WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Great Scott Broadcasting v. FIFC sa aka Netfisher aka Erik Simmons
Case No. D2003-0473
1. The Parties
The Complainant is Great Scott Broadcasting of Pottstown, Pennsylvania, United States of America, represented by Leventhal, Senter and Lerman, PLLC of United States of America.
The Respondent is the holder of the disputed domain name, currently identified in the registrarís Whois record as FIFC sa of Tallinn, Harju, Estonia. The Complainant contends that this is an alias for Erik Simons of Calgary, Alberta, Canada, also known as or associated with Bernhard Fritsch and/or Netfisher of, Tallinn, Harju , Estonia and/or Greenwich, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wzbhrocks.com> ("the Domain Name") is registered with Tucows Inc., ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on June 18, 2003, and in hard copy on June 20, 2003. The Center transmitted its standard form request for registrar verification to the Registrar by email on June 20, 2003. The Registrar confirmed by email of the same date that it had received a copy of the Complaint; that the Domain Name was registered with it; that the Respondent FIFC sa was the current registrant; that the Domain Name would remain locked during this proceeding, subject to expiry at the end of its registered term on July 8, 2003, and that the registration agreement was in English, incorporated the Uniform Domain Name Dispute Resolution Policy (the "Policy") and included a submission to the jurisdiction of the courts at the location of its principal office. The Registrar also provided the Respondentís contact details, identifying FIFC sa as the registrant, and Bernhard Fritsch as the administrative and technical contacts, and the same postal address in Tallinn, Estonia for all contacts.
The Center verified on June 23, 2003, that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2003. The notification was made by email and by courier to the Estonian address in the Whois contact details and postal addresses for Erik Simons and Netfisher provided in the Complaint. The notification was returned from email@example.com and the postal address for Netfisher, but delivered to the other addresses. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 14, 2003.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 15, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns and operates broadcast radio stations in the North Eastern part of the United States of America, including a station called "WZBH" broadcasting rock and roll music from Georgetown, Delaware. The Complainant has operated this station since 1988.
The Complainant registered the domain names <wzbhrocks.com> (the Domain Name in dispute) and <wzbhrock.com> in May 2000. The Complainant intended to renew only the Domain Name in dispute in May 2002, but owing to an administrative error, <wzbhrock.com> was renewed and <wzbhrocks.com> (the Domain Name in dispute) was allowed to lapse.
The Domain Name in dispute was then registered on July 8, 2002, by a registrant which identified itself as Netfisher of Greenwich, Connecticut. The postal address and telephone number provided by this registrant were false. The administrative contact was identified as Bernhard Fritsch. The Complainantís Counsel determined that the email address provided for Bernhard Fritsch belonged to Mr. Erik Simons of Calgary, Alberta, Canada, and contacted Mr. Simons by telephone on October 1, 2002. Mr. Simons stated that he had registered thousands of domain names. The Complainantís Counsel informed Mr. Simons that he would send a letter setting out the Complainantís claims to the WZBH mark. Immediately following this conversation, the Registrarís Whois database was revised to show the registrant as FIFC of Tallinn, Estonia, but the administrative contact details remained the same.
On November 14, 2002, the Complainantís Counsel wrote to FIFC, Netfisher and Mr. Simons (by mail and, in the case of Mr. Simons, by email) setting out the Complainantís claims. On or about November 15, 2002, Mr. Simons called the Complainantís Counsel, ostensibly on behalf of "his client", to discuss the matter. The Complainantís Counsel inquired about the cost of transferring the Domain Name to the Complainant, stating that the Complainant would consider payment of no more than a few hundred dollars to cover reasonable out-of-pocket expenses. Mr. Simons stated that he would ask "his client".
On November 22, 2002, Mr. Simons sent to the Complainantís Counsel a first email denying the Complainantís allegations and a second email offering to sell the Domain Name for $2000-$2500.
Since September 27, 2002, the Domain Name has been used for a web page referring to pornographic pictures of Britney Spears and containing links to pornographic websites.
Erik Simons and his associates or aliases (including FIFC sa, Netfisher and Bernhard Fritsch) have registered domain names incorporating trademarks belonging to others on a number of previous occasions. These include <wwwnationalenquirer.com> (ordered to be transferred in eResolution decision AF-0134), <loanworks.net> (ordered to be transferred in NAF decision FA0211000133762), <vetricare.com>, <espine.net>, <atkins-diet-diet.com>, <propecia-source.com>, <breast-enlargement-with-grobust.com>, <surpassgum.com> and <cabbage-soup-diet.com>. They also own numerous domain names used to host pornographic websites.
5. Partiesí Contentions
In one of the best prepared complaints which this Panelist has read, the Complainant contends that the Domain Name is identical to the mark WZBH, in which the Complainant has common law rights by virtue of its use and promotion as the name of the radio station for 14 years; that the Respondent has no rights or legitimate interests in respect of the Domain Name, the use of another personís trademark to divert Internet users to pornographic sites being illegitimate; and that the Domain Name was registered and is being used in bad faith to attract Internet users to the registrantís pornographic sites by creating a likelihood of confusion, to prevent the Complainant reflecting its mark and slogan in the Domain Name in accordance with a pattern of such conduct, to disrupt the Complainantís business and/or for the purpose of sale to the Complainant for a consideration in excess of the costs of its registration or acquisition.
As noted above, the Respondent did not file a Response. In his email of November 22, 2002, Mr. Simons stated that the Domain Name was registered by FIFC, a corporation in the Baltic States, in good faith; that "FIFC has absolutely no history of taking part in the act of Ďdomain squattingí"; that the Domain Name had not been offered for sale; that paragraph 4(b)(ii) of the Policy did not apply since the Complainantís mark was not internationally known; that paragraphs 4(b)(iii) and (iv) of the Policy did not apply since FIFC was not engaged in broadcasting and confusion was unlikely; that the website was the fan site of an artist with no direct links to hardcore pornography and no related advertising or sponsorship deals; that there was no use of "WZBH" in any metatags; that the vast majority of users reached the site through searching on other terms; that the Respondent was outside the jurisdiction of the US courts; and that the Complainant was attempting to take a domain name registered in good faith and used for a website in relation to which the Respondent had expended resources.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove:
A. that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is being used in bad faith.
Each of these requirements will be considered in turn.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Respondent has common law rights in the mark WZBH by virtue of its distinctive character and its use and promotion as the name of the Complainantís radio station. The Panel further considers that the Domain Name is confusingly similar to this mark, since it differs only in the gTLD suffix and the word "rocks" which is descriptive in relation to the activity carried on under the mark. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the evidence that Netfisher, Bernhard Fritsch and FIFC sa are all aliases or agents of Mr. Erik Simons. In the remainder of this decision, the Panel will refer to them collectively as "Mr. Simons", and this is to be taken as a reference to the Respondent.
The Panel infers from the evident experience of Mr. Simons in relation to domain names that he registered the Domain Name in the knowledge that it had previously been registered by another person whose registration had recently lapsed. Even if Mr. Simons did not know that the previous registrant was the Complainant and had rights in the mark WZBH, he would have discovered this by making reasonable inquiries. He was therefore put on notice of the Complainantís rights and the risk of confusion. His exploitation of the Domain Name for a web page directing Internet users to pornographic websites, without regard for the Complainantís rights, cannot be regarded as bona fide, legitimate or fair or giving rise to any legitimate interest in the Domain Name within the meaning of the Policy.
There is no other basis on which Mr. Simons could claim any right or legitimate interest in the Domain Name. The Panel finds that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the balance of probability that Mr. Simons registered the Domain Name and used it in relation to pornographic websites primarily for the purpose of persuading the previous registrant, i.e. the Complainant, to buy it back for valuable consideration in excess of the cost of registration. The Panel so infers from the facts that Mr. Simons had no other reason for registering and using this unusual Domain Name, and, when challenged, he offered to sell it to the Complainant for $2000 Ė $2500.
The Panel likewise concludes that, to this end, Mr. Simons registered the Domain Name in order to prevent the Complainant from re-registering it. The Panel also finds that Mr. Simons has engaged in a pattern of conduct of registering domain names in order to prevent the owners of trademarks from reflecting them in corresponding domain names unless they pay him.
The Panel further finds that Mr. Simons intended to disrupt the business of the Complainant by registering the Domain Name and using it for pornographic material with the aim of persuading the Complainant to pay to recover it.
Finally, the Panel considers that Mr. Simons has attempted by his use of the Domain Name to attract Internet users to his pornographic websites by creating a likelihood of confusion with the Complainant. The Panel considers that there is a real risk of confusion, particularly as the web pages presented at the Domain Name have referred specifically to pornographic pictures of the well-known pop star Britney Spears. It is not clear whether Mr. Simons receives commercial benefits through the pornographic websites in themselves or by obtaining information about Internet users who access them, or whether the only "commercial gain" is the prospect of payment for the Domain Name. Either way the exploitation of the confusion with the Complainant by the use of the Domain Name constitutes bad faith for the purposes of the Policy.
The Panel considers that all of the indications of bad faith identified in paragraph 4(b) of the Policy are present in this case. The false contact details in the registration and the false assertions in Mr. Simonsí first letter of November 22, 2002 (for example, that the Domain Name was registered by FIFC, that FIFC had no history of involvement in cybersquatting, and that the website at the Domain Name was a "fan site"), are further evidence of bad faith. The Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.
It is clearly appropriate that the Domain Name should be transferred to the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <wzbhrocks.com>, be transferred to the Complainant.
Dated: July 18, 2003