WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grow.net, Inc. v. Walter Long d/b/a Domains.Com d/b/a smile.com
Case No. D2001-0902
1. The Parties
The Complainant is Grow.net, Inc., a Delaware corporation, with its principal place of business at 386 Park Avenue South, Suite 1605, New York, New York 10016, United States of America ("Complainant"). The Complainant is represented by Robert W. Lehrburger of Patterson, Belknap, Webb & Tyler, LLP of 1133 Avenue of the Americas, New York, New York 10036-6710, United States of America.
The Respondent is smile.com, an entity with a mailing address of P.O. Box 390, Newburyport, Massachusetts 01950, United States of America ("Respondent"). The administrative contact for Respondent is firstname.lastname@example.org of the same mailing address as Respondent. On September 30, 2001, The WHOIS Search Results were changed to reflect Walter Long as registrant of <grow.com> with a mailing address of 265 Water Street, Newburyport, Massachusetts 01950, United States of America. References in the Complaint to the Respondent refer to Domains.com, smile.com and Mr. Long.
2. The Domain Name and Registrar
The disputed domain name is <grow.com> (the "Disputed Domain Name"), registered with Tucows Inc. of 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada (the "Registrar") on May 21, 1997.
3. Procedural History
Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 13, 2001.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with paragraph 4(a) of the Rules, and paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.
A request for registrar verification was issued by the Center on July 18, 2001, and July 23, 2001, and a response by the Registrar was received by the Center on July 26, 2001.
A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Respondent by email and courier on July 27, 2001. The Panel has seen the courier receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.
No Response was received by the Center from Respondent on or before August 16, 2001, which was the last date for Respondent to submit a Response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A Notification of Respondent Default (the "Default Notification") was communicated by the Center to Respondent by email on August 17, 2001. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.
Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a Response on time, Respondent waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panelist and dated September 17, 2001, the Panel was duly appointed by the Center on September 25, 2001. A Notification of Appointment of the Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on September 25, 2001. There have been no further submissions thereafter. The date scheduled for the issuance of the Panelís decision was October 9, 2001. The Panel has requested additional time to review the information and the new decision date is October 19, 2001.
4. Factual Background
Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based on the complaint."
Since Respondent failed to submit a Response before the date of this decision, and in the absence of any exceptional circumstances, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on the following undisputed facts:
(i) Complainant is a company that was formed to help educators, parents and students achieve fundamental improvements in student performance in math and reading. Complainant has created The Grow Network (reports which translate studentsí standardized test results into useful information for teachers, parents and the students) as a base to develop both online and printed products to help drive student performance gains on an individual and collective basis in math and reading.
(ii) Complainant filed an intent-to-use application with the United States Patent and Trademark Office to register the mark GROW for educational services on July 25, 2000. The application is still pending and the Serial Number is 76/096,485. Complainant has been using the GROW trademark on its products and services continuously since at least April 2000.
(iii) Complainant has prominently displayed the GROW trademark on the products and services that it sells, including printed materials and its website. Because Respondent had already registered the domain name <grow.com>, Complainant registered other domain names corresponding to the GROW mark, including <grow.net>.
(iv) Respondent registered the domain name <grow.com> on May 21, 1997.
(v) Complainant contacted Respondent seeking to acquire the Disputed Domain Name in October 2000, and shortly thereafter, Respondent started using the Domain Name in connection with a sex-related chat room.
(vi) On October 2, 2000, one of Complainantís representatives emailed Respondent and offered $10,000 for the Disputed Domain Name. Respondent refused the offer. On January 19, 2001, another representative of Complainant emailed Mr. Friend, a representative of Domains.com and offered $25,000 for the Disputed Domain Name. Mr. Friend responded stating that he didnít think anything under $50,000 was going to be considered. On January 26, 2001, one of Complainantís representatives emailed Mr. Friend stating that they would be willing to pay up to $50,000 for the Disputed Domain Name. On February 1, 2001, Respondent responded to the email stating that he was the owner of <grow.com> and it still was not for sale. A representative for Complainant emailed Respondent and stated he would be willing to consider a higher amount within reason. Respondent responded to the email by stating "[i]ím just not looking to sell it anywhere near that price range at this time."
(vii) On March 22, 2001, Complainant sent a protest letter to the Respondent stating Complainant owned the GROW mark and demanding that Respondent surrender the Disputed Domain Name to Complainant. Complainant received no response to the protest letter.
5. Partiesí Contentions
(i) The Disputed Domain Name is identical or confusingly similar to Complainantís name and pending trademark. Complainant sent a protest letter to the Respondent by e-mail and certified mail notifying Respondent that Complainant owned the GROW mark and demanding that Respondent surrender the Disputed Domain Name because it is confusingly similar to Complainantís GROW trademark.
The Disputed Domain Name fully incorporates the GROW trademark. Because of the confusing similarities between Complainantís trademark and the Disputed Domain Name, students, parents and teachers are likely to go to the website, see the sex chat room available there, and improperly associate that sex-related site with the GROW trademark, which is used for educational purposes.
(ii) Respondent does not have any rights or legitimate interest in the Disputed Domain Name. Respondent cannot show under Policy Paragraph 4(c)(i) that it is using the Domain Name to make a bona fide offering of goods and services. When Respondent registered the Disputed Domain Name, it publicly and directly offered the Domain Name for sale. Respondent did not connect the Disputed Domain Name to any offering of goods or services. After Complainant expressed an interest in acquiring the Disputed Domain Name, Respondent linked the Domain Name to a sex chat room without offering any bona fide goods or services. Users enter the site for free, and the site contains no sponsorships, advertisements, or other revenue-generating features. The only role of the site is to serve as a sex chat room that mirrors the same content available at other domain names owned by Respondent.
Under Policy Paragraph 4(c)(ii), Respondent has no basis to assert that it has been commonly known by the Domain Name. Respondent has been known either as Domains.com or smile.com and its alter ego is known by the personal name of Walter Long. Respondent uses several different domain names to link to the same site, thereby undermining any possible connection between the Domain Name and the site to which it is linked.
(iii) The Disputed Domain Name has been registered and is being used by Respondent in bad faith. Respondent did not start using the Disputed Domain Name until Complainant contacted him seeking to acquire the Disputed Domain Name. Respondent now uses the Disputed Domain Name in connection with a sex-related chat room and has no purpose other than enabling the Disputed Domain Name to be linked to an "active" site. The content found at www.grow.com merely mirrors the sex-related chat room content available through other domain names, including www.smile.com, www.man.com, www.sic.com, and www.monstruck.net. The Respondent is the owner and registrant for each of these other domain names. The printouts at each site have identical material. In early May 2001, with notice of Complainantís protest of Respondentís use of the Disputed Domain Name, Respondent renewed its registration of the Disputed Domain Name. This was done in bad faith.
The Respondent is a repeat domain name cybersquatter who previously has been found to have violated the Uniform Domain Name Dispute Resolution Policy. Respondent has linked the Domain Name embodying Complainantís trademark to a sex-related chat room, which can also be accessed by several other domain names registered by Respondent.
Respondent registered the Domain Name for the purpose of selling the name for valuable consideration in excess of the out-of-pocket expenses directly related to the Disputed Domain Name. Respondent's bad faith negotiations for the sale of the Domain Name and his attempt to extort large sums of money from Complainant is evidence of bad faith. From the time of initial registration in 1997 through late 2000, Respondent stated on the web page associated with the Domain Name that Domains.com owned the Domain Name. Because Domains.com is a company that specializes in the sale of domain names, it is evident that Respondent registered the Domain Name only to offer it for sale.
Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.
6. Discussion and Findings
(i) The Disputed Domain Name is identical to the trademark in which Complainant has rights.
The Disputed Domain Name is identical or confusingly similar in its functional part to Complainantís pending trademark GROW. Complainant appears to have trademark rights in the United States that date back to at least April 2000. Respondent registered the Disputed Domain Name in May 1997. The Policy under Paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name. This may be relevant to the assessment of bad faith, but the issue under this element is whether the Complainant has rights as of the time of the Complaint.
Thus, the Panel finds for the Complainant on the first element, that Respondentís domain name is identical or confusingly similar to the service mark in which the Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that the Complainant has failed to establish that the Respondent does not have legitimate rights or interests in the Disputed Domain Name. The Complainant alleges that the Respondent has failed to demonstrate the existence of the use, or preparation to use, the Disputed Domain Name in connection with a bona fide offering of goods or services and the Respondent is not commonly known by the Domain Name. While there is no evidence to challenge Complainantís assertion that the Disputed Domain Name was not in use and was for sale until Complainant contacted Respondent seeking to acquire the Domain Name, and shortly thereafter, the Disputed Domain Name was linked to a sex-related chat room, the question, however, is whether Respondent has used the Disputed Domain Name with a bona fide offering of goods or services.
In Drew Bernstein and Kill City d/b/a Lip Service v. Action, WIPO Case No. D2000-0706, the respondent adopted the domain name <lipservice.com> for a web page that provided hyperlinks to adult entertainment sites. The Panel found that the Complainant had failed to prove a lack of legitimate interest because the term "lip service" used in the Respondentís Domain Name is susceptible of a meaning that is arguably "apt for the adult entertainment advertising engaged in by Respondent."
In view of the evidence showing that Respondent is using the Domain Name in connection with web sites providing links to sex-related chat rooms, that such chat rooms need not be commercial in order to be bona fide services within the adult entertainment industry, and because the Disputed Domain Name <grow.com> is susceptible of a meaning that is arguably apt for the services offered, the Panel finds that the Complainant has failed to meet the burden of proof as to Respondentís lack of rights or legitimate interest in the Disputed Domain Name under Paragraph 4(a)(ii) of the Policy. While the Panel appreciate Complainants concerns related to the use of the Disputed Domain Name for adult services, especially when its trademarked business is related to children, this alone is an insufficient basis for denying Respondent of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds untenable Complainantís contention that under Paragraph 4(b)(i) of the Uniform Policy, Respondent registered the Disputed Domain Name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [their] documented out-of-pocket costs directly related to the domain name."
There is no evidence that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant or a competitor, to disrupt Complainantís business, to prevent Complainant from registering its service mark or to confuse consumers. The Complainant furnished written evidence of a series of email messages purporting to indicate Respondentís efforts to extort money from Complainant, yet Complainant initiated the negotiations by expressing its interest in purchasing the Disputed Domain Name, and Respondent has repeatedly refused Complainantís not insignificant offers.
Even in the absence of a Response from Respondent, the Complainant has not made its case. There is also little evidence that Respondent is a cybersquatter. The Disputed Domain Name was registered in May 1997, and the Complainant did not began using the GROW trademark in its business until April 2000. As a result it is inconceivable that Respondent knew of the Complainant at the time of the domain name registration, and therefore registered the domain name in bad faith. The Complainant contacted Respondent in an effort to get him to sell the Disputed Domain Name, not vice versa.
The Panel therefore finds that Complainant has not established that the Disputed Domain Name was registered and is being used in bad faith.
Although the Disputed Domain Name is identical to a pending trademark in which the Complainant may have rights, Complainant has not proven that Respondent lacks rights to or a legitimate interest in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith. Accordingly, the Panel concludes that the Disputed Domain Name should not be transferred to the Complainant.
Timothy D. Casey
Dated: October 22, 2001