WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marc Brown v. Legal+Services aka Joseph Tambert
Case No. DBIZ2002-00062
1. The Parties
The Complainant is Marc Brown, with address in Hingham Harbor, Massachusetts, United States of America.
The Respondent is Legal+Services, with address in New Orleans, Louisiana, United States of America, aka Joseph Tambert, with address in New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <arthur.biz>.
The registrar of the disputed domain name is Intercosmos Media Group dba DirectNIC.com, with business address in New Orleans, Louisiana, United States of America.
3. Procedural History
(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2002, and received in hardcopy on April 30, 2002. Following notice from the Center of formal filing deficiencies, Complainant ultimately filed a second amended complaint received by the Center on June 11, 2002. The Center verified that the second amended complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules"). Complainant paid the requisite filing fees.
(b) On June 13, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was July 3, 2002. The courier transmittal was returned because Respondent was not at the address indicated in its registration data, and had provided no forwarding information.
(c) On July 9, 2002, the Center transmitted by e-mail notification to Respondent of its default in responding to the complaint.
(d) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on August 5, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter and notified the parties of the appointment. The Center advised the Panel that absent exceptional circumstances it would be required to forward its decision to the Center by August 19, 2002.
(e) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.
4. Factual Background
Complainant has registered the word trademark and service mark "ARTHUR" on the Principal Register of the United States Patent and Trademark Office (USPTO). Complainant holds twelve such word trademark or service mark registrations in various product classes, including Reg. No. 1,879,923, dated Feb. 21, 1995, in International Class (IC) 28, covering "toys", as further specified; Reg. No. 1,919,340, dated September 19, 1995, in IC 9, covering "computer software on CD ROMs and audio tapes featuring childrenís stories about an aardvark"; Reg. No. 2,004,067, dated October 1, 1996, in IC 16, covering childrenís storybooks about an aardvark, and; Reg. No. 2,245,919, dated May 18, 1999, in IC 41, covering "entertainment in the nature of an ongoing series of television programs". Complainant has also registered a word and design mark incorporating "ARTHUR" at the USPTO in several product classes. (Complaint, para. 13 and Exhibit 4)
Complainant has sold over 52 million books in the "ARTHUR" series, as well as more than four (4) million "ARTHUR" series videos. The "ARTHUR" animated television program is among the most-watched shows in the United States among viewers in its target age range. (Id., para. 2)
According to a .BIZ Registry (NeuLevel, Inc.) WHOIS database report downloaded by the Center, Respondent "Legal+Services", with e-mail address at <firstname.lastname@example.org>, and with physical address in New Orleans, Louisiana, United States of America, registered the disputed domain name <arthur.biz> on March 27, 2002. This WHOIS registration data indicates that the Administrative Contact for the disputed domain name is "Tambert+Joseph", with e-mail address at "email@example.com", and with physical address in New York, New York, United States of America. The registrarís verification of registration data, dated May 21, 2002, provided to the Center indicates that "Joseph Tambert" of the organization "Super Domain Delivery" in New York is registrant of the disputed domain name. The Center has transmitted e-mail notifications in this proceeding to "Legal+Services" and to "Joseph Tambert" at their indicated addresses.
According to Saegis WHOIS printouts furnished by Complainant, "Joseph Tambert" as Administrative Contact and "Super Domain Sales" as registrant (at the same New York address as that provided for Joseph Tambert in this proceeding) hold registrations for numerous domain names in the .com gTLD. Complaint, para. 15 and Exhibit 5. One such domain name "http://www.bmeson.com" is used to address a commercial pornographic website.
In an earlier administrative proceeding decided by this panelist under the STOP (not involving Complainant), Respondent was found to be the registrant of a domain name which addressed a pornographic commercial website (Dominion Resources, Inc. v. Legal Services, WIPO Case No. DBIZ2002-00122 (July 15, 2002)). In that proceeding, there was substantial evidence that the contact information provided by Respondent (which is the same contact information provided for the domain name <arthur.biz>) was false or misleading.
The .biz Registration Agreement incorporates the STOP and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, Intercosmos Media Group dba DirectNIC.com, Respondent accepted the .biz Registration Agreement. In doing so, Respondent consented to be bound by the STOP and STOP Rules. The STOP and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which the Center is one. This Panel is appointed by the Center decide the complaint under the STOP pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant asserts that it has rights in the trademark and service mark "ARTHUR" based on use in commerce in the United States and as evidenced by registration at the USPTO (see Factual Background, supra).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent has not been authorized by it to use its mark, has not been commonly known by the domain name, and that the domain name is so obviously connected to Complainant that Respondentís use of it suggests bad faith.
Complainant alleges that Respondent registered the disputed domain name in bad faith because it did so primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or its competitor for valuable consideration in excess of its out of pocket costs directly related to the name. Complainant asserts that registration by Respondentís Administrative Contact of nineteen domain names in the.com gTLD, only five of which are used in connection with active websites, evidences its intention to sell the disputed domain name.
Complainant requests the Panel to direct that the disputed domain be transferred to it.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The STOP is a set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz gTLD, regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) that has been applied by Administrative Panels in determining numerous disputes. However, the STOP differs from the UDRP in certain material respects regarding comparison of the mark and the domain name, the enumerated criteria for establishing rights or legitimate interests, the enumerated elements necessary to demonstrate bad faith and in the types of remedy available. The Panel will make findings under the STOP necessary to render a determination in this dispute.
In order to establish the right to transfer of a name from a respondent, a complainant under the STOP must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical 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 disputed domain name has been registered or is being used in bad faith.
The complainant must prove that each of these three elements is present.
As a preliminary matter, the Panel notes that there is some discrepancy between the records maintained in the NeuLevel WHOIS database and the records of the domain name registrar, Intercosmos Marketing Group dba DirectNIC. The NeuLevel database indicates that the registrant is "Legal+Services", and that the Administrative Contact is "Tambert+Joseph". The Intercosmos Marketing Group dba DirectNIC verification response to the Center indicates that "Joseph Tambert" is the registrant. The Center has transmitted notifications to both "Legal+Services" and "Joseph Tambert". For purposes of this proceeding, Legal+Services and Joseph Tambert are treated as the Respondent, and the decision of the Panel will be directed to both.
The Center transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully. The courier mailing was not successfully delivered because Respondent was not at the address indicated in its registration data, and had provided no forwarding information. The Panel notes that in a prior Administrative Proceeding involving this Respondent, substantial investigation by the complainant was unsuccessful in locating Respondentís asserted place of business. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
Complainant has submitted substantial evidence of its rights in the word trademark and service mark "ARTHUR", including registration on the Principal Register at the USPTO (see Factual Background, supra). The Panel determines that Complainant has rights in the trademark and service mark "ARTHUR" and that the disputed domain name, <arthur.biz>, and the "ARTHUR" mark are identical within the meaning of the STOP.
The STOP listing of elements that will establish rights or legitimate interests in a disputed domain name, though not exhaustive, is different than the listing of the UDRP. Paragraph 4(c) of the STOP provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [respondentís] rights or legitimate interests for purposes of paragraph 4(a)(ii)":
i. Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
ii. Before any notice to respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
iii. Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights.
Paragraph 4(c) of the STOP does not enumerate the legitimate noncommercial or fair use element of paragraph 4(c)(iii) of the UDRP. On the other hand, the STOP adds an element that the respondent may demonstrate that it owns a trade or service mark that is identical to the domain name.
Respondent has not replied to the complaint, and has offered no basis upon which the Panel might conclude that it has established rights or legitimate interests in the disputed domain name. Respondent has not established that it owns or is beneficiary of a mark identical to the disputed domain name, that it has made preparations to use the name for a bona fide offering of goods or services, or that it has been commonly known by the domain name.
Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The STOP includes a non-exhaustive list of circumstances that will demonstrate bad faith registration or use of a disputed domain name:
"(i) Circumstances indicating that [respondent has] registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the 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 the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on your web site or location." (para. 4(b), STOP)
By operation of the NeuLevel start up procedure for the distribution of .biz domain names, Respondent was notified of Complainantís claim to rights in the "ARTHUR" mark prior to completing its registration of the disputed domain name.
The word "ARTHUR" is a common given name and family name in the English language, and persons other than Complainant might have a right or legitimate interest in using that name in a .biz gTLD domain name. Paragraph 4(c)(iii) of the STOP makes specific provision for this possibility. A person other than Complainant might have registered or used the disputed domain name in good faith in circumstances different than those present in this proceeding.
Complainantís trademark and service mark is used in connection with a well-known series of books and a television series directed to an audience of children. Respondent has registered numerous domain names, some of which are used to direct Internet users to commercial pornographic websites. Respondent has provided inaccurate contact information in its registration of the disputed domain name.
Through its pattern of conduct, Respondent evidences that by registering the domain name <arthur.biz> it intends to take advantage of the rights of Complainant in its mark for commercial gain by confusing Internet users as to Complainantís affiliation with Respondentís website. Complainant uses its mark in connection with advertising and distributing materials to children. If Respondent was permitted to maintain its registration of the disputed domain name, Complainant would be under considerable pressure to purchase that registration to avoid Respondentís use of the domain name to direct Internet users to a commercial pornographic website. In the totality of these circumstances, the Panel finds that Respondent registered the disputed domain name in bad faith within the meaning of paragraph 4(b) of the STOP.
Complainant has demonstrated that Respondent registered the disputed domain name that is identical to a trademark and service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed name, and that Respondent has acted in bad faith, all within the meaning of paragraph 4(a) of the STOP. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
The Panel determines that Complainant, Marc Brown, has met the burden of proving that Respondent, Legal+Services (also known as Joseph Tambert), has registered the disputed domain name, <arthur.biz>, identical to a trademark and service mark in which Complainant has rights, that Respondent has not established rights or legitimate interests in that domain name, and that Respondent registered the disputed domain name in bad faith, all within the meaning of paragraph 4(a) of the STOP. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott
Dated: August 16, 2002
1. The Panel recognizes that Respondent has not yet used the disputed domain name in connection with an active Internet website. The operation of the start-up .biz domain name distribution system effectively precludes active use pending resolution of an administrative proceeding such as this one. However, paragraph 4(b) of the STOP addresses the circumstances of registration, and the list of bad faith elements is not exhaustive. Complainant has established a strong presumption of Respondent's intention to use the disputed domain name in bad faith, and Respondent has failed to rebut that presumption.