WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Susan Miller v. Eli Media
Case No. D2000-1093
1. The Parties
1641 Third Avenue
New York, NY 10128
Robert C. Harris, Esq.
Meiselman, Farber, Packman & Eberz, P.C.
11 East 44th Street
New York, NY 10017
10 Hakishon Street
Bene Brack, N/A 51203, Israel
Administrative Contact, Technical Contact, Zone Contact, Billing Contact
10 Hakishon Street
Bene Brack 51203
Irit Cohen and Richard Naimer, Granot, Strauss, Adar & Co., Advocates
Technical and Zone Contact
Gibor Sport House
28th Floor, 28 Betzalel Street
Ramat Gan, 52521, Israel
2. The Domain Name And Registrar
The domain name at issue is:
It is registered with:
Network Solutions, Inc. (NSI)
505 Huntmar Park Drive
Herndon, Virginia 20170
United States of America
3. Procedural History
h On August 24, 2000, the Complaint was filed with the WIPO Arbitration and Mediation Center by e-mail (with hard copy received on August 18, 2000). The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.
h On August 24, 2000, the Center acknowledged receipt of the Complaint.
h On August 28, 2000, the Center requested Network Solutions, Inc. (NSI) verification, and received the Registrarís answer to that request on August 21, 2000.
h On August 31, 2000, a formal requirement compliance review was completed pursuant to Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules. On the same date, the Center caused the Notification of Complaint and Commencement of Administrative Proceeding to be served upon the Respondent.
h On September 21, 2000, the Center received an e-mail (with hard copy following on September 22, 2000,) from counsel for the Respondent confirming receipt of the Notification of Complaint and Commencement of Administrative Proceedings. The Respondent requested a 30-day extension to file a Response.
h On the same date, the Center notified the Complainant by e-mail indicating that a request for an extension had been made and seeking comments on such request.
h On September 22, 2000, counsel for the Complainant responded, objecting to the request. On the same date, the WIPO Case Manager informed counsel for the Respondent that the request had been denied and that if, after the Notification of Respondent Default, a Response was submitted, the Administrative Panel, in its sole discretion, would decide whether to consider such Response. The Center then recorded a Notification of Respondentís Default and communicated it to both parties. (Rule 5 of Rules for Uniform Domain Name Dispute Resolution Policy requires the Respondent to submit a response to the Provider addressing the matters contained therein within twenty days of the date of commencement of the administrative proceeding.)
h On October 5, 2000, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence.
h On October 10, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties.
4. Jurisdictional Basis For The Mandatory Administrative Proceeding
Paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph. A copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Annex 1B to the Complaint.
Under Paragraph 4(a) of the ICANN Policy, a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(2) The respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name was registered and is being used in bad faith.
The Administrative Panel finds that the Complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.
5. Factual Background
The Complainant is an astrologer who, according to the Complaint, earns a substantial portion of her livelihood from creating and disseminating material about astrology, most particularly through her ASTROLOGY ZONE website. According to paragraph 13 of the Complaint, the Complainant first used the Service Mark on December 14, 1995, and has since that date used the Mark for that service. Exhibit C to the Complaint is a copy of the United States trademark registration under Reg. No. 2,192,050.
Attached as Exhibits D and E to the Complaint were lists of media appearances and a copy of the cover of the Complainantís forthcoming book on which the Mark ASTROLOGY ZONE® is prominently displayed.
According to paragraph 18 of the Complaint, in order to increase protection for the Complainantís mark, ASTROLOGY ZONE, the complainant registered the following domain names: ASTROLOGYZONE.NET; ASTROLOGY-ZONE.COM; ASTROLOGY-ZONE.NET; THEASTROLOGYZONE.COM; and THEASTROLOGYZONE.NET.
On December 26, 1996, the domain name ASTROLOGYZONE.COM was registered by the Respondent.
6. Partiesí Contentions
A. The Complainant contends that:
The domain name is virtually identical to and clearly confusingly similar to the Complainantís Mark, the only difference between them being that the domain name has no space between the words "Astrology" and "Zone" in conformity with domain name protocol.
She contends further that the Respondent cannot demonstrate or establish any legitimate interest in the domain name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the complainantís mark or any part thereof.
Finally, it is noted that from the date on which the Respondent registered the domain name to the present, it has not operated a Website with the domain name and has made no legitimate use of the domain name.
B. The Respondent contends that:
Although served with notice of the proceeding, after requesting an extension and the request being denied, the Respondent did not file a Response to the Complaint.
7. Discussion And Findings
The Panel is constituted in order to determine whether the Respondentís registration of the domain name at issue, ASTROLOGYZONE.COM complies with the Uniform Domain Name Dispute Resolution Policy (as approved by ICANN on October 24, 1999). As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complainant contends that the domain name at issue is "confusingly similar to a trademark or service mark in which the complainant has rights."
The Panel finds that the Complainant has proved this element. In its view, the domain name ASTROLOGYZONE is virtually identical to and confusingly similar to the Complainantís Mark ASTROLOGY ZONE.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
The Panel agrees that Respondent has no rights or legitimate interests in respect of the domain name. The Complainantís rights and legitimate interests in her Mark, ASTROLOGY ZONE are settled as reflected in the U.S. Service Mark Reg. No. 2,192,050.
Thirdly, the Complainant contends that the domain name has been registered and is being used in bad faith.
The Panel agrees. A review of the evidence filed in support of the Complaint shows that the Respondent has either registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name or has done so in order to prevent the Complainant from using her Mark in a corresponding domain. Notwithstanding requests from the Complainant, the Respondent refused to transfer the domain name to the Complainant and by letter, dated July 31, 2000, its counsel expressed an interest in reaching "an amicable, though equitable, resolution" of the matter and indicated that although the Respondent "had generative plans to supply content services" it "did not do so pending inquiries for the purchase of the said domain".
The Administrative Panel interprets these statements to express an intention to sell the domain name. It follows that under paragraph 4(b)(i) of the ICANN Uniform Domain Name Dispute Resolution Policy, that the domain name was registered in bad faith. The Administrative Panel also considers that the domain name at issue creates a likelihood of confusion with the Complainantís Mark within the meaning of paragraph 4(b)(iv).
At paragraph 25 of the Complaint, the Complainant requested that the Panel issue a decision that the contested domain name be transferred to it, or, in the alternative, that the contested domain name be cancelled and that the Complainant be given advance notice thereof so that it can register the same. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name ASTROLOGYZONE.COM be transferred to the Complainant.
J. C. Thomas
Dated: October 23, 2000