[Indexed as:
Ellenbogen v. Pearson]
[Indexed as:
MUSICWEB.COM]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. WIPO
D00-0001
Commenced:
9 December 1999
Judgment:
February 17, 2000
Presiding
Panelist: Roderick Thompson
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.
Complainant was registrant of United States service mark and United States trademark. Registrant registered the domain name, MUSICWEB.COM. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.
Held, Name Transferred to Complainant.
An attempt to sell a domain name for profit is sufficient evidence of registration and use in bad faith. As both the Complainant and Respondent are residents of the same country, in this case the United States, the Panel may look to rules and principles of law set out in decisions in the United States. It is clear that the domain name MUSICWEB.COM is identical or confusingly similar to the service mark and trademark registered and used by Complainant, MUSICWEB. It was uncontested that the Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.
Although the Respondent did not establish a web site corresponding to the registered domain name, the Respondent did list the domain name on GreatDomains.com as a domain name for sale. It was uncontested that the Respondent had tried to disassociate himself of the domain name on many occasions.
The evidence submitted by the Complainant shows only one purpose, selling for profit, for respondent's acquisition or registration of MUSICWEB.COM. There is no indication of any other actual or intended use of the domain name. The circumstances presented in this default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles.
Policies referred to
WIPO Rules for Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999
WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, adopted December 1, 1999
Second Staff
Report on Implementation Documents for the Uniform Dispute Resolution Policy,
submitted for Board meeting of October 24, 1999, para. 4.5,a. [http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm]
Registration Agreements referred to
Network Solutions, Inc., Domain Name Registration Agreement, October 24, 1999
Cases referred to
Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).
Panel Decision referred to
WorldWrestling Federation Entertainment, Inc. v. Michael Bossman (Case No. 99-0001)
Thompson, Panelist: -
1. The Parties
The complainant
is Robert Ellenbogen, an individual resident of Latham, New York, United
States of America. The respondent is Mike Pearson, an individual resident
of the United States of America, with addresses listed in Pennsylvania
and Florida.
2. The Domain
Name(s) and Registrar(s)
The domain
name at issue is <musicweb.com>, which domain name is registered with
Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural
History
A Complaint
was submitted electronically to the World Intellectual Property Organization
Arbitration and Mediation Center (the "WIPO Center") on January 3, 2000,
and the signed original together with four copies were forwarded by express
courier and received by WIPO on January 5, 2000. An Acknowledgment of Receipt
was sent by the WIPO Center to the complainant, dated January 4, 2000 (email)
and January 5, 2000 (email and courier).
On January
4, 2000 a Request for Registrar Verification was transmitted to the registrar,
NSI requesting it to: (1) confirm that the domain name <musicweb.com>
is registered with NSI; (2) confirm that the person identified as the respondent
is the current registrant of the domain name; (3) provide the full contact
details (i.e., postal address(es), telephone number(s), facsimile number(s),
e-mail address(es)) available in the registrars Whois database for the
registrant of the disputed domain name, the technical contact, the administrative
contact and the billing contact; (4) provide a copy of the registration
agreement that was in effect at the time of the original registration of
the domain name, as well as any subsequent amendments to the agreement;
(5) provide a copy of the domain name dispute policy (if different from
ICANNs Uniform Domain Name Dispute Resolution Policy (the "Policy")) that
was in effect at the time of the original registration of the domain name,
as well as any subsequent amendments to the policy.
On January
6, 2000, Network Solutions, Inc. confirmed by reply e-mail that the domain
name <musicweb.com> is registered with NSI and that the respondent,
Mike Pearson, is the current registrant of that domain name. The registrar
also forwarded the requested Who is details, as well as copies of the registration
agreement and applicable dispute resolution policy.
The policy
in effect at the time of the original registration of the domain name at
issue provided that:
Network Solutions,
INC.
DOMAIN NAME
REGISTRATION AGREEMENT
A. Introduction.
This domain name registration agreement ("Registration Agreement") is submitted
to Network Solutions, INC. ("NSI") for the purpose of applying for and
registering a domain name on the Internet. If this Registration Agreement
is accepted by NSI, and a domain name is registered in NSIs domain name
database and assigned to the Registrant, Registrant ("Registration") agrees
to be bound by the terms of this Registration Agreement and the terms of
NSIs Domain Name Dispute Policy ("Dispute Policy") which is incorporated
herein by reference and made a part of this Registration Agreement. This
Registration Agreement shall be accepted at the offices of NSI.
* * * * *
C. Dispute
Policy. Registrant agrees, as a condition to submitting this Registration
Agreement, and if the Registration Agreement is accepted by NSI, that the
Registrant shall be found by NSIs current Dispute Policy. The current
version of the Dispute Policy may be found at the InterNIC Registration
Services web site: "http://www.netsol.com/rs/dispute-policy.html."
D. Dispute
Policy Changes or Modifications. Registrant agrees that NSI, in its sole
discretion, may change or modify the Dispute Policy, incorporated by reference
herein, at any time. Registrant agrees that Registrants maintaining the
registration of a domain name after changes or modifications to the Dispute
Policy become effective constitutes Registrants continued acceptance of
these changes or modifications. Registrant agrees that if Registrant considers
any such changes or modifications to be unacceptable, Registrant may request
that the domain name be deleted from the domain name database.
E. Disputes.
Registrant agrees that, if the registration of its domain name is challenged
by any third party, the Registrant will be subject to the provisions specified
in the Dispute Policy.
* * * * *
Q. This is
Domain Name Registration Agreement Version Number 4.0. This Registration
Agreement is only for registrations under top-level domains: COM, ORG,
NET, and EDU. By completing and submitting this Registration Agreement
for consideration and acceptance by NSI, the Registrant agrees that he/she
has read and agrees to be bound by A through D above.
Domain Version
Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt]
[01/98]
A Formal Requirements
Compliance Checklist was completed by the assigned WIPO Center Case Administrator.
The Panel has independently determined and agrees with the assessment of
the WIPO Center that the Complaint is in formal compliance with the requirements
of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy,
as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental
Rules for Uniform Domain Dispute Resolution Policy, in effect as of December
1, 1999 (the "Supplemental Rules"). The required fees for a single-member
Panel were paid on time and in the required amount by the complainant.
No formal
deficiencies having been recorded, on January 10, 2000, a Notification
of Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification") was transmitted to the respondent (with copies to the complainant,
NSI and ICANN), setting a deadline of January 29, 2000, by which the respondent
could make a Response to the Complaint. The Commencement Notification was
transmitted to the respondent by e-mail to the e-mail address indicated
in the Complaint and specified in NSIs Whois confirmation. In addition,
the Commencement Notification was sent by express courier and transmitted
by facsimile to the addresses listed in the Complaint and confirmed by
NSI. Having reviewed the communications records in the case file, the Administrative
Panel finds that the WIPO Center has discharged its responsibility under
Paragraph 2(a) of the Rules "to employ reasonably available means calculated
to achieve actual notice to Respondent." In addition, confirmation of actual
notice is provided by the evidence in the record of the respondents email
communications to the WIPO Center in response to the Commencement Notification.
On February
1, 2000, having received no Response from the designated respondent, using
the same contact details and methods as were used for the Commencement
Notification, the WIPO Center transmitted to the parties a Notification
of Respondent Default. No Response or other document has been received
by the WIPO Center or the Administrative Panel from the respondent since
the Notification of Default.
On February
3, 2000, in view of the complainants designation of a single panelist
the WIPO Center invited Roderick Thompson to serve as a panelist in Case
No. D00-0001, and transmitted to him a Statement of Acceptance and Request
for Declaration of Impartiality and Independence.
Having received
on February 4, 2000, Roderick Thompsons Statement of Acceptance and Declaration
of Impartiality and Independence, on February 7, 2000, the WIPO Center
transmitted to the parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, in which Roderick Thompson was formally
appointed as the Sole Panelist. The Projected Decision Date was February
20, 2000. The Sole Panelist finds that the Administrative Panel was properly
constituted and appointed in accordance with the Rules and WIPO Supplemental
Rules.
Although respondent
has not made a formal Response to the Complaint, WIPO has received two
email communications from "Mike Pearson" at the email address provided
by NSI, [email protected]. The first email was made in reply to
an email message from WIPO transmitting notification of the complaint.
In that email, dated January 10, 2000, Mr. Pearson stated, "I have no relation
to this domain whatsoever. The listing of me as the administrative contact
is in error. Please take whatever steps are necessary to remove my name,
Mike Pearson." In response, the WIPO Center advised Mr. Pearson of the
requirement of the Rules that he submit a Response no later than January
29, 2000 and that any concerns he had with respect to the registration
information on record with the domain name "musicweb.com" should be directed
to NSI.
On January
11, 2000 Mr. Pearson responded with a second email, stating "I have been
trying for over a year to get my name disassociated from this domain. I
have not now nor have I ever had anything to do with the domain. Please
take whatever action is necessary to remove my name, Mike Pearson." Complainant,
who received copies of Mr. Pearsons emails, at first requested of WIPO
that the domain musicweb.com be transferred to him immediately. After reviewing
the applicable procedures with the WIPO Center, however, complainant on
January 31, 2000 sent an email requesting that the WIPO Center appoint
a panelist as soon as possible to proceed with the administrative proceeding.
Aside from
these two emails, quoted in their entirety above, there has been no other
communication received from respondent. The Administrative Panel, therefore,
finds that respondent received notice of the complaint and failed to submit
a response as required by Rule 5. Respondent is, therefore, in default
and, under Rule 14(a), the Administrative Panel shall "proceed to a decision
on the complaint." Accordingly, the Administrative Panel shall proceed
to a decision based on the allegations in the complaint and shall draw
such inferences as are appropriate from the other documents submitted to
WIPO, including the two emails received from the respondent.
4. Factual
Background
The complainant
has provided evidence of the registration of the following marks:
Service Mark
MUSICWEB, for computer online retail services in the field of recorded
music and music information in Int. Class 42, registered for a term of
10 years from September 15, 1998.
Complaint,
Exhibit B.
The Service
Mark claims a first use of June 10, 1998. Id. Complainant uses the mark,
MUSICWEB, for the sale of recorded music, discs, tapes and other electronic
recording devices. Complaint 8.
The respondent
is the current registrant of the domain name <musicweb.com>. E-mail
dated January 6, 2000, from NSI to the WIPO Center Case Administrator.
The Whois database shows that respondent is also the Administrative Contact,
Technical Contact and Zone Contact for the domain name <musicweb.com>.
Complaint, Exhibit A. The Whois record of the domain MUSICWEB was created
on January 10, 1995 and last updated on January 5, 1997. Id. As noted,
respondent has stated by email that "the listing of me as the Admin Contact
is in error" and has twice asked to have his name removed from this domain
name registration.
5. Parties
Contentions
A. Complainant
Complainant
contends that respondent has registered as a domain name a mark which is
identical to the service mark registered and used by complainant, that
respondent has no rights or legitimate interests in respect to the domain
name at issue, and that respondent has registered and is using the domain
name at issue in bad faith.
B. Respondent
Respondent
has not contested the allegations of the Complaint and is in default.
6. Discussion
and Findings
A. Applicable
Rules and Principles of Law.
Paragraph
15(a) of the Rules instructs the Panel as to the principles the Panel is
to use in rendering its decision: "A Panel shall decide a complaint on
the basis of the statements and documents submitted in accordance with
the Policy, these Rules and any rules and principles of law that it deems
applicable." Here, the complainant, the respondent, and the registrar are
all domiciled in the United States. United States courts have recent experience
with similar disputes. The Final Report of the WIPO Internet Domain Name
Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html])
envisaged the very situation before this Panel, stating "if the parties
to the procedure were resident in one country, the domain was registered
through a registrar in that country and the evidence of bad faith registration
and use of the domain name related to activity in the same country, it
would be appropriate for the decision-maker to refer to the law of the
country concerned in applying the definition" of what became paragraph
4(a) of the Policy. Accordingly, the Panel may look to rules and principles
of law set out in decisions of the courts of the United States in determining
whether the complainant has met its burden.
Paragraph
4(a) of the Policy directs that the complainant must prove each of the
following:
(i) that the
domain name registered by the respondent is identical or confusingly similar
to a trademark or service mark in which the complainant has rights; and,
(ii) that
the respondent has no legitimate interests in respect of the domain name;
and,
(iii) the
domain name has been registered and used in bad faith.
B. Application
of Paragraph 4(a)(iii) to the Facts.
The domain
name <musicweb.com> is identical to the service mark registered and
used by complainant, MUSICWEB. It is uncontested that the respondent has
no rights or legitimate interests in respect of the domain name. See Complaint
9.2. Indeed, respondents email has expressly disavowed "any relationship
to this domain whatsoever." Since the domain name was offered for sale
on the Internet and respondent has acknowledged "trying for over a year
to get my name disassociated from this domain," the Panel concludes that
the name was registered or maintained in bad faith within the meaning of
paragraph 4(a)(iii) of the Policy.
The domain
name, however, must not only be registered in bad faith, but it must also
be used in bad faith. The requirement of both bad faith registration and
bad faith use was discussed in the only published decision to date rendered
under the applicable Policy and Rules, WorldWrestling Federation Entertainment,
Inc. v. Michael Bossman (Case No. 99-0001). There, the panel relied on
the legislative history behind the Policy to conclude that bad faith use,
in addition to bad faith registration, was essential. Id. p. 7. "It is
clear from the legislative history that ICANN intended that the complainant
must establish not only bad faith registration, but also bad faith use."
The panel in WorldWrestling cited the Second Staff Report regarding the
Policy and its considerations of comments received on the then draft Policy:
4.5. Several
comments (submitted by INTA and various trademark owners) advocated various
expansions to the scope of the definition of abusive registration. For
example:
a. These comments
suggested that the definition should be expanded to include cases of either
registration or use in bad faith, rather than both registration and use
in bad faith.
These comments
point out that cybersquatters often register names in bulk, but do not
use them, yet without use the streamlined dispute-resolution procedure
is not available. While that argument appears to have merit on initial
impression, it would involve a change in the policy adopted by the Board.
The WIPO report, the DNSO recommendation, and the registrars-group recommendation
all required both registration and use in bad faith before the streamlined
procedure would be invoked. Staff recommends that this requirement not
be changed without study and recommendation by the DNSO." Second Staff
Report on Implementation Documents for the Uniform Dispute Resolution Policy,
submitted for Board meeting of October 24, 1999, para. 4.5,a. [http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm]
The issue
thus to be determined is whether the respondent used the domain name in
bad faith. Here, there is no allegation or evidence that the respondent
established a Web site corresponding to the registered domain name. The
Complaint, whose allegations are to be accepted as established because
of respondents default, states only that "Respondent, by using the domain
name, has the potential to attempt" to attract business from complainant
and that "Respondents use of the domain name misleadingly diverts customers."
Complaint 9.3d and f. But elsewhere the Complaint states that "Respondent
is not using" the domain name "in connection with a bona fide offering
of goods or services." Id. at 9.2e. The Complaint asserts on the one hand
that there is a use of the domain name which, at least potentially, will
harm complainants business but elsewhere asserts that respondent is not
using the domain name with respect to any bona fide offering of goods or
services. Respondents emails disavow any association with the domain name,
and, by implication, any domain name use. The Panel concludes that there
is insufficient documentation to support the assumption that respondent
is using <musicweb.com> as a website or domain name address. But that
does not end the "use" inquiry.
Here the Complaint
alleges, in the context of supporting the allegation that the domain name
is being used in bad faith, that the domain name is being used to harm
complainant. This conclusion finds support in the Complaints showing that
the domain name <musicweb.com.> was listed on the "Great Domains.com"
website as a domain name for sale. Complaint Exhibit C. This effort to
sell the domain name is consistent with the statement in Respondents email
that he had "been trying for over a year to get my name disassociated from
this domain." Although there is no allegation that Respondent registered
or acquired the domain name primarily for the purpose of specifically selling
it to complainant or a competitor of complainant that would satisfy paragraph
4b(i) of the Policy, the Panel concludes that the domain <musicweb.com>
is being offered for sale to anyone interested, including complainant or
a competitor. Indeed, complainants receipt of the offer for sale is confirmed
by the fact that a photocopy of the listing is appended to the Complaint.
The allegation
of bad faith also finds support in the legislative history of paragraph
4b(i). During the Final comment period, ICANN Staff received and endorsed
a comment suggesting that to be indicative of bad faith, a request for
payment shall be in an amount above the registrants out-of-pocket costs.
Consideration
of "[w]hether, in seeking payment for transfer of the domain name, the
domain name has limited its request for payment to its out-of-pocket costs"
is implemented in the policy statement by revising the language of paragraph
4b(i) to focus it on situations where the domain name was ransomed for
profit.
Second Staff
Report, supra, at 4.4 (emphasis added). Here respondent did not limit its
request for payment of out-of-pocket expenses. He sought payment for transfer
of the domain name by soliciting offers of any amount through a domain
name broker site. Complaint Exhibit C. The Complaint also alleges that
listing the domain name on that site is "for the purpose of selling or
transferring the domain name for valuable consideration in excess of out-of-pocket
costs." Complaint 9.3c. This allegation coupled with the listing documentation
support a finding bad faith use akin to the circumstances described in
paragraph 4b(i) of the Policy.
This conclusion
is consistent with a United States district court decision, finding that
an intent by the domain name registrant to sell a domain name constitutes
a "commercial use" under United States antidilution law (15 U.S.C. §
1125(c)).
"Toeppens
intention to arbitrage the intermatic.com domain name constitutes a commercial
use. . . . Toeppens desire to resell the domain name is sufficient to
meet the commercial use requirement of the Lanham Act. Id., 1239. Emphasis
Added.
Intermatic
Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).
Paragraph
4b of the Policy sets out without limitation three examples of circumstances
that if found "shall be evidence of the registration and use of a domain
name in bad faith." Subparagraph (i) lists circumstances that the respondent
acquired the domain name "primarily for the purpose of selling" it to the
complainant or a competitor. Here the evidence in the documentation submitted
shows only one purpose -- selling for profit-- for respondents acquisition
or registration of <musicweb.com>. There is no indication of any other
actual or intended use of the domain name. The panel therefore concludes
that the circumstances presented in this default proceeding qualify as
sufficient evidence of registration and use in bad faith within the meaning
of paragraph 4 of the Policy and applicable legal principles.
7. Decision
For all of
the foregoing reasons, the Panel decides that the domain name registered
by respondent is identical or confusingly similar to the service mark in
which the complainant has rights, and that the respondent has no rights
or legitimate interests in respect of the domain name, and that the respondents
domain name has been registered and is being used in bad faith. Accordingly,
pursuant to Paragraph 4i of the Policy, the Panel requires that the registration
of the domain name <musicweb.com> be transferred to the complainant.
Domain Name Transferred