WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dominion Resources, Inc. v. Legal Services
Case No. DBIZ2002-00122
1. The Parties
The Complainant is Dominion Resources, Inc., a corporation organized in the Commonwealth of Virginia, United States of America, with place of business in Richmond, Virginia, United States of America.
The Respondent is Legal Services, with address in New Orleans, Louisiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <dominion.biz>.
The registrar of the disputed domain name is DirectNIC, 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 Policy") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, and received in hardcopy on April 30, 2002. The Center verified that the 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 ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
(b) On May 24, 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 June 13, 2002.
(c) On June 19, 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 July 4, 2002, the Center appointed the undersigned sole panelist as the Administrative 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 July 18, 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
The United States Patent and Trademark Office (USPTO) has issued to Complainant a notice of allowance for registration on the Principal Register, including acceptance of its statement of use, for the word service mark "DOMINION" standing alone, Ser. No. 75922243, filing date February 18, 2000, in International Classes 35 (covering "business consultation in the field of efficient energy use", as further specified), 36 (covering "brokerage of electricity and natural gas"), 37 (covering, inter alia, construction of energy-related facilities), 39 (covering "public utility services", as further specified), and 40 (covering, inter alia, computer programming services and energy systems analysis for others). The registration for "DOMINION" will issue in due course. Complainant has used the "DOMINION" service mark in commerce. (Complaint, para. 14 and Annexes C-E, and Panel visit to USPTO TARR database of July 15, 2002, regarding status of application.)
Complainant is the holder of registrations on the Principal Register at the USPTO for a number of service marks combining the word "DOMINION" with other terms (and designs), including "RESOURCES", "ENERGY", "ENERGY INDEX", "ENERGY CLEARINGHOUSE", "GENERATION", "EVANTAGE", "CAPITAL", "DIRECT INVESTMENT" and "DIRECT".
According to a .BIZ Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent "Legal Services" registered the disputed domain name <dominion.biz> on March 27, 2002 (id., Annex 1). Such registration data indicates that the Administrative Contact for the disputed domain name is "Tambert Joseph", with e-mail address at <email@example.com>. The registrarís verification of registration data, dated May 21, 2002, provided to the Center indicates that "Joseph Tambert" is the 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.
A DirectNIC WHOIS database printout for the domain name <homeville.com> lists "Super Domain Delivery" as the registrant, and "Tambert, Joseph" as Administrative and Technical Contact, with the same contact information as provided for the disputed domain name (Complaint, Annex H).
A DirectNIC WHOIS database printout for the domain name <orgins.com> lists the registrant "Legal Services", the name of Respondent in this proceeding, at the same address provided for Respondent (in New Orleans, Louisiana). The domain name <orgins.com> is used to address a commercial website that displays pornographic content and includes links to other pornographic websites. (Id., Annexes H-J).
Complainant has made various unsuccessful attempts to contact Respondent in connection with this matter (id., para. 8 & Annex G). Complainant has made various efforts to verify the presence of a legal service related business at the addresses furnished by Respondent in its registration information but has been unable to do so (id,. para. 16). In attempting to reach Respondentís Administrative Contact at the telephone number provided in its registration information, Complainant was advised that the subject telephone number was used by the New York Times.
The .biz Registration Agreement incorporates the STOP Policy 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, DirectNIC, Respondent accepted the .biz Registration Agreement. In doing so, Respondent consented to be bound by the STOP Policy and STOP Rules. The STOP Policy 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 to decide the complaint under the STOP Policy pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant asserts that it has rights in the service mark "DOMINION" based on use in commerce, and evidenced, inter alia, by its acceptance for registration at the USPTO (see Factual Background supra).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered the disputed domain name in bad faith. Based on its investigations, Complainant believes that Respondent is not in the business of providing legal services, as its name would imply. Respondent, "Legal Services", is the registrant of a domain name, <orgin.com>, used to host a website with pornographic content. The Administrative Contact for Respondent is also the Administrative Contact for "Super Domain Delivery" which is the registrant of <homeville.com> which has been used to redirect Internet users to <orgin.com>. Complainant argues that (a) Respondent is in the business of domain name trafficking (based on its connection to "Super Domain Delivery"), and (b) intends to use the disputed domain name to attract Internet users to pornographic websites by using Complainantís mark to attract them.
Respondent has not replied to Complainantís contentions.
6. Discussion and Findings
The STOP Policy 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 Policy 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 Policy 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 Policy 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 Policy 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, DirectNIC. The NeuLevel database indicates that the registrant is "Legal Services", and that the Administrative Contact is "Joseph Tambert". The DirectNIC verification response to WIPO 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, and there is no indication in the file that the courier mailing was not successfully delivered. 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 service mark "DOMINION", including by use in commerce. The USPTO has indicated that all steps necessary for registration of the mark on the Principal Register have been completed, and that formal registration will take place in due course (see Factual Background, supra). The Panel determines that Complainant has rights in the service mark "DOMINION" and that the disputed domain name, <dominion.biz>, and the mark are identical within the meaning of the STOP Policy.
The STOP Policy 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 Policy 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 Policy does not enumerate the legitimate noncommercial or fair use element of paragraph 4(c)(iii) of the UDRP. On the other hand, the STOP Policy 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 Policy 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 Policy)
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 "DOMINION" mark prior to completing its registration of the disputed domain name.
"Dominion" is a noun in the English language used, inter alia, to refer to a domain or to sovereign authority, and it may be assumed that there are potential uses of the word as a domain name that would not interfere with Complainantís rights in its mark (for example, in another line of commerce). Complainant in its complaint has advised of third parties that hold USPTO registrations for the term "DOMINION", and Complainant presumably agrees that third persons might have registered and used the disputed domain name without disturbing its rights in its mark.
Internet users seeking Complainantís services would likely use <dominion.biz> as a logical Internet address. Such users might also use that logical address to find other holders of "DOMINION" trademark or service mark registrations.
Respondent has used the name "Legal Services" in undertaking its registration both for the disputed domain name and for the domain name <orgins.com>. Complainant has provided substantial evidence that Respondent is not a business providing legal services, but instead operates a website or websites displaying pornographic content. In addition, Complainant has provided substantial evidence that Respondent registered the disputed domain name using false contact information.
Through its pattern of conduct, Respondent evidences that by registering the domain name <dominion.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. Respondent registered the disputed domain name in bad faith within the meaning of paragraph 4(b) of the STOP Policy.
Complainant has demonstrated that Respondent registered the disputed domain name that is identical to a trademark 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 Policy. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
The Panel determines that Complainant, Dominion Resources, Inc., has met the burden of proving that Respondent, Legal Services (also known as Joseph Tambert), has registered the disputed domain name, <dominion.biz>, identical to a trademark 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 Policy. The Panel will therefore direct the registrar to transfer the disputed domain name to Complainant.
Frederick M. Abbott
Dated: July 15, 2002
1. This is a substantially different situation than having merely submitted an application for registration. In the present situation, the USPTO has reviewed and commented on the application, approved and published it for opposition, and reviewed and accepted a statement of use. As such, Complainant has demonstrated rights in the mark sufficient to persuade the USPTO to finally approve registration.
2. Merriam-Webster's Online Collegiate Dictionary defines "dominion" as a noun, inter alia, as "domain" and "sovereign authority".
3. 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 Policy 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.