R.S.C. 1985. It is also irrelevant whether or not other parties may also have legitimate rights to use "goldline" in other countries or for other goods and services. That does not preclude the Complainant from having and exercising rights itself in relation to its own use. On the evidence, the Panel is satisfied that the Complainant has established relevant common law rights at the very least in the name Gold Line, and also likely in Group of Gold Line, in Canada sufficient to support a claim under the Policy.
The Panel also agrees with the Complainantís submission that the addition of "group" to "goldline" in the Domain Name does not make any material difference, even if the Complainant were considered only to have established rights in Gold Line alone.
Consequently, the Panel concludes that the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and that the Complainant has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
The Complainantís case for a determination on the issues of Legitimate rights and Bad Faith rests substantially on the assertion that the present nominal registrant, SquareBox Entertainment, is in fact nothing more than the latest front for operations conducted under the effective control of Mr. Kotabi.
As noted above, the Complainant has provided detailed and compelling evidence to support this contention. It is also notable that the Respondent has made no attempt whatever to deny or rebut the Complainantís assertions in this respect. If SquareBox Entertainment really had become registrant of the domain name in good faith then the Panel considers it incredible that it would not have attempted to provide a detailed Response to the assertions made.
Particularly telling, however, is the evidence of DotRegistrar, referred to above, confirming that despite apparent change of registrant the domain name had "not been moved from the original account". It is also possible to establish, for example, from simple online checks that "addreamer.com" and "goldlinegroup.com" remain hosted on the same server.
The Panel therefore considers that the Complainantís assertions regarding ultimate control of the domain name are in all probability correct. It follows that the Complainant's unchallenged submissions (as summarised at 5 above) that the Respondent has no legitimate rights in the domain name at issue are also accepted.
Consequently, the requirements of Paragraph 4(a)(ii) of the Policy are met.
Similarly, as all the evidence makes manifestly clear, whether the relevant date of registration is taken as November 7, 2002, (when SquareBox Entertainment nominally became registrant) or July 5, 2002, (when Mr. Kotabi evidently originally registered the domain name) the registration was made or acquired in bad faith. The intention of the original registrant and subsequent nominees was explicitly to seek disproportionate, if not extortionate, recompense from the Complainant, as the legitimate owners of rights in the Gold Line mark, for transfer of the domain name. The present nominal Respondent then "acquired" the domain name through what the evidence most strongly suggests was a sham transfer, in an attempt to evade judgment which would have inevitably followed against the previous shell registrants. The assertion that this was a bad faith sham transfer has not been denied. The Panel concludes that Respondent's motives in nominally obtaining the domain name may properly be considered as "bad-faith" registration.
It is similarly plain from the preponderance of evidence submitted by the Complainant, which is unchallenged by the Respondent, that the use of the domain name by SquareBox Entertainment and previous nominee registrants has been intentionally directed at damaging the reputation of the Complainant in a deliberately offensive manner.
For the purposes of the Policy, the Panel has no difficulty concluding that such use may also fairly be categorised as in "bad faith".
The Panelist therefore concludes that the requirements of Paragraph 4(a)(iii) of the Policy are also satisfied.
For the reasons given in Section 6 above, the Panelist decides that the Complainant succeeds with its Complaint and orders that the domain name <goldlinegroup.com> be transferred to the Complainant.
Dated: January 29, 2003